As intellectual property litigators, the attorneys of Karish & Bjorgum often run into issues involving allegations of wrongful conduct arising from enforcement of intellectual property rights.  This issue can arise when notification of a suit is sent to the trade or even when a cease and desist letter is sent.  Sometimes the defendant of the suit or the recipient of the letter will retaliate with a lawsuit claiming malicious prosecution, abuse of process, interference with contract or some other tort allegedly based upon the underlying dispute.

The response to such a counterclaim is often a motion to dismiss based upon First Amendment principles and/or a so-called “anti-SLAPP” (“strategic lawsuit against public participation”) motion.  Many states have anti-SLAPP statutes, which are intended to allow quick dismissal of claims arising from activity protected under the Constitution.  The prototypical anti-SLAPP situation involves an individual speaking out about a “public issue” (such as at a city council meeting) and then being sued for defamation in response.  The goal of the person or company bringing suit is not to win but to distract and wear down the speaker.  However, in addition to obvious situations such as public meetings, activity protected under the anti-SLAPP statute often includes lawsuits, good faith threats of lawsuits and cease and desist letters.

Anti-SLAPP statutes usually have strong tactical advantages for the movants.  In California, filing such a motion immediately stays fact discovery, provides a mandatory award of fees for the successful movant, and allows for an immediate right of appeal if unsuccessful.  However, once beyond the vanilla state court case,  the anti-SLAPP terrain becomes exponentially difficult, and many federal litigators miss this issue altogether.  For instance, under the Erie doctrine, only some of these procedural advantages apply in federal court.  However, the First Amendment and federal Noerr-Pennington doctrine can be used to obtain similar results.  And California has passed statutes to limit the application of the anti-SLAPP statute, as well as special rules for “SLAPP back” cases.

Attorneys at Karish & Bjorgum have been involved in many novel applications of the anti-SLAPP statute and Noerr-Pennington doctrine.

Representative cases include:

MM&R, Inc. v. Stitch n Genius, LLC (USDC, Central District of California):  Interpreting Federal Circuit precedent, federal court held that California’s anti-SLAPP statute applies to counterclaims based upon letters notifying the trade of patent rights and lawsuit.

Gallagher v. Moon (L.A. Sup. Ct.):  State Court granted anti-SLAPP motions of landowner’s wife and tenant in case based upon alleged wrongful execution of judgment on real property.

Sosa v. DIRECTV (9th Circuit):  Federal court of Appeals held that Noerr-Pennington doctrine applies to RICO and state law claims against DIRECTV, based upon its efforts to curb piracy of access cards.

DIRECTV cases (various Federal Courts):  U.S. District Courts in Georgia, New York and Michigan held that local anti-SLAPP statutes or Noerr-Pennington doctrine applied to attempts by DIRECTV to settle infringement disputes with subscribers.

Mattel, Inc. v. Christian (California Court of Appeal):  In a rare reversal of anti-SLAPP motion granted against large company, the California Court of Appeal holds that Mattel, Inc. stated defamation claims based upon statements made to tabloid television show regarding earlier case.

So, if you are a holder of intellectual property rights wishing to begin an enforcement campaign — or if you have already threatened in response to such a campaign or feel that another company is wrongfully pursuing its own intellectual property rights against you — you may need to obtain legal advice on the scope of protected speech.  If you have been sued for such conduct, you may be entitled to fees and a quick dismissal.  Contact Karish & Bjorgum for further consultation.