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Business Law Legal Research Blog

TRADEMARKS: The Slants and the Redskins—Federal Circuit Rules That Excluding "Disparaging Remarks" Violates First Amendment

Posted by Timothy J. Snider on Tue, Feb 23, 2016 @ 13:02 PM

The Lawletter Vol. 41, No. 2

Tim Snider, Senior Attorney, National Legal Research Group

     There has been considerable dispute about the propriety of the continuing use of the mark and name REDSKINS by the Washington NFL franchise. It is claimed by some that the word "redskin" is considered offensive by aboriginal Americans and others. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498, 113 U.S.P.Q.2d (BNA) 1749 (E.D. Va. 2014). While that case is on appeal, the Federal Circuit, which hears the bulk of trademark cases, has rendered a decision that could place in doubt whether the cancellation of the REDSKINS trademark by the Trademark Trial and Appeal Board (the "TTAB") can be sustained. See Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d (BNA) 1080 (T.T.A.B. 2014) (Cancellation No. 92046185).

     Section 2(a) of the Lanham Trademark Act, 15 U.S.C. § 1052(a), prohibits registration of a trademark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute." In re Tam, No. 2014-1203, 2015 WL 9287035 (Fed. Cir. Dec. 22, 2015), involved the attempted registration by the representative of an Asian-American rock/dance band of its trademark THE SLANTS. The applicant for the mark is himself Asian-American, but the examiner nonetheless refused registration on the basis that the mark was likely disparaging to "persons of Asian descent" within the meaning of section 2(a). The TTAB agreed and sustained the refusal to register the mark.

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Topics: trademarks, First Amendment, Timothy J. Snider, trademark registration, Redskins

CIVIL PROCEDURE: Scope of the Commercial Activity Exception to the Foreign Sovereign Immunities Act

Posted by Suzanne L. Bailey on Tue, Feb 9, 2016 @ 12:02 PM

The Lawletter Vol 41 No 1

Suzanne Bailey, Senior Attorney, National Legal Research Group

     The Foreign Sovereign Immunities Act, 28 U.S.C. §§ 1602–1611, shields foreign governments and their agencies from suit in U.S. courts unless the suit falls within an exception specifically enumerated in the Act. In a recent decision, OBB Personenverkehr AG v. Sachs, 136 S. Ct. 390, 392 (2015), a unanimous U.S. Supreme Court considered the commercial activity exception, 28 U.S.C. § 1605(a)(2), and concluded that the exception did not extend to the purchase of a Eurail pass in the United States.

     Carol Sachs, a California resident, purchased a Eurail pass over the Internet from a Massachusetts-based travel agent. Eurail passes allow holders unlimited passage for a set period of time on participating Eurail Group railways, including OBB Personenverkehr AG ("OBB"), the Austrian state-owned railway. As she was attempting to board an OBB train in Innsbruck, Austria, Ms. Sachs fell from the platform onto the tracks, where a moving train crushed her legs, requiring amputation of each leg above the knee. She brought suit for her injuries in the U.S. District Court for the Northern District of California on the grounds of (1) negligence, (2) strict liability for design defects in the train and platform, (3) strict liability for failure to warn of the design defects, (4) breach of an implied warranty of merchantability for providing a train and platform unsafe for their intended uses, and (5) breach of an implied warranty of fitness for providing a train and platform unfit for their intended uses.

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Topics: civil procedure, Suzanne Bailey, Foreign Sovereign Immunities Act, commercial activity exception

CONTRACTS: Agreements to Negotiate Distinguished from Agreements to Agree

Posted by Paul A. Ferrer on Fri, Dec 18, 2015 @ 17:12 PM

Paul Ferrer—Senior Attorney, National Legal Research Group

     Courts often give voice to the black-letter principle that a so-called "agreement to agree, where [material] terms are left to future negotiations, is unenforceable." In re Estate of Wyman, 8 N.Y.S.3d 493, 494 (App. Div. 2015). Some courts have concluded that an agreement to negotiate at a later date is an unenforceable agreement to agree. See, e.g., 77 Constr. Co. v. UXB Int'l, Inc., No. 7:13-CV-340, 2015 WL 926036, at *4 (W.D. Va. Mar. 4, 2015). But other courts have distinguished unenforceable agreements to agree from valid agreements to negotiate in good faith. See, e.g., Copeland v. Baskin Robbins, U.S.A., 117 Cal. Rptr. 2d 875 (Ct. App. 2002).

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Topics: contracts, Paul A. Ferrer, validity, agreement to agree, agreement to negotiate

LABOR LAW: More on Deflategate

Posted by Suzanne L. Bailey on Wed, Nov 4, 2015 @ 13:11 PM

The Lawletter Vol 40 No 9

Suzanne Bailey, Senior Attorney, National Legal Research Group

     Whether you believe that quarterback Tom Brady was aware that the New England Patriots were using allegedly deflated footballs during the January 18, 2015 AFC Championship Game between the Patriots and the Indianapolis Colts or whether you are unsure what sport the Patriots and Colts play or whether they play the same sport, the recent decision by U.S. District Judge Richard M. Berman in National Football League Management Council v. National Football League Players Ass'n, Nos. 15 Civ. 5916 RMB JCF, 15 Civ. 5982 RMB JCF, 2015 WL 5148739 (S.D.N.Y. signed Sept. 3, 2015), appeal filed, No. 15-2805 (2d Cir. Sept. 3, 2105), vacating the arbitration award in favor of the National Football League ("NFL"), provides a valuable primer on basic notice and hearing requirements under the Federal Arbitration Act ("FAA").

     As has been well publicized, shortly after the conclusion of the January 18, 2015 game, the NFL retained Theodore V. Wells Jr. and the law firm of Paul, Weiss, Rifkin, Wharton & Garrison ("Paul, Weiss"), to conduct an independent investigation—along with NFL Vice President and General Counsel Jeff Pash—into the use of underinflated balls. The source of authority for the investigation was the NFL Policy on Integrity of the Game and Enforcement of Competitive Rules ("Competitive Integrity Policy").

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Topics: labor law, Suzanne Bailey, deflated football, Tom Brady, AFC Championship

CIVIL PROCEDURE: Filing of Postjudgment Motion Tolls Deadline to Move for Attorney's Fees

Posted by Charlene J. Hicks on Thu, Oct 29, 2015 @ 09:10 AM

The Lawletter Vol 40 No 9

Charlene Hicks, Senior Attorney, National Legal Research Group

     For a prevailing party in a civil lawsuit to obtain attorney's fees, he or she must file a motion requesting fees by a statutory deadline. Problematically, however, many state statutes do not specify whether this deadline is tolled by the filing of a postjudgment motion. As a result, counsel may be placed in the awkward position of deciding whether to move for attorney's fees while the losing party's postjudgment motion is pending before the court.

      The effect of a postjudgment motion on the time in which a prevailing party must move for attorney's fees was recently addressed in Barbara Ann Hollier Trust v. Shack, Nos. 63308, 64047, 2015 WL 4656697 (Nev. Aug. 6, 2015). There, the court noted that Rule 54(d) of the Nevada Rules of Civil Procedure requires a prevailing party to move for attorney's fees within 20 days after service of notice of entry of judgment. However, in the case before the court, the losing party filed a motion for judgment notwithstanding the verdict or, alternatively, for a new trial before the prevailing party moved for attorney's fees. The prevailing party did not file any motion for attorney's fees until after the court denied the losing party's postjudgment motions.

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Topics: civil procedure, tolling, Charlene J. Hicks, motion for attorney's fees

CIVIL PROCEDURE: Right to Appeal Dismissal of Case Consolidated for Pretrial Proceedings in Multidistrict Litigation

Posted by Paul A. Ferrer on Wed, Sep 9, 2015 @ 10:09 AM

The Lawletter Vol 40 No 7

Paul Ferrer, Senior Attorney, National Legal Research Group

     Federal law permits "civil actions involving one or more common questions of fact" that are pending in different districts to be transferred to any district for coordinated or consolidated pretrial proceedings by the judicial panel on multidistrict litigation ("MDL"). 28 U.S.C. § 1407(a). Another federal statute grants an unsuccessful litigant in a federal district court the right to take an appeal, as a matter of right, from a "final decision" of the district court. Id. § 1291. In Gelboim v. Bank of America Corp., 135 S. Ct. 897 (2015), the Supreme Court decided the question of whether the right to appeal secured by § 1291 is affected when a case is consolidated for MDL pretrial proceedings under § 1407.

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Topics: Paul A. Ferrer, civil procedure, multidistrict legislation, The Lawletter Vol 40 No 7

TRADEMARKS: Effect in Court of Decision by TTAB

Posted by Timothy J. Snider on Mon, Jul 27, 2015 @ 09:07 AM

The Lawletter Vol 40 No 6

Tim Snider—Senior Attorney, National Legal Research Group

     In opposed trademark registration proceedings, the administrative adjudicative body is the Trademark Trial and Appeal Board ("TTAB"). It hears the appeals of applicants for registration and of those who oppose registration who are aggrieved by the decision of the Patent and Trademark Office whether to grant or deny registration to an application for registration of a trademark. There is a further level of appeal to the Federal Circuit, and a plaintiff can always seek cancellation of a registered trademark in district court. An issue often involved in registration proceedings is whether there is a likelihood of confusion between the applicant's mark and the opposer's mark. Unlike court proceedings, there is no discovery and no live testimony. The TTAB makes its decision based on the written record that is submitted to it by the parties. If the TTAB makes a determination that there is a risk of confusion between the marks in suit, what weight should be assigned to that determination by a court that is hearing a dispute between two markholders, one of whom claims that the other's mark infringes on its mark?

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Topics: trademarks, Timothy J. Snider, TTAB, registration proceedings, B&B Hardware, Inc. v. Hargis Industries

ARBITRATION: FAA Preempts New York Statute Prohibiting Mandatory Arbitration Clauses in Consumer Contracts

Posted by Charlene J. Hicks on Thu, Jul 9, 2015 @ 12:07 PM

The Lawletter Vol 40 No 5

Charlene Hicks, Senior Attorney, National Legal Research Group

      In a matter of first impression, the New York Supreme Court, Appellate Term, recently ruled that a state law prohibiting mandatory arbitration clauses in consumer contracts was preempted by the Federal Arbitration Act ("FAA"). In Schiffer v. Slomin’s, Inc., No. 2013-1867NC, 2015 WL 1566198 (N.Y. App. Term Mar. 30, 2015), consumers filed a lawsuit against a security systems provider that sold and installed home security systems. The complaint contained causes of action against the security systems provider for breach of contract, breach of warranty, and fraud. In response, the security systems provider filed a motion to compel arbitration pursuant to an unsigned contract provided to the buyers that contained a mandatory arbitration clause.

     A New York state law, General Business Law section 399-c, generally prohibits mandatory arbitration clauses in consumer contracts. The Schiffer plaintiffs were homeowners-consumers; therefore, the arbitration clause the security systems provider sought to enforce was void under New York state law.

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Topics: arbitration clause, Charlene J. Hicks, The Lawletter Vol 40 No 5, consumer contract

BANKING LAW: Finality—Appealability

Posted by Timothy J. Snider on Thu, Jun 11, 2015 @ 16:06 PM

Tim Snider, Senior Attorney, National Legal Research Group

      Very few principles of federal appellate practice are more fundamental than that only final judgments may be appealed. Mohawk Indus. v. Carpenter, 558 U.S. 100 (2009). That said, bankruptcy presents a unique situation, in that often adversary proceedings finally conclude the dispute between and among the parties to those proceedings and thus are appealable, even though the entire bankruptcy case may not yet be concluded. Howard Delivery Serv. v. Zurich Am. Ins. Co., 547 U.S. 651, 657 n.3 (2006) ("Congress has long provided that orders in bankruptcy cases may be immediately appealed if they finally dispose of discrete disputes within the larger case.").

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Topics: bankruptcy, Chapter 13, legal reseasrch, Timothy J. Snider, order declining to confirm Chapter 13 plan

CORPORATIONS: Minority Shareholders Appraisal Rights

Posted by Timothy J. Snider on Thu, Mar 19, 2015 @ 09:03 AM

Tim Snider, Senior Attorney, National Legal Research Group

     Typically, the circumstances under which a minority shareholder in a corporation may compel appraisal and purchase of his shares by the corporation is made explicit by statute. Occasionally, however, a case tests the outer boundaries of a shareholder's appraisal rights. In Fisher v. Tails, Inc., Record No. 140444, 2015 WL 103679 (Va. Jan. 8, 2015), Tails was organized as a Virginia corporation to operate as a regional franchisee of RE/MAX LLC, a Delaware limited liability company ("LLC"). On August 9, 2013, Buena Suerte Holdings, Inc., another affiliate of RE/MAX, and Tails signed a "Plan of Reorganization and Purchase Agreement" in which Tails would be sold to Buena Suerte in four steps. First, Tails would become a Delaware corporation, changing its state of incorporation from Virginia to Delaware pursuant to Virginia Code § 13.1-722.2 and Delaware Code title 8, § 265. Second, Tails would merge with and into a newly formed Delaware LLC, Tails, LLC. Tails, LLC, would be a subsidiary of a newly formed holding company, Tails Holdco, Inc. (Holdco), and Holdco would hold all of Tails, LLC's membership interests. Third, Holdco would cause Tails, LLC, to amend and restate its LLC agreement to remove certain LLC provisions. Finally, Holdco would sell Buena Suerte all of its membership interests in Tails, LLC.

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Topics: corporations, minority shareholders, appraisal rights

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