States golf association v arroyo software

In each of these four cases, the respective court entered a judgment in favor of USGA determining that USGA had a proprietary interest in the Handicap System and its related Formulas and service marks, and barring the opposing entity from using the Formulas or marks without USGA's express consent for any purpose other than providing golf handicap computation services to golf clubs and associations utilizing the USGA Handicap System.

Andrews case, the applicable state common law at issue in each of these cases did not require a showing of direct competition between USGA and the entity asserting a right to use the Handicap System as part of a claim of misappropriation.

Arroyo is a California corporation involved in the production of computer software. In , Arroyo began marketing a computer software program for golfers known as "EagleTrak. Arroyo refused to comply. In the belief that Arroyo's unauthorized use of its Handicap System, Formulas and service marks was causing confusion in the general public, impairing USGA's reputation and good will, and devaluing the substantial investment of time and resources USGA had made in developing and improving its Handicap System, USGA filed the instant action on December 9, , claiming misappropriation, unfair competition, and false and misleading advertising.

Arroyo filed a cross-complaint alleging unfair competition, violation of California antitrust law the Cartwright Act, Bus. On February 15, , prior to trial, the trial court held USGA had the right to assert a claim for misappropriation under California law without a showing of direct competition between USGA and Arroyo, and this claim was not preempted by federal copyright law.

Although the trial court concluded USGA had proffered substantial uncontroverted evidence to support its claim, it denied USGA's motion for summary adjudication on the ground there were some material facts in dispute. However, the trial court did grant USGA's motion for summary adjudication with respect to all three of the claims alleged in Arroyo's cross-complaint.

In addition, the trial court entered an order granting USGA's motion for admission pro hac vice of two out-of-state attorneys who had been assisting local California counsel in the prosecution of USGA's lawsuit. Shortly before trial, USGA amended its complaint to drop its claims for damages and attorney fees. On October 25, , at the conclusion of the bench trial on USGA's claims for injunctive relief based on misappropriation, unfair competition and service mark infringement, the trial court filed a statement of decision finding that USGA had "amply met its burden" of proving Arroyo's conduct had violated USGA's proprietary rights in the [69 Cal.

Specifically, the trial court found that Arroyo's unauthorized use of USGA's Formulas in the EagleTrak software "undermined" the integrity of the Handicap System, "thereby creating the substantial risk of damage to the reputation, standing and viability of the USGA.

The trial court determined that Arroyo's unauthorized use of these service marks in its advertising, packaging and instructional materials created a likelihood of confusion by conveying to the general public that USGA had authorized and approved Arroyo's use of the Handicap System, and found that Arroyo's disclaimers were "ineffectual" and "ambiguous. On the basis of its findings and conclusions, the trial court issued a permanent injunction prohibiting Arroyo from any unauthorized commercial use of the Handicap System, Formulas or service marks.

The trial court refused to award costs to either party, finding on the basis of its equitable discretion that neither party had prevailed. Arroyo timely filed its notice of appeal from the judgment, and USGA cross-appealed from the trial court's denial of costs.

Arroyo is incorrect. City of Sacramento v. State of California 50 Cal. Hartford Insurance Co. Bank of America 19 Cal. Smith Cal. Seaboard Surety Co. Rush Cal. Procedure 4th ed. A corollary of the rule that collateral estoppel is confined to issues "actually litigated" is the requirement that the issue decided previously be "identical" with the one sought to be precluded. People v. Taylor 12 Cal. Beverly Hills Weight etc. Mono General Hospital Cal. Thus, a nonparty may invoke collateral estoppel against a party to a prior action only if three conditions are met: 1 the issue necessarily decided in the prior action is identical to the issue sought to be relitigated in the current action; 2 there was a final judgment on the merits in the previous action; and 3 the party against whom collateral estoppel is asserted was a party, or in privity with a party, to the previous suit.

Producers Dairy Delivery Co. Sentry Ins. Bank of America, supra, 19 Cal. County of El Dorado Cal. Arroyo concedes that its collateral estoppel defense must fail unless the issues adjudicated by the Third Circuit 14 years ago in St.

Andrews are identical to those in the instant case. Andrews are identical to issues in this case and therefore controlling. The difficulty with Arroyo's argument is that both the underlying facts and the applicable substantive law are different in this case from that before the Third Circuit in St. Ocean Shore Railroad 32 Cal. County of El Dorado, supra, Cal. State Board of Optometry 18 Cal. In [69 Cal. Clark v. Lesher 46 Cal. In this case, the decision in St.

Andrews took place in a different legal context, as well as a different time and place from the instant action. Because both the underlying factual conditions and the substantive law at issue have changed from the time of the decision in St. Andrews, it cannot be said that the issues before the Third Circuit and the trial court below are "identical. Between the time of the federal court decision in St. Andrews and the instant case, USGA completely changed its Handicap System by abandoning its older formula and developing the entirely new Formulas.

The uncontroverted evidence adduced at trial establishes that the Formulas and service marks at issue in this case were not developed until , three years after the decision in St. The federal court had before it an older and completely different handicap formula. Soon after the decision in that case, USGA began the process of developing the more complex Formulas at issue here.

Andrews, in which the federal circuit court concluded protection was unnecessary to protect USGA's incentive to create the relatively simple handicap formula in use at that time. Here, in contrast, substantial evidence supports the trial court's conclusion that "protection of the USGA handicapping 'business' is necessary to protect the basic incentive for the production of the idea or information involved It is similarly well established that when the proceeding in which issue preclusion is currently sought involves different substantive law than the [69 Cal.

Atlantic C. Engineers U. Johns-Manville Sales Corp. The controlling substantive law governing the instant case is different than that under which St. Andrews was decided by the Third Circuit. Common law misappropriation is one of a number of doctrines subsumed under the umbrella of unfair competition.

It is normally invoked in an effort to protect something of value not otherwise covered by patent or copyright law, trade secret law, breach of confidential relationship, or some other form of unfair competition. Montana v. San Jose Mercury News, Inc. Trans Global Equities Cal. Watkins-Johnson Co. Superior Court Cal. Balboa Ins. Trans Global Equities, supra, Cal. Superior Court, supra, Cal. The principal basis for the decision of the Third Circuit in St. Andrews was the fact that New Jersey law required proof of direct competition between the plaintiff and the defendant as an essential element of any misappropriation claim.

Under the California law applicable here, on the other hand, the essential elements of a misappropriation claim simply do not include any such requirement of proof of direct competition between the plaintiff and the defendant. Because California law does not require a showing of direct competition between the parties before conduct otherwise constituting misappropriation [69 Cal.

Andrews were not identical to those arising under California law in this case, and that collateral estoppel does not preclude USGA's claims in this case. Andrews court found that USGA's then-existing handicap formula was "functional," and therefore could not be protected under state or federal trademark law. Arroyo's claim fails for several reasons. First, as discussed, the facts have changed.

The new Formulas at issue in this case are totally different than the old formula at issue in St. Because the facts and conditions at issue have changed, the issue is not "identical," and collateral estoppel does not apply. More Videos. Course Directory Find the best Southern California golf courses near you - filter by course name, green fees and distance. Tiny Putters No stuffy vibes here. Mickey Mouse Golf League Our club began in as a place for Disney employees and their friends to play golf together.

Women on Course Women on Course is the fastest growing national community for lifestyle enthusiasts and business professionals…. Tournament Management. Club Marketing. Find a Course Course Name:. Distance from Zip Code: Any 5 10 25 50 There is a virtually unlimited number of possible handicap formulas and as many different philosophies about whether an individual golfer's handicap should reflect the golfer's maximum or reasonable potential, lifetime or average performance, highest or most recent scores, or some combination of all these various measurements.

Over the years, other organizations have developed and promoted different handicap formulas, and USGA itself has changed its own Handicap System in response to changes in the game. As a result, the research team developed new handicap formulas Formulas designed to measure the overall difficulty of golf courses, compare individual golfers with other golfers of all abilities, take account of differences between.

USGA subsequently adopted and implemented these new Formulas between and Together with the adoption of these new Formulas, USGA introduced several new terms as service marks to identify its revised Handicap System. As a result, the credibility and integrity of the Handicap System were reestablished, its good will was enhanced, and the new marks acquired secondary meanings with the general golfing public.

USGA permits any entity to use its Handicap System and handicap Formulas, free of charge, for the purpose of providing handicap computation services or software to any authorized public or private golf club or association utilizing the USGA Handicap System in connection with the issuance of an individual USGA Handicap Index to a golfer.

However, before issuing such a USGA Handicap Index to any golfer, USGA requires an authorized golf club or association to post golf scores for peer review and consideration, and submit its computations to a golf committee for review and adjustments in accordance with USGA Formulas. In the first such case, St. Andrews, supra, F. The St. Andrews decision, one of first impression under New Jersey law, was based on the federal court's determinations that: a a showing of direct competition between the plaintiff and the defendant was essential to any claim of misappropriation under New Jersey law; and b USGA had failed to make the required showing of direct competition between itself and the defendant in that case.

On this basis, the federal circuit court held that USGA had no legally protectible interest in the handicap formula it was promulgating at that time, and its claim for misappropriation was legally insufficient because the computer company defendant was not in direct competition with USGA.

In , three years after the Third Circuit rendered its decision in St. Thereafter, USGA was a party to four more lawsuits in which it claimed misappropriation of its Handicap System and related Formulas and service marks in opposition to competing claims of entities desiring to establish their right to use the Handicap System without USGA's permission. In each of these four cases, the respective court entered a judgment in favor of USGA determining that USGA had a proprietary interest in the Handicap System and its related Formulas and service marks, and barring the opposing entity from using the Formulas or marks without USGA's express consent for any purpose other than providing golf handicap computation services to golf clubs and associations utilizing the USGA Handicap System.

Andrews case, the applicable state common law at issue in each of these cases did not require a showing of direct competition between USGA and the entity asserting a right to use the Handicap System as part of a claim of misappropriation. Arroyo is a California corporation involved in the production of computer software. In , Arroyo began marketing a computer software program for golfers known as "EagleTrak.

Arroyo refused to comply. In the belief that Arroyo's unauthorized use of its Handicap System, Formulas and service marks was causing confusion in the general public, impairing USGA's reputation and good will, and devaluing the substantial investment of time and resources USGA had made in developing and improving its Handicap System, USGA filed the instant action on December 9, , claiming misappropriation, unfair competition, and false and misleading advertising.

Arroyo filed a cross-complaint alleging unfair competition, violation of California antitrust law the Cartwright Act, Bus.