Business Law Journal

Invitation to partnership is often the culmination of years of hard work and dedication.  Therefore, partners are highly selective of those who are invited to join the ranks of partnership.  Careful consideration and forethought should be given when the partnership is contemplating the amendment of its partnership agreement.  The recent decision by the Court of Appeal in Han v. Hallberg demonstrates how perceived minor changes to the partnership agreement can have an everlasting impact upon the membership of the partnership.

On May 20, 2019, the United States Supreme Court resolved a circuit split and answered a significant previously unresolved legal issue in trademark licensing.  The Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, 587 U.S. __ (2019), that a debtor-licensor’s rejection of an executory trademark licensing agreement in bankruptcy has the same effect as a breach of contract outside bankruptcy and therefore does not rescind the licensee’s rights or revoke the trademark license.

Section 365 of the Bankruptcy Code allows a debtor to “reject any executory contract”—meaning a contract that neither party has finished performing.  The issue before the Court was whether a debtor-licensor’s rejection of a trademark license agreement, which “constitutes a breach of such contract” under Section 365(g) of the Bankruptcy Code, resulted in a rescission of the license even though a breach of contract in a non-bankruptcy context would not automatically terminate the license.

In its 8-1 decision authored by Justice Kagan (and joined by every justice except Justice Gorsuch), the Supreme Court reversed the First Circuit’s January 2018 decision that had ruled that a licensee loses its right to use licensed trademarks if the debtor-licensor rejects the trademark licensing agreement in bankruptcy.  Instead, the Supreme Court sided with the Seventh Circuit’s reasoning from Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012), where the Seventh Circuit construed Section 365 and held to the contrary.

Prior to the Supreme Court’s decision, the circuits had been divided as to the effect of a debtor-licensor’s rejection of a license.  Some circuits, including the Seventh Circuit, had held that a rejection of a license agreement was simply a breach of contract, in which case the licensee’s rights under the contract remained intact and the licensee could continue to use the trademark.  Other circuits, such as the First Circuit, held that a rejection of a license agreement was a termination of the license, thereby prohibiting the licensee from continuing to use the trademark.  The debate has now been settled.

The Supreme Court’s decision significantly enhances the bargaining strength of trademark licensees because there is now certainty that a licensor’s rejection in bankruptcy does not revoke the licensee’s rights under a pre-existing license agreement.  Potential debtors are also affected because trademark licenses granted prior to bankruptcy remain valid and the debtor-licensor’s obligations under the license agreement continue. 

Justice Sotomayor issued a concurring opinion in part to highlight the special treatment of a trademark licensee’s post-rejection rights and remedies under Section 365. 

Parties who now find themselves negotiating agreements, including trademark licenses in particular, must carefully consider what terms and obligations will survive bankruptcy before entering such agreements.  Because the Supreme Court’s ruling implicates many business and drafting issues, it is important to consult with experienced intellectual property counsel before negotiating and entering into a trademark license agreement.

AALRR has a dedicated group of attorneys on its Intellectual Property Team who can assist you with negotiating and drafting license agreements.  Contact the authors for assistance with navigating the complicated intersection of intellectual property and insolvency.

In FilmOn.com v. DoubleVerify, Inc. (2019), Case No. S244157, the California Supreme Court recently clarified the circumstances under which the state’s anti-SLAPP law applies to commercial speech and services.  The anti-SLAPP law, Code of Civil Procedure § 425.16, was designed by the Legislature to provide for early dismissal of strategic lawsuits against public participation (known colloquially as “SLAPP” suits), which are filed primarily to discourage the free exercise of speech and petition rights.  A defendant prevailing under the anti-SLAPP law is entitled to recover its attorneys’ fees from the plaintiff.  The Supreme Court was called upon to interpret the anti-SLAPP law’s “catchall” provision, which provides for dismissal of claims arising from “conduct in furtherance of the exercise of the constitutional right of petition or the constitutional right of free speech in connection with a public issue or an issue of public interest.”  Applying this provision, the Supreme Court held that DoubleVerify, Inc.’s (“DoubleVerify”) confidential reports about FilmOn.com’s (“FilmOn”) web content — which were generated for profit, delivered only to paying clients, and subject to a confidentiality requirement prohibiting broader dissemination of the reports — were not entitled to protection under the anti-SLAPP law.

The first quarter of 2019 is behind us and, as is tradition year after year for many of us, the time is ripe for a little Spring cleaning. 

In the legal drafting context, this is a good time for in-house counsel and other company professionals responsible for legal documentation to revisit old contract templates and forms routinely used in your business to ensure the relevant clauses are updated to reflect current law and best practices (or, better yet, to consult your outside counsel to conduct the review for you!).

One of the core lessons for defense counsel is understanding that procedural dynamics of cases have substantive strategic consequences.  One of the most complex is the decision of plaintiff’s counsel to dismiss a case.  For instance, without more, voluntary dismissal may result in a claim for costs and fees by the defense under the California Code of Civil Procedure.  Cal. Code Civ. Proc. § 1032.  The situations where a short-sighted dismissal can harm a client are many.  Similar consequences can occur when errors are made in choices between state and federal forums.  That is the subject of this article.

On March 4, 2019, the United States Supreme Court issued a significant copyright decision that resolved a longstanding circuit split and changes how—and when—copyright owners can file an infringement action in federal court to enforce their copyrights.

In Golden v. California Emergency Physicians Medical Group, et al., a divided Ninth Circuit panel held that a settlement agreement between a doctor and his former employer violated Cal. Prof. & Bus. Code § 16600 because a “no re-hire” provision of the agreement placed a “restraint of a substantial character” on the doctor’s medical practice.

A presumption of irreparable harm in trademark cases may be retired, but evidence of likelihood of confusion can still support an inference of irreparable harm.

We haven't heard the last on trade dress precedent. 

Trade dress issues are complex and can often be time consuming. Companies facing these issues can often learn from past precedent. This and selecting an effective attorney for representation can make or break a case.