Business Law Journal

In Camden Systems, LLC v. 409 North Camden, LLC, a California Court of Appeal recently affirmed that a limited liability company (“LLC”) “shall have all the powers of a natural person in carrying out its business activities”, which included ratifying its prior acts. Moreover, the California Court of Appeal affirmed that a member does not have standing to challenge actions taken before it became a member of the LLC, of record or beneficially; and that LLC operating agreements may (with some limitations) deviate from and supersede statutory default provisions.

On September 30, 2023, California Governor Gavin Newsom signed into law Senate Bill (SB) No. 235, now codified as California Code of Civil Procedure section 2016.090, introducing a significant shift towards encouraging proactive initial disclosures in state court civil litigation. This legislative change amends California’s Civil Discovery Act to include proactive initial disclosure rules that align with those used in Federal Court. Effective for almost all civil cases filed after January 1, 2024, until January 1, 2027, this amendment heralds a new era of discovery rules in California that aim to foster judicial efficiency, transparency, and fairness in civil litigation.

The recent decision in Epochal Enterprises, Inc. v. LF Encinitas Properties, LLC, 2024 WL 358231 (1/31/24), asks the question: Will common exculpatory lease terms protect the landlord from an adverse jury verdict of gross negligence?  Ultimately, the answer is “No.”

Paperwork is an inevitable and often tedious part of doing business.  When that paperwork becomes routine and time consuming, the natural inclination is to skim documents or rely on industry-developed shortcuts.  While this can save you time in the short-term, doing this risks exposing you and your company to massive liability. And while you can directly control your own actions, the risk of liability does not end there.  Many companies choose to outsource that paperwork to third-parties and trust them to do their jobs. But even when you have good practices internally, when the third parties that work for you do not follow best practices, you can still be put at risk.  The recent California Court of Appeals decision in Bergstrom v. Zions Bancorporation is a clear example of how reliance on third-party agents and a third-party’s use of shortcuts can expose your company to massive liabilities. 2022 WL 1419910 (2022).

According to a recent unanimous decision by the California Court of Appeal’s First District, an action alleging violations of California’s Private Attorneys General Act (“PAGA”) may be filed in any county where any allegedly aggrieved employee worked or alleges to have suffered violations of the Labor Code.  It does not matter where the employee suing the company worked or where the employer-company is located. 

In MSY Trading Inc., et al. v. Saleen Automotive, Inc., the California Court of Appeal recently ruled on a question of first impression: whether a postjudgment, independent action to establish alter ego liability for a judgment on a contract is subject to an award of attorney fees (pursuant to the contract) for a prevailing party, even if the prevailing party had not signed that contract.  The Court of Appeal affirmed that any prevailing party, having prevailed in an action based on the contract, could properly seek attorney fees as allowed by the contract.  The Court of Appeal also noted that had such alter ego allegations been made in the prior breach of contract action, the prevailing party would most certainly have been entitled to recover its attorney’s fees —  therefore, the postjudgment, independent action to establish alter ego liability on that judgment must be considered an action based on the contract.

The California Consumer Privacy Act (CCPA) went into effect on January 1, 2020.  Is your business prepared and in compliance with the new law? 

The California Supreme Court recently issued the latest in a series of decisions concerning the applicability of Code of Civil Procedure § 425.16 (the “anti-SLAPP law”), which was designed to enable early dismissal of lawsuits that are filed primarily to discourage the free exercise of speech and petition rights. 

On May 20, 2019, the United States Supreme Court resolved a circuit split and answered a significant previously unresolved legal issue in trademark licensing.  The Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, 587 U.S. __ (2019), that a debtor-licensor’s rejection of an executory trademark licensing agreement in bankruptcy has the same effect as a breach of contract outside bankruptcy and therefore does not rescind the licensee’s rights or revoke the trademark license.

Section 365 of the Bankruptcy Code allows a debtor to “reject any executory contract”—meaning a contract that neither party has finished performing.  The issue before the Court was whether a debtor-licensor’s rejection of a trademark license agreement, which “constitutes a breach of such contract” under Section 365(g) of the Bankruptcy Code, resulted in a rescission of the license even though a breach of contract in a non-bankruptcy context would not automatically terminate the license.

In its 8-1 decision authored by Justice Kagan (and joined by every justice except Justice Gorsuch), the Supreme Court reversed the First Circuit’s January 2018 decision that had ruled that a licensee loses its right to use licensed trademarks if the debtor-licensor rejects the trademark licensing agreement in bankruptcy.  Instead, the Supreme Court sided with the Seventh Circuit’s reasoning from Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012), where the Seventh Circuit construed Section 365 and held to the contrary.

Prior to the Supreme Court’s decision, the circuits had been divided as to the effect of a debtor-licensor’s rejection of a license.  Some circuits, including the Seventh Circuit, had held that a rejection of a license agreement was simply a breach of contract, in which case the licensee’s rights under the contract remained intact and the licensee could continue to use the trademark.  Other circuits, such as the First Circuit, held that a rejection of a license agreement was a termination of the license, thereby prohibiting the licensee from continuing to use the trademark.  The debate has now been settled.

The Supreme Court’s decision significantly enhances the bargaining strength of trademark licensees because there is now certainty that a licensor’s rejection in bankruptcy does not revoke the licensee’s rights under a pre-existing license agreement.  Potential debtors are also affected because trademark licenses granted prior to bankruptcy remain valid and the debtor-licensor’s obligations under the license agreement continue. 

Justice Sotomayor issued a concurring opinion in part to highlight the special treatment of a trademark licensee’s post-rejection rights and remedies under Section 365. 

Parties who now find themselves negotiating agreements, including trademark licenses in particular, must carefully consider what terms and obligations will survive bankruptcy before entering such agreements.  Because the Supreme Court’s ruling implicates many business and drafting issues, it is important to consult with experienced intellectual property counsel before negotiating and entering into a trademark license agreement.

AALRR has a dedicated group of attorneys on its Intellectual Property Team who can assist you with negotiating and drafting license agreements.  Contact the authors for assistance with navigating the complicated intersection of intellectual property and insolvency.

One of the core lessons for defense counsel is understanding that procedural dynamics of cases have substantive strategic consequences.  One of the most complex is the decision of plaintiff’s counsel to dismiss a case.  For instance, without more, voluntary dismissal may result in a claim for costs and fees by the defense under the California Code of Civil Procedure.  Cal. Code Civ. Proc. § 1032.  The situations where a short-sighted dismissal can harm a client are many.  Similar consequences can occur when errors are made in choices between state and federal forums.  That is the subject of this article.