Final Project – Brief of 8 Cases
Codie Meehan
Business Law-MGMT 525
Bob Shaver
February 16, 2014
Southwestern College Professional Studies
INGERSOLL-RAND CO. v. McCLENDON, 490 U.S. 133 (U.S. Sup. Ct. 1990)
Statement of Facts: The plaintiff (McClendon) filed a suit against the defendant (IngersollRand Co.) for a wrongful discharge action. The plaintiff argued that the reason for his
termination was the company wanted to avoid contribution to his pension fund. The defendant
argued that the plaintiff’s employment was terminable at will.
Case History: The Texas court granted the defendant summary judgment and the State Court of
Appeals affirmed it siding with the defendant that the employment was terminable at will. On
the plaintiff’s appeal to the Texas Supreme Court the case was reversed and remanded for trail,
holding that public policy required recognition of an exception to the employment at will
doctrine and that the recovery would be permitted in a wrongful discharge action if the plaintiff
could prove that the principle reason for his termination was that the defendant was avoiding
contribution to the plaintiff’s pension fund. In federal cases with similar claims that were
preempted by the Employee Retirement Income Security Act of 1974 (ERISA), the court
reasoned that the plaintiff was seeking damage recovery of future lost wages, mental anguish and
punitive damages not that of lost pension benefits.
Issues: There are two issues presented in this case. The first issue is whether the ERISA
preempts a state common law claim that an employee was unlawfully discharged to prevent his
attainment of benefits under a plan covered by ERISA. The second issue is whether the
provisions of the safeguards established by Congress such as the interference with rights
protected by ERISA and if a certain state action is preempted by federal law is one of
congressional intent.
Holdings: The Court ruled that the requirements of conflict preemption are satisfied in the case
and the Texas Supreme Court cause of action does not provide a remedy for the violation of a
right under the provisions set forth by ERISA.
Reasoning: In making its holdings the court considered the safeguards that Congress had
precluded and that their words were in a broad sense rejecting more limited preemption language
that would have made the clause applicable only to state laws relating to the specific subjects
covered by ERISA and the attempt to distinguish this case was not within ERISA’s purview.
Result: As a result of the court’s holdings, the judgment of the Texas Supreme Court is
reversed.
WAL-MART v. SAMARA BROTHERS, 599 U.S. 205 (U.S. Sup. Ct. 2000)
Statement of Facts: The plaintiff (Samara Brothers) filed suit against the defendant (WalMart) in the original case. The plaintiff argued that defendant had acted against the Trademark
Act of 1946 by infringement of unregistered trade address. The defendant argued that there was
insufficient evidence to support the plaintiff’s claim.
Case History: The United States District Court for the southern district of New York’s jury in
this case found for Samara Brothers. At that time Wal-Mart, renewed a motion for judgment as a
matter of law in which they claimed that there was insufficient evidence to support a conclusion
that the clothing designs would be legally protected as distinctive trade dress for purposes of the
Trademark Act of 1946. The District court denied the motion and awarded Samara relief. The
Second Circuit affirmed the denial of the motion.
Issues: The Lanham Act provides for the registration of trademarks, which it defines to include
“any word, name symbol, or device, or any combination thereof (used or intended to be used) to
identify and distinguish a producer’s goods from those manufactured or sold by others and to
indicate the source of the goods”. Samara Brothers believes their product was distinctive enough
to fall under the Trademark Act of 1946 for which they claim that Wal-Mart has violated. WalMart’s claim is that the duplication of the garments where in color and generic décor such as
hearts, flowers and fruits. The issue in front of the court is whether or not the garments that were
duplicated were too generic to fall under the Trademark Act of 1946.
Holdings: The court ruled that a product design cannot be protected under the act without a
showing of secondary meaning that is not covered under the patent or a copyright of the design.
In that a producer can ordinarily obtain protection for a design that is inherently source
identifying such as the product label but that does not establish a secondary meaning to the
copyright of the product or design.
Reasoning: In making its holdings the court considered what establishes the distinctiveness of
the design. The found that color cannot hold a mark for inherently distinctiveness and the same
in this case for the design of the garments. The reason is that judicial differentiation between
marks that are inherently distinctive and those that have developed secondary meaning have
solid foundation in the statute itself but without the secondary meaning it is not covered under
the Trademark Act of 1946. The producer of a product cannot file secondary meaning on color
or cut of a garment. The fact is that product design and color almost invariably serve a purpose
other than the source of indentifying that particular product.
Result: As a result of the court’s holdings, the judgment of the Second Circuit is reversed and
the case is remanded for further proceedings consistent with the opinion of the U.S. Supreme
Court.
ARTHUR ANDERSON LLP v. UNITED STATES, 544 U.S. 696 (U.S. Sup. Ct. 2005)
Statement of Facts: The petitioner (Arthur Anderson LLP) in this case is claiming jury
instructions failed to convey the requisite consciousness of wrong doing. The respondent
(United States) argues that there was no reversible error.
Case History: Arthur Anderson (an Enron auditor) instructed its employees to destroy
documents pursuant to its document retention policy. The petitioner was indicted for a crime of
knowingly withholding or altering documents for use in an official proceeding. The jury gave a
verdict of guilty at the District Court level and the Fifth Circuit affirmed stating the district
court’s jury instructions properly conveyed the meaning of “corruptly persuades” and “official
proceedings” and that the jury need not find any consciousness of wrongdoing in order to convict
the petitioner. Therefore, there was no reversible error. The petitioner has appealed the decision
of the Fifth Circuit to United States Supreme Court for further review.
Issues: The issue in front of the court is whether the jury instructions failed to convey properly the
elements of a "corrupt persuasion" conviction under U. S. C. §1512(b). The court directed its focus on
what it means to knowingly corruptly persuade another person with intent to withhold documents from
and/or alter documents for use in an official proceeding.
Holdings: The Court ruled that the jury instructions here were flawed in important respects. The
court held that §1503 required something more--specifically, a "nexus" between the obstructive act and
the proceeding. The said that “if the defendant lacks knowledge that his actions are likely to affect the
judicial proceeding, he lacks the requisite intent to obstruct."
Reasoning: In making its holdings the court said the instructions led the jury to believe that it
did not have to find any “nexus” between the persuasion to destroy documents and that a
“knowingly corrupt persuader cannot be someone who persuades others to shred documents
under a document retention policy when he does not have in contemplation any particular official
proceedings in which those documents might be material”.
Result: The judgment of the Court of Appeals has been reversed and the case is remanded for
further proceedings consistent with the opinion of the United States Supreme Court.
NIKE, INC., et al., PETITIONERS v. MARC KASKY, 539 U.S. 654 (U.S. Sup. Ct. 2003)
Statement of Facts: The petitioner (Nike) is arguing that the respondent’s suit was absolutely
barred by the First Amendment. The respondent (Kasky) is that Nike’s message would not be
covered under the First Amendment as the message would fall under commercial speech.
Case History: The respondent filed suit against Nike for unfair and deceptive practices under
California's Unfair Competition Law and False Advertising Law. Respondent claimed that "in
order to maintain and/or increase its sales," Nike made a number of false statements and material
omissions of fact concerning the working conditions under which Nike products are
manufactured and that all though no harm or damages whatsoever regarding himself
individually, but rather brought the suit on behalf of the general public in the State of California.
Nike filed a response contending that Kasky's suit was barred by the First Amendment. The court
sustained the demurrer without leave to amend and entered a judgment of dismissal. Kasky
appealed, and the California Court of Appeal affirmed the trial court’s decision. Kasky then
appealed to the California Supreme Court. His claim was on the commercial nature of the
communications at issue and that while the First Amendment offers protection to commercial
speech that is truthful; it does not protect false or misleading commercial speech. The California
Supreme Court stated that the First Amendment does not bar Kasky's lawsuit that alleges false
advertising and related unfair competition. However, they dismissed the writ of certiorari,
refusing to decide the questions presented.
Issues: The issue presented before the United State Supreme Court is whether the California
Supreme Court's ultimate holding is legally correct and does the First Amendment permit
Kasky's false advertising prosecution to go forward.
Holdings: The court ruled that they would not dismiss as improvidently granted the writ issued
in this case and that all conditions are satisfied so the California Supreme Court's judgment falls
within the scope of the term final. Therefore, no statute prevents them from deciding this case.
Reasoning: The court considered the importance of the First Amendment concerns at stake and
that in the future commercial speakers doing business in California may hesitate to issue
significant communications relevant to public debate because they fear potential lawsuits and
legal liability. In addition it was made apparent by the Kasky that he suffered no personal harm
therefore the court said that false advertising "action brought on behalf of the State, by one who
has suffered no injury, threatens to impose a serious burden upon speech”.
Result: The judge respectfully dissent from the California State Supreme Court’s contrary
determination.
DASTAR CORPORATION v.TWENTIETH CENTURY FOX FILM CORPORATION
et al., 539 U.S. 23, (U.S. Sup.Ct. 2003)
Statement of Facts: The Respondents (Fox) brought action against Dastar regarding the sale of
its campaign video set based on General Dwight D. Eisenhower's World War II book, Crusade in
Europe. They claim that the petitioner (Dastar) had infringed on the copyright to the book and
the exclusive television rights to the book as well as made claims that Dastar did so without
proper credit therefore, violating the §43(a) of the Lanham Act, 15 U. S. C. §1125(a), and in
violation of state unfair-competition law. Dastar holds that they did not violate the Lanham Act.
Case History: The District court found for the respondents on cross-motions for summary
judgment. The court awarded Dastar's profits to respondents and doubled them because of the
violation to §35 of the Lanham Act, 15 U. S. C. §1117(a) and to deter future infringing conduct
by petitioner. The Court of Appeals for the Ninth Circuit affirmed the judgment for respondents
on the Lanham Act claim, but reversed as to the copyright claim and remanded. It concluded that
"Dastar's 'bodily appropriation' of Fox's original television series was sufficient in establishing
the reverse passing off. The court also affirmed the District Court's award under the Lanham
Act of twice Dastar's profits. The U.S. Supreme Court granted certiorari.
Issues: The court has been asked to find whether §43(a) of the Lanham Act, 15 U. S. C.
§1125(a), prevents the unaccredited copying of a work, and if so, whether a court may double a
profit award under §1117(a), in order to deter future infringing conduct.
Holdings: The US Supreme Court ruled that Dastar was the origin of the products it sold as it’s
own, respondents cannot prevail on their Lanham Act claim. Therefore there is no reason to
consider whether the Lanham Act permitted an award of double petitioner's profits.
Reasoning: The respondents' claim that Dastar has made a "false designation of origin, false or
misleading description of fact, or false or misleading representation of fact, which is likely to
cause confusion as to the origin of the goods. The considered that the claim would undoubtedly
be sustained if Dastar had bought some of New Line's Crusade videotapes and only repackaged
them to sell as their own product. The court believes that Dastar's alleged wrongdoing, however,
is vastly different: it took a creative work, copied it, made some minor modifications, and
produced its very own series of videotapes. If "origin" refers only to the manufacturer or
producer of the physical "goods" that are made available to the public (in this case the
videotapes), Dastar was the origin of the product.
Result: The judgment of the Court of Appeals for the Ninth Circuit was reversed, and the case
is remanded for further proceedings consistent with this U.S. Supreme Court’s opinion.
L A CHANCE, ACTING DIRECTOR, OFFICE OF PER- SONNEL MANAGEMENT v.
ERICKSON ET AL, 522 U.S. 262 (U.S. Sup. Ct. 1998)
Statement of Facts: Respondents are federal employees that were under adverse actions by
their agencies, each made false statements to agency investigators with respect to the misconduct
with which they were charged. In each case, the agency additionally charged the false statement
as a ground for adverse action, and the action taken against the employee was based in part on
the added charge.
Case History: Brought before the Merit Systems Protection Board they upheld the portion of
each penalty that was based on the underlying charge. However, they overturned the false
statement portion, ruling, inter alia, that the claimed statement could not be considered in setting
the appropriate punishment. In separate appeals by the respondents, the Federal Circuit agreed
with the Merit Systems Protection Board that there would be no penalty based on a false denial
of the underlying claim.
Issues: The question presented by this case is whether either the Due Process Clause or the Civil
Service Reform Act (CSRA) precludes a federal agency from sanctioning an employee for
making false statements to the agency regarding alleged employment related misconduct on the
part of the employee.
Holdings: The court held that a government agency may take adverse action against an
employee because in response to an underlying charge of misconduct the employee made false
statements.
Reasoning: The Court of Appeals based part of its decision on the fact that the respondents
were not under oath at the time they made their statements. It is because the respondents were
not under oath that they were not charged with perjury, however, that was not what the
respondents were charged with making it a mute point. They were however, charged with
making false statements during the course of an agency investigation that does not require
statements to be made under oath. The Court of Appeals failed to see how the presence or
absence of an oath is material to the due process inquiry.
Result: The judgments of the Court of Appeals were therefore reversed by the U.S. Supreme
Court.
MARKMAN v. WESTVIEW INSTRUMENTS, INC., 517 U.S. 370 (U.S. Sup. Ct. 1996)
Statement of Facts: The petitioner (Markman) filed action against Westview Instruments on
the grounds that the respondent violated the patent that they had on a product that can maintain
an inventory total and detect and localize spurious additions to inventory. Westview Instruments,
Inc. claims that their product while similar does not track inventory.
Case History: Petitioner (Markman) is the owner of the patent to a system that tracks clothing
through the dry-cleaning process using a keyboard and data processor to generate transaction
records that includes a bar code readable by optical detectors. In this suit, after hearing an expert
witness testify about the meaning of the claim's language, the jury found that Westview's product
had infringed Markman's patent. Notwithstanding, the District Court directed a verdict for
Westview on the ground that its device is unable to track inventory as that term is used in the
claim of the petitioner. The Court of Appeals affirmed the decision of the District Court stating
that the interpretation of claim terms to be the exclusive province of the court and that the
Seventh Amendment is consistent with that conclusion.
Issues: The question here is whether the interpretation of a so-called patent claim, the portion of
the patent document that defines the scope of the patentee's rights, is a matter of law reserved
entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine
the meaning of any disputed term of art about which expert testimony is offered.
Holdings: The court held that the construction of a patent, including terms of art within its
claim, is entirely within the province of the court.
Reasoning: The court decided that the interpretation of the word inventory in this case is an
issue for the judge, not the jury. The thought process of the court was that uniformity would be
ill served by submitting issues of document construction to juries; leaving evidentiary questions
of meaning wide open in every new court in which a patent might be litigated, for principles of
issue preclusion would ordinarily foster uniformity.
Result: As a result of the court's holdings, the court affirmed the decision of the Court of
Appeals for the Federal Circuit.
SEMTEK INTERNATIONAL INC. v. LOCKHEED MARTIN CORP.,531 U.S. 497 (U.S.
Sup. Ct. 2001).
Statement of Facts: Petitioner (Semtek) filed a complaint against respondent (Lockheed)
alleging breach of contract and various business torts. The respondent claims the suit is barred
due to statute of limitations.
Case History: The case was first filed by the petitioner in the California State Court.
Respondent removed the case to the United States District Court for the Central District of
California on the basis of diversity of citizenship and successfully moved to dismiss petitioner's
claims as barred by California's 2-year statute of limitations. The District Court found in favor
of the respondent and dismissed petitioner's claims in their entirety on the merits and with
prejudice. The petitioner appealed to the Court of Appeals for the Ninth Circuit at which the
court affirmed the District Court's order. Petitioner also brought suit against respondent in the
State Circuit Court for Baltimore City, Maryland, alleging the same causes of action, which were
not time barred under Maryland's 3-year statute of limitations. Respondent sought injunctive
relief against this action from the California federal court, and removed the action to the United
States District Court for the District of Maryland on federal-question grounds. The California
federal court denied the relief requested, and the Maryland federal court remanded the case to
state court because the federal question arose only by way of defense. The Maryland state court
granted respondent's motion to dismiss. Petitioner returned to the California federal court and the
Ninth Circuit, and was not able to move both courts to amend the order so as to indicate that the
dismissal was not on the merits. Petitioner also appealed the Maryland trial court's order of
dismissal to the Maryland Court of Special Appeals. The Court of Special Appeals affirmed
holding that regardless of whether California would have accorded claim-preclusive effect to a
statute-of-limitations dismissal by one of its own courts, the dismissal by the California federal
court barred the complaint filed in Maryland. After the Maryland Court of Appeals declined to
review the case, the U.S. Supreme Court granted certiorari.
Issues: This case presents the question whether the claim-preclusive effect of a federal
judgment dismissing a diversity action on statute-of-limitations grounds is determined by the law
of the State in which the federal court sits.
Holdings: The court held that the claim-preclusive effect of the California federal court's
dismissal "upon the merits" of petitioner's action on statute-of-limitations grounds is governed by
a federal rule that in turn incorporates California's law of claim, the Maryland Court of Special
Appeals erred in holding that the dismissal necessarily precluded the bringing of this action in
the Maryland courts.
Reasoning: In making its holdings, the court considered the dismissal of this state cause of
action was decreed by the California federal court only because the California statute of
limitations so required; and there was no conceivable federal interest in giving that time bar more
effect in other courts than the California courts themselves would impose.
Result: The judgment is reversed, and the case remanded for further proceedings not
inconsistent with this opinion of the U.S. Supreme Court.