Supreme Court of the State of Idaho, Scout LLC v. Truck Insurance Exchange, Docket No. 45349

Insurance Law

Advertising Injury

Trademark Infringement

Prior Publication Exclusion

Fresh Wrongs

Facebook Post

Duty to Defend

Duty to Indemnify

Idaho Law

California Law (for a “Fresh Wrong” Example)

Business Name, State Registration

Summary:

This case stems from Truck Insurance’s refusal to defend its insured, Scout, LLC, in a trademark infringement action brought over Scout’s use of the trademark ROGUE in the advertisement of its restaurant, Gone Rogue Pub. Scout claims that its use of ROGUE constituted an advertising injury that was covered by the insurance it purchased from Truck Insurance. Truck Insurance does not dispute that ordinarily Scout’s advertising injury would be covered and it would accordingly have a duty to defend, but contends that in this situation coverage was properly declined based on a prior publication exclusion found in the policy. The district court granted summary judgment to Truck Insurance after determining that a Facebook post of Scout’s Gone Rogue Pub logo before insurance coverage began triggered the prior publication exclusion, thereby relieving Truck Insurance of the duty to defend Scout. Scout appeals the district court’s decision granting Truck Insurance summary judgment. We affirm the judgment of the district court.

(…) On October 10, Scout posted a public picture of the Gone Rogue logo on Facebook, accompanied by the words, “Here is our new logo! Signs are going up today and tomorrow! Hope everyone likes it! Let us know what you guys think!” In the same month, Scout registered Gone Rogue Pub as an assumed business name with the Idaho Secretary of State.

(…) All was well with Gone Rogue Pub until the Oregon Brewing Company (OBC) noticed Gone Rogue’s similarity to its federally registered ROGUE trademarks.

(…) OBC asserted six different claims against Scout: (1) trademark counterfeiting under the Lanham Act; (2) trademark infringement; (3) unfair competition and false designation of origin under the Lanham Act; (4) cybersquatting under the Lanham Act; (5) unfair business practices under Idaho law; and, (5) common law trademark infringement (…) OBC sought injunctive relief, attorney fees and costs, and treble damages.

(…) A suit was thereafter brought by Scout against Truck Insurance alleging breach of contract, breach of the covenant of good faith and fair dealing, and bad faith failure to defend.

(…) “The duty to defend and duty to indemnify are separate, independent duties.” Deluna v. State Farm Fire and Cas. Co., 149 Idaho 81, 85, 233 P.3d 12, 16 (2008). The duty of an insurer to defend its insured is much broader than its duty to indemnify and “arises upon the filing of a complaint whose allegations, in whole or in part, read broadly, reveal a potential for liability that would be covered by the insured’s policy.” Hoyle v. Utica Mut. Ins. Co., 137 Idaho 367, 371– 72, 48 P.3d 1256, 1260–61 (2002). “Where there is doubt as to whether a theory of recovery within the policy coverage has been pled in the underlying complaint, the insurer must defend regardless of possible defenses arising under the policy or potential defenses arising under substantive law governing the claim against the insured.” Construction Mgmt. Sys., Inc. v. Assurance Co. of America, 135 Idaho 680, 682–83, 23 P.3d 142, 144–45 (2001). So long as there exists a genuine dispute over facts bearing on coverage under the policy or over the application of the policy’s language to the facts, the insurer has a duty to defend. Id. at 683, 23 P.3d at 145.

(…) In this case, Scout published a Gone Rogue logo on its Facebook page a month before purchasing business liability coverage. The screenshot, found in the exhibits of the OBC complaint, features the Facebook page “Gone Rogue Pub.” However, Scout claims that the page was entitled Casa del Sol until it was changed to Gone Rogue Pub after purchasing liability insurance. The logo in the October-posting only features the words GONE ROGUE, and does not contain the additional word PUB as all Scout’s other logos feature after purchasing insurance. The posting is accompanied by Scout stating that it is “our new logo,” and a user comment states, “all you need is your very own ‘Gone Rogue’ house brew.”

(…) Various courts have held that post-coverage advertisements that are sufficiently distinct from pre-coverage advertisements constitute “fresh wrongs” that trigger an insurer’s duty to defend, regardless of other advertisements excluded under a prior publication exclusion. An example of an application of the fresh wrong approach is found in Street Surfing, LLC, v. Great American E & S Ins. Co.. 776 F.3d 603 (9th Cir. 2014) (applying California law). The company Street Surfing began selling skateboards using its company name in violation of the owner’s registered trademark “Streetsurfer.” Id. at 605–06. After obtaining a business liability policy, Street Surfing began also selling skateboard accessories with its company name. Id. After the inevitable trademark infringement action was brought, Street Surfer’s insurer refused to defend the suit because of a prior publication exclusion found in its policy. Id. at 606–07. Street Surfer sued its insurer, arguing that even if the initial infringement actions were excluded under the prior publication exclusion, the trademark infringement allegations arising from the sale of skateboard accessories were fresh wrongs that triggered the insurer’s duty to defend. Id. at 612. The court held that the difference in products was not material in determining a fresh wrong (i.e., skateboards v. skateboard accessories), “because the alleged wrong arose out of each term’s similarity” to the advertising idea. Id. at 614. Therefore, to assess substantial similarity, courts should not consider all differences between pre- and post-coverage publications, but should instead focus on the relationship between the alleged wrongful acts manifested by the publications. Id. at 613–14.

(…) We repeat that the duty to defend is determined by what is charged in the complaint. The marketer’s complaint charges the misappropriation of the subordinate ideas as separate torts, and those torts occurred during the period covered by the insurer’s policy. Fresh wrongs were found in the Taco Bell case because of allegations present in the complaint alleging the taking of additional material from the marketer and using it in commercials after the insurer’s policy was in effect. Thus, allegations found within the four corners of a complaint alleging new injuries independent of prior injuries will trigger an insurer’s duty to defend, regardless of other allegations in a complaint being excluded under a prior publication exclusion.

(…) The third factor, whether a common theme is present, demonstrates the absence of fresh wrongs. It is true that Scout was not alleged to yet be violating the ROGUE trademark in connection with glassware or clothing when it posted its October Facebook logo, but it was the use of the ROGUE mark that was alleged to be the common infringement across all products. Much like in Street Surfer, where placing a mark on different products post-coverage did not produce fresh wrongs, Scout placing the ROGUE mark on other products or on its Facebook page does not make the post-coverage wrongs “fresh.” Advertising a logo featuring the word ROGUE in connection with a restaurant about to open and thereafter placing an almost identical logo featuring the word ROGUE on glassware, clothing, beer and ale, and Facebook creates substantially similar wrongs. Thus, the OBC complaint did not allege any fresh wrongs that triggered Truck Insurance’s duty to defend.

Secondary authorities: COUCH ON INS. § 101:52 (3rd ed. 2018).

(Supreme Court of the State of Idaho, January 29, 2019, Scout LLC v. Truck Insurance Exchange, Docket No. 45349, Justice Brody)

U.S. Court of Appeals for the Sixth Circuit, Dimond Rigging Company, LLC v. BDP International, Inc.; Logitrans International, LLC, Docket No. 18-3615, Boggs, Circuit Judge, recommended for full-text publication

Maritime Law

Maritime Contract

Bill of Lading

Carriage of Goods by Sea Act

Contract of Carriage

Carrier

Shipper

Ship’s Manager

Freight Forwarder

OTI

Himalaya Clause

Statute of Limitations

Estoppel

Licensing Requirements

FMC Regulations

Non-Vessel Operating Common Carrier (“NVOCC”)

Lloyd’s List

Hague-Visby

J. Mar. L. & Com.

(…) Dimond hired BDP to ship the Equipment. Dimond asserted that BDP did not disclose that it was not a licensed Ocean Transport Intermediary (“OTI”) by the Federal Maritime Commission.

(…) Dimond asserted that BDP had “without Dimond’s knowledge, consent or approval” hired Logitrans to “perform some, or all of BDP’s freight forwarding duties including locating/booking or providing a ship; acting in the capacity as the NVOCC carrier for the shipment . . . and negotiating loading services . . . .” Dimond alleged that BDP misrepresented that Logitrans was a Non-Vessel Operating Common Carrier (“NVOCC”).

(…) A non-vessel operating common carrier “consolidates cargo from numerous shippers into larger groups for shipment by an ocean carrier.” Prima U.S. Inc. v. Panalpina, Inc., 223 F.3d 126, 129 (2d Cir. 2000). The NVOCC, rather than the ship that transports the cargo, “issues a bill of lading to each shipper.”

(…) The following terms in the Bill of Lading are of particular relevance.

(a)In case the Contract evidenced by this Bill of Lading is subject to the Carriage of Goods by Sea Act of the United States of America, 1936 (“U.S. COGSA”), then the provisions stated in said Act shall govern before loading and after discharge and throughout the entire time the cargo is in the Carrier’s custody and in which event freight shall be payable on the cargo coming into the Carrier’s custody.

The Bill of Lading also contained a “Himalaya Clause.”

(a) It is hereby expressly agreed that no servant or agent of the Carrier (which for the purpose of this Clause includes every independent contractor from time to time employed by the Carrier) shall in any circumstances whatsoever be under any liability whatsoever to the Merchant under this contract of carriage for any loss, damage or delay of whatsoever kind arising or resulting directly or indirectly from any act, neglect or default on his part while acting in the course of or in connection with his employment.

(…) A bill of lading is a contract for the transportation of goods. It “records that a carrier has received goods from the party that wishes to ship them, states the terms of carriage, and serves as evidence of the contract for carriage.” Norfolk S. Ry. Co. v. Kirby, 543 U.S. 14, 18–19 (2004).

(…) A “Himalaya Clause” is a clause that imposes liability limitations. See Kirby, 543 U.S. at 20 & n.2. The name originates from an English case, Adler v. Dickinson (The Himalaya), [1955] 1 Q.B. 158, [1954] 2 Lloyd’s List L. Rep. 267, in which personal-injury claims were brought against the master and boatswain of the Himalaya. The Himalaya’s owners had included “customary exculpatory clauses” protecting them from liability for negligent injury to passengers. See Joseph C. Sweeney, Crossing the Himalayas: Exculpatory Clauses in Global Transport. Norfolk Southern Railway Co. v. James N. Kirby, Pty Ltd., 125 S. Ct. 385, 2004 AMC 2705 (2004), 36 J. Mar. L. & Com. 155, 161 (2005).

(…) The district court granted the Motions to Dismiss. It explained that, because bills of lading are “maritime contracts, governed by federal maritime law,” COGSA governed Dimond’s claims. Dimond Rigging, 320 F. Supp. 3d at 952–53. Because COGSA has a one-year statute of limitations for cargo claims in contract or tort that begins to run after the goods have been delivered, or on the date the goods should have been delivered, the district court concluded that Dimond should have filed its claims in May 2013, one year after the goods were released to Dimond’s customer. Because it did not, the district court concluded that Dimond’s claims were outside the statute of limitations. Id. at 953.

(…) The district court also rejected Dimond’s arguments that BDP and Logitrans should be estopped from benefiting from COGSA’s one-year statute of limitations because they allegedly did not comply with certain licensing requirements. The district court explained that, because COGSA does not include licensure requirements, Dimond failed to sufficiently allege that BDP and Logitrans were in violation of COGSA. Id. at 953–54.

(…) The primary issues in this case are whether COGSA controls, and whether BDP and Logitrans are “carriers” within the meaning of COGSA. If so, then Dimond should have filed its claim within one year after delivery, or the date when the goods should have been delivered. See 46 U.S.C. § 30701 (Notes § 3(6)) (…) Dimond argues that this is not a maritime dispute, but instead is about “breaches of contractual agreements, breaches of fiduciary duties, and outright fraud,” which do not create maritime jurisdiction. In determining whether this is a maritime dispute, the “answer ‘depends upon . . . the nature and character of the contract’ and the true criterion is whether it has ‘reference to maritime service or maritime transactions.’” Norfolk S. Ry. Co. v. Kirby, 543 U.S. 14, 24 (2004) (quoting North Pac. S.S. Co. v. Hall Bros. Marine Ry. & Shipbuilding Co., 249 U.S. 119, 125 (1919)). This case arises from a contract to transport used manufacturing equipment by sea from the United States to China. It is plainly a maritime transaction (…) Dimond’s argument is without basis. “When a contract is a maritime one, and the dispute is not inherently local, federal law controls the contract interpretation.”

(…) Dimond argues that it “was not a party to the contract of carriage with the ship/carrier directly, or via any authorized agent . . . .” The district court rejected this argument because Dimond is listed as a party on the bill of lading. Dimond Rigging Co., LLC v. BDP Int’l, Inc., 320 F. Supp. 3d 947, 952 n.1 (N.D. Ohio 2018). Dimond signed the Bill of Lading. We agree with the district court.

(…) COGSA applies “to all contracts for carriage of goods by sea to or from ports of the United States in foreign trade.” 46 U.S.C. § 30701 (Notes § 13); see Fortis Corp. Ins., S.A. v. Viken Ship Mgmt. AS, 597 F.3d 784, 787 (6th Cir. 2010). “Every bill of lading or similar document of title which is evidence of a contract for the carriage of goods by sea from ports of the United States, in foreign trade, shall contain a statement that it shall have effect subject to the provisions of this Act.” 46 U.S.C. § 30701 (Notes § 13).

(…) Even if Dimond were to have made arrangements with BDP to cover the overland transportation, we observe that in Kirby, 543 U.S. at 27, the Supreme Court resolved the question of how federal courts must determine whether a contract for maritime and land transport is a maritime contract. The Court explained that “so long as a bill of lading requires substantial carriage of goods by sea, its purpose is to effectuate maritime commerce—and thus it is a maritime contract.” Ibid. Even if it provides for some overland transport, it is still a maritime contract as long as the case is not inherently local. Ibid. The Bill of Lading requires transport from the port of Cleveland to Xingang. It does not refer to any other ground transportation. We have already concluded that, contrary to Dimond’s assertions, this is obviously a maritime dispute.

(…) COGSA permits the use of Himalaya Clauses to limit parties’ liability. Ibid. But merely because a Bill of Lading contains a Himalaya Clause does not mean that the Clause covers every entity or individual involved in a transaction (p. 10).

(…) We first consider whether Logitrans and BDP are carriers within the meaning of COGSA. See Sabah Shipyard v. M/V Harbel Tapper, 178 F.3d 400, 404 (5th Cir. 1999) (explaining that COGSA liability limits only apply to carriers); Shonac Corp. v. Maersk, Inc., 159 F. Supp. 2d 1020, 1025 (S.D. Ohio 2001) (discussing carriers). A “carrier” under COGSA means “the owner, manager, charterer, agent, or master of a vessel.” 46 U.S.C. § 30701; see also id. (Notes § 1(a)) (“The term ‘carrier’ includes the owner or the charterer who enters into a contract of carriage with a shipper.”). “COGSA provides that ‘carriers’ are subject to certain statutory ‘responsibilities and liabilities,’ and in turn they are provided with certain ‘rights and immunities,’ such as a one-year statute of limitations . . . .” Fortis Corp., 597 F.3d at 787. An NVOCC, consolidates cargo from various shippers and issues a bill of lading. Prima U.S. Inc. v. Panalpina, Inc., 223 F.3d 126, 129 (2d Cir. 2000) (explaining that NVOCCs are carriers under COGSA). A freight forwarder “facilitates the movement of cargo to the ocean vessel.” Ibid. “Freight forwarders generally make arrangements for the movement of cargo at the request of clients . . . . a freight forwarder does not issue a bill of lading, and is therefore not liable to a shipper for anything that occurs to the goods being shipped.” Ibid. (citing United States v. Am. Union Trans., 327 U.S. 437, 442–43 (1946)).

(…) In Fortis Corp., 597 F.3d at 789, we considered whether a ship’s manager was a carrier under COGSA. We focused on the plain language of COGSA in concluding that the manager was not a carrier. Id. at 789–92. See also Shonac Corp., 159 F. Supp. 2d at 1026 (discussing the “plain language” approach for assessing whether a party is a carrier). Under this approach, a court considers whether a party satisfies the statutory definition. See Sabah Shipyard, 178 F.3d at 405. This is an assessment of function, rather than form. Prima U.S. Inc., 223 F.3d at 130 n.1 (explaining that a party calling itself a freight forwarder that performed carrier functions would be a carrier). The key inquiry is what the party did. If it issued a bill of lading, then it is usually a “carrier” under COGSA. See id. at 129; Sabah Shipyard, 178 F.3d at 405; Shonac Corp., 159 F. Supp. 2d at 1026. It is not dispositive that the party hired a third party to actually carry the goods. See Sabah Shipyard, 178 F.3d at 405; Shonac Corp., 159 F. Supp. 2d at 1026.

(…) Sabah Shipyard is illustrative in resolving whether BDP and Logitrans are “carriers” under COGSA. In that case, Sabah had to ship some equipment to Malaysia. 178 F.3d at 403. IMB won the bid to transport the equipment. IMB’s agent, Intermarine, issued a bill of lading. After some of the equipment slid into the Singapore harbor, Sabah filed suit seeking damages under COGSA. The district court found that the defendants were liable for negligence but did not apply a COGSA limit on liability because it held that IMB and Intermarine were forwarders, not carriers. Ibid. The Fifth Circuit concluded that the district court erred when it determined that IMB and Intermarine were not carriers within the meaning of COGSA. Id. at 406. The Fifth Circuit explained that “to determine whether a party is a COGSA carrier, we have followed COGSA’s plain language, focusing on whether the party entered into a contract of carriage with a shipper.” Id. at 405. Because IMB and Intermarine entered into a contract of carriage—namely, they “agreed to carry Sabah’s goods by sea, and they issued a bill of lading,” they were carriers. Ibid.

BDP entered into a contract of carriage with Dimond because it took on the responsibility of transporting the Equipment by sea. BDP issued the Bill of Lading. Dimond Rigging, 320 F. Supp. 3d at 949. BDP is a carrier. See Sabah Shipyard, 178 F.3d at 405; Bunge Edible Oil Corp. v. M/Vs Torm Rask & Fort Steele, 949 F.2d 786, 788–89 (5th Cir. 1992) (explaining that charterer of vessel who enters into contract of carriage with shipper is a carrier); Nitram, Inc. v. Cretan Life, 599 F.2d 1359, 1370 (5th Cir. 1979) (concluding that party that entered into a contract of carriage covered by a bill of lading is a carrier within COGSA’s definition). Logitrans also entered into a contract of carriage with Dimond. It signed the Bill of Lading and is identified as the “carrier.” Accordingly, Logitrans is also a carrier. See Bunge Edible Oil Corp., 949 F.2d at 788; Nitram, Inc., 599 F.2d at 1370. Because we conclude that BDP and Logitrans are “carriers” within the meaning of COGSA, there is no need to address the Himalaya Clause.

(…) The district court ruled that there was no basis to apply equitable estoppel because COGSA does not include licensure provisions. Dimond Rigging, 320 F. Supp. 3d at 953–54. To be sure, COGSA does not supersede rights and obligations set forth in other federal statutes. See 46 U.S.C. § 30701 (Notes §§ 8, 12). COGSA establishes “particularized duties and obligations upon, and grants stated immunities” to carriers. Robert C. Herd & Co. v. Krawill Mach. Corp., 359 U.S. 297, 301 (1959). We explained in Fortis Corp., 597 F.3d at 789, that COGSA “was drafted to address the belief that carriers used their superior bargaining power against shippers when contracting for the carriage of goods, and could often dictate the terms of bills of lading to exempt themselves from any liability.” Nonetheless, the district court was quite correct that COGSA does not concern itself with licensing.

(…) FMC regulations concerning licensing, particularly 46 C.F.R. § 515.3, which provides: “Except as otherwise provided in this part, no person in the United States may act as an ocean transport intermediary unless that person holds a valid license issued by the Commission.”

(…) Hague-Visby refers to the 1924 International Convention for the Unification of Certain Rules of Law Relating to Bills of Lading, which was subsequently modified by the Hague-Visby Amendments of 1968. See Royal Ins. Co. of Am. v. Orient Overseas Container Line Ltd., 525 F.3d 409, 413 (6th Cir. 2008).

(U.S. Court of Appeals for the Sixth Circuit, January 25, 2019, Dimond Rigging Company, LLC v. BDP International, Inc.; Logitrans International, LLC, Docket No. 18-3615, Boggs, Circuit Judge, recommended for full-text publication)

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Docket No. 17-1229

License Agreement

Supply and Purchase Agreement

Form 8–K Filing with the Securities and Exchange Com­mission

Patent

Prior Art

AIA bars a person from receiving a patent on an invention that was in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

The sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of §102(a).

We granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential quali­fies as prior art for purposes of determining the patentability of the invention. 585 U. S. ___ (2018). We conclude that such a sale can qualify as prior art.

The Leahy-Smith America Invents Act (AIA) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of §102(a).

(…) Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under the AIA.

Petitioner Helsinn Healthcare S. A. (Helsinn) is a Swiss pharmaceutical company that makes Aloxi, a drug that treats chemotherapy-induced nausea and vomiting. Hel­sinn acquired the right to develop palonosetron, the active ingredient in Aloxi, in 1998 (…)

In September 2000, Helsinn announced that it was beginning Phase III clinical trials and was seeking marketing partners for its palonosetron product.

Helsinn found its marketing partner in MGI Pharma, Inc. (MGI), a Minnesota pharmaceutical company that markets and distributes drugs in the United States. Helsinn and MGI entered into two agreements: a license agreement and a supply and purchase agreement. The license agreement granted MGI the right to distribute, promote, market, and sell the 0.25 mg and 0.75 mg doses of palonosetron in the United States. In return, MGI agreed to make upfront payments to Helsinn and to pay future royalties on distribution of those doses. Under the supply and purchase agreement, MGI agreed to purchase exclusively from Helsinn any palonosetron product ap­proved by the FDA. Helsinn in turn agreed to supply MGI however much of the approved doses it required. Both agreements included dosage information and required MGI to keep confidential any proprietary information received under the agreements.

Helsinn and MGI announced the agreements in a joint press release, and MGI also reported the agreements in its Form 8–K filing with the Securities and Exchange Com­mission. Although the 8–K filing included redacted copies of the agreements, neither the 8–K filing nor the press releases disclosed the specific dosage formulations covered by the agreements.

Helsinn filed its fourth patent application—the one relevant here—in May 2013, and it issued as U. S. Patent No. 8,598,219 (‘219 patent). The ’219 patent covers a fixed dose of 0.25 mg of palonosetron in a 5 ml solution. By virtue of its effective date, the ’219 patent is governed by the AIA. See §101(i).

(…) In 2011, Teva sought approval from the FDA to market a generic 0.25 mg palonosetron prod­uct. Helsinn then sued Teva for infringing its patents, including the ’219 patent. In defense, Teva asserted that the ’219 patent was invalid because the 0.25 mg dose was “on sale” more than one year before Helsinn filed the provisional patent application covering that dose in Janu­ary 2003.

(U.S. Supreme Court, Jan. 22, 2019, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Docket No. 17-1229, J. Thomas, unanimous)

New Prime Inc. v. Oliveira, Docket 17-340

Employment Agreements

Labor Law

Contract of employment - Definition

Arbitration

Exceptions

Transportation Workers (Seamen, Railroad Employees, or any other Class of Work­ers Engaged in Foreign or Interstate Commerce)

The Federal Arbitration Act requires courts to enforce private arbitration agreements. But like most laws, this one bears its qualifications. Among other things, §1 says that “nothing herein” may be used to compel arbitration in dis­putes involving the “contracts of employment” of certain transportation workers. 9 U. S. C. §1.

A court should determine whether a §1 exclusion applies before ordering arbitration. A court’s authority to compel arbitration under the Act does not extend to all private contracts, no matter how em­phatically they may express a preference for arbitration. Instead, an­tecedent statutory provisions limit the scope of a court’s §§3 and 4 powers to stay litigation and compel arbitration “according to the terms” of the parties’ agreement. Section 2 provides that the Act ap­plies only when the agreement is set forth as “a written provision in any maritime transaction or a contract evidencing a transaction in­volving commerce.” And §1 helps define §2’s terms, warning, as rele­vant here, that “nothing” in the Act “shall apply” to “contracts of em­ployment of seamen, railroad employees, or any other class of work­ers engaged in foreign or interstate commerce.” For a court to invoke its statutory authority under §§3 and 4, it must first know if the par­ties’ agreement is excluded from the Act’s coverage by the terms of §§1 and 2. This sequencing is significant.

Petitioner New Prime Inc. is an interstate trucking company, and re­spondent Dominic Oliveira is one of its drivers. Mr. Oliveira works under an operating agreement that calls him an independent con­tractor and contains a mandatory arbitration provision.

Because the Act’s term “contract of employment” refers to any agreement to perform work, Mr. Oliveira’s agreement with New Prime falls within §1’s exception.

At the time of the Act’s adoption in 1925, the phrase “contract of employment” was not a term of art, and dictionaries tended to treat “employment” more or less as a synonym for “work.” Contemporaneous legal authorities provide no evidence that a “contract of employment” necessarily sig­naled a formal employer-employee relationship. Evidence that Con­gress used the term “contracts of employment” broadly can be found in its choice of the neighboring term “workers,” a term that easily embraces independent contractors.

Secondary authorities: N. Singer & J. Singer, Suth­erland on Statutes and Statutory Construction §56A:3 (rev. 7th ed. 2012).

(U.S. Supreme Court, Jan. 15, 2019, New Prime Inc. v. Oliveira, Docket 17-340, J. Gorsuch)

New Prime Inc. v. Oliveira, Docket 17-340

Social Security

Labor Law

Workers’ Compensation

Employee: definition

(…) See Carlson, Why the Law Still Can’t Tell an Employee When It Sees One and How It Ought To Stop Trying, Berkeley J. Emp. & Lab. L. 295, 309 (2001) (discussing the “historical baggage” of the term “servant”); Broden, General Rules Determining the Employment Relationship Under Social Security Laws: After Twenty Years an Unsolved Problem, 33 Temp. L. Q. 307, 327 (1960) (describing use of the term “employer-employee,” in contradistinction to “master-servant,” in the Social Security laws). Legislators searched to find a term that fully encompassed the broad protections they sought to provide and considered an “assortment of vague and uncertain terms,” including “‘servant,’ . . . ‘employee,’ . . . ‘workman,’ ‘laborer,’ ‘wage earner,’ ‘opera­tive,’ or ‘hireling.’” Carlson, Berkeley J. Emp. & Lab. L., at 308. Eventually “‘employee’ prevailed, if only by default, and the choice was confirmed by the next wave of protective legislation—workers’ compen­sation laws in the early years of the Twentieth Century.” Id., at 309. (Op., fn. 7).

(U.S. Supreme Court, Jan. 15, 2019, New Prime Inc. v. Oliveira, Docket 17-340, J. Gorsuch)

U.S. Court of Appeals for the Federal Circuit, In Re: Siny Corp., Docket No. 2018-1077

Trademark

Registration

Use in Commerce

Display Associated with the Goods

Webpage Printout

Substantial Evidence

Siny Corp. (“Siny”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) affirming the examining attorney’s refusal to register Siny’s proposed mark. We affirm.

Siny filed trademark application Serial No. 86754400 on September 11, 2015, seeking to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). Siny also submitted a specimen consisting of a webpage printout, which purported to show the mark in use in commerce for the goods.

The examining attorney initially refused registration because the specimen “appeared to be mere advertising material” and thus failed to show the requisite use in commerce for the goods. J.A. 74. The examining attorney noted in particular that the specimen did not include a means for ordering the goods.

(…) The examining attorney rejected (…) argument in a final refusal. He found that the cited text alone was insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase. The examining attorney noted the absence of what he considered necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. He therefore maintained the refusal based on the submitted specimen’s failure to show the requisite use in commerce for the goods.

Siny appealed the refusal to the Board. In a split decision, the Board affirmed. The Board initially noted that for a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” J.A. 2 (quoting 15 U.S.C. § 1127). The Board observed that the Webpage Specimen was not an example of the mark being placed on the goods or their containers, tags, or labels. Rather, Siny contended that the Webpage Specimen constituted a “display associated with the goods.”

The Board then considered the Webpage Specimen in detail. It found that the Webpage Specimen lacked much of the information the Board would consider essential to a purchasing decision—e.g., a price (or even a range of prices) for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. J.A. 8. The Board appreciated Siny’s contention that because the goods were industrial materials for use by customers in manufacture, the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel. J.A. 9; see J.A. 3. Yet it found that, “while some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.” J.A. 9.

The Board added that in cases where the goods are technical and specialized and the applicant and examining attorney disagree on the point-of-sale nature of a submitted webpage specimen, “the applicant would be well advised to provide the examining attorney with additional evidence and information regarding the manner in which purchases are actually made through the webpage.” J.A. 9 (noting further that “attorney argument is not a substitute for reliable documentation of how sales actually are made . . . and verified statements from knowledgeable personnel as to what happens and how”). The Board ultimately affirmed the refusal because it found that the Webpage Specimen was not a display associated with the goods within the meaning of the Lanham Act. J.A. 10. The dissenter found that the Webpage Specimen was a valid “point of sale” display. J.A. 10–12.

Siny appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. E.g., Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 1364–65 (Fed. Cir. 2018). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. at 1365 (quoting Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938)).

The Lanham Act provides for registration of a mark based on use of the mark in commerce. 15 U.S.C. § 1051(a). A mark is deemed in use in commerce on goods when, among other things, “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” Id. § 1127. The U.S. Patent and Trademark Office (PTO) requires an applicant to submit a specimen of use “showing the mark as used on or in connection with the goods.” In re Sones, 590 F.3d 1282, 1284 (Fed. Cir. 2009).

The issue on appeal concerns whether the Webpage Specimen qualifies as a display associated with the goods under the Lanham Act. Mere advertising is not enough to qualify as such a display. See Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130 (CCPA 1965) (“It is well settled that mere advertising and documentary use of a notation apart from the goods do not constitute technical trademark use.”); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098 (Fed. Cir. 1985); Lands’ End, Inc. v. Manback, 797 F. Supp. 511, 513 (E.D. Va. 1992). In determining whether a specimen qualifies as a display associated with the goods, one important consideration is whether the display is at a point-of-sale location. See In re Sones, 590 F.3d at 1289 (identifying the point-of-sale nature of a display as a relevant consideration); In re Marriott Corp., 459 F.2d 525, 527 (CCPA 1972) (likening the menus at issue to point-of-sale counter and window displays previously found acceptable); Lands’ End, 797 F. Supp. at 514 (“A crucial factor in the analysis is if the use of an alleged mark is at a point of sale location.”).

Whether a specimen qualifies as a display associated with the goods is a factual question. See In re Marriott Corp., 459 F.2d at 526 (“In our view, ‘association with the goods’ is a relative term amenable to proof.”); Lands’ End, 797 F. Supp. at 514 (“The determination of whether a specimen is mere advertising or a display associated with the goods is a factual question amenable to proof.”); accord In re Valenite Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B. 2007) (“Whether a specimen is mere advertising or whether it is a display associated with the goods is a question of fact which must be determined in each case based on the evidence in that particular case.” (citing In re Shipley Co., 230 U.S.P.Q. 691 (T.T.A.B. 1986))).

(…) We disagree that the Board applied improperly rigid requirements here. Rather, the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods. We cannot say that the Board’s determination lacked substantial evidence.

(U.S. Court of Appeals for the Federal Circuit, Jan. 14, 2019, In Re: Siny Corp., Docket No. 2018-1077, Precedential)

U.S. Court of Appeals for the Fourth Circuit, Docket No. 17-2003, Published

Facebook Page

President Trump’s Twitter Account

Governmental Social Media Page

Right of Account Owner to Suppress a Public Comment?

First Amendment

Government Speech

Public Forum

Traditional Public Forum, or Designated or Limited Public Forum

Viewpoint Discrimination

42 U.S.C. § 1983

Randall has chaired the Loudoun County Board of Supervisors since January 1, 2016. The day before she was sworn in as chair, Randall created the “Chair Phyllis J. Randall” Facebook Page (the “Chair’s Facebook Page”). According to Facebook, Inc., unlike personal Facebook profiles, which are for non-commercial use and represent individual people, Facebook “Pages”—like the Chair’s Facebook Page—“help businesses, organizations, and brands share their stories and connect with people.” J.A. 403. “Pages are managed by people who have personal profiles,” the company explains. J.A. 403. In addition to the Chair’s Facebook Page, Randall created and maintained two other Facebook profiles: a personal profile and a Page devoted to her campaign. Randall classified her campaign page as belonging to a “politician” and used no designation for her personal profile, but she designated the Chair’s Facebook Page as a “governmental official” page. J.A. 209–10.

((…) “‘Liking’ on Facebook is a way for Facebook users to share information with each other.” Bland v. Roberts, 730 F.3d 368, 385 (4th Cir. 2013) (Op., fn. 1, p. 7)).

(…) On November 3, 2016, Davison filed an amended complaint seeking declaratory and injunctive relief under 42 U.S.C. § 1983 against Randall, in both her official and individual capacities, and the Loudoun Board alleging that the “banning of [Davison] from commenting on [the Chair’s Facebook Page] is viewpoint discrimination.” J.A. 31.

(…) Considering the totality of these circumstances, the district court correctly held that Randall acted under color of state law in banning Davison from the Chair’s Facebook Page.

(…) Third, Randall argues that the district court erred in ruling in Davison’s favor on his individual capacity First Amendment claim against Randall. Randall principally challenges the district court’s conclusion that the Chair’s Facebook Page constitutes a “public forum” under traditional First Amendment law. We review this legal question de novo. See Helton, 709 F.3d at 350.

Under long-established First Amendment law, governmental entities are “strictly limited” in their ability to regulate private speech in public fora. Pleasant Grove City, Utah v. Summum, 555 U.S. 460, 469 (2009). The Supreme Court has recognized two categories of public fora: “traditional public forums” and “limited (or designated) public forums.” Am. Civil Liberties Union v. Mote, 423 F.3d 438, 443 (4th Cir. 2005). “Traditional” public forums—“such as streets, sidewalks, and parks”—“have the characteristics of a public thoroughfare, a purpose that is compatible with expressive conduct, as well as a tradition and history of being used for expressive public conduct.” Id. “Limited” or “designated” forums are forums that are “not traditionally public, but that the government has purposefully opened to the public, or some segment of the public, for expressive activity.” Id. Accordingly, the hallmark of both types of public fora—what renders the fora “public”—is that the government has made the space available—either by designation or long-standing custom—for “expressive public conduct” or “expressive activity,” and the space is compatible with such activity. Id. “Conversely, a non-public forum is one that has not traditionally been open to the public, where opening it to expressive conduct would ‘somehow interfere with the objective use and purpose to which the property has been dedicated.’” Id. (quoting Warren v. Fairfax Cty., 196 F.3d 186, 190–91 (4th Cir. 1999)).

Although neither the Supreme Court nor any Circuit has squarely addressed whether, and in what circumstances, a governmental social media page—like the Chair’s Facebook Page—constitutes a public forum, aspects of the Chair’s Facebook Page bear the hallmarks of a public forum. Randall “intentionally opened the public comment section of the Chair’s Facebook Page for public discourse,” Cornelius v. NAACP Legal Defense & Educ. Fund, Inc., 473 U.S. 788, 802 (1985), inviting “ANY Loudoun citizen” to make posts to the comments section of the Chair’s Facebook Page—the interactive component of the page—“on ANY issues, request, criticism, complement or just your thoughts,” J.A. 455. Randall placed no restrictions on the public’s access to the page or use of the interactive component of the Chair’s Facebook Page. And, in accordance with Randall’s invitation, the public made numerous posts on matters of public concern.

(In addition to the court below, two other district courts have considered whether a government official’s social media page constituted a public forum. Those courts reached conflicting results. Compare Morgan v. Bevin, 298 F. Supp. 3d 1003, 1010 (E.D. Ky. 2018) (holding that First Amendment forum analysis did not apply to restrictions on speech in the official Facebook and Twitter pages of the Governor of Kentucky), with Knight First Amend. Inst. at Colum. Univ. v. Trump, 302 F. Supp. 3d 541, 573 (S.D.N.Y. 2018) (holding that the interactive component of the President’s Twitter account, as opposed to the President’s tweets themselves, constituted a designated public forum), appeal docketed, No. 18-1691 (2d Cir. Oct. 24, 2018).)

(…) And the Supreme Court and lower courts have held that private property, whether tangible or intangible, constituted a public forum when, for example, the government retained substantial control over the property under regulation or by contract. See, e.g., Se. Promotions, Ltd. v. Conrad, 420 U.S. 546, 547, 555 (1975) (holding that “a privately owned Chattanooga theater under long-term lease to the city” was a “public forum designed for and dedicated to expressive activities”); Halleck v. Manhattan Community Access Corp., 882 F.3d 300, 306–07 (2d Cir. 2018) (holding that public access television channels operated by a private non-profit corporation constituted public forums), cert. granted 139 S. Ct. 360 (2018) (mem.); First Unitarian Church of Salt Lake City v. Salt Lake City Corp., 308 F.3d 1114, 1122 (10th Cir. 2002) (“Forum analysis does not require that the government have a possessory interest in or title to the underlying land. Either government ownership or regulation is sufficient for a First Amendment forum of some kind to exist.”); Freedom from Religion Foundation, Inc. v. City of Marshfield, Wis., 203 F.3d 487, 494 (7th Cir. 2000) (holding that private property abutted by public park constituted public forum). 

(…) Of particular importance, Randall had complete control over the aspect of the Chair’s Facebook Page giving rise to Davison’s challenge because, as administrator of the page, Randall had authority to ban Facebook profiles or Pages from using the Chair’s Facebook Page—and, therefore, the interactive component of the page—authority she exercised in banning Davison’s Virginia SGP Page. Cf. Knight, 302 F. Supp. 3d at 566–67 (holding that the interactive component of the President’s Twitter account constituted public forum because the President and his advisors “exercise control over various aspects of the . . . account,” including the power to block other users from accessing the account).

(…) The interactive component of the Chair’s Facebook Page constitutes a public forum, even though Randall’s curation of and posts to the Chair’s Facebook Page amount to government speech. Additionally, the interactive component of the Chair’s Facebook Page does not face the same spacial limitations as those of the park in Pleasant Grove, but instead is “capable of accommodating a large number of public speakers without defeating its essential function.”

(…) Upon concluding that interactive component of the Chair’s Facebook Page amounts to a public forum, we would normally need to determine whether it constitutes a traditional public forum or designated or limited public forum. In the present case, however, we need not decide that question because Randall’s ban of Davison amounted to “viewpoint discrimination,” which is “prohibited in all forums.” See Child Evangelism Fellowship of S.C. v. Anderson Sch. Dist. Five, 470 F.3d 1062, 1067 n.2 (4th Cir. 2006). “Viewpoint discrimination . . . ‘targets not subject matter, but particular views taken by speakers on a subject.’” Id. (quoting Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819, 829 (1995)). Viewpoint discrimination is apparent, for example, if a government official’s decision to take a challenged action was “impermissibly motivated by a desire to suppress a particular point of view.” Cornelius, 473 U.S. at 812–13.

(…) Knight, 302 F. Supp. 3d at 575 (holding that the President engaged in viewpoint discrimination when he blocked individuals from his Twitter account because the individuals “posted tweets that criticized the President or his policies”).

(U.S. Court of Appeals for the Fourth Circuit, Jan 7, 2019, Docket No. 17-2003, Published)

Customs - Freight Forwarding

Customs

Swiss Freight Forwarding Association

https://www.spedlogswiss.com/

Shareholders’ Agreement - Request for a Competition Commissions’ Advice

Swiss Competition Commission Advice (in German): Competition: Unfair Competition: Antitrust:

Shareholders’ agreement

Request for a Commissions’ advice

Art. 23 II Swiss Cartel Act: Duties of the Secretariat: The Secretariat provides opinions (Art. 46 para. 1) and advises governmental offices and undertakings on matters relating to this Act.

Art. 4 III b Swiss Cartel Act: Concentration of undertakings are: any transaction, in particular the acquisition of an equity interest or the conclusion of an agreement, by which one or more undertakings acquire direct or indirect control of one or more previously independent undertakings or parts thereof.

Shareholders’ agreement submitted to the Commission (its Secretariat) for its advice under Art. 23 II Swiss Cartel Act by two corporations, owners of the shares of a third corporation (A – 50%, B + 50%). One of the goals of the agreement was to avoid a change in the control exerted by A and B upon said third corporation. Here the agreement under review escaped the Act. In case of a controversy between A and B, a multi-step amiable proceeding was in place, culminating, without amiable resolution of the dispute, in one corporation buying the shares of the other, a highly improbable scenario according to the Commission. Besides, the rights of the minority of the shareholders were safeguarded, including a possible right of veto in definite circumstances.

Beratungen

Beratung Änderung Aktionärsstruktur

Aktionärsbindungsvertrag

Art. 23 II KG: Aufgaben des Sekretariats: es gibt Stellungnahmen ab (Art. 46 Abs. 1) und berät Amtsstellen und Unternehmen bei Fragen zu diesem Gesetz.

Art. 4 III b KG: Als Unternehmenszusammenschluss gilt: jeder Vorgang, wie namentlich der Erwerb einer Beteiligung oder der Abschluss eines Vertrages, durch den ein oder mehrere Unternehmen unmittelbar oder mittelbar die Kontrolle über ein oder mehrere bisher unabhängige Unternehmen oder Teile von solchen erlangen.

(…) Gewisse Änderungen im Aktionärsbindungsvertrag zwischen [A] und [B] vorsehe (nachfolgend: ABV Term Sheet).

(…) Infolgedessen würden die Parteien die Transaktion nicht als eine Kontrolländerung im Sinne von Art. 4 Abs. 3 Bst. b KG ansehen.

(…) Die Möglichkeit des Minderheitsaktionärs, diese Entscheidungen zu beeinflussen, stellten die gemeinsame Kontrolle von [B] und [A] über [GU] sicher.

(…) Falls der Management Ausschuss während der „Cooling-off Periode“ zu keiner Einigung gelange, könnten gewisse Angelegenheiten einseitig durch [B] entschieden werden. Dazu gehöre unter anderem (…)

(…) In einer „Deadlock Situation“ komme ein zusätzliches Eskalationsverfahren zur Anwendung.

(…) Die Praxis der Wettbewerbskommission nimmt dabei Bezug auf die entsprechende Praxis der EU-Kommission.

(…) Vetorechten (…)

(…) Wie erwähnt ist der Beschluss über die „Overall Strategy“ an die Bedingung geknüpft, dass bei Uneinigkeit zwischen [B] und [A] (nach einer Reihe von Schlich-tungs- und Einigungsversuchen) [B] alle Anteile von [A] zu aktuellem Verkehrswert erwerben muss. Dies würde einen erheblichen finanziellen Nachteil für [B] bedeuten. Zudem würde der Verkauf allenfalls auch der Zusammenschlusskontrolle in der Schweiz und anderen Jurisdiktionen unterliegen. All dies lässt die Durchsetzung der Stimmenmehrheit von [B] beim Gemeinschaftsunternehmen als unwahrscheinlich erscheinen.

(WeKo, Beratung, RPW 2018/3, 505-507)