By James Kachmar

Under the California trade secret statute, the court may award attorneys’ fees where there has been a willful and malicious misappropriation of plaintiff’s trade secrets or when a trade secret misappropriation claim is brought in bad faith.  (See Civil Code §3426.4.)  In Weco Supply Company, Inc. v. Sherwin-Williams Company, 2013 U.S. Dist. LEXIS 1572 (January 3, 2013), a district court in the Eastern District of California, revisited the issue of what constitutes “bad faith” for purposes of awarding attorneys’ fees in trade secret cases.

Weco and Sherwin-Williams had entered into a “jobber” agreement by which Weco would distribute Sherwin-Williams paint products.  Weco alleged that Sherwin-Williams breached the jobber agreement by discontinuing certain of its product lines and then dealt directly with some of Weco’s end customers.  In addition to breach of contract claims, Weco asserted a claim for trade secret misappropriation against Sherwin-Williams.  Weco argued that its pricing arrangements with its end users were trade secret and were misappropriated by Sherwin-Williams to deal directly with these customers.  The court eventually granted Sherwin-Williams summary judgment against Weco as to its trade secret misappropriation claim and found that “the undisputed facts showed that Weco’s pricing to end users and cost of acquisition were not trade secrets” under California law.  Thus, the court found there was no misappropriation and dismissed Weco’s trade secret misappropriation claim.

 

Continue Reading “Animosity” Is Not Bad Faith For Attorneys’ Fees In Trade Secret Cases

By Audrey A. Millemann

There is an inherent conflict between the antitrust laws and the patent laws.  The antitrust laws protect competition and benefit consumers, in part, by prohibiting monopolies.  The patent laws promote innovation and reward inventors, in part, by awarding the patent owner a limited monopoly which inhibits competition.

Sometimes the antitrust laws and the patent laws intersect.  A defendant in a patent infringement suit may assert an antitrust claim as an affirmative defense or as a counterclaim.  One particular type of antitrust claim asserted by a patent owner’s competitors is a “Walker Process claim.”  This is a claim for monopolization under §2 of the Sherman Act based on the patent owner’s fraudulent procurement of a patent.  The claim arises from the Supreme Court’s decision in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), in which the Court held that a plaintiff could state a claim for antitrust liability if the plaintiff could show that: (1) the defendant procured a patent by knowing and willful fraud on the United States Patent and Trademark Office (or by maintaining and enforcing a patent knowing of the fraudulent manner in which it was obtained); and (2) the elements required for a claim under §2 of the Sherman Act were met.

 

Continue Reading Antitrust and Patent Laws: Separate Standing

Weintraub Tobin and Moss Adams are co-sponsoring the LAVA Digital Media Group’s panel discussion: “What’s Ahead for Digital Media in 2013” on Tuesday, February 26.

Making predictions in digital media can be challenging. At this time last year who even knew what Pinterest was, let alone that it would explode in popularity. Our panel will talk about what they see as being in store for 2013 and what opportunities might exist for L.A. Technology companies.

Featured Speakers include Jake Winett, Vice President, Consumer Services | Digital Strategy & Innovation | Sony Pictures Home Entertainment, and Keyvan Peymani Head of Digital Strategies Division, ICM Partners.

The event takes place from 6:30-9 p.m., Tuesday, February 26th at ROC, 604 Arizona Street in Santa Monica. For more information, contact Lee Lanzi at len@lava.org or visit www.lava.org

By Nathan Geronimo

In order to establish a claim for copyright infringement, a party must establish two essential elements: (1) ownership of a valid copyright; and (2) copying of original elements of the work.  Additionally, registration of a copyright is a prerequisite for filing a claim for copyright infringement.  To register a copyright, the owner of a copyright must submit to the Copyright Office an application for registration, and the registration fee.  Once the application is processed, the Copyright Office will issue a Certificate of Registration. 

What is evidence of registration for purposes of bringing an infringement claim?  There is a split in case law regarding whether one must simply apply for registration, or whether one must actually receive the certificate of registration from the Copyright Office.  In some cases, proof of application to register a copyright, plus proof of payment of the required fee will suffice.  In others, a certificate of registration may be required.  (If a copyright claim is registered within five years of the first publication of the work, the certificate of registration is also preliminary evidence of ownership of the copyright, the first element to an infringement claim.)  Despite this split in authority, there is some clarity regarding proof of registration.  A recent federal case reiterates and discusses the rule that a certificate of recordation alone will not suffice to demonstrate registration. 

Continue Reading Copyright Infringement Considerations: Proof of Registration

By Dale Campbell

The United States Supreme Court issued a ruling in January 2013 clarifying the application of the Voluntary Cessation Doctrine in trademark actions. The case is entitled Already LLC, dba Yums v. Nike, Inc., 184 L.Ed.2d 553 and 2013 LEXIS 602. The Supreme Court’s decision provides important practical guidance for all practitioners.

The Voluntary Cessation Doctrine is founded upon United States Constitution Article III’s requirement of a “case” or “controversy.” The case becomes moot when there are no longer live issues to resolve.

Nike originally sued Already, a competing footwear company, for alleged infringement of Nike’s trademark related to Nike’s Air Force 1® shoe. This infringement claim did not involve the famous Nike “swoosh.” Already filed a counterclaim, contending that the Air Force 1® trademark is invalid. Months after Nike originally sued, it issued a “Covenant Not to Sue” letter to Already and then filed a motion to dismiss its complaint with prejudice and to dismiss Already’s counterclaim without prejudice on the ground that the Covenant Not to Sue had extinguished any existing case or controversy.

Continue Reading The Voluntary Cessation Doctrine: An Escape from Troublesome Litigation?