May 1998 Vol. 4 No. 5 ISSN 1087-6219
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In This Issue

• Domain name claim jumper liable for trademark dilution
• Judicial estoppel ruled no bar to disability discrimination claims
• No independent claim for failure to prevent discriminatory conduct
• A lesson on how to handle the client who wishes to lie at trial
• Federal district court may not review California Supreme Court's decision to deny bar membership
• UPDATES

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Domain name claim jumper liable for trademark dilution

The Ninth Circuit has ruled that registering another's trademark as a domain name, and then trying to exploit it by selling the domain name to the trademark owner constitutes trademark dilution. It also found that the Illinois domain name registrant was subject to personal jurisdiction in California.

Panavision International, L.P. holds registered trademarks to the names “Panavision” and “Panaflex” in connection with movie camera equipment. Its principal place of business is in California. Dennis Toeppen, a resident of Illinois, registered “Panavision” as a domain name with Network Solutions. (To review Network Solutions' policy on reservation of names and resolving dispute, visit its web site here.)

When Panavision asked him to stop using the domain name, Toeppen offered to sell it for $13,000. After Panavision refused the offer, Toeppen registered Panaflex as a domain name. Toeppen had registered over 100 marks that belonged to others, including Delta Airlines, Neiman Marcus, Eddie Bauer and Lufthansa. The Ninth Circuit affirmed summary judgment for Panavision on its federal and state anti-dilution claims.

The federal district court in California had personal jurisdiction over Toeppen. By attempting to exploit his registration of a California company's trademarks, Toeppen engaged in purposeful conduct that had substantial effects in California. Although litigating in California would impose a significant burden on Toeppen, “in this era of fax machines and discount air travel,” the burden was not constitutionally unreasonable.

Federal and state law prohibit commercial use of a well-known trademark that dilutes the quality of the mark. Mere registration of a mark as a domain name may not be commercial. However, Toeppen was in the business of registering domain names to sell them to trademark owners. That was commercial.

Toeppen's conduct also diminished the capacity of Panavision's marks to identify and distinguish Panavision's products. Panavision could set up a web site with an internet address other than www. panavision.com. However, a significant purpose of a domain name is to identify the owner of the associated web site. Potential visitors might have difficulty finding Panavision's web site at an alternate address.

Panavision International, L.P. v. Toeppen, 1998 WL 178553 (9th Cir. Apr. 17, 1998).

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Judicial estoppel ruled no bar to disability discrimination claims

Two recent decisions explain why statements in disability benefits applications did not bar claims for disability discrimination under the Americans with Disabilities Act (ADA) and the Fair Employment and Housing Act (FEHA). The Ninth Circuit and the First District Court of Appeal in San Francisco both ruled that the statements were not sufficiently conclusive.

In the Ninth Circuit case, the Oregon Vocational Rehabilitation Division discharged Leslie Ann Johnson after it deemed unreasonable her doctor's requests for accommodation of her Carpal Tunnel Syndrome. In applications for Social Security benefits and for disability insurance benefits, Johnson stated that her condition prevented her from working. In a letter to the Internal Revenue Service explaining why she had filed her tax return late, Johnson said that she had been unable to work because of her disability. The district court granted summary judgment dismissing her ADA claim based on judicial estoppel. The Ninth Circuit reversed.

The ADA requires a determination of whether the employee can perform the essential functions of her job with reasonable accommodation. Johnson's statements did not rule out the possibility that she could perform her job with reasonable accommodation.

In the state case, Andrew Bell had been diagnosed with HIV. He quit his job at Wells Fargo Bank after Wells Fargo refused to allow him to continue telecommuting one day a week as an accommodation for his disability. In applications for state and federal disability benefits, Bell said that his illness made him disabled, and unable to perform his regular and customary work. The superior court granted summary judgment for Wells Fargo on Bell's FEHA claim.

The Court of Appeal reversed on essentially the same reasoning employed by the Ninth Circuit. The disability benefits determinations did not take account of reasonable accommodations. The Second District Court of Appeal reached the same conclusion in Prilliman v. United Air Lines, Inc., 53 Cal. App. 4th 935 (1997).

For a case in which the court invoked judicial estoppel to defeat a disability claim, see Jackson v. County of Los Angeles, 60 Cal. App. 4th 171 (1997). The case was discussed in the January 1998 issue of Appellate Decisions Noted.

Johnson v. State of Oregon, 1998 WL 181297 (9th Cir. Apr. 20, 1998); Bell v. Wells Fargo Bank, N.A., 1998 WL 163692 (Cal. Ct. App. Apr. 9, 1998).

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No independent claim for failure to prevent discriminatory conduct

The San Diego division of the Fourth District Court of Appeal has ruled that the Fair Employment and Housing Act (FEHA) did not create a separate civil wrong for failure to take all reasonable steps necessary to prevent employment discrimination or harassment. To prevail, a FEHA plaintiff must prove actual discrimination or harassment.

Three Hispanic employees of North County Transit District asserted claims for racial discrimination, harassment and retaliation. The jury did not find any such conduct, but it did award damages for failing to take appropriate steps to prevent unlawful conduct. The Court of Appeal affirmed the trial court's grant of judgment notwithstanding the verdict.

FEHA makes it unlawful for an employer “to fail to take all reasonable steps necessary to prevent discrimination and harassment from occurring.” Cal. Gov't Code § 12940(i). However, an individual employee may not recover for a violation of that section standing alone. Employers are not liable for failure to take steps to prevent unlawful conduct, unless the conduct occurred, and the employer did not prevent it.

Trujillo v. North County Transit Dist., 1998 WL 178726 (Cal. Ct. App. Apr. 17, 1998).

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A lesson on how to handle the client who wishes to lie at trial

The San Diego division of the Fourth District Court of Appeal has explained the procedure to follow when counsel fears that a client may lie on the witness stand. The client should be offered the opportunity to testify by narrative.

Anthony Johnson was on trial for various offenses arising out of a series of sexual assaults. At the conclusion of the prosecution's case in chief, Johnson's counsel told the trial court that he had an ethical conflict with respect to Johnson's wish to testify on his own behalf. The court ruled that Johnson would not be called, and he did not testify. He was convicted, and sentenced to 5 consecutive life terms, plus 440 years. The Court of Appeal reversed.

The trial court's ruling violated Johnson's constitutional right to testify. A criminal defendant has the right to take the stand even over the objections of his trial counsel. Rock v. Arkansas, 483 U.S. 44 (1987); People v. Robles, 2 Cal. 3d 205 (1970).

The Court of Appeal also recognized that ethical rules prohibit an attorney from participating in the presentation of perjured testimony. Model Rules of Professional Conduct Rule 3.3 (1983), California Rules of Professional Conduct Rule 5-200. The court described six possible resolutions of the conflict between the constitutional right to testify and the attorney's ethical duty:

1. Full cooperation. One ethics commentator asserts that defense counsel must sometimes permit the client to commit perjury, and then argue the perjurious evidence to the jury. Monroe Freedman, Professional Responsibility of the Criminal Defense Lawyer: The Three Hardest Questions, 64 Mich. L. Rev. 1469 (1966). No court has adopted Professor Freedman's view.
2. Persuasion. The attorney may eliminate the conflict by persuading the client not to lie. Persuading the client not to lie does not deny a criminal defendant the right to effective assistance of counsel. Nix v. Whiteside, 475 U.S. 157 (1986).
3. Withdrawal from representation. The ethical rules appear to require the attorney to seek permission to withdraw, if the representation would result in a violation of the ethical rules. Model Rule 1.16(a)(1); California Rule 3-700(B)(1). However, the court may well deny the application if it is made in the midst of trial. Even if the court allows withdrawal, the problem will persist.
4. Disclosure. If the lawyer knows that the client has offered false testimony, the ethical rules require “reasonable remedial measures,” which may include disclosure to the court. Model Rule 3.3(a)(4). That compromises the attorney's duty of confidentiality.
5. Narrative approach. Under this approach, the attorney calls the client to the stand, but does not engage in the usual question and answer exchange. Instead, the client testifies in a free narrative manner. The attorney does not rely on any false testimony in closing argument.
6. Keep the client off the stand. This approach violates a criminal defendant's right to testify. It also effectively substitutes defense counsel for the jury as the judge of witness credibility.

The narrative approach is the best accommodation of all the competing interests. Prior California decisions have approved it. People v. Guzman, 45 Cal. 3d 915 (1988).

People v. Johnson, 62 Cal. App. 4th 808 (1998).

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Federal district court may not review California Supreme Court's decision to deny bar membership

The Ninth Circuit has dismissed a lawsuit contending that the State Bar should waive or modify its oath requirement in the case of an applicant who claimed that his religious beliefs prevented him from swearing to support the state and federal constitutions.

The California State Bar denied James Craig's request to waive or modify the standard oath administered to new admittees. The California Supreme Court denied his petition for review. The United States Supreme Court denied certiorari. The district court lacked jurisdiction to entertain his ensuing collateral challenge to the decision. District of Columbia Court of Appeals v. Feldman, 460 U.S. 462 (1983).

Craig v. State Bar of California, 1998 WL 178572 (9th Cir. Apr. 17, 1998).

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UPDATES

Subsequent treatment of decisions reported on in earlier issues:

Application Group, Inc. v. Hunter Group, Inc. (March 1998 issue), petition for review filed (Apr. 6, 1998).

Curran v. Mount Diablo Council of the Boy Scouts of America (April 1998 issue), now reported at 17 Cal. 4th 670 (1998).

De La Rosa v. Scottsdale Memorial Health Sys., Inc. (March 1998 issue), now reported at 136 F.3d 1241 (9th Cir. 1998).

Deteresa v. American Broadcasting Cos. (September 1997 issue), petition for certiorari filed (Feb. 12, 1998).

Fazio v. City and County of San Francisco (November 1997 issue), cert. denied, 1998 WL 73024 (Apr. 20, 1998).

Hashimoto v. Dalton (August 1997 issue), petition for certiorari filed (Dec. 8, 1997).

Jackson v. County of Los Angeles (January 1998 issue), review denied (Mar. 11, 1998).

Kidd v. State of California (April 1998 issue), now reported at 62 Cal. App. 4th 386 (1998).

Lai v. Prudential Ins. Co. of America (April 1998 issue), modified (Apr. 3, 1998), now reported at 62 Cal. App. 4th 220 (1998).

Loth v. Truck-A-Way Corp. (February 1998 issue), review denied (Apr. 15, 1998).

Muller v. Automobile Club of Southern California (March 1998 issue), petition for review filed (Mar. 20, 1998).

Norman-Bloodsaw v. Lawrence Berkeley Laboratory (March 1998 issue), now reported at 135 F.3d 1260 (9th Cir. 1998).

Oona R.-S. v. McCaffrey (September 1997 issue), opinion withdrawn and superseded on denial of rehearing, 1998 WL 196271 (9th Cir. Apr. 24, 1998).

People v. Metters (April 1998 issue), now reported at 61 Cal. App. 4th 1489 (1998), rehearing denied (Mar. 31, 1998), petition for review filed (Apr. 13, 1998).

Quackenbush v. Superior Court (January 1998 issue), review denied (Mar. 25, 1998).

Randall v. Orange County Council, Boy Scouts of America (April 1998 issue), now reported at 17 Cal. 4th 736 (1998), time for grant or denial of rehearing extended to May 13, 1998.

Wooden v. Raveling (March 1998 issue), petition for review filed (Apr. 8, 1998).

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