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California Business Litigation

Essential information for California business attorneys on substantive law and litigation strategies at both the federal and state levels. 

Essential information for California business attorneys on substantive law and litigation strategies at both the federal and state levels.  

    • Patent disputes: procedures and developing law
    • Unfair competition: remedies, litigation
    • Trade secrets and trademarks: governing law, litigation
    • Antitrust: basics of federal and California law, remedies
    • Copyright: sources of law, preliminary relief, defenses, trial strategies
    • Other claims: business torts, right of publicity, insurance bad faith, unlawful employment practices
    • Before litigating: client interview, costs, potential recovery, preliminary relief
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Essential information for California business attorneys on substantive law and litigation strategies at both the federal and state levels.  

    • Patent disputes: procedures and developing law
    • Unfair competition: remedies, litigation
    • Trade secrets and trademarks: governing law, litigation
    • Antitrust: basics of federal and California law, remedies
    • Copyright: sources of law, preliminary relief, defenses, trial strategies
    • Other claims: business torts, right of publicity, insurance bad faith, unlawful employment practices
    • Before litigating: client interview, costs, potential recovery, preliminary relief

1

Prelitigation Considerations

Allan Browne

Eric M. George

Marcy Railsback

  • I. INITIAL CLIENT INTERVIEW
    • A. Initial Reaction to Client 1.1
    • B. Initial Reaction to Case 1.2
    • C. Fact Analysis 1.3
    • D. Explaining Litigation Facts to Client 1.4
    • E. Advance Payment 1.5
    • F. Fee Agreements 1.6
      • 1. Hourly Rates 1.7
      • 2. Contingent Fee Agreement 1.8
      • 3. Combination Hourly and Contingent Fee Agreement 1.9
  • II. EXPENSE OF LITIGATION
    • A. Monetary Expense 1.10
      • 1. Expense of Obtaining Preliminary Relief 1.11
      • 2. Expense of Suit for Damages 1.12
    • B. Time Expense
      • 1. Time Required of Client's Employees 1.13
      • 2. Time Required of "Friendly" Third Parties 1.14
  • III. EFFECT OF LITIGATION ON CLIENT'S BUSINESS 1.15
    • A. Employee Morale 1.16
    • B. Relationships With Third Parties 1.17
    • C. Risk of Divulging Important Business Information to Competitors 1.18
    • D. Effect of Filing Complaint on Continuing Unlawful Business Acts 1.19
    • E. Alternative Preventive Approach 1.20
  • IV. POTENTIAL RECOVERY
    • A. Solvency of Defendants
      • 1. Ability to Defend 1.21
      • 2. Ability to Respond in Damages 1.22
    • B. Right to Attorney Fees 1.23
    • C. Right to Punitive or Treble Damages 1.24
  • V. POTENTIAL CROSS-COMPLAINTS
    • A. Risk That Cross-Complaint Will Be Filed 1.25
    • B. Consequences of Cross-Complaint
      • 1. Costs of Defending 1.26
      • 2. Risk of Adverse Judgment 1.27
    • C. Insurance
      • 1. Coverage of Policy 1.28
      • 2. Insurer's Duties 1.29
      • 3. Notice to Carrier 1.30
      • 4. Use of Independent Counsel 1.31
  • VI. FORUM
    • A. State Court 1.32
    • B. Federal Court 1.33
    • C. Alternative Dispute Resolution 1.34
    • D. Choice of Law Determining Forum 1.35
  • VII. DEVELOPING THE CASE
    • A. Discovery 1.36
    • B. Reliance on Employees and Third Parties 1.37
    • C. Extent of Documentation 1.38
  • VIII. IMMEDIATE APPLICATION FOR PRELIMINARY RELIEF 1.39
    • A. Attorney Time Needed for Preparation 1.40
    • B. Effect of Grant or Denial 1.41
    • C. Priority of Trial Setting 1.42
  • IX. SETTLEMENT POSSIBILITIES
    • A. Demand Letter 1.43
    • B. After Complaint Is Prepared 1.44
    • C. After Seeking Preliminary Relief 1.45

2

Availability of Preliminary Relief

Allan Browne

Eric M. George

Marcy Railsback

  • I. IMPORTANCE OF PRELIMINARY RELIEF 2.1
  • II. RELIEF IN CALIFORNIA COURTS
    • A. Statutory Authority 2.2
    • B. Decision to Seek Relief 2.3
      • 1. Facts and Statutory Criteria 2.4
      • 2. Threatened Injury 2.5
      • 3. Injunctive Relief
        • a. Mandatory Versus Prohibitory Relief 2.6
        • b. Breadth of Injunctive Order 2.7
      • 4. Bond 2.8
      • 5. Forms
        • a. Form: Complaint for Injunctive Relief 2.9
        • b. Form: Declaration Supporting Temporary Restraining Order and Preliminary Injunction 2.10
        • c. Form: Order to Show Cause and Temporary Restraining Order 2.11
        • d. Form: Notice of Motion for Preliminary Injunction 2.12
        • e. Form: Preliminary Injunction and Order for Undertaking 2.13
        • f. Form: Undertaking by Individual Sureties on Preliminary Injunction 2.14
        • g. Form: Declaration of Personal Surety's Qualifications 2.15
        • h. Form: Order Denying Preliminary Injunction 2.16
  • III. FEDERAL PROCEDURE 2.17
    • A. Consolidation of Hearing With Trial on Merits 2.18
    • B. Temporary Restraining Orders
      • 1. General Provisions 2.19
      • 2. Local Requirements
        • a. Necessity to Obtain Order to Show Cause 2.20
        • b. Obtaining Presence of Declarants 2.21
    • C. Duration of Order 2.22
    • D. Jurisdiction 2.23
    • E. Appeal 2.24
  • IV. CHECKLIST: TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION 2.25
  • V. SAMPLE FORMS FOR PRELIMINARY RELIEF IN FEDERAL COURT
    • A. Form: Ex Parte Application for Temporary Restraining Order 2.26
    • B. Form: Temporary Restraining Order and Order to Show Cause re Preliminary Injunction 2.27
    • C. Form: Order re Preliminary Injunction 2.28
    • D. Form: Table of Contents for Memorandum in Support of Motion 2.29
    • E. Form: Contents of Memorandum in Support of Motion: Summary of Plaintiff's Contentions 2.30

3

Unfair Competition

Allan Browne

Hon. Robert B. Broadbelt

Ira Bibbero

  • I. INTRODUCTION
    • A. The Unfair Competition Problem 3.1
    • B. International News Service v Associated Press 3.2
    • C. Preemption by Federal Patent and Copyright Laws: Sears-Compco Doctrine 3.3
    • D. Kewanee: Retreat From Sears-Compco 3.4
    • E. Preemption and Sears-Compco Today 3.5
      • 1. Cases Finding Preemption 3.6
      • 2. Cases Rejecting Preemption 3.7
    • F. Preemption by Federal Bankruptcy Law 3.8
  • II. BASIC CALIFORNIA STATUTES 3.9
    • A. Covenants Not to Compete
      • 1. General Rule 3.10
      • 2. Exceptions Related to Transfer of Interest in Business 3.11
        • a. Sale of Business or Shares in Corporation 3.12
        • b. Sham Sales 3.13
        • c. Partnerships 3.14
      • 3. Form Versus Substance 3.15
      • 4. Partial Restraints 3.16
      • 5. Strict Construction 3.17
      • 6. Choice of Law 3.18
      • 7. Employee's Refusal to Sign Unenforceable Covenant Not to Compete 3.19
      • 8. Third Party Liability 3.19A
    • B. Unfair Competition Law 3.20
      • 1. Definitions
        • a. Unfair Competition 3.21
        • b. Unfair Business Practice 3.21A
        • c. Fraudulent Business Practice 3.21B
        • d. Misleading Advertising 3.21C
      • 2. Who May Bring Unfair Competition Claim? 3.22
      • 3. Notice to Attorney General of Appeals Involving Unfair Competition Law 3.23
      • 4. Government Entities Cannot Be Sued for Unfair Competition 3.24
      • 5. Conduct Sufficient for Unfair Competition Claim
        • a. Single Act May Be Sufficient 3.25
        • b. What Is Unfair 3.26
        • c. Business Practice in Violation of Other Laws Gives Rise to Unfair Competition Claim 3.27
        • d. Examples of Violations of Other Laws 3.28
      • 6. Bar on Private Right of Action 3.29
      • 7. Claim May Be Brought Unless Other Laws Bar Action or Permit Conduct 3.30
      • 8. Remedies for Unfair Competition
        • a. Restitution and Disgorgement 3.31
        • b. Civil Penalties 3.32
        • c. Attorney Fees 3.33
        • d. Injunctive Relief 3.34
      • 9. Insurance Coverage for Unfair Competition Claims 3.35
      • 10. Claims Against Foreign Defendants for Acts Outside California 3.36
      • 11. Statute of Limitations 3.37
      • 12. Bus & P C §17200 Applied 3.38
    • C. Criminal Sanctions for Theft of Trade Secrets 3.39
    • D. Uniform Trade Secrets Act 3.40
    • E. Common Law Misappropriation 3.41
    • F. Consumer Affairs Act 3.42
    • G. Consumers Legal Remedies Act 3.42A
    • H. Cartwright Act 3.43
    • I. Unfair Practices Act 3.44
  • III. UNFAIR COMPETITION BY EMPLOYEES AND FORMER EMPLOYEES
    • A. General Considerations 3.45
    • B. Specific Activities
      • 1. Solicitation of Business From Former Employer's Customers 3.46
        • a. What Constitutes Solicitation 3.47
        • b. Permissible and Impermissible Solicitation 3.48
        • c. Permissible and Impermissible Solicitation: Case Examples 3.48A
      • 2. Accepting Competitive Employment 3.49
      • 3. Solicitation of Competitor's Employees 3.50
      • 4. Solicitation of Fellow Employees for Competing Company 3.51
      • 5. Organization of Competing Business 3.52
      • 6. Concealment of Competitive Plans 3.53
      • 7. Divulging Confidential Matters to Competitors on Termination of Employment 3.54
      • 8. Acquisitions During Employment 3.55
  • IV. UNFAIR COMPETITION AMONG MANUFACTURERS, AGENTS, AND DISTRIBUTORS
    • A. Termination of Distributorship or Agency 3.56
    • B. Defenses to Action for Wrongful Termination
      • 1. Contract Terms Governing Termination 3.57
      • 2. Valid Grounds for Termination 3.58
    • C. Effect of Vested Interest on Termination 3.59
    • D. Manufacturer's Conduct Giving Rise to Unfair Competition 3.60
    • E. No Duty to Renew Distributorship 3.61
    • F. Fiduciary Duty 3.62
  • V. PREVENTIVE LAW IN DRAFTING AGREEMENTS 3.63
    • A. Examples of Permissible and Impermissible Restraints 3.64
    • B. Duration of Enforcement 3.65
    • C. Specific Covenants
      • 1. Covenant Against Competitive Employment 3.66
      • 2. Covenant Not to Compete 3.67
      • 3. Consulting Contracts 3.68
      • 4. Antisolicitation Covenants 3.69
      • 5. Organizing Competitive Businesses 3.70
      • 6. Joining Former Company Employees 3.71
      • 7. Soliciting Company Employees 3.72
      • 8. Preserving Trade Secrets 3.73
      • 9. Retaining Company Materials 3.74
    • D. Precise Drafting as Prerequisite to Injunctive Relief 3.75
  • VI. IMPLIED COVENANT OF GOOD FAITH AND FAIR DEALING 3.76
  • VII. REMEDIES
    • A. Damages
      • 1. Loss of Profits 3.77
      • 2. Initial Expenses and Additional Overhead 3.78
      • 3. Diminution in Value of Goodwill 3.79
      • 4. Punitive Damages 3.80
      • 5. Attorney Fees 3.81
        • a. Attorney Fees Under "Tort of Another" Doctrine 3.82
        • b. Attorney Fees Under Principles of Equity 3.83
      • 6. Proof Problems
        • a. Rule of Certainty 3.84
        • b. Methods of Measuring Damages
          • (1) Expert Testimony 3.85
          • (2) "Before and After" and "Yardstick" Theories 3.86
    • B. Permanent Injunctive Relief
      • 1. When Granted 3.87
      • 2. Enjoining Breach of Contract Versus Enjoining Unfair Competition 3.88
      • 3. Classification of Injunctions 3.89
      • 4. Duration 3.90
  • VIII. CHECKLIST: GUIDELINES FOR PREVENTING "BUSINESS PIRACY" 3.91
  • IX. FORM: EMPLOYMENT AGREEMENT CONTAINING UNFAIR COMPETITION PROVISIONS 3.92

4

Trade Secrets

Allan Browne

Benjamin D. Scheibe

  • I. INTRODUCTION TO TRADE SECRET PROTECTION 4.1
  • II. OVERVIEW OF UNIFORM TRADE SECRETS ACT 4.2
  • III. OTHER STATUTORY PROTECTION 4.3
    • A. Defend Trade Secrets Act of 2016 4.3A
    • B. Criminal Protection 4.4
    • C. Protection Against Governmental "Taking" or Disclosure of Trade Secrets 4.5
    • D. Trade Protection 4.5A
    • E. Labor Code 4.6
    • F. Evidentiary Protection 4.7
  • IV. COMPARISON TO OTHER INTELLECTUAL PROPERTY PROTECTIONS 4.8
    • A. Trade Secrets and Copyright 4.9
      • 1. Unpublished Trade Secrets 4.10
      • 2. Published Trade Secrets 4.11
    • B. Trade Secrets and Patents
      • 1. Nonapplicability of Federal Preemption Doctrine 4.12
      • 2. Distinction Between Trade Secrets and Patents 4.13
  • V. LITIGATING TRADE SECRETS CASE 4.14
    • A. Defining the Playing Field 4.15
    • B. Pleading Considerations 4.16
    • C. Identifying Trade Secrets: Requirement of CCP §2019.210 4.17
      • 1. Split Among Federal Courts on Application of CCP §2019.210 4.17A
      • 2. Penalties for Failure to Identify Trade Secret 4.17B
      • 3. Required Specificity of Trade Secret Description 4.17C
    • D. Form: Preliminary Designation of Trade Secrets 4.18
    • E. Protective Orders 4.19
      • 1. Essential Provisions in Protective Order 4.20
      • 2. "Attorney's Eyes Only" Demands and Protective Orders 4.21
      • 3. Expert Witness Access and Protective Orders 4.22
    • F. Protecting Appellate Record 4.23
    • G. Problem of Inadvertent Disclosure 4.24
    • H. Proving Trade Secret
      • 1. What Is a Trade Secret? 4.25
        • a. No Novelty Requirement 4.26
        • b. Independent Economic Value 4.27
        • c. Information Not Generally Known 4.28
        • d. Reasonable Efforts to Maintain Secrecy 4.29
        • e. Confidentiality Agreements 4.30
      • 2. Examples of Trade Secrets
        • a. Formulas and Processes 4.31
        • b. Designs and Plans 4.32
        • c. Computer Information 4.33
        • d. "Know-How" Trade Secrets 4.34
        • e. Confidential and Operational Information 4.35
        • f. Customer Lists and Customer Information 4.36
        • g. Customer Information: Case Examples 4.36A
        • h. Social Media "Friends" and "Connections" 4.36B
    • I. Proving Misappropriation or Misuse 4.37
      • 1. Misappropriation Defined 4.38
      • 2. Acquisition by Improper Means 4.39
      • 3. Use/Misuse of Trade Secrets Lawfully Acquired 4.40
      • 4. Solicitation Versus Announcement 4.41
      • 5. Inevitable Disclosure
        • a. Definition; California Law 4.42
        • b. Law of Other Jurisdictions 4.42A
      • 6. Misappropriation Through Litigation 4.43
      • 7. Person Liable for Misuse 4.44
      • 8. Misuse of Trade Secrets: Proof Issues 4.45
    • J. Defending Trade Secret Case 4.46
      • 1. Equitable Defenses 4.47
      • 2. Statute of Limitations 4.48
        • a. Accrual 4.48A
        • b. "Discovery" Rule 4.48B
      • 3. Disclosure of Trade Secret 4.49
        • a. Publication, Sale, or Display 4.50
        • b. Disclosure by Patent or Copyright 4.51
        • c. Disclosure Required by Statute or Regulatory Body 4.52
      • 4. Standing 4.52A
      • 5. Other Defensive Strategies 4.53
      • 6. Insurance Coverage 4.54
    • K. Remedies 4.55
      • 1. Injunctive Relief 4.56
        • a. Preliminary Relief Pending Trial 4.57
        • b. Permanent Injunction 4.58
        • c. Types of Injunctions Available 4.59
          • (1) "Use" Injunction and "Production" Injunction 4.60
          • (2) Inspection Injunction 4.61
          • (3) Inevitable Disclosure Injunction 4.62
          • (4) Nonacceptance Injunction 4.63
      • 2. Royalty in Place of Injunction 4.64
      • 3. Monetary Recovery 4.65
        • a. Compensatory Damages 4.66
        • b. Reasonable Royalty in Place of Damages 4.67
        • c. Punitive Damages 4.68
        • d. Importance of Evidence to Support Any Claim for Monetary Recovery 4.69
        • e. Attorney Fees and Costs 4.70
  • VI. PREVENTION STEPS 4.71
    • A. Nondisclosure Agreements 4.72
    • B. Other Workplace Procedures 4.73
    • C. Agreements to Assign Employee Invention 4.74
    • D. Protecting Trade Secrets in Non-Trade Secret Case 4.75
  • VII. COMMON LAW MISAPPROPRIATION 4.76

5

Antitrust

Allan Browne

Peter W. Ross

Donna L. Dutcher

N. Kemba Extavour

Nick J. G. Sanchez

  • I. INTRODUCTION 5.1
  • II. SHERMAN ANTITRUST ACT §1
    • A. Elements of Offense 5.2
      • 1. Contract or Combination 5.3
      • 2. Conspiracy 5.4
        • a. Circumstantial Versus Direct Evidence of Conspiracy 5.5
        • b. Doctrine of Conscious Parallelism 5.6
        • c. Intracorporate Conspiracy 5.7
        • d. Overlapping Board Memberships 5.7A
      • 3. Copperweld Rule 5.8
      • 4. Restraint Must Be Unreasonable 5.9
      • 5. Interstate Trade or Commerce 5.10
        • a. Trade 5.11
        • b. Interstate Commerce 5.12
          • (1) "In Commerce" Test 5.13
          • (2) "Substantial Effect on Commerce" Test 5.14
          • (3) "Foreign Commerce" Test 5.15
      • 6. "Act of State" Doctrine and Antitrust Claims Against Foreign Sovereigns 5.16
      • 7. Proximate Cause 5.17
      • 8. Injury 5.18
      • 9. Injury to Business or Property 5.19
      • 10. Standing: Injury by Anything Forbidden by Antitrust Laws 5.20
      • 11. Damages 5.21
        • a. Treble Damages 5.22
        • b. Prima Facie Evidence by Government Proceeding 5.23
        • c. Measure of Damages 5.24
        • d. Increased Charges, Payments, Costs, or Expenses 5.25
        • e. Loss of Profits 5.26
    • B. Defenses to Sherman Antitrust Act §1
      • 1. Statute of Limitations 5.27
      • 2. Action Under Cartwright Act; Res Judicata 5.28
      • 3. Noerr-Pennington Doctrine 5.29
        • a. Lobbying Activity Protected by Noerr-Pennington Immunity 5.30
        • b. "Sham Exception" to Noerr-Pennington Immunity 5.31
        • c. Other Exceptions to Noerr-Pennington Immunity 5.32
        • d. Scope of Noerr-Pennington Immunity 5.33
      • 4. Equally at Fault 5.34
      • 5. Unclean Hands 5.35
      • 6. "Passing-On" 5.36
        • a. Control Exception 5.37
        • b. Cost-Plus Exception 5.38
        • c. Co-Conspirator Exception 5.39
        • d. Other Issues 5.40
      • 7. Standing to Sue 5.41
        • a. Type of Injury Alleged 5.42
        • b. Directness of Injury 5.43
        • c. Price Umbrella Theory 5.44
      • 8. Exemptions
        • a. State Action Immunity 5.45
          • (1) States 5.46
          • (2) Municipalities 5.47
          • (3) Private Parties 5.48
          • (4) Deciding Which Category 5.49
        • b. Implied Immunity Doctrine 5.50
        • c. Professional Sports 5.51
        • d. Learned Professions 5.52
        • e. Statutory Exemptions 5.53
        • f. Implied Exemption for Collective Bargaining Process 5.54
        • g. Implied Exemption for Domestic Insurers 5.55
    • C. Per Se Illegality
      • 1. Definition and Effect 5.56
      • 2. Specific Per Se Illegal Practices 5.57
      • 3. Price-Fixing Agreements 5.58
        • a. Horizontal Division of Customers or Geographical Markets 5.59
        • b. Concerted Refusals to Deal 5.60
        • c. Supplier-Customer Refusals 5.61
        • d. Supplier-Distributor Refusals 5.62
        • e. Trade Association Refusals 5.63
        • f. Group Refusals 5.64
        • g. Tying Agreements 5.65
    • D. Rule of Reason Interpretation 5.66
  • III. SHERMAN ANTITRUST ACT §2
    • A. Sherman Antitrust Act §§1–2: Basic Distinctions 5.67
    • B. Elements of Monopolization 5.68
      • 1. Monopoly Power 5.69
      • 2. Relevant Market 5.70
        • a. Product Market 5.71
        • b. Examples of Relevant Product Markets 5.72
        • c. Geographic Market 5.73
      • 3. Purposeful Acquisition or Maintenance of Monopoly Power 5.74
      • 4. Monopoly Leveraging 5.75
    • C. Defenses to Monopolization 5.76
    • D. Elements of Attempted Monopolization 5.77
      • 1. Specific Intent 5.78
      • 2. "Dangerous Probability" of Successful Monopolization 5.79
    • E. Elements of Conspiracy and Combination to Monopolize 5.80
    • F. Claims of Insurance Coverage for Antitrust Liability 5.81
    • G. Remedies 5.81A
  • IV. CLAYTON ANTITRUST ACT §3 5.82
    • A. Sherman Antitrust Act §1 and Clayton Antitrust Act §3 Compared 5.83
    • B. Common Types of Exclusive Dealing Arrangements 5.84
    • C. Elements of Clayton Act §3 Offense
      • 1. In Commerce 5.85
      • 2. Applies Only to Lease or Sale of Commodities 5.86
      • 3. Existence of Actual Exclusive Dealing Agreement 5.87
      • 4. Effect of Exclusive Dealing Agreement 5.88
        • a. Test of Quantitative Substantiality 5.89
        • b. Test of Qualitative Substantiality 5.90
      • 5. Classes of Plaintiffs 5.91
    • D. Tying Arrangements 5.92
      • 1. Elements of Tying Arrangements
        • a. Distinct Products 5.93
        • b. Sufficient Economic Power in Tying Market 5.94
        • c. Not Insubstantial Amount of Commerce 5.95
        • d. Three New Elements of Tying Arrangements 5.96
      • 2. Special Defenses to Tying Arrangements 5.97
        • a. Protection of Goodwill 5.98
        • b. Entry Into New Market 5.99
  • V. ROBINSON-PATMAN PRICE DISCRIMINATION ACT 5.100
    • A. Relationship Between Sherman and Robinson-Patman Acts 5.101
    • B. Elements of §2(a) Price Discrimination Case
      • 1. Interstate Commerce 5.102
      • 2. Discrimination in Price 5.103
      • 3. Commodities 5.104
      • 4. Contemporaneous Sales 5.105
      • 5. Sales Requirement 5.106
      • 6. Same Seller 5.107
      • 7. Different Purchasers 5.108
      • 8. Like Grade and Quality 5.109
      • 9. Injury to Competition 5.110
        • a. Primary Line Injury 5.111
        • b. Secondary Line Injury 5.112
        • c. Third Line Injury 5.113
        • d. Fourth Line Injury 5.114
      • 10. Damages 5.115
    • C. Classes of Plaintiffs 5.116
    • D. Classes of Defendants 5.117
    • E. Defenses to Price Discrimination 5.118
      • 1. Meeting Competition Defense 5.119
      • 2. Cost Justification Defense 5.120
      • 3. Changing Conditions Defense 5.121
    • F. Nonprofit Institution Exemption 5.122
      • 1. Elements of §2(c) Brokerage Fee Action 5.123
      • 2. Elements of §2(d) and (e) Promotional Allowances and Services Action 5.124
  • VI. CALIFORNIA CARTWRIGHT ACT 5.125
    • A. Preemption of Cartwright Act by Federal Law 5.126
    • B. Types of Cartwright Act Violations; Standing 5.127
      • 1. Trusts 5.128
      • 2. Contracts or Agreements in Violation of Cartwright Act 5.129
      • 3. Exclusive Dealing and Tying Arrangements 5.130
      • 4. Injury to Business or Property 5.131
      • 5. Damages [Deleted] 5.132
      • 6. Per Se Violations Versus Rule of Reason Interpretation 5.133
      • 7. Damages and Attorney Fees 5.134
    • C. Defenses
      • 1. Statute of Limitations 5.135
      • 2. Agreements to Promote Competition 5.136
      • 3. Federal Noerr-Pennington Analogy 5.137
      • 4. Professions 5.138
      • 5. State Action 5.139
      • 6. Res Judicata 5.140
      • 7. Collateral Estoppel Effect of Federal Actions on State Court Proceedings 5.141
  • VII. CALIFORNIA UNFAIR PRACTICES ACT
    • A. Legislative Goals 5.142
    • B. Relationship to §2 of Robinson-Patman Act 5.143
    • C. Elements of Locality Discrimination 5.144
    • D. Defenses to Locality Discrimination
      • 1. Good Faith Meeting Competition 5.145
      • 2. Cost Justification 5.146
      • 3. Functional Classification 5.147
    • E. Elements of Sales Below Cost 5.148
      • 1. Determination of Cost 5.149
      • 2. Definition of Sell and Give 5.150
      • 3. Definition of Article or Product 5.151
    • F. Elements of Loss Leader Sales 5.152
    • G. Elements of Secret Rebates 5.153
    • H. Vicarious Liability 5.154
    • I. General Defenses Under Unfair Practices Act 5.155
    • J. Rights and Remedies Under Unfair Practices Act
      • 1. Injunctions 5.156
      • 2. Damages 5.157
      • 3. Treble Damages and Attorney Fees 5.158
      • 4. Statutory Presumptions of Intent to Injure 5.159
    • K. Relationship to Sherman Act 5.160
    • L. Statute of Limitations 5.161
  • VIII. SAMPLE FORMS: PRIVATE FEDERAL ANTITRUST COMPLAINTS
    • A. Form: Sample Complaint; Jury Demanded 5.162
    • B. Form: Complaint; Other Allegations of Offenses 5.163
    • C. Form: Complaint; Other Allegations of Injury 5.164
    • D. Form: Pleading Related Government Action; Fraudulent Concealment 5.165

6

Trademarks

Allan Browne

Michael J. Olecki

Gregory L. Doll

  • I. PROTECTABLE MARKS AND THEIR FUNCTION
    • A. Trademarks 6.1
      • 1. Copyrights Distinguished 6.2
      • 2. Patents Distinguished 6.3
    • B. Service Marks 6.4
    • C. Collective Marks 6.5
    • D. Certification Marks 6.6
    • E. Trade Names 6.7
  • II. STATUTORY SCHEME AND COMMON LAW PROTECTION
    • A. Trademark Act of 1946 (Lanham Act) 6.8
      • 1. Infringement 6.9
      • 2. False Advertising and Unfair Competition 6.10
        • a. Scope of Lanham Act §43(a) 6.11
        • b. False Association 6.12
          • (1) Use of Likeness 6.13
          • (2) Trade Dress Infringement 6.14
        • c. False Advertising 6.15
      • 3. Dilution: The Federal Trademark Dilution Act (FTDA) and the Trademark Dilution Revision Act (TDRA) 6.16
        • a. Scope of FTDA [Deleted] 6.17
        • b. Cyber Piracy as Dilution 6.18
        • c. Retroactive Application of FTDA 6.19
      • 4. Preemption of Zoning Controls 6.20
      • 5. Stauffer Doctrine 6.21
    • B. California Trademark Law 6.22
      • 1. Infringement 6.23
      • 2. Dilution 6.24
    • C. Common Law 6.25
  • III. FEDERAL REGISTRATION OF MARK
    • A. Benefits of Registration
      • 1. Jurisdiction 6.26
      • 2. Evidence of Bona Fide Trademark Rights 6.27
      • 3. Constructive Notice 6.28
      • 4. Incontestability 6.29
      • 5. Bar to Importation of Infringing Goods 6.30
      • 6. Principal Versus Supplemental Registration Rights 6.31
    • B. Registrable Marks
      • 1. Unqualified Bars to Registration 6.32
        • a. Immoral, Deceptive, or Scandalous Matter 6.33
        • b. Official Coat of Arms or Other Insignia 6.34
        • c. Name, Portrait, or Signature 6.35
        • d. Marks That Are Likely to Cause Confusion 6.36
      • 2. Qualified Bars to Registration 6.37
        • a. Merely Descriptive Marks 6.38
        • b. Primarily Geographically Descriptive Marks 6.39
        • c. Marks That Are Primarily Merely Surnames 6.40
        • d. Use of Color as Trademark 6.41
    • C. Prerequisites for Registration
      • 1. Use of Trademarks 6.42
        • a. On Goods 6.43
        • b. On Displays Associated With Goods 6.44
      • 2. Use of Service Marks 6.45
    • D. Preregistration Searches 6.46
    • E. Registration Procedure
      • 1. Reserving Mark 6.47
      • 2. Application for Registration 6.48
      • 3. Concurrent-Use Proceedings 6.49
      • 4. Review by Examiner 6.50
      • 5. Appeal From Refusal to Register (Ex Parte)
        • a. Trademark Trial and Appeal Board 6.51
        • b. Petition to Director of United States Patent and Trademark Office 6.52
        • c. U.S. Court of Appeals for Federal Circuit 6.53
        • d. U.S. District Court 6.54
      • 6. Opposition Proceedings 6.55
      • 7. Issuance of Certificate of Registration 6.56
    • F. Postregistration Procedure
      • 1. Use of ? and TM 6.57
      • 2. Cancellation Proceedings 6.58
      • 3. Affidavit of Continuing Use 6.59
      • 4. Expiration and Renewal 6.60
  • IV. CALIFORNIA REGISTRATION PROCEDURE 6.61
  • V. INFRINGEMENT ACTIONS
    • A. Prelitigation Considerations
      • 1. Investigation 6.62
        • a. Registrations 6.63
        • b. Use of Mark 6.64
        • c. Prior Litigation 6.65
        • d. Evidence of Confusion 6.66
      • 2. Defining Objectives 6.67
      • 3. Analysis of Defenses and Counterclaims 6.68
      • 4. Decision to File Action 6.69
    • B. Action Regarding Federally Registered Mark
      • 1. Federal Jurisdiction 6.70
        • a. Lanham Act 6.71
          • (1) Federal Trademark Infringement 6.72
          • (2) Federal Unfair Competition 6.73
          • (3) Cancellation of Registration 6.74
          • (4) Damages for Wrongful Registration 6.75
        • b. Related Unfair Competition Claims 6.76
        • c. Declaratory Judgment Actions 6.77
      • 2. Personal Jurisdiction 6.78
      • 3. Venue 6.79
      • 4. Likelihood of Confusion 6.80
        • a. Multi-Factor Test 6.81
        • b. Actual Confusion 6.82
        • c. Initial Confusion 6.83
        • d. Nominative Use 6.84
        • e. Issue Preclusion 6.84A
      • 5. Injunctive Relief 6.85
      • 6. Monetary Relief 6.86
        • a. Defendant's Profits 6.87
        • b. Plaintiff's Damages 6.88
        • c. Punitive Damages 6.89
      • 7. Destruction of Infringing Articles 6.90
      • 8. Attorney Fees 6.91
      • 9. Demand for Jury Trial 6.92
      • 10. Exhibits to Complaints 6.93
    • C. Anti-Cybersquatting Consumer Protection Act (ACPA)
      • 1. Liability Under ACPA 6.94
        • a. In Personam Proceedings 6.95
        • b. In Rem Proceedings 6.96
      • 2. Remedies Available Under ACPA 6.97
      • 3. Uniform Domain Name Dispute Resolution Policy (UDRP) 6.98
      • 4. California Cyber Piracy Provisions 6.99
    • D. Action Regarding California Registered Mark
      • 1. Infringement 6.100
      • 2. Dilution 6.101
    • E. Common Law Trademark Infringement 6.102
    • F. False Designations Under Lanham Act: Non-Federally Registered Marks 6.103
    • G. "Advertising Injury" Insurance Coverage for Trademark Infringement 6.104
    • H. Settlement Agreements 6.105
    • I. Internet-Related Issues 6.106
      • 1. Federal Jurisdiction 6.107
      • 2. Personal Jurisdiction 6.108
        • a. Interactive Websites 6.109
        • b. Passive Websites 6.110
          • (1) Advertising and Solicitation on Website 6.111
          • (2) Effects Doctrine 6.112
  • VI. INJUNCTIVE RELIEF
    • A. Preliminary Injunction 6.113
      • 1. Plaintiff's Probability of Success 6.114
      • 2. Irreparable Injury 6.115
      • 3. Balance of Hardships 6.116
      • 4. Preserving Status Quo 6.117
    • B. Injunction Against Threatened Infringement 6.118
    • C. Injunctive Relief After Infringing Activity Ceases 6.119
    • D. Requiring Affirmative Steps to Avoid Confusion 6.120
    • E. Form of Injunction 6.121
      • 1. Requisite Language 6.122
      • 2. Persons Bound 6.123
    • F. Modification of Injunction 6.124
    • G. Enforcement of Injunction 6.125
  • VII. DEFENDANT'S CONTENTIONS
    • A. Procedural Objections 6.126
    • B. No Standing to Sue 6.127
    • C. Plaintiff's Abandonment of Mark 6.128
    • D. Defendant's Use Not in Interstate Commerce 6.129
    • E. Estoppel by Acquiescence 6.130
    • F. Laches 6.131
    • G. Unclean Hands 6.132
    • H. Plaintiff's Mark Is Generic 6.133
      • 1. Generic Marks 6.134
      • 2. Nongeneric Marks 6.135
    • I. Plaintiff's Mark Is Functional 6.136
      • 1. Aesthetically Functional 6.137
      • 2. Mechanically Functional 6.138
    • J. No Likelihood of Confusion 6.139
    • K. Lack of Secondary Meaning 6.140
    • L. Fair Use 6.141
    • M. Plaintiff Not Owner of Mark 6.142
    • N. Fraud in Obtaining Trademark Registration 6.143
    • O. Trademark Misuse 6.144
    • P. First Amendment Protection 6.144A
  • VIII. COUNTERCLAIMS
    • A. Cancellation of Registration
      • 1. Cancellation Procedure 6.145
      • 2. Grounds for Cancellation 6.146
    • B. Monopolization Through Use of Mark 6.147
      • 1. Settlement Agreements 6.148
      • 2. License Restrictions 6.149
      • 3. Aggressive Use of Mark 6.150
      • 4. Registration Obtained by Fraud 6.151
  • IX. TRIAL PREPARATION AND CONDUCT
    • A. Consolidation 6.152
    • B. Judge or Jury Trial 6.153
    • C. Survey Evidence 6.154
      • 1. Likelihood of Confusion 6.155
      • 2. Secondary Meaning 6.156
      • 3. Generic Marks 6.157
    • D. Summary Judgment Motion 6.158
    • E. Jury Instructions 6.159
    • F. Motions at Close of Trial 6.160
    • G. Special Verdicts and Written Interrogatories 6.161
    • H. Findings of Fact and Conclusions of Law 6.162
  • X. ENFORCEMENT OF JUDGMENT
    • A. Contempt Proceedings 6.163
    • B. Stay of Enforcement
      • 1. Trial Court 6.164
      • 2. Appellate Court 6.165

7

Copyrights

William T. Rintala

Melodie K. Larsen

Miles J. Feldman

  • I. PRELIMINARY CONSIDERATIONS 7.1
  • II. SOURCES OF COPYRIGHT LAW
    • A. Primary and Secondary Sources 7.2
    • B. 1909 Copyright Act 7.3
  • III. SUBJECT MATTER OF COPYRIGHT
    • A. Types of Work Protected Under Various Acts
      • 1. Copyright Act of 1976 7.4
      • 2. Semiconductor Chip Protection Act 7.5
      • 3. Visual Artists Rights Act 7.6
      • 4. Digital Millennium Copyright Act 7.7
      • 5. Digital Performance Right in Sound Recordings Act 7.8
      • 6. Fairness in Music Licensing Act 7.9
      • 7. Audio Home Recording Act 7.10
    • B. Duration of Copyright 7.11
    • C. Distinction Between "Expression" and "Idea" 7.12
      • 1. Computer Programs 7.13
      • 2. Literary Characters 7.14
      • 3. Literary Titles 7.15
      • 4. Sporting Events 7.16
    • D. Originality 7.17
      • 1. Designs 7.18
      • 2. Compilations of Facts 7.19
      • 3. Different Elements of Work 7.20
      • 4. Typeface Designs 7.21
    • E. Useful Articles 7.22
    • F. Compilations and Derivative Works 7.23
      • 1. Cases on Compilations and Collective Works 7.24
      • 2. Cases on Derivative Works 7.25
      • 3. Copies of Copyrighted Work 7.26
  • IV. EFFECT OF COPYRIGHT LAW ON OTHER LAWS
    • A. Preemption Effect 7.27
    • B. Preemption Effect and State Law Claims 7.28
      • 1. Claims for Unfair Competition 7.29
      • 2. Claims Based on State Trade Secret Laws 7.30
      • 3. Claims for Interference With Prospective Economic Advantage 7.31
      • 4. Claims Based on Rights of Publicity 7.32
      • 5. Contract Claims 7.33
      • 6. Fraud Claims 7.34
      • 7. Misappropriation Claims 7.35
    • C. Protection for Ideas 7.36
      • 1. Implied Contracts 7.37
        • a. Implied-in-Fact Contracts 7.38
        • b. Implied-in-Fact Contracts and Preemption 7.39
        • c. Avoiding Preemption for Ideas in Tangible Form [Deleted] 7.40
        • d. Implied-in-Law Contracts 7.41
      • 2. Breach of Confidence 7.42
        • a. Proving Breach of Confidence 7.43
        • b. When Action Arises 7.44
    • D. Protection for Literary Works 7.45
  • V. OBTAINING COPYRIGHT PROTECTION
    • A. When Copyright Protection Attaches 7.46
    • B. Copyright Notice 7.47
      • 1. Form of Notice 7.48
      • 2. Omission of Notice
        • a. Works Distributed Before March 1, 1989 7.49
        • b. Works Distributed on or After March 1, 1989 7.50
    • C. Registration 7.51
      • 1. Application for Registration 7.52
      • 2. List of Fees 7.53
      • 3. Deposit Requirements
        • a. Any Published Work 7.54
        • b. Registration Applications 7.55
  • VI. COPYRIGHT INFRINGEMENT
    • A. Ownership and Control of Copyrighted Works
      • 1. Who Owns Copyright 7.56
        • a. Works Made for Hire 7.57
        • b. Co-Authors of Movie Scripts 7.58
      • 2. Exclusive Rights of Owner 7.59
        • a. Fair Use 7.60
          • (1) Cases on Fair Use and Technology 7.61
          • (2) Cases on Fair Use and Parodies 7.62
          • (3) Cases on Fair Use in Other Commercial Contexts 7.63
        • b. Other Limitations on Exclusive Rights 7.64
      • 3. Transfer of Rights 7.65
    • B. Elements of Infringement Action 7.66
      • 1. Proving Ownership 7.67
      • 2. Proving Copying 7.68
      • 3. Substantial Similarity Test 7.69
        • a. Extrinsic Test 7.70
        • b. Intrinsic Test 7.71
    • C. De Minimis Exception 7.71A
    • D. Indirect Liability for Copyright Infringement 7.71B
  • VII. REMEDIES FOR COPYRIGHT INFRINGEMENT
    • A. Injunctions 7.72
    • B. Impounding 7.73
    • C. Actual Damages and Profits 7.74
      • 1. Indirect Profits 7.75
      • 2. Lost Profits on Noninfringed Items 7.76
      • 3. License Fees 7.77
    • D. Statutory Damages 7.78
    • E. Costs, Attorney Fees, and Prejudgment Interest 7.79
    • F. Criminal Prosecution 7.80
    • G. Statutory and Common Law Rights Similar to Statutory Copyright 7.81
  • VIII. INITIAL CLIENT INTERVIEW
    • A. Scope of Interview 7.82
    • B. Discussing Fees and Costs 7.83
    • C. Checklist: Client Interview 7.84
  • IX. INSTITUTING COPYRIGHT LITIGATION
    • A. Cease and Desist Letter
      • 1. Contents of Letter 7.85
      • 2. Purpose of Letter 7.86
      • 3. Determining Whether to Send Letter 7.87
      • 4. Form: Sample Cease and Desist Letter 7.87A
    • B. Complaint
      • 1. Form: Complaint for Copyright Infringement and Unfair Competition (Fed R Civ P Form 19) 7.88
      • 2. Form: Complaint Damage Allegations 7.89
      • 3. Exhibits to Complaint 7.90
      • 4. Verification of Complaint 7.91
      • 5. Necessary Additional Pleadings 7.92
    • C. Jurisdiction and Venue
      • 1. Jurisdiction 7.93
      • 2. Venue 7.94
    • D. Report of Copyright Action 7.95
    • E. Demand for Jury Trial 7.96
  • X. PRELIMINARY RELIEF
    • A. Application for Temporary Restraining Order (TRO) and Order to Show Cause re Preliminary Injunction
      • 1. Showing Required for Preliminary Injunction 7.97
      • 2. Showing Required for TRO 7.98
      • 3. Checklist: Obtaining TRO 7.99
      • 4. Declarations 7.100
      • 5. Bond Requirement 7.101
      • 6. Attorney's Certificate on Notice Efforts 7.102
      • 7. Memorandum in Support of Motion 7.103
    • B. Writ of Seizure 7.104
    • C. Defense Against Application for TRO and Preliminary Injunction
      • 1. Defense Against TRO
        • a. Obtaining and Reviewing Moving Papers 7.105
        • b. Need for Immediate Relief 7.106
        • c. Defenses on the Merits 7.107
        • d. Scope of Relief Requested; Need for Discovery 7.108
        • e. Alternatives to TRO 7.109
      • 2. Defense Against Preliminary Injunction
        • a. Guidelines for Defense Attorney 7.110
        • b. Checklist: Opposing Preliminary Injunction 7.111
        • c. Strategies for Argument at Hearing 7.112
        • d. Interlocutory Appeals 7.113
    • D. Negotiated Settlement 7.114
    • E. Grant or Denial of Preliminary Injunction
      • 1. Findings of Fact and Conclusions of Law 7.115
      • 2. Advising Defendant After Denial of Preliminary Relief 7.116
  • XI. DEFENSE OF COPYRIGHT ACTION 7.117
    • A. Procedural Defenses 7.118
    • B. Technical Defenses 7.119
    • C. Substantive Copyright Defenses 7.120
      • 1. Lack of Access/Independent Creation 7.121
      • 2. Lack of Ownership Due to Failure to Comply With Statutory Requirements for Works Made for Hire or Transfer of Copyright 7.122
      • 3. Lack of Ownership Due to Failure to Comply With Copyright Statute of Frauds 7.123
      • 4. License 7.124
      • 5. First Sale Doctrine 7.125
      • 6. Copyright Misuse 7.126
      • 7. Statute of Limitations 7.127
      • 8. Other Substantive Defenses 7.128
    • D. Equitable Defenses 7.129
  • XII. TRIAL OF COPYRIGHT ACTION 7.130
    • A. Trial Preparation 7.131
      • 1. Discovery
        • a. Disclosure and Meeting Requirements 7.132
        • b. Initial Discovery 7.133
        • c. Depositions 7.134
      • 2. Use of Experts 7.135
      • 3. Settlement Conference 7.136
    • B. Pretrial
      • 1. Pretrial and Disclosure Requirements 7.137
      • 2. Jury Instructions 7.138
      • 3. Exhibits 7.139
    • C. Trial
      • 1. Judge's Ground Rules 7.140
      • 2. Jury Selection 7.141
      • 3. Opening Statement 7.142
      • 4. Motions During Trial 7.143
    • D. Alternatives to Trial 7.144
    • E. Posttrial
      • 1. Entry of Judgment 7.145
      • 2. Attorney Fees and Costs 7.146
      • 3. Enforcement of Judgment 7.147
      • 4. Indemnification 7.148
      • 5. Appeal 7.149

8

Patents

Robert D. Fish

Laurence H. Pretty

  • I. SCOPE OF CHAPTER 8.1
  • II. SUBJECT MATTER PROTECTABLE BY PATENTS 8.2
    • A. Utility Patents 8.3
      • 1. Machine, Manufacture, and Composition of Matter 8.4
      • 2. Processes 8.5
      • 3. Business Methods 8.6
      • 4. Patent Term
        • a. Duration of Patent Term 8.7
        • b. Adjustment of Patent Term 8.8
        • c. Extension of Patent Term 8.9
    • B. Design Patents 8.10
    • C. Plant Patents 8.11
  • III. RIGHTS AND REMEDIES AFFORDED BY PATENT
    • A. Right to Exclude 8.12
    • B. Remedies 8.13
      • 1. Preliminary Relief
        • a. Permanent Injunction 8.14
        • b. Preliminary Injunction 8.15
          • (1) Likelihood of Success 8.16
          • (2) Irreparable Harm 8.17
          • (3) Balance of Hardships 8.18
          • (4) Public Interest 8.19
      • 2. Exclusion Under ITC Proceedings 8.20
      • 3. Damages 8.21
        • a. Lost Profits Measure of Damages
          • (1) Panduit Test for Lost Profits 8.22
            • (a) Demand for Patented Product 8.23
            • (b) Absence of Acceptable Noninfringing Substitute 8.24
            • (c) Capacity 8.25
            • (d) Quantum of Lost Profits 8.26
          • (2) Alternatives to Panduit Test 8.27
        • b. Types of Lost Profits Recoverable 8.28
          • (1) Patented Products 8.29
          • (2) Unpatented Products 8.30
          • (3) Ancillary Products 8.31
          • (4) Price Erosion 8.32
        • c. Reasonable Royalty Measure of Recovery
          • (1) Hypothetical Pre-Infringement Negotiations 8.33
            • (a) Fraction of Patentee's Lost Profits 8.34
            • (b) Fraction of Infringer's Anticipated Profit 8.35
            • (c) Reasonable Royalty Limited by Differential Cost of Using Alternative Noninfringing Technology 8.36
            • (d) Reasonable Royalty Based on Flat Fee or Milestone Payments 8.37
          • (2) Georgia-Pacific Factors 8.38
        • d. Blended Damages Award of Lost Profits and Reasonable Royalty Based on Market Share 8.39
        • e. Proving Amount of Damages
          • (1) Foundational Fact Evidence of Damages 8.40
            • (a) Sales and Marketing Witnesses 8.41
            • (b) Adverse Witnesses Employed by Infringer 8.42
            • (c) Licensing Witnesses 8.43
            • (d) Capacity Witnesses 8.44
          • (2) Use of Damages Expert 8.45
        • f. Effect of Bifurcation on Trial of Damages 8.46
        • g. Demonstrative Exhibits 8.47
        • h. Prejudgment Interest 8.48
        • i. Increased Damages and Attorney Fees 8.48A
          • (1) Willfulness 8.49
          • (2) What Degree of Knowledge Is Needed 8.50
          • (3) Judicial Discretion and Extent of Enhancement 8.51
      • 4. Award of Attorney Fees 8.52
      • 5. Time Limitations on Damages
        • a. Start and End of Patent Term 8.53
        • b. Start and End of Infringement 8.54
        • c. Six-Year Precomplaint Limitation 8.55
        • d. Limitations Imposed by Patent Marking Statute 8.56
  • IV. REQUIREMENTS FOR PATENTABILITY 8.57
    • A. Originated by Named Inventor 8.58
    • B. Claim as Defining Protected Invention 8.59
    • C. Utility 8.60
    • D. Novelty of Claimed Invention 8.61
      • 1. First-to-File System 8.61A
      • 2. Assessing Novelty Under the First-to-Invent System 8.62
      • 3. Assessing Novelty Under the First-to-File System 8.62A
        • a. Applicant's Date of Invention [Deleted] 8.63
        • b. One Year Before Application's Filing Date [Deleted] 8.64
      • 4. Types of Prior Art [Deleted] 8.65
        • a. Public Knowledge [Deleted] 8.66
        • b. Earlier Patents 8.67
        • c. Published Patent Applications [Deleted] 8.68
        • d. Printed Publication 8.69
        • e. Expanded Definition of Prior Art [Deleted] 8.69A
        • f. In Public Use 8.69B
        • g. On Sale
          • (1) Definition of On Sale 8.70
          • (2) Experimental Use Exception 8.71
        • h. Public Use in This Country [Deleted] 8.72
        • i. Otherwise Available 8.72A
        • j. Prior Invention by Another Who Has Not Abandoned, Suppressed, or Concealed It 8.73
      • 5. Finding Relevant Prior Art 8.74
    • E. Nonobviousness of Claimed Invention
      • 1. Three-Step Analysis 8.75
      • 2. Secondary Considerations 8.76
      • 3. Person of Ordinary Skill 8.77
      • 4. Nonobviousness in Design Patents 8.78
    • F. Invention Must Not Have Been Abandoned 8.79
  • V. PROCEEDINGS TO OBTAIN AND MAINTAIN PATENT
    • A. From Application to Patent Generally 8.80
      • 1. Accelerated Examination 8.80A
      • 2. Prioritized Examination 8.80B
    • B. Rejection on Prior Art and Response 8.81
    • C. Sufficiency of Disclosure: Enablement, Best Mode, Written Description 8.82
      • 1. Best Mode Description for Software Inventions 8.83
      • 2. Best Mode Description for Design Patent 8.84
      • 3. Best Mode Description for Plant Patent 8.85
    • D. Double Patenting and Terminal Disclaimers 8.86
    • E. Types of Applications and Right to Earlier Filing Date 8.87
      • 1. United States Applications 8.88
        • a. Continuation Application 8.89
        • b. Continuation-in-Part Application 8.90
        • c. Divisional Application 8.91
        • d. Provisional Application 8.92
        • e. Request for Continued Examination 8.93
      • 2. Foreign Applications 8.94
    • F. Special Proceedings in U.S. Patent and Trademark Office 8.94A
      • 1. Reissue 8.95
      • 2. Supplemental Examination 8.95A
      • 3. Ex Parte Reexamination/Review 8.95B
      • 4. Inter Partes Review (IPR) 8.95C
      • 5. Postgrant Review (PGR) 8.95D
      • 6. Covered Business Method (CBM) Review 8.95E
      • 7. Defense to Infringement Based on Prior Commercial Use 8.95F
      • 8. Derivation Proceedings 8.96
      • 9. Appeals From AIA Trial Proceedings 8.97
    • G. Maintenance Fees 8.98
    • H. Representation of Inventors Before PTO 8.99
  • VI. TRANSFER OF PATENT RIGHTS
    • A. Assignment of Patent 8.100
    • B. Licensing 8.101
      • 1. Finding Licensee 8.102
      • 2. Exclusive Versus Nonexclusive License 8.103
      • 3. Separately Licensable Nature of Patent Rights 8.104
      • 4. Label Licenses 8.105
        • a. Form: Label Notice for Patented Product 8.106
        • b. Form: Label Notice for Unpatented Product Used in Patented Process 8.107
      • 5. Royalty Provisions 8.108
      • 6. Non-Royalty Provisions 8.109
      • 7. Abrogation of Licensee Estoppel 8.110
      • 8. Other Items to Consider in Drafting License Agreement 8.111
      • 9. Avoiding License Terms That Create Patent Misuse or Antitrust Claims 8.112
  • VII. INFRINGEMENT 8.113
    • A. Steps of Infringement Analysis 8.114
    • B. Literal Infringement
      • 1. Claim Construction 8.115
      • 2. Application of Claims to Accused Product or Process 8.116
      • 3. Claims With "Means-Plus-Function" Element 8.117
    • C. Infringement Under Doctrine of Equivalents 8.118
      • 1. All Limitations Rule 8.119
      • 2. Prosecution History Estoppel 8.120
      • 3. Prior Art as Limitation on Equivalents 8.121
    • D. Indirect Infringement
      • 1. Inducement of Infringement 8.122
      • 2. Contributory Infringement 8.123
    • E. False Marking 8.123A
  • VIII. MAKING AND REACTING TO A CHARGE OF INFRINGEMENT
    • A. Adequate Investigation 8.124
    • B. Charging Infringement
      • 1. Contacting Infringer
        • a. Immediate Filing of Suit 8.125
        • b. Warning Letter 8.126
        • c. Cease and Desist Letter 8.127
        • d. Adequate Notice 8.128
      • 2. Choosing Potential Defendants 8.129
      • 3. Naming Plaintiffs 8.130
    • C. Reacting to Charge of Infringement
      • 1. Obtaining Opinion of Patent Counsel 8.131
        • a. Format and Contents of Opinion 8.132
        • b. When to Obtain Opinion 8.133
        • c. Postopinion Reliance on Opinion 8.134
      • 2. Considering "Design Around" 8.135
      • 3. Seeking License or Ceasing Production 8.136
  • IX. PATENT LITIGATION 8.137
    • A. Jurisdiction
      • 1. Patent Actions in United States District Courts 8.138
      • 2. Jurisdiction of Other Actions Involving Patents 8.139
      • 3. Jurisdiction of Patent Claims Against United States Government 8.140
      • 4. Declaratory Judgment Actions 8.141
    • B. Venue 8.142
    • C. Elements of Patentee's Case for Infringement 8.143
      • 1. Title or Standing to Assert Patent
        • a. Sole or Joint Patent Owner 8.144
        • b. Licensee or Assignee 8.145
      • 2. Infringement
        • a. Infringing Versus Noninfringing Use 8.146
        • b. Burden of Proof of Infringement 8.147
        • c. Claim Construction Procedure 8.148
        • d. Comparing Construed Patent Claims to Accused Product or Process 8.149
      • 3. Overcoming Defendant's Attack on Validity 8.150
      • 4. Damages 8.151
    • D. Complaint for Patent Infringement
      • 1. Form of Complaint 8.152
      • 2. Jury Demand 8.153
      • 3. Service of Complaint 8.154
    • E. Defendant's Case
      • 1. Initial Reaction to Complaint 8.155
      • 2. Preparation of Answer, Affirmative Defenses, and Counterclaims 8.156
      • 3. Statutory Defenses 8.157
        • a. Noninfringement 8.158
        • b. Invalidity
          • (1) Burden of Proof to Overcome Presumption of Validity 8.159
          • (2) Invalidity Based on Prior Art 8.160
        • c. Inadequate Disclosure or Claiming Under 35 USC §112 8.161
        • d. Intervening Rights Concerning Reissue, Reexamination, or Restored Patents 8.162
        • e. Prior Use Defense 8.162A
      • 4. Unenforceability Defenses 8.163
        • a. Inequitable Conduct and Unclean Hands 8.164
          • (1) Burden of Proof for Inequitable Conduct 8.165
          • (2) To Whom Duty of Disclosure Applies 8.166
          • (3) Materiality 8.167
          • (4) Intent to Deceive 8.168
          • (5) Consequences of Inequitable Conduct 8.169
        • b. Laches 8.170
        • c. Equitable Estoppel 8.171
        • d. Prosecution Laches 8.172
        • e. Patent Misuse 8.173
      • 5. Sovereign Immunity 8.173A
      • 6. Exhaustion 8.173B
      • 7. Collateral Estoppel 8.174
      • 8. Restriction on Defenses: Assignor Estoppel and Finality of Judgments 8.175
    • F. Tying Arrangements 8.175A
    • G. Motions Common in Patent Litigation
      • 1. Motions Relevant to Venue and Transfer 8.176
      • 2. Motions to Dismiss or Stay 8.177
      • 3. Motion for Preliminary Injunction 8.178
      • 4. Motions for Summary Judgment
        • a. Invalidity and Unenforceability 8.179
        • b. Noninfringement 8.180
        • c. Inequitable Conduct 8.181
      • 5. Bifurcation Motion 8.182
      • 6. Markman Motions 8.183
      • 7. In Limine Motions 8.184
    • H. Privilege and Counsel Disqualification Issues Related to Willfulness 8.185
    • I. Trial Themes, Witnesses, and Evidence Presentation
      • 1. Themes 8.186
      • 2. Special Witnesses in Patent Trial 8.187
      • 3. Evidence Presentation 8.188
    • J. Jury Instructions and Verdict Form 8.189
    • K. Appeal 8.190

9

Intellectual Property and Unfair Competition on the Internet

Hon. Robert B. Broadbelt

  • I. FOCUS OF CHAPTER 9.1
  • II. THE INTERNET 9.2
  • III. PERSONAL JURISDICTION BASED ON INTERNET USE 9.3
    • A. Traditional Tests for Personal Jurisdiction 9.4
      • 1. General Jurisdiction 9.5
      • 2. Specific Jurisdiction 9.6
    • B. Business Transactions Conducted Over the Internet 9.7
    • C. E-Mail Communications 9.8
    • D. Advertising Over the Internet 9.9
    • E. Passive Websites 9.10
    • F. Interactive Websites 9.11
    • G. Defamation and Other Intentional Torts on the Internet 9.12
    • H. Cyberpiracy
      • 1. In Rem Actions Under Anti-Cybersquatting Consumer Protection Act (ACPA) 9.13
      • 2. California Cyberpiracy Law 9.14
    • I. Other Internet Uses 9.15
    • J. Service of Process in Internet Cases 9.16
  • IV. MISAPPROPRIATION OF TRADE SECRETS OVER THE INTERNET
    • A. Using the Internet to Misappropriate Trade Secrets 9.17
    • B. Using the Internet to Destroy Trade Secrets 9.18
  • V. ACCESSING COMPUTER FILES WITHOUT AUTHORIZATION
    • A. Federal Claims
      • 1. Wiretap Act 9.19
        • a. Defenses 9.20
        • b. Remedies 9.21
      • 2. Stored Communications Act 9.22
        • a. Unauthorized Access 9.22A
        • b. Unauthorized Disclosure 9.22B
        • c. Exceptions 9.22C
        • d. Defenses 9.23
        • e. Remedies 9.24
      • 3. Computer Fraud and Abuse Act 9.24A
    • B. State Claims
      • 1. California Pen C §502 9.25
        • a. Defenses 9.26
        • b. Remedies 9.27
      • 2. California Disclosure of Corporate Security Breach Law 9.27A
      • 3. California Unfair Competition Law 9.28
      • 4. California Constitutional Right of Privacy 9.28A
  • VI. CYBERPIRACY OR CYBERSQUATTING
    • A. Relation to Domain Name; Domain Name Defined 9.29
    • B. Federal Claims
      • 1. Anti-Cybersquatting Consumer Protection Act (ACPA) 9.30
        • a. In Personam Civil Actions Under ACPA
          • (1) Elements 9.31
          • (2) Proving Bad Faith 9.32
          • (3) Defenses 9.33
          • (4) Remedies 9.34
        • b. In Rem Civil Actions Under ACPA
          • (1) When Appropriate 9.35
          • (2) Elements 9.36
          • (3) Proving Bad Faith 9.37
          • (4) Remedies 9.38
      • 2. Cyberpiracy Law Protecting Individuals
        • a. Elements 9.39
        • b. Remedies 9.40
    • C. State Claims
      • 1. California Cyberpiracy Law
        • a. Elements 9.41
        • b. Proving Bad Faith 9.42
        • c. Remedies 9.43
      • 2. California Unfair Competition Law 9.44
      • 3. California Common Law Tort of Conversion 9.44A
  • VII. IMPERSONATING ANOTHER PERSON ON THE INTERNET 9.44B
  • VIII. TRADEMARK INFRINGEMENT ON THE INTERNET
    • A. Trademark Infringement and Dilution in Domain Names 9.45
    • B. Trademark Infringement in Metatags and Source Code
      • 1. Metatags and Source Code Defined 9.46
      • 2. Liability for Using Another's Trademark in Metatags and Source Code 9.47
    • C. Other Trademark Infringement on the Internet 9.48
  • IX. COPYRIGHT INFRINGEMENT ON THE INTERNET 9.49
    • A. Direct Infringement 9.50
    • B. Contributory Infringement 9.51
    • C. Vicarious Infringement 9.51A
    • D. Pleading Requirements 9.52
    • E. Digital Millennium Copyright Act (DMCA)
      • 1. Copyright Infringement Protections for Internet Service Providers Under DMCA 9.53
      • 2. Definition of Internet Service Providers Under DMCA 9.54
      • 3. How Internet Service Providers May Qualify for Protection Under DMCA 9.55
      • 4. DMCA Remedies for Copyright Infringement
        • a. Takedown Notice 9.55A
        • b. Form: Takedown Notice for Online Copyright Infringement 9.55B
        • c. Subpoena to Identify Infringer 9.55C
  • X. UNAUTHORIZED E-MAIL TRANSMISSIONS
    • A. Unsolicited E-Mail Advertisements
      • 1. Federal Law 9.56
      • 2. State Law 9.56A
    • B. Unauthorized E-Mail 9.56B
  • XI. WEBSITE PRIVACY POLICIES 9.56C
  • XII. TORT CLAIMS FOR VIOLATION OF CALIFORNIA CONSTITUTIONAL RIGHT OF PRIVACY 9.56D
  • XIII. APPLICATION OF ATTORNEY-CLIENT PRIVILEGE TO E-MAILS 9.56E
  • XIV. COMMUNICATIONS DECENCY ACT—IMMUNITY FOR INTERNET SERVICE PROVIDERS 9.56F
    • A. Elements Required for Immunity 9.56G
    • B. Distinguishing "Interactive Computer Service" and "Information Content Provider" 9.56H
    • C. Federal Case Examples 9.56I
    • D. California Courts' Interpretation of CDA 9.56J
    • E. CDA and Other Claims 9.56K
  • XV. APPLICATION OF THE SINGLE-PUBLICATION RULE TO THE INTERNET 9.56L
  • XVI. ANTI-SLAPP MOTIONS AND WEBSITES 9.56M
  • XVII. DISCOVERY OF COMPUTER EVIDENCE
    • A. Discovery of Identity of Cybersquatters and Persons Posting Information on the Internet 9.57
    • B. Discovery of E-Mail and Instant Messaging 9.58
    • C. Discovery and Recovery of Data Stored Electronically
      • 1. California Statutory Rule: CCP §2031.280 9.59
      • 2. Provisions Under Federal Rules of Civil Procedure 9.59A
    • D. Preserving Computer Evidence 9.60
    • E. Seizure Orders 9.61
    • F. Sanctions for Despoliation of Computer Evidence 9.62
  • XVIII. AUTHENTICATING EVIDENCE FROM THE INTERNET 9.63

10

Right of Publicity

  • I. RIGHT OF PUBLICITY: ORIGINS AND DEFINITION 10.1
    • A. No Requirement of Fame 10.2
    • B. Distinguishing Right of Privacy From Right of Publicity 10.3
  • II. CALIFORNIA COMMON LAW RIGHT OF PUBLICITY 10.4
    • A. Theft of Identity Under Common Law 10.5
    • B. Lifetime Exploitation Requirement 10.6
    • C. Common Law Remedies 10.7
  • III. CALIFORNIA STATUTORY RIGHT OF PUBLICITY 10.8
    • A. Elements of Statutory Claim 10.9
    • B. Knowing Use Requirement 10.10
    • C. Statutory Remedies 10.11
  • IV. DEFENSES TO RIGHT OF PUBLICITY CLAIMS
    • A. Reporting Factual Information, News, and Matters of Public Interest 10.11A
    • B. First Amendment 10.12
      • 1. Magazine Articles 10.13
      • 2. Documentaries and Dramatized Biographies 10.14
      • 3. Advertising Catalogs 10.15
    • C. Copyright Preemption 10.16
      • 1. Name, Image, and Likeness Not Copyrightable 10.17
      • 2. Rights of Performers in Copyrighted Works 10.18
    • D. Statute of Limitations 10.19
  • V. POSTMORTEM RIGHT OF PUBLICITY 10.20
    • A. Deceased Personality Defined 10.21
    • B. Obtaining Postmortem Publicity Rights 10.22
    • C. Choice of Law Issues 10.23
  • VI. OTHER CLAIMS: FALSE ENDORSEMENT AND RIGHT OF PUBLICITY 10.24
    • A. Element of Sponsorship 10.25
    • B. Use of Internet Domain Names 10.26
  • VII. INSURANCE COVERAGE FOR RIGHT OF PUBLICITY CLAIMS 10.27
    • A. California Statutory and Common Law Claims 10.28
    • B. Lanham Act Claims 10.29

11

Business-Related Torts

John A. Sturgeon

  • I. OVERVIEW OF BUSINESS-RELATED TORTS
    • A. Scope of Chapter 11.1
    • B. Checklist: Elements of Business-Related Torts 11.2
  • II. INDUCING BREACH OF CONTRACT AND INTERFERENCE WITH PROSPECTIVE ADVANTAGE
    • A. Nature of Torts 11.3
    • B. Analysis of Specific Torts
      • 1. Inducing Breach of Contract
        • a. Elements of Cause of Action 11.4
          • (1) Existence of Valid Contract 11.5
          • (2) Knowledge and Intent 11.6
          • (3) Actual Breach of Contract 11.7
          • (4) Causation 11.8
          • (5) Actual Damages 11.9
        • b. Case Examples 11.10
      • 2. Intentional Interference With Prospective Economic Advantage
        • a. Elements of Cause of Action 11.11
          • (1) Existence of Prospective Advantage 11.12
          • (2) Knowledge and Intent 11.13
          • (3) Interference or Disruption 11.14
          • (4) Causation 11.15
          • (5) Actual Damages 11.16
        • b. Case Examples 11.17
      • 3. Negligent Interference With Prospective Economic Advantage 11.18
        • a. Conflict With Federal Product Liability Law 11.19
        • b. Conduct of Third Parties 11.20
    • C. Affirmative Defenses
      • 1. Justification 11.21
      • 2. Privilege 11.22
        • a. Competition 11.23
        • b. Confidential Relationship 11.24
        • c. Official Proceeding 11.25
        • d. Peer Review 11.26
        • e. Financial Interest 11.27
        • f. Privilege Under First Amendment 11.28
        • g. Labor Objective 11.29
      • 3. Other Defenses 11.30
    • D. Remedies 11.31
    • E. Liability of Party to Contract 11.32
    • F. Jurisdiction 11.33
  • III. INVASION OF PRIVACY
    • A. Basic Principles
      • 1. Nature of Torts 11.34
      • 2. Sources of Right of Privacy 11.35
      • 3. Balance of Interests 11.36
        • a. Public's Interest in Newsworthy Facts 11.37
        • b. State's Interest in Ascertaining Truth in Legal Proceedings 11.38
        • c. Disclosure of Government Records 11.39
      • 4. Distinguished From Other Torts 11.40
    • B. Causes of Action
      • 1. Intrusion Into Person's Seclusion 11.41
        • a. Nature of Intrusion 11.42
        • b. Objectionable Actions and Reasonable Expectations of Privacy 11.43
        • c. Special Cases: Privacy of Medical Records 11.44
      • 2. Public Disclosure of Private Facts 11.45
        • a. Forms of Disclosure 11.46
        • b. Private Versus Public Facts 11.47
        • c. Offensive to Reasonable Person 11.48
      • 3. Placing Plaintiff in False Light 11.49
        • a. Distinguished From Defamation 11.50
        • b. Offensive to Reasonable Person 11.51
        • c. Necessity of Demand for Retraction 11.52
      • 4. Exploitation of Name, Photograph, or Likeness
        • a. Common Law Cause of Action 11.53
        • b. Statutory Cause of Action 11.54
      • 5. Violations of California Invasion of Privacy Act 11.55
    • C. Limitation: Personal Right of Action 11.56
    • D. Affirmative Defenses
      • 1. Waiver or Consent
        • a. Waiver 11.57
        • b. Consent by Operation of Law 11.57A
        • c. Public Figures 11.57B
      • 2. Statute of Limitations 11.58
    • E. Remedies
      • 1. Damages 11.59
      • 2. Injunctive Relief 11.60
  • IV. INFLICTION OF EMOTIONAL DISTRESS
    • A. Intentional Infliction of Emotional Distress
      • 1. Nature of Tort 11.61
      • 2. Elements of Cause of Action 11.62
        • a. Outrageous Conduct 11.63
        • b. Intentional or Reckless Act 11.64
        • c. Severe Emotional Distress 11.65
        • d. Causation 11.66
      • 3. Affirmative Defenses
        • a. Privilege 11.67
        • b. Statute of Limitations 11.68
      • 4. Case Examples
        • a. Debt Collections 11.69
        • b. Sexual Orientation 11.70
        • c. Evictions 11.71
        • d. Business Transactions 11.72
        • e. Drug Testing 11.73
        • f. Employment Relationships 11.74
          • (1) Effect of Workers' Compensation Law on Court Actions by Employees 11.75
          • (2) Preemption by ERISA 11.76
        • g. Insurance Claims
          • (1) Improper Settlement 11.77
          • (2) Effect of Workers' Compensation Law on Court Actions by Insureds 11.78
          • (3) Insurance Coverage for Emotional and Physical Distress 11.79
      • 5. Remedies 11.80
    • B. Negligent Infliction of Emotional Distress 11.81
      • 1. Direct Victim Theory 11.82
      • 2. Bystander Theory 11.83
      • 3. Legal Negligence 11.84
      • 4. Medical Negligence 11.85
    • C. Product Liability and Infliction of Emotional Distress 11.86
    • D. Damages for Emotional Distress Resulting From Other Tortious Actions 11.87
  • V. TRADE LIBEL
    • A. Nature of Tort 11.88
    • B. Elements 11.89
      • 1. Publication of False and Disparaging Statement 11.90
      • 2. Defendant's Knowledge or Reckless Disregard of Statement's Falsity 11.91
      • 3. Pecuniary Loss 11.92
    • C. Alternative Causes of Action 11.93
    • D. Affirmative Defenses
      • 1. Privilege 11.94
      • 2. Statute of Limitations 11.95
    • E. Remedies
      • 1. Damages 11.96
      • 2. Injunctive Relief 11.97
    • F. Trade Libel and Insurance 11.98
  • VI. TORTIOUS BREACH OF CONTRACT
    • A. General Principles 11.99
    • B. Case Examples
      • 1. Insurance Contracts 11.100
      • 2. Commercial Contracts 11.101
      • 3. Employment Relationships 11.102
        • a. Wrongful Termination in Violation of Public Policy 11.103
        • b. Tortious Discharge 11.104
        • c. Discharge of Whistleblower 11.105
        • d. Third Party Interests 11.106
    • C. Affirmative Defenses
      • 1. Comparative Bad Faith 11.107
      • 2. Statute of Limitations 11.108
      • 3. Exclusivity of Workers' Compensation Law 11.109
    • D. Bad Faith Denial of Existence of Contract 11.110
  • VII. DEFAMATION
    • A. Libel and Slander 11.111
      • 1. Definition of Libel and Slander 11.112
      • 2. Elements of Libel
        • a. Publication 11.113
          • (1) Form of Publication 11.114
          • (2) Uniform Single Publication Act 11.115
          • (3) Distributor Liability 11.116
        • b. Applicability to Plaintiff 11.117
          • (1) Persons 11.118
          • (2) Entities 11.119
        • c. Falsity 11.120
          • (1) Understanding of Average Reader 11.121
          • (2) Statements of Opinion 11.122
          • (3) Distinguishing Fact From Opinion 11.123
        • d. Malice and Intent
          • (1) In General 11.124
          • (2) Wanton Disregard of Fact 11.125
          • (3) Public Figures 11.126
          • (4) Matters of Public Concern 11.127
          • (5) Jury Instructions 11.128
        • e. Libel Per Se 11.129
          • (1) Definition 11.130
          • (2) Jury Instructions 11.131
      • 3. Elements of Slander 11.132
      • 4. Damages 11.133
        • a. Compensatory Damages 11.134
        • b. Punitive Damages 11.135
    • B. Defenses
      • 1. Truth 11.136
      • 2. Opinion 11.137
      • 3. Privileges 11.138
        • a. Absolute Privileges 11.139
          • (1) Litigation Privileges 11.140
          • (2) Quasi-Judicial Proceedings 11.141
          • (3) Legislative Proceedings 11.142
          • (4) Boards and Commissions 11.143
          • (5) Inapplicability to Malicious Prosecution 11.144
        • b. Qualified Privileges 11.145
          • (1) Employee Evaluations and References 11.146
          • (2) Other Illustrations 11.147
      • 4. Fair Comment 11.148
      • 5. Report of Crime 11.149
      • 6. Retraction 11.150
      • 7. Constitutional Defense 11.151

12

Bad Faith Insurance Claims

John A. Sturgeon

  • I. IMPLIED COVENANT OF GOOD FAITH AND FAIR DEALING 12.1
    • A. Limited Scope 12.2
    • B. Definition of Tortious Breach 12.3
    • C. Factors in Determination of "Bad Faith" 12.4
    • D. First Party and Third Party Claims 12.5
    • E. Other Tort Remedies 12.6
  • II. PROPER PARTIES: PLAINTIFFS AND DEFENDANTS
    • A. Single and Joint Insureds 12.7
    • B. Assignees of Insured 12.8
  • III. BREACH OF DUTY TO DEFEND
    • A. Duty to Defend and Consequences of Failure to Defend 12.9
    • B. Factors Involved in Determining Unreasonable Refusal to Defend 12.10
    • C. Rights of Insured on Refusal to Defend 12.11
    • D. Insurer's Declaratory Relief Action 12.12
    • E. Damages Recoverable by Insured 12.13
  • IV. BREACH OF DUTY TO SETTLE 12.14
    • A. Standards Applicable to Duty to Settle 12.15
    • B. Reasonable Settlement Demand 12.16
    • C. When Demand of Plaintiff Exceeds Policy Limits 12.17
    • D. Duty of Insurer to Investigate Claims 12.18
    • E. Timely Settlement of Claim 12.19
    • F. Case Examples
      • 1. Unreasonable Refusal to Settle 12.20
      • 2. Reasonable Refusal to Settle 12.21
    • G. Damages Recoverable by Insured 12.22
  • V. ASSIGNMENT OF INSURED'S CLAIM AGAINST INSURER 12.23
    • A. Limitations on Assignments 12.24
    • B. Exclusion of Insurance Agents, Brokers, and Independent Contractors as Defendants 12.25
  • VI. DEFENSES
    • A. Breach of Insurance Contract by Insured 12.26
    • B. Statute of Limitations 12.27
    • C. Advice of Counsel 12.28
    • D. Federal and State Preemption 12.29

13

Unlawful Employment Practices

Sylvia P. Lardiere

Sonia Y. Lee

  • I. INTRODUCTION
    • A. At-Will Doctrine 13.1
    • B. Exceptions to At-Will Doctrine 13.2
  • II. STATE COMMON LAW WRONGFUL TERMINATION CLAIMS
    • A. Contract Claims
      • 1. Express Contracts 13.3
      • 2. Implied-in-Fact Contracts 13.4
      • 3. Claims Based on Implied Covenant of Good Faith and Fair Dealing 13.5
    • B. Tort Claims for Wrongful Termination in Violation of Public Policy 13.6
    • C. Constructive Discharge 13.7
    • D. Damages for Common Law Claims
      • 1. Contract Claims 13.8
      • 2. Tort Claims 13.9
    • E. After-Acquired Evidence Doctrine 13.10
  • III. STATUTORY RESTRICTIONS ON EMPLOYER'S RIGHT TO TERMINATE AND PROHIBITIONS AGAINST DISCRIMINATION
    • A. Title VII and FEHA 13.11
      • 1. Types of Discrimination Prohibited 13.12
      • 2. "Employers" Covered by Title VII and FEHA 13.13
      • 3. Differences in Coverage Under Title VII and FEHA 13.14
      • 4. Title VII Decisions Provide Guidance 13.15
      • 5. Proving Discrimination Under Title VII and FEHA 13.16
        • a. Disparate Treatment: Intentional Discrimination 13.17
        • b. Disparate Impact: Facially Neutral Policies Having Discriminatory Effect 13.18
        • c. "Same-Actor" Rule 13.18A
      • 6. Accommodation Required
        • a. Religion 13.19
        • b. Pregnancy 13.20
      • 7. Retaliation Prohibited 13.21
      • 8. BFOQ as Defense to Title VII and FEHA Discrimination Claims 13.22
      • 9. Exhaustion of Administrative Remedies 13.23
        • a. Under Title VII 13.24
        • b. Under FEHA 13.25
      • 10. Remedies for Discrimination Under Title VII and FEHA 13.26
    • B. Age Discrimination 13.27
      • 1. Federal Law: ADEA 13.28
        • a. Disparate Treatment 13.29
        • b. Disparate Impact 13.30
        • c. Mixed Motive Age Discrimination Claim Not Authorized Under ADEA 13.30A
        • d. Defenses to Age Discrimination Claims
          • (1) Waiver 13.31
          • (2) Arbitration 13.32
          • (3) After-Acquired Evidence Doctrine 13.33
          • (4) Bona Fide Occupational Qualification (BFOQ) 13.34
          • (5) Bona Fide Seniority System 13.35
          • (6) Bona Fide Employee Benefit or Early Retirement Plans 13.36
        • e. Exhaustion of Administrative Remedies 13.37
        • f. Remedies for Age Discrimination Under ADEA 13.38
      • 2. State Law: FEHA 13.39
        • a. Disparate Treatment Age Discrimination 13.40
        • b. Disparate Impact Age Discrimination Under FEHA 13.41
        • c. Evidence of Age Discrimination Under FEHA 13.42
        • d. Defenses to Age Discrimination Claims Under FEHA 13.43
        • e. Exhaustion of Administrative Remedies 13.44
        • f. Remedies for Age Discrimination Claims Under FEHA 13.45
        • g. FEHA Does Not Preempt Common Law Claims 13.46
        • h. FEHA Violation as Basis for Unfair Competition Claim 13.46A
    • C. Prohibitions Against Disability Discrimination 13.47
      • 1. Americans With Disabilities Act 13.48
        • a. "Employer" Defined 13.49
        • b. "Employee" Defined 13.49A
        • c. "Disability" Defined 13.50
        • d. "Qualified Individual" Defined 13.51
        • e. "Major Life Activities" Defined 13.52
        • f. "Substantially Limited in a Major Life Activity" Defined 13.53
        • g. "Reasonable Accommodation" 13.54
        • h. "Undue Hardship" 13.55
        • i. Impairments That Can Be Controlled or Mitigated 13.56
        • j. When Individual Is Not Disabled 13.57
        • k. Retaliation and Coercion Prohibited 13.58
        • l. Harassment Prohibited 13.59
        • m. Defenses 13.60
          • (1) Business Necessity 13.61
          • (2) Direct Threat to Health or Safety of Others 13.62
          • (3) Threat to Self 13.63
          • (4) Undue Hardship 13.64
        • n. Remedies 13.65
      • 2. FEHA's Prohibitions Against Disability Discrimination
        • a. Prohibited Conduct
          • (1) Discrimination 13.66
          • (2) Failure to Accommodate 13.67
          • (3) Failure to Engage in Interactive Process 13.68
          • (4) Harassment 13.69
          • (5) Retaliation 13.70
          • (6) FEHA More Protective Than ADA 13.71
        • b. Definitions
          • (1) "Medical Condition" Defined 13.72
          • (2) "Mental Disability" Defined 13.73
          • (3) "Physical Disability" Defined 13.74
        • c. Prima Facie Case 13.75
        • d. Reasonable Accommodation 13.76
        • e. "Undue Hardship" Defined 13.77
        • f. Defenses 13.78
        • g. Remedies 13.79
    • D. Arbitrability of Employment Discrimination Claims 13.79A
  • IV. SEXUAL HARASSMENT
    • A. Scope of Coverage 13.80
    • B. Federal and State Law Prohibiting Sexual Harassment
      • 1. Title VII 13.81
      • 2. State Law 13.82
    • C. Differences Between Title VII and FEHA Protection 13.83
    • D. Persons Covered by Title VII and FEHA
      • 1. Entities Subject to Title VII 13.84
      • 2. Entities Subject to FEHA 13.85
      • 3. Persons Protected Under Title VII 13.86
      • 4. Persons Protected Under FEHA 13.87
      • 5. Types of Sexual Harassment 13.88
      • 6. Quid Pro Quo Sexual Harassment 13.89
        • a. Unwanted Sexual Advances 13.90
        • b. Supervisor Liability 13.91
        • c. Harassment Because of Sex 13.92
        • d. Conditions of Employment Affected 13.93
      • 7. "Hostile Environment" Sexual Harassment 13.94
        • a. Who Can Create Hostile Environment 13.95
        • b. "Severe" or "Pervasive" Conduct 13.96
          • (1) Frequency, Severity, and Nature of Conduct 13.97
          • (2) Reasonableness of Interference 13.98
        • c. Subjective and Objective Standards 13.99
    • E. Employer Liability and Defenses
      • 1. Quid Pro Quo Sexual Harassment Claims 13.100
      • 2. "Hostile Environment" Sexual Harassment
        • a. Employer Liability for "Hostile Environment" Sexual Harassment by Supervisor 13.101
          • (1) Reasonable Care to Prevent and Correct Harassment 13.102
          • (2) Failure to Take Advantage of Reporting Procedure 13.103
          • (3) Ellerth-Faragher Defense Is Not Available Under FEHA 13.104
        • b. Employer Liability for "Hostile Environment" Sexual Harassment by Co-Workers 13.105
        • c. Individual Liability for "Hostile Environment" Sexual Harassment 13.106
  • V. WAGE AND HOUR LAWS: OVERTIME COMPENSATION
    • A. Introduction 13.107
    • B. Federal and State Wage and Hour Laws 13.108
      • 1. FLSA 13.109
      • 2. California Labor Code 13.110
      • 3. Calculating Overtime Payment Due 13.111
        • a. Workweek 13.112
        • b. Number of Hours "Worked" 13.113
        • c. Regular Rate of Pay 13.114
      • 4. Employers Covered Under FLSA and California Law 13.115
      • 5. Employees Covered Under FLSA and California Law 13.116
        • a. FLSA 13.117
        • b. California Labor Code 13.118
        • c. Employees Exempt From Overtime Requirements Under FLSA 13.119
          • (1) Executive Employees 13.120
          • (2) Administrative Employees 13.121
          • (3) Professional Employees 13.122
          • (4) Employees Exempt Under California Law 13.123
      • 6. Note About Class Actions 13.124

 

CALIFORNIA BUSINESS LITIGATION

(1st Edition)

July 2017

TABLE OF CONTENTS

 

File Name

Book Section

Title

CH02

Chapter 2

Availability of Preliminary Relief

02-009

§2.9

Complaint for Injunctive Relief

02-010

§2.10

Declaration Supporting Temporary Restraining Order and Preliminary Injunction

02-011

§2.11

Order to Show Cause and Temporary Restraining Order

02-012

§2.12

Notice of Motion for Preliminary Injunction

02-013

§2.13

Preliminary Injunction and Order for Undertaking

02-014

§2.14

Undertaking by Individual Sureties on Preliminary Injunction

02-015

§2.15

Declaration of Personal Surety’s Qualifications

02-016

§2.16

Order Denying Preliminary Injunction

02-025

§2.25

Checklist: Temporary Restraining Order And Preliminary Injunction

02-026

§2.26

Ex Parte Application for Temporary Restraining Order

02-027

§2.27

Temporary Restraining Order and Order to Show Cause re Preliminary Injunction

02-028

§2.28

Order re Preliminary Injunction

02-029

§2.29

Table of Contents for Memorandum in Support of Motion

02-030

§2.30

Contents of Memorandum in Support of Motion: Summary of Plaintiff’s Contentions

CH03

Chapter 3

Unfair Competition

03-091

§3.91

Checklist: Guidelines For Preventing “Business Piracy”

03-092

§3.92

Form: Employment Agreement Containing Unfair Competition Provisions

CH04

Chapter 4

Trade Secrets

04-018

§4.18

Preliminary Designation of Trade Secrets

CH05

Chapter 5

Antitrust

05-162

§5.162

Sample Complaint; Jury Demanded

05-163

§5.163

Complaint; Other Allegations of Offenses

05-164

§5.164

Complaint; Other Allegations of Injury

05-165

§5.165

Pleading Related Government Action; Fraudulent Concealment

CH07

Chapter 7

Copyrights

07-084

§7.84

Checklist: Client Interview

07-087A

§7.87A

Sample Cease and Desist Letter

07-088

§7.88

Complaint for Copyright Infringement and Unfair Competition (Fed R Civ P Form 19)

07-089

§7.89

Complaint Damage Allegations

07-099

§7.99

Checklist: Obtaining TRO

07-111

§7.111

Checklist: Opposing Preliminary Injunction

CH08

Chapter 8

Patents

08-106

§8.106

Label Notice for Patented Product

08-107

§8.107

Label Notice for Unpatented Product Used in Patented Process

CH09

Chapter 9

Intellectual Property and Unfair Competition on the Internet

09-055B

§9.55B

Takedown Notice for Online Copyright Infringement

CH11

Chapter 11

Business-Related Torts

11-002

§11.2

Checklist: Elements of Business-Related Torts

 

Selected Developments

July 2017 Update

Unfair competition. An Unfair Competition Law (UCL) claim premised on an airline's failure to disclose a privacy policy on its mobile application, in violation of California law, is preempted by the federal Airline Deregulation Act (49 USC §41713), which includes a preemption provision. People ex rel Harris v Delta Air Lines, Inc. (2016) 247 CA4th 884. See §3.6.

A failure to disclose facts that may be important to a consumer cannot, without more, constitute misleading advertising. McCoy v Nestle USA, Inc. (ND Cal 2016) 173 F Supp 3d 954. See §3.21C.

Courts will not issue injunctive relief under Business and Professions Code §17203 unless there is evidence in the record to show a probability that the defendant will commit future violations of §17200. The court in Robinson v U-Haul Co. (2016) 4 CA5th 304, 317, found an injunction was proper notwithstanding a discontinuance of conduct in light of defendant's "resistance to amending its policies, and its persistence in pursuing its anticompetitive litigation strategy over the years." See §3.34.

The Consumers Legal Remedies Act limits a manufacturer's duty to disclose product safety issues, except when disclosure is required "to counter an affirmative misrepresentation." McCoy v Nestle U.S., Inc. (ND Cal 2016) 173 F Supp 3d 954. See §3.42A.

Trade secrets. Under the Defend Trade Serets Act, it is important to allege a connection between trade secrets and interstate commerce. See Hydrogen Master Rights, Ltd. v Weston (D Del, Jan. 9, 2017, No. 16-474-RGA) 2017 US Dist Lexis 2694, *35 (dismissing, without prejudice, DTSA claims that "fail[ed] to allege any nexus between interstate or foreign commerce and the [trade secrets]"). §4.3A.

Under the Defend Trade Secrets Act, a court may issue a seizure order only if, among other requirements, an order under Fed R Civ P 65 or another form of equitable relief would be inadequate, and only after certain due process requirements are observed. 18 USC §1836(b)(2)(A)(ii). In the earliest reported attempt to obtain such a seizure, the Northern District of California relied on this provision to deny a request that a laptop and cell phone issued to defendant by plaintiff be seized, instead ordering that defendant deliver the devices to the court at the time of a scheduled preliminary injunction hearing, and not access or modify the devices in the interim. OOO Brunswick Rail Management v Sultanov (ND Cal Jan. 6, 2017, No. 5:17-cv-00017-EJD) 2017 US Dist Lexis 2343. §4.3A.

Some federal courts have suggested that in certain circumstances, the Defend Trade Secrets Act may apply to conduct that begins prior to the effective date of the DTSA and continues thereafter. See Adams Arms, LLC v Unified Weapons Sys. (MD Fla, Sept. 27, 2016, No. 16-1503-T-33AEP) 2016 US Dist Lexis 132201. A California federal district court, distinguishing Adams, dismissed a misappropriation claim based on continued use of information that was disclosed prior to the effective date of DTSA on the ground that "[s]imply alleging that the same information was disclosed ‘again' is not sufficient"). Avago Technols. U.S. Inc. v NanoPrecision Prods., Inc. (ND Cal, Jan. 31, 2017, No. 16-cv-03737-JCS) 2017 US Dist Lexis 13484. See §4.3A.

Information must have value to qualify as a trade secret. See Direct Technols., LLC v Electronic Arts, Inc. (9th Cir 2016) 836 F3d 1059, 1071 (affirming summary judgment for defendant when plaintiff presented no evidence its product design had value "outside of a single ephemeral project for a single customer"). See §4.25.

Parties should craft nondisclosure agreements with care. Limiting the duration of an agreement (to 1 year, for example) can be viewed as evidence that the disclosing party believes the information covered by that agreement would become public by the time the agreement expires, or has consented to its use or disclosure after expiration of the specified term. See e.g., Structured Capital Solutions, LLC v Commerzbank AG (SD NY 2016) 177 F Supp 3d 816. See §4.30.

The court dismissed a misappropriation claim where the defendant retained work product it developed for the plaintiff pursuant to contractual relationship and did not use or disclose work product to gain an "unfair trade advantage." First Am. Bankcard, Inc. v Smart Bus. Technol., Inc. (ED La 2016) 178 F Supp 3d 390. See §4.40.

Plucking language from the Restatement (Third) of Unfair Competition §39(f) (1995), the Eleventh Circuit adopted a test that requires a plaintiff to show that defendant used a "‘substantial portion' of the plaintiff's trade secret to create an improvement or modification that is ‘substantially derived' from the plaintiff's trade secret." Penalty Kick Mgmt. Ltd. v Coca Cola Co. (11th Cir 2003) 318 F3d 1284, 1293. See §4.40.

In HealthBanc Int'l, LLC v Synergy Worldwide, Inc. (D Utah, Sept. 22, 2016, No. 2:16-cv-00135-JNP-PMW) 2016 US Dist Lexis 130400, the plaintiff and the defendant signed an agreement giving the defendant the exclusive right to distribute products using plaintiff's formula. The plaintiff alleged that the defendant misappropriated its trade secrets by publishing portions of the formula. The court dismissed the claim, however, because the contract gave the defendant "the entire rights, title, and interest in and to the [formula]," meaning the defendant, not the plaintiff, owned the trade secrets. 2016 US Dist Lexis 130400 at *18. See §4.52A.

A plaintiff is not entitled to a royalty simply because it cannot show either actual loss or unjust enrichment—it still must show that a defendant has used its trade secrets. In Tank Connection, LLC v Haight (D Kan 2016) 161 F Supp 3d 957, a former employee copied the plaintiff's price and design programs to a flash drive before resigning and joining a competitor. The plaintiff, however, could not show that defendant or his new employer ever used the information. The plaintiff thus suffered no actual loss and defendants enjoyed no unjust enrichment. See §4.67.

The Defend Trade Secrets Act contains a provision that immunizes whistleblowers from civil liability for disclosing trade secrets to a government official or to an attorney if the disclosure is "solely for the purpose of reporting or investigating a suspected violation of law." 18 USC §1833(b)(1)(A)(ii). See §4.68.

The California Supreme Court, in Baltazar v Forever 21, Inc. (2016) 62 C4th 1237, 1248, held that a provision allowing parties to seek injunctive relief during the pendency of arbitration, even though employers are more likely than employees to seek such provisional relief, does not by itself render an arbitration agreement unconscionable. See §4.72.

Antitrust. Plaintiffs had standing as direct purchasers to sue the defendant for alleged monopolization and attempted monopolization because the defendant was a distributor of the product at issue, not a producer or manufacturer. Pepper v Apple Inc. (In re Apple iPhone Antitrust Litig.) (9th Cir 2017) 846 F3d 313. See §5.36.

Generally, officers and employees of a corporation do not have standing to bring an action in their own right for an antitrust violation causing injury to the corporation and its business. Feldman v American Dawn, Inc. (11th Cir, Mar. 3, 2017, No. 16-11663) 2017 US App Lexis 3863. See §5.42.

Most courts have found electric power to be a commodity under the Robinson-Patman Act. See In re Escalera Res. Co. (Bankr D Colo 2017) 563 BR 336, 361 n18. See §5.104.

As required in alleging claims under federal antitrust law, a Cartwright Act plaintiff must allege an antitrust injury caused by the defendant's anticompetitive conduct. Gelboim v Bank of America Corp. (2d Cir 2016) 823 F3d 759. See §5.125.

An exception to the 4-year limitations period exists for a continuing violation. Garrison v Oracle Corp. (ND Cal 2016) 159 F Supp 3d 1044, 1070 (restarting limitations period requires alleging overt act, not merely reaffirming previous act). See §5.135.

Trademark. The overall look and feel of Adidas's Stan Smith tennis shoe was protectable unregistered trade dress because it had acquired distinctiveness through secondary meaning and, when the elements of the shoe were analyzed as a whole, the combination was not functional. Adidas Am., Inc. v Skechers USA, Inc. (D Or 2016) 149 F Supp 3d 1222. See §6.14.

"Very little proof of actual confusion would be necessary to prove the likelihood of confusion." Roto-Rooter Corp. v O'Neal (5th Cir 1975) 513 F2d 44, 46. Nevertheless, di minimis evidence of actual confusion is not sufficient. See e.g., Kibler v Hall (6th Cir 2016) 843 F3d 1068 (ten instances of actual confusion insignificant where mark was used in 1.7 million downloads and 58 million YouTube views). See §6.82.

An award of mandatory attorney fees under 15 USC §1117(b) requires that the plaintiff seek actual damages under 15 USC §1117(a). See Excelled Sheepskin & Leather Coat Corp. v Oregon Brewing Co. (SD NY 2016) 120 USPQ 2d 1871. See §6.91.

The demand for a jury trial on an issue must be made in writing within 14 days after the service of the last pleading directed to the issue. In FN Herstal SA v Clyde Armory, Inc. (11th Cir 2016) 838 F3d 1071, the court denied a motion to reinstate a withdrawn jury trial demand made after the pretrial conference order and only days before trial. See §6.92.

Delay in seeking injunctive relief may indicate "a lack of immanency that weighs against finding irreparable injury." Wreal, LLC v Amazon.com, Inc. (11th Cir 2016) 840 F3d 1244 (delay of 5 months evidenced lack of irreparable injury). See §6.115.

The terms of an injunction must be detailed. An injunction issued to prevent unfair competition that restricts the use of a plaintiff's mark in one medium will not necessarily affect use of the mark in another medium, unless the injunction specifically states that restriction as well. In United Constr. Prods., Inc. v Tile Tech, Inc. (Fed Cir 2016) 843 F3d 1363, the court issued an injunction on an unfair competition claim that prohibited the use of protected material on a website but allowed the use of the same protected material in lawful comparative advertising. See §6.122.

First Amendment fair use protection is not available to a defendant who uses a protected trademark or trade dress for an allegedly infringing commercial product, even if the product is noncompetitive in nature. VIP Prods., LLC v Jack Daniel's Props., Inc. (D Az 2016) 2016 US Dist Lexis 133387 (likelihood-of-confusion test appropriate where allegedly expressive Bad Spaniels toy dog adapted Jack Daniel's trademark and trade dress). §6.144A.

A valid coexistence agreement—an agreement from the trademark owner to allow another party to peaceably use the mark—is assignable to another party without the permission of the original trademark owner. See Russell Rd. Food & Bev., LLC v Spencer (9th Cir 2016) 829 F3d 1152. §6.149.

Copyright. The Visual Artists Rights Act (VARA) does not protect "applied art," which the Ninth Circuit has defined as a "rudimentary utilitarian object" that "despite being visually transformed through elaborate artistry, [] continued to serve a significant utilitarian function." Cheffins v Stewart (9th Cir 2016) 825 F3d 588, 595 (no protection for school bus which, although visually transformed into Spanish galleon, continued in its utilitarian role after its transformation). See §7.6.

The Second Circuit held that a video-sharing service whose employees viewed user-posted videos containing pre-1972 sound recordings was protected from liability for infringement by the safe harbor for service providers in 17 USC §512(c). Capitol Records, LLC v Vimeo, LLC (2d Cir 2016) 826 F3d 78, cert denied (2017) ___ US ___, 2017 US Lexis 2055. See §7.7.

Copyright protection does attach to the design of a useful article if, and only to the extent that the design "(1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately." Star Athletica, L.L.C. v Varsity Brands, Inc (2017) 580 US ___, ___, 137 S Ct 1002, 1007 (analyzing "separability" of design on cheerleader uniforms to determine whether design would have been copyrightable if fixed in different medium). See §7.22.

When sound recordings, whether or not copyrighted originally, are digitally remastered, the remastered work is copyrightable. ABS Entertainment, Inc. v CBS Corp. (CD Cal, May 30, 2016, CV 15-6257 PA (AGRx)) 2016 US Dist Lexis 71470 (defendant did not infringe state copyright law (applicable to pre-1972 recordings, unlike federal copyright law) by radio broadcasting or digital streaming). See §7.23.

When no express work-for-hire agreement is in evidence and the existence of work-for-hire arrangement is disputed, the Second Circuit requires that a plaintiff prove by a preponderance of the evidence that a contrary arrangement exists. Urbont v Sony Music Entertainment (2d Cir 2016) 831 F3d 80, 92 n9 (rejecting district court's finding that clear and convincing standard applied). See §7.57.

Expert testimony alone cannot satisfy the plaintiff's burden of proof under the intrinsic test. Antonick v Electronic Arts, Inc. (9th Cir 2016) 841 F3d 1062, 1067. See §7.71.

In the Ninth Circuit, the de minimis exception applies in all copyright actions, including those concerning sampling of sound recordings. VMG Salsoul, LLC v Ciccone (9th Cir 2016) 824 F3d 871. In finding that Congress clearly intended the de minimis exception to apply to sound recordings, the Ninth Circuit expressly created a "deep split" with the Sixth Circuit on application of the de minimis defense, noting that "almost every district court not bound by [Bridgeport Music v Dimension Films (6th Cir 2005) 410 F3d 792] has declined to apply Bridgeport's rule." 824 F3d at 886. See §7.71A.

Prevailing plaintiffs and prevailing defendants are to be treated alike, but attorney fees are to be awarded only as a matter of the court's discretion. Fogerty v Fantasy, Inc. (1994) 510 US 517, 114 S Ct 1023 (rejecting dual standard that previously existed in Ninth Circuit). The Supreme Court elaborated on Fogerty in Kirtsaeng v John Wiley & Sons (2016) 579 US ___, ___, 136 S Ct 1979, 1988, concluding that the objective reasonableness of the losing party's claims should be a substantial factor in attorney fee determinations, though not a controlling one. See §7.79.

A plaintiff in an infringement action must prove ownership of the copyright to establish standing. Urbont v Sony Music Entertainment (2d Cir 2016) 831 F3d 80. In Urbont, the Second Circuit held that in an infringement action, a third party may challenge the plaintiff's ownership by asserting the work-for-hire defense even absent an ownership dispute between the alleged employer and employee. 831 F3d at 88. In an infringement action in the Ninth Circuit, however, a third party may not use the work-for-hire defense when there is no ownership dispute between the potential copyright owners. Jules Jordan Video, Inc. v 144942 Canada Inc. (9th Cir 2010) 617 F3d 1146, 1157. See §7.122.

Patents. Software-related claims might survive an Alice inquiry by focusing on "real world effects." For example, with respect to computer-related inventions, claims likely recite ineligible subject matter when they "merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet." Intellectual Ventures I, LLC v Ricoh Ams. Corp. (D Del 2016) 170 F Supp 3d 673. See §8.5.

Claims may be held to recite eligible subject matter when they recite a particular technological solution to a particular technological problem. In Amdocs (Israel) Ltd. v Openet Telecom, Inc. (Fed Cir 2016) 841 F3d 1288, for example, the Federal Circuit found eligible subject matter in claims directed to accounting and billing software. The court's rationale was that the claims were each directed toward a specific technological solution ("enhancing data in a distributed fashion") to a specific technological problem (massive record flows which previously required massive databases). 841 F3d at 1300. See §8.5.

Drafting patent claims in accordance with Patent and Trademark Office guidance does not guarantee that the claims will survive a USC 35 §101 challenge for subject matter eligibility. As the Interim Guidance on Patent Subject Matter Eligibility states, the guidance "is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office." In re Smith (Fed Cir 2016) 815 F3d 816, 819. See §8.6.

When filing a patent suit at the U.S. International Trade Commission, the domestic industry requirement provides that a patent owner must show that a U.S. industry exists for products protected by the patent. Precedent holds that a licensee's activities can satisfy the requirement, and in 2017 the ITC went further, holding that even a nonpracticing entity can satisfy the requirement if the licensee satisfies the domestic industry requirement. See In the Matter of Certain Silicon-on-Insulator Wafers (Silicon Genesis Corp. v Soitec, S.A.) (USITC, Mar. 10, 2017, Inv. No. 337-TA-1025) 2017 ITC Lexis 343. See §8.20.

One issue that often arises with respect to damages is how to properly apportion damages between the patented and unpatented features of an accused product. However, the Federal Circuit has suggested "that apportionment—at least as consumer demand stands as a way of showing apportionment—is unnecessary under Panduit." Presidio Components, Inc. v American Tech. Ceramics Corp. (SD Cal 2016) 2016 US Dist Lexis 110212. See §8.22.

Apple famously prevailed in district court against Samsung for a design patent covering the bezel of a smart phone and was awarded Samsung's entire profit on the infringing phones. In reversing that award, however, the Supreme Court held that the relevant "article of manufacture" for arriving at a 35 USC §289 damages award need not be the end product sold to the consumer but may be only a component of that product. Samsung Electronics Co., Ltd., v Apple Inc. (2016) 580 US ___, ___, 137 S Ct 429, 435. See §8.22.

The Supreme Court held that culpable behavior under 35 USC §284 must be egregious to justify enhanced damages. Requiring a finding of objective recklessness is too narrow, and merely basing enhanced damages on behavior that "stands out from the rest" is too broad. Halo Electronics, Inc. v Pulse Electronics, Inc. (2016) 579 US ___, 136 S Ct 1923. See §8.48A.

Willfulness is still a factor in proving enhanced damages. The decision in Halo Electronics, Inc. v Pulse Electronics, Inc. (2016) 579 US ___, 136 S Ct 1923 does not change "the established law that the factual components of the willfulness question should be resolved by the jury." WBIP, LLC v Kohler Co. (Fed Cir 2016) 829 F3d 1317, 1341. There is a right to a jury trial on the willfulness question, and the standard of proof for enhanced damages is preponderance of the evidence, not clear and convincing evidence. Halo, 136 S Ct at 1934. See §8.49.

Where a reference is missing a limitation of a claim, the reference cannot be deemed to anticipate the claim merely on the grounds that a skilled artisan would immediately envision that limitation. Nidec Motor Corp. v Zhongshan Broad Ocean Motor Co. (Fed Cir, Mar. 14, 2017, No. 2016-1900) 2017 US App Lexis 4416. See §8.61.

The PTO may not use "common sense" as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references, or when the missing limitation is complicated or the technology is not particularly straightforward. Arendi S.A.R.L. v Apple Inc. (Fed Cir 2016) 832 F3d 1355. See §8.75.

A child application (whether continuation, continuation-in-part, or divisional) is considered to be co-pending with its parent, even if the child is filed on the same day that the parent issues. Immersion Corp. v HTC Corp. (Fed Cir 2016) 826 F3d 1357. See §8.88.

The Patent Trial and Appeal Board uses the "broadest reasonable interpretation" standard during inter partes review proceedings, and that practice has been upheld by the Supreme Court. Cuozzo Speed Technols., LLC v Lee (2016) 579 US ___, 136 S Ct 2131. See §8.95C.

It was improper for the PTAB to extend the definition of covered business methods to patents that claim activities "that are financial in nature, incidental to a financial activity, or complementary to a financial activity." Unwired Planet, LLC v Google Inc. (Fed Cir 2016) 841 F3d 1376, 1380. See §8.95E.

Infringement-of-method claims generally require that a single actor performs all of the recited actions. The rule is not completely rigid, however, and infringement has been found where (1) one actor controls the actions of another or (2) one actor obtains a benefit from the claimed "system as a whole." Centillion Data Sys., LLC v Qwest Communications Int'l, Inc. (Fed Cir 2011) 631 F3d 1279, 84 (joint operation of patented system components by defendant and customer constitutes single use for purposes of infringement claim). This result can obtain even where different actors are executing claimed steps on three different devices: a "communications device," a "second device," and an "authenticating device." Intellectual Ventures I, LLC v Motorola Mobility LLC (D Del 2016) 176 F Supp 3d 405, 421. See §8.113.

A design patent is infringed "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same." Samsung Electronics Co. v Apple Inc. (2016) 580 US ___, ___, 137 S Ct 429, 432, citing Gorham Co. v White (1872) 81 US 511. See §8.116.

While sending letters into a forum is not by itself enough for personal jurisdiction to be "fair and reasonable," if a party "does more," then jurisdiction may become reasonable. Xilinx, Inc. v Papst Licensing GmbH & Co. KG (Fed Cir, Feb. 17, 2017, 2015-1919) 2017 US App Lexis 2625, *19 (additional factors of traveling to California to meet alleged infringer, litigating often "in fora far from its home office" as foreign entity, and previously availing itself of California federal courts at least seven times was sufficient to establish personal jurisdiction in California). See §8.138.

Supplying a single component of a multicomponent invention for manufacture abroad does not give rise to 35 USC §271(f)(1) liability. Life Technols. Corp. v Promega Corp. (2017) ___ US ___, 137 S Ct 734. See §8.147.

A jury's finding that the patents at issue are not invalid does not necessarily foreclose a court's finding of unclean hands on the part of the patent holder, at least where the jury's findings addressed validity with respect to written description and enablement issues, and the unclean hands defense alleged lying under oath, unethical business conduct, and litigation misconduct. Gilead Sciences, Inc. v Merck & Co. (ND Cal, June 6, 2016, No. 13-cv-04057-BLF) 2016 US Dist Lexis 73595. See §8.165.

Laches cannot be invoked as a defense against a claim for damages brought within the 6-year limitations period under 35 USC §286. SCA Hygiene Prods. Aktiebolag v First Quality Baby Prods., LLC (2017) 2017 US Lexis 2023. See §8.170.

In Lexmark Int'l, Inc. v Impression Prods. (Fed Cir 2016) 816 F3d 721, foreign sales of United States-patented printer cartridges, even when made by or with the approval of the U.S. patentee, did not exhaust the patentee's U.S. patent rights in the article sold. In December 2016, however, the Supreme Court granted certiorari in Lexmark to decide whether the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine "makes no geographical distinctions." Lexmark Int'l, Inc. v Impression Prods. (2016) ___ US ___, 137 S Ct 546. See §8.173B.

Unfair competition on the Internet. In Airbnb, Inc. v City & County of San Francisco (ND Cal, Nov. 8, 2016, No. 3:16 -cv-03615-JD) 2016 US Dist Lexis 155039, the plaintiff was denied a preliminary injunction to prevent enforcement of a city and county ordinance that prohibited it from listing unregistered rental units on its website. The court did not deny that plaintiff was an Internet service provider and not a publisher or monitor of listings provided by others, as required for 47 USC §230 immunity. The court did find, however, that the ordinance implicates neither §230 nor the First Amendment, because it bases liability on commercial conduct, not speech. See §9.56I.

In Hassell v Bird (review granted Sept. 21, 2016, S235968; superseded opinion at 247 CA4th 1336), the court ordered nonparty website Yelp to remove the named defendant's comments about the plaintiff attorney. Yelp's motion to vacate the judgement was denied. The issues raised include whether an online publisher has a right to notice and an opportunity to be heard before a trial court orders removal of online content, and whether immunity provided by 47 USC §230(c)(1), (e)(3) bars a trial court from enjoining the actions of a nonparty website publisher and enforcing the order by way of contempt or other sanctions. See §9.56J.

Immunity under the CDA was not available to the operator of a revenge porn website who was charged under Pen C §530.5 with invading the victims' privacy. People v Bollaert (2016) 248 CA4th 699. The enterprise was denied immunity available to interactive computer services under Pen C §530.5(f) because it was operated with intent to defraud. See §9.56J.

A trial court improperly excluded Internet provider records as evidence that a landlord used online aliases to post defamatory statements about commercial tenants. Kinda v Carpenter (2016) 247 CA4th 1268 (involving records subpoenaed from Comcast, AT&T, and Yelp tying defendant's IP address to posts on Yelp). See §9.63.

Business Torts. A third party to a contract between her employer and a payroll company adequately alleged a cause of action for professional negligence against the payroll company for providing her with inaccurate payroll statements. Goonewardene v ADP, LLC (2016) 5 CA5th 154. See §11.18.

A trespass claim may proceed when the plaintiff has established a possessory interest in property by temporarily leasing it and when the defendant vitiated consent to be on the property by conducting surreptitious filming there. Planned Parenthood Fed'n, Inc. v Center for Med. Progress (ND Cal, Sept. 30, 2016, No. 16-cv-00236-WHO) 2016 US Dist Lexis 136226, *52. See §11.41.

In In re M.H. (2016) 1 CA5th 699, the court held that despite the possibility of being seen or overheard in a bathroom stall, a student's expectation that his conduct would not be secretly recorded and uploaded to social media was reasonable. See §11.43.

A false light claim is substantively equivalent to a libel claim and requires the same evidence as a libel claim. Medical Marijuana, Inc. v ProjectCBD.com (2016) 6 CA5th 602 (anti-SLAPP motion denied when complaint failed to allege conduct by publishers giving rise to liability on libel and false light claims). See §11.49.

Vague language that criticizes without alleging specific wrongdoing is not actionable. John Doe 2 v Superior Court (2016) 1 CA5th 1300. And in this case, the ambiguity of the allegedly defamatory e-mails at issue prevented the plaintiff from making the prima facie showing of libel necessary to discover the identity of the anonymous writer. See §11.137.

Currently the law regarding enforceability of arbitration provisions in employment agreements is in a state of flux. A recent California Supreme Court decision rejected certain "unconscionability" challenges raised by employees to the enforceability of their employment arbitration contracts. See Baltazar v Forever 21, Inc. (2016) 62 C4th 1237. See §13.79A.

When an arbitration clause does not explicitly address the issue of classwide arbitration but is broadly phrased to require arbitration of all disputes, the issue of whether classwide arbitration is permissible is for the arbitrator, not the courts. Nguyen v Applied Med. Resources Corp. (2016) 4 CA5th 232, following Sandquist v Lebo (2016) 1 C5th 233. See §13.79A.

About the Authors

HON. ROBERT B. BROADBELT is a Superior Court Judge in Los Angeles County. Prior to his 2012 appointment to the court by Governor Edmund G. Brown, Jr., he was a partner in Browne Woods George LLP for 24 years, and then of counsel to Leader Counsel LLP, in Los Angeles. Judge Broadbelt earned a B.A. degree in 1981 from the University of California, Berkeley, and a J.D. degree in 1984 from the University of Southern California Law School. As a practicing attorney he specialized in complex business litigation, including Internet law, unfair competition, trade secrets, noncompete agreements, interference with business relations, defamation, and First Amendment and other constitutional issues. He also represented the California State Senate and individual State Senators in redistricting, voting rights, and other litigation.

ALLAN BROWNE is a senior partner with the firm Browne Woods & George LLP in Los Angeles. Mr. Browne earned a B.A. degree in 1960 from the University of California, Los Angeles, and an LL.B. degree in 1963 from the University of Southern California, where he was a member of the Board of Editors and Editor in Chief of the Southern California Law Review. He was the founder and first President of the Association of Business Trial Lawyers. He is a past member of the Board of Trustees of the Los Angeles County Bar Association and a past member of the Board of Governors of the Beverly Hills Bar Association. He has also served as a Judge Pro Tem of the Beverly Hills Municipal Court and as an arbitrator for the Los Angeles County Superior Court. Mr. Browne was the planner, editor, and contributing author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. His practice specialties are complex business litigation, unfair competitive business practices, insurance bad faith, and legal malpractice. He has written extensively on a wide range of litigation and business law topics.

GREGORY L. DOLL is an associate with the firm Browne Woods & George LLP in Los Angeles. Mr. Doll earned a B.A. degree in 1993 from the University of California, Los Angeles, where he graduated summa cum laude, and a J.D. degree in 1997 from the University of Southern California, where he was Editor of the Southern California Law Review and graduated Order of the Coif. During law school, Mr. Doll served as a judicial extern for the Hon. Robert M. Takasugi in the United States District Court for the Central District of California. He has litigated numerous cases involving intellectual property, unfair competition, tort, contract, environmental, entertainment, civil liberties, and constitutional issues.

DONNA L. DUTCHER is an associate with the firm Browne Woods & George LLP in Los Angeles. Ms. Dutcher earned a B.S. degree in 1993 from Pittsburg State University, where she graduated summa cum laude, and a J.D. degree in 1999 from Harvard Law School, where she was an Editor, Deputy Editor in Chief, and Editor in Chief of the Harvard Negotiation Law Review.

N. KEMBA EXTAVOUR is an associate with the firm Browne Woods & George LLP in Los Angeles. Ms. Extavour earned a B.A. degree from Stanford University in 1993 and a J.D. degree in 1996 from the University of California, Berkeley, School of Law. Her specialty is business litigation.

MILES J. FELDMAN is a partner with the firm Browne Woods & George LLP in Los Angeles. Mr. Feldman earned a B.A. degree in Rhetoric (with honors and distinction) from the University of California, Berkeley in 1989, and a J.D. degree in 1994 from the University of California, Berkeley, School of Law, where he was a member of the Moot Court Board and an Editor of the Berkeley Technology Law Journal. Mr. Feldman also served as a judicial extern for the Hon. D. Lowell Jensen in the United States District Court for the Northern District of California. He dedicates his practice to litigating business, entertainment, and intellectual property disputes. Mr. Feldman frequently lectures and contributes to legal journals and books on copyrights, rights of publicity, trade secrets, non-disclosure agreements, unfair competition, California's Talent Agency Act, and the litigation of entertainment industry transactions. He was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation.

ROBERT D. FISH, principal and founding partner of Fish & Associates PC, Irvine, specializes in patent prosecution, intellectual property litigation, trademark filings, and patent enforcement, including licensing and arbitration. Mr. Fish received his B.A. degree in 1974 from the University of Pennsylvania and his J.D. degree, cum laude, in 1990 from the California Western School of Law. He oversees numerous active patent and trademark matters, including extensive foreign filings. He has litigated in state and federal courts throughout the United States, has overseen cases in several European countries, and has successfully appealed before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, and the Federal Circuit Court of Appeals. He is a member of the American Bar Association, the State Bar of California, the Federal Circuit Bar Association, the Association of Business Trial Lawyers, the Orange County Bar Association, and the Orange County Technology Alliance. Mr. Fish is the author of several books, including Cost Effective Patenting (2004), Strategic Patenting (2007), White Space Patenting (2011), and Green Fields Patenting (2011).

ERIC M. GEORGE is a partner with the firm Browne Woods & George LLP in Los Angeles. Mr. George earned an A.B. degree with honors in 1990 from Georgetown University and a J.D. degree with honors in 1993 from Georgetown University Law Center. He served as a law clerk for the Hon. D. Lowell Jensen in the United States District Court for the Northern District of California and as Deputy Legal Affairs Secretary to California Governor Pete Wilson. From 1999 to 2000, Mr. George also served as Counsel to the United States Senate Judiciary Committee.

SYLVIA P. LARDIERE is a partner with the firm Browne Woods & George LLP in Los Angeles. Ms. Lardiere earned a B.A. degree in 1979 from the University of California, Berkeley, where she graduated summa cum laude, and a J.D. degree in 1982 from the University of Pennsylvania. She specializes in business and employment related litigation.

MELODIE K. LARSEN is a partner with the firm Burke, Williams & Sorensen, LLP in Los Angeles. Ms. Larsen earned a B.A. degree in 1978 from California State University at Los Angeles and a J.D. degree in 1983 from the University of California, Berkeley, School of Law, where she was an Associate Editor of the Industrial Relations Law Journal. She also served as a judicial extern for the Hon. Stephen Reinhardt of the Ninth Circuit Court of Appeals. She has been an update author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. Ms. Larsen is a member of the Association of Business Trial Lawyers, Women in Cable and Communications, and Women Lawyers of Los Angeles. She has a broad litigation and employment practice, and has litigated disputes involving wrongful discharge, discrimination, sexual harassment, wage and hour, copyright, trademark, idea submission, unfair competition, cable television, and other general business disputes. Ms. Larsen was one of the attorneys successfully representing Quality King Distributors, Inc. in the action leading to the Supreme Court decision entitled Quality King Distribs., Inc. v L'Anza Research Int'l, Inc. (1998) 523 US 135, 118 S Ct 1125, which clarified the application of the copyright first sale doctrine to products sold for export.

SONIA Y. LEE is a partner with the firm Browne Woods & George LLP in Los Angeles. Ms. Lee earned a B.A. degree in 1992 from the University of California, Berkeley, and a J.D. degree in 1997 from Loyola Marymount University, where she was a member of the St. Thomas More Law Honor Society and Articles Editor of the Loyola Law Review. Her specialty is civil litigation.

MICHAEL J. OLECKI is a partner with the firm Browne Woods & George LLP in Los Angeles. Mr. Olecki earned a B.A. degree in 1981 from Haverford College and a J.D. degree in 1986 from the University of Virginia, where he was Notes Editor for the University of Virginia Law Review and graduated Order of the Coif. He served as a law clerk for the Hon. Edward N. Cahn in the United States District Court for the Eastern District of Pennsylvania. Mr. Olecki is a member of the Association of Business Trial Lawyers and an arbitrator listed with the Los Angeles Superior Court Arbitration Panel. He is a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. He has lectured on the use of mock juries in preparing for trial; the California summary judgment statute; preparing witnesses for videotaped depositions; insurer recoupment of monetary contributions from additional policy sources; and on an insurer's obligation to defend all causes of action brought against the insured. He has a highly successful litigation practice, with experience in a wide range of areas, including trademark and trade secret disputes.

LAURENCE H. PRETTY is a partner with the firm Hogan & Hartson in Los Angeles. He earned a B.S. degree in Engineering with honors in 1958 from London University and a J.D. degree with honors in 1968 from George Washington University, where he graduated Order of the Coif. Following graduation, he was a law clerk for the U.S. Court of Customs and Patent Appeals. He has served as Chair of the Intellectual Property Law Section of the State Bar of California and as a Council member of the Intellectual Property Law Section of the American Bar Association. Mr. Pretty was also a member of the Board of Directors of the American Intellectual Property Law Association and has served as President of both the Los Angeles Intellectual Property Law Association and the Association of Business Trial Lawyers. He is an Adjunct Lecturer in patent and trademark law at the University of California, Los Angeles, School of Law. Mr. Pretty has written extensively for a variety of publications about patent litigation issues. He is the editor and co-author of the book Patent Litigation, published by the Practising Law Institute, and for over 10 years, served as Chair of the Practising Law Institute's program on "Patent Litigation." He is registered to practice before the U.S. Patent and Trademark Office.

MARCY RAILSBACK is a partner with the firm Browne Woods & George LLP in Los Angeles. Ms. Railsback earned a B.A. degree with high honors in 1974 from San Diego State University, where she was a member of the Phi Kappa Phi Honor Society, and a J.D. degree in 1978 from the University of California, Hastings College of the Law, where she was a member of the Thurston Society, Associate Research Editor of the Hastings Law Journal, and graduated Order of the Coif. Ms. Railsback is a member of the Association of Business Trial Lawyers, and was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. She primarily practices in the areas of business and real estate litigation, unfair competition, and defamation.

WILLIAM T. RINTALA is a partner with the firm Rintala, Smoot, Jaenicke & Rees in Los Angeles. Mr. Rintala earned a B.A. degree in 1961 from Stanford University and a J.D. degree in 1967 from the University of California, Berkeley, School of Law, where he was Executive Director of the California Law Review and graduated Order of the Coif. Following law school, he was law clerk for the Hon. Murray Draper, First Appellate District, Division 3 of the California Court of Appeal. Mr. Rintala has served as a member of the Board of Directors and as Chair of the Amicus Brief Committee of the Beverly Hills Bar Association. He is also a member of the Association of Business Trial Lawyers. He is presently a member of the Board of Directors of the Legal Aid Foundation of Los Angeles, and formerly served as a member of the Board of Directors of Public Counsel. Mr. Rintala was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. He also authored chapters in the second and third editions of California Civil Appellate Practice (3d ed Cal CEB 1996). He has lectured on copyright issues for both CEB and the Practising Law Institute. He has handled copyright, trademark, and unfair competition cases for Warner Bros., Twentieth Century-Fox Film Corporation, CBS, William Morris Agency, and Host Marriott Corporation and was co-counsel for the heirs of Margaret Mitchell in a successful suit to establish ownership of the motion picture sequel rights to "Gone With The Wind." He has also litigated a wide range of business disputes, including trade secrets, franchise issues, Uniform Commercial Code, wrongful termination, breach of contract, and talent agency disputes.

PETER W. ROSS is a partner with the firm Browne Woods & George LLP in Los Angeles. Mr. Ross earned a B.A. degree in 1980 from Carleton College, where he graduated magna cum laude and Phi Beta Kappa, and a J.D. degree in 1983 from Stanford Law School. He was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation, and has lectured on a variety of subjects involving competitive business practices at programs presented by CEB, CJER, and others. Mr. Ross regularly litigates in both state and federal court. His practice covers the spectrum of business litigation, ranging from theft of trade secrets, unfair business practices, intellectual property problems, partnership disputes, advertising and First Amendment issues, professional malpractice and employment issues to environmental problems.

NICK J. G. SANCHEZ is an associate with the firm Browne Woods & George in Los Angeles. Mr. Sanchez earned his B.A. degree in 1995 from Yale University, where he played quarterback for the Bulldogs' varsity football team. He obtained his J.D. degree in 2000 from the University of Southern California, where he co-founded "Project Pears," a nonprofit organization providing college preparatory training for economically disadvantaged high school students. During law school, Mr. Sanchez also served as a law clerk in the California Governor's Office, Legal Affairs Unit. His areas of specialty are civil litigation, government, and legislative practice.

BENJAMIN D. SCHEIBE is a founding member and partner of the firm Browne Woods & George LLP in Los Angeles. Mr. Scheibe was awarded a B.A. degree in 1978 from the University of California, Berkeley, where he was a member of Psi Chi, the National Honor Society in Psychology, and a J.D. degree in 1981 from the University of California, Los Angeles, School of Law, where he graduated Order of the Coif and was a member of the UCLA Law Review. He has served as both the Chair and Vice-Chair of the American Bar Association's Committee on Intellectual Property, Tort and Insurance Practice Section. He is also an active participant in the Association of Business Trial Lawyers and the California State Bar's Committee on Trade Secrets. Mr. Scheibe was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. He has written extensively on various business litigation-related issues, including trade secrets, insurance coverage for business disputes, and the First Amendment. He is a business litigator and trial attorney who concentrates his practice in the areas of business disputes, trade secret misappropriation, unfair competition, intellectual property rights, elections law, and First Amendment issues.

JOHN A. STURGEON is a partner with the firm White & Case in Los Angeles. Mr. Sturgeon earned an A.B. degree with honors in 1957 from Stanford University and a J.D. degree in 1962 from Stanford Law School. Mr. Sturgeon was a co-founder of the 1000-member Association of Business Trial Lawyers and has served on its Board of Governors. He is a Fellow of the American College of Trial Lawyers and a Fellow of the American Bar Association. He is also a member of the Los Angeles County Superior Court Arbitration Panel. In 1995, he was selected as one of the 100 most prominent Los Angeles business lawyers by the Los Angeles Business Journal. Mr. Sturgeon was a co-author of Competitive Business Practices (2d ed Cal CEB 1991), the predecessor of California Business Litigation. He has represented several banks, including Bank of America, Northern Trust Bank, and Wells Fargo Bank, in major lender liability cases and in cases involving general banking issues. His practice also includes trade secret and unfair competition cases, defense of securities class actions, real property disputes, trust and probate litigation, business torts, and disputes among partners and shareholders. Active in public issues, Mr. Sturgeon represented 70 California cities challenging the constitutionality of the Legislature's allocation of property tax revenue. He also represented the California Republican Party in reapportionment litigation before the California Supreme Court. He has handled over 40 appellate proceedings before the California Court of Appeals, the Ninth Circuit Court of Appeals, and the California Supreme Court.

About the 2017 Update Authors

IRA G. BIBBERO is an associate with Browne George Ross LLP in Los Angeles. Mr. Bibbero earned B.S. and M.S. degrees in computer engineering from Case Western Reserve University and a J.D. degree from the University of California, Los Angeles, School of Law. He served as an appellate court attorney for Justice Norman Epstein of the California Court of Appeal. Mr. Bibbero is experienced in business litigation, Indian law, and appellate practice. He is an update author of chapter 3.

ROBERT D. FISH is the update author of chapter 8; see his biography in the About the Authors section of this book.

ELENA NUTENKO is an associate with Browne George Ross LLP in Los Angeles. Ms. Nutenko earned an undergraduate degree from Northwestern University and a J.D. degree from the University of California, Los Angeles, School of Law. She litigates a wide range of entertainment, intellectual property, and business disputes. She is the update author of chapters 1 and 2

BENJAMIN D. SCHEIBE is a partner with Browne George Ross LLP in Los Angeles and is an update author of chapters 1, 2, 4, and 10 and update co-author of chapter 6; see his biography in the About the Authors section of this book.

KATHRYN STUART is a law clerk with Browne George Ross LLP in Los Angeles. Ms. Stuart received her B.S. from the University of Southern California and her J.D. from George Washington University Law School. Ms. Stuart worked as a summer associate at Browne George Ross during law school. Prior to law school, she worked in fashion and entertainment. She is an update author of chapters 3 and 6.

KEITH WESLEY is a partner with Browne George Ross LLP in Los Angeles. Mr. Wesley earned an undergraduate degree magna cum laude from Ohio Wesleyan University and a J.D. degree with high honors from George Washington University Law School. His practice encompasses all facets of business litigation, and he has particular expertise in the areas of trademark, trade dress, copyright, trade secrets, false advertising, unfair competition, insurance, and class actions. He is the update author of chapter 10.

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