IP ADR Blog

From Ron Coleman's Likelihood of Confusion we read that Litigation is the Continuation of Business by Other Means.

"Trials and legal proceedings in courtrooms play out as a battle of words and wills," writes Ron.

In Litigation Is War, a new book published by West Legalworks™, Frederick L. Whitmer suggests that the winners in litigation also may be determined by who best applies the fundamental principles of military strategy. …Inspired by the strategic philosophy of Carl von Clausewitz’s On War, as well as his famous quote that “war is merely the continuation of policy by other means,” Whitmer explores litigation strategy-based principles rooted in Clausewitz’s military strategy.

Many mediators see themselves as "peacemakers," particularly those litigation-weary mid-life attorney-mediators who have grown cynical and dispirited by the daily mud-slogging, troop-deprived, bicker-battling that even (or particularly) high-stakes litigation can descend to.

Some of us see ourselves simply as negotiators and strategists -- people who can advise, coach, importune, shutter, sway and sometimes rock 'n roll the parties into a better resolution by way of agreement than they could ever achieve by way of suit.

But don't mistake us for peaceniks.  We understand the uses of power and are often dismayed that one side has failed to deploy a sufficient number of battleships or the right type of troops to justify the concessions demanded. 

No.  Mediators are not pacifists.  At our best, we are diplomats, wise to the ways of war and familiar with the battlefields' terrain.  Eager to listen for the needs and fears lying just below the surface of the parties' positions.  Here to help.

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Appeal of Arbitration Awards Should Be Permissible 

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 (photo by Steve McFarland)

In its recent article Google-eBay Kiss and Make Up after Ad Spat AP reported that eBay resumed running its Google ads after pulling them in apparent retaliation for Google's plan "to siphon attention from eBay’s annual user celebration in Boston."

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(photo by Bansky)

by Eric Van Ginkel

If you and opposing counsel enter into a post-dispute arbitration agreement that involves a copyright infringement issue, be sure to dismiss the action that was pending in the US district court. If not, chances are you will be held liable for the winning party’s legal fees incurred in post-award proceedings under 17 USC § 505.

That is the lesson I draw from the decision of the US District Court for the Northern District of California in Brayton Purcell LLP v. Recordon & Recordon, --- F.Supp.2d ---, 2007 WL 1462365 (N.D. Cal., May 18, 2007) (currently available only on Westlaw).

What happened?

The law firm Brayton Purcell, headquartered in Novato, California (near San Francisco), discovered that the website of San Diego-based Recordon & Recordon had materials on elder abuse that looked a lot like Brayton Purcell’s page on that subject. Recordon brought the web designer, Apptomix, into the lawsuit, which argued that it had developed that page based on independent research.

The three parties decided to submit the dispute to binding arbitration. In May 2006, the arbitrator found in favor of Brayton Purcell, and the two defendants sought to vacate the award. The district court denied the motions to vacate and confirmed the award. Then Brayton Purcell filed a motion for post-arbitration fees and costs.

The Court’s Holding

The court found that Section 505 of the Copyright Act applied to this case.  

As this case was not dismissed by the parties when they agreed to submit the dispute to arbitration, this case remains a “civil action under this title” within the literal meaning of § 505. In this regard, cases cited by Recordon denying post-arbitration fees are inapposite. They do not involve a continuation of a court case in which interim arbitration has taken place, but rather the initiation of an independent lawsuit seeking confirmation of an arbitration award.

In other words, [t]he analysis might be different had the parties in the case at bar stipulated to a dismissal of the case as part of their agreement to submit to binding arbitration. There would no longer have been a “civil action” under the Copyright Act pending before the Court, and any new court filing seeking to confirm the arbitration award arguably would not be a “civil action” under the Copyright Act.

Rather, federal jurisdiction for such a suit would have to have been independently established, e.g., diversity. To be absolutely clear on the matter, the court stressed that in agreeing to binding arbitration, the parties could have stipulated that fees would be awarded only in arbitration, and not for any post-arbitration proceedings.

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by Michael D. Young

Once again, the trial courts are trying to mess up mediation confidentiality by judicially creating (legislating?) exceptions to the confidentiality statutes. When faced with a public policy that competes with California's strong public policy favoring mediation confidentiality, the trial courts too often seem to tip the balance the wrong way by inventing unwritten exceptions to the law.

Luckily, in the recently-penned decision in Wimsatt v. Superior Court (Kausch) (Cal. App. No. B196903), the appellate court fixed things up...although it was clearly not happy about it.

Wimsatt involves a legal malpractice action against a prominent plaintiff's personal injury firm. In the trial court, the former client and malpractice plaintiff claimed that the law firm "breached its fiduciary duty by significantly lowering [the client's] settlement demand without his knowledge or consent."

The client claimed he first learned of this fact from the confidential mediation brief that was provided to the mediator. You can see the public policy conflict already, can't you?

In the malpractice action, the client reasonably enough wanted to obtain and introduce the smoking gun mediation brief, the one on which his entire case rested. However, as California practitioners should know by now, there is a slight problem with the plaintiff's wish: Evidence Code Sections 1115 et seq., and in particular Section 1119.

California is serious, and rightfully so, about protecting the very cornerstone of mediation -- confidentiality. Under Section 1119, no mediation communications, including mediation briefs, are admissible in court. This has been reaffirmed time and time again by the Supreme Court (go reread Foxgate and Rojas if you don't believe me).

So what happened in the Wimsatt case?

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After a 25-year career in complex commercial litigation and trial work, Victoria Pynchon became a full-time attorney-mediator, working toward and receiving her LL.M. in Conflict Resolution from the prestigious Straus Institute in May of 2006.  

Victoria mediates the same type of complex commercial and IP case she litigated for more than a quarter century with such firms as the Philadelphia-based Pepper, Hamilton (where she first worked with Les Weinstein); the Los Angeles-based Buchalter, Nemer and the San Francisco-based Hancock, Rothert & Bunshoft (recently merged with Duane Morris)

Victoria is a neutral for the exclusive International Institute for Conflict Prevention and Resolution and for the Southern California ADR firm, Judicate West.  Vickie is the founder of her own specialty ADR panel, Settle It Now Dispute Resolution Services and the creator and author of the Settle It Now Negotiation Blog.  

Victoria has spent her commercial litigation career litigating "bet the company" antitrust, unfair competition, intellectual property and insurance coverage actions. She has also prosecuted and defended nationwide consumer class actions and litigated securities fraud and professional liability actions.

Victoria's clients have been in the telecommunications, garment and import-export industries, as well as in the health care, entertainment, banking and finance, manufacturing and insurance industries.

Victoria's credentials include extensive academic and practical teaching experience at the undergraduate, graduate and post-graduate levels, including more than a dozen years of teaching experience with the National Institute of Trial Advocacy.

Since commencing a full-time neutral practice, Ms. Pynchon has taught negotiation skills at the Summer Entrepreneurship Institute, Anderson School of Management, U.C.L.A. and at the Straus Institute where she taught Selected Issues in Employment Mediation with long-time employment mediator, Stefan Mason.

Victoria published widely in the field of dispute resolution in both the academic and professional press. She is co-editor of the Federal Bar Association ADR and the Southern California Mediation Association Newsletters.  

Victoria's short fiction, literary non-fiction and poetry has been extensively published in the small University Press. She also edits the quarterly literary journal R.KV.R.Y.

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Les Weinstein, who remains affiliated with the law firm of Shelton Mak Rose Anderson PC while arbitrating national and international intellectual property cases with the American Arbitration Association, was my boss, mentor and teacher more than twenty years ago (yikes!) when we practiced together at Pepper, Hamilton & Scheetz.

It's a pleasure and privilege to welcome Les as one of the contributors to the IP ADR Blog.  Since meeting one another again in the ADR world, Les and I have co-mediated copyright and patent infringement cases and I have assisted him with some of the most sophisticated and complex arbitrations, including a billion dollar infringement case between two IP industry titans. 

Les has over 40 years of experience as a trial, counseling and appellate lawyer specializing in patent, copyright and trademark law, as well as the law of competition (antitrust, trade secrets, unfair competition and unfair trade practices). Mr. Weinstein's knowledge of patent law and practices is particularly deep.

He is not only registered to practice before the U.S. Patent and Trademark Office, he had early experience as a Patent Examiner, before which he worked as an engineer to ITE Circuit Breaker Co.

No stranger to the courtroom, Mr. Weinstein worked for the U.S. Department of Justice in Washington D.C. under an appointment to the Attorney General's Honor Program. It was there that Mr. Weinstein earned his trial stripes before going on to a long and distinguished private career as a partner with McKenna, Conner & Cuneo; name partner with Bleecher, Collins & Weinstein, and Senior Partner with the law firms of Pepper, Hamilton & Scheetz, Graham & James LLP, Squire Sanders & Dempsey LLP and Sheldon Mak.

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We're pleased to bring to you the considerable talent, experience and intellect of IP litigator, mediator and ADR professor, Michael Young.

Mr. Young has been mediating cases since 1989.  He was the founder and long-time chair of the Neutral Services Department of Weston, Benshoof, Rochefort, Rubalcava & MacCuish LLP, a prominent Los Angeles law firm.

Mr. Young has extensive experience litigating and mediating all varieties of intellectual property disputes, with a particular expertise in the area of trade secrets, trademarks, copyrights, and restrictive covenants.

Mr. Young is active in the dispute resolution community, speaking publicly and publishing on the use of ADR in the resolution of complex disputes.

He is an adjunct professor of law at the University of Southern California Law School, teaching negotiation and mediation.

For links to Mr. Young's law firm and ADR web sites, see our sidebar on the left.

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We litigators are trained to organize party interests around legal theories. Our clients, however, organize their thinking around their business interests, which often involve potential synergies with the competition.

Whether you're negotiating the settlement of your IP case or striving to obtain a more efficient arbitral resolution, it's helpful to have a "coach" or neutral who is as attuned to potential business solutions to legal problems and s/he is to the legal strategies already being pursued.

That's why we're joining the high-level conversation about IP commercial, regulatory, legal and technical issues already underway in the IP blogs we've listed in our sidebar. Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation.

We're looking forward to learning from those already at the table and hopeful that we'll be able to add value for everyone who preceded us here, be they transactional or trial attorneys, General Counsel or the executives they serve. We're here to listen and connect. Occasionally, we'll chip in. We're excited to be here and to begin.

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