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James is a shareholder in Weintraub Tobin’s litigation section.  He represents corporate and individual clients in both state and federal courts in various business litigation matters, including trade secret misappropriation, unfair business competition, stockholder disputes, and intellectual property disputes.

Trademark law was developed to help protect a seller’s “brand” in connection with the marketing and labeling of products for sale to avoid “consumer confusion.” One rarely litigated aspect of trademark law is that the use of the trademark must be for a lawful purpose. The Ninth Circuit recently tackled this issue in AK Futures LLC v. Boyd Street Distro, LLC (decided May 19, 2022), a case that involved e-cigarette and vaping products derived from cannabis.
Continue Reading Trademark Protection and the Lawful Use Requirement

Over two and a half years ago, this column analyzed a Ninth Circuit case titled HiQ Labs, Inc. v. LinkedIn Corporation, in which the Court agreed with a lower court that had issued a preliminary injunction against LinkedIn from taking certain technical measures to prevent HiQ, a data analytics company, from “scraping” information from publicly available profiles on LinkedIn’s site. The Ninth Circuit concluded then that HiQ was not violating the Computer Fraud and Abuse Act (“CFAA”) because its activities were directed at publicly available information and therefore, it was not accessing LinkedIn’s computer systems either without authorization or in excess of such authorization as required to establish liability under the CFAA.
Continue Reading The Continuing Battle Over LinkedIn Profiles and the Applicability of the Computer Fraud and Abuse Act

This column previously addressed the case of Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., when it was decided by the Ninth Circuit about two years ago. Unicolors is the owner of copyrights in various fabric designs, including a 2011 copyright registration that consisted of 31 separate designs. Unicolors sued H&M for copyright infringement when H&M stores began selling a jacket and skirt that contained artwork that Unicolors claimed to be identical to one of the designs in its 2011 registration. The jury found in Unicolors favor and H&M moved the court for judgment as a matter of law, which the trial court denied. On appeal, the Ninth Circuit disagreed with the district court and ruled that because Unicolors had made a mistake of law in connection with the registration (i.e. it registered it as a single publication when some of the designs were apparently not put on sale to the public all at once), the registration should have been found to be invalid. Unicolors appealed this decision to the U.S. Supreme Court, which heard the case last November.
Continue Reading Is that Bird A Cardinal or a Scarlet Tanager? Who Cares. The U.S. Supreme Court Weighs in on Copyright Infringement and the Issue of Mistake

Greg Kihn is a musician best known for his 1983 hit song, “Jeopardy.” In 2017, he (and his publishing company) filed suit against Bill Graham Archives, LLC, which did business as Wolfgang’s Vault. Wolfgang’s Vault is a website where visitors could, for a fee, access thousands of live musical performances from the 1950s to the 1990s. Mr. Kihn’s complaint alleged violations of federal copyright and anti-bootlegging laws. He sought to bring these claims of a class of other performers similarly situated.
Continue Reading Copyright Infringement and Class Certification Issues

The Ninth Circuit was recently asked to determine whether to continue to apply the Circuit’s two-part extrinsic/intrinsic test for “substantial similarity” with regard to a copyright infringement claim or to depart from this approach and apply the Second Circuit’s “ordinary observer” test instead. In Johannsongs-Publishing, Ltd. v. Lovland, an unpublished opinion issued on November 29, 2021, the Ninth Circuit declined to depart from its precedence and affirmed summary judgment in favor of defendants who were accused of copyright infringement in connection with the song You Raise Me Up.
Continue Reading Ninth Circuit Refuses to Adopt “Ordinary Observer” Test for Substantial Similarity and Copyright Infringement