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California Supreme Court Rules That There Is No Right to a Jury Trial for Claims Brought Under California’s Unfair Competition Law and False Advertising Law

As the State of California looks to plug a massive hole in its budget, the regulated community can expect agencies with the authority to generate revenue by imposing civil penalties to become even more active. Those sued for the first time by agencies seeking to recover civil penalties sometimes assume their case will be decided by a jury. A recent decision by the California Supreme Court demonstrated the complexity of the issue.

In Nationwide Biweekly Administration, Inc. v. Superior Court, 9 Cal.5th 279 (2020), the court considered whether claims brought under California’s Unfair Competition Law (“UCL”) and the False Advertising Law (“FAL”) must be tried to a jury. The Court granted review to decide the issue after the intermediate court of appeal created a split of authority on the subject, and reversed the lower court’s decision, which had held that there was a right to a jury on the claims for statutory damages.

Statutory claims can engender disputes over the right to a jury trial because California’s Constitution essentially preserves the right to a jury for legal claims for which there was a right to a jury at common law when the state Constitution was adopted in 1850. When a claim is based on a statute, courts must determine whether the claim it authorizes is comparable to a common law cause of action. If the claim is comparable to those adjudicated by the English courts of equity, there is no right to a jury. Based on its thorough review of the legislative history of the UCL and FAL, the Nationwide court concluded that they are equitable in nature.

Because the UCL and FAL provide for monetary penalties and injunctive relief, the court analyzed how to classify statutory claims that involve legal and equitable elements that cannot be separated. In such situations, courts must decide whether the “gist” of the action is equitable or legal. The Court observed that California appellate courts had routinely concluded that the UCL and FAL are equitable. The Court also found that the bulk of the remedies available (e.g. injunctive relief and restitution) under the UCL and FAL are equitable. With respect to the civil penalties authorized by the UCL and FAL, the Nationwide court explained that they are preventive, and designed to secure compliance, rather than compensatory. Id. at 326. Finally, the Court concluded that the “expansive and broadly worded substantive standards that are to be applied in determining whether a challenged business practice or advertising is properly considered violative of the UCL or the FAL call for the exercise of the flexibility and judicial expertise and experience that was traditionally applied by a court of equity.” Id. at 327. For all these reasons, the Court concluded that the “gist” of the actions authorized by the UCL and FAL are equitable.

In its decision, the Nationwide court took pains to distinguish Tull v. United States, 481 U.S. 412 (1987), where the U.S. Supreme Court held that a jury must decide the amount of civil penalties that may be imposed for violations of the Clean Water Act. Nationwide distinguished Tull on several grounds, including the following: (1) Tull was based solely upon the right to a jury provided under the federal constitution, which applies only in federal courts; and, (2) civil penalties authorized by the Clean Water Act are authorized under statutory provisions distinct from those authorizing injunctive relief. The Nationwide court also noted that the Tull did not engage in the “holistic gist of the action” analysis California courts have long applied. The Nationwide court also noted that the liability determination under the Clean Water Act involved the type of factual determination traditionally made by juries. Id. at 333. Finally, the Nationwide court observed that the Tull court was not called upon to decide whether a jury trial is constitutionally mandated whenever a statute permits the recovery of civil penalties. Nationwide, therefore, highlights the differences in the right to a jury under California and federal law.

In summary, while Nationwide provides definitive authority regarding the equitable nature of claims brought under the UCL and FAL, the court pointed out in its conclusion that it “had no occasion in this case to decide how the California constitutional jury trial provision applies to other statutory causes of action that authorize both injunctive relief and civil penalties.” Id. at 327. The concurring opinion by Justice Kruger underscored the limited scope of the decision by noting that “government actions seeking civil penalties, generally speaking, sound in law rather than equity and thus carry with them a constitutional right of jury trial under both” the federal and California constitutions. Id. at 335 (Kruger, J. concurring in the judgment.) Whether that general rule applies will, of course, depend on the statutory framework at issue, and other pertinent facts and circumstances unique to the case.

Boxing Fans Knocked Out Twice: Ninth Circuit Affirms Dismissal of Class Action Alleging Fraud in Pacquiao-Mayweather Fight

In 2015, world-renowned boxers Manny Pacquiao and Floyd Mayweather, Jr. faced off in what was promoted as the “Fight of the Century.” After twelve largely uneventful rounds, the fighters and fans walked away without much fanfare—no knockout, no technical knockout, just a scorecard victory for Mayweather.

Leading up to the fight, Pacquiao’s camp extolled his excellent fitness and preparedness, describing him as being in “pristine condition” and boasting that he was “a freak” and “better than I’ve ever seen him.” After the fight, a different story emerged—Pacquiao had torn the rotator cuff in his right shoulder a month before the fight, which materially affected his preparation and fighting condition.

Fans were outraged. On the promise of a historic bout, the fight drew the largest total of pay-per-view receipts in boxing history. But the fight was a tiresome slog, many believed in part because Pacquiao was not fully healthy.

I Think My Client Is About To Be Sued: How to Execute A Proper Litigation Hold

The duty to preserve potentially relevant evidence is an affirmative obligation.  Yes! Attorneys and their clients must take action to ensure preservation of discoverable documents.  The duty to preserve evidence arises when a party knows, or reasonably should know, that the evidence is relevant to pending or future litigation. (Zubulake v. UBS Warburg, 220 F.R.D. 212, 217.)  Simply, a party should preserve evidence when the party is on notice of potential litigation or investigation.

How do you identify when the duty to preserve has been triggered?  While the answer to this question is inherently fact-specific, the determination of whether a party reasonably anticipates litigation should be based on a good faith and reasonable evaluation of the facts and circumstances as they are known at the time. (The Sedona Conference, Commentary on Legal Holds: The Trigger & The Process, 11 Sedona Conf.J. 265, 269 (2010).)  In some cases, the “trigger date” is quite clear.  For example, in employment cases, notice that an employee has filed an administrative complaint with the Equal Employment Opportunity Commission (or the state equivalent), would trigger the duty to preserve.  More subtle examples include pre-litigation communications from counsel that may or may not “threaten” litigation, an employer’s receipt of a personnel file request and/or preservation letter, and the existence of closely related investigations or proceedings.  When in doubt, initiating a litigation hold should be the default response.  It is better to have it and not need it, than to need it and not have it—“it” being the documents.

Judge Scheindlin’s opinion in Zubulake v. UBS Warburg, 229 F.R.D. 422, 431-434, is instructive on implementing a proper litigation hold.  Once the duty to preserve documents is triggered, the attorney must develop an action plan and oversee the preservation of its client’s documents.  Counsel must issue a directive to the client to preserve and, specifically, not to destroy documents which may be relevant to the case (i.e., issue a “litigation hold”), including a suspension of the client’s routine document retention or destruction policy.  But an attorney’s obligations do not end with the issuance of the litigation hold.  Attorney oversight is essential to ensure compliance with the litigation hold.

Once a litigation hold is in place, a party and the party’s counsel must make certain that all sources of potentially relevant information are identified and placed “on hold.”  In the context of electronic discovery, to ensure that the client identifies and holds the potentially relevant information, counsel must familiarize himself or herself with the client’s document retention policies, as well as the client’s data retention architecture.  To achieve this level of understanding, counsel should communicate with the client to identify the persons having responsibility for the matters which are the subject of the potential lawsuit and all employees likely to have been the authors, recipients, or custodians of documents falling within the realm of potentially relevant information.  Counsel should ensure that all such individuals are interviewed to obtain an understanding of their knowledge of the existence of any documents that are potentially relevant to the impending lawsuit and how they stored information.  Invariably, counsel will have to speak with information technology personnel, who can explain system-wide backup procedures and the actual (not theoretical) implementation of the business’s retention policy.  Counsel should also communicate directly with the “key players” in the litigation, who are the employees most likely to have discoverable information, in order to understand how they stored information and to periodically remind them of their preservation duty.  Counsel should take steps to ensure that all documents within the identified record owners’ knowledge are retrieved, including instructing all identified record owners to review their active files and produce electronic copies of their relevant active files.  Counsel should then review all documents received from the client to determine whether other documents not retrieved exist, or if there are other individuals who might possess potentially relevant documents.  Lastly, the attorney should periodically follow up with the client and individuals to remind them of their continuing preservation duty.

The search parameters will vary from case to case, but courts generally believe these basic procedures should be employed by careful and conscientious lawyers in every case.

TAKEAWAY: (1) watch for triggers; (2) take immediate action to implement the litigation hold; (3) communicate directly with the client (and the client’s employees) regarding litigation hold expectations and compliance; (4) get familiarized with the client’s data structure; (5) identify potentially relevant information; and (6) follow up with the client regarding continued compliance.

An Inadequate Privilege Log, Or Even The Failure To Serve A Privilege Log, Will Not Result In The Waiver Of Privilege And Protection Based Objections Timely Asserted In Discovery Responses

In Catalina Island Yacht Club v. Superior Court (2015) 242 Cal.App.4th 1116, the California Court of Appeal (Fourth District, Division Three), squarely addressed the question: “May a trial court find a waiver of the attorney-client privilege and work product doctrine when the objecting party submits an inadequate privilege log that fails to provide sufficient information to evaluate the merits of the objections?” The answer, “No.” Id. at 1120.

In Catalina, Defendants in the underlying matter served responses to Plaintiff’s requests for production of documents that included boilerplate objections asserting the attorney-client privilege and work product protection. Two months later, Defendants served a deficient privilege log identifying 17 “communications.” The log simply provided the date of the communication and stated it was between “counsel for Defendants and Defendants.” A few months later, Defendants served a supplemental privilege log increasing the number of withheld documents from 17 to 36, and identifying the parties to the communications which were emails. And, four months later Defendants served yet another supplemental privilege, this time significantly increasing the withheld communications from 17 to 167, and purporting to identify the parties to each email and the date. Id. at 1122.

Plaintiff filed a motion to compel seeking the production of all 167 documents identified on Defendants’ privilege log, arguing that Defendants waived the attorney-client privilege and work product protection by failing to timely serve a privilege log that provided sufficient factual information to enable Plaintiff to evaluate the merits of Defendants’ objections. The trial court agreed, and ordered Defendants to produce the 167 emails. In doing, it found that Defendants’ privilege was not untimely but failed to show that the emails were privileged or protected. Id. at 1123.

On a writ of mandate filed by Defendants, the Court of Appeal vacated the trial court’s order compelling production of the email. The Court of Appeal explained that attorney-client privilege and work product protection objections are preserved by serving timely written discovery responses asserting such objections. It is irrelevant that the objections are asserted as part of boilerplate responses, or that responding party fails to serve a timely or sufficient privilege log. Once timely asserted, a trial court may not deem the objections waived based on any deficiency in the response or privilege log. Id. at 1129.

When a party submits a deficient privilege log, a trial court may order that party to provide a further privilege log that includes the necessary information to rule on an asserted attorney-client privilege and work product protection objection, and it may impose monetary sanctions and evidence, issue, and even terminating sanctions if a responding party persists in failing to provide the court with the requested information. However, a trial court may not order that privileges are waived because of a deficient privilege log, or for even failing to serve a privilege log. Id. at 1120.

California Dramatically Expands Consumer Privacy Rights For the Entire Country

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, not just California.  It applies to a wide range of “personal information,” including personal identifiers, location, biometric data, internet browsing history, psychometric data, and inferences companies might make about the consumer.  Crucially, it applies for every California resident, which means that every internet company doing business in California will be required to comply with the new rules.

That means that companies doing business in California will either be required to update their data privacy rules to comply across the board, or establish a piecemeal solution customized by state, which would be prohibitively expensive in most instances.  After the European Union instituted the General Data Protection Regulation (“GDPR”) in 2018, many Americans saw GDPR notices even though they were out of the required jurisdictional zone, as many companies found it more efficient to simply apply the same data protection requirements system-wide.  Further, since so many internet companies are headquartered in Silicon Valley, they may be forced to undertake sweeping changes to comply with the new rules.

It also contains serious new protections for consumers.  Any company that generates revenue from targeted advertising over the internet – for example, Facebook, Instagram, or Google – must allow California residents to delete their data or bring it with them to alternative service providers.  This could also apply to internet service providers – for example, AT&T or Verizon – which sometimes collect web browsing data and sell the data for advertising purposes.  Some companies – for example, Experian or Oracle – rely entirely on data collection and its sale to third parties.  Their entire business model may now be outdated.

Further, it provides a private right of action for consumers to sue companies who wrongfully collected data, failed to delete data, or was negligent in protecting data.  Every company has a requirement to use “reasonable security policies and procedures,” and consumers can sue to enforce these obligations.  This will surely result in a slew of consumer class actions aimed at faulty data policies.

The overall effect of this law is to cut off a serious source of profits for internet companies who provide “free” services, financed through the sale of consumer data.  California consumers (who make up 12 percent of the U.S. population) will now have unprecedented control over their personal information and its use, and the right to sue to enforce compliance.  However, internet companies may find themselves spending a significant amount of time and energy to bring themselves into compliance by the 2020 deadline.

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

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.

In some instances, the temptation is to inundate an opponent with discovery demands. In other cases, the discovery abuse involves avoidance and obstruction. Samsky v. State Farm Mutual Auto. Ins. Co. falls into the latter category. And, just last week, the Second District Court of Appeal confirmed, in Samsky, that obstruction comes at a price.

These days, when you think of discovery, document demands usually come to mind first. (“Produce all emails between you and Johnny Appleseed regarding the Washington Orchard.”) But Samsky dealt with a discovery tool often overlooked: the request for admission.

Unlike other forms of discovery, which typically are used to uncover factual data that may be used to prove things at trial, the request for admission is a device intended to eliminate the need for proof in certain areas of a case. A request for admission can be used to establish the genuineness of a document (i.e., a written contract) or the truth of a fact, an opinion relating to fact, or the application of law to fact. (Code Civ. Proc., § 2033.010.) In effect, it relieves a party from the burden of gathering documents or testimony necessary to prove an issue. Therein lies the temptation—why reduce my opponent’s cost and expense by admitting something rather than forcing them to marshal all the evidence necessary to prove each detail?

The answer lies in Code of Civil Procedure section 2033.420, and Samsky confirms that section 2033.420 has teeth. Section 2033.420 requires the trial court to award a party its reasonable expenses incurred in proving an issue that the opposing party, without a reasonable basis, refused to admit. Although section 2033.420 contains a few exceptions, the Samsky court held that the burden falls on the denying party to prove that an exception applies.

In Samsky, the plaintiff’s vehicle was struck from behind by potentially underinsured drivers roughly two months apart. His insurance company, State Farm, picked up the cost of the second collision, but not the first. In discovery, the plaintiff asked State Farm to admit, among other things, that the plaintiff was not negligent in the first collision and that he suffered specific injuries as a result of the first collision. State Farm denied the requests.

In an arbitration over which the courts retained jurisdiction, the arbitrator concluded that the plaintiff had proved the truth of each of the matters that State Farm refused to admit. The trial court agreed, but erroneously placed the burden on the plaintiff to prove that the exceptions in section 2033.420 did not apply. On appeal, the Second District held that: (1) the plaintiff was entitled to recover his costs and attorneys’ fees incurred in proving the elements of his case that State Farm wrongfully refused to admit in discovery, and (2) State Farm had not carried its burden of showing that an exception applied.

The decision is particularly notable for the Court’s discussion of State Farm’s burden. State Farm argued that it had a reasonable basis to deny a request to admit that the plaintiff was not comparatively negligent because the driver in front of the plaintiff, Ms. Jensen, made a statement that suggested the plaintiff rear-ended her car before he was struck by the vehicle behind him. State Farm argued that Ms. Jensen’s statement was evidence that the plaintiff might have been at fault for part of the damage his car suffered and some portion of his injuries. The Court rejected State Farm’s argument, however, because State Farm failed to locate and produce Ms. Jensen as a witness during arbitration:

“Jensen’s out-of-court statement was inadmissible under the hearsay rule. (Evid. Code, § 1200.) For that statement to constitute a good reason to deny the RFAs, State Farm would have needed confirmation of Jensen’s availability to testify as a witness at the arbitration. … At some point, State Farm’s inability to locate Jensen rendered unreasonable its reliance on her as a basis to deny the RFAs. State Farm failed to present any evidence on the state of their efforts to locate Jensen at the time it denied the RFAs on the issue of negligence.” (Emphasis added).

As a result, State Farm not only lost the arbitration, but now also faces monetary sanctions as a result of its failure to admit key issues.

The lesson here is two-fold. First, litigants need to take requests for admission seriously and answer honestly. Obstructive behavior, such as intentionally and pedantically reading a request too narrowly in order to avoid admitting all or a portion of the request, can result in substantial monetary sanctions at trial. Second, parties need to be cognizant of the showing they must make at trial to establish their reasonable basis for denying a request. State Farm, at least in part, fell into that trap by not ensuring that the front driver, Ms. Jensen, would appear at trial. Ultimately, repeating State Farm’s mistake is no different than simply engaging in obstruction.

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

By: Ryan E. Abernethy

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. California courts have a long history of delivering rulings that attempt to narrow the scope and effect of the FAA. As one of the latest examples, the California Court of Appeal for the Fifth District held that truck drivers who complete only intrastate deliveries are exempt from the FAA because their work was part of a “continuous stream of interstate travel.”

In Nieto v. Fresno Beverage Company, Inc. (2019) 33 Cal.App.5th 274, a Fresno-based driver who delivered products for a beverage company filed a class action lawsuit against his employer alleging various wage and hour violations under California Labor Law. The employer responded by filing a petition to compel arbitration based on the written arbitration agreement the driver signed when he was hired. The employer argued that courts were required to enforce all arbitration agreements “involving” interstate commerce under the FAA, regardless of any contrary state law.

The driver argued that he was exempt from arbitration pursuant to Section 1 of the FAA, and thus should be able to maintain his class action in state court. Section 1 provides a narrow exemption from the FAA’s coverage to certain transportation workers “engaged in” foreign or interstate commerce. The employer contended that a delivery truck driver who does not personally cross state lines is, by definition, not “engaged in interstate commerce” or engaged in the movement of interstate commerce for purposes of Section 1 of the FAA, and therefore cannot qualify for the exemption.

The court sided with the driver, concluding that though the drivers’ individual deliveries were made entirely within the state of California, they were merely the final leg of a continuous journey of beverages to the employer’s warehouse from out-of-state. The Court held that “‘[i]nterstate commerce’ includes not only goods that travel across state lines but also ‘the intrastate transport of goods in the flow of interstate commerce.’” Nieto, 33 Cal.App.5th at 282-83. An actual crossing of state lines is not a necessary condition for the exemption to apply. The court cited cases like Palcko v. Airborne Express, Inc. (3d Cir. 2004) 372 F.3d 588, where the FAA exemption was applied to workers whose duties involved monitoring and directing drivers who physically delivered interstate packages, even though they weren’t driving at all.  The court therefore found the driver to be a transportation employee exempt from the FAA. Consequently, the arbitration agreement was not enforced and the case was permitted to proceed as a class action in state court.

So what’s the takeaway for California employers? Given this Court of Appeals’ interpretation of the FAA, employees who facilitate the transportation of goods from out of state—as a driver, monitor, director or otherwise—are now more likely to successfully bring class actions against their employers, whether or not they signed bilateral arbitration agreements. The minimum degree of involvement required by employees in the transportation process is likely to be the subject of future litigation. In the meantime, arbitration agreements remain enforceable against employees who are not exempt from the FAA.

The Labor and Employment attorneys at Weintraub Tobin are happy to assist in the review and drafting of employment arbitration agreements. Feel free to contact us.

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

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.

How, then, can you ensure that your company is protected against a potential – and likely imminent – ADA website accessibility claim?  The safest answer:  make certain that your company’s website complies with WCAG 2.0 (now 2.1), Level AA accessibility standards.

Web Content Accessibility Guidelines, or WCAG, are a series of standards set forth by the Web Accessibility Initiative (WAI) of the World Wide Web Consortium (W3C).  WCAG 2.0 has three levels of compliance:  1) Level A (the lowest and least strict); 2) Level AA (the middle ground); and 3) Level AAA (the highest and most strict).  While not adopted as law, these guidelines have nonetheless shaped the course of negotiations in website accessibility actions.

In 2013, the DOJ joined in the suit between the National Federation of the Blind and H&R Block.  A consent decree was entered into in which the tax company agreed to have its website meet, at a minimum, WCAG 2.0, Level AA, standards.   Similarly, in 2015, the DOJ reached a settlement with the National Museum of Crime and Punishment, in which it was agreed that the museum’s website would conform to WCAG 2.0, Level AA, standards.

Earlier, in 2010, when the DOJ announced Advance Notice of Proposed Rulemaking, 1190-AA61, it appeared as though the DOJ would revise the regulations implementing Title III of the ADA, and finally provide some much-needed guidance on website accessibility standards.  Given the consent decrees which followed, it was expected that WCAG 2.0, Level AA, compliance would become the norm.

However, the DOJ has since withdrawn the Advance Notice of Proposed Rulemaking and, therefore, the applicable legal standard for compliance is still unclear.  Nevertheless, in a letter to Congress, dated September 25, 2018, the DOJ emphasized “that the absence of a specific regulation does not serve as a basis for noncompliance with a statute’s requirements.”  This letter simultaneously confirms that website accessibility is mandated by the ADA, yet declines to provide the acceptable standards for ensuring compliance with the statute.

This apparent confusion offers no safe harbor for companies, and ADA website accessibility suits have not decreased in number.  Courts have been reluctant to dismiss cases, and almost all suits proceed to settlement.  Further, the court of public appearance makes fighting such a case particularly dangerous for the reputation of any company.

Therefore, the best course of action is avoidance – and this is best achieved by ensuring that your company’s website meets WCAG 2.0, Level AA, accessibility standards.  While not the law, previous consent decrees have established this as an acceptable guideline, and a federal court would likely be satisfied by a company’s proactive and voluntary compliance with these standards.  Further, compliance would likely deter a predatory plaintiff’s attorney from ever bringing suit.

Most importantly, though, ensuring that your company’s website meets WCAG 2.0, Level AA, accessibility standards makes good business sense.  You want to maximize your potential customer base, and providing access to all individuals, including disabled individuals, is both socially and economically prudent.  Talk to a Weintraub Tobin attorney and find out more about how our firm can help your business with its compliance needs.

No Privilege Extended to Communications With Public Relations Consultant

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, the creation and dissemination of beneficial communication points and narrative themes, the management of public perception, and the facilitation of leverage for purposes of settlement. The question raised by the engagement of outside media consultants is whether communications between the consultant, an attorney, and a client are protected from disclosure.  This issue tests the limits of the attorney-client privilege, which generally seeks to encourage full and open communication between attorneys and their clients to promote the broader public policy of the effective administration of justice.

We have seen traditionally that where a client seeks legal advice from an attorney, any communication relating to that advice is protected from disclosure by the attorney-client privilege.  In fact, the privilege has often been extended to the attorney’s third-party agents. But, this is not always the case.  In a recent case of first impression, the California Court of Appeal in Behunin v. Superior Court (2017) 9 Cal.App.5th 833 declined to extend the privilege to shield communications between a public relation consultant, the attorney, and the client. In that case, the third-party consultant was hired to create a website and disseminate damaging information about the opposing party, Charles Schwab and son, in order to generate bad publicity and encourage the Schwabs to settle the lawsuit. Instead, the Schwabs sued for defamation and sought the disclosure of all communications with the consultant. The Court held that the communications were not privileged. It concluded that the determination of whether communications among a client, his attorney, and a public relations consultant are protected by the attorney-client privilege will depend on whether the communications were confidential, and whether disclosing them to the consultant was reasonably necessary to accomplish the purpose for which the client consulted with the attorney – to provide legal advice to Behunin and represent him in the lawsuit.

The Behunin holding was recently cited as authority for the proposition that “[u]nder California law, the scope of attorney-client privilege must be construed narrowly.”   (Anderson v. Seaworld Parks & Entm’t, Inc. (January 8, 2019) 2019 WL 131841 at *4.)  Taking an even more restrictive view of the privilege than Behunin, the court in Anderson held that it is not enough that the public relations consultant weighs in on legal strategy.  According to Anderson, in order to fall within the privilege, the media consultant “must facilitate communication between the attorney and the client.”  (Id. at *9.)

Under the test articulated by Anderson, there is a serious question as to whether a public relations or media consultant can ever be considered a necessary part of the litigation team such that communications with them will be shielded from disclosure pursuant to the attorney-client privilege.  Practitioners beware. If you engage a public relations or media consultant to assist with your case, you should assume that your communications with the consultant will not be confidential and conduct yourself accordingly.

Some at the PTAB Think Textbooks Are Not Printed Publications

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, right? Well, the PTAB essentially made just that argument in Hulu, LLC v. Sound View Innovations, LLC. As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062. Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’” In response to the request, the Precedential Opinion Panel (“POP”) ordered a rehearing to address the question: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”

Specifically, the PTAB denied Hulu’s petition for IPR, arguing the submission of a textbook with the “copyright year of 1990” was insufficient to show the textbook was “publicly available” at that time. In its request for rehearing, Hulu pointed out that the PTAB’s decision conflicts with several prior decisions. For example, in other institution-stage decisions, the PTAB previously found that 1) “a copyright notice is prima facie evidence that a publication is prior art”; 2) ”a copyright notice, alone or combined with other minimal corroborating evidence, is sufficient evidence of public accessibility to meet the ‘reasonable likelihood’ threshold for institution”; 3) “a copyright notice by a well-known publisher in the United States is sufficient evidence of public accessibility”; 4) “a copyright notice should be evidence viewed in the light most favorable to a petitioner when resolving disputes regarding public accessibility at the institution stage”; and 5) “where a patent owner merely points out possible inconsistencies in petitioner’s evidence—without submitting its own evidence of a different public availability date—the petition should be instituted, and any determination as to public availability occur during the trial.”

In its review of the denial of Hulu’s IPR petition, the POP will reconsider not only whether a textbook’s copyright date is sufficient for it to qualify as a printed publication but also the broader question of what is sufficient for any type of reference to qualify as a printed publication. Given that only patents and printed publications can be used as prior art in IPR proceedings, this is an important and frequently recurring issue.

The POP was designed to address the need for rehearings when issues such as the one being raised in Hulu occur. Specifically, after learning from several years of AIA trial proceedings, including IPRs, the PTAB created the POP, which serves two main purposes: 1) to rehear certain matters and 2) to assist the Director of the United States Patent and Trademark Office (“USPTO”) in determining whether a PTAB decision should be designated as a “precedential” or “informative” decision rather than a “routine” decision.
POP review in a pending PTAB trial or appeal can only be obtained by recommendation. Generally, a recommendation for POP review will be submitted by a party to a proceeding. A “Screening Committee” considers all recommendations and then forwards its recommendation to the Director. Whether to institute POP review is within the sole discretion of the Director, and that decision cannot be appealed.

The default members of the POP include the Director, the Commissioner for Patents, and the Chief Judge. The Director, however, selects POP members and has the discretion to replace default members with the Deputy Director, the Deputy Chief Judge, or an Operational Vice Chief Judge.
When a case is sent to the POP for review, the POP will issue a decision resolving the question raised in that case. Each POP decision may be designated as “precedential,” “informative,” or “routine.” A “precedential” decision is binding on future PTAB panels. An “informative” decision is not binding but provides the PTAB’s recommended approach for the issues raised. “Routine” decisions are only binding in the specific case.

The POP provides an additional review mechanism within the USPTO with the goal of addressing certain issues before they reach the Court of Appeals for the Federal Circuit or the U.S. Supreme Court. In addition, the POP’s decisions provide a mechanism for issuing guidance to petitioners and patent owners and for providing predictability of results across different PTAB panels faced with similar issues. It will be interesting to see just how much guidance and clarification the POP provides as to the printed publication issue raised in the Hulu case. Perhaps, we will soon know whether a textbook is a printed publication!