The question of what constitutes “diversity” for purposes of diversity jurisdiction in Federal Court pursuant to under 28 U.S.C. § 1332 has been the topic of some disagreement amongst the Circuit Courts. That’s about to change.
Last week, the U.S. Supreme Court ruled in Hertz Corporation v. Friend that a corporation’s principal place of business is where its “high-level officers direct, control and coordinate the corporation’s activities.” In other words, the location sometimes referred to as the company’s “nerve center.”
28 U.S.C. §1332(c)(1) provides that a corporation is deemed a citizen of any State in which it has been incorporated (that’s the easy one), and anywhere it has its principal place of business. That last provision has given many courts pause, as they try to decipher where a company has its “principal place of business.” For example, the Ninth Circuit, along with the (Fifth, Sixth, Eighth, Tenth and Eleventh) followed a “totality” approach that looked at the location of the corporation’s overall activities, treating the “never center” as only one of several factors.
In Hertz, the District Court used this approach, ruling that Hertz’s principal place of biz was California, notwithstanding the fact that its executives, its headquarters and of course many of its cars were located outside of California. So why the Golden State, the 9th Circuit reasoned that Hertz earned the most money in California, and the majority of its employees were located here.
The Supreme Court took a different approach, chiefly focusing on the meaning and context of §1332’s use of the words “principal” and “place.” First, the Court noted “place” is singular, not plural, meaning that courts should consider if there is a “main, leading or most important” location within a state, not at the company’s activities throughout the state, and then ask whether those activities are “significantly larger” than they are in the next state where the company has a presence. The Court said that the “nerve center” test met the goal of administrative simplicity because it focused on finding the corporation’s “brain,” rather than deciding where the majority of the body parts might lie. The Court explained that it would not be enough for a company to claim that its “headquarters” was the state where it had nothing more than a “mail drop box, a bare office with a computer, or an annual executive retreat.” Rather, the “nerve center” is where “actual direction, control, and coordination” of corporate activities take place.
We’ll have to see how this test works in the Internet age, where the “never center” may be telecommuting from different states.
Jonathan Pink is an intellectual property and commercial litigator. He specializes in trademark, copyright, patent and contract disputes, having litigated such cases in state and federal courts across the nation. He is resident in the Irvine (Orange County) and Los Angeles offices of Bryan Cave, LLP. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.
Monday, March 1, 2010
Wednesday, February 24, 2010
State Courts Should Follow 9th Circuit's Lead in Taking Judicial Notice
A dichotomy exists between California state procedural law and Ninth Circuit case law with respect when a court make take judicial notice of a document in connection with ruling on a motion to strike or demurrer/motion to dismiss. As discussed below, the rule adopted by the California state courts can lead to an injustice that does a disservice to the public and wastes judicial resources. The California state courts should follow the federal rule, which simply makes much more sense.
With respect to both a motion strike and a state court demurrer, the court is limited to the facts alleged on the face of the complaint, as well as those matters of which the court may take judicial notice pursuant to Section 452 or 453 of the Evidence Code. Code Civ. Proc. §§ 430.70, 437(b). California Evidence Code Section 452(h) provides that the court may take judicial notice of “[f]acts and propositions that are not reasonably subject to dispute and are capable of immediate and accurate determination by resort to sources of reasonably indisputable accuracy.” Cal. Evid. Code § 452(h).
For purposes of this diatribe, let’s assume that parties entered into an agreement for the purposes of seeking a possible early settlement of a brewing (not yet filed) dispute. Assume the agreement provides that any settlement discussions would be confidential, and not disclosed in any proceeding between the parties. Now assume that, when plaintiff eventually files its lawsuit, and that lawsuit violates terms of the parties’ agreement by basing its claims on the contractually protected settlement discussions. Finally, assume the plaintiff omits any reference to that agreement in its complaint, and when the defendant moves to strike portions of the pleading because they violate the agreement (and are thus “irrelevant . . . or improper matter inserted in any pleading” under Code of Civil Procedure section 436A), the plaintiff objects that the court may not take judicial notice of the agreement. See CLD Const., Inc. v. City of San Ramon, 120 Cal.App.4th 1141, 1145 (2004) (Section 436 gives court discretion to strike all or any part of a pleading not filed in conformity with California law).
Under California state law, where the plaintiff omitted a pre-litigation agreement from inclusion in the complaint, and in opposition to a motion challenging the pleadings, disputes the validity of that agreement (even without legitimate basis), the court may deny the defendant’s motion on the grounds that it is unable to take judicial notice of the documents’ preclusive effect. Gould v. Maryland Sound Industries (1995) 31 Cal. App. 4th 1137 and Fremont Indemnity Co. v. Fremont General Corp. (2007) 148 Cal. App. 4th 97 would arguably support that ruling.
Both Gould and Fremont involved contracts, the terms of which were disputed by the parties. For example, in Fremont, the court held that the contents of a letter should not have been judicially noticed at the demurrer stage because the parties disputed the meaning of their contractual relationship and the enforceability of the contract. Id. at 115-117.
While both cases have been used to support the proposition that the court may not take judicial notice of a disputed contract, it should be noted that Gould is not so Draconian in its holding. It expressly limited its decision “to attempts to establish the existence of a contract under the ‘indisputable facts’ provision of Evidence Code section 452, subdivision (h). . . . We do not rule out the possibility the existence of a contract could be established by judicial notice under different circumstances, e.g. through reference to the plaintiff’s pleadings or discovery responses in the same or a different action. [Citations omitted.].” 31 Cal. App. 4th at 1145, n. 1. It is not clear, however, how much “reference” in plaintiff’s pleadings is sufficient (does it satisfy Evidence Code section 452(d) that the plaintiff acknowledges the agreement in its opposition to a motion to strike and demurrer?); nor how much acknowledgment in response to discovery might be required to overcome the bar (is it enough that plaintiff acknowledges the existence of the agreement?).
Gould is consistent with Stormedia Inc. v. Superior Court (1999) 20 Cal. 4th 449, 457, fn. 9, which states “We deem it appropriate to [take judicial notice] here as real parties in interest also refer to some of the documents in their briefs.” Also, courts have held that the truth of statements made by a party is a matter subject to judicial notice. C.R. v. Tenet Healthcare Corp. (2009) 169 Cal. App. 4th 1094, 1103 (citing to Del E. Webb Corp. v. Structural Materials Co. (1981) 123 Cal. App. 3d 593, 604-605). In Del E. Webb, the court held that judicial notice could be taken of records such as admissions, answers to interrogatories, affidavits, and the like, if they contained statements made by the plaintiff which were inconsistent with the allegations of their pleadings. Del E. Webb, supra, 123 Cal. App. 3d at 604-605.
So, back to the hypothetical: Suppose that plaintiff has admitted in discovery responses that it entered into the parties’ agreement, and even quoted in its Opposition to defendant’s motion the very language defendant is relying upon. It would seem that the agreement’s content, like a party’s own statements, cannot be reasonably disputed and may be judicially noticed. Notwithstanding the caveats in Gould and the ruling from Stormedia and Del E. Webb, many state courts simply won’t go out on a judicial ledge and take judicial notice of the document at issue. Fair enough: Fremont is a leading case, but it is worth the court’s time to recognize that it and some of the other cases addressing this issue place too much emphasis on stare decisis where those earlier cases have similarly failed to dig into the public policy underpinning and effect – not to mention the federal approach in this area. This inevitably leads to bad law born of bad basics.
Notably, even Stormedia did not spend much time analyzing this issue, and Gould v. Maryland contains some fairly significant carve-out language that courts should heed. Moreover, even Gould does not account for the obvious short coming of the hard-line rule by ignoring the calculating plaintiff who intentionally ignores the preclusive effect of an agreement when drafting the complaint, then claims to “dispute” that agreement when the court is asked to take judicial notice of it for purposes of trimming the complaint to fit the contractual limitations set by the parties themselves. Of course, that is asking a lot of those who take the bench, and I recognize that most don’t want to be overturned on appeal. But that’s the risk that comes from exerting intellectual courage and blazing judicial trail.
The 9th Circuit’s approach makes more sense, is founded on better public policy, and provides for greater judicial efficiency. Recognizing that a plaintiff may try to skate past the pleading stage by withholding any mention of a preclusive pre-litigation agreement, it has ruled that “documents critical to plaintiff’s claims, but not explicitly incorporated in his complaint” may be considered by a district court when ruling on a motion to dismiss provided neither party questions the authenticity of that document. Parrino v. FHP, Inc. et. al 146 F.3d 699, 705-706 (9th Cir. 1997).
In Parrino, Mr. Parrino’s estate sued FHP, his HMO, alleging the defendants had improperly denied his initial claim for therapy. The defendants asserted that the plaintiff’s claims were preempted by ERISA, and sought to introduce the FHP Master Group Application (in support of that defense) when ruling on their motion to dismiss. The district court considered that plan – which had not been referenced in or attached to the complaint – and based in part thereon, granted the defendants’ 12(b)(6) motion to dismiss. Plaintiff appealed.
In ruling on this issue, the Ninth Circuit stated that public policy supported a rule that prevented “plaintiffs from surviving a 12(b)(6) motion by deliberately omitting references to documents upon which their claims are based. [Citations omitted.] At least one other circuit has held that if a plaintiff’s claims are predicated upon a document, the defendant may attach the document to his Rule 12(b)(6) motion, even if the plaintiff’s complaint does not explicitly refer to it. See Cortec Indus., Inc. v. Sum Holding, L.P., 949 F.2d 42, 47 (2d Cir. 1991) . . . . We therefore hold that a district court ruling on a motion to dismiss may consider a document the authenticity of which is not contested, and upon which the plaintiff’s complaint necessarily relies.” 146 F.3d at 706.
Based on the foregoing, Parrino held that because the plaintiff’s claims rested on his membership in the FHP plan, documents governing that plan were “essential to his complaint.” Id. Since that ruling, Parrino has been followed by a number of other courts in the Ninth Circuit. See e.g. Mehmet v. Paypal, Inc., 2008 U.S. Dist. Lexis 64018, *6 (“court may take notice of a document outside the complaint if [it] is referenced in, or relied on by, the complaint”); Wietschner v. Monterey Pasta Co., 294 F. 2d 1102, 1110 (where plaintiff fails to attach document upon which complaint is premised, defendant may attach a copy of same to its motion to dismiss in order to show that document does not support plaintiff’s claim.)
The California state courts should look closely at Parrino and its progeny, and take careful note of the policy unpinning those rulings. Where a document is integral to the plaintiff’s claims and its authenticity is not disputed, the plaintiff should not be heard to complain when the defendant asks the court to take judicial notice of it. (Indeed, the court should consider the plaintiff’s omission with some degree of skepticism, much as we ask our triers of fact to consider inconsistent statements when ruling on a witnesses’ credibility.) Public policy dictates that we not waste judicial resources, or permit parties to waste each others financial resources, by allowing claims to proceed beyond the pleading stage where a clear, uncontested written agreement between the parties precludes such an action.
While it is true that, under the facts I’ve proposed, the agreement will – at some point in the litigation – have the preclusive effect urged by the defendant, does it really advance the interest of justice to force the defendant to go deeper into the legal woods to get there? I don’t think so. California states courts should adopt the 9th Circuit’s approach and consider a document whose authenticity is not contested, and upon which the plaintiff’s complaint necessarily relies, when ruling on an initial challenge to the complaint.
Jonathan Pink is a commercial litigator with a specialty in high-stakes copyright, trademark and patent infringement lawsuits. He is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP, and is resident in the firm’s Los Angeles and Irvine (Orange County) offices. He can be reached at 949-223-7173, or at jonathan.pink@bryancave.com.
With respect to both a motion strike and a state court demurrer, the court is limited to the facts alleged on the face of the complaint, as well as those matters of which the court may take judicial notice pursuant to Section 452 or 453 of the Evidence Code. Code Civ. Proc. §§ 430.70, 437(b). California Evidence Code Section 452(h) provides that the court may take judicial notice of “[f]acts and propositions that are not reasonably subject to dispute and are capable of immediate and accurate determination by resort to sources of reasonably indisputable accuracy.” Cal. Evid. Code § 452(h).
For purposes of this diatribe, let’s assume that parties entered into an agreement for the purposes of seeking a possible early settlement of a brewing (not yet filed) dispute. Assume the agreement provides that any settlement discussions would be confidential, and not disclosed in any proceeding between the parties. Now assume that, when plaintiff eventually files its lawsuit, and that lawsuit violates terms of the parties’ agreement by basing its claims on the contractually protected settlement discussions. Finally, assume the plaintiff omits any reference to that agreement in its complaint, and when the defendant moves to strike portions of the pleading because they violate the agreement (and are thus “irrelevant . . . or improper matter inserted in any pleading” under Code of Civil Procedure section 436A), the plaintiff objects that the court may not take judicial notice of the agreement. See CLD Const., Inc. v. City of San Ramon, 120 Cal.App.4th 1141, 1145 (2004) (Section 436 gives court discretion to strike all or any part of a pleading not filed in conformity with California law).
Under California state law, where the plaintiff omitted a pre-litigation agreement from inclusion in the complaint, and in opposition to a motion challenging the pleadings, disputes the validity of that agreement (even without legitimate basis), the court may deny the defendant’s motion on the grounds that it is unable to take judicial notice of the documents’ preclusive effect. Gould v. Maryland Sound Industries (1995) 31 Cal. App. 4th 1137 and Fremont Indemnity Co. v. Fremont General Corp. (2007) 148 Cal. App. 4th 97 would arguably support that ruling.
Both Gould and Fremont involved contracts, the terms of which were disputed by the parties. For example, in Fremont, the court held that the contents of a letter should not have been judicially noticed at the demurrer stage because the parties disputed the meaning of their contractual relationship and the enforceability of the contract. Id. at 115-117.
While both cases have been used to support the proposition that the court may not take judicial notice of a disputed contract, it should be noted that Gould is not so Draconian in its holding. It expressly limited its decision “to attempts to establish the existence of a contract under the ‘indisputable facts’ provision of Evidence Code section 452, subdivision (h). . . . We do not rule out the possibility the existence of a contract could be established by judicial notice under different circumstances, e.g. through reference to the plaintiff’s pleadings or discovery responses in the same or a different action. [Citations omitted.].” 31 Cal. App. 4th at 1145, n. 1. It is not clear, however, how much “reference” in plaintiff’s pleadings is sufficient (does it satisfy Evidence Code section 452(d) that the plaintiff acknowledges the agreement in its opposition to a motion to strike and demurrer?); nor how much acknowledgment in response to discovery might be required to overcome the bar (is it enough that plaintiff acknowledges the existence of the agreement?).
Gould is consistent with Stormedia Inc. v. Superior Court (1999) 20 Cal. 4th 449, 457, fn. 9, which states “We deem it appropriate to [take judicial notice] here as real parties in interest also refer to some of the documents in their briefs.” Also, courts have held that the truth of statements made by a party is a matter subject to judicial notice. C.R. v. Tenet Healthcare Corp. (2009) 169 Cal. App. 4th 1094, 1103 (citing to Del E. Webb Corp. v. Structural Materials Co. (1981) 123 Cal. App. 3d 593, 604-605). In Del E. Webb, the court held that judicial notice could be taken of records such as admissions, answers to interrogatories, affidavits, and the like, if they contained statements made by the plaintiff which were inconsistent with the allegations of their pleadings. Del E. Webb, supra, 123 Cal. App. 3d at 604-605.
So, back to the hypothetical: Suppose that plaintiff has admitted in discovery responses that it entered into the parties’ agreement, and even quoted in its Opposition to defendant’s motion the very language defendant is relying upon. It would seem that the agreement’s content, like a party’s own statements, cannot be reasonably disputed and may be judicially noticed. Notwithstanding the caveats in Gould and the ruling from Stormedia and Del E. Webb, many state courts simply won’t go out on a judicial ledge and take judicial notice of the document at issue. Fair enough: Fremont is a leading case, but it is worth the court’s time to recognize that it and some of the other cases addressing this issue place too much emphasis on stare decisis where those earlier cases have similarly failed to dig into the public policy underpinning and effect – not to mention the federal approach in this area. This inevitably leads to bad law born of bad basics.
Notably, even Stormedia did not spend much time analyzing this issue, and Gould v. Maryland contains some fairly significant carve-out language that courts should heed. Moreover, even Gould does not account for the obvious short coming of the hard-line rule by ignoring the calculating plaintiff who intentionally ignores the preclusive effect of an agreement when drafting the complaint, then claims to “dispute” that agreement when the court is asked to take judicial notice of it for purposes of trimming the complaint to fit the contractual limitations set by the parties themselves. Of course, that is asking a lot of those who take the bench, and I recognize that most don’t want to be overturned on appeal. But that’s the risk that comes from exerting intellectual courage and blazing judicial trail.
The 9th Circuit’s approach makes more sense, is founded on better public policy, and provides for greater judicial efficiency. Recognizing that a plaintiff may try to skate past the pleading stage by withholding any mention of a preclusive pre-litigation agreement, it has ruled that “documents critical to plaintiff’s claims, but not explicitly incorporated in his complaint” may be considered by a district court when ruling on a motion to dismiss provided neither party questions the authenticity of that document. Parrino v. FHP, Inc. et. al 146 F.3d 699, 705-706 (9th Cir. 1997).
In Parrino, Mr. Parrino’s estate sued FHP, his HMO, alleging the defendants had improperly denied his initial claim for therapy. The defendants asserted that the plaintiff’s claims were preempted by ERISA, and sought to introduce the FHP Master Group Application (in support of that defense) when ruling on their motion to dismiss. The district court considered that plan – which had not been referenced in or attached to the complaint – and based in part thereon, granted the defendants’ 12(b)(6) motion to dismiss. Plaintiff appealed.
In ruling on this issue, the Ninth Circuit stated that public policy supported a rule that prevented “plaintiffs from surviving a 12(b)(6) motion by deliberately omitting references to documents upon which their claims are based. [Citations omitted.] At least one other circuit has held that if a plaintiff’s claims are predicated upon a document, the defendant may attach the document to his Rule 12(b)(6) motion, even if the plaintiff’s complaint does not explicitly refer to it. See Cortec Indus., Inc. v. Sum Holding, L.P., 949 F.2d 42, 47 (2d Cir. 1991) . . . . We therefore hold that a district court ruling on a motion to dismiss may consider a document the authenticity of which is not contested, and upon which the plaintiff’s complaint necessarily relies.” 146 F.3d at 706.
Based on the foregoing, Parrino held that because the plaintiff’s claims rested on his membership in the FHP plan, documents governing that plan were “essential to his complaint.” Id. Since that ruling, Parrino has been followed by a number of other courts in the Ninth Circuit. See e.g. Mehmet v. Paypal, Inc., 2008 U.S. Dist. Lexis 64018, *6 (“court may take notice of a document outside the complaint if [it] is referenced in, or relied on by, the complaint”); Wietschner v. Monterey Pasta Co., 294 F. 2d 1102, 1110 (where plaintiff fails to attach document upon which complaint is premised, defendant may attach a copy of same to its motion to dismiss in order to show that document does not support plaintiff’s claim.)
The California state courts should look closely at Parrino and its progeny, and take careful note of the policy unpinning those rulings. Where a document is integral to the plaintiff’s claims and its authenticity is not disputed, the plaintiff should not be heard to complain when the defendant asks the court to take judicial notice of it. (Indeed, the court should consider the plaintiff’s omission with some degree of skepticism, much as we ask our triers of fact to consider inconsistent statements when ruling on a witnesses’ credibility.) Public policy dictates that we not waste judicial resources, or permit parties to waste each others financial resources, by allowing claims to proceed beyond the pleading stage where a clear, uncontested written agreement between the parties precludes such an action.
While it is true that, under the facts I’ve proposed, the agreement will – at some point in the litigation – have the preclusive effect urged by the defendant, does it really advance the interest of justice to force the defendant to go deeper into the legal woods to get there? I don’t think so. California states courts should adopt the 9th Circuit’s approach and consider a document whose authenticity is not contested, and upon which the plaintiff’s complaint necessarily relies, when ruling on an initial challenge to the complaint.
Jonathan Pink is a commercial litigator with a specialty in high-stakes copyright, trademark and patent infringement lawsuits. He is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP, and is resident in the firm’s Los Angeles and Irvine (Orange County) offices. He can be reached at 949-223-7173, or at jonathan.pink@bryancave.com.
Tuesday, December 22, 2009
No Infringement for Cussler Bros., Adventure Novelists
Ka-Pow! The District Court in Hawaii ruled recently that the adventure novel Treasure of Khan by Clive Cussler and Dirk Cussler (the nineteenth Cussler yarn to feature the character Dirk Pitt) did not infringe plaintiff’s novel, Gold of Khan, about Marco Polo's lost treasure. (Doody v. Penguin Group (USA) Inc., D. Haw., No. 08-cv-00285-JMS-BMK, 11/23/09.)
Specifically, the court found that there was no substantial similarity between the protectable elements plaintiff’s work those the Cussler novels. From a plaintiff’s perspective, this amounts to a superhero body slam.
As an aside, you will recall that copyright protection does not extend to ideas or facts. 17 U.S.C. Section 102(b). It does, however, protect the original expression of ideas or facts. Also, mere themes and bare plots are not protected. Midas Productions, Inc. v. Baer, 437 F. Supp. 1388, 1390 (C.D. Cal. 1977). There is also agreement among the circuit courts of appeal that a stereotyped characters are not protected by copyright; a character must be sufficiently fleshed out to constitute more than an idea, or more than a stock character. Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Miller v. Universal City Studios, 650 F. 2d 1365 (5th Cir. 1981); but see the widely criticized, Ninth Circuit “fleshing out” and “story being told” tests in e.g. Metro-Goldwyn-Meyer, Inc. v. American Honda Motor Co., Inc., 900 F. Supp., 1287, 1296 (C.D. Cal 1995 (James Bond character protected because a James Bond story without 007 is not a Bond story).
Ok, back to our regularly scheduled programming: The Court in Doody also rejected the plaintiff’s argument that the Court’s similarity analysis should be based on a comparison of the plaintiff's work with the defendants’ books as a whole. The Court said that “[t]o accept Plaintiff's proposition would mean that ‘hardly any drama since the Garden of Eden could survive the charge of plagiarism.” (Quoting Rose v. Connelly, 38 F. Supp. 54 (S.D.N.Y. 1941).
Jonathan Pink practices in the areas of intellectual property and commercial litigation at Bryan Cave, LLP. He is resident in the firm's Los Angeles and Irvine offices, and is Co-Chair of the firm's Internet and New Media Team. He can be reached at 949-223-7173.
Specifically, the court found that there was no substantial similarity between the protectable elements plaintiff’s work those the Cussler novels. From a plaintiff’s perspective, this amounts to a superhero body slam.
As an aside, you will recall that copyright protection does not extend to ideas or facts. 17 U.S.C. Section 102(b). It does, however, protect the original expression of ideas or facts. Also, mere themes and bare plots are not protected. Midas Productions, Inc. v. Baer, 437 F. Supp. 1388, 1390 (C.D. Cal. 1977). There is also agreement among the circuit courts of appeal that a stereotyped characters are not protected by copyright; a character must be sufficiently fleshed out to constitute more than an idea, or more than a stock character. Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Miller v. Universal City Studios, 650 F. 2d 1365 (5th Cir. 1981); but see the widely criticized, Ninth Circuit “fleshing out” and “story being told” tests in e.g. Metro-Goldwyn-Meyer, Inc. v. American Honda Motor Co., Inc., 900 F. Supp., 1287, 1296 (C.D. Cal 1995 (James Bond character protected because a James Bond story without 007 is not a Bond story).
Ok, back to our regularly scheduled programming: The Court in Doody also rejected the plaintiff’s argument that the Court’s similarity analysis should be based on a comparison of the plaintiff's work with the defendants’ books as a whole. The Court said that “[t]o accept Plaintiff's proposition would mean that ‘hardly any drama since the Garden of Eden could survive the charge of plagiarism.” (Quoting Rose v. Connelly, 38 F. Supp. 54 (S.D.N.Y. 1941).
Jonathan Pink practices in the areas of intellectual property and commercial litigation at Bryan Cave, LLP. He is resident in the firm's Los Angeles and Irvine offices, and is Co-Chair of the firm's Internet and New Media Team. He can be reached at 949-223-7173.
Monday, December 21, 2009
Google et Les Françaises -- Hardly a French Kiss
Google et Les Françaises . . . So let’s see, the Can-Can began-gan in Paris. But now, Google has come to find that Can’t-Can’t has originated there as well.
A Paris court has ordered Google to cease its scanning and subsequent distributing of French books online. The court awarded the plaintiffs roughly $400,000 (US) in damages, and ordered Google to pay about $14K per day that the material remains on the web. The plaintiffs had sought about $26 million in damages.
You will recall that Google has made a global push to digitize books – becoming, in a sense, the Digital Alexandria – and has received quite a bit of flack/resistance and legal bills for its efforts. In the U.S., Google reached a proposed settlement with class plaintiffs over a similar issue, and the Court just recently approved of that proposal. Notably, it excludes foreign works published after January 5, 2009, provided such works had been registered with the U.S. Copyright Office by that date, or had been published in Canada, the United Kingdom or Australia by then.
Jonathan Pink is a commercial litigator with a specialty in high-stakes trademark, trade dress, copyright, patent and trade secret disputes. He also has extensive experience litigating claims for breach of contract, fraud, unfair practices, trade libel and a broad spectrum of intellectual property matters in state and federal courts across the nation. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices, and is Co-Chair of the firm’s Internet and New Media Team. He can be reached at jonathan.pink@bryancave.com.
A Paris court has ordered Google to cease its scanning and subsequent distributing of French books online. The court awarded the plaintiffs roughly $400,000 (US) in damages, and ordered Google to pay about $14K per day that the material remains on the web. The plaintiffs had sought about $26 million in damages.
You will recall that Google has made a global push to digitize books – becoming, in a sense, the Digital Alexandria – and has received quite a bit of flack/resistance and legal bills for its efforts. In the U.S., Google reached a proposed settlement with class plaintiffs over a similar issue, and the Court just recently approved of that proposal. Notably, it excludes foreign works published after January 5, 2009, provided such works had been registered with the U.S. Copyright Office by that date, or had been published in Canada, the United Kingdom or Australia by then.
Jonathan Pink is a commercial litigator with a specialty in high-stakes trademark, trade dress, copyright, patent and trade secret disputes. He also has extensive experience litigating claims for breach of contract, fraud, unfair practices, trade libel and a broad spectrum of intellectual property matters in state and federal courts across the nation. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices, and is Co-Chair of the firm’s Internet and New Media Team. He can be reached at jonathan.pink@bryancave.com.
Sunday, December 20, 2009
Storm Troopers, Copyright Infringement and a Bit of Clever Luck
Some months ago I wrote about a case I was handling involving an Italian company accused of infringing a U.S. copyright. The infringement alleged against my client occurred in Italy. According, my defense was that the U.S. courts had no jurisdiction over the claim because -- well, see earlier post ("An Italian Fling") for that analysis. The bottom line is they don't, and as a result, the plaintiff's million dollar claim became the parties' several thousand dollar, nuisance-value settlement.
This post deals with the flip side of that issue. Here, Lucasfilm Ltd. prevailed in a U.S. court against British national, Andrew Ainsworth, ruling that Mr. Ainsworth (one of the costume makers who made the storm trooper helmets used in its Star Wars films -- can you say "cool!"), replicated those helmets and sold them over the Internet to customers in the U.S. Mr. Ainsworth is nothing if not industrious -- and creative, and apparently rather clever.
Lucasfilm sued for the U.S. Based copyright infringement, and Mr. Ainsworth largely ignored them. The court entered a default judgment entered against him, and Mr. Ainsworth (ok, I'm imagining here) yawned. After all, Mr. Ainsworth lives in England and the judgment against him was way over here on the other side of the pond.
So back to my "flip side" comment. If a U.S. court does not have jurisdiction over foreign infringement (and again, remember the court here tagged Ainsworth for U.S. based infringement), does its domestic rulings have an international reach? As Lucasfilm discovered, apparently not.
Lucasfilm tried to enforce its U.S. judgment against Ainsworth in England, and the court there said "I should say not!" (or upper crust words to that effect). Now, a second British court has sided with the first, ruling that Mr. Ainsworth is safe from a U.S. default judgment entered against him. (Lucasfilm Ltd. & Ors v. Ainsworth & Anor, case number [2009] EWCA Civ 1328, in London's High Court of Justice, Court of Appeal (Civil Division).)
Hence my comment that Mr. Ainsworth is industrious, creative, and cleaver. Now, if this result was based on dumb luck rather than a calculated risk, I suppose we could substitute the adjective lucky.
In fairness, while Ainsworth's sales ran afoul of U.S. copyright law, they are legal under British laws. Under U.K. law, the storm trooper helmets are not entitled to the protections afforded works of art, because their purpose was primarily utilitarian. Moreover, the British court ruled that Ainsworth's online sales to U.S. customers do not place him under U.S. jurisdiction.
So for now, the Force is with Mr. Ainsworth. Lucasfilm may appeal to the U.K. Supreme Court, but doing so may carry as much probability of success as trying to destroy the the Deathstar with a bunch of X-Wing Fighters.
Jonathan Pink is a business litigation attorney with a specialty in intellectual property. He handles high stakes copyright, trademark and patent litigation for clients world wide. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.
This post deals with the flip side of that issue. Here, Lucasfilm Ltd. prevailed in a U.S. court against British national, Andrew Ainsworth, ruling that Mr. Ainsworth (one of the costume makers who made the storm trooper helmets used in its Star Wars films -- can you say "cool!"), replicated those helmets and sold them over the Internet to customers in the U.S. Mr. Ainsworth is nothing if not industrious -- and creative, and apparently rather clever.
Lucasfilm sued for the U.S. Based copyright infringement, and Mr. Ainsworth largely ignored them. The court entered a default judgment entered against him, and Mr. Ainsworth (ok, I'm imagining here) yawned. After all, Mr. Ainsworth lives in England and the judgment against him was way over here on the other side of the pond.
So back to my "flip side" comment. If a U.S. court does not have jurisdiction over foreign infringement (and again, remember the court here tagged Ainsworth for U.S. based infringement), does its domestic rulings have an international reach? As Lucasfilm discovered, apparently not.
Lucasfilm tried to enforce its U.S. judgment against Ainsworth in England, and the court there said "I should say not!" (or upper crust words to that effect). Now, a second British court has sided with the first, ruling that Mr. Ainsworth is safe from a U.S. default judgment entered against him. (Lucasfilm Ltd. & Ors v. Ainsworth & Anor, case number [2009] EWCA Civ 1328, in London's High Court of Justice, Court of Appeal (Civil Division).)
Hence my comment that Mr. Ainsworth is industrious, creative, and cleaver. Now, if this result was based on dumb luck rather than a calculated risk, I suppose we could substitute the adjective lucky.
In fairness, while Ainsworth's sales ran afoul of U.S. copyright law, they are legal under British laws. Under U.K. law, the storm trooper helmets are not entitled to the protections afforded works of art, because their purpose was primarily utilitarian. Moreover, the British court ruled that Ainsworth's online sales to U.S. customers do not place him under U.S. jurisdiction.
So for now, the Force is with Mr. Ainsworth. Lucasfilm may appeal to the U.K. Supreme Court, but doing so may carry as much probability of success as trying to destroy the the Deathstar with a bunch of X-Wing Fighters.
Jonathan Pink is a business litigation attorney with a specialty in intellectual property. He handles high stakes copyright, trademark and patent litigation for clients world wide. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.
Wednesday, December 16, 2009
And People Wonder Why Most Patents Don't Make Any Money
As we close out the year, it’s fun to take a look back. In the work of intellectual property, that always makes for some quality amusement. Let’s look, for example, at just a few of the patents that issued this year:
Pat. No. 7,533,832 -- Leg-mounted scent dispenser
Pat. No. D589070 -- Bacon comb
Pat. No. 7,537,453 -- Life-sized furniture kit
Pat. No. 7,497,606 -- Functional shoe
Pat. No. D585,182 -- Removable underwear
Pat. No. D596,839 Striped socks
Pat. No. 7,594,814 -- Prayer-reminder device
Pat. No. 7,510,225 -- Combined manure fork and fan-type shavings blower
Pat. No. D593,731 -- Visor with hair
Pat. No. D589,252 -- Combined towel and handbag
Pat. No. 7,607,664 -- Marriage and divorce game
Pat. No. D596,237 -- Human-shaped toilet stationery organizer
Pat. No. 7,594,878 -- Whole-body vibrator
Pat. No. 7,591,811 -- Diaper with legs
Pat. No. 7,494,681 -- Food products comprising fat and salt
And last (but certainly not least) Pat. No. 7,597,727 -- Method for starting a fire.
Now for 2010? Let the infringement suits begin!
Jonathan Pink is a commercial litigator specializing in high stakes copyright, trademark, patent and business-related disputes. He is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP, where he is resident in the Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.
Pat. No. 7,533,832 -- Leg-mounted scent dispenser
Pat. No. D589070 -- Bacon comb
Pat. No. 7,537,453 -- Life-sized furniture kit
Pat. No. 7,497,606 -- Functional shoe
Pat. No. D585,182 -- Removable underwear
Pat. No. D596,839 Striped socks
Pat. No. 7,594,814 -- Prayer-reminder device
Pat. No. 7,510,225 -- Combined manure fork and fan-type shavings blower
Pat. No. D593,731 -- Visor with hair
Pat. No. D589,252 -- Combined towel and handbag
Pat. No. 7,607,664 -- Marriage and divorce game
Pat. No. D596,237 -- Human-shaped toilet stationery organizer
Pat. No. 7,594,878 -- Whole-body vibrator
Pat. No. 7,591,811 -- Diaper with legs
Pat. No. 7,494,681 -- Food products comprising fat and salt
And last (but certainly not least) Pat. No. 7,597,727 -- Method for starting a fire.
Now for 2010? Let the infringement suits begin!
Jonathan Pink is a commercial litigator specializing in high stakes copyright, trademark, patent and business-related disputes. He is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP, where he is resident in the Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.
Friday, November 27, 2009
SixthSense Technology -- The Future is Now
Many of you heard Nambi Seshadri, VP&CTO of the Mobile and Wireless Group at Broadcom Corporation, discuss the future of wireless technology at our last BC Edge.
Now you can see that future, and much more by following this link to Pranav Mistry's presentation about SixthSense technology: http://www.ted.com/talks/pranav_mistry_the_thrilling_potential_of_sixthsense_technology.html.
For those who haven’t yet heard of SixthSense technology, here’s the low down:
Pranav Mistry (a PhD candidate at the MIT Media Lab and perhaps one of the greatest inventor of our day), has developed a wearable, interactive computing system that is completely detached from what we currently think of as a wireless device.
Forget making a phone call on your IPhone or Blackberry, the time is near where we will dial instead on the palm of our hands. Sound amazing? That’s only the beginning. Imagine taking a photo with no visible camera, by simply holding up your hands as a director might frame a shot for a film, or holding up your airline boarding pass and having it tell you whether your plane is delayed. Again, follow the link to see what I’m talking about.
Pranav Mistry’s device creates a digitial bridge between the real world and the virtual world using little more than a webcam, a battery-powered projector, an internet-enabled mobile phone and some amazing software that only big brains can develop (and the beta version of which is said to have cost less than $350).
And the final kicker? Mistry says he intends to make the software necessary to run this SixthSense technology open source. Follow the link. The future is waiting.
Jonathan Pink is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP. He is resident in the firm's Irvine, California and Los Angeles offices, and can be reached at 949-223-7173. His practice includes commercial litigation with a specialty in intellectual property issues.
Now you can see that future, and much more by following this link to Pranav Mistry's presentation about SixthSense technology: http://www.ted.com/talks/pranav_mistry_the_thrilling_potential_of_sixthsense_technology.html.
For those who haven’t yet heard of SixthSense technology, here’s the low down:
Pranav Mistry (a PhD candidate at the MIT Media Lab and perhaps one of the greatest inventor of our day), has developed a wearable, interactive computing system that is completely detached from what we currently think of as a wireless device.
Forget making a phone call on your IPhone or Blackberry, the time is near where we will dial instead on the palm of our hands. Sound amazing? That’s only the beginning. Imagine taking a photo with no visible camera, by simply holding up your hands as a director might frame a shot for a film, or holding up your airline boarding pass and having it tell you whether your plane is delayed. Again, follow the link to see what I’m talking about.
Pranav Mistry’s device creates a digitial bridge between the real world and the virtual world using little more than a webcam, a battery-powered projector, an internet-enabled mobile phone and some amazing software that only big brains can develop (and the beta version of which is said to have cost less than $350).
And the final kicker? Mistry says he intends to make the software necessary to run this SixthSense technology open source. Follow the link. The future is waiting.
Jonathan Pink is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP. He is resident in the firm's Irvine, California and Los Angeles offices, and can be reached at 949-223-7173. His practice includes commercial litigation with a specialty in intellectual property issues.
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