August 22 2019

Supreme Court Ruling In Pirate Ship Copyright Case Could Sink State Immunity

 

By Scott Hervey
IP Law Blog

The Supreme Court is set to hear the case of Allen v. Cooper which addresses the constitutionality of the Copyright Remedy Clarification Act (“CRCA”). The purpose of the CRCA is to abrogate sovereign immunity enjoyed by States and State actors under the Eleventh Amendment for claims of copyright infringement. The CRCA provides as follows:

Any State, any instrumentality of a State,

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August 20 2019

What Aretha Franklin’s Estate Teaches Us About the Pitfalls of Handwritten Wills

 

By Leslie R. Kolafa
Trusts & Estates Blog

Typically, only those of us who are trusts and estates attorneys geek out over the fascinating problems that handwritten wills create. But when those wills were written by a music icon worth $80 million, suddenly this topic is intriguing to a much broader audience. Aretha Franklin died on August 31, 2018. Her family was confident that she died without a will,

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August 15 2019

Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

 

By Eric Caligiuri
IP Law Blog

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.

Regarding the constitutional issue of whether the retroactive application of IPRs to pre-AIA patents is an unconstitutional taking,

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August 8 2019

Ninth Circuit Inquiry on Non-Competes Could Have Huge Implications

 

By James Kachmar
IP Law Blog

The Ninth Circuit recently asked the California Supreme Court to provide it with guidance concerning certain types of non-compete provisions that could have huge ramifications for California’s business environment.  In essence, the Ninth Circuit asked the California Supreme Court whether section 16600 of the California Business and Professions Code bars agreements between businesses that place a restriction on one business from doing business with another. 

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August 6 2019

The Wonderful Land of OZ: An Overview of Opportunity Zones

 

By Aman Badyal

Opportunity Zones (or OZs) may be the most talked-about provision of the Tax Cuts and Jobs Act of 2017.  There are many twists and turns on the yellow brick road to completing an OZ project.  This article sets forth the underlying rationale of the OZ program, its principal tax benefits, an overview of the basic requirements for making an eligible investment, and certain common problems encountered by taxpayers seeking to take advantage of OZs.

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August 1 2019

Do Your Homework Before Suing for Patent Infringement!

 

By Audrey A. Millemann
IP Law Blog

The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases.  35 U.S.C. §285.  An exceptional case is determined based on the totality of the circumstances.  A case can be exceptional due to a substantive legal position taken by a party or a party’s unreasonable litigation tactics.  Courts can and will award attorneys’

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July 25 2019

Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants

 

By Jo Dale Carothers
IP Law Blog

The United States Patent and Trademark Office (the “USPTO”) explains that

“A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”

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July 19 2019

California Dramatically Expands Consumer Privacy Rights For the Entire Country

 

By: Jessica R. Corpuz
Litigation Blog

California recently passed the California Consumer Privacy Act of 2018, described by Former Gov. Jerry Brown as a “historic step” for California consumers, “giving them control over their personal data.”  He claimed that the law “forges a path forward to lead the nation once again on privacy and consumer protection issues.”

This is not just political puffery.  The Consumer Privacy Act has broad-ranging implications for the rest of the country,

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July 18 2019

Goodbye Majestic Yosemite Hotel, Welcome Back Ahwahnee Hotel

 

By Josh Escovedo
IP Law Blog

A few years ago, when the concessionaire for Yosemite National Park (the “Park”), Delaware North, was informed that the Park planned to consider other concessionaires, such as Aramark, Delaware North responded in shocking fashion. Delaware North responded that if it was going to be replaced as the concessionaire, it intended to take the Park’s intellectual property (the “IP”), such as the Ahwahnee Hotel and Curry Village,

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July 11 2019

Supreme Court Decision Will Have Huge Economic Impact on Trademark Infringement Damages

 

by Scott Hervey
IP Law Blog

The Supreme Court has agreed to resolve a circuit split over when a court can order the payment of an infringer’s profits to a successful plaintiff as a measure of damages.  The matter comes to the Supreme Court as an appeal from the Second Circuit decision in Romag Fasteners Inc. v. Fossil Inc. et al.  In that case,

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July 8 2019

Losing Twice at Trial: Denying Requests for Admission Can Come Back to Bite You

 

By: Josiah M. Prendergast
Litigation Blog

Litigation tends to be expensive, increasingly so due to the burdens of discovery. (You can thank the advent of emails, text messages, and other forms of communication now documenting conversations that used to take place by phone or in-person.) Litigants often find themselves tempted to use discovery as a bludgeon against their opponent, a means of extorting a righteous plaintiff or defendant into settling the case because the cost of proving the truth is simply too onerous.

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July 5 2019

Federal Circuit Sets Higher Standard for Early Alice Motions

 

by Eric Caligiuri
IP Law Blog

In Cellspin Soft, Inc. v. Fitbit, Inc. et. al., the Federal Circuit recently held that a lower court wrongly invalidated four patents under Alice because they contain an inventive concept. The four patents at issue share the same specification and generally relate to connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.

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June 27 2019

Web Domains and The Forgotten Tort of Trespass to Chattels

 

by James Kachmar
IP Law Blog

California case law over the last few years is replete with instances where a new and/or small business has one of their employees take responsibility for various IT activities such as setting up the company website and/or email domains.  Disputes arise when that employee leaves for other employment and refuses to give the former employer access to the business domain and/or emails. 

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June 20 2019

When is an Invention Obvious?

 

by Audrey Millemann
IP Law Blog

To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO).  First, the invention must be novel.  This means that the same invention cannot have been disclosed in a single prior art reference.  The prior art is all of the publicly available information that existed before the date the patent application was filed. 

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June 13 2019

Supreme Court: Federal Government Cannot Challenge Patents in PTAB

 

by Audrey Millemann
IP Law Blog

The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.

The other three proceedings were established by the America Invents Act.

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June 6 2019

Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!

 

by James Kachmar
IP Law Blog

Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.”  17 U.S.C. §410(c).  But what happens if that certificate contains knowingly inaccurate information? The purported copyright owner could face not only invalidation of the copyright, but the inability to pursue copyright infringement claims or risk an award of attorney’s fees against them if they do so.

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June 4 2019

Focus on Fiduciaries: What Fiduciaries Need to Know About the Attorney-Client Privilege

 

by Mary deLeo
The Trust and Estates Blog

Last month, my Weintraub colleagues and I had the pleasure of speaking at the Professional Fiduciary Association of California annual conference on the topic of the attorney-client privilege and its application to clients serving in a fiduciary capacity (trustee, executor, conservator, agent, etc.).

Most people have a cursory understanding of what the attorney-client privilege does – it keeps communications between clients and their attorneys confidential and free from discovery,

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June 3 2019

The Request and Use of Background Checks by California Employers

 

By Shauna Correia and Nicholas Ma
The Labor and Employment Blog

Many employers routinely conduct background checks of potential and current employees.  It comes as no surprise that in the current digital age, employers can obtain extensive background information on applicants and employees quicker than ever from third-party reporting companies.  However, employers must remain vigilant to avoid receiving information prohibited under federal,

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May 30 2019

Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on

 

by Josh Escovedo
IP Law Blog

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t seem real. For those of you who haven’t watched the series,

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May 24 2019

Certain Delivery Drivers Are Exempt from the Federal Arbitration Act and May Proceed with Class Actions

 

By: Ryan E. Abernethy
The Litigation Blog

In this age of expensive class-action litigation, many California companies have found solace in their arbitration agreements. Under certain circumstances, the enforcement of such agreements includes the dismissal of class action claims. This has largely been made possible by the Federal Arbitration Act (FAA) which requires judges to enforce a wide range of written arbitration agreements notwithstanding contrary state law.

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May 23 2019

If You Can’t Describe It, You Can’t Patent It!

 

by Audrey Millemann
IP Law Blog

One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a).  This requirement means that the specification must fully disclose what the invention is.  The purpose of the written description requirement is to demonstrate to persons skilled in the art of the invention that the inventor had possession of the invention at the time the application was filed,

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May 17 2019

Best Practices To Ensure Compliance with Website Accessibility Guidelines: Is Your Company Protected?

 

by Giles Judd
Litigation Blog

Although private actions against companies for the failure to ensure access to their websites for individuals with disabilities have increased significantly in recent years, both Congress and the Department of Justice (DOJ) have yet to provide clear guidance as to what constitutes compliance under the Americans with Disabilities Act (ADA).  Given the potential financial consequences facing a business which fails to provide equal access – including significant damages and attorneys’ fees – this lack of statutory or regulatory guidance can be quite problematic.

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May 16 2019

U.S. Supreme Court Allows App Store Anti-Trust Class Action to Proceed Against Apple

 

by Eric Caligiuri
IP Law Blog

In APPLE INC. v. PEPPER ET AL., case number 17-204, the United States Supreme Court considered a case alleging Apple has monopolized the retail market for the sale of apps and has unlawfully used its monopolistic power to charge consumers higher-than competitive prices. As an early defense in the case, Apple asserted that the consumer plaintiffs could not sue Apple because they supposedly were not “direct purchasers” from Apple under Illinois Brick Co.

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May 9 2019

Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights

 

by Josh Escovedo
IP Law Blog

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear. However, we may have discovered a clue based upon a recent filing with the USPTO.

On March 29,

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May 2 2019

Hidden Trademark Landmines in Comparative and Compatibility Advertisements

 

by Scott Hervey
IP Law Blog

Nespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored by Nespresso because “Nespresso Compatible” is used prominently and without a disclaimer nearby.

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May 1 2019

A Case Lesson in “What Not To Do” When Billing as a Conservator

 

by Daniel C. Kim
Trust and Estates Blog

Based on recent appellate cases, one of which is discussed below, the court’s scrutiny of conservators’ conduct and, specifically, private fiduciaries, is seemingly on the rise. Private fiduciaries acting as conservators should always remain focused on performing and charging only for those services that are consistent with the best interests of their conservatees. California case law continues to refine that understanding.

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April 30 2019

And You Are? Long Lost Relatives Need to Prove Up Their Entitlement to Inherit

 

by Danielle Diebert
The Trusts and Estates Law Blog

Under California law, the laws of intestacy control who inherits when a person dies without having prepared a valid will or trust. These rules can be complicated particularly as remote or even unknown blood relatives may have a claim to assets of the decedent’s estate. However, these long lost relatives often must prove up their entitlement to inherit from the decedent’s estate.

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April 29 2019

No Privilege Extended to Communications With Public Relations Consultant

 

by Sherry Bragg
Litigation Blog

Social media has become part of our daily lives. Information is routinely disseminated in the public sphere via Facebook, Twitter, Instagram and other social media outlets. It is therefore no surprise that we often see high profile litigation play out in the media as much as it does in the courtroom. For this reason, many attorneys and clients seek the assistance of a public relations or media consultant to advise them on issues such as the assessment and mitigation of risks,

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April 25 2019

Some at the PTAB Think Textbooks Are Not Printed Publications

 

by Jo Dale Carothers
The IP Law Blog

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications? Given the amount we paid for textbooks in college and the number stored in my garage that seems like a strange argument,

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April 22 2019

AB 51: Another Attempt to Take Down Mandatory Arbitration Agreements in California

 

By: Weintraub Tobin
The Labor and Employment Law Blog

Background

Mandatory arbitration agreements are a source of contention in employment law. However, since 2000, they are generally permissible in California. In response, the California Legislature has made repeated efforts to ban such agreements over the years. In the past, many such bills have passed both the state assembly and the state senate and have ended up on the Governor’s desk.

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April 19 2019

California Supreme Court Holds that Payroll Services Provider ADP Cannot Be Sued for Breach of Contract, Negligence, and Negligent Misrepresentation by a Former Employee Seeking Unpaid Wages

 

by Nicholas Ma
Litigation Blog

Can an employee sue the employer’s payroll service for failure to correctly process and report payroll?  According to the California Supreme Court recent decision in Goonewardene v. ADP, LLC (2019) 6 Cal.5th 817, the answer is no.

In examining the claim, the Court held that when an employer hires a payroll company, providing a benefit to employees with regard to the wages they receive is ordinarily not a motivating purpose of the transaction. 

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April 18 2019

Do You Know Where The Photos For Your Website Come From?

 

by James Kachmar
The IP Law Blog

Many businesses rely on their websites to promote their company and drum up business. Having a “professional” looking web page is considered a must and companies spend a lot of money in creating and maintaining their web presence. However, a recent case out of the Ninth Circuit Court of Appeals demonstrates that care must be taken in connection with the creation of a company’s website,

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April 16 2019

Changing Prop 65 Requirements at Residential Rentals

 

by Weintraub Tobin
Litigation Blog

Landlords will soon face new Prop 65 warning requirements for rental properties.  Physical Prop 65 warning signs will no longer be required as a general rule once the new rules take effect on July 1, 2019.  Instead, warnings must be provided directly to the building’s tenants and occupants via one of three methods:  1) a letter addressed to each known adult occupant and delivered to the property;

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April 11 2019

Are Rules for Playing a Game Patentable?

 

by Audrey A Millemann
The IP Law Blog

A lot of things are patentable.  Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable.  But some things are not:  the exceptions are laws of nature, natural phenomena, and abstract ideas.

The Federal Circuit Court of Appeals has many times had to decide what these terms mean. 

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April 9 2019

TRUE STONE v. KEYSTONE: Stone Brewing’s Motion for Preliminary Injunction is Denied, but the Court’s Ruling Indicates a Finding of Infringement Against MillerCoors is Likely.

 

by Josh Escovedo
Litigation Blog

On February 12, 2018, Stone Brewing, arguably the most well-known craft brewer, filed a complaint against MillerCoors LLC, the multinational beer conglomerate, for trademark infringement. Specifically, Stone Brewing alleges that, in April 2017, when MillerCoors rebranded its line of sub-premium beers known as KEYSTONE, separating KEY and STONE onto separate lines, with an emphasis on STONE, it infringed Stone Brewing’s famous STONE trademark.

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April 4 2019

Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

 

by Eric Caligiuri
The IP Law Blog

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover, as compensatory damages, its costs incurred in a related Inter Partes Review (IPR) proceedings.  The Court found such testimony would constitute an improper circumvention of 35 U.S.C.

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April 2 2019

New DFEH Notice and Certification Related to Medical Leaves and Parental Leaves under California Law

 

by Lizbeth “Beth” West
The Labor and Employment Law Blog

California employers covered by the California Family Rights Act (“CFRA”) and/or the California New Parent Leave Act (“NPLA”) should take note that California’s Department of Fair Employment and Housing (“DFEH”) has issued two new documents that are relevant to the administration of an employee’s leave under these laws.

  1. Family Care and Medical Leave and Pregnancy Disability Leave Notice.
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March 28 2019

SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent

 

by Josh Escovedo 
The IP Law Blog

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly impact numerous licensees throughout the world if the Court affirms the First Circuit Court of Appeal’s decision below,

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March 21 2019

Dr. Seuss and Fair Use, What 20+ Years Will Do!

 

by Scott Hervey
The IP Law Blog

Over twenty years ago, the Ninth Circuit decided the case of Dr. Seuss Enterprises., LP v. Penguin Books USA, Inc.  That case involved a copyright infringement lawsuit brought by Dr. Seuss over a book entitled The Cat NOT in the Hat! A Parody by Dr. Juice.  This book was about the O.J. Simpson trial presented in Seuss style rhyming verse and animation.

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March 14 2019

Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

 

by Jo Dale Carothers
The IP Law Blog

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

When a patent applicant files for a patent,

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March 8 2019

Do California Employers Have Any Scheduling Flexibility Options Left?

 

by Shauna Correia
The Labor and Employment Law Blog

Scheduling employees is becoming more difficult for employers, and the State seems to be hurtling toward predictive scheduling laws.

Last month, my partner Lukas Clary blogged about the recent California Supreme Court case, Ward v. Tilly’s, Inc., in which the Court ruled that “reporting time” pay is owed whenever an employee is required to “report” to work,

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March 8 2019

Supreme Court: File Your Copyright Application!

 

by Audrey A Millemann
The IP Law Blog

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office.  However, in Fourth Estate Public Benefit Corp.

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February 28 2019

Employee Non-Solicitation Provisions Under Attack

 

by James Kachmar
The IP Law Blog

Companies have a number of tools available to them to help protect their intellectual property, including trade secret and other proprietary information that give them a competitive advantage. Many employers utilize detailed provisions in their employee handbooks and employment agreements to protect this information. One key provision has been the use of coworker non-solicitation provisions that prevent a departing employee from seeking to “raid” his or her former coworkers to join him or her at their new place employment,

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February 26 2019

Fresh Prince’s Alfonso Ribiero Denied Copyright Registration for the Carlton Dance

 

by Josh Escovedo 
The IP Law Blog

As we previously wrote on this blog, Alfonso Ribiero, better known as Carlton Banks from the Fresh Prince of Bel Air filed suit against multiple videogame publishers, including the publisher of NBA 2K and Fortnite for featuring avatars that perform his signature “Carlton Dance.” Ribiero’s case, however, may have just encountered a dispositive roadblock.

Last week,

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February 25 2019

Employees Are Entitled to Reporting Time Pay if Required to Call In to Confirm Shifts

 

by Lukas Clary
The Labor and Employment Law Blog

 

Figuring out how many employees to schedule each day can be an inexact science. Unexpected surges or lulls in customers, employee absences due to illness or emergencies, and various other circumstances can impact personnel needs.  Employers sometimes choose to navigate these situations by overscheduling and then cutting loose employees who are not ultimately needed.  That approach,

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February 21 2019

The Federal Circuit Clarifies Rules For Importation of Limitations From the Specification During Claim Construction

 

by Eric Caligiuri
The IP Law Blog

In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction.  In the case, Continental sued Intel Corp.; its supplier, Ibiden U.S.A. Corp.;

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February 14 2019

Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks

 

by Josh Escovedo 
The IP Law Blog

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks, generally, cannot be federally registered or protected under the Lanham Act due to the marks direct reference to the class of product or service it belongs to. In other words,

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February 7 2019

It’s Not Water under the Bridge – “Fiji Water Girl” Sues Water Company Over Cardboard Cutout

 

by Scott Hervey
The IP Law Blog

For those of you that watched the red carpet happenings at last year’s Golden Globe Awards, you may have noticed the “Fiji Water Girl”, a model standing ready to keep Hollywood glitterati hydrated with bottles of Fiji water, photobombing numerous shots of celebrities.  Her presence on the red carpet created a social media firestorm and the Fiji Water Girl – a model named Kelly Steinbach – garnered instant and substantial notoriety. 

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February 7 2019

Co-Worker Non-Solicitation Provisions in Jeopardy?

 

by James Kachmar
The Labor and Employment Law Blog

For years, California courts have recognized the right of employers to use non-solicitation provisions in employment agreements to prevent employees from “soliciting” their coworkers to join them at a new employer.  For instance, in 1985, a California appellate court in Loral Corp v. Moyes, 174 Cal.App.3d 268 (1985), held that a non-solicitation of fellow employees provision in an employment agreement was lawful because the co-workers were free to seek employment with a competitor,

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January 31 2019

Can Secret Sales Prohibit Patenting Your Invention?

 

by Jo Dale Carothers
The IP Law Blog

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.”  This limitation on patentability is often referred to as the “on-sale” bar because it prohibits, or bars,

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January 24 2019

Whose "Baby" Is It?

 

by Audrey A. Millemann
The IP Law Blog

When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question.

What is an inventor? Who is the inventor? One would think these questions have straightforward answers. They do not. Inventorship is one of the most difficult and gray areas of patent law.

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January 17 2019

Patent License Royalty Rates are Strong Evidence of Damages

 

by Audrey Millemann
The IP Law Blog

The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case.  The damages were based on a reasonable royalty.  The case is Sprint Communications Co., L.P. v. Time Warner Cable, Inc., 2018 U.S. App. LEXIS 33594 (Fed. Cir.  2018).

Sprint sued Time Warner in the District of Kansas for infringement for several of Sprints patents for a telephone communications network. 

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January 15 2019

Neutral Solutions 2019: A New Year that Brings New Training Obligations

 

The Labor and Employment Law Blog

While it has always been good practice for employers of all sizes to train both their supervisory employees and non-supervisory employees on the prevention of harassment, California law now mandates such training by 1/1/20 (and every 2 years thereafter) for any employer with 5 or more employees.  The attorneys in Weintraub Tobin’s Labor & Employment Department have years of experience conducting energetic, compliant, and effective harassment prevention training for employers of all sizes and in all industries. 

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January 10 2019

District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel

 

by Eric Caligiuri
The IP Law Blog

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C. § 103 based on IPR Estoppel under 35 U.S.C. § 315(e)(2).  In the case, Plaintiff The California Institute of Technology alleges patent infringement against Defendants Broadcom Limited,

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January 9 2019

New Year, New Minimum Wage

 

by Katie Collins
The Labor and Employment Law Blog

Effective January 1, 2019, California’s minimum wage rate increased to $12.00 per hour (from $11.00) for employers with 26 or more employees and $11.00 per hour (from $10.50) for employers with 25 or fewer employees. The minimum wage will continue to increase yearly until it reaches $15.00 per hour on January 1, 2022 for employers with 26 or more employees and January 1,

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January 3 2019

Consumers Have Standing to Challenge Trademark Registrations

 

By Josh Escovedo
The IP Law Blog

The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed a notice of opposition, alleging that Applicant’s mark failed to function as a trademark on the grounds that it is synonymous with the name of a well-known childhood fairytale character,

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December 27 2018

In-Game “Carlton Dance” Routine Triggers Lawsuit From Fresh Prince Actor Alfonso Ribeiro

by Scott Hervey
The IP Law Blog

Actors gain notoriety for different reasons.  For some, it’s due to a physical characteristic or an iconic character portrayal.  For Alfonso Ribeiro, it’s a dance.  The dance, which has become known worldwide as the “Carlton Dance,” is a corny dance number performed by Ribeiro’s character Carlton Banks on the 90’s sitcom “The Fresh Prince of Bel Air.”   That dance is now the center of a copyright infringement lawsuit Ribeiro filed against Epic Games and Take-Two Interactive. 

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December 20 2018

Federal Circuit Narrows Reach of Obviousness-Type Double Patenting

 

by Jo Dale Carothers
The IP Law Blog

Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent.  The core principle behind the doctrine is that “an inventor must fully disclose [the] invention and promise to permit free use of it at the end of [the] patent term.”  See Novartis Pharmaceuticals Corp.

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December 18 2018

Employer’s Rounding Policy Upheld and Employees Lose Their Class Action & PAGA Lawsuit

by Lizbeth “Beth” West
The Labor and Employment Blog

On December 10, 2018, the Fourth Appellate Court decision in Kennedy Donohue v.  AMN Services, LLC  (“AMN”) was certified for publication and it brings good news for California employers who use a neutral rounding timekeeping system. The case involved a class action and PAGA action brought by Ms. Donohue on behalf of nurse recruiters who worked for AMN.  Ms.

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December 13 2018

Royalties, Preemption and Attorney’s Fees

by James Kachmar
The IP Law Blog

The Ninth Circuit recently was called upon to decide awarding attorney’s fees in a case where artists were suing for unpaid royalties under the California Resale Royalties Act (“CRRA”).  In the case, Close v. Sotheby’s, Inc. (decided December 3, 2018), the Ninth Circuit ordered that the Plaintiff-artists be required to pay attorney’s fees to the defendants (eBay and art auction houses) for successfully defending against claims for unpaid royalties resulting from art sales. 

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December 5 2018

What’s New This Christmas?

by Audrey Millemann
The IP Law Blog

Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year. (Maybe the PTO wanted to give the owners an early Christmas present!)

There are lots of patents for Christmas tree stands. 

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November 28 2018

Court Finds No Personal Jurisdiction Over Foreign Defendant Based On U.S. Subsidiary Under Stream of Commerce and Agency Theories

By Eric Caligiuri

In University of Massachusetts Medical School et al v. L’Oreal SA et al, 1-17-cv-00868 (DED 2018-11-13, Order) (Sherry R. Fallon), the magistrate judge recommended granting a foreign parent company defendant’s motion to dismiss plaintiffs’ patent infringement action for lack of personal jurisdiction where its American subsidiary introduced the alleged accused products into the stream of commerce and the foreign defendant’s corporate structure is not sufficient to establish personal jurisdiction because “mere ownership of a subsidiary does not justify the imposition of liability on the parent.”

The primary plaintiff in the case is the University of Massachusetts Medical School,

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November 21 2018

Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage

By Josh Escovedo

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot. After the contest had concluded, the Sod Poodles were selected as the new mascot.

Unfortunately, it appears that Panhandle Baseball Club, Inc., the entity that owns and operates the Amarillo Sod Poodles,

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November 14 2018

Now Available! Weintraub Tobin’s 2019 Labor and Employment Seminar and Training Schedule

Weintraub Tobin’s 2019 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 about private, custom-tailored training, please contact:

Ramona Carrillo

(916) 558-6046

[email protected]

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November 14 2018

TTAB’s Refusal To Register Trademark Reveals Important Lesson For Trademark Attorneys

By Scott Hervey

The Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce; hot sauce” holds a lesson for those of us that regularly advise clients on the registrability (and usability) of trademarks.  Assuming Verde Valle conducted a trademark search, it’s very likely (if not certain) that the word mark SONIA SONI LIFE IS A RECIPE for “spices,

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November 7 2018

IP Challenges Again Take the Stage at the U.S. Supreme Court

By Jo Dale Carothers

Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions.  1.  Can the government challenge patents under the America Invents Act (“AIA”)?  2. Do trademark licenses survive Chapter 11 bankruptcy?  These questions are presented in two cases in which the U.S. Supreme Court just granted certiorari:  Return Mail, Inc. v.

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October 31 2018

Trademark Registration and the Presumption of Secondary Meaning

By James Kachmar

The U.S. Court of Appeals for the Federal Circuit was recently tasked with reviewing determinations made by the International Trade Commission (“ITC”) relating to trade infringement claims brought by Converse, Inc. with regard to a number of imported shoes that it alleged infringed on one of its trademarks. Although Converse sneakers have had largely the same appearance since the 1930s, Converse registered a trademark in 2013 relating to the design of its midsole and the toe cap/bumpers on its shoes. 

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October 24 2018

Ordering Pizza is Not Patentable!

By Audrey Millemann

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter.  In 2014, the Supreme Court relied on this principle in deciding Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347.  In that case, the Court invalidated patent for a computerized system for mitigating risks in financial transactions.

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October 17 2018

District Court Grants Motion For More Definitive Statement Because Patent Infringement Claim Involved Complicated Technology

By Eric Caligiuri

In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074, the District Court for the Northern District of Texas denied defendant’s motion to dismiss for failure to state a claim, but granted its motion for a more definite statement because of the complexity of the patents-in-suit.

In the case, the Defendant argued that the Plaintiff’s complaint for direct patent infringement should be dismissed because the complaint fails to meet the pleading standards set forth by the Supreme Court in Bell Atlantic Corp.

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October 10 2018

SCOTUS Will Decide What the Copyright Act Means by “Registered.”

By Josh Escovedo

Any work that is entitled to copyright protection automatically receives protection when it is fixed in a tangible medium of expression. However, in order to benefit from the Copyright Act, the owner must “register” his or her work with the United States Copyright Office. Put another way, in order to protect against copyright infringement, the owner must register the work. So, for purposes of the Copyright Act, what does that mean?

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October 3 2018

Which California Employment-Related Bills Were Signed Into Law And Which Ones Did Not Make The Cut?

By Beth V. West

Well September 30, 2018 has come and gone.  As my September 19, 2018 article indicated, that was the deadline for Governor Brown to either sign or veto a large number of employment-related bills passed by the California Legislature during the 2017-2018 Term.  Out of the 21 employment-related bills I summarized in my September 19th article, 12 were signed into law, and 9 were vetoed.  Below is a list of the new laws California employers must comply with,

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October 3 2018

The Supreme Court: Cases to Watch and Missed Opportunities

By Jo Dale Carothers

In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved.  Therefore, it is important to look both at the cases currently before the U.S. Supreme Court as well as those the Court chooses to let stand without further review.  First, consider a few cases the Court has already agreed to hear or is still considering.

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September 26 2018

The Essential Purpose of the Short Form Copyright Assignment

By Scott Hervey
The IP Law Blog

Recently, a client asked why we included a short form option agreement and a short form assignment agreement as an exhibit to a long form literary option agreement.  I am sure that many a corporate transactional attorney has similarly wondered why a short form copyright assignment agreement is included within the package of numerous M&A transaction documents.  It is true that the short form agreement is used to record the transfer of the copyright interest by filing it with the Copyright office without filing the long form agreement with all of the transaction details. 

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September 19 2018

To Be or Not to Be [a New Law]? Countdown on Governor Brown’s Review of California Employment-Related Bills

By Beth V. West

The September 30th deadline for Governor Brown to act on numerous employment-related bills passed by the California Legislature during the 2017-2018 Legislative Term is fast approaching. This Blog summarizes only 21 of the more than 40 employment-related bills currently on the Governor’s desk. Employers are encouraged to stay tuned to see which bills become law and which ones don’t make the cut.  NOTE: employment laws are constantly changing and employers must ensure that they make the necessary changes to policies and practices so that they are in compliance with current legal requirements.

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September 19 2018

Michael Jackson, Commercial Speech and Anti-SLAPP Motions

By James Kachmar

A California appellate court recently dealt a blow to fans of Michael Jackson who brought a class action alleging unfair competition and violations of the Consumers Legal Remedies Act (“CLRA”) in connection with the sale of an album titled simply “Michael” following the singer’s death.  The appellate court found that statements on the album cover and in a promotional video did not amount to pure “commercial speech” and that the Plaintiff’s claims should have been dismissed in connection with an anti-SLAPP motion brought by the Defendants. 

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September 12 2018

Court Finds Prior Finding of No Literal Infringement Bars Later Claim for Infringement Under the Doctrine of Equivalents

By Eric Caligiuri

In Galderma Laboratories, LP et al v. Amneal Pharmaceuticals LLC et al, 1-16-cv-00207 (DED August 31, 2018, Order) (Stark, USDJ), Judge Stark of the District of Delaware recently found that a plaintiff was collaterally estopped from pursuing claims for patent infringement of two drug patents under a doctrine of equivalents theory based on a finding of no literal infringement in a prior case even though a doctrine of equivalents theory was not asserted in that case.

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September 5 2018

Accused Patent Infringers – Don’t Wait to File an Inter Partes Review!

By Audrey Millemann

An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act, which established a panel of judges called the Patent Trial and Appeal Board (PTAB) to decide IPRs and conduct other procedures used to challenge patents.  An IPR is quicker and less costly than patent litigation. It also allows an accused infringer to attack the plaintiff’s patent without having to defend against a patent infringement claim at the same time.

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August 29 2018

Procter & Gamble Seeks to Register Text Message Lingo Such as LOL and WTF

By Josh Escovedo

Procter & Gamble, the international consumer packaged goods conglomerate, recently filed a slew of trademark applications with the United States Patent and Trademark Office, seeking to register WTF, LOL, FML, and NBD for use in conjunction with certain consumer goods. Now, I suspect most of you are familiar with these acronyms, but if you aren’t, LOL stands for “laughing out loud” and NBD stands for “no big deal.” As for WTF and FML,

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August 22 2018

Navigating Username Jacking

By Scott Hervey
The IP Law Blog

Have you ever had the experience of attempting to register a social media account in the name of your business only to find that your preferred name is taken? Often, it’s just the case of another business with the same name having registered that account first. Other times, it’s evidence of what’s come to be known as “Username Jacking”. Big brands and public figures are highly susceptible to incidents of username jacking.

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August 15 2018

Patent Litigation Venues: Is a Computer Server Room Really a Place of Business?

By Jo Dale Carothers

The U.S. Supreme Court’s in TC Heartland v. Kraft Food, and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute, 28 U.S.C. §1400(b). Specifically, the patent venue statute provides that “[a]ny civil action for patent infringement may be brought in either 1) “the judicial district where the defendant resides” or 2) “where the defendant has committed acts of infringement and has a regular and established place of business.”

In TC Heartland,

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August 8 2018

“Honey Badger Don’t Care”: The Rogers test and Trademark Infringement

By James Kachmar

Christopher Gordon is a comedian who created a viral video about the honey badger with the notable catch phrase, “Honey Badger Don’t Care,” among others. He later trademarked that phrase and sued greeting card companies for trademark infringement for using that phrase, or a variation thereof, without his permission. As a result, the Ninth Circuit was recently asked to revisit the test set forth in Rogers v. Gramaldi,

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August 1 2018

Federal Circuit Limits Patent Infringement Damages

By Audrey Millemann

The Federal Circuit Court of Appeals has taken aim at sky-high patent infringement damages. In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 2018 U.S. App. LEXIS 18177 (July 3, 2018), the court limited the use of the rule that allowed patent owners to recover damages based on the total sales of the infringing product, even if the patent covered only a part of the product.

Power Integrations owned two patents covering switching regulators in power supply controller chips.

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July 27 2018

Good News Employers – There are Now Some Answers to Your Questions About the Recent Law Prohibiting Use of Prior Salary History

By Beth V. West

On July 18, 2018, Governor Brown signed Assembly Bill (AB) 2282 which provides answers and clarifications to a number of questions employers had about the new law that went into effect in January 2018 (Assembly Bill 168 – codified in Labor Code section 432.3). Section 432.3 prohibits employers from relying on the salary history information of an applicant for employment as a factor in determining whether to offer an applicant employment or what salary to offer an applicant,

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July 25 2018

Federal Circuit Affirms Tribal Immunity Does Not Apply in Inter Partes Review Proceedings Before the USPTO

By Eric Caligiuri

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the U.S. Court of Appeals for the Federal Circuit held that Native American tribal sovereign immunity does not apply in Inter Partes Review (“IPR”) proceedings at the Patent Trial and Appeal Board (“PTAB”) arm of the USPTO. In do so, the Federal Circuit affirmed the PTAB’s ruling that it has the authority to decide the validity of patents transferred to the St.

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July 18 2018

Conor McGregor Returns to Combat in the Intellectual Property Arena

By Josh Escovedo

Conor McGregor doesn’t back down to anyone. He knocked out the once unbeatable Jose Aldo in 13 seconds. He was the first UFC fighter to simultaneously hold titles in two different weight divisions. He crossed over to boxing to fight the greatest boxer of all time, Floyd “Money” Mayweather. You get the point: Conor McGregor takes on all competitors—anywhere, anytime.

Although McGregor’s fights usually occur inside the octagon,

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July 16 2018

California Law Now Provides an Express Statutory Privilege Against Defamation Claims by Those Accused of Sexual Harassment

By Beth V. West

Under California law, an aggrieved person can bring a claim for defamation if the person is the subject of a false and unprivileged statement that is injurious to his/her reputation. Defamation can take the form of libel or slander. (Ca. Civ. Code Sec. 44.) Specifically “libel” is defined as a false and unprivileged publication by writing, printing, picture, effigy, or other fixed representation to the eye, which exposes any person to hatred,

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July 11 2018

Recovery of Lost Foreign Profits for Infringement of a U.S. Patent

By Jo Dale Carothers

While a U.S. patent provides the patent owner with a monopoly to prevent others from “making, using, offering for sale, or selling the invention throughout the United States,” there are significant limits to the extraterritorial application of U.S. Patent law. The U.S. Supreme Court, however, just found that damages for one form of patent infringement extend not only to lost U.S. profits, but also to lost foreign profits.

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July 10 2018

NLRB Provides Guidance Regarding Permissible Policies – Are Your Policies Compliant?

By Meagan Bainbridge

Back in December, Beth West informed our readers that the NLRB had issued new (and more realistic) guidelines for evaluating whether employment policies and rules violate the National Labor Relations Act (“NLRA”). As a reminder, the NLRB issued a new two-prong test for determining if facially neutral employment policies could interfere with the exercise of NLRA rights, evaluating: (1) the nature and extent of the potential impact on NLRA rights,

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July 5 2018

Right of Publicity Risks For Producers Still Uncertain

By Scott Hervey

Often writers base characters on complete fiction, drawing from their imagination to build a character’s various facets. However, on certain occasions a writer may base a character on a living person. Sometimes such a portrayal is factual and other times it may be a combination of fact and fiction. Such was the case, claimed legendary actress Olivia de Havilland, in her lawsuit against FX Networks over her portrayal in the FX docudrama Feud: Bette and Joan.

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June 29 2018

Do You Own a Hotel? – New Regulations Going Into Effect

By Meagan Bainbridge

In January, the Cal/OSHA Standards Board (OSHSB) adopted new regulations intended to prevent and reduce workplace injuries suffered by housekeepers in the hotel and hospitality industry. The new regulations, which go into effect on July 1st, require California hotel (and other lodging) employers to adopt a Musculoskeletal Injury Prevention Program (MIPP) to complement the Injury and Illness Prevention Plan (IIPP), which should already be in place. The MIPP must include:

*Procedures to identify and evaluate housekeeping hazards through worksite evaluations.

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June 28 2018

New California Regulations on National Origin Going Into Effect

By Meagan Bainbridge

As any reader of our blog knows, California employers are prohibited from discriminating on the basis of national origin (among other classifications). The Fair Employment and Housing Commission (“FEHC”) recently issued new regulations, which go into effect on July 1, 2018, expanding the definition of “national origin” to include an individual’s or ancestors’ actual or perceived (1) physical, cultural, or linguistic characteristics associated with a national origin group;

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June 27 2018

Ninth Circuit Rejects “General Possibility” of Infringement Theory

By James Kachmar

Today’s real estate industry relies heavily on the use of websites displaying photographs of properties for sale to entice buyers. Many of the photographs on these sites are taken by professional photographers who license the use of their photos and retain the copyrights to them. In Stevens v. CoreLogic, Inc. (decided June 20, 2018), the Ninth Circuit was faced with the question of whether these photographers can maintain an action for copyright infringement against a company whose software apparently “scrubbed” metadata identifying the copyright holders of photographs on various real estate websites.

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June 20 2018

Ninth Circuit Denies Copyright Protection to Monkeys

By Audrey Millemann

Does anyone think that a monkey has standing to bring a copyright infringement lawsuit? In Naruto v. Slater, 888 F.3d 418 (9th Cir. 2018), the Ninth Circuit Court of Appeals said no, but not without carefully considering the issue.

Animals have many legal rights based on federal and state laws. Most of those rights are enforceable by humans or legal entities suing under the statutes on behalf of the animals.

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June 13 2018

SAS Institute, Inc. v. Iancu Has Affected Cases in Federal Courts in Addition to Those at the PTAB

By Eric Caligiuri

On April 24, 2018, the Supreme Court issued its ruling in SAS Institute, Inc. v. Iancu, which held that the Patent Trial and Appeal Board (“PTAB”) arm of the United States Patent and Trademark Office (“USPTO”) must issue a final written decision addressing each and every patent claim challenged in an Inter Partes Review (“IPR”) petition if review is granted. In other words, if the PTAB is going to institute a review,

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June 7 2018

San Francisco’s New Rules for Enforcing its Paid Sick Leave Ordinance

By Shauna Correia

On May 7, 2018, the San Francisco Office of Labor Standards Enforcement (OLSE) published 14 new rules for interpreting the San Francisco Paid Sick Leave Ordinance (“PSLO”). The PSLO was amended on January 1, 2017.  The new rules take effect on June 7, 2018.

We’ve summarized the 5 rules that our clients most frequently ask about:

Rule 1 – Employee Notification of Need for Leave

The rule clarifies that employers may establish policies or procedures dictating how employees need to give notice of a need for leave.

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June 6 2018

The Process: Who Does it Really Belong to?

By Josh Escovedo

A few years ago, before the 76ers returned to playoff glory, the NBA’s Philadelphia 76ers’ ownership and front office began utilizing the phrase “Trust the Process” to represent their journey back to the top. Finally, after years of absolutely horrendous basketball, which enabled the 76ers to draft stars such as Joel Embiid and Ben Simmons, the 76ers finished third in their conference and returned to the playoffs for the first time in years.

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May 30 2018

Three-Stripes and the Burden of Irreparable Injury

By James Kachmar

adidas and Skechers are athletic shoe and apparel manufacturers who have a long history of litigation between them arising out of claims that Skechers has repeatedly infringed upon adidas’ trademarks. In Adidas America, Inc. v. Skechers USA, Inc. (decided May 10, 2018), the Ninth Circuit once again had to weigh in on Skechers’ alleged infringement of adidas’ trademarks.

adidas is well known for its “three-stripe” mark,

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May 23 2018

New ITC Rules for Patent Infringement Cases: Adding Fuel to the Ultimate Rocket Docket

By Jo Dale Carothers

The United States International Trade Commission (“ITC”) is a Federal agency that deals with matters involving trade. Among its many responsibilities, the ITC investigates a variety of issues related to trade including investigating and adjudicating cases involving imported products that allegedly infringe intellectual property rights. These infringement investigations, called Section 337 investigations, may include allegations that imported goods infringe patents or trademarks. For example, the ITC may investigate allegations by a complainant (plaintiff) that certain imported goods infringe utility or design patents or infringe registered or common law trademarks.

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May 22 2018

GOOD NEWS EMPLOYERS – The U.S. Supreme Court Says You Can Require Class Action Waivers In Your Arbitration Agreements

By Beth V. West

On May 21, 2018, the United States Supreme Court issued its much anticipated decision in Epic Systems Corp. v. Lewis. In a 5-4 decision written by the newest jurist, Justice Gorsuch, the Court declares that employers can require employees to arbitrate their employment disputes individually and waive their rights to resolve those disputes through class or collective actions.

Background.

The case was a consolidation of three cases (Epic Systems Corp.

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May 16 2018

USPTO Proposes Change in Claim Construction Standard for PTAB Proceedings Under the AIA

By Jo Dale Carothers

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts and the International Trade Commission (“ITC”). The USPTO construes claims to have their broadest reasonable interpretation (“BRI”) while district courts and the ITC apply the Phillips standard.

Under the BRI standard, a claim term is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” Under the Phillips standard,

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May 9 2018

No More Monkey Business: The Ninth Circuit Finds Monkeys Cannot Sue for Copyright Infringement

By Josh Escovedo

The Ninth Circuit was recently faced with a novel issue: Does a crested macaque, or generally speaking, a monkey, have the right to sue humans, corporations, and companies for damages and injunctive relief arising from claims of copyright infringement? Unless you’re familiar with this case, you’re probably wondering what occurred to give rise to Naruto, the monkey, bringing suit for copyright infringement. In fact, you probably have several other questions,

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May 2 2018

May the Lawsuit Be With You

By Scott Hervey

Unless you have been living under a rock (and not a rock on Tatooine), then you have heard of a little film called Star Wars, things called lightsabers, the Millennium Falcon, and even droids. But do you know how to play Sabbac?

For those of you who are not Star Wars aficionados, Sabacc is a card game rooted in unexplored mythology of Star Wars. Sabacc was first referenced in a draft screenplay for the 1980 motion picture Star Wars V: The Empire Strikes Back,

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May 1 2018

The California Supreme Court Makes It More Difficult to Classify Workers as Independent Contractors – Assumes all Workers are Employees

By Ryan Abernethy

On April 30, 2018, the California Supreme Court applied an expansive definition of independent contractor in a ruling that is sure to have a dramatic impact on many California businesses, and the burgeoning gig economy in particular.

In the case of Dynamex Operations W. v. Superior L.A. County, a class action was brought on behalf of a group of delivery drivers who were classified as independent contractors by delivery company,

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April 25 2018

Are You Doing it Right? California Supreme Court Clarifies Overtime Rate Calculations

By Chuck Post

It is an old joke that the world can be divided into people who are good at math and those who go to law school.  Whether you believe the joke or not, math – or in this case, simple arithmetic – can be at the heart of many wage and hour questions.  On March 5, 2018, the California Supreme Court issued an opinion in Alvarado v. Dart Container Corp. 

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April 25 2018

U.S. Supreme Court Rules America Invents Acts Reviews by the Patent Trial and Appeal Board arm of the Patent and Trademark Office are Constitutional

By Eric Caligiuri

In a 7-2 opinion, the U.S. Supreme Court ruled in OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC that inter partes review does not violate Article III or the Seventh Amendment of the Constitution. Thus, the Supreme Court rejected an argument that only federal courts, and not executive branch tribunals or administrative courts like the Patent Trial and Appeal Board (“PTAB”), can invalidate patent claims once issued by the US Patent and Trademark Office (“USPTO”).

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April 18 2018

The DMCA's Safe Harbor Provision and Policing Repeat Infringers

By James Kachmar

The Ninth Circuit recently revisited the issue of the applicability of the safe harbor provision of the Digital Millenium Copyright Act (“DMCA”) in the case Ventura Content, Ltd., v. Motherless, Inc., et al. (decided March 14, 2018). The issue before the Court was whether the defendants had presented undisputed evidence that they fell within the protections of the DMCA’s safe harbor provision to allow for summary judgment in their favor.

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April 11 2018

Patent Myths Corrected - Part One

By Audrey Millemann

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 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.

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April 10 2018

Medical Cannabis Users May Soon be Protected Under FEHA - AB2069

By Katie Collins

Assembly Bill (“AB”) 2069 was introduced by the California Assembly on February 7, 2018. Currently, California employers can deny employment or impose discipline on cannabis users, regardless of whether such use is for medical purposes. AB 2069 would amend the Fair Employment and Housing Act (“FEHA”) to make it an unlawful practice for an employer to take adverse action against an applicant or employee because of a positive drug test for cannabis (by a medical cannabis card holder) or because of one’s status as a medical cannabis card holder.

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April 4 2018

How To Protect Your Clients' IP

By Audrey Millemann

A business’s intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business. This article summarizes the types of intellectual property protection that are available
What Is Intellectual Property Protection?
There are four types of intellectual property protection: patent,

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March 28 2018

LegalZoom Allegedly Engages in the Unauthorized Practice of Trademark Law

By Josh Escovedo

According to a complaint filed in the United States District Court for the Northern District of California by California law firm LegalForce RAPC Worldwide, LegalZoom engages in the unauthorized practice of law when its non-attorneys instruct customers on how to register trademarks. The lawsuit names various other defendants, including the Patent and Trademark Office and several bar associations, as alleged conspirators in LegalZoom’s attempt to restrain trade.

According to the Complaint,

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March 27 2018

Have You Ever Disagreed With An Employee About How They Should Do Their Work?

By Chuck Post

Beware. Routine criticisms of job performance when directed to employees engaged in a caring profession, may subject you to retaliation and whistleblower claims.

So you hire an employee, call her a brick layer. She is a horrible brick layer. You get in constant arguments with her concerning the quality of her brick laying. You say that the bricks must be square and aligned and she says,

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March 21 2018

Hall v. Swift: Nothing Original About a Player Hater

By Scott Hervey

“Cause the players gonna play, play, play, play, play

And the haters gonna hate, hate, hate, hate, hate
Baby I’m just gonna shake, shake, shake, shake, shake

Shake it off / Shake it off

Heartbreakers gonna break, break, break, break, break

And the fakers gonna fake, fake, fake, fake, fake

Baby I’m just gonna shake, shake, shake,

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March 20 2018

Protecting Your Religious Entity Exemption Under the FEHA While Complying With Other Laws

By Shauna Correia

We all understand the common meaning of the word “employer.” In California, “employers” need to keep track of the various rules and regulations, all of which have their own definitions of the word. Most frequently, the number of employees dictates whether a given statute or ordinance applies to the employer. In addition, California’s Fair Employment and Housing Act (“FEHA” or the “Act”), exempts certain “employers” from the application of the anti-discrimination laws found within the Act.

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March 15 2018

U.S. District Court for the Eastern District of Texas Finds Defendants Have Not Committed Acts of Infringement Sufficient to Establish Venue

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.

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March 14 2018

Trap for the Unwary: Elimination of the Position as Opposed to Termination for Cause

By Charles Post

Employers sometimes see a position elimination or reduction in force as a way of terminating employees that is kinder and gentler than termination for cause. Position eliminations and reductions in force allow an employer to say goodbye to an employee without having to lay out the reasons for the separation on the employee’s door step. It is, after all, easier to say the “business won’t support your continued employment,” than it is to say,

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March 9 2018

California Fair Pay Act Confusion – Understanding California Labor Code Section 1197.5

By Charles L. Post

The following discussion concerns the California Fair Pay Act, and how to apply it. If you are unfamiliar with the Act, you may wish to begin by reading this blog.

I get calls from employers asking: “When I group my employees by substantial similarity of work, how do I know that I am doing it correctly?” These employers fear that someone – a Court, a plaintiff,

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March 7 2018

Do Secret Sales Bar Patents?

By Audrey Millemann

There is some confusion about what constitutes an “on-sale bar” in patent law. The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one year before the patent application was filed. In other words, there is a one-year grace period after an offer for sale or sale in which a patent application may be filed.

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March 1 2018

Federal Circuit Weighs in on Reasonable Royalties as Patent Infringement Damages

By Audrey Millemann
In Exmark Manufacturing Company v. Briggs & Stratton Power Products, 2018 U.S. App. LEXIS 783 (Fed. Cir. 2018), the Federal Court of Appeals addressed patent infringement damages based on a reasonable royalty. Exmark Manufacturing Company owned a patent for a lawn mower with an improved flow control baffle (the part that controls the flow of air and cut grass underneath the mower). Exmark sued Briggs & Stratton Power Products for patent infringement.

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February 28 2018

California’s “Red Flag” Laws Can Help Prevent Tragedies Like Stoneman Douglas

By Jessica Rankin Corpuz

As we struggle to come to grips with the recent tragedy at Marjory Stoneman Douglas High School, many have bemoaned the lack of response by law enforcement prior to the attack. News outlets state that the shooter was reported to the FBI twice in the months prior to the attack, and that his mother, teachers, and fellow students had discussed or reported unnerving incidents in the months leading up to the shooting.

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February 21 2018

Surviving Alice Challenges to Patent Claims

By Jo Dale Carothers

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. 

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February 15 2018

Stone Brewing Fires the Shot Heard Round the Brewing World

By Josh Escovedo

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.

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February 1 2018

Neutral Solutions: We Help You Connect the Pieces

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The Neutral Solutions Team at Weintraub Tobin can help you avoid expensive and protracted litigation. We specialize in:

  • Training supervisors on various workplace issues, including preventing harassment, discrimination, and retaliation; workplace health and safety; and managing leave laws.
  • Conducting independent investigations into complaints of misconduct in the workplace.
  • Mediating employment disputes both pre and post litigation

For more information please contact:

Lizbeth “Beth” West 916.558.6082 or [email protected]

Vida L.

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January 25 2018

Copyright Infringement and Third Party Software Support

By James Kachmar

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.

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January 11 2018

U.S. District Court for the Central District of California Makes Rare FRAND Royalty Rate Determination

By Eric Caligiuri

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.

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January 10 2018

Settling Individual Labor Code Violations Kills PAGA Claims

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.

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