Copyright & Trademark Law Center: Insights & Analysis: Unfair Competition Law: Brutocao on A Guide to Federal Preemption of Business & Professions Code 17200

Unfair Competition Law

9/9/2009 10:23:34 AM EST

Brutocao on A Guide to Federal Preemption of Business & Professions Code 17200

Partner, Sheldon Mak Rose & Anderson

It has become standard practice in business litigation to include a cause of action for violation of Cal Bus & Prof Code § 17200, known as the Unfair Competition Law (UCL). A common defense argument is that the UCL claim is preempted by federal law. This issue arises frequently and will continue to do so because the preemption issue is complex and yields differing results, thus making it difficult to predict whether a specific 17200 claim will be preempted. In this Analysis, William Brutocao, a partner in the intellectual property firm Sheldon Mak Rose & Anderson in Pasadena, California, analyzes this complex issue. He writes:

(A) Preemption in Relation to Copyright, Patent and Trademark Cases

The starting point is whether Congress has spoken specifically to the issue. For example, Congress established exclusive federal court jurisdiction over patent and copyright claims:

The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases. 28 U.S.C § 1338(a); emphasis added.

By stating that federal jurisdiction is exclusive in patent and copyright cases, but not trademark cases, Congress in effect has provided that state and federal courts have concurrent jurisdiction over trademark cases, and so where patent and copyright claims will be preempted, trademark claims are not.

In Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S.Ct. 971 (1989), the Supreme Court held that state laws that attempt to provide patent-like protection are preempted. The sweep of patent preemption might be even broader. In Holiday Matinee Inc. v. Rambus Inc., 118 Cal.App.4th 1413, 13 Cal.Rptr.3d 766 (2004), plaintiff sued for alleged antitrust and UCL violations with respect to the defendant's alleged conduct in a standard setting body to obtain standards that conformed to defendant's patents. The court held that these claims arise under the patent laws of the United States as to which exclusive jurisdiction is in the federal courts and affirmed the lower court's dismissal on demurrer.

(footnotes omitted)

Access the full version of Brutocao on A Guide to Federal Preemption of Business & Professions Code 17200 with your lexis.com ID. Additional fees may be incurred. (approx. 14 pages)

If you do not have a lexis.com ID, you can purchase the Emerging Issues Analysis content through our lexisONE Research Packages

Create an account or login to post comments.

	Let your voice be heard by joining the community today. Sign up.