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We’re the Government, and We’re Here to Copy – Blueport Co. v. United States

Published: July 30, 2008


The IP Law Blog

The United States Government, which created the courts and a legal system to provide an avenue to seek redress for injury, is immune from suit in that system unless the Government agrees to be sued by waiving its immunity. This is commonly known as “sovereign immunity,” and allows many lawsuits to be dismissed at the pleading stage. On July 25, 2008, the U.S. Court of Appeals for the Federal Circuit issued an opinion regarding the scope of sovereign immunity as applied in a copyright infringement case.

The Federal Government has waived its immunity for suits based on its infringing the rights of copyright owners. It is a rather limited waiver, however, and allows the Government to infringe much more freely than a private party. Last week’s Federal Circuit decision, Blueport Co., LLC v. United States, shows how easy it can be for a government employee to lose his rights to work he has created.

In Blueport, Air Force Technical Sergeant Mark Davenport was employed as a manager of the Air Force Manpower Data System, a database containing manpower profiles for the Air Force. He was also a member of the Air Force Manpower User Group, a group of manpower personnel that provided guidance on the use of the MDS. Davenport believed that the software used to run the MDS was not adequate, and set out to write his own software. The Air Force refused to train him on computer programming, so Davenport learned programming on his own, on his own time, and at his own expense.

Davenport wrote a software program – the AUMD program – to use with the MDS. He wrote it on his own time at his home computer. He brought the finished program to work and installed it on his work computer, shared it with his co-workers, and posted it on the Air Force’s website so that Air Force manpower personnel could download and use it. He modified the program based on feedback he received, and added an automatic expiration to require users to download the newest version of the AUMD program. He even gave a presentation on the AUMD program to senior Air Force manpower officers at an annual conference.

The Air Force decided it needed the AUMD program, and asked Davenport for the source code. Davenport refused to simply turn it over; it was his program, after all. The Air Force threatened him with demotion and a pay cut. Davenport responded by assigning all his rights to Blueport, who contacted the Air Force to negotiate a license agreement for the use of the AUMD program. The Air Force had other ideas, and went to SAIC to recreate the program. SAIC modified the AUMD program’s source code to extend the expiration date, which allowed Air Force personnel to continue to use the program. Davenport sued.

Common sense screams “This is not right!” Davenport wrote the program on his own, at his own expense, not using any government computers, so he should own the rights to it. The Air Force can’t just take it! That may be, but remember, it’s the Government, and since the Government makes the rules, it gets to decide which ones to play by. And in this case, it brought out the sovereign immunity rule.

Section 1498(b) of title 28, United States Code, contains the waiver of immunity for copyright infringement. As the Federal Circuit pointed out, it “grants copyright owners a right of action for copyright infringement against the United States, subject to three provisos.” First, there is no right of action where the employee “was in a position to order, influence, or induce use of the copyrighted work by the Government.” Next, there is no right of action where the employee prepared the work as part of his or her “official functions.” Finally, there is no right of action when “Government time, material, or facilities were used” in the creation.

After first deciding that these three provisos are jurisdictional limitations and not affirmative defenses, the Court of Appeals agreed that Blueport’s claim was subject to the first proviso, in that Davenport “influenced or induced” the AUMD program’s use by the Air Force. “Davenport’s position as a member of the Air Force manpower community gave him access and authority to distribute the AUMD program freely to his colleagues.” Therefore, his claim was precluded by the first proviso, and the court did not reach the other provisos. The lower court had held that all three provisos each barred Blueport’s suit. The Government’s waiver of immunity is rather limited.

Blueport also sued for violations of the Digital Millennium Copyright Act of 1998, which provides that “no person shall circumvent a technological measure that effectively controls access to a work protected under” the Copyright Act. Blueport claimed that the modification of the expiration date violated this statute. The Federal Circuit didn’t reach the merits of this claim, however. Instead, it held that the Government has not waived its sovereign immunity for claims under the DMCA, and therefore is immune from suit. The court based its opinion on finding that the term “person” in the DMCA does not include the term “sovereign.” Likewise, section 1498(b) does not include a waiver for claims under the DMCA, and a waiver of sovereign immunity must be express, not implied.

An interesting, although for Davenport unsatisfying, distinction can be drawn between this case and a case involving a “work for hire” under the Copyright Act. The copyright of a work for hire is owned by the employer, not the employee. The Government never claimed that it owned the copyright here. It just couldn’t be sued for infringing Davenport’s rights. The lesson to be learned is simple. If you are a government employee, and write a program (or book, manual, etc.) that will make your work place better or more efficient, think before you simply bring it to work and share it. You may be giving your employer a gift you didn’t intend to give.

LEGAL ALERT: New Laws for California Affecting Temporary Service Employers and Video Providers

Published: July 30, 2008


The Labor & Employment Law Blog

Download: Legal Alert. SB 940 and AB 2232 (1056069).PDF

Legal Alert: Governor Approves SB 940 and AB 2232

Anthony B. Daye, Esq.

Weintraub Genshlea Chediak

Senate Bill 940.

Effective January 1, 2009, Senate Bill 940 creates new wage and hour requirements for temporary service employers. Along with adding section 210.3 to the Labor Code, SB 940 also amends sections 203, 203.1, 204, 210, 215, 220, and 2699.5 of the Labor Code. Existing law requires that employers pay their employees twice during each calendar month. SB 940 creates a special set of requirements for temporary service employers with employees’ working week-to-week or day-to-day. Employees on week-to-week assignments are now required to be paid weekly, while employees working day-to-day must be paid daily. Further, employees assigned to clients engaged in a trade dispute must be paid daily. These new requirements do not apply to employees who are assigned to a client for more than 90 consecutive calendar days.

Because existing law imposes civil and criminal penalties for wage violations, SB 940 also creates state-mandated local programs to enforce these existing civil and criminal penalties for violations of the new temporary employee wage requirements.

Assembly Bill 2232.

The Digital Infrastructure and Video Competition Act of 2006 governs telephone corporations and video providers, such as cable companies, in the State of California. Under existing law, telephone corporations are required to perform background checks for all applicants for employment who would have access to the corporation’s network, central office, or subscriber premises.

Effective January 1, 2009, AB 2232 expands the current law to require video providers to perform the same background checks for all applicants for employment who would have access to the video provider’s network, central office, or subscriber premises. This requirement is also applicable to vendors and independent contractors working on behalf of telephone corporations and video providers.

If you have any questions about employee background checks, California wage and hour laws, or any other Labor and Employment Law issues, please feel free to contact any of the employment lawyers at Weintraub Genshlea Chediak: Lizbeth West, Charles Post, or Anthony Daye.

LAW ALERT: Brinker Decision Provides Clarity to Law Governing Meals and Rest Periods

Published: July 30, 2008

by Lizbeth (Beth) V. West
The Labor & Employment Law Blog

Download: Legal Alert. Brinker Decision Provides Guidance (1055970).PDF

NOTE: Since this article was posted, the California Supreme Court has accepted review of this case.

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The recent California Court of Appeal decision Brinker Restaurant Corporation v. Superior Court (4th Dist. July 22, 2008) not only takes the wind out of the sails of class-action plaintiff attorneys, it also provides some long awaited guidance for employers.

Summary of the Case and the Court’s Decision.

In Brinker, a group of hourly non-exempt employees brought a class action against the restaurant employer claiming that the employer failed to comply with meal and rest period obligations and also required employees to work off the clock. The employees specifically claimed that: 1) the employer’s practice of having employees take “early lunches” shortly after starting their shift and then requiring them to work another five to ten hours without receiving another meal period violated Labor Code section 512(a) and the wage orders; 2) they were not provided their rest periods between their second and fourth hour of work, and were not provided the rest period before the first meal period; and 3) they were required to work off the clock when they were clocked out for their meal periods.

The employees argued that the wage and hour violations were amenable for class treatment because the employer’s non-compliance with wage and hour requirements could be determined by time card records and the employer’s policies and practices. The trial court agreed and granted class certification. The employer petitioned for a writ of mandate to the court of appeal. The court of appeal issued an unpublished decision which went up to the California Supreme Court. The Supreme Court vacated the court of appeal’s original decision and transferred the matter back to the court of appeal for reconsideration. It was on reconsideration that the court of appeal concluded that the class certification order from the trial court was erroneous and must be vacated because the trial court failed to properly consider the elements of the employees’ claims in determining whether they are susceptible to class treatment. In discussing the elements of the employees’ claims, the court of appeal handed down the following encouraging pronouncements:

1. While employers cannot impede, discourage, or dissuade employees from taking rest periods, they need only provide, not ensure, rest periods are taken;

2. Employers need only authorize and permit rest periods every four hours or major faction thereof and they need not, where impracticable, be in the middle of each work period;

3. Employers are not required to provide a meal period for every five consecutive hours worked;

4. While employers cannot impede, discourage, or dissuade employees from taking meal periods, they need only provide them and not ensure they are taken;

5. While employers cannot coerce, require or compel employees to work off the clock, they can only be held liable for employees working off the clock if they knew or should have known they were doing so;

6. Because the rest and meal breaks need only be “made available” and not “ensured,” individual issues predominate and, [based upon the evidence presented to the trial court], they are not amenable to class treatment; and

7. Off-the-clock claims are also not amenable to class treatment as individual issues predominate on the issue of whether [Brinker] forced employees to work off the clock, whether [Brinker] changed time records, and whether [Brinker] knew or should have known employees were working off the clock.

Reaction from the Governor’s Office and the Labor Commissioner.

Immediately following the Brinker decision, Governor Schwarzenegger issued a statement applauding the decision. The Governor said expressly:

“We are pleased that the California Court of Appeal issued today a decision squarely addressing many of the central issues in dispute concerning meal and rest periods. The confusing and conflicting interpretations of the meal and rest period requirements have harmed both employees and employers. Today’s decision promotes the public interest by providing employers, employees, the courts and the labor commissioner the clarity and precedent needed to apply meal and rest period requirements consistently.” (Governor’s Statement)

Also, on July 25, 2008, the Labor Commissioner, Angela Bradstreet, along with the Deputy Chief and Chief Counsel of the Division of Labor Standards Enforcement (DLSE), issued a memo to all DLSE staff advising them of the Brinker ruling and directing them to apply the holdings in the Brinker decision to all meal and rest period cases brought before the DLSE.

Conclusion.

While the Brinker case and the Governor’s and Labor Commissioner’s reaction to the case are all good news for employers, a final word of caution is warranted. It is anticipated that the plaintiffs will petition the California Supreme Court for review of the decision. If the Supreme Court grants review, employers will have to wait and see how it rules. Nevertheless, the current state of affairs is that the rules outlined in the Brinker case will govern meal and rest period claims brought before the Labor Commissioner (DLSE) and most likely will be followed by other state courts.

For more information regarding the contents of this article or for assistance in complying with meal and rest period obligations, please feel free to contact any of the employment lawyers at Weintraub Genshlea Chediak: Lizbeth West, Charles Post, or Anthony Daye.

Third Party Trade Secret Misappropriation and the Statute of Limitations

Published: July 29, 2008

by James Kachmar
The IP Law Blog

A California appellate court was recently faced with the issue of when the statute of limitations runs on a claim for trade secret misappropriation against a third party when the plaintiff’s trade secrets are stolen and sold to that third party. On May 30, 2008, the appellate court issued its opinion in Cypress Semiconductor Corporation v. Superior Court (Silvaco Data Systems) and held that the statute of limitations on a cause of action for trade secret misappropriation begins to run when the plaintiff has reason to suspect that the third party knows or reasonably should know that the information in its possession is a trade secret. The appellate court held that the third party’s actual state of mind did not matter for purposes of the running of the statute of limitations.

Silvaco develops and licenses electronic design automation software. This software allows its customers to design their own software products. Silvaco created a software product known as SmartSpice and maintained that its source code was a trade secret.

In late 1998, a former employee working for a competitor incorporated the SmartSpice trade secrets into a product called DynaSpice. Silvaco began to suspect in 2000 that its trade secrets had been misappropriated and sued both the former employee and the competitor. However, Silvaco did not take any action to notify any of its competitor’s customers who had licensed DynaSpice for their own use.

In August 2003, Silvaco and the competitor entered into a settlement agreement and stipulated judgment. The competitor agreed to stop licensing DynaSpice and to inform its customers that the DynaSpice software contained Silvaco’s trade secrets and that they should terminate their use of DynaSpice. Cypress Semiconductor, one of the competitor’s customers, learned of the judgment in late August 2003.

After entering into the stipulated judgment, Silvaco notified the competitor’s customers that the DynaSpice program contained its trade secrets. Cypress was contacted by Silvaco in September 2003. Despite receiving this notice, Cypress allegedly continued its use of DynaSpice. In May 2004, Silvaco sued Cypress for trade secret misappropriation.

Prior to trial, Silvaco asked the court to exclude evidence related to Cypress’ statute of limitations defense. Silvaco argued that Cypress did not have knowledge of the competitor’s wrongful misappropriation of trade secrets until August 2003 when it received notice of the judgment and therefore, the statute of limitations could not have begun to run until that time. The trial court agreed with Silvaco and concluded as a matter of law that the trade secret misappropriation claim against Cypress did not accrue until August 2003. Therefore, Silvaco had filed suit within the three-year statute of limitations period.

Cypress filed a petition for writ of mandate with the appellate court to challenge the ruling on its statute of limitations defense. The appellate court reversed the trial court’s ruling and found that it was a question of fact for the jury as to when the statute of limitations began to run.

The appellate court began its analysis by considering whether the “single claim” rule contained in section 3426.6 of the California Uniform Trade Secrets Act (“CUTSA”) was applicable. The single claim rule provides that “a continuing misappropriation constitutes a single claim.” Based on this section, Cypress argued that the statute of limitations for trade secret misappropriation began to run as to all third party actions when Silvaco learned of the original misappropriation by its competitor. The appellate court noted that the single claim rule was based on the view that the interest protected by trade secret law is the contractual or confidential relationship within which trade secrets are disclosed, such as between an employer and employee. The single claim rule considers a breach of that confidence to be a single wrong. The appellate court noted that other jurisdictions viewed the interest protected by trade secret law as a “property” right and that each unauthorized use of the property gives rise to a new cause of action with its own statute of limitations.

In holding that the single claim rule did not apply, the appellate court held that “a plaintiff may have more than one claim for misappropriation, each with its own statute of limitations when more than one defendant is involved.” The court noted that although the CUTSA adopted the single claim approach for purposes of statute of limitations, it did not completely reject the property view of trade secret law. Therefore, the court held that “a cause of action for misappropriation against a third party defendant accrues with the plaintiff’s discovery of that defendant’s misappropriation. Any continuing misappropriation by that defendant constitutes a single claim.” The court noted that Silvaco did not allege that Cypress was involved in the original misappropriation. The court concluded that, under those circumstances, Silvaco had a separate claim against Cypress for misappropriation with its own limitations period.

The court then turned its attention as to when the statute of limitations began to run. Silvaco maintained that the limitations period only began when Cypress learned that it possessed Silvaco’s trade secrets in August 2003. The court rejected this argument and reasoned “it is not the law that accrual of a cause of action depends upon the existence as a matter of fact of a winning claim. Accrual does not wait ‘until a plaintiff is in a position to present evidence which will (regardless of what evidence the defense musters) establish facts which make liability a legal certainty.’” Instead, the court, relying upon prior California Supreme Court precedent, held that the statute of limitation begins to run when “a plaintiff has “reason at least to suspect a factual basis . . . the elements of a cause of action, coupled with knowledge of any remaining elements . . . .”

Cypress argued that only Silvaco’s discovery of its alleged misappropriation was pertinent to the statute of limitations analysis. Although the court partially agreed with this argument, the court noted that the defendant’s statement of mind is not irrelevant “since a cause of action for misappropriation incorporates an element of knowledge on the part of a defendant.” However, the court noted that the lower court erred in focusing upon Cypress’s actual innocent mental state prior to August 2003. The court concluded that “the proper focus for purposes of running of the statute of limitations is not upon the defendant’s actual state of mind but upon the plaintiff’s suspicions.” Thus, the court held that the statute of limitations “began to run when Silvaco had any reason to suspect that the [competitor’s] customers knew or should have known that they had acquired Silvaco’s trade secrets.”

Cypress also argued that, if Silvaco knew that its competitor’s customers had its trade secrets, it had a duty to notify the customers of its claim within the statute of limitations period. The court declined to find such a duty within the CUTSA. However, the court noted that the provisions of the CUTSA encourage prompt notice nevertheless. The court recognized that a trade secret loses its protected status if the owner does not undertake reasonable efforts to keep it secret. The court concluded that “the failure of the trade secret owner to take prompt action to protect its trade secrets or to alert good faith acquirers to the existence of its trade secret claims can serve as a defense in the event the trade secret owner eventually decides to pursue a misappropriation claim against a third party. These defenses, however, are separate from the statute of limitations defense.”

The court’s decision in the Cypress Semiconductor case emphasizes the need for any party that believes its trade secrets have been misappropriated to act promptly to identify, notify and, if necessary, file a legal action against anyone it believes has misappropriated its trade secrets. Failure to do so poses a risk that a trade secret owner may be time barred from pursuing its legal options. At the very least, it will raise a question of fact for the jury to resolve.

What is a Patentable Business Method? Federal Circuit to Decide

Published: July 24, 2008

by Audrey A. Millemann

On May 8, 2008, the Federal Circuit Court of Appeals heard oral argument in a case that may significantly change the patent landscape. The court is expected to clarify, and perhaps narrow, the test for business method patents.

The case is In re Bilski, case no. 2007-1130. The patent claims are directed to a method of hedging the costs of a commodity, specifically, a method of managing risks for consumers of commodities, such as energy, and for commodity providers. The patent application was filed in 1997 and rejected by the PTO under 35 U.S.C. §101 as nonstatutory subject matter. The applicant appealed to the Board of Patent Appeals and Interferences, who affirmed the PTO’s decision in March 2006. The Board held that the applicant’s process was an abstract idea and therefore unpatentable.

The Federal Circuit agreed to hear the case en banc. Forty amicus briefs were filed. The court granted the requests of two of them, Bank of America and Regulatory DataCorp, Inc., to appear and argue at the hearing. Bank of America argued that the court should overrule its prior decisions in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (1999), which held that business methods are patentable. Bank of America argued that these patents threaten innovation and economic efficiency. Regulatory DataCorp argued that the court should not establish a bright-line test and instead should continue to apply a broad test.

On appeal, Bilski argued that his method, which is performed by commodity providers, is a financial process that includes physical steps. The correct test for a process patent, according to Bilski, is whether the process produces “a useful, concrete, and tangible result,” based on the court’s decision in State Street Bank. Bilski contended that his process met this test because it allowed both consumers and commodity providers to protect themselves from fluctuations in price, such as occurs in the price of energy with fluctuations in the weather.

Bilski relied on State Street Bank and AT&T for the proposition that anything that falls within one of the four categories of statutory subject matter is patentable and that the only things that are not patentable are laws of nature, natural phenomenon, and abstract ideas. Bilski explained that his method is clearly not a law of nature or a natural phenomenon, and that the Board’s conclusion that it was an abstract idea is incorrect. Bilski’s method requires the steps of initiating transactions between consumers and a commodity provider; identifying market participants for the commodity; and initiating transactions between the commodity provider and the market participants. Bilski also explained that these steps cannot be done in the mind, and therefore, his method is not an abstract idea.

Bilski also argued that the Board erroneously applied the physical transformation test. As stated by the Federal Circuit in AT&T, supra, “the notion of ‘physical transformation’ can be misunderstood… it is not an invariable requirement, but merely one example of how a mathematical algorithm may bring about a useful application.” Bilski explained that his process does not use a machine, but does require physical steps. It also results in a transformation of the relationships between the parties, which, according to Bilski, satisfies the “useful, concrete, and tangible result” test.

Bilski pointed out that the Board erroneously distinguished State Street Bank and AT&T on the grounds that they include a machine implemented process. Bilski argued that “to require a process to be machine implanted is to transform every process into a machine making the ‘process’ in 35 U.S.C. §101 superfluous and meaningless.”

In its brief, the PTO argued that the Board properly found that Bilski’s claims did not utilize a machine (computer) and, therefore, did not transform any data; that the claims did not produce a “useful, concrete, and tangible result;” and that the claims covered an abstract idea because they broadly covered the idea of hedging commodity risks.

First, the PTO contended that the Supreme Court has indicated that a patentable process must transform or reduce the subject matter to a different state. “A process is a mode of treatment of certain materials to produce a given result. It is an act, or series of acts, performed upon the subject matter to be transformed or reduced to a different state or thing.” Diamond v. Diehr, 450 U.S. 175, 183 (1981).

Second, the PTO argued that the Federal Circuit has applied the “data transformation” test in determining whether computer implemented process claims are patentable. Under this test, a physical transformation is not required; intangible subject matter, such as data signals, may also satisfy this test. However, according to the PTO, the Federal Circuit has never held that non-machine implemented processes that do not transform data are patentable.

Third, the PTO stated that patentable processes must be technologically useful in order to fall within the “useful arts” requirement. “…[T]here may come a day when faced with ‘new, onrushing technologies,’ the courts may be compelled to move beyond the existing transformation test. But it would be inconsistent with the current understanding of the patent system as reserved for technological advances to expand patent eligibility to encompass non-technological inventions, such as contract schemes, dating strategies, teaching methods, and other methods, which while perhaps providing some form of benefit, do not appear to fall within the technologically useful arts.”

With respect to Bilski’s invention, the PTO emphasized that the claims did not require a machine and did not transform anything, (including data). The claims refer to two sets of transactions or contracts. Transactions or contracts have not previously been found patentable. As to Bilski’s view that his process transformed the relationships between the parties, the PTO stated that “the creation of legal obligations, however, is not the sort of transformation required by the courts in previous cases.”

Fourth, the PTO argued that Bilski’s claims constituted abstract ideas. “Because Bilski’s claim 1 is completely untethered from any sort of structure or tangible or intangible subject matter, it is directed to a disembodied concept. In other words, the claim is nothing but a disembodied abstract idea until it is instantiated in some physical way so it has to be limited to a particular, practical application of the idea.” The claims do not include any structure to perform the steps nor do they include anything that is manipulated by the steps. They do not include any details of how the steps are to be performed. Thus, according to the PTO, the claims were so broad as to cover the abstract idea itself.

Lastly, the PTO addressed the “useful, concrete and tangible result” test. The PTO argued that this test had been developed by the Federal Circuit to address process claims that were machine implemented mathematical algorithms. The test was never intended to be the general test of patentability of process claims. Just because the claim produces a useful, concrete, and tangible result, does not make it patentable. The PTO argued that this test is not applicable to Bilski’s claims because they are not machine-implemented. The PTO contended that, even if the Federal Circuit decides that the proper test is the “useful, concrete, and tangible result” test, Bilski’s claims still fail because they do not yield a consistent result.

At oral argument, the court appeared to be struggling to articulate a clear test for the patentability of business methods. It is not expected to rule for several months.

Viacom V. Youtube: Are Our Internet Privacy Rights Really In Danger?

Published: July 15, 2008


The IP Law Blog

By: Dale C. Campbell and Serena Crouch, Third Year Law Student at McGeorge School of Law

Internet users and privacy advocates across the nation fear they are losing the continuing battle to protect internet privacy rights. A court decision in a lawsuit between Viacom and YouTube.com is the most recent battlefield regarding data likely to provide the video viewing habits of millions around the world.

In March 2007, Viacom sued YouTube and Google, Inc. in the United States District Court, Southern District of New York, seeking at least $1 billion in damages for alleged copyright infringement. Viacom claims that YouTube built its business by willfully offering Viacom’s copyright protected material such as episodes of “The Daily Show with Jon Stewart” and the cartoon “SpongeBob SquarePants.” Viacom claims that neither YouTube nor its users are licensed to upload its material in the manner it is being used.

Viacom recently sought a court order requiring YouTube to produce various documents, one of which was YouTube’s Logging database. Each time a video is watched, the Logging database records the login ID of the viewer, the IP address of the computer being used, and the time it was watched. Viacom requested this information to prove that Viacom’s protected videos are being watched in a higher proportion than the non-protected videos on YouTube. With this information, Viacom hopes to prove that YouTube is gaining a financial benefit, one prong necessary to prove YouTube is vicariously liable for its users’ infringement of Viacom’s copyrighted material. Viacom also hopes the information can be used to bar YouTube’s defense that its website is capable of substantial non-infringing uses.

YouTube opposed Viacom’s request, claiming the request was unduly burdensome because it would be expensive and time-consuming for YouTube to determine which information in the database is privileged or work product material. However, the Court rejected that argument, holding that YouTube failed to rebut Viacom’s argument that the content of the database does not need to be viewed for privileged information because it simply records the number of times each video was viewed by members of the public. The Court also ruled that production of the database would not be unduly burdensome because the contents, while containing twelve terabytes of information, could be copied onto a few over-the-counter hard drives. Therefore, the burden on YouTube did not outweigh Viacom’s need for the information.

YouTube made a second argument that disclosure of the information violated the rights of third parties because the contents of the database would disclose the viewing habits of its users. YouTube, however, did not provide independent evidence concerning how the database could be used to identify specific users. In response, Viacom argued that the login ID of YouTube’s users is an anonymous pseudonym that users create themselves and could not identify any specific individual without more information. Viacom even cited Google’s own representations on its website that, “[i]n most cases, an IP address without additional information cannot [identify its user].” As a result, the Court found YouTube’s concern regarding privacy rights was speculative and did not outweigh Viacom’s need for the information.

The Court also noted in passing that YouTube had cited the Video Privacy Protection Act (VPPA), which prohibits videotape service providers from disclosing personal information of its customers. However, the Court paid little attention to the law and, in fact, only mentioned it in a single footnote. While some have argued that the Court ignored the VPPA because it narrowly interpreted the statute to apply only to videotape cassette service providers, it seems that even a broad interpretation to encompass videos on the internet would still not have benefited YouTube since YouTube failed to establish that the Logging database actually contained personal information of the viewers.

Internet privacy advocates, such as Electronic Frontier Foundation, argue that this ruling is a “set-back to privacy rights.” The opinion of the Court, however, does not appear to overrule the VPPA nor does it appear to set a new legal precedent for future cases.

For any disclosure of information to fall under the VPPA, the provider must disclose personally identifiable information of its customers. The Court’s ruling is based on a finding that YouTube and Google failed to meets its burden of proving that YouTube’s Logging database contains any personally identifiable information.

Privacy advocates are properly concerned that an IP address is the first step needed to identify a specific person. Once an IP address is obtained, a computer expert can determine the internet service provider and then subpoena the internet service provider to obtain the name of the person assigned the specific IP address. Also, Electronic Frontier Foundation has made the argument that a user’s login ID can identify a specific person if the creator, for example, decides to use their name as their login ID.

While all these arguments are correct, YouTube and Google failed to make these arguments in opposition to Viacom’s request for production of its Logging database. In fact, YouTube failed to refute Viacom’s argument that a user’s login ID is anonymous and, without more information, cannot identify a specific person. YouTube also failed to provide expert information that an IP address in some cases cannot identify a person, while in other cases, with a few simple steps, can be used to identify a specific person.

The Court was mindful of third parties’ rights to privacy, but found, in this case, that the Logging database did not contain such information. The Court never stated that personally identifiable information should not be protected nor did it overrule the VPPA. It simply stated, in its brief discussion, that YouTube and Google failed to prove that their Logging database contains personally identifiable information.

Our internet privacy rights have not been fully eroded . . . yet. Individuals should not fear the possibility of companies suing them individually by using this ruling to obtain their personal information and viewing habits. The Court’s ruling is based on the type of information in YouTube’s Logging database and the arguments (or lack thereof) presented by both sides. Individuals and privacy advocates should not critique the Court for granting Viacom’s motion, rather advocates should be concerned that YouTube and Google did not make a convincing argument that the information stored in their Logging database contains personally identifiable information. The Logging database is being produced because YouTube and Google failed to meet its burden, not because the Court has cut new ground in reducing privacy rights or overruled the VPPA.

Internet Search Adwords: Are Your Trademarks Protected?

Published: July 9, 2008

by Dale C. Campbell
The IP Law Blog

Search engine websites sell keywords as a component of their advertising programs. By purchasing an advertising keyword, a business’s advertisement will appear next to the search results whenever a person enters the advertising keyword as a search term. Trademark questions arise whenever a competitor purchases an advertisement keyword that is confusingly similar to the protected mark of another competitor, thereby causing its advertisement to pop up next to the search results.

The Northern District Court recently addressed this issue in Storus Corp. v. Aroa Marketing (2008) WL 449835 (N.D. Cal.). Storus sells a money clip under the mark “Smart Money Clip.” Defendant Aroa also sells money clips in addition to other luxury personal items. Aroa purchased the advertisement keyword “smart money clip” offered by Google as part of its internet advertising program known as “AdWords.” By typing “smart money clip” in Google’s search engine, Aroa’s advertisement would appear to the right of all other search results. Aroa’s advertisement appeared as:

“Smart money clip

www.steinhouseonline.com Elegant Steinhouse accessories. Perfect to add to any collection.

Storus sued, claiming that Aroa had used a mark that was confusingly similar to Storus’s valid, protectable trademark. Storus claimed that Aroa’s use of its mark created “initial interest confusion.”

“Initial interest confusion occurs when the defendant uses the plaintiff’s trademark in a manner calculated to capture initial customer attention, even though no actual sale was finally completed as a result of the confusion.” (Intrastellar Starship Services Ltd. v. Epix, Inc., 304 F.3d 936, 941 (9th Cir. 2002).) Initial interest confusion does not mean that a customer purchases one product, believing that they are actually purchasing the product of another. This is known as “source confusion.” Rather, initial interest confusion occurs when a defendant uses a plaintiff’s mark to divert people looking for the plaintiff’s product to the defendant’s website, thereby inappropriately benefiting from the goodwill plaintiff had established in its mark. (See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1058 (9th Cir. 1999).)

In Storus, the Northern District Court found, without discussion, that Aroa had “used” plaintiff’s mark and focused its analysis on whether there was a likelihood of confusion by utilizing the eight Sleekcraft factors. (See AMF, Inc. v. Sleekcraft, 599 F.2d 341, 348-49 (9th Cir. 1979).) However, in the context of infringing use on the internet, the Court first evaluates what has been termed the “internet trinity”: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) the parties’ simultaneous use of the Web as a marketing channel. If the “internet trinity” analysis suggests confusion, the burden shifts to the defendant to prove that the remaining Sleekcraft factors “weigh strongly against the likelihood of confusion.” (See Perfumebay.com v. eBay, Inc., 506 F.3d 1165, 1174-75 (Fed. Cir. 2007).)

The Storus court found a likelihood of confusion after evaluating the internet trinity. The Court also found that defendant had failed to present any evidence concerning a lack of actual initial interest confusion and failed to present any evidence weighing against the likelihood of confusion.

However, the Court came to a different conclusion with respect to the second defendant sued by Storus – SkyMall. Storus contended that SkyMall’s web page infringed its trademark because when a customer typed in the phrase “smart money clip,” the customer was directed to a page showing the Aroa money clip. However, the Court found a lack of factual evidence that SkyMall actually “used” the mark “smart money clip.” The evidence presented to the Court established that the reason the customer was directed to the Aroa money clip was because the search mark phrase “smart money clip” also included the phrase “money clip.” To prevail at trial, Storus will have to prove that SkyMall’s search engine directs a customer searching for “smart money clip” to a page in SkyMall’s electronic catalog that contains the entire phrase “smart money clip.” The evidence presented was insufficient to draw that conclusion at summary judgment.

The findings in Storus are consistent with prior Ninth Circuit opinions prohibiting a defendant from using a plaintiff’s mark in “metatags” by causing initial customer confusion. Although a customer immediately notices upon entering the website that it is not the website of the trademark holder and, therefore, there is no actual source confusion, the misdirection of the user as a result of the embedded metatags violates the initial confusion doctrine.

However, at least one other circuit court comes to a different conclusion. The Second Circuit Court of Appeals that the use of protected marks in metatags does not infringe another’s trademark. The Second Circuit, rather than focusing on the element of confusion, instead focuses on whether a defendant “uses” a mark in commerce by employing hidden metatags. Courts in the Second Circuit have consistently held that there is no trademark “use” if the mark is not placed on any product, good, or service or where the mark is not used in a way that would indicate source or origin. (See 1-800 Contracts, 14 F.3d 400 and FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F.2d 545, 550 (E.D.N.Y. 2007).) The Second Circuit Court has criticized the Ninth Circuit, accusing it of jumping to the “likelihood of confusion” prong without first properly analyzing whether the mark is “used in commerce.”

Defendants who find themselves appearing in courts in the Ninth Circuit need to focus on the “use” element of trademark infringement and encourage the court to heed the viewpoints set forth by Circuit Judge Berzone in his concurring opinion in Playboy Enterprises, Inc. v. Netscape Communications, 354 F.3d 1020, 1034 (C.A. 9 2004). Judge Berzon argues that the “initial interest confusion” doctrine should not be expanded into situations where a party is never confused. For example, Judge Berzon felt that a different result would occur if an internet advertisement, such as in Storus, clearly stated that the ad is not for the trademark owner’s product. Judge Berzon analogized the situation to a department store carrying multiple brands of jeans. If a customer asked the store clerk where she can locate Levi’s jeans, no trademark violation occurs when the clerk directs the customer to the area of the store containing Levi’s jeans as well as Calvin Klein jeans. Judge Berzon cautioned that the initial interest confusion doctrine should not expand to internet advertisements where a potential customer is simply advised of alternative competitive products through advertisements that clearly do not identify themselves with the mark of another.

Court Couldn’t Give A Quack About Generic Mark

Published: June 24, 2008

by Scott M. Hervey
The IP Law Blog

The First Circuit recently decided a case that exemplifies the downfall of building a brand around merely generic terms. No matter how long the mark owner may use a mark in commerce, it is going to be next to impossible to prevent competitors from using those generic components, even where the use is part of the competitor’s trademark.

Boston Duck Tours operated a sightseeing tour operation of the Boston area since 1994 and used renovated WWII amphibious vehicles commonly referred to as “ducks.” In 2001, Super Duck Tours began operation of a sightseeing land and water tour. Super Duck Tours originally operated its business solely in Portland, Maine. In 2007, Super Duck Tours expanded its operation and began to offer tours in certain parts of Boston not serviced by Boston Duck Tours.

In July 2008, Boston Duck Tours sued Super Duck Tours for trademark infringement. The district court granted Boston Duck’s motion for a preliminary injunction, finding that the term “duck tours” was non-generic for amphibious sightseeing tours in the Boston area and capable of protection. Super Duck Tours promptly appealed the district court’s decision, arguing that the phrase “duck tours” is generic for amphibious sightseeing tour services. The First Circuit Court of Appeals agreed with Super Duck Tours that the district court places a great an emphasis on the generic “Duck Tours” language.

In reviewing basic trademark principles, the Court of Appeals noted that a mark is entitled to trademark protection if it is capable of functioning as a source identifier of goods or services. Trademark law categorizes proposed marks along a spectrum of distinctiveness, with the most distinctive marks being those that are arbitrary or fanciful and the least being those that are generic or merely descriptive. The court noted that if a brand fails to achieve distinctiveness, either inherently or through the acquisition of secondary meaning, it does not have the legal status of a trademark or service mark.

Descriptive marks are those that convey an immediate idea of the ingredients, qualities or characteristics of the goods to which they are attached. Because descriptive marks are not inherently capable of serving as source-identifiers, such marks may only be registered on the Principal Register after the owner has provided sufficient evidence to establish that the public associates the mark not only with a specific feature or quality, but also with a single commercial source.

A generic term is one that does not have capacity as a source-identifier because it does not distinguish the goods of one from those of another. Instead, it is a term that, either by definition or through common use, has come to be understood as designating a particular class of goods. Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the products that they designate.

The lower court found that the term “duck tours” was not generic in connection with the services being offered. In reaching this decision, the lower court relied exclusively on a dictionary definition of “duck,” and did not take into account other references. The Court of Appeals noted that a dictionary definition is only one of several factors that should be taken into account when determining whether a brand is generic. Two other types of evidence generally considered in determining whether a designation is generic are uses by the media and other third parties, and uses within the industry generally.

The Court of Appeals considered the above type of evidence submitted by Super Duck Tours in coming to its conclusion that the term “duck tours” is generic for amphibious sightseeing tours. The Court noted the media and third parties in general refer to amphibious sightseeing tours as “duck tours.” The Court also noted the widespread uses of “duck” and “duck tours” by other companies around the country that provide the same amphibious sight-seeing services. The Court found that this evidence indicates that when consumers hear the term “duck tours” they associate it primarily with a product – amphibious sightseeing tours – rather than a source.

What’s the effect of having a generic designation incorporated into a mark? While the presence of a generic term or phrase in a full mark will not render the entire mark invalid, its presence does affect the analysis of whether a competitor’s mark containing the same component is likely to create confusion. Here, the Court of Appeals noted that Boston Duck Tours was a mark comprised of the generic “duck tours” phrase entitled to no trademark protection at all, coupled with “Boston,” a term that is generally entitled to little protection because it is geographically descriptive. (Because of the long running use of the Boston Duck Tours mark, the court noted that the mark as a whole acquired secondary meaning and is reasonably strong overall as an identifier of its services. Nonetheless, the Court made it clear that the generic part of the mark – the phrase “duck tour” – is entitled to no trademark protection at all.)

The Court of Appeals found that in granting the injunction, the lower court placed undue emphasis on the shared use of “duck tours” in the two marks. In determining whether the marks conflict, the lower court should have focused its inquiry on the non-generic words which comprise the remainder of the marks, which in this case are “Boston” and “Super.”

The lesson in this case for mark owners is, if you want a strong brand, resist incorporating terms that are generic into a brand. (I would even caution against incorporating terms that are extremely descriptive as the line between being extremely descriptive and generic can be a very thin one.) No mater how long you use it and no matter how much advertising money you put behind it, you will never be able to prevent a competitor from using it.

Lack of Enablement – A Stronger Tool for Invalidity

Published: June 4, 2008

by Audrey A. Millemann
The IP Law Blog

One of the requirements of a valid patent is enablement. As set forth in 35 U.S.C. section 112, paragraph 1, a patent’s specification must contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Court of Appeals for the Federal Circuit has explained that the enablement requirement is met “when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d. 1234, 1244 (Fed. Cir. 2003). Although anticipation or obviousness based on the prior art is a more frequently asserted basis for invalidating a patent in patent infringement litigation, the Federal Circuit’s decision in Sitrick v. Dreamworks, LLC, 516 F.3d. 993 (Feb. 1, 2008) suggests that lack of enablement may be becoming a far more powerful tool.

In Sitrick, the plaintiff owned two patents that covered technology that allows integration of a user’s audio signals or visual image into a preexisting video game or movie. The specifications of the two patents described the invention as it was used in video games, but the claims covered both video games and movies. Dreamworks produced DVDs that included a product that permitted users to add their own voice to movies. Sitrick sued Dreamworks for infringement of both patents.

During claim construction, Dreamworks argued that the claims should be narrowed to cover only video games. The plaintiff opposed that construction, and the court construed the claims as plaintiff requested, to cover both video games and movies.

Dreamworks moved for summary judgment, including for invalidity for lack of enablement. The District Court for the Central District of California granted the motion, finding all of the challenged claims invalid for lack of enablement with respect to movies.

The Court of Appeals affirmed. The court explained that in order to satisfy the enablement requirement, “the full scope of the claimed invention must be enabled.” Sitrick, supra, at 999. The court explained its rationale:

“Enabling the full scope of each claim is ‘part of the quid pro quo of the patent bargain.’ AK Steel, supra, 344 F.3d. at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. ‘The scope of the claims must be less than or equal to the scope of the enablement’ to ‘ensure that the public knowledge is enriched by the specification to a degree at least commensurate with the scope of the claims.’[citation omitted].”

The court found that because the district court had construed the claims to cover both video games and movies (as the plaintiff had argued), the patents had to enable both embodiments. The specifications described the detailed steps required for integrating a visual image into a video game, but these steps were not usable for the same process in movies and the patents did not describe how to integrate an image into a movie.

The court stated that it was irrelevant if the patents were enabled for video games – the enablement requirement was not met unless the patents were enabled for both embodiments of the invention, video games and movies. Sitrick, supra, at 1000.

The court held that Dreamworks’ evidence, consisting of the specifications of the two patents and expert testimony, was clear and convincing evidence of lack of enablement. The patents did not teach how to use, in movies, the technology described for using the invention in video games. In addition, defendants’ experts testified that a person skilled in the art could not use the specifications to utilize the invention in movies because video games and movies differed in many respects.

In an earlier case, Automotive Technologies International, Inc. v. BMW of North America, Inc. 501 F.3d. 1274 (Fed. Cir. 2007), the court reached the same conclusion. In that case, the plaintiff’s patent covered side impact sensors used in airbags. The patent’s specification described mechanical sensors in detail, but also mentioned electronic sensors, and the claims covered both types of sensors. The district court granted a defendant’s motion for summary judgment on invalidity on the grounds that the full scope of the claims covered electronic sensors as well as mechanical sensors, but the specification did not teach a person skilled in the art how to make and use the invention with an electronic sensor.

On appeal, the plaintiff argued that because one embodiment, mechanical sensors, was enabled, the claims were enabled. The Court of Appeals held to the contrary, at 1285:

“…[T]he claim construction of the relevant claim limitation resulted in the scope of the claims including both mechanical and electronic side impact sensors. Disclosure of only mechanical side impact sensors does not permit one skilled in the art to make and use the invention as broadly as it was claimed, which includes electronic side impact sensors. Electronic side impact sensors are not just another known species of a genus consisting of sensors, but are a distinctly different sensor compared with the well-enabled mechanical side impact sensor that is fully discussed in the specification. Thus, in order to fulfill the enablement requirement, the specification must enable the full scope of the claims that includes both electronic and mechanical side impact sensors, which the specification fails to do.”

The plaintiff also argued that a person skilled in the art would be able to figure out how to use an electronic sensor in the invention. The court disagreed. “‘It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’ Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.” Id. at 1283. The court explained that “when there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required.” Id. at 1284.

Thus in both Strick and Automotive Technologies, the plaintiffs had sought and obtained a broad claim construction, but had lost the case on summary judgment due to their failure to show that the scope of the claims was enabled.

Some commentators have questioned whether the Federal Circuit is setting the enablement standard too high. That remains to be seen. At this point, however, it is clear that patent litigation plaintiffs should carefully consider the specification in seeking a broad claim construction, and defendants should scrutinize the broad claims to see if invalidity based on lack of enablement can be asserted.

Intentional Interference Claims and Preemption by the California Uniform Trade Secrets Act

Published: May 22, 2008

by James Kachmar
The IP Law Blog

On March 5, 2008, the United States District Court for the Northern District of California (“District Court”) in First Advantage Background Services Corp. v. PrivateEyes, Inc., (“First Advantage”) found, inter alia, that the California Uniform Trade Secrets Act, California Civil Code section 3426, et seq. (“CUTSA”) preempts common law claims for intentional interference that are based on wrongful acts amounting to misappropriation of trade secrets. The First Advantage opinion holds that claims for intentional interference that are based on wrongful acts amounting to misappropriation of trade secrets may be preempted by CUTSA.

PrivateEyes, a California corporation who conducts background checks for employers, entered into an agreement with First Advantage’s predecessor, whose duties First Advantage assumed. First Advantage agreed not to use confidential information received from PrivateEyes to solicit business from vendors with whom PrivateEyes was in contract. First Advantage solicited business despite the agreement not to, and also disclosed PrivateEyes’ confidential and proprietary information to the same vendor. After First Advantage sued PrivateEyes alleging a number of claims related to their agreement, PrivateEyes filed a counterclaim asserting various causes of action. First Advantage filed a motion to dismiss some causes of action found in PrivateEyes’ counterclaim. The District Court granted First Advantage’s motion in part, allowing PrivateEyes leave to amend some of the claims, which PrivateEyes did when it filed its First Amended Counterclaim. Thereafter, the District Court entertained First Advantage’s motion to dismiss.

The District Court began its discussion by addressing First Advantage’s motion to dismiss PrivateEyes’ fifth cause of action: intentional interference with prospective economic advantage. Citing Korea Supply Co. v. Lockheed Martin Corp., the District Court noted that PrivateEyes would need to satisfy the following elements in order to prevail: “(1) an economic relationship between the plaintiff and some third party, with the probability of future economic benefit to the plaintiff; (2) the defendant’s knowledge of the relationship; (3) intentional acts on the part of the defendant designed to disrupt the relationship; (4) actual disruption of the relationship; and (5) economic harm to the plaintiff proximately caused by the acts of the defendant.”

In dismissing PrivateEyes’ intentional interference claim in PrivateEyes’ initial counterclaim, the District Court found that the intentional interference claim failed to “allege an independently wrongful act outside a simple breach of contract,” a necessary requirement to satisfy the intentional interference claim’s third element. To survive a motion to dismiss, PrivateEyes would have to “plead and prove that the defendant’s acts are wrongful apart from the interference itself.” An independently wrongful act is one that “is unlawful, that is, if it is proscribed by some constitutional, statutory, regulatory, common law, or other determinable legal standard.” PrivateEyes’ amended counterclaim alleged three specific independently wrongful acts in an attempt to satisfy the third element of the intentional interference claim: misappropriation of trade secrets, breach of confidence, and trade libel.

PrivateEyes alleged that First Advantage misappropriated trade secrets in violation of CUTSA because it improperly disclosed PrivateEyes’ confidential information, including PrivateEyes’ profit margins. First Advantage argued, however, that CUTSA preempted PrivateEyes’ intentional interference claim because CUTSA preempts any common law claim based on conduct which could support a trade secret claim. Relying on Reeves v. Hanlon, a California Supreme Court case, PrivateEyes argued that trade secrets misappropriation can form the basis of an intentional interference claim.

In Reeves, the court found the defendants “violated CUTSA for stealing a confidential client list, and found to have committed intentional interference based on wrongful acts including destruction of the plaintiffs’ computer files, misappropriation of confidential information, and improper solicitation of plaintiffs’ clients.” The District Court disagreed with PrivateEyes’ reading of Reeves. Specifically, the District Court stated that although Reeves discussed misappropriation in its analysis of the intentional interference claim, that discussion in and of itself did not “foreclose preemption” for a number of reasons. First, the District Court noted that the defendant in Reeves had not raised the issue of preemption. This was important because in San Jose Constr., Inc. v. S.B.C.C., Inc., the appellate court refused to rule on CUTSA preemption because the issue of preemption had not been raised below. Second, Reeves is distinguishable as it was specifically limited to whether an employer could bring an intentional interference claim against a competitor that hired the employer’s former at-will employees. Lastly, because there was no dispute as to the wrongful acts beyond misappropriation, the preemption analysis would have had no impact on the court’s decision. The District Court recognized that in Cadence Design Sys., Inc. v. Avant! Corp., the only other California Supreme Court decision on point, the court suggested that CUTSA preempted all common law claims based on trade secret misappropriation.

The District Court also discussed California Civil Code section 3426.7(b), which identified the three categories of cases not preempted by CUTSA. Specifically, in addition to cases based on breach of contract and criminal remedies, any claims not based on trade secret misappropriation are not preempted by CUTSA. As a result, courts have interpreted this statute to mean that all claims which are based on trade secret misappropriation are preempted by CUTSA.

Applying this rule to PrivateEyes’ allegations in their First Amended Counterclaim, the District Court recognized that PrivateEyes had specifically alleged a CUTSA violation. Because the intentional interference claim was a common law claim based on trade secret misappropriation, the District Court held that CUTSA preempted the claim.

The District Court also addressed PrivateEyes’ additional support of its intentional interference claim. Specifically, PrivateEyes alleged that First Advantage had engaged in a common law breach of confidence because it had improperly disclosed PrivateEyes’ “confidential and proprietary information to CCE in violation of its agreement to maintain the confidential nature of this information.” However, the District Court was critical of PrivateEyes’ breach of confidence claim because the language and facts used “in support of its allegation of breach of confidence are identical to those [PrivateEyes] offered in support of its misappropriation claim.” Further, the District Court noted that the only other difference between the two claims was the existence of a contract, which by itself is inadequate to avoid preemption. Thus, the District Court held that CUTSA preempted the intentional interference claim based on breach of confidence because this was “still a common law claim based on facts which would amount to the misappropriation of trade secrets.”

The District Court’s decision in the First Advantage case suggests that CUTSA will preempt any claims for intentional interference that are based on wrongful acts amounting to misappropriation of trade secrets. Although the plaintiff in First Advantage attempted to avoid preemption by CUTSA by basing its intentional interference claim on misappropriation of trade secrets and breach of confidence, the District Court followed an increasing body of authority holding that any common law claims based on trade secret misappropriation are preempted by CUTSA.