PART ONE

“SLAPP” is a sociological acronym for Strategic Lawsuit Against Public Participation and encompasses any lawsuit filed to burden or punish the exercise of one’s right to free speech or petition in connection with a public issue.  The legislative response was the “anti-SLAPP” statute codified at Code of Civil Procedure (“C.C.P.”) § 425.16.  A lawsuit that meets the statutory definition of a SLAPP suit after an “anti-SLAPP motion” (or “special motion to strike”) is filed is subject to early dismissal and the mandatory payment of the moving defendant’s attorney’s fees and costs.

Thankfully, the Legislature has provided an express declaration of legislative intent in C.C.P. § 425.16(a) as follows:

The Legislature finds and declares that there has been a disturbing increase in lawsuits brought primarily to chill the valid exercise of the constitutional rights of freedom of speech and petition for the redress of grievances. The Legislature finds and declares that it is in the public interest to encourage continued participation in matters of public significance, and that this participation should not be chilled through abuse of the judicial process. To this end, this section shall be construed broadly. (Emphasis added—italicized portion added in 1997: Briggs v. Eden Council for Hope & Opportunity (1999) 19 Cal.4th 1106, 1119-1121 (“Briggs”))

The typical SLAPP suit involves citizens opposed to a particular real estate development. The group opposed to the project, usually a local neighborhood, protests by distributing flyers, writing letters to local newspapers, and speaking at planning commission or city council meetings. The developer responds by filing a SLAPP suit against the citizen group alleging defamation or various business torts.  (Dixon v. Superior Court (1994) 30 Cal. App. 4th 733, 741; see also, for example, Sierra Club v. Butz (1972) 349 F.Supp. 934)

But the anti-SLAPP statute’s application has strayed far from its original moorings, and has ebbed and flowed over time, first appearing to have virtually unlimited potential for expansion before limits were placed on it by judicial decision and legislative fiat.  Notably, the California Supreme Court has determined that acts “illegal as a matter of law” do not trigger anti-SLAPP scrutiny because the same are not a “valid” exercise of one’s constitutional rights.  (Flatley v. Mauro (2006) 39 Cal.4th 299 (“Flatley”) [Extortionate attorney demand letter not subject to anti-SLAPP because illegal as a matter of law.])  In so doing, the Flatley court rejected the prevailing understanding (articulated by our high court in Briggs) that the anti-SLAPP statute and litigation privilege of Civil Code § 47(b) were coextensive given the parallels between Civil Code § 47(b) and C.C.P. § 425.16(e)(1) and (2).  A further reflection of this distinction is that the anti-SLAPP statute does not apply to arbitration proceedings even though those proceedings are privileged under Civil Code § 47(b).  (Compare Century 21 Chamberlain & Associates v. Haberman (2009) 173 Cal. App. 4th 1, 5 with Moore v. Conliffe (1994) 7 Cal.4th 634, 658)  The Legislature has also curtailed application of the anti-SLAPP statute in circumstances involving, most significantly, commercial speech by enacting C.C.P. § 425.17 which has been recently construed by the California Supreme Court in Simpson Strong-Tie Co., Inc. v. Gore (2010) 49 Cal.4^th 12.

The anti-SLAPP statute has important procedural and substantive requirements and considerations.

Procedural Matters

An anti-SLAPP motion has to be brought (filed) within 60 days of service of the complaint (unless leave is granted to file a late motion).  (C.C.P. § 425.16(f))

An anti-SLAPP motion has to be set for a hearing 30 days after it is served unless the docket conditions of the court require a later hearing.  (C.C.P. § 425.16(f))

Discovery is stayed pending resolution of the anti-SLAPP motion unless the plaintiff files a motion and demonstrates good cause for specified discovery.  (C.C.P. § 425.16(g); Lafayette Morehouse, Inc. v. Chronicle Publishing Co. (1995) 37 Cal. App. 4th 855, 867)

Generally, there is no amending the complaint after anti-SLAPP motion filed (Simmons v. Allstate Ins. Co. (2001) 92 Cal.App.4th 1068, 1073-1074; Sylmar Air Conditioning v. Pueblo Contracting Services, Inc. (2004) 122 Cal.App.4th 1049, 1055; Navellier v. Sletten (2003) 106 Cal.App.4th 763, 773; Salma v. Capon (2008) 161 Cal.App.4th 1275, 1295)

An order granting or denying an anti-SLAPP motion is immediately appealable (C.C.P. §§ 425.16(i) & 904.1(a)(13); see also White v. Lieberman (2002) 103 Cal.App.4th 210, 220) and there is an implied stay in the trial court for appellate purposes if the motion is denied (Roberts v. Los Angeles Co. Bar Assn. (2003) 105 Cal.App.4^th 604, 613).  On appeal from the anti-SLAPP motion the underlying action is automatically stayed and any acts taken in violation of the stay are void (Varian Medical Systems, Inc. v. Delfino (2005) 35 Cal.4th 180, 186, 198).

Substantive Requirements

The anti-SLAPP statute protects any “person” (defendant) sued for acts in furtherance of free speech or petition activities, including natural persons and corporations, nonprofits, government bodies and officials, and ever attorneys in litigation (at least sometimes).

The basic mechanism is the following two step process:  (1) (threshold prong) defendant must make a prima facie showing that the act which is the subject of plaintiff’s cause of action was an act in furtherance of the right to free speech or petition which, if met, (2) (merits prong) shifts the burden to plaintiff to demonstrate probability of prevailing on the claim.  Only causes of action that satisfy both prongs are SLAPPs.  (Navellier v. Sletten (2002) 29 Cal.4th 82, 89 (“Navellier”))

“Arising from” (Threshold Prong)

General Observations & Rules.  “In the anti‑SLAPP context, the critical consideration is whether the cause of action is based on the defendant’s protected free speech or petitioning activity.”  (Navellier, supra, 29 Cal.4th 82, 89)  “Arising from” does not mean “triggered by” nor “in response to” defendant’s speech or petitioning activities.  (City of Cotati v. Cashman (2002) 29 Cal.4th 69, 77-80 (“Cotati”) [No reference to nor declarations showing City’s lawsuit arose from park owner’s federal lawsuit over legality of mobile home park ordinance)  In other words, just because a lawsuit is filed after protected activity took place does not necessarily entail that it arises from protected activity.  The classic example of this is the filing of a cross-complaint based on the same transaction or occurrence as the plaintiff’s complaint.  (Kajima Engineering & Construction, Inc. v. City of Los Angeles (2002) 95 Cal.App.4th 921, 933-934 [Cross-complaint by municipality against contractor for unfair bidding practices not a SLAPP suit])  There is also a distinction between the evidence which can be used to prove a claim and a claim that is “based on” the exercise of speech or petition.  (See, e.g., Gallimore v. State Farm Fire & Casualty Ins. Co. (2002) 102 Cal.App.4th 1388, 1399 [Communications with insurance regulators just evidence of unfair insurance practices.])

Importantly, the anti-SLAPP statute was promulgated because standard pleading based motions were inadequate in combating SLAPP suits.  (Wilcox v. Superior Court (1994) 27 Cal.App.4th 809, 821 (“Wilcox”) disapproved on other grounds by Equilon Enterprises v. Consumer Cause, Inc. (2002) 29 Cal.4th 53, 68, fn. 5 (“Equilon”))  The statute recognizes that a plaintiff’s complaint is not trustworthy indicia of the complaint’s bona fides and thus as a procedural screening mechanism the statute looks through the pleadings as supplemented by affidavits to the actual substance of the claim.  (C.C.P. § 425.16(b)(2); Salma v. Capon (2008) 161 Cal.App.4th 1275, 1286; Stewart v. Rolling Stone LLC (2010) 181 Cal.App.4th 664, 679)  Courts are therefore permitted to disregard the plaintiff’s labeling of the claim (Ramona Unified School Dist. v. Tsiknas (2005) 135 Cal.App.4th 510, 522) and even “read between the lines”  (Philipson & Simon v. Gulsvig (2007) 154 Cal.App.4th 347, 360 [Sanitized amended complaint removing protected acts]).

A defendant does not have to show in the first step that their act was constitutionally protected as a matter of law since to do so would render the second step superfluous.  (Fox Searchlight Pictures, Inc. v. Paladino (2001) 89 Cal.App.4th 294, 305)  The anti-SLAPP statute applies to ongoing as well as concluded acts of speech or petition and it applies regardless of the relative economic strength, financial motivations, or resources of the parties.  (Chavez v. Mendoza (2001) 94 Cal.App.4th 1083, 1090)  Doubts are resolved in favor of applying the anti-SLAPP statute.  (C.C.P. § 425.16(a) [“construed broadly”]; Briggs, supra, 19 Cal.4th 1106, 1119)

C.C.P. § 425.16(e).  C.C.P. § 425.16(e) defines the phrase “act in furtherance of” protected rights from C.C.P. § 425.16 (b)(1).  Accordingly, a defendant meets their threshold burden by showing that an act complained of by the plaintiff fits within one of or the four categories of C.C.P. § 425.16(e), including (e)(1) statements or writings “before” official proceedings, (e)(2) statements or writings “in connection with” an issue being considered or reviewed in an official proceeding, (e)(3) statements or writings in a “public forum” ” in connection with a public issue, or (e)(4) any “other conduct in furtherance of” the exercise of protected rights in connection with a public issue.

Significantly, Briggs held that statements and writings made before or in connection with issues being considered by any official proceeding have public significance per se and therefore a “bright-line” test applies under C.C.P. § 425.16(e)(1) and (2).  (Briggs, supra, 19 Cal.4th 1106, 1122)  It is the context that counts in such cases.  (Id. at 1116)  Even private activities regarding a public issue are within the scope of the anti-SLAPP statute.  (Averill v. Superior Court (Eli Home, Inc.) (1996) 42 Cal.App.4th 1170, 1174-1175 [Anti-SLAPP statute implicated by private discussions about battered women’s shelter.])  In contrast, C.C.P. § 425.16(e)(3) and (4) do carry express “public issue” limitations.  (Briggs, supra, 19 Cal.4th 1106, 1123)

C.C.P. § 425.16(e)(1) & (2)

Principle of Congruence.  There is a principal of congruence between C.C.P. § 425.16(e)(1) and (2) and Civil Code § 47(b).  As stated in Briggs, “[j]ust as communications preparatory to or in anticipation of the bringing of an action or other official proceeding are within the protection of the litigation privilege of Civil Code section 47, subdivision (b) [citation], …such statements are equally entitled to the benefits of section 425.16.” (Briggs, supra, 19 Cal.4th 1106, 1115; see also Equilon, supra, 29 Cal.4th 53, 64-65)

As alluded to above, however, the two statutes are not coextensive.  (Flatley, supra, 39 Cal.4th 299, 322-323)  Notably, it has been observed that the anti-SLAPP statute is simply a procedural screening mechanism whereas the Civil Code § 47(b) privilege is a rule of substantive law.  (Jarrow Furmulas, Inc. v. LaMarche (2003) 31 Cal.4th 728, 737)  In light of this, the anti-SLAPP statute applies to conduct not just publications (Ludwig v. Superior Court (1995) 37 Cal.App.4th 8, 19) and also applies to malicious prosecution claims (Jarrow Formulas, Inc. v. Lamarche (2003) 31 Cal.4th 728) whereas the privilege does not, but the privilege can apply to matters “illegal as a matter of law,” e.g., fraud or perjury (Pettitt v. Levy (1972) 28 Cal.App.3d 484, 489), when the anti-SLAPP statute does not (Flatley).  As one appellate decision has explained, “The statutory privilege for communications in judicial proceedings is not automatically converted to a constitutionally based protection such as that provided in section 425.16.”  (Robles v. Chalil-Poyil (2010) 181 Cal.App.4th 566, 581-582)  Nevertheless, Civil Code § 47(b) has been used as an aide in construing the “arising from” prong under the anti-SLAPP statute.  (Flatley, supra, 39 Cal.4th 299, 322-323; Navellier v. Sletten (2003) 106 Cal.App.4th 763, 770 [privilege “informs interpretation” of arising from prong])

Official Proceeding Examples.  Executive (ComputerXpress, Inc. v. Jackson (2001) 93 Cal.App.4th 993, 1008 [SEC investigation]; Briggs, supra, 19 Cal.4th 1106, 1114 [HUD]); Legislative (1-800 Contacts, Inc. v. Steinberg (2003) 107 Cal.App.4th 568, 583 [Lobbying activities]); Judicial (Dowling v. Zimmerman (2001) 85 Cal.App.4th 1400, 1420 [Unlawful detainer case]); and Other Official Proceeding (Kibler v. Northern Inyo County Local Hosp. Dist. (2006) 39 Cal.4th 192 [Medical Peer Review]; (Vergos v. McNeal (2007) 146 Cal.App.4th 1387, 1396 [Grievance procedures set up by the Regents of California])

“Before” & “In Connection With” Examples

Before: Filing a complaint.  (Chavez v. Mendoza (2001) 94 Cal.App.4th 1083, 1087 [Malicious prosecution case])

In Connection With: A statement is “in connection with” litigation if it relates to the substantive issues in the litigation and is directed to persons having some interest in the litigation.  (Neville v. Chudacoff (2008) 160 Cal.App.4^th 1255, 1266)  That an action is ultimately filed can show a connection to litigation.  (Digerati Holdings, LLC v. Young Money Entertainment, LLC (2011) 194 Cal.App.4th 873, 888; cf. Sylmar Air Conditioning v. Pueblo Contracting Services, Inc. (2004) 122 Cal.App.4th 1049, 1059 [In context of litigation privilege analysis])  This includes:

Investigations or communications preparatory to a lawsuit.  (Briggs, supra, 19 Cal.4th 1106, 1115; Neville v. Chudacoff (2008) 1255 Cal.App.4th 1255; Rhode v. Wolfe (2007) 154 Cal.App.4th 28; Sylmar Air Conditioning v. Pueblo Contracting Services, Inc. (2004) 122 Cal.App.4th 1049; Dove Audio, Inc. v. Rosenfeld, Meyer & Susman (1996) 47 Cal.App.4th 777; Kashian v. Harriman (2002) 98 Cal.App.4th 892; Contemporary Services Corporation v. Staff Pro Inc. (2007) 152 Cal.App.4th 1043 [litigation update])

Settlement negotiations in the course of a lawsuit.  (GeneThera, Inc. v. Troy & Gould Professional Corp. (2009) 171 Cal.App.4th 901; Selzer v. Barnes (2010) 182 Cal.App.4th 953; Navellier, supra, 29 Cal.4th 82, 90; Applied Business Software, Inc. v. Pacific Mortgage Exchange (2008) 164 Cal.App.4th 1108, 1118 [Entering into settlement agreement protected activity]; Navarro v. IHOP Properties, Inc. (2005) 134 Cal.App.4th 834, 841-842 [Fraudulent promises in exchange for stipulation of judgment in UD case]; Dowling v. Zimmerman (2001) 85 Cal.App.4th 1400, 1418-1420 [Misrepresentation in negotiating settlement in UD case])

Comments to third parties on a judicial proceeding. A number of cases have held that statements about litigation to third parties are sufficiently connected to a judicial proceeding for the anti-SLAPP statute to apply.  (Haight Ashbury Free Clinics, Inc. v. Happening House Ventures (2010) 184 Cal.App.4th 1539, 1549 [Alleged misrepresentation as to facts surrounding partnership court cases in letter to newspaper]; Contemporary Services Corp. v. Staff Pro Inc. (2007) 152 Cal.App.4th 1043, 1055 [Litigation update to clients who were witnesses]; Healy v. Tuscany Hills Landscape & Recreation Corp. (2006) 137 Cal.App.4th 1, 5-6 [Attorney letter to members of homeowners association about pending litigation involving association]; Wilcox, supra, 27 Cal. App. 4th 809, 821-822 [Statements to nonparties soliciting contributions to litigation fund])

PART TWO

C.C.P. § 425.16(e)(3) & (4)

C.C.P. § 425.16(e)(3) “Public Issue” & “Public Forum” Examples:

Public Issues.  While an all encompassing definition has proved elusive, a “public issue” is one that (1) concerns a person or entity in the public eye, (2) affects a large number of people, or (3) involves a topic of widespread public interest.  (Rivero v. American Federation of State, County, and Municipal Employees, AFL-CIO (2003) 105 Cal.App.4th 913, 924)  Public Issue examples include: Sipple v. Foundation for National Progress (1999) 71 Cal.App.4^th 266, 239 [Domestic violence pertaining to nationally known figure political consultant]; Damon v. Ocean Hills Journalism Club (2000) 85 Cal.App.4th 468 [Articles in newsletters about HOA governance a public issue]; Rivero v. American Federation of State, County, and Municipal Employees, AFL-CIO (2003) 105 Cal.App.4th 913, 919 [Private workplace dispute not a public issue]; Seelig v. Infinity Broadcasting Corp. (2002) 97 Cal.App.4th 798 [Empty chair interview with “Who Wants to Marry a Millionaire” contestant a public issue]; Weinberg v. Feisel (2003) 110 Cal.App.4th 1122, 1126-1127 [Accusation of criminal conduct in trade journal not a public issue]; Church of Scientology v. Wollersheim (1996) 42 Cal.App.4th 628, 656 (“Wollersheim”) [products liability suits, real estate and investment scams, etc., are public issues] disapproved on other grounds by Equilon, supra, 29 Cal.4th 53, 68, fn. 5; Cooper v. Cross (2011) 197 Cal.App.4th 357, 378 [Close proximity of registered sex offender under Megan’s Law an issue of widespread public interest].)

Public Fora.  Public Fora examples include: Annette F. v. Sharon S. (2004) 119 Cal.App.4th 1146 [Letter in newspaper a public forum]; ComputerXpress, Inc. v. Jackson (2001) 93 Cal.App.4th 993, 1008 [Internet websites a public forum]; Kronemyer v. Internet Movie Database Inc. (2007) 150 Cal.App.4th 941, 950 [Movie credit website a public forum]; Cabrera v. Alam (2011) 197 Cal.App.4th 1077, 1088 [Homeowners association meeting]

C.C.P. § 425.16(e)(4) “Other Conduct” Examples:

Jarrow Formulas, Inc. v. Lamarche (2003) 31 Cal.4th 728, 734 [Conduct in connection with judicial proceeding]; Lieberman v. KCOP Television, Inc. (2003) 110 Cal.App.4th 156, 165-166 [Newsgathering is conduct in furtherance of First Amendment rights]; Integrated Healthcare Holdings v. Fitzgibbons (2006) 140 Cal.App.4th 515, 523 [E-mail opposing acquisition of hospitals and questioning financial condition fell within C.C.P. § 425.16(e)(4)]; Carver v. Bonds (2005) 135 Cal.App.4th 328, 342-343 [News reporting]; Stewart v. Rolling Stone LLC (2010) 181 Cal.App.4th 664, 678 [Feature article on Indie Rock Bands editorially placed with cigarette ad represented speech made in connection with issue of public interest]

Causes of Action/Claims Covered:

“The anti-SLAPP statute’s definitional focus is not the form of the plaintiff’s cause of action, but, rather, the defendant’s activity that gives rise to his or her asserted liability…”  (Navellier, supra, 29 Cal.4th 82, 92)  As such, it can apply to claims for:

Defamation (Wilcox, supra, 27 Cal. App. 4th 809, 816; Dowling v. Zimmerman (2001) 85 Cal.App.4th 1400, 1421);

Interference Torts (Wilcox, supra, 27 Cal. App. 4th 809, 816; Tuchscher Development Enterprises, Inc. v. San Diego Unified Port Dist. (2003) 106 Cal.App.4th 1219, 1239-1243);

Emotional Distress (Wilcox, supra, 27 Cal. App. 4th 809, 816; Kemps v. Beshwate (2009) 180 Cal.App.4th 1012, 1016);

Breach of Contract (Navellier, supra, 29 Cal.4th 82, 90-93);

Fraud (Navellier, supra, 29 Cal.4th 82, 90-93);

Invasion of Privacy (Taus v. Loftus (2008) 40 Cal.4th 683; Seelig v. Infinity Broadcasting Corp. (2002) 97 Cal.App.4th 798; Gates v. Discovery Communications, Inc. (2004) 34 Cal.4th 679, 696);

Commercial misappropriation of name or likeness (common law right of publicity or under Civil Code § 3344) (Stewart v. Rolling Stone LLC (2010) 181 Cal.App.4th 664, 679-680);

Attorney Malpractice & Breach of Fiduciary Duty (Peregrine Funding, Inc. v. Sheppard Mullin Richter & Hampton LLP (2005) 133 Cal.App.4th 658 (“Peregrine”); but see PediWave Corporation v. Simpson, Thacher & Bartlett (2009) 179 Cal.App.4th 1204);

Unfair business practices and violations of the Unruh Civil Rights Act (Shekhter v. Financial Indemnity Co. (2001) 89 Cal.App.4th 141, 150);

Malicious Prosecution (Jarrow Formulas, Inc. v. LaMarche (2003) 31 Cal.4th 728, 741; Zamos v. Stroud (2004) 32 Cal.4th 958, 965; Chavez v. Mendoza (2001) 94 Cal.App.4th 1083);

Abuse of Process (Rusheen v. Cohen (2006) 37 Cal.4^th 1048; Kemps v. Beshwate (2009) 180 Cal.App.4th 1012, 1016; compare Booker v. Rountree (2007) 155 Cal.App.4th 1366 [Abuse of process claim stated against cross-defendant who withheld service of suit on another claim until after an identical claim was settled against cross-complainant]);

Unlawful Detainer Notices (Action Apartment Assocation, Inc. v. City of Santa Monica (2007) 41 Cal.4th 1232; 1100 Park Lane Associates v. Feldman (2008) 160 Cal.App.4^th 1467; Birkner v. Lam (2007) 156 Cal.App.4th 275, 282; but see Department of Fair Employment & Housing v. 1105 Alta Loma Road Apartments, LLC (2007) 154 Cal.App.4th 1273 [Failure to accommodate disabled tenant subject to eviction not within anti-SLAPP statue]);

Filing a Motion for Writ of Sale, Assessment Liens, or Mechanics Liens (O’Keefe v. Kompa (2000) 84 Cal.App.4th 130, 135-135 [Civil Code § 47(b) case]);

Claims for Declaratory-Injunctive Relief (Equilon, supra, 29 Cal.4th 53, 67);

Petition for Harassment Restraining Orders under C.C.P. § 526.7 (Thomas v. Quintero (2005) 126 Cal.App.4th 635, 647-649); and

Writ of Mandate (San Ramon Valley Fire Protection Dist. v. Contra Costa County Employees’ Retirement Assn. (2004) 125 Cal.App.4th 343, 353)

“Mixed” Causes of Action.  The anti-SLAPP statute applies to so-called “mixed” causes of action, i.e., causes of action that allege both protected and unprotected acts by defendant.  (Fox Searchlight Pictures, Inc. v. Paladino (2001) 89 Cal.App.4th 294, 308; Peregrine, supra, 133 Cal.App.4th 658, 672; Mann v. Quality Old Time Service, Inc. (2004) 120 Cal. App. 4th 90, 103)  Some cases have devised a “gravamen” test to determine if a claim qualifies for protection under the anti-SLAPP statute.  (Scott v. Metabolife Internat., Inc. (2004) 115 Cal.App.4th 404, 416; Brenton v. Metabolife Internat., Inc. (2004) 116 Cal App 4th 679; Martinez v. Metabolife Internat., Inc. (2003) 113 Cal.App.4th 181, 188)  These cases hold that collateral allusions to speech or petition in a claim based essentially on nonprotected activities do not subject that claim to the anti-SLAPP statute.  But, as Peregrine notes, this test did not even originate in a mixed cause of action case (Cotati).  (Peregrine Funding, supra, 133 Cal.App.4th 658, 672–673 & fn. 9)

The California Supreme Court has nevertheless endorsed the “gravamen” test to broaden the anti-SLAPP statute.  (Club Members for an Honest Election v. Sierra Club (2008) 45 Cal.4th 309, 319)  An illustration of the gravamen test as presently refined is Haight Ashbury Free Clinics, Inc. v. Happening House Ventures (2010) 184 Cal.App.4th 1539, 1542, where the court held that claims are not “merely incidental” to a cause of action simply because they represent a relatively small number of many alleged wrongful acts.  In Haight Ashbury, the appellate court comments that:

For the reasons we discussed ante, the mere fact that there are numerically far fewer allegations of protected wrongdoing than there are allegations of nonprotected wrongdoing does not mean that the allegations of protected activity are merely incidental to either the causes of action or the nonprotected activity. To the contrary, they are still acts for which [plaintiff] asserts liability and seeks damages. The inclusion of those allegations, which provide an independent basis for liability, compels further scrutiny into their merit in the second prong of the SLAPP analysis in order to uphold the purposes of the SLAPP statute.  (Id. at 1553)

“Probability” (Merits Prong)

When the burden shifts, a plaintiff must state and substantiate a legally sufficient claim.  (Wilson v. Parker, Covert & Chidester (2002) 28 Cal.4th 811, 821)  The burden is to show “minimal merit.”  (Navellier, supra, 29 Cal.4th 82, 94)  The anti-SLAPP motion “pierces the pleadings” and requires and evidentiary showing.  (Simmons v. Allstate Ins. Co. (2001) 92 Cal.App.4th 1068, 1073)  Thus, the plaintiff cannot rely on their pleading even if verified and must produce competent, admissible evidence to support the claims pled.  (Wollersheim, supra, 42 Cal.App.4th 628, 656; but see Salma v. Capon (2008) 161 Cal. App. 4th 1275, 1289-1290)  The court does not weigh the evidence but just determines if, as a matter of law, the defendant’s evidence supporting the motion defeats the plaintiff’s attempt to establish evidentiary support for the claim. (Wilson v. Parker, Covert & Chidester (2002) 28 Cal.4th 811, 821)  This is similar to a determination on summary judgment, nonsuit, or directed verdict.  (Kyle v. Carmon (1999) 71 Cal.App.4th 901, 907)  In fact, the court accepts as true the evidence favorable to the plaintiff when it evaluates whether defendant’s evidence defeats plaintiff’s as a matter of law.  (Flatley, supra, 39 Cal.4th 299, 326)

Since the standard is competent, admissible evidence, hearsay (Evans v. Uknow (1995) 38 Cal.App.4th 1490, 1497) or otherwise objectionable evidence is not admissible (at least when objected to).  (Wilcox, supra, 27 Cal. App. 4th 809, 830; Gallagher v. Connell (2004) 123 Cal.App.4th 1260, 1268)  “Thus, declarations that lack foundation or personal knowledge, or that are argumentative, speculative, impermissible opinion, hearsay, or conclusory are to be disregarded.” (Gilbert v. Sykes (2007) 147 Cal.App.4th 13, 26)  If there is a higher burden of proof for the subject cause of action then a plaintiff must meet this higher burden.  (Christian Research Institute v. Alnor (2007) 148 Cal.App.4th 71, 76 & 81 [Public figure plaintiff failed to show “actual malice” by clear and convincing evidence])

Affirmative defenses are considered.  (Traditional Cats Assn., Inc. v. Gilbreath (2004) 118 Cal App 4th 392, 398-399)  However, a defendant that advances an affirmative defense to the plaintiff’s claims bears the burden of proof on the defense.  (Seltzer v. Barnes (2010) 182 Cal. App. 4th 953, 969)  Common defenses include:

Uniform Single Publication Act as applied to defamation.  (Traditional Cats Assn., Inc. v. Gilbreath (2004) 118 Cal App 4th 392, 395)

Truth is a complete defense to defamation and plaintiff bears the burden of proving falsity when the action involves a public figure or issue.  (Integrated Healthcare Holdings v. Fitzgibbons (2006) 140 Cal.App.4^th 515, 529)

The First Amendment (including “New York Times malice” standard by clear and convincing evidence) is a defense to claims for commercial misappropriation of name or likeness whether styled as a common law claim or based on Civil Code § 3344.  (Stewart v. Rolling Stone LLC (2010) 181 Cal.App.4th 664, 680-682)

Civil Code § 47(b) is a complete defense to all tort claims save malicious prosecution.  (Flatley, supra, 39 Cal.4th 299, 322-323; Kashian v. Harriman (2002) 98 Cal.App.4th 892, 913, 926–927)  Sometimes the litigation privilege of Civil Code § 47(b) can be applied to breaches of contract when the policies underlying the litigation privilege are furthered by its application.  (Wentland v. Wass (2005) 126 Cal.App.4th 1484, 1492)

Civil Code § 47(c) (Common Interest Privilege) is a defense when no “malice” is shown.  (Kashian v. Harriman (2002) 98 Cal.App.4th 892, 914)

Civil Code § 47(d) (Fair/True Report in Public Journal) is a defense but a newspaper defendant bears the burden of proving the privilege applies.  (Carver v. Bonds (2005) 135 Cal App 4th 328, 348-349)

Noerr-Pennington Doctrine.  This constitutional doctrine bars actions based on injuries received as a consequence of First Amendment petitioning activity.  (Hi‑Top Steel Corp. v. Lehrer (1994) 24 Cal.App.4th 570; Ludwig v. Superior Court (1995) 37 Cal.App.4th 8, 21-23; Tichinin v. City of Morgan Hill (2009) 177 Cal.App.4th 1049)  To this end, incidental conduct—like an investigation before filing a lawsuit, engaging in discovery, and settlement talks (including a refusal to settle)—is protected since a certain amount of “breathing space” is necessary for the effective exercise of petition rights (and includes two aspects: “overprotection” and “collateral protection”).  (Id. at 1065-1068)  There is a “sham” exception to the Noerr-Pennington doctrine when the action is both objectively without merit and subjectively motivated by an improper purpose.  (Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc. (1993) 508 U.S. 49, 60-61)  Therefore, petitioning efforts which are successful cannot meet the elements of the “sham” exception to the Noerr‑Pennington doctrine.  (Blank v. Kirwan (1985) 39 Cal.3d 311, 325)

Immunity defense under the Communications Decency Act (47 U.S.C. § 230).  (Barrett v. Rosenthal (2006) 40 Cal. 4th 33)

Anti-SLAPP Motion Hearing & Appellate Considerations:

A party must obtain rulings on any objections to evidence or the matter is waived on appeal.  (Gallant v. City of Carson (2005) 128 Cal.App.4th 705, 711-713)

In determining whether each party has met its burden the appellate court will review the record de novo.  (Damon v. Oceanside Hills Journalism Club, supra, 85 Cal.App.4th 468, 474)  However, the judgment should be affirmed if it is correct on any legal ground, whether or not the trial court relied on that ground.  (Robles v. Chalil-Poyil (2010) 181 Cal.App.4th 566, 573)

Conclusion

In summation, a basic understanding of the anti-SLAPP statute is of vital importance to both practitioners bringing cases that may have anti-SLAPP implications and to those who defend lawsuits where the anti-SLAPP statute may apply.  Admittedly, some of the distinctions made are fine ones and therefore critical analysis of the current state of the law is essential to proper consideration.

This article appeared in the North County Lawyer magazine in
June 2012 (Vol. 29, No. 6) and July 2012 (Vol. 29, No. 7).
© 2008-2012 Ariel J. Sabban, Esq.  All Rights Reserved

La Jolla-based ARC IP Law, PC, has expanded its areas of service from patents, trademarks and litigation to include real estate law and business law. Originally, the firm was created with an emphasis on intellectual property law.

Danna J. Cotman, who holds JD and MBA degrees, leads the trademark and business law areas for the firm. She was the 2008 president of the La Jolla Bar Association and serves as a temporary judge in the San Diego Superior Court Small Claims and Traffic Divisions.

With over 100 patents issued and filed in 34 countries, ARC IP Law maintains a strong presence in the patent world. The firm’s members have obtained well-known patents such as the one for the camera system that is held by ropes above football games seen on CBS and FOX.

Registered Patent Agent Joe Mayo has also obtained patents related to image processing, movie making, mechanical, medical devices, software, computers, robotics and wireless inventions.

The firm’s newest member is real estate and litigation attorney Ariel Sabban, who has been in private practice for more than 13 years. His areas of emphasis include transactional fraud and nondisclosure cases, professional (broker, inspector, appraiser, etc.) liability, construction and construction disputes, easements, encroachments, and other land ownership issues, and landlord-tenant and homeowners association matters.

Sabban is also a First Amendment advocate with specialized knowledge of the “anti-SLAPP” statue, which protects the rights of free speech and petition.

Also new to the firm is associate Shannon Koehler, who will focus on litigation and Intellectual Property Law.

The firm is located in downtown La Jolla.

The path to a great brand is littered with casualties. Many of these casualties are members of the “once were, now has been” brands. Brands are lost because their owners register their trademark and forget about it, believing they are off the hook. To build a lucrative brand that will not become a “has been” you must protect yourself by enforcing your trademark from brand bandits that are ready and eager to benefit from your success. Registration is the beginning. Enforcement in the digital age is an ongoing process of awareness and communication, both within an organization and with expert IP counsel on your team.

Enforcement means being aware. It is important that you understand and are mindful of what is happening in the marketplace in which your trademarks exist. This includes your own use, use by licensees, distributors and affiliates, as well as unrelated third parties. It also means a proactive stance towards managing risks that can weaken value or in some cases result in a complete loss of rights.

The registration of your trademark is only the beginning of the brand protection process. The act of enforcement also includes making sure that federal registrations are maintained. The Trademark Office requires periodic filings or they will cancel your registrations. Also, trademark owners must “police” their marks against unauthorized use or they risk losing valuable rights. It is important to teach authorized users to use the marks correctly as well as monitor their use. Many trademarks have been lost through neglect and failure to take simple steps to eliminate infringers.

An intellectual property attorney can assist you in the best ways to protect your mark. One example may be to initiate a trademark watch, which is a service that can monitor new applications being filed with the USPTO for marks that are similar to yours so that you and your attorney can identify if they are potentially likely to cause confusion with your mark. If you identify a mark that is potentially likely to cause confusion with your mark, you and your attorney should consider whether to file an opposition to the mark you have identified. You should make sure to involve an experienced intellectual property attorney, such as one from ARC IP Law to assist you in this process.

Let’s start with the basics. A trademark is a word, phrase, symbol, or logo that distinguishes and identifies the source of goods of one company or person from another. For example, the name Kraft is trademarked, as is Nike’s “swoosh” logo.

The list of what constitutes a trademark is long. A trademark can also be granted to unique packaging such as the shape of Coca-Cola’s bottle, building designs, color, sound, and even fragrance. Service marks receive the same legal protection, but are used to distinguish services instead of products.

Your business can acquire trade or service marks through the consistent use of a mark. The symbols TM and SM demonstrate the owner treats the mark as a trademark or service mark. There is no requirement to federally register at the trademark office. You are still protected under intellectual property laws. However, if another party uses your mark it can be more difficult to prove your ownership.

Only a mark registered and approved by the USPTO can use the ® symbol. Since the application process can take many months to complete, use the TM or SM symbol in the meantime to establish your intention to use the mark as a trademark. Make sure you keep records as to when your mark was first used in commerce and regulate the use of your mark in the marketplace.

“Yahoo Search Marketing (searchmarketing.yahoo.com) has recently announced its advertisers of a new policy to be implemented as of March 1st 2006, concerning the use of trademarks within their products and services *.

Under the new policy, no reference to a trademark can be made (except for ads placed by the trademark owners themselves, obviously), and consequently no bids can be make for keywords containing such trademarks. Exceptions refer to usage of trademarks in non-competitive ads, such as those made by re-sellers, or in informative (and still non-competitive) ads.

The previous policy allowed references to competitors’ trademarks and comparisons as long as they were “objective and informative” – the formulation can make one cringe, as it is clearly troublesome trying to evaluate objectivity when speaking of business competitors. As for the “informative” side of it… someone to actually PAY for an ad to be informative of someone else’s product/service, is as believable just like the existence of Santa Claus.

It is really good to see Yahoo making a big step forward in regulating abuse and misuse of trademarks, even though that probably translates in some revenue loss for them, by having certain advertisers migrate to a “friendlier” place such as Google. According to Google’s policies, “[...] advertisers may select trademarked terms as keywords or use them in the content of the ad. As a provider of space for advertisements, Google is not in a position to arbitrate trademark disputes between advertisers and trademark owners. As stated in our Terms and Conditions, advertisers are responsible for the keywords and ad text that they choose to use. Accordingly, Google encourages trademark owners to resolve their disputes directly with the advertiser, particularly because the advertiser may have similar ads on other sites. However, as a courtesy to trademark owners, Google is willing to perform a limited investigation of reasonable complaints.”

The question is why would Yahoo change its policies and apparently offer Google an even bigger bite from the SEM cake? It is way too early to say now, and their official explanation is not entirely believable: Yahoo states to have had the users’ best interest in mind, by providing them with a better experience when searching terms that contain trademarks. Though this would make a laudable initiative with a good PR potential, experts know the search market is driven by large publishers and advertisers and not by the little surfing guys. Numerous speculations can be made: threats of large legal actions from trademark owners, pressure from certain groups of interests are among the most prominent ones.

However, a more plausible one is that Yahoo makes preparations for a much larger scale movement destined to influence the market in a manner we cannot anticipate just yet.

Until further industry news, there’s one thing to rejoice: from now on, no “better than Botox” ads on Yahoo and their partner sites!”

In order to prove a copyright violation of these exclusive rights under U.S. law, a copyright holder copyright holder must show that he/she is the “owner” of an original work and a prima facie case for infringement. Ownership of a copyright is established by showing “authorship” of an original work fixed in a tangible medium – articles, books, pictures, movies, musical recordings, etc.

The person who created the original work is the copyright holder. A copyright holder may ‘assign’ the copyright to a third person, who then has all the exclusive rights of the original author, including reproduction, performance or the making of derivative works.

According to the US Copyright Office, Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney’s fees in successful litigation.

So essentially, registering a copyright with the US Copyright Office provides a public record of the actual work, making it known to the public that you created it. Additionally, copyright registration allows you to seek statutory damages in court should someone steal your work and claim it as their own. It should be understand that actual damages can be award with or without copyright registration, but registration is required for statutory damages. Copyright registration also protects against importation internationally of copyrighted works.

Copyright registration current costs about $45 for everything except periodicals and serials. This is a one-time fee that secures a copyright registration on the work submitted, exactly as it is submitted.

A non-registered copyright is automatically granted to the author or creator of any original work the instant that work is put in tangible form. In other words, as soon as you have created the work, in a tangible form (such as an article, novel, manuscript, picture, etc). If you created an original work, you automatically hold a copyright on the work.

In fact, the work doesn’t even have to be complete in order to be protected under a non-registered copyright. For example, if you are writing an article and you have five paragraphs written, but the article will be ten paragraphs long, as soon as you finish each word, each paragraph, that part of the article is protected already under a non-registered copyright. Same with a novel, manuscript, or other type of unfinished work. Photographs are copyrighted the minute the photo is snapped, and therefore on the film, and then any print or copy of it is also copyright protected under a non-registered copyright.

Even if your logo does qualify for copyright protection, do not assume it’s the same as trademark protection. Copyrights and trademarks are fraternal twins – obviously related but look nothing alike. Copyrights protect the image itself whereas the trademark protects the image as it is used within the marketplace.

To protect your logo in connection with your product line and/or services, a trademark is the way to go. The purpose of having a trademark, be it for a name, logo or slogan, is to obtain exclusive rights to the mark within your particular industry. This ensures that there will not be customer confusion when it comes to your goods/services and another within your industry.

Filing a trademark for a logo is similar to filing a trademark for a name. Comprehensive research is likely needed to ensure that the same or similar design is not already filed. I know what you’re thinking – I know my logo is unique OR I paid for my logo to be designed so I know no one else has it – we hear that a lot. The one thing to always remember about trademarks is that the mark need not be exact to another. If there’s a chance for customer confusion, it can be a problem.

When deciding to protect your logo or design it can be a bit confusing trying to decide how to protect it. After all, your logo is basically the face of your product line or your services so it makes sense that you’d want to do the right thing when it comes to ensuring that you have exclusive rights to it.

The question is should you copyright your logo or trademark your logo? The answer, surprisingly, may be both.

The US Copyright Office states “copyright protection may be available for logo artwork that contains sufficient authorship.” What does this mean exactly?

Each logo or design is going to vary from the next in regard to being eligible for copyright protection, of course, but the key to understanding is learning what is meant by “sufficient authorship.” Logos or designs that fall into any one of the two categories are not eligible for copyright protection:

o “familiar symbols or designs,” e.g. the peace sign, a single arrow, a Latin cross, etc.
o “mere variations of typographic ornamentation, lettering or coloring,” e.g. text in Times New Roman font, Text Using Only Sentence Case, text in purple

An even easier way to think about is to ask yourself one question about your logo – was there any creativity involved at all in designing the logo? If you’re using a symbol you found in Microsoft Word or in a clip art program, then no. If you’re using a logo you or someone else designed for you that contain a degree of creativity and/or uniqueness of some form or fashion, then yes.