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Did you know that your company or the one that you represent may not have the right to enter into contracts, sue or defend itself against a lawsuit in California?  Well-settled law, ignored by many businesses and even lawyers to some degree, can disqualify a company from entering into contracts or litigating in California if it fails to establish and maintain a qualified status with the Secretary of State (“SOS”) and the Franchise Tax Board (“FTB”), the state taxing authority.

In Silicon Valley and elsewhere throughout the state, a large percentage of start-ups decide to form their company – be it a corporation or an LLC – in a state other than California, such as Delaware.  However, if these foreign companies plan to have a presence or otherwise do business in California, state law requires these companies to register for qualification with the California Secretary of State, pay an annual franchise tax and potentially pay state income taxes the same as an entity that is formed in California.  If foreign companies fail to comply with these requirements, they forfeit all “corporate powers, rights and privileges” in California, which include not only the right to maintain a lawsuit in the state, but also the power to enter into valid contracts with other persons or entities.  See Cal. Corps. Code §§ 2105, 2203 and Cal. Rev. and Tax. Code § 23304.1; and see Neogard Corp. v. Malott & Peterson-Grundy, 106 Cal.App.3d 213, 219-220 (1980) (corporation transacting business in California without qualifying to do so risks a number of sanctions, both civil and criminal, including the right to maintain lawsuit).  Contracts formed while a company’s status is invalid (i.e., unqualified or suspended) are voidable at the option of the other party; this means that the contract remains in effect but the other party may cancel it.  White Dragon Prods. v. Performance Guars., 196 Cal. App. 3d 163, 168-169 (1987) (contract entered into when party was not qualified with state is voidable and remains so even after party qualifies in California).

While a foreign company does have the right to defend itself against a lawsuit in California, service of the lawsuit may potentially be accomplished by serving the Secretary of State instead of the company directly, see e.g. Cal. Corps. Code § 17708.07 (limited liability companies only), so the company may lose before it knows it has been sued.  And, in any event, every unqualified foreign entity is deemed to have submitted to California jurisdiction, which may prevent the entity from claiming lack of jurisdiction even after they qualify with the state.

Further, if your company was formed in California, the loss of rights and powers is even more severe than for a company formed in another state.  The lost “corporate powers, rights and privileges” include not only the voidability of contracts formed during suspension and the right to maintain a lawsuit in the state but also the right to defend against one, too.  Damato v. Slevin, 214 Cal. App. 3d 668, 673 (1989).   For example, if a California entity is suspended for failure to pay taxes due to the FTB or failure to file a Statement of Information (for a prolonged period), the corporation may be entirely “disabled from participating in litigation activities” during the suspension.  See Tabarrejo v. Superior Court, 232 Cal. App. 4th 849, 863 (2014), review denied (Apr. 1, 2015).

Little known to most people, including even lawyers, is that it is a misdemeanor (you read that right– a crime) for any person to attempt to exercise “the powers, rights, and privileges of a corporation that has been suspended pursuant to [Cal. Rev. & Tax. Code] Section 23301 or who transacts or attempts to transact … business in this state on behalf of a foreign corporation.”  Cal. Rev. & Tax. Code s. 19719.  Further, an attorney who knowingly represents a suspended corporation and conceals this fact from the court may be subject to sanctions. See Palm Valley Homeowners Ass’n, Inc. v. Design MTC, 85 Cal.App.4th 553, 563 (2000). Fortunately for insurers and their lawyers, the criminal statute does not apply “to any insurer, or to counsel retained by an insurer on behalf of the suspended corporation, who provides a defense for a suspended corporation in a civil action based upon a claim for personal injury, property damage, or economic losses against the suspended corporation,” and the statute does not “create or limit any obligation upon an insurer to defend a suspended corporation.”

What to do if your company is suspended?  A suspended company may regain its rights by undergoing a process known as revivor, and the steps to accomplish this are outlined on the websites of the SOS and FTB.  Any competent business lawyer or accountant should be able to assist you.  After a company is revived by the State, it regains the power to enter into valid contracts and to maintain and defend against lawsuits.  Damato, 214 Cal.App.3d at 674.  But any contract made during the suspension remains voidable by the other party.

To conclude, whether your company was formed in California or elsewhere, if it wants to do business in California, it must maintain a valid status with the Secretary of State and Franchise Tax Board, or you may find that doing business in California can be perilous and costly.  In most cases, obtaining a valid status is not complicated or costly so, if your company is presently not in good standing with the State, it should act promptly to rectify this and maintain a valid status.

As evidenced by the recent hype about the new Instagram smart app icon, companies invest a lot of time and money to develop the look and feel of a smart device application (“app”) in order to promote brand recognition.  OK, so you know that your app is a valuable piece of intellectual property, but what are you doing to protect this asset?  With the market for apps projected to reach $2 trillion by 2020, it is clear that apps will be a primary source or gateway for revenue for most businesses in the 21st Century.  Yet, few companies give due consideration to how they can protect this increasingly valuable IP asset.

To protect the look and feel of your app, trademark law and the somewhat less known law of trade dress may be your answer.  In a recent case that I litigated for a plaintiff in the U.S. District Court for the Northern District of California, the Court upheld my theory that the look of its smart device app icon was a protectable trade dress feature.  The case involved competing “selfie” photo editing apps where my client alleged that the defendants were infringing not only my client’s registered trademark for the app but also the non-functional aesthetic features of the app, including the app icon, which is used to market the app in virtual store fronts like Apple’s App Store and the Google Play Store.

In the complaint, we alleged that (1) our app icon was “so distinctive and essential an element of [our] … trade dress throughout the app that the app icon is additionally, in and of itself, an entirely protectable trade dress standing on its own,” and (2) the defendants were using “a highly similar app icon….”  The defendant moved to dismiss our trade dress claim as being improperly alleged, but the Court denied the motion, finding that our allegations did satisfy the standard of providing “a complete recitation of the concrete elements of [our] alleged trade dress….”  The Court understood that we were basing our trade dress claim, at least in part, on the theory that our app icon stood “on its own” as an independently protectable trade dress feature.  See ArcSoft, Inc. v. CyberLink Corp., No. 15-cv-03707-WHO, 2016 U.S. Dist. LEXIS 28997, at *7 (N.D. Cal. Mar. 7, 2016).*

Although the courts have grappled for years with how to apply trademark law to intangible products and services like software, my research shows that this is the first reported decision by a federal court recognizing that an app icon may, in and of itself, constitute an independently protectable trade dress feature.

Traditionally, trade dress is broadly defined as the total image and appearance – “the look and the feel” – of a product or service which indicates or identifies the source of the product or service and distinguishes it from those of others.  One classic example of trade dress in a tangible form is the original contoured Coca-Cola bottle shape.  Designed in 1916 by a bottle company with the specific intent to distinguish Coca-Cola from imitating competitors, the Coke bottle is now recognized by billions of consumers as a designation of the Coke product brand.

One hundred years later as smart device apps flood the marketplace, the primary if not only aesthetic feature that distinguishes one app from another on the “shelf” of the online store is the app icon.  Businesses invest significant resources to develop the software that enable apps to run, and they also incur great expense on art and graphic design to make apps and icons aesthetically pleasing and distinctive.  Given such extensive capital expenditures, it behooves businesses to protect app trade dress no less than they would protect any other product or service subject to trademark protection.  And as my selfie editing app case proves, trademark law is expanding to accommodate the virtual goods and services of the 21st Century market.  So be smart, and dress your app smartly.

*About the Author:  Isaac Winer is a civil litigator and business lawyer at the Law Office of Isaac H. Winer in Palo Alto, California.  He also serves as Senior Counsel to Intellectual Property Law Group LLP in San Jose, California.

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (the “DTSA”), creating a new federal civil claim for misappropriation of trade secrets and adding measures beyond those available under state law that give trade secret owners more fire power against trade secret theft but which also create more responsibility on employers as well as more protection for workers.

First, the basics.  Until now, only state law provided a civil claim for misappropriation of trade secrets.  And, while all but two states have adopted the model Uniform Trade Secrets Act (“UTSA”) – New York and Massachusetts being the exceptions with their own trade secret laws, aspects of many state laws still vary from state-to-state, making a truly uniform national trade secrets law unavailable until now.  The DTSA creates a new civil claim for misappropriation of trade secrets that can be asserted in federal court by any trade secret owner against anyone “if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.”  DTSA, s.2(b)(1).  Under the DTSA, a trade secret is defined essentially the same as it is defined under state law: any information where (A) “the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the public.”  DTSA, s.4(a)(2) (“trade secret” has same meaning as 18 U.S.C. s. 1839).

Next, the new fire power of the DTSA.  Until now, unless a theft of trade secrets was criminal – a high bar, the only form of immediate relief an owner could obtain was a temporary restraining order (TRO) or other injunction to stop the thief from using or disseminating a trade secret, and potentially requiring a thief to turn over property containing trade secret information.  Now, under the DTSA, a trade secret owner can ask a court – without any notice to the alleged thief (an “ex parte” request) – to order law enforcement to seize property that is “necessary to prevent the propagation or dissemination of the trade secret” that is the subject of the lawsuit.  DTSA, s. 2(b)(2)(A)(i).  Notably, however, such ex parte seizures may only be granted “in extraordinary circumstances” where it appears from “specific facts” that a TRO is inadequate because the party against whom the order is sought would “evade, avoid or otherwise not comply with such an order.”  DTSA, s. 2(b)(2)(A)(ii).  Other limitations make this remedy unlikely in all but the most extreme cases, not only because of the cost of seeking it but the potential penalty of paying actual and punitive damages and attorney’s fees to a party against whom a wrongful or excessive seizure was obtained.

Finally, the underbelly of the DTSA for trade secret owners.  In addition to protecting defendants against unjustified seizures, the DTSA also prohibits injunctions that “prevent a person from entering into an employment relationship” and requires that any conditions placed on such employment “shall be based on evidence of threatened misappropriation and not merely on the information the person knows.”  DTSA, s. 2(b)(3)(A)(i)(1)(I) (emph. added).  Further, the DTSA also protects whistleblowers (e.g., workers who report illegal activities) by providing immunity for disclosing trade secrets to attorneys or government officials and by requiring that employers provide employees with notice of this immunity on pain of losing the right to punitive damages and attorney fees in a lawsuit against an employee for violation of any trade secrets laws.  To clarify, the DTSA defines “employee” to include any person who works “as a contractor or consultant for an employer.”  DTSA, s. 2(b)(4).  Put together, the provisions of the DTSA that protect workers provide a clear message to employers that the DTSA does not only exist for their benefit.

In sum, the DTSA creates a bundle of new tools for trade secret owners to defend against trade secret misappropriation and provides defendants and workers with a bundle of new rights to help ensure the new tools are not abused. Put together, the DTSA is a significant advance in trade secrets law which, if nothing else, will serve to fuel the engine of litigation on both sides of the divide between owners and individuals who create and work with trade secret information.