We previously wrote about California Senate Bill 206, the “Fair Pay to Play Act,” back in April, and now Gov. Gavin Newsom has signed that bill into law.[1] The law becomes effective on January 1, 2023. After numerous revisions to the bill since our last post, here is a quick look at the final product.

The new Fair Pay to Play Act allows California student-athletes to earn compensation from licensing their name and image and to obtain professional representation by lawyers and agents to assist with that effort, all without losing scholarship eligibility or amateur status under the National Collegiate Athletics Association’s (NCAA) Division I and II eligibility criteria. Importantly, the law specifically prohibits colleges, athletic associations and intercollegiate conferences from paying such compensation to prospective student-athletes.
Continue Reading California’s Fair Pay to Play Act: This is Only The First Quarter

This week, the U.S. Court of Appeals for the Ninth Circuit joined a majority of appellate courts that have rejected rigid tests for attorneys’-fees awards in favor of flexible discretion at the district court level.  The Ninth Circuit’s pre-Octane Fitness rulings provided a safe-harbor for litigants: fees were only to be awarded in instances of “malicious, fraudulent, deliberate or willful” infringement or where a frivolous case was brought or maintained in bad faith.  That standard has been discarded and replaced by a different, more general test that asks whether the case stands out in terms of its strength or unreasonableness in the way it was litigated.
Continue Reading Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases

In Federal Trade Commission v. LeadClick Media, LLC, 2016 U.S. App. LEXIS 17383 (2nd Cir. 2016), the Second Circuit recently held that an affiliate marketing network provider could be subjected to liability under the Federal Trade Commission Act (“FTC Act”) for deceptive marketing materials published by the affiliates.  It also concluded that Section 230 of the Communications Decency Act (“CDA”) did not immunize the network provider from liability.  In doing so, the Second Circuit emphasized that the network provider had knowledge of and the authority to control the content of the affiliate websites.  This ruling could increase the exposure of internet businesses to liability for deceptive acts or practices engaged in by third-party vendors or independent contractors.
Continue Reading No Protection for Network Marketing Provider That Had Knowledge and Authority to Control Deceptive Conduct of Affiliates

On February 25, 2016, The State Counsel Legislative Affairs Office (“SCLAO”) released a draft amendment (“Draft Amendment”) of the PRC Anti-Unfair Competition Law (“AUCL”) for comment by industry and other stakeholders.  Article 5 of the 1993 AUCL provides the basis for claims against Business Operators for unfair trade practices involving the misuse and misappropriation of trade dress, enterprise names, and other commercial signs.  The Draft Amendment of the AUCL contains some interesting and encouraging language, but could benefit from additional clarification and fine tuning.  Industry has until March 25, 2016 to submit comments on the Draft Amendment to the AUCL, and numerous industry organizations have been collecting comments for submission to SCLAO over the last few weeks.  Here are some highlights of proposed changes to Article 5, and some of the open issues that will hopefully be addressed before a final version of the revised AUCL sees the light of day.
Continue Reading Improper Use of Commercial Signs — Proposed Revisions to Article 5 of the PRC Anti-Unfair Competition Law

On August 26, 2015, the Trademark Office of The State Administration For Industry & Commerce of the People’s Republic of China (“TMO”) issued revised guidelines entitled Applications for Recordal of Licenses of Registered Trademarks, Recordal of Licensor/Licensee Name Change, Recordal of Early Termination of Trademark Licenses and Recordal of Withdrawal of Trademark Licenses (“2015 Guidelines”). The 2015 Guidelines are a slightly revised version of guidelines issued in 2014 that were intended to bring the license recordal regime in line with the 2014 Trademark Law and its Implementing Regulations.  The TMO has not indicated whether the 1997 Measures for the Filing of Recordals of Trademark License Contracts (“1997 Recordal Measures”) will remain in effect after the establishment of new recordal procedures and the issuance of the 2015 Guidelines, but it is clear that a number of provisions of those earlier measures have been rendered moot under the new regime. 
Continue Reading Recent Developments in Recordal Procedures for Trademark Licenses in China

In this case, the Trademark Trial and Appeal Board reversed the refusal to register Applicant’s ALLEGIANCE STAFFING mark (disclaiming STAFFING) for temporary employment agency service on the basis of likelihood of confusion based predominantly on the thirteenth “catch-all” du Pont factor.
Continue Reading In re Allegiance Staffing – The Rare “Any Other Established Fact”

The recent arrests[1] of Robert Faiella, an alleged seller on online marketplace Silk Road, and Charlie Shrem, the CEO of the startup BitInstant, marked a recent round in a series of law enforcement actions against what the government characterizes as a “rise in criminal activity”[2] by people using the cryptographically-controlled digital currency, Bitcoin.[3]  The arrests of Shrem and Faiella occurred nearly contemporaneously with hearings by the New York Department of Financial Services to determine how to regulate Bitcoin in the State of New York.  More than one source has suggested the timing of the arrests may have cast at least some cloud on the New York hearings on regulation of Bitcoin.
Continue Reading Bitcoins and Liability in the Wake of Recent Silk Road Arrests

A little used and often overlooked provision of the California Code of Civil Procedure recently played an important role in three recent cases brought by AF Holdings LLC, a foreign entity formed under the laws of the Federation of Saint Kitts and Nevis, against California residents for allegedly dealing with copyright infringing content through use of BitTorrent software. These decisions, copies appended, are:

AF Holdings LLC v. Trinh, United Stated District Court for the Northern District of California, 2012 U.S. Dist. Lexis 161394 (November 9, 2012) (“AF Holdings I”).

AF Holdings LLC v. Navasca, United Stated District Court for the Northern District of California, No. C-12-2396 EMC (February 5, 2013) (“AF Holdings II”).

AF Holdings LLC v. Magsumbol, United Stated District Court for the Northern District of California, No. 12-4221 SC (March 18, 2013) (“AF Holdings III”).Continue Reading BONDing WITH NPE’s – The requirement for security for costs or expenses under Section 1030 of the California Code of Civil Procedure

By Dennis Smith, Martin Bader, Gray Buccigross

On August 31, 2012, the Federal Circuit, sitting en banc, issued a seminal, split decision articulating a new standard for induced infringement. Adjudicating two companion cases, Akamai Technologies, Inc. v. Limelight Networks Inc., and McKesson Technologies, Inc. v. Epic Systems Corp. (Fed. Cir., No. 2009-1372, -1380, -1416, -1417), the majority (Chief Judge Rader, and Circuit Judges Lourie, Bryson, Reyna, Moore and Wallach, joining) reversed both district courts and remanded for further proceedings.
Continue Reading Federal Circuit Avoids Central Joint Infringement Question and Articulates New Standard For Inducement

By Tyler Baker and Ted Max

On September 5, 2012, the United States Court of Appeals for the Second Circuit issued its long-awaited and highly anticipated decision in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Docket No. 11-3303-cv. The Second Circuit reversed the lower court decision, in part, holding that Christian Louboutin’s “red outsole” trademark was valid and enforceable, and affirmed in part, holding that such trademark protection was limited to uses in which the “red outsole” contrasts with the color of the remainder of the shoe. As a result, the appeal of Christian Louboutin (“Louboutin”) was not successful and the fashion atelier Yves Saint Laurent (“YSL”) was not enjoined from using a red sole as part of a monochrome red shoe. The ruling, deciding a novel and hotly debated issue of U.S. trademark law regarding aesthetic functionality, is a victory for both sides in some respects, yet certainly leaves the door open for future debate and lawsuits about the scope of the Louboutin mark’s protection.
Continue Reading Second Circuit Digs Its Heels Into Louboutin Dispute; Finds “Red Sole” Trademark Protectable, But Limited in Scope