Welcome to the Weintraub Resources section. Here, you can find our Blogs, Videos, and Podcasts, in which Weintraub attorneys regularly provide insights and updates on legal developments. You can also find upcoming Weintraub Events, as well as firm and client News.


The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco

Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York. Specifically, I wrote about the Court granting Tiffany’s motion for summary judgment on liability, permitting Tiffany to proceed to trial on the issue of damages. Tiffany eventually did exactly that and obtained a $21 million judgment against Costco for selling unbranded engagement rings as “Tiffany” diamond engagement rings. But just over a week ago, the Second Circuit Court of Appeals vacated the judgment of the District Court and remanded the case for trial.

To recap, Tiffany sued Costco for selling other rings and using the word Tiffany on nearby signage to describe those rings, claiming trademark infringement and unfair business practices. Costco responded to the allegations by claiming that “Tiffany” is a word used throughout the industry to refer to a particular style of setting–a diamond solitaire in a six-prong setting. Costco argued that consumers are aware of this use of “Tiffany” and that its use was therefore unlikely to cause consumer confusion. Costco also argued that Tiffany is not a legally protected trademark because the mark is descriptive or generic for that style of setting. For that reason, Costco requested that the Court cancel Tiffany’s trademark.

San Francisco Issues Guidance on “Back to Work” Layoff and Reemployment Notices

On August 7, 2020, the San Francisco Office of Economic and Workforce Development (OEWD) released its guidance on the City of San Francisco’s “Temporary Right to Reemployment Following Layoff Due to COVID-19 Pandemic Emergency Ordinance” (also known as the “Back to Work” Ordinance), which the Board of Supervisors passed on June 23, 2020.  Importantly, the OEWD released template forms on its website that employers may use in reporting layoffs and reemployment offers to the OEWD as required under the Ordinance.

San Francisco employers who have laid off or are considering laying off 10 or more workers as a result of the COVID-19 pandemic should make sure they comply with the new ordinance while it remains in effect.  The Ordinance requires employers operating in San Francisco to offer reemployment to “eligible workers” laid off as a result of the COVID-19 pandemic and the related shelter-in-place/stay-at-home orders in San Francisco when they are rehiring for the same or similar classifications.  The Ordinance also requires that employers provide notice of the layoff and of reemployment offers to both laid off workers and the OEWD.

The Ordinance went into effect on July 3, 2020 and will remain in effect through September 1, 2020, unless the Board of Supervisors extends it.

To read the full article, please click here.

The Continuing Spread of Employee Lawsuits Related to COVID-19

A blog we published here on May 28, 2020, warned that whistleblower, disability and leave claims against employers may reach a fever pitch as workplaces begin reopening from the COVID-19 shutdown.  A recent audit by the U.S. Department of Labor Office of Inspector General (“OIG”) confirms that some of those types of claims already are spiking.

That OIG report, dated August 14, 2020, and made public this week, found that increases in virus-related complaints may severely impair the ability of the federal Occupational Safety and Health Administration (“OSHA”) to investigate such claims promptly.  “We found the pandemic has significantly increased the number of whistleblower complaints OSHA has been receiving,” the report stated.

In particular, the report indicates that the pandemic has resulted in a 30-percent jump in whistleblower complaints during its first four months as compared to the same period in 2019.  OSHA received about 4,100 whistleblower complaints from February through May 2020, according to the OIG report, and about 1,600 of them were related to COVID-19; for example, claims that an employer retaliated against an employee for reporting violations of rules requiring social distancing or personal protective equipment (“PPE”).

Employees who suffer adverse job actions after reporting such violations to a supervisor or a governmental entity in California are not restricted to filing an OSHA complaint.  Instead, those employees can retain a lawyer and sue their employers for damages in civil court.

At the same time, employers may see an increase in disability or leave claims, or even other types of discrimination claims, as they reopen their businesses or further restrict their operations in response to the pandemic.  Thus, California employers should consider taking the following four steps to reduce the incidence of such costly lawsuits:

First, do not violate or direct your employees to violate governmental shelter-in-place, social-distancing, sanitary or PPE restrictions or regulations.

Second, whenever making a termination decision, be sure it is for reasons that have absolutely nothing to do with the employee’s refusal to violate some public policy (e.g., a statute or regulation) or the employee’s complaints about reasonably perceived violations of some public policy.

Third, take every request for a disability accommodation or leave of absence seriously and analyze each one independently on its own merits.  In that regard, be sensitive to actual or perceived disabilities, do not make medical assumptions, work hard to identify and implement reasonable accommodations for disabled employees, and be vigilant in guarding against harassment of employees on the basis of some perceived or actual medical condition.

Fourth, make certain that personnel decisions have nothing to with protected classifications (e.g., age, race, gender, religion) and carefully analyze how decisions may impact protected classes of employees.

Even these steps cannot completely immunize employers against all these types of lawsuits, yet failing to adopt such protective measures probably will increase the risk of exposure to these afflictions.  Obtaining early legal advice also may decrease the frequency or cost of these exorbitant types of lawsuits.

Scott Hervey in CNN: Making TV Shows During Coronavirus is Taking More Time — and Money

Scott Hervey is quoted in Brian Lowry’s CNN article, Making TV Shows During Coronavirus is Taking More Time — and Money.  Scott moderated a August 5 panel for the Hollywood Radio and Television Society (HRTS), where he is a board member.  The panel, titled “Unscripted,” discussed the logistics of production during a pandemic.

Production is coming back. It’s just going to take a little bit longer and cost a little bit more,

Read the full CNN article on their website, here.

The CDC’s Updated Guidance Expedites the Time In-Home COVID-19 Patients Can Return to Work

The CDC has issued new guidance for in-home patients diagnosed with COVID-19, including lowering the number of days the patient must remain isolated after being fever-free. The CDC previously recommended that “at least 72 hours” pass since the last fever without the use of fever-reducing medication before ending self-isolation. Noting “accumulating evidence” and ongoing research into COVID-19 treatment, the CDC lowered the recommended isolation to “at least 24 hours.”

Researchers have further reported that people with mild to moderate COVID-19 symptoms remain infectious for no longer than 10 days after their symptoms begin, while those who are hospitalized with more severe symptoms and/or severely immunocompromised conditions can remain infectious no longer than 20 days after their symptoms begin.

Based on these and other findings (detailed more fully here), the CDC updated its recommendations for discontinuing home isolation. If an employee is diagnosed with COVID-19, or the doctor believes they have COVID-19, and the employee was directed by a doctor to care for themselves at home (or otherwise outside a hospital setting, e.g. in a hotel, dormitory or isolation facility), the new CDC guidance is that such persons may discontinue isolation under the following conditions:

  • At least 10 days have passed since symptom onset, and
  • At least 24 hours have passed since resolution of fever without the use of fever-reducing medications, and
  • Other symptoms have improved.

As with most other CDC guidance, this change may be adopted by state and local health departments so it is wise to check with your local, county and state health departments for further direction.

California’s COVID-19 Employer Playbook for a Safe Reopening

The California Department of Public Health (“CDPH”) issued its “COVID-19 Employer Playbook” on July 24, 2020 in an effort to provide employers with a comprehensive guide related to COVID-19 as employers reopen their business. According to the CDPH, by following the Employer Playbook, employers will be able to do their part in reducing the risk and spread of COVID-19 in the workplace, and ensure that California businesses stay open. The subjects covered in the Playbook include how to open safely; what to do if there is a case of COVID-19 in the workplace; worker education; and enforcement and compliance. The Playbook contains many links to various employer and worker resources, as well as case studies to help illustrate the importance of implementing proper social distancing and safety measures.

You can obtain a copy of the CDPH’s Employer Playbook at: https://files.covid19.ca.gov/pdf/employer-playbook-for-safe-reopening–en.pdf

The Labor and Employment attorneys at Weintraub Tobin continue to wish you and yours health and safety during these challenging times.  If we can assist you with your employment law needs, please feel free to reach out to any one of us.

Brendan Begley Discusses the Office of the Future with the Sacramento Business Journal

Employment attorney Brendan Begley spoke with Sam Boykin of Sacramento Business Journal about the recent SBJ cover article on “ The Office of the Future.”  The in-depth article includes a wide spectrum of voices discussing different aspects of the changing workplace. Brendan addressed some legal concerns that employers may face in the wake of the COVID-19 pandemic.

Legal protections
Another concern for business owners is legal exposure, as most lawyers anticipate a spike in lawsuits as businesses reopen.

Brendan Begley, a shareholder and employment lawyer in the Sacramento office of Weintraub Tobin, said he foresees lawsuits arising from what happened in the health care industry during the outbreak. Begley said that some doctors and nurses were fired because they refused to treat patients unless they were provided with personal protective equipment.

“As a lawyer, I can see how something like that will result in lawsuits,” he said.

Similar scenarios could play out in other industries, as workers refuse to serve customers unless they have personal protective equipment. Or some employees may accuse a company of not providing adequate protections in the office.

“If a worker gets punished for saying that, or they get fired for not coming back to work, I think we’re going to see classic wrongful termination in violation of public policy claims,” Begley said. “Those claims are likely going to mushroom as people return to work.”

The best way to deal with such scenarios, Begley said, is to be tolerant, flexible and open-minded of new demands employees might have. “That doesn’t mean you have to give in to all of them, but you can’t just fire someone if they don’t want to come back to work. You have to stop and think why they don’t want to come back to work, and if there’s something you can do to massage and accommodate the situation so everyone can get along.”

Another challenge facing employers as they reopen is that many will likely have to downsize and lay off workers, Begley said. This could open the employer up to charges of age, race or sex discrimination.

“Even though you’re not intending to single out a group, it could still result in some kind of discrimination lawsuit,” he said. “If you’re laying people off, no matter what, some people are going to get hurt feelings.”

Despite the many challenges business will face, Begley said there is a silver lining. “A crisis can spur people to improve. Employers are going to be forced to find new and innovate ways to do things, which often will make them more productive and efficient.”

The full article is available on the Sacramento Business Journal website,  click here to read.

Webinar – Don’t Get Nailed: Tips to Help Builders Avoid Lawsuits

  • When: Aug 4, 2020
  • Where: Webinar

On August 4, Weintraub Tobin lawyers Shauna Correia and Louis Gonzalez provided an overview of the most common types of lawsuits faced by builders and contractors – as well as possible new claims due to the COVID-19 health crisis – relating to employment, workplace safety, and construction contract disputes. This webinar was hosted by the North State Building Industry Association (BIA).

Please keep in mind that the COVID-19 pandemic is a fluid situation and information is constantly being updated. We recommend that you check with your professional advisors to make sure you have the most current information.

Frustration of Purpose: How Two WWII-era Cases Provide Guidance Regarding Lease Enforcement During the COVID-19 Health Crisis

Unlike the Great Recession in 2008, landlords and tenants responding to the negative economic impact of the COVID-19 health crisis appear to be focusing more on rent relief as opposed to strict interpretation and enforcement.  Both sides seem to acknowledge that this downturn is driven by external, uncontrollable influences, and therefore each side should cooperate to weather the storm. It is the approach we most strongly encourage our clients to take, as it strengthens the relationship between landlord and tenant and avoids unnecessary expenditures on costly lease enforcement.

Not all parties have taken this approach, however.  Some, whether out of opportunity or desperation, have instead taken a more aggressive position, claiming that the uncontrollable nature of this pandemic justifies suspension of contractual duties and/or entitles a party to terminate its lease.  Many legal arguments have been proffered to support this position, including force majeure, impossibility, casualty, eminent domain and frustration of purpose.  This article will discuss the latter, clarifying the nature of the doctrine and explaining how two precedential decisions may affect how it may apply to current lease disputes.

What is Frustration of Purpose?

Frustration of purpose applies when performance of a contract or lease remains possible, but the fundamental reason of one of the parties for entering into the contract has been frustrated by an unanticipated supervening circumstance, destroying substantially the value of performance by the party standing on the contract.[1] If the doctrine applies, the party to the contract is discharged from its obligations under the contract, including the remainder of the term. This doctrine has been considered by many California courts, including those addressing the impact of government-imposed regulations on the obligations of tenants and landlords under a lease.

Can Frustration of Purpose be Used by a Tenant to Justify Immediate Termination of a Lease?

In a case which dates back to World War II[2], a landlord leased commercial space to a tenant who intended to display neon signs to illuminate and advertise for his business. After the lease commenced, the United States government ordered, as an emergency war measure, that all outside lighting, including neon signs, be shut off between sunset and sunrise. The tenant claimed that he was prevented, due to the order and without fault on his part, from using the neon signs he used to illuminate his business during the nighttime, and that both parties contemplated such use as the primary purpose of the lease at the time of the execution of the contract. The lease between the parties clearly contemplated the use of the neon signs, but did not state what hours the signs could be lit. The tenant first offered to surrender the lease, terminate it, and allow the landlord to remove the signs. However, after the landlord refused, the tenant stopped paying rent, and the landlord sued to collect.

The court agreed with the tenant.  Relying on the doctrine of frustration of purpose, the court held that the tenant was entitled to terminate the lease because the parties clearly contemplated, prior to entering into the contract, that the use of the signs at night “was the essential, primary and principal basis for which the signs were rented.” Therefore, as the governmental order prevented the tenant from using the signs, the entire purpose of the lease was frustrated and the tenant was discharged from its obligations under the lease, including future rent.

Does Frustration of Purpose Automatically Apply and Permit Termination of a Lease?

Not all tenants are entitled to rely on frustration of purpose to terminate their leases simply because an intervening event has occurred. In another WWII case[3], the California Supreme Court considered the effect of a wartime order on a lease for an auto dealership. In 1941, the tenant rented property in Beverly Hills for the purpose of displaying and selling new cars “and for no other purpose whatsoever.” On January 1, 1942, the federal government ordered that the sale of all new automobiles be discontinued to support the war effort. Recognizing the effect that the order would likely have on the tenant’s business, the landlord lifted all restrictions in the lease regarding the tenant’s use of the premises. The landlord also permitted tenant to sublease and offered to reduce the rent if the tenant was unable to operate profitably. Despite these concessions, the tenant sought to repudiate and terminate the lease, claiming frustration of purpose. The landlord then sued for unpaid rent.

In this case the landlord prevailed, as the court found that the tenant was not entitled to terminate the lease based on frustration of purpose. At trial, the tenant admitted that he continued to sell new automobiles and gasoline at the location, confirming that the tenant was able to operate consistent with its original purpose to some extent. The court also found that the landlord made considerable concessions which, in this particular instance, were significant given that the property was located on a main artery in Los Angeles County and the location was adaptable to many commercial purposes if the tenant chose to utilize the premises in a different way. In fact, after the tenant vacated the premises, the landlord immediately found a willing tenant to step in and rent the property. The court held that even though the government regulation made business more difficult and less profitable, a tenant could not invoke the doctrine of frustration of purpose unless the regulation completely destroyed the value of the lease.

Lessons for Landlords and Tenants Considering the Impact of Frustration of Purpose

These two cases offer up a couple takeaways regarding the obligations of landlords and tenants following an unanticipated supervening circumstance, such as the COVID-19 health crisis and related governmental orders requiring individuals to shelter in place.

First, landlords should be mindful that providing flexibility to a tenant in occupying their leased premises may help avoid a claim of frustration of purpose and termination of the lease. For the auto dealership landlord, the court strongly considered the flexibility, fairness, and cooperation of the landlord, who did everything it could to ensure that the leased premises retained some value for the tenant. By removing use restrictions, allowing transfers and subletting, and/or reducing rent, the landlord was able to overcome the argument that the purpose of the lease was frustrated. Unlike the neon signs case, in which the entire and sole purpose of the tenant’s lease was deprived as a result of the governmental order, the auto dealership landlord took affirmative acts to preserve such value and thereby protect its lease. In sum, it behooves a landlord – where economically feasible – to cooperate with a tenant and/or offer concessions in order to prevent a tenant from claiming the purpose of the lease was entirely frustrated. Even if those measures prove to be unsuccessful, it may later benefit the landlord in court.

Second, landlords and tenants should consider the impact of restrictive use provisions in their leases.  Landlords, especially in multi-tenant shopping centers, generally want to narrowly define a tenant’s permissible use so as to avoid overlapping and/or violation of exclusivity restrictions.  The most recent health crisis reminds landlords of the dangers of taking this approach, as doing so may coerce a tenant into the unwanted conclusion that its purpose was entirely frustrated.  Landlords may also want to grant a tenant the ability to pursue alternative uses with their landlord’s consent, which might provide a secondary manner of broadening the purpose. In either case, the language of the lease should be clear as to the purpose of the lease so as to avoid unwanted interpretation by a court. In the neon signs case, the court was left to determine what the primary purpose of the lease was because the parties failed to define its purpose with specificity. Careful drafting may have given the landlord more options or remedies.

While global pandemics and the related government-mandated use restrictions are rare, they can have a significant effect on businesses of all sizes and across industries. These two cases remind landlords and tenants that special attention should be paid both to the language of a lease and each party’s response to these crises. Not only will such consideration and cooperation benefit a landlord should the matter proceed to litigation, it will also engender goodwill with the tenant or future tenants. If you would like assistance with interpreting lease provisions and/or responses to the COVID-19 health crisis, whether in connection with a claim of frustration of purpose or not, please contact the attorneys at Weintraub Tobin.


[1] Cutter Laboratories, Inc. v. Twining (1963) 221 Cal. App. 2d 302, 314–315.

[2] 20th Century Lites, Inc. v. Goodman (1944) 64 Cal. App. 2d Supp. 938.

[3] Lloyd v. Murphy (1944) 25 Cal. 2d 48.

PTO Fast Tracks COVID-19 Patent and Trademark Applications

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.

On May 7, 2020, the Director of the PTO announced the program for patent applications.  The program applies to products and processes related to the COVID-19 pandemic, specifically, to those subject to FDA approval for COVID-19 use, including investigational new drug applications, investigational device exemptions, new drug applications, biologics license applications, pre-market approvals, and emergency use authorizations.

To participate in the program, the patent applicant must be a small or micro entity.  The fees typically charged by the PTO for prioritized examination will be waived for qualifying patent applications.  If the patent application qualifies, the PTO will examine the application and reach a final determination within 12 months, and, in some cases, within six months.  The patent application program is limited to the first 500 applications, although the program may be extended.

On June 15, 2020, the Director of the PTO announced a similar PTO program for trademark applications.  The program applies to marks for a product or service that is subject to FDA approval for COVID-19 use or a medical or medical research service for the prevention or treatment of COVID-19.  An applicant must file a petition to qualify for the prioritized examination.  The PTO will waive the fees for these petitions.

According to the Director, the goal of the prioritized examination programs is to “help to bring important and possibly life-saving treatments to market more quickly.”

And we can all hope for that!