News

Case Summaries

Commercial Law

[03/04] New York v. Golden Feather Smoke Shop, Inc.
In defendants' appeal from a preliminary injunction prohibiting the sale of untaxed cigarettes other than to members of the Unkechauge Nation for their personal use, the Second Circuit certifies the following questions to the New York Court of Appeals: 1) Does N.Y. Tax Law section 471-e, either by itself or in combination with the provisions of section 471, impose a tax on cigarettes sold on Native American reservations when some or all of those cigarettes may be sold to persons other than members of the reservation's nation or tribe?; 2) If the answer to Question 1 is "no," does N.Y. Tax Law section 471 alone impose a tax on cigarettes sold on Native American reservations when some or all of those cigarettes may be sold to persons other than members of the reservation's nation or tribe?

[03/02] Mac's Shell Serv., Inc. v. Shell Oil Prods. Co.
In an action under the Petroleum Marketing Practices Act (Act) by service station franchisees, alleging that a petroleum franchisor, Shell, and its assignee had constructively terminated their franchises and constructively failed to renew their franchise relationships by substantially changing the rental terms that the dealers had enjoyed for years, increasing costs for many of them, a circuit court's order partially affirming judgment for plaintiffs is affirmed in part where a franchisee who signs and operates under a renewal agreement with a franchisor may not maintain a constructive nonrenewal claim under the Act. However, the court of appeals' order is reversed in part where a franchisee cannot recover for constructive termination under the Act if the franchisor's allegedly wrongful conduct did not compel the franchisee to abandon its franchise.

[03/02] Pfizer v. Sup. Ct.
In plaintiffs' action against Pfizer, the manufacturer of Listerine mouthwash, pursuant to the Unfair Competition Law (UCL) and False Advertising Law claiming that Pfizer marketed the mouthwash in a misleading manner by representing that the use of it can replace the use of dental floss in reducing plaque and gingivitis, defendant's petition for writ of mandate seeking to overturn an order certifying the class action is granted as the ruling certifying a class consisting of all persons who purchased Listerine in California during a six-month period is overbroad, and In re Tobacco II Cases, 46 Cal.4th 298 (2009), does not require a different disposition in this case.

[03/02] Ad Hoc Shrimp Trade Action Comm. v. US
In plaintiff's action with the Court of International Trade challenging a determination that the multinational corporation provision, 19 U.S.C. section 1677b(d) (MNC Provision) did not apply to a company with affiliates in China and Vietnam, the court's decision is affirmed as the Department of Commerce acted in accordance with law in concluding that the MNC provision is not applicable when the non-exporting country is a nonmarket economy and normal value is based on a factors-of-production methodology.

[03/02] Ma v. Merrill Lynch, Pierce, Fenner & Smith, Inc.
In an action against Merrill Lynch based on unauthorized transfers from plaintiff's investment account, summary judgment for defendant is affirmed where New York U.C.C. Section 4-A-505, which imposes a one-year statute of repose on certain claims based on electronic funds transfers, bars plaintiffs' common law claims, which had longer limitations periods.

[03/01] Powershare, Inc. v. Syntel, Inc.
In parties' action for breach of a business agreement, a district court's denial of defendant's motion to stay litigation pending arbitration is reversed where: 1) the agreement contains a mandatory arbitration provision; and 2) the standard of review to be employed by a district judge when reviewing a magistrate judge's order on a motion to stay litigation pending the resolution of a parallel arbitration proceeding is under the "clearly erroneous or contrary to law" standard elucidated in Rule 72(a).

[02/26] Resolute Natural Resources Co. v. FERC
In a petition for review of certain orders of the Federal Energy Regulatory Commission (FERC) declining to investigate allegedly anticompetitive conduct by a refining company involving oil pipelines in New Mexico, the petition is dismissed where FERC decisions not to investigate were not subject to review.

[02/24] McAdams v. Monier, Inc.
In plaintiffs' action under the Consumer Legal Remedies Act and the Unfair Competition Law, claiming that defendant failed to disclose that the color composition of its roof tiles would erode away well before the end of the tiles' represented 50-year lifetime, trial court's order denying certification of the proposed CLRA and UCL classes are reversed where: 1) as to the elements of liability and reliance, plaintiffs' CLR cause of action, based on the alleged failure to disclose is suitable for class treatment; and 2) trial court used improper criteria and made erroneous legal assumptions in denying certification of the proposed UCL class, and on remand, court is instructed to determine if the representative plaintiff meets the UCL standing requirements set forth in Tobacco II.

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Contracts

[03/09] George's Inc. v. Allianz Global Risks US Ins. Co.
In an action against an insurer claiming that defendant failed to indemnify plaintiff for business expenses and personal property losses as required under the terms of its insurance policy, partial summary judgment for defendant on the personal property claim is affirmed, but a partial denial of summary judgment on the business expenses claim is reversed where the policy unambiguously excludes coverage for plaintiff's claimed losses.

[03/09] HealthEast Bethesda Hosp. v. United Commercial Travelers of Am.
In an action for breach of an insurance settlement contract, summary judgment for plaintiff is affirmed where: 1) defendant was not an unsophisticated party because it had significant experience in handling and negotiating claims with healthcare providers; 2) because defendant bore the risk of mistake, the district court properly denied rescission based on unilateral mistake; and 3) the record of inaction by defendant strongly supported the denial of relief under both unilateral and mutual mistake.

[03/09] Hoopa Valley Tribe v. US
In an action against the United States for breach of fiduciary duty brought by the Hoopa Valley Tribe, arising from the distribution of the remainder in a Settlement Fund established under the Hoopa-Yurok Settlement Act only to the Yurok Tribe, summary judgment in favor of the government is vacated and remanded where: 1) the Hoopa Valley Tribe lacks standing because it cannot show an injury in fact; but 2) the matter should have been dismissed without prejudice

[03/04] Pac. Bell Tel. Co. v. Cal. Pub. Utils. Comm.
In a telecommunications company's appeal from (1) the district court's confirmation of an arbitral order affirming the California Public Utilities Commission's (CPUC) requirement that plaintiff lease entrance facilities to competitor local exchange carriers (LECs) at Total Element Long Run Incremental Cost (TELRIC) rates for the purpose of interconnection; and (2) the district court's order vacating the arbitrator's affirmance of CPUC's conclusion that 47 C.F.R. section 51.319(e)(2)(ii)(B) applied only on routes where competitive LECs were not "impaired" as to DS3 transport circuits, the orders are affirmed where: 1) FCC regulations authorized state public utilities commissions to order incumbent LECs to lease entrance facilities to competitive LECs at regulated rates for the purpose of interconnection; and 2) the plain language of the governing regulation, 47 C.F.R. section 51.319(e (2)(ii)(B), limited a competitive LEC to a maximum of ten DS1 circuits along any route regardless of whether the competitive LEC was impaired as to DS3 lines.

[03/04] Smith v. Adventist Health Sys.
In plaintiff's action against defendant-hospital group seeking a preliminary injunction for rejecting his application for hospital privileges and medical staff membership at defendant's hospital, judgment granting the injunction and restoring his privileges is affirmed and the court did not err when it: 1) impliedly found that a statutorily required injunction bond had been waived or forfeited; 2) expressly found that plaintiff was likely to prevail on the merits; and 3) balanced the likely interim harm to the parties of granting or denying the preliminary injunction.

[03/04] Nickey Gregory Co., LLC v. AgriCap, LLC
In plaintiffs' action under the Perishable Agricultural Commodities Act (PACA), to recover from the defendant's finance company $106,696 owed them for the sale of produce to the defendant, judgment of the district court is affirmed in part, vacated in part and remanded where: 1) the district court correctly concluded that defendant's accounts receivable were held by the finance company as collateral for a loan and therefore were subject to a PACA trust; 2) district court properly rejected the finance company's BFP defense; and 3) district court's damage award is vacated and remanded to award commodities sellers the full amount of their unpaid balance.

[03/03] City of Laguna Beach v. California Ins. Guarantee Ass'n
In a city's action against an insurance company seeking reimbursement for incurring workers' compensation liability that exceeded its self-insured retention, grant of insurance company's motion for summary judgment is affirmed where: 1) the addition of subdivision (c)(13) to Ins. Code section 1063.1 did not abrogate Denny's Inc. v. Workers' Comp. Appeals Bd., 104 Cal.App.4th 1433 (2003); 2) the trial court properly invoked the Denny's rule when it granted summary judgment and concluded that the city cannot obtain reimbursement from defendant under section 1063.1(c)(13) as, although this provision renders the obligation of an insolvent excess workers' compensation insurer a "covered claim" that defendant must ordinarily reimburse, defendant need not reimburse a permissibly self-insured employer for benefits paid to an employee for cumulative injury if the employer's liability is based in part on a period of time when the employer was self-insured and chose not to buy excess insurance for the particular risk.

[03/03] Fed. Ins. Co. v. Commerce Ins. Co.
In plaintiff-insurance company's subrogation claim, district court's grant of summary judgment in favor of defendants in concluding that the implied coinsured doctrine controlled the outcome in this case and precluded the plaintiff from pursuing a subrogation claim is affirmed as plaintiff has not met its burden of proving that the "Responsibility for Damages" provision of a Residence and Care Agreement (RCA) overcomes the presumption that the landlord's insurance is held for the mutual benefit of both parties.

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Copyright

[03/02] Reed Elsevier, Inc. v. Muchnick
In a class action alleging copyright infringement, a circuit court's ruling vacating a settlement class certification order for lack of subject matter jurisdiction is reversed where 17 U.S.C. section 411(a)'s registration requirement is a precondition to filing a copyright infringement claim, but a copyright holder's failure to comply with that requirement does not restrict a federal court's subject matter jurisdiction over infringement claims involving unregistered works.

[02/25] Maverick Recording Co. v. Harper
In a copyright infringement action based on unlawful file sharing, partial summary judgment for plaintiffs is affirmed where: 1) the uncontroverted evidence was more than sufficient to compel a finding that defendant had downloaded the files; and 2) defendant infringed plaintiffs' exclusive right to reproduce their copyrighted works by downloading the 37 audio files to her computer without authorization. Moreover, the partial denial of summary judgment for plaintiffs is reversed where lack of legal sophistication could not overcome a properly asserted 17 U.S.C. 402(d) limitation to the innocent infringer defense.

[02/25] Gaylord v. US
In plaintiff's suit against the United States for copyright infringement involving stamps issued by the US Postal Service that made use of plaintiff's copyrighted work, depicting part of the Korean War Veterans Memorial, judgment of the United States Court of Federal Claims is affirmed in part, reversed in part, and remanded where: 1) weighing the factors, the government's use of plaintiff's copyrighted work in the stamp was not a fair use; and 2) the Court of Federal Claims did not clearly err in determining that authorship of the art rested solely with plaintiff.

[02/19] Utopia Provider Sys., Inc. v. Pro-Med Clinical Sys., L.L.C.
In a copyright infringement action based on defendant's alleged misappropriation of plaintiff's paper templates designed to capture a physician-patient encounter, summary judgment for defendant is affirmed where the selection and arrangement of the terms in the template did not convey information and was not sufficiently original.

[01/29] Latin American Music Co. v. American Soc'y of Composers Authors & Publishers
In parties' dispute over the rights to a song, jury verdict in favor of the defendants is affirmed where: 1) district court did not err in instructing the jury with respect to a 1982 contract; 2) district court did not err in refusing to give a missing witness instruction; and 3) plaintiff's remaining claims are rejected.

[01/27] Massachusetts Museum of Contemporary Art Found., Inc. v. Buchel
In a dispute between an artist and a museum over the implementation and installation of a football-field sized artwork, judgment of the district court in favor of the museum is affirmed in part, vacated in part and remanded where: 1) the Visual Artists Rights Act (VARA) applies to unfinished works, and as such, genuine issues of material fact forecloses summary judgment on one of the artist's VARA claims - that the museum violated his right of artistic integrity by modifying the installation; and 2) the artist asserted a viable claim under the Copyright Act that the museum violated his exclusive right to display his work publicly.

[12/01] Guessous v. Chrome Hearts, LLC
In plaintiff's suit against defendant for infringement of jewelry designs, trademarks and copyrights, trial court's decision denying plaintiff's motion to strike defendant's complaint under the anti-SLAPP statute is affirmed as the filing of a lawsuit in a foreign country is not protected activity under the United States or California Constitutions as to implicate the statute.

[11/05] Schrock v. Learning Curve Int'l, Inc.
In plaintiff's copyright infringement action against defendant who had hired him to take photos of the "Thomas & Friends" toy train characters for use in promotions, district court's dismissal of his complaint is reversed where: 1) the photos qualify for the limited derivative-work copyright provided by section 103(b) as plaintiff's artistic and technical choices combine to create a two-dimensional image that is subtly but nonetheless sufficiently his own; and 2) district court erred in concluding that plaintiff needed defendant's permission to copyright the photos, as there is nothing in the Copyright Act requiring the author of a derivative work to obtain permission to copyright his work from the owner of the copyright in the underlying work.

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Dispute Resolution & Arbitration

[03/04] Pac. Bell Tel. Co. v. Cal. Pub. Utils. Comm.
In a telecommunications company's appeal from (1) the district court's confirmation of an arbitral order affirming the California Public Utilities Commission's (CPUC) requirement that plaintiff lease entrance facilities to competitor local exchange carriers (LECs) at Total Element Long Run Incremental Cost (TELRIC) rates for the purpose of interconnection; and (2) the district court's order vacating the arbitrator's affirmance of CPUC's conclusion that 47 C.F.R. section 51.319(e)(2)(ii)(B) applied only on routes where competitive LECs were not "impaired" as to DS3 transport circuits, the orders are affirmed where: 1) FCC regulations authorized state public utilities commissions to order incumbent LECs to lease entrance facilities to competitive LECs at regulated rates for the purpose of interconnection; and 2) the plain language of the governing regulation, 47 C.F.R. section 51.319(e (2)(ii)(B), limited a competitive LEC to a maximum of ten DS1 circuits along any route regardless of whether the competitive LEC was impaired as to DS3 lines.

[03/01] Powershare, Inc. v. Syntel, Inc.
In parties' action for breach of a business agreement, a district court's denial of defendant's motion to stay litigation pending arbitration is reversed where: 1) the agreement contains a mandatory arbitration provision; and 2) the standard of review to be employed by a district judge when reviewing a magistrate judge's order on a motion to stay litigation pending the resolution of a parallel arbitration proceeding is under the "clearly erroneous or contrary to law" standard elucidated in Rule 72(a).

[02/26] Gravillis v. Coldwell Banker Residential Brokerage Co.
In plaintiff's action against his brokers for failing to disclose the structural damage of his home, trial court's decision affirming the arbitrator's award of damages in favor of the plaintiff is affirmed as the arbitration agreement does not explicitly and unambiguously provide for an expanded scope of review.

[02/24] Drum v. San Fernando Valley Bar Ass'n
In plaintiff's action against a bar association, trial court's grant of defendant's dismissal is affirmed as a voluntary bar association did not engage in an unfair business practice when, allegedly, it unilaterally refused to sell its membership mailing list to a person who intended to offer low-priced mediation services in competition with higher-priced mediation offered by some of the association's members.

[02/22] Oaktree Capital Mgmt., LP. v. Bernard
Trial court's judgment confirming an arbitration award against defendant-investor for breach of fiduciary duty, arising from his failure to disclose an investment opportunity to his real estate investment hedge fund is affirmed as the arbitration agreement here barred judicial review, as it stated that the arbitrator's award will be "binding" and that "all decisions of the arbitrator...shall not be subject to appeal."

[02/22] Raymond James Fin. Servs. Inc. v. Bishop
A decision vacating an arbitration panel's award of compensatory damages in favor of three financial advisors arising from their claims of wrongful discharge, pursuant to the rules of the National Association of Securities Dealers (NASD), is affirmed where: 1) the district court did not abuse its discretion in remanding the award to the arbitration panel for clarification of the bases of the award; 2) the arbitration panel committed no mere error of law, rather, by rendering an award whose underlying legal basis exceeded the bounds of arbitrable employment-related disputes cognizable under NASD Rule 10101 as interpreted in Zandford v. Prudential-Bache Secs., Inc., 112 F.3d 723 (4th Cir. 1997), the panel exceeded its powers under 9 U.S.C. section 10(a)(4).

[02/18] In the Matter of N.Y. City Transit Auth.
In a CPLR article 75 proceeding to vacate a labor arbitration award which modified a New York Transit Authority employee's penalty (for allegedly assaulting a member of the public) from termination to reinstatement without back pay, confirmation of the award is affirmed where the arbitrator did not exceed his power under the collective bargaining agreement by modifying the disciplinary sanction imposed on an employee by a transit authority.

[02/18] Suh v. Sup. Ct.
Plaintiff-anesthesiologists' petition for a writ of mandate, arising from two anesthesiology contracts with a hospital, is granted where: 1) plaintiffs did not agree to arbitrate disputes relating to one of the contracts; and 2) the terms of the arbitration clause in the other contract are, because of the applicable rules limiting damage remedies, unconscionable, rendering the agreement to arbitrate unenforceable.

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International Law

[03/02] Davis v. Brouse McDowell, LPA
In plaintiff's legal malpractice suit claiming that defendants failed to timely file three patent applications related to a website-search engine, summary judgment in favor of the defendants is affirmed where: 1) the district court exercised proper jurisdiction over plaintiff's malpractice cause of action; 2) the court did not abuse its discretion in striking portions of the supplemental affidavit of plaintiff's patent law expert; and 3) plaintiff failed to introduce evidence sufficient to establish a genuine issue of material fact as to the patentability of her inventions.

[03/02] Brzak v. United Nations
In a sex discrimination action against the United Nations and various UN officials, the dismissal of the complaint is affirmed where: 1) the UN and the related individual defendants had, respectively, absolute and functional immunity from suit; and 2) plaintiffs offered no principled arguments as to why the continuing existence of immunities violates the Constitution.

[02/23] Gonzalez-Vera v. Townley
In an action seeking to invoke one of 18 U.S.C. section 3523's enforcement procedures, the appointment of a guardian to help collect a judgment against an individual under the Witness Protection Program, the dismissal of the complaint is affirmed where: 1) Congress intended to make guardianship available only where the Attorney General found that the protected person was failing to make reasonable efforts?that is, only where disclosure to a guardian was necessary to enforce the judgment; and 2) here, the Attorney General determined that the protected person was making reasonable efforts to satisfy the judgment.

[02/16] Petition to Vacate an Adoption Decree, in the Adoption of John Doe
In a petition to vacate an adoption decree, the order granting the petition is affirmed where: 1) one of the adoptive parents became the child's father in June 2004, not only under the law of Cambodia but also under the law of New York; 2) his parental rights weren't effectively relinquished or extinguished; and 3) thus the other adoptive parent could not adopt the child without his consent (which was not given).

[02/16] US v. Duran
Defendant's conviction for knowingly acting in the U.S. as an agent of a foreign government is affirmed where: 1) the plain language of 18 U.S.C. section 951 and its corresponding regulations gave notice of what was prohibited and were readily understandable to a person of ordinary intelligence; 2) section 951's plain language made it clear that it was a general intent crime, as there was no mens rea element on the face of the statute; and 3) the district court did not abuse its discretion in excluding evidence of mens rea to show that defendant and his co-conspirators did not know of the notification requirement under section 951.

[02/10] Marathon A.G. Holding Ltd. v. CMS Enters. Co.
In an action for breach of contract based on defendant's refusal to indemnify plaintiff for its payments to the Republic of Equatorial Guinea in settlement of tax audits, summary judgment for defendant is affirmed where: 1) the plain language of the parties' agreement, informed by the parties' prior negotiations and the usage evidence, clearly established that defendant was required to indemnify plaintiff only for taxes paid for income that was earned before January 1, 2002; and 2) plaintiff's separate claim for indemnification for payment of withholding taxes was time-barred.

[02/08] Bardales v. Duarte
In a mother's petition seeking return of her children under the Hague Convention alleging that the father wrongfully retained the two older children and wrongfully removed the two younger children to the United States in violation of the Convention, the judgment of the trial court is affirmed where: 1) trial court had the power to dismiss the Convention petition for delayed prosecution and proceed on child custody matters; and 2) Convention and the International Child Abduction Remedies Act do not preclude dismissal of a petition for delayed prosecution.

[01/22] Baragona v. Kuwait Gulf Link Transp. Co.
In a tort action arising from the death of plaintiffs-parents' son in a traffic collision with a truck operated by defendant-Kuwaiti corporation in Iraq, a district court order vacating a default judgment against defendant is affirmed where the district court did not err in finding that defendant lacked the necessary minimum contacts with Georgia to give rise to personal jurisdiction.

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International Trade

[03/08] Ajinomoto Co., Inc. v. Int'l Trade Comm'n
In plaintiffs' suit alleging violation of section 337 of the Tariff Act in the importation and sale of certain lysine feed products made by the methods claimed in their patents relating to improved methods of producing L-lysine with genetically engineered E-Coli bacteria, the International Trade Commission's determination of no section 337 violation is affirmed where: 1) the asserted claims of plaintiffs' '698 patent and '160 patents are invalid under 35 U.S.C. section 112 for failure to comply with the best mode requirement; and 2) plaintiffs' argument that the Commissioner erred in finding '698 patent is unenforceable due to inequitable conduct is waived.

[03/02] Ad Hoc Shrimp Trade Action Comm. v. US
In plaintiff's action with the Court of International Trade challenging a determination that the multinational corporation provision, 19 U.S.C. section 1677b(d) (MNC Provision) did not apply to a company with affiliates in China and Vietnam, the court's decision is affirmed as the Department of Commerce acted in accordance with law in concluding that the MNC provision is not applicable when the non-exporting country is a nonmarket economy and normal value is based on a factors-of-production methodology.

[02/10] Marathon A.G. Holding Ltd. v. CMS Enters. Co.
In an action for breach of contract based on defendant's refusal to indemnify plaintiff for its payments to the Republic of Equatorial Guinea in settlement of tax audits, summary judgment for defendant is affirmed where: 1) the plain language of the parties' agreement, informed by the parties' prior negotiations and the usage evidence, clearly established that defendant was required to indemnify plaintiff only for taxes paid for income that was earned before January 1, 2002; and 2) plaintiff's separate claim for indemnification for payment of withholding taxes was time-barred.

[02/05] Totes-Isotoner Corp. v. US
In plaintiff's claim that the Harmonized Tariff Schedule of the United States unconstitutionally denies equal protection of the laws by imposing different rates of duty on seamed leather gloves "for men" and seamed leather gloves "for other persons", judgment of the United States Court of International Trade dismissing the claim is affirmed where: 1) the CIT's judgment concluding that it had jurisdiction under section 1581(i), that plaintiff has standing to bring its claims, and that plaintiff's equal protection claims are justiciable is affirmed; but 2) plaintiff has failed to state an equal protection claim due to its failure to plead facts sufficient to allege a claim of unconstitutional discrimination.

[02/01] Tr. in Bankr. of N. Am. Rubber Thread Co., Inc. v. US
In United States' challenge to the Court of International Trade's (CIT) jurisdiction to hear the Commerce's refusal to undertake a second changed circumstances review involving an antidumping duty order covering extruded rubber thread from Malaysia, judgment of the CIT is affirmed in part, reversed in part, and vacated in part where: 1) the CIT had jurisdiction over North American Rubber Thread's (NART) challenge but not the foreign industry's challenge; and 2) NART was judicially estopped from challenging an October 1, 1995 effective date, given its earlier argument to Commerce that a revocation date of October 1, 1995 was inappropriate.

[01/19] Chrysler Corp. v. US
Judgment of the United States Court of International Trade upholding a denial by United States Custom and Border Protection of a refund on the Harbor Maintenance Tax (HMT) allegedly paid by Chrysler on exports before July 1, 1990 is affirmed where: 1) Customs retains the authority under the HMT statute to amend and enforce its refund regulations as applied to export HMT; 2) Chrysler failed to raise a genuine issue of fact regarding the validity of the regulation or its compliance with that regulation; and 3) the trade court clearly acted within its discretion in declining to impose an adverse inference.

[01/05] Outer Circle Prod. v. US
Judgment of the United States Court of International Trade classifying petitioner's bottle and jug wraps under subheading 4202.92.90 of the Harmonized Tariff Schedule of the United States (HTSUS) is reversed where, because the subject articles "organize, store, protect, or carry food or beverages," the proper classification is HTSUS subheading 3924.10.50.

[12/15] Agro Dutch Indus. Ltd. v. US
Judgment of the Court of International Trade ordering the re-liquidation of imported entries of preserved mushrooms from India by plaintiff is affirmed where: 1) although the Zenith rule ordinarily renders moot court actions in which liquidation has already occurred, there are exceptions to that general rule as in this case where steps are required to enforce a valid injunction; and 2) here, the trial court did not abuse its discretion in amending the judgment to effect the parties' intent to prevent liquidation and allow adjudication of the merits of the dispute.

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Trade Secrets

[02/12] Ansys, Inc. v. Computational Dynamics N. Am., Ltd.
In plaintiff's suit against its former employee and his new employer (a competitor) claiming breach of noncompetition and confidentiality clauses in the employee's employment contract, interference with contractual relations, misappropriation of trade secrets, and unfair trade practices, denial of plaintiff's request for preliminary injunction to enforce the provisions of a one-year noncompetition clause in the employment agreement is affirmed as the district court did not abuse its discretion by finding that plaintiff has failed to make a showing of likelihood of success on the breach of contract claim, or a likelihood of irreparable injury.

[12/29] Jasmine Networks, Inc. v. Sup. Ct.
In plaintiff's action under the California Uniform Trade Secrets Act claiming that the defendants misappropriated certain trade secrets belonging to plaintiff, trial court's dismissal of the complaint on the ground that plaintiff had forfeited its standing to maintain an action for misappropriation when it had gone through bankruptcy proceedings shortly after filing the complaint is reversed where: 1) a current ownership requirement is not supported by general principles of property or tort law; 2) existing authority imposes no "current ownership requirement" on trade secret plaintiffs; 3) adoption of a current ownership requirement in trade secrets cases is not warranted by analogy to trademark, patent, or copyright law; and 4) no policy concern preponderates in favor of current ownership requirement.

[12/03] Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.
In a patent infringement action involving patents related to rapid-hardening, high-strength cement, summary judgments finding noninfringement and that no trade secret was violated is affirmed in part, dismissed in part, vacated in part, reversed in part, and remanded where: 1) district court's finding of noninfringement is vacated and remanded as the court erred in claim construction of the the term "soluble CaSo4 anhydride"; 2) district court's grant of summary judgment of laches is reversed and remanded relating to one patent as it was not clear that plaintiff knew or should have known of defendant's alleged infringement before it conducted discovery on another patent in 2002; 3) district court erred in granting summary judgment finding that one patent claim was indefinite; 4) plaintiffs' appeal with respect to one patent is dismissed as it waived the argument of its invalidity; 5) denial of plaintiffs' motion to amend their complaint is affirmed; 6) summary judgment finding no trade secret violations is affirmed; 7) the district court did not abuse its discretion in denying plaintiffs' motion to disqualify defendants' attorneys; and 8) the district court's decision on exceptional case status is vacated for further proceedings on remand.

[11/24] Standard Microsystems Corp. v. Winbond Elec. Corp.
In plaintiff's suit against a Taiwanese corporation and an Israeli corporation claiming that they misappropriated the design of a microchip used in manufacturing personal computers, trial court's entry of default judgment against defendants is reversed where: 1) undisputed facts plainly establish defendants' attorney's fault necessary to trigger a right to mandatory relief; 2) plaintiff's argument that relief was barred by Code of Civ. Proc. section 1008, which restricts motions for reconsideration and renewals of previously denied motions, is rejected; and 3) to the extent a literal application of section 1008 might conflict with the provisions of section 473(b), the latter must prevail.

[11/05] Perlan Therapeutics, Inc. v. Sup. Ct.
In plaintiff's case against the defendant for misappropriation of its trade secrets of an anti-viral protein based therapeutic used as a daily nasal spray for the prevention and treatment of the common cold, plaintiff's petition for a writ of mandate to compel the trial court to accept plaintiff's trade secret identification statement as sufficient and to allow it to commence discovery is denied where: 1) the trial court applied the correct legal standard to plaintiff's trade secret identification statement; and 2) there was a basis in the record to support the court's conclusion that the statement was not reasonably particular under the circumstances presented.

[10/27] Awuah v. Coverall N. Am, Inc.
In a class action lawsuit against defendants brought by their franchisees, defendants' interlocutory appeal seeking review of a discovery-related order by the district court is dismissed for want of a final judgment.

[10/05] Premium Mortgage Corp. v. Equifax, Inc.
In an action for misappropriation of trade secrets against credit reporting agencies engaged in the practice of permitting lenders competing with plaintiff to purchase pre-screened consumer reports containing "trigger leads" compiled by plaintiff, dismissal of the action is affirmed where: 1) the Fair Credit Reporting Act preempted state law claims based on pre-screened reports; and 2) plaintiff failed to identify the legal basis for defendants' alleged duty and obligation to maintain the confidentiality of trigger leads.

[09/21] Southwest Stainless, LP v. Sappington
In an action for breach of a noncompetition agreement restricting defendants' ability to work with competitors, judgment for plaintiff is affirmed in part where the district court properly distinguished in its findings of fact between plaintiff's general lost profits and profits lost on specific orders. However, judgment for plaintiff is reversed in part where certain information used by defendants did not qualify as a trade secret because plaintiff disclosed this information to its customers without reservation.

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Trademark

[03/04] US v. Xu
Defendant's conviction for trafficking in counterfeit pharmaceutical drugs is vacated as to one count where a rational juror could not have found beyond a reasonable doubt that the Zyprexa mark, allegedly misappropriated by defendant, was registered on the USPTO's principal register.

[03/03] In re: Whirlpool Corp.
In a trademark infringement suit brought by LG Electronics against Whirlpool, relating to a dryer that uses steam to reduce wrinkles, Whirlpool's petition for a writ of mandate challenging the district court's order to disclose communications between its attorneys and its outside advertising agencies is denied as it failed to show both that the order will be effectively unreviewable if Whirlpool is forced to wait until the end of the case and also that the order is patently erroneous or usurpative in character. Furthermore, the Supreme Court held in Mohawk Indus., Inc. v. Carpenter, 130 S. Ct. 599 (2009), that rulings that allegedly infringe upon the attorney-client privilege are not appealable as collateral orders, and as such, the appeal must be dismissed for lack of jurisdiction.

[01/05] Great Clips, Inc. v. Hair Cuttery of Greater Boston, LLC
In a trademark dispute between companies in the hair care industry involving a settlement agreement entered into nineteen years ago in which their predecessors stipulated to the withdrawal of the parties' respective claims and to not object further to the registration of the others' trademark, district court's grant of plaintiff's request for declaratory judgment is affirmed as, notwithstanding possible arguments on each side about potential confusion between their respective phrases, "Great Cuts" and "Great Clips", no evidence is offered that the parties sought only to allow each to register its mark but to reserve for future litigation the practical consequences of registration.

[12/23] In Re Sones
Decision of the Trademark Trial and Appeal Board, denying petitioner's registration application for the mark "One Nation Under God" for charity bracelets, is vacated and remanded as a picture is not a mandatory requirement for a website-based specimen of use, and the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is "associated" with the goods and services as an indicator of source.

[12/03] Starbucks Corp. v. Wolfe's Borough Coffee, Inc.
In a trademark infringement action by Starbucks Corp. regarding a competitor's use of the name "Charbucks," judgment for defendant is affirmed in part where: 1) the district court did not clearly err in finding that the Charbucks Marks were minimally similar to the Starbucks Marks; 2) the Charbucks line of coffee was marketed as a product of very high quality ? as Starbucks also purported its coffee to be ? which was inconsistent with the concept of tarnishment. However, the judgment is vacated in part where the district court needed to conduct further proceedings on the issue of whether Starbucks demonstrated a likelihood of dilution by "blurring" under federal trademark law.

[12/01] Guessous v. Chrome Hearts, LLC
In plaintiff's suit against defendant for infringement of jewelry designs, trademarks and copyrights, trial court's decision denying plaintiff's motion to strike defendant's complaint under the anti-SLAPP statute is affirmed as the filing of a lawsuit in a foreign country is not protected activity under the United States or California Constitutions as to implicate the statute.

[11/16] Lahoti v. VeriCheck, Inc.
In an action seeking a declaratory judgment that plaintiff's acquisition of the vericheck.com domain name did not constitute trademark infringement or cybersquatting, judgment against plaintiff is vacated and remanded where the district court's factual decision that the "VeriCheck" mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court's conclusion.

[11/13] Kim Seng Co. v. Great Am. Ins. Co. of New York
In a dispute over whether plaintiff's insurer had a duty to defend and indemnify plaintiff in a trademark infringement action under an "advertising injury" policy, summary judgment for insurance company is affirmed as the prior publication exclusion in the policy bars coverage for trademark infringement in this case.

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Intellectual Property

[03/09] Richardson v. Stanley Works, Inc.
In an action for patent infringement relating to a design patent for a multi-function carpentry tool that combines a hammer with a stud climbing tool and a crowbar, a district court's finding of noninfringement is affirmed as the district court correctly construed the claim at issue and correctly determined that the patent was not infringed.

[03/08] Ajinomoto Co., Inc. v. Int'l Trade Comm'n
In plaintiffs' suit alleging violation of section 337 of the Tariff Act in the importation and sale of certain lysine feed products made by the methods claimed in their patents relating to improved methods of producing L-lysine with genetically engineered E-Coli bacteria, the International Trade Commission's determination of no section 337 violation is affirmed where: 1) the asserted claims of plaintiffs' '698 patent and '160 patents are invalid under 35 U.S.C. section 112 for failure to comply with the best mode requirement; and 2) plaintiffs' argument that the Commissioner erred in finding '698 patent is unenforceable due to inequitable conduct is waived.

[03/04] US v. Xu
Defendant's conviction for trafficking in counterfeit pharmaceutical drugs is vacated as to one count where a rational juror could not have found beyond a reasonable doubt that the Zyprexa mark, allegedly misappropriated by defendant, was registered on the USPTO's principal register.

[03/04] Tivo Inc. v. Echostar Corp.
In a patent infringement action against EchoStar, relating to the software component of plaintiff's patent that allows television users to simultaneously record and play broadcasts using what is commonly known as a digital video recorder (DVR), district court's decision finding defendants in contempt of a permanent injunction is affirmed where: 1) the district court did not abuse its discretion in its decision to hold contempt proceedings; 2) there was clear and convincing evidence before the district court to find that both types of EchoStar receivers continue to infringe and that it was not an abuse of discretion for the ocurt to find EchoStar in contempt of the infringement provision; and 3) given defendant's refusal to disable the DVR functionality in its existing devices and the fact that its original attempts to design around TiVo's patent were wholly unsuccessful, the district court had ample justification for its determination that court pre-approval of any new design-around effort was necessary to prevent future infringing activity.

[03/03] In re: Whirlpool Corp.
In a trademark infringement suit brought by LG Electronics against Whirlpool, relating to a dryer that uses steam to reduce wrinkles, Whirlpool's petition for a writ of mandate challenging the district court's order to disclose communications between its attorneys and its outside advertising agencies is denied as it failed to show both that the order will be effectively unreviewable if Whirlpool is forced to wait until the end of the case and also that the order is patently erroneous or usurpative in character. Furthermore, the Supreme Court held in Mohawk Indus., Inc. v. Carpenter, 130 S. Ct. 599 (2009), that rulings that allegedly infringe upon the attorney-client privilege are not appealable as collateral orders, and as such, the appeal must be dismissed for lack of jurisdiction.

[03/02] Reed Elsevier, Inc. v. Muchnick
In a class action alleging copyright infringement, a circuit court's ruling vacating a settlement class certification order for lack of subject matter jurisdiction is reversed where 17 U.S.C. section 411(a)'s registration requirement is a precondition to filing a copyright infringement claim, but a copyright holder's failure to comply with that requirement does not restrict a federal court's subject matter jurisdiction over infringement claims involving unregistered works.

[03/02] Davis v. Brouse McDowell, LPA
In plaintiff's legal malpractice suit claiming that defendants failed to timely file three patent applications related to a website-search engine, summary judgment in favor of the defendants is affirmed where: 1) the district court exercised proper jurisdiction over plaintiff's malpractice cause of action; 2) the court did not abuse its discretion in striking portions of the supplemental affidavit of plaintiff's patent law expert; and 3) plaintiff failed to introduce evidence sufficient to establish a genuine issue of material fact as to the patentability of her inventions.

[03/01] Comaper Corp. v. Antec, Inc.
In a patent infringement suit involving a patent directed to a cooling device designed to mount within the drive bay of a computer, district court's finding that defendant willfully infringed certain claims of plaintiff's patent, that certain independent claims were not invalid as obvious, and that certain dependent claims were obvious is affirmed in part, vacated in part and remanded where: 1) defendant's contention that a new trial is required because the district court's claim constructions were in error is rejected as the court's claim constructions were correct; but 2) the district court was required to grant a new trial because the jury's verdicts on obviousness were irreconcilably inconsistent.

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