Author: Lindsey Welfley

By Kammie Cuneo

The ancient notion of a “covenant in restraint of trade” has given way to the modern non-compete agreement. Over recent decades, as the use of non-compete agreements has proliferated, states including Idaho have developed statutory frameworks to govern the enforceability of these agreements. This article provides a historical summary of the common law and the Idaho statute. The article then explores interpretations based on the limited case law available and offers observations on potential practice pointers.

Ancient and Not-So-Ancient History and Common Law

The earliest statements of the common law in England held that covenants in restraint of trade were void; this was regarded as “old and settled law” even by the time of Henry V.[i] This ancient rule was qualified by a succession of decisions in the English courts over the next few centuries, with a distinction emerging in Broad v. Jollysse and Mitchel v. Reynolds between “general” and “limited” restraints of trade. [ii]

The latter case provided the clearest expression of the common law rule adopted in England and later in this country: “A bond or promise to restrain oneself from trading in a particular place, if made upon a reasonable consideration, is good. [Unless] if it be on no reasonable consideration, or to restrain a man from trading at all” (emphasis by author) [iii].

This quote from Mitchel has been a model for the development of the law in the U.S. and specifically in Idaho—the Idaho Supreme Court calling it “a guide for courts ever since.”[iv] For most of our state’s history, Idaho courts were left to their own devices on this issue and chose to adopt and expand the aforementioned principles of common law, approvingly citing to the rule in Mitchel,[v] and applying a similar standard whereby such agreements were enforceable but disfavored.[vi]

The court provided that covenants not to compete would be “strictly construed against the employer”[vii] and required they be “supported by adequate consideration, and consistent with public policy” and reasonable.[viii] The chief requirement of the reasonableness standard was that the clause be “no more restrictive than necessary to protect the employer’s legitimate business interests.”[ix]

In addition, the covenant must be reasonable as applied to “the employer, the employee, and the public.”[x] More specifically, the covenant must be “not greater than necessary to protect the employer…not unduly harsh and oppressive to the employee; and [] not injurious to the public.”[xi] If covenants were found to be overbroad, the Supreme Court “approved of the modification of otherwise unreasonable covenants”[xii] to render them enforceable. If, however, the “covenant is so lacking in the essential terms which would protect the employee such that the trial court is no longer modifying but rewriting the covenant,”[xiii] modification is no longer acceptable.

The New Millennium and the Features of Non-Compete Legislation

Consistent with national trends and perhaps feeling that specific guidance was in order, the Idaho Legislature in 2008 passed our state’s first statute governing restrictive covenants, specifying that a non-compete agreement was enforceable with respect to a “key employee or key independent contractor” if reasonable “as to its duration, geographical area, type of employment or line of business, and does not impose a greater restraint than is reasonably necessary to protect the employer’s legitimate business interests.”[xiv]

Broadly taking cues from the common law while seeking to impose some more definite standards, the Legislature created a number of guidelines for presumptive reasonability. Under the statute, rebuttable presumptions were established that agreements limited to (1) employees or independent contractors who were among the highest paid five percent of a company’s employees or contractors, (2) a post-employment duration of 18 months,[xv] (3) the geographic areas in which “the key employee…provided services or had a significant presence or influence,” and (4) the “type of employment or line of business conducted by the key employee” are reasonable.[xvi]

For the presumption concerning key employees or independent contractors, the statute requires that the employee prove “that it has no ability to adversely affect the employer’s legitimate business interests”[xvii] in order to rebut the presumption. This feature sharply breaks from the old rule in imposing a presumptive restraint on the employee instead of placing the burden of proof on the employer.

The statute also includes certain important definitions. While highly-paid employees and contractors are presumptively “key,” the term also embraces those who, by reason of some investment or exposure by the employer (pecuniary or otherwise), “have gained a high level of inside knowledge, influence, credibility, notoriety, fame, reputation or public persona as a representative or spokesperson of the employer.”[xviii] The term “legitimate business interests” is also defined broadly to include both concrete technologies, plans, processes, contacts, and trade secrets and intangible “goodwill.”[xix]

Another notable aspect is that the statute provides for, arguably mandates, that the court “limit or modify” the agreement as necessary to reflect the intent of the parties and “render it reasonable” where the agreement has been found to be unreasonable.[xx] While the common law rule also provided for the modification of covenants, as noted above, the statutory language is closer to a mandate: “shall limit or modify.”[xxi]

The Idaho non-compete statute remains in force unchanged today, although it was briefly amended in 2016 to add a paragraph establishing a “rebuttable presumption of irreparable harm” upon breach of a non-compete agreement. The statute imposed on defendants the punishing standard of “show[ing] that the key employee… has no ability to adversely affect the employer’s legitimate business interests.”[xxii] Following widespread criticism,[xxiii] the amendment was repealed in 2018. The current statute is identical in all substantive respects to the 2008 version.

Statutory Interpretation and Practice Pointers

Unfortunately for practitioners, judicial guidance regarding the construction of either version of this statute has been relatively limited. A few notable cases are nonetheless worth examining. In making this examination, the author optimistically concludes, despite having only two data points, that the courts follow reasonableness criteria as set forth by the statute but remain strongly informed by the traditional bias against restraints of trade.

Perhaps the most directly relevant case is Brand Makers Promotional Products, LLC v Archibald, an unreported decision of the Idaho Court of Appeals under the current statute.[xxiv] Brand Makers asserted, among others, claims of fraud, conversion, unjust enrichment, and breach of contract against defendant Nathan Archibald, a former employee and co-founder of the company. The claim of breach was predicated on an allegation that Archibald had breached a non-solicitation and confidentiality agreement by directly competing with Brand Makers and by soliciting away Brand Makers’ customers. The agreement between the two mandated that Archibald avoid involvement with any competitor of the company or be engaged in any business activity which would compete with the business of Brand Makers. Archibald further explicitly agreed not to solicit away any employees, contractors, or customers.[xxv]

The court found that the agreement was unreasonable, and thus unenforceable, specifically stating that it imposed a greater restraint on Archibald than was reasonably necessary to protect Brand Makers’ interests. The court noted the following shortcomings in the agreement as the basis for its conclusion: the agreement was “silent as to the geographic limitations, type of employment, or line of business” that Archibald was prohibited from conducting.[xxvi]

Most interestingly, in contrast to the apparent mandate of the statute to modify or limit any unreasonable provisions of such agreements, the Archibald court declined to modify the agreement, and in the process seemed to narrow the scope of the statute’s blue-pencilling provisions. The court reasoned that the statute “does not require the court to insert terms into a non-compete agreement in order to render it reasonable when such terms are absent on the face of the provision”[xxvii]—a justification which highly resembles the old rule articulated in Pinnacle Performance, Inc. v. Hessing.[xxviii]

Although the decision is not precedential, it seems to indicate a tendency on the part of Idaho courts to discard restrictive covenants which are perceived as grossly insufficient notwithstanding the “limit or modify” requirement of I.C. § 44-2703. This may be viewed as a continuation of the older common law trend that disfavored non-compete agreements.

To better understand the scope and nuances of the judicial decision-making, it is instructive to compare Archibald with another case—Timberline Drilling v. American Drilling.[xxix] Timberline was decided based on the principles of common law.[xxx] Stephen Elloway, the U.S. operations manager of Timberline Drilling, signed a non-compete agreement in 2007 that prohibited him from soliciting or selling products or drilling services (1) to any of Timberline’s customers or “potential customers”, (2) for a period of five years, (3) within 100 miles of any location in which Timberline operated a drill rig at the time of termination.[xxxi]

Elloway resigned in 2008 and formed the American Drilling Corporation, which signed contracts with three mines, all customers of Timberline’s at the time of Elloway’s resignation. All of American Drilling’s employees were former employees of Timberline. A suit ensued. Both sides moved for partial summary judgment on the non-compete agreement in the District of Idaho.

The Court found that Timberline had a “protectable business interest in its customer relationships which Elloway helped to develop while working for Timberline” and that the geographic scope of the agreement was reasonable. It found the duration and inclusion of “potential customers” to be unreasonable.[xxxii] To rectify the shortcomings of this agreement, the court judicially modified the agreement, striking the words “potential customers” and shortening its duration to 18 months. The reduction of the duration to 18 months was influenced by a provision of the 2008 statute, I.C. § 44–2704(2), which the court called “instructive as to what was reasonable”[xxxiii] (although the statute was not technically applied to this agreement).

Collectively analyzing the decision in Archibald (declining to modify the agreement despite the statutory provision appearing to mandate such modification) with the decision to judicially modify the agreement in Timberline (before the mandate had become law) may reflect a tendency of courts to make fact-specific determinations. These determinations appear to be on the totality of a case when deciding whether to modify unreasonable restrictive covenants.

In Timberline, where the facts were arrayed against the defendant and the agreement was reasonable in many terms, the court chose to modify even without statutory pressure; in Archibald, where the agreement appeared manifestly deficient, the court chose not to modify even with this pressure. Although, the skeptic could also conclude that no patterns have emerged in Idaho as of yet and the difference in the decisions is explained by the choice of venue.

A final distinction on this topic is worth noting. Dating back to the ur-case Mitchel, courts have consistently differentiated restrictive covenants “ancillary to the sale of a business”[xxxiv] from those signed in the context of an employer-employee relationship.[xxxv] Although a rule establishing this difference is neither explicit in the Idaho statute nor in recent case law based on the statute, the rule was repeatedly reaffirmed under common law.

The Supreme Court in Bybee v. Isaac noted the rule thus:[xxxvi] “‘restrictive covenants in contracts limiting an employee’s natural right to pursue an occupation and thus support himself and his family will be strictly scrutinized’, but courts are less strict in construing the reasonableness of such covenants ancillary to the sale of a business.”[xxxvii] Given the Archibald courts’ reliance on the common law framework, it is not unreasonable to expect that the courts may do same regarding this distinction between the types of restrictive covenants.

Considering the broader picture of these historical developments, the mindful practitioner may note that restraint in drafting may be the key to an enforceable restraint of trade agreement in the employment context. While statutory provisions in Idaho provide for such agreements, the courts may still approach such covenants with caution. Accordingly, an enforceable covenant is likely a carefully drafted one which limits restraint to only that necessary for the protection of the legitimate business interests and which limits restrictions consistent with the presumptive reasonableness criteria stated in the statute.

Acknowledgment: I would like to thank Arman Cuneo, my former intern, for his contributions to this article.

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[i] Alger v. Thatcher, 36 Mass. 51, 52 (Mass. 1837).

[ii] Broad v. Jollysse, Cro. Jac. 596, 79 Eng. Rep. King’s Bench Div. VIII 509 (1621); Mitchel v. Reynolds, 24 Eng. Rep. 347, 348; 1 P. Wms. 181, 182 (1711) (noting that general restraints were those that prevented a man from practicing his trade throughout England).

[iii] Shannon Aaron, Using the History of Noncompetition Agreements to Guide the Future of the Inevitable Disclosure Doctrine, 17 Lewis & Clark L. Rev. 1191, 1222 (2013) (quoting from Mitchel 24 Eng. at 347, 1 P. Wms. at 181).

[iv] Shakey’s Inc. v. Martin, 91 Idaho 758, 762, 430 P.2d 504, 508 (1967).

[v] See id.

[vi] Freiburger v. JUB Engineers, Inc., 141 Idaho 415, 419, 111 P.3d 100, 104 (2005).        

[vii] Id.

[viii] Id.

[ix] Id. at 105.

[x] Insurance Ctr., Inc. v. Taylor, 94 Idaho 896, 899, 499 P.2d 1252, 1255 (1972).

[xi] Freiburger, 141 Idaho at 419, 111 P.3d at 105.

[xii] Id. at 422, 107-108; see also Insurance Ctr., Inc. v. Taylor, 94 Idaho 896, 899, 499 P.2d 1252, 1255 (1972).

[xiii] Pinnacle Performance, Inc. v. Hessing, 135 Idaho 364, 369, 17 P.3d 308, 313 (Ct. App. 2001).

[xiv] I.C. § 44-2701 (2008) (which is the same as the 2018 version).

[xv] This was also established as a maximum duration in § 44-2704(1).

[xvi] I.C. § 44-2704 (2008) (which is substantively the same as the 2018 version).

[xvii] I.C. § 44-2704(5).

[xviii] I.C. § 44-2702(1) (2008) (which is substantively the same as the 2018 version.

[xix] I.C. § 44-2702(2).

[xx] I.C. § 44-2703 (2008) (which is the same as the 2018 version).

[xxi] Id.

[xxii] H.B. 487, 63^rd Leg., 2^nd Sess. (Idaho 2016) (Business and Commerce—Breach of Contract—Contractors).

[xxiii] Betsy Z. Russell, Idaho Businesses Line Up Against Non-Compete Law; ‘Lie of The Year’; and Veyo’s Replacement; My Full Sun. Column . . ., THE SPOKESMAN-REVIEW, Dec. 17, 2017, http://www.spokesman.com/blogs/boise/2017/dec/17/idaho-businesses-line-against-non-compete-law-lie-year-and-veyos-replacement-my-full-sun-column/; see also Conor Dougherty, Noncompete Pacts, Under Siege, Find Haven in Idaho, N.Y. TIMES, Jul. 14, 2017, https://www.nytimes.com/2017/07/14/business/economy/boise-idaho-noncompete-law.html.

[xxiv] Brand Makers Promotional Products, LLC v Archibald, No. 44926, 2018 WL 5076135, at * 1 (Idaho App. Oct. 18, 2018).

[xxv] Id., at *1-*2.

[xxvi] Id., at *10.

[xxvii] Id., at *11.

[xxviii] See n. 15 supra.

[xxix] No. CV 09-18-N-EJL-MHW, 2010 WL 11531293, at *5 (D. Idaho Mar. 17, 2010).

[xxx] Id., at n. 2.

[xxxi] Id., at *3.

[xxxii] Id., at *4.

[xxxiii] Id., at *5.

[xxxiv] Shakey’s, 430 P.2d at 508.

[xxxv] Harlan M. Blake, Employee Agreements Not to Compete, 73 Harv. L. Rev. 625, 629 (1960).

[xxxvi] Bybee v. Isaac, 145 Idaho 251, 178 P.3d 616 (Idaho 2008).

[xxxvii] Id. at 256, 178 P.3d at 621 (quoting Stipp v. Wallace Plating, Inc., 96 Idaho 5, 6, 523 P.2d 822, 823 (1974)).

By Kendra S. Ankrum

The America Invents Act (“AIA”), effective since 2012, established a procedure to challenge patents through inter parties review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”). IPRs have become a popular, cheaper alternative to litigation to challenge the validity of patents based on prior art. Prior art includes any evidence that can establish that the patented invention is neither new nor non-obvious. That is, the invention was already known or available before the patent application was filed.

The use of IPRs to challenge patents has become a fad of sorts in recent years. The increase in IPRs has led to challenges concerning the constitutionality of PTAB proceedings to review and invalidate issued patents.

In 2018, the Supreme Court settled many questions concerning the constitutionality of the PTAB’s and the Patent and Trademark Office’s (“PTO”) authority to adjudicate and cancel patents using post-examination proceedings.[i] The Court held that patents are a public right granting a public franchise and IPR “is simply a reconsideration of that grant.”[ii] But the Court specifically limited the ruling to the constitutional challenges raised under Article III or the Seventh Amendment.[iii] Whether IPR is constitutional under the Fifth Amendment Takings Clause remains an open question.

The Takings Clause provides that “private property [shall not] be taken for public use without just compensation.”[iv] So how does the Takings Clause fit into intellectual property rights, specifically IPR invalidation of patents?

To shed some light on this issue and how the Supreme Court should resolve the question, this article summarizes how courts have interpreted challenges brought under the Fifth Amendment in non-patent intellectual property cases, such as copyrights, trademarks, and trade secrets. It will then provide a short discussion of challenges to the constitutionality of hunting license regulations and how they are instructive in considering the constitutionality of the IPR process. Finally, this article will conclude with a discussion of two cases currently moving through the court system which raise the question of whether invalidation of patents through an IPR is an unconstitutional regulatory taking under the Takings Clause.

Before continuing, it is important to note that courts analyze a regulatory takings challenge first by determining whether the property interest is subject to the Takings Clause, and, if so, through a three-part test known as the Penn Central factors.[v] These factors are the economic impact of the regulation, interference with reasonable investment-backed expectations, and the character of the government action.[vi] In most cases the economic impact and character of the government action lean in favor of finding a taking; it is the type of property interest involved or the investment-backed expectations which are often the deciding factor. The following cases follow this analysis, but the discussion is limited to the relevant factor in each case.

Copyright Regulations

In 2016, the United States District Court for the Central District of California reconciled the coexistence of copyright regulations and the Takings Clause.[vii] In Estate of Graham v. Sotheby’s, 178 F.Supp. 3d 974 (2016), art auction houses challenged a California statute granting artists five percent of future profits from the resale of their artwork as an unconstitutional taking. The court noted that a plaintiff must first demonstrate that they have a constitutionally protected property interest before a claim under the Takings Clause can be evaluated.[viii]

The state regulation under review reallocated property interests between copyright holders and downstream distributors, “a practice that constitutes the very foundation of intellectual property law . . . [and] dates as far back as 1710.”[ix] The founding fathers contemplated the exclusive rights of authors and inventors. They believed these rights were so important that they authorized Congress to create legislation to secure exclusive rights to authors and inventors for their respective works.[x]

The court held that the state regulation did not affect a constitutionally protected property interest because it simply did “what the Copyright Act has done for over a century: it transfers certain interests in intellectual property from downstream owners to original artists.”[xi] Thus, the auction houses “never possessed property interests in the entire resale value of the artwork they purchased” and the statute’s “redistribution of that interest is not an infringement on traditional property rights; instead, it is a valid regulation of intellectual property that has been practiced for hundreds of years.”[xii]

Patent law and the grant of patents likewise have a long history concerning intellectual property rights. However, there is an important distinction. In Sotheby’s, the auction houses did not have a property interest beyond the painting as an article. The original property rights were still vested in the original artists. Whereas a patent has always granted an exclusive property interest in the holder. This is an important distinction because patents create property rights more akin to those protected under the Takings Clause.

Trademark Registration

Another district court case helps shed light on the takings analysis. In the Eastern District of Virginia, the court in Pro-Football, Inc. v. Blackhorse, 112 F.Supp. 3d 439 (E.D. Va. 2015), clarified that trademark registration differs from patents and other property interests.

In this case, the Washington Redskins claimed that the invalidation of their trademark registration was a taking.[xiii] However, the court determined that “a trademark registration does not constitute a property interest under the Fifth Amendment”[xiv] and, therefore, is not a taking. The theory is that the government is not taking the use of the trademark, only the registration of that trademark. This distinction is significant because simply invalidating the registration did not take a property interest protected under the Takings Clause.[xv]

This case highlights the importance of “loss in economic value” in a takings analysis since the court noted that a trademark owner did not lose the use of the trademark. The loss of a patent can mean the loss of all or most of the value of an invention, whereas the loss of a trademark registration still allows for use and common law protection.

Notably, there are differences in the rights granted trademarks and patents because they do not share the same underlying purpose. Patents encourage innovation, whereas trademarks protect consumers from deception and confusion. While there are similarities to the exclusions offered to both patents and trademarks, the question of whether there is actually a substantial loss in economic value (i.e., an economic impact of the regulation) makes the comparison less persuasive.

Trade Secrets

In Ruckelshaus v. Monsanto, 467 U.S. 986 (1984), Monsanto submitted testing data and other trade secrets to the Environmental Protection Agency (“EPA”) to obtain approval for various insecticides.[xvi] Subsequently, after a series of legislative amendments, the EPA was authorized to make data submitted in support of approvals available to the public. Monsanto sued the EPA and asserted that the publication of its data was an unconstitutional taking. The Court held that publication of the data submitted to the EPA constituted a taking of property for which the government must pay just compensation. However, the Court limited the taking to data submitted prior to implementation of the regulation in question.[xvii]

The Monsanto Court made clear that as long as an applicant has knowledge of the regulatory conditions under which data are provided to the EPA, the “voluntary submission of data by an applicant in exchange for the economic advantages of a registration can hardly be called a taking.”[xviii] Therefore, the regulatory scheme governing EPA approvals does not interfere with an applicant’s reasonable investment backed expectations.

The rights granted to Monsanto by the EPA bear a strong resemblance, in the context of establishing a regulatory taking, to the rights granted by a patent. Patents have always been subject to federal regulations set forth by the PTO, just as approvals for pesticides have always been contingent on regulations promulgated by the EPA. This comparison becomes relevant because Monsanto is the only intellectual property related case to reach the Supreme Court on the question of the Takings Clause.

Hunting License Regulations

Government granted licenses provide a comparison between how courts analyze property interests and how the courts view the importance of a regulation’s “interference with reasonable investment-backed expectations” under the takings analysis. In Kafka v. Montana Department of Fish, Wildlife and Parks, 201 P.3d 8 (2007), the Montana Supreme Court held that the change in requirements for a Game Farm License (“GFL”) did not constitute a taking.[xix] Appellants were owners of alternative livestock game farms. Following radical changes to the statute governing GFLs, the game farm owners were no longer able to charge hunters to shoot alternative livestock on their game farms. The changes in the licensing statute eliminated the farmers’ most profitable use of alternative livestock, but not all uses.

The court stated that some licenses may implicate property interests, but the one at issue was a “mere privilege.”[xx] Furthermore, in order to qualify as a compensable property interest, “the Licenses must be transferable, exclusive, and free of any ‘express statutory language precluding the formation of a property right . . .’”[xxi] Although the statute did not contain express language disclaiming a property interest, they did “put the holder on notice that continued compliance with applicable laws and regulations is required for maintenance of the License.”[xxii] Perhaps the most important point to take from this case is the court’s focus on the fact that hunting and gaming is a highly regulated industry, which puts licensees on notice that the regulations were subject to changes.

Although patents are transferable, exclusive, and free of language disclaiming a property interest, they are subject to similar regulatory compliance standards. A patent grant has depended on statutory compliance since the original Patent Act of 1790. And since the Patent Term Restoration Act of 1981, the grant of a patent has been contingent on post-grant proceedings. Moreover, there is a long history of regulation and periodic changes in patent regulations, which put a patent holder on notice that this is a highly regulated field subject to statutory changes.

Unlike hunting regulations, patents are likely to provide holders with a compensable property interest. But similarly to the regulations in Kafka, history “put[s] the holder on notice” of the need to comply with changes in regulations. Therefore, patent holders are unlikely to establish a regulation’s interference with reasonable investment-backed expectations under a takings analysis.

IPRs and the Takings Clause

The Supreme Court has not addressed the constitutionality of IPRs, but there are two recent lower court cases which have addressed this issue. The most recent case was decided by the United States Court of Appeals on July 30, 2019. This case provided the first post-AIA opinion from the Court of Appeals on whether invalidation through an IPR proceeding constitutes a taking.[xxiii]

In Celgene Corp. v. Peter, No. 2018-1171, 2019 U.S. App. LEXIS 22517 (Fed. Cir. July 30, 2019), the PTAB found Celgene’s claims were obvious and invalidated two of Celgene’s patents. The court agreed with the PTAB’s position that “a valid patent is property for purposes of the Takings Clause.”[xxiv] This confirms long standing Supreme Court decisions holding that patents are a private property interest subject to the Takings Clause.

Celgene’s main contention was that because IPRs did not exist prior to the enactment of the AIA, subjecting their pre-AIA patents to an IPR “interfere[d] with its reasonable investment-backed expectations ….”[xxv] The court stated that pre-AIA inter partes reexamination was available since 1999 and ex parte reexamination since 1980. Both of these procedures allowed third party reexamination of an issued patent. Furthermore, the validity of a patent is, and has always been, subject to challenge in a district court.

Although IPRs are the newest version of reexamination, it does not “differ sufficiently from the PTO reconsideration avenues available when the patents were issued to constitute a Fifth Amendment taking.”[xxvi] The court acknowledged the differences, but gave greater weight to how the procedures are similar in purpose and substance. Moreover, the court restated the Supreme Court’s characterization of “district court challenges, ex parte reexaminations, and IPRs as different forms of the same thing – reexamination.”[xxvii] Finally, the court held that retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking because “pre-AIA patents were granted subject to existing judicial and administrative avenues for reconsidering their validity.”[xxviii]

Conversely, in Christy v. United States, 141 Fed. Cl. 641 (2019), the Court of Federal Claims held that patents are not “property for purposes of the Takings Clause.”[xxix]  Christy sued the United States when18 of their claims were invalidated following an IPR proceeding. Christy asserted that “‘each of [its] property rights in the invalidated claims . . . were taken by the federal government for public use . . . .”[xxx]

The Christy court began by discussing Zoltek Corp. v. United States, 4442 F.3d 1345 (2007), to determine whether a patent is property under the Takings Clause. In Zoltek, the circuit court rejected the idea that patent rights are property interests under the Fifth Amendment because property rights are created from state law and patents are created by federal law.[xxxi] The Zoltek court cited a case from 1894 and legislative history to support its holding that “Congress has not expressed any intent that patent rights may be the subject of Takings Clause claims. Since patent rights derive wholly from federal law, Congress is free to define those rights . . . as it sees fit.”[xxxii]

The court disagreed with Christy’s assertion that Oil States v. Greene’s Energy Group, 138 S.Ct. 1365 (2018), acknowledged that patents are property under the Takings Clause. Instead, the court asserted that the Supreme Court did not take a position on whether patents are property for Takings Clause purposes. Rather, the Court characterized patents as a “public franchise,” with “attributes of personal property.”[xxxiii] This led the Christy court to hold that patent rights are not cognizable property interests for Takings Clause purposes.[xxxiv]

The Christy opinion seems to go against established Supreme Court precedent. Specifically, the opinion in Oil States refers to patents as a “public franchise” in the sense that Congress has the power to allow judicial review outside of an Article III court. The Court in Oil States explicitly stated that their “decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”[xxxv]

Conclusion

With the contradiction between opinions in Celgene v. Peter and Christy v. United States, it is likely that the Supreme Court will need to answer this question in the near future to solve this circuit split. The Court will likely follow precedent in finding that patents are private property subject to the Takings Clause.

However, because of the similarities between the pre-AIA inter partes reexamination and the AIA implemented IPR, it is unlikely the Court will find a change of expectations. Without a change of expectations which rises to the level of disrupting reasonable investment-backed expectations, it is unlikely a taking under the Fifth Amendment will be found.

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[i] Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365 (2018).

[ii] Id. at 1373.

[iii] Id. at 1379.

[iv] U.S. Const. amend, V.

[v] Penn Cent. Transp. Co. v. New York City, 438 U.S. 104 (1978).

[vi] Id. at 124.

[vii] Estate of Graham v. Sotheby’s, Inc., 178 F.Supp. 3d 974 (2016).

[viii] Id. at 991.

[ix] Id. at 994.

[x] Id.

[xi] Id.

[xii] Id.

[xiii] Pro-Football, Inc. v. Blackhorse, 112 F.Supp. 3d 439, 469 (E.D. Va. 2015).

[xiv] Id. at 467.

[xv] Id. at 489.

[xvi] Ruckelshaus v. Monsanto, 467 U.S. 986 (1984).

[xvii] Id. at 1006-07.

[xviii] Id. at 1007.

[xix] Kafka v. Mont. Dep’t of Fish, Wildlife & Parks, 201 P.3d 8 (2007).

[xx] Id. at 20.

[xxi] Id. at 22.

[xxii] Id.

[xxiii] Celgene Corp. v. Peter, No. 2018-1171, 2019 U.S. App. LEXIS 22517 (Fed. Cir. July 30, 2019).

[xxiv] Id. at 26.

[xxv] Id.

[xxvi] Id. at 30.

[xxvii] Id. at 32.

[xxviii] Id. at 29.

[xxix] Christy v. United States, 141 Fed. Cl. 641, 650 (2019).

[xxx] Id. at 657.

[xxxi] Id. at 658.

[xxxii] Id. at 658.

[xxxiii] Id. at 659.

[xxxiv] Id. at 660.

[xxxv] Oil States Energy Servs., 138 S. Ct. at 1369.

By Alexandra Hodson

Although the title of this article may insinuate that we will be delving into SCOTUS’ recent decision in Iancu v. Brunetti,139 S. Ct. 2294 (2019)—a landmark case in which the Supreme Court invalidated the Lanham Act’s bar on federal registration of “scandalous” trademarks (a riveting matter, indeed!)—the focus of this discussion involves a different, but equally exciting, dirty word in the trademark realm: Infringement (gasp!).

The Scenario: Our Journey Begins with A Flood of Inspiration

Join me in fantasyland for a moment. Let’s pretend that, instead of being the successful, well-respected lawyer that you are, you’re an eager entrepreneur looking to disrupt an industry (you can be both if you want. #fantasyland). Recently, while you were bored on a flight,[i] you scrolled through your news feed and came upon a study concluding that 80% of marriages end over toilet seat disputes.[ii] This piqued your interest. You did more research and learned that germs under toilet lids are adapting into colonies of toxic super bugs resilient enough to survive a nuclear blast, and that, due to poor handwashing, these quiet killers are spreading at an alarming rate.

Being the innovator that you are, you decide to take the plunge and give that age-old toilet design an edgy facelift. So, you set out to create your modern toilet masterpiece. After months of trial and error, the product of your efforts is a veritable work of art. The seat is crafted from stainless steel[iii] to ward off germs. It has a warming mechanism and a germ-resistant non-stick coating for comfort. The lid is also stainless steel, and on it, you’ve integrated a light sensor. The sensor is connected to a mechanism in the hinge, so that when the light comes on in the restroom, the lid lifts up.

But that’s not all! You’ve also incorporated a button into the light switch that causes the toilet seat to retract when so desired.[iv] When the light is turned off, the seat, if retracted, returns to its original position, the lid closes, and the toilet flushes itself. Voila! You’ve basically saved the world. You dub this contraption the Light-n-Up Deluxe™ brand toilet[v] and begin advertising right away.

After several years pass, and you’ve spent many thousands of dollars on marketing and promotion, your pipe dreams are finally being realized. You have various small-scale operations selling your product and a potential contract with a big-name store in the works. It’s smooth sailing from here…or so you think.

The Trouble: A Rival Attempts to Unseat You from Your Throne

Out of the blue, you receive a nastygram in the mail. A company in the Midwest has revolutionized the toilet paper industry by manufacturing TP—as the kids call it—from clouds[vi] (yes, absurd, but doesn’t that sound nice?). It recently caught wind of you and claims that your use of Light-n-Up Deluxe™ for toilets is infringing its federally-registered trademark, Light’n Up Luxury®, for personal hygiene tissues.[vii] It demands that you cease and desist your use immediately, but graciously provides you with an opportunity to dump your existing product within “a reasonable time.” What are you to do?

First and foremost, don’t panic. Trademark infringement is a legal conclusion that involves consideration of multiple factors. Thus, just because you’ve been accused of infringement by some hufflepuffs four states away does not ipso facto mean that you are infringing their mark. On the other hand, don’t dismiss their warning—they may have a valid legal claim against you. An examination of the infringement factors will help you assess whether to fight or take flight[viii] in this situation.

Testing for Infringement

Trademark law serves the dual purpose of protecting consumers from unintentionally—key word here—buying low-quality knock-offs while simultaneously protecting trademark holders from losing profits and goodwill at the hand of imitators.[ix]

Typically, two things are considered when assessing whether trademark infringement has occurred: (1) is the allegedly infringed mark a valid trademark—e.g., is Light’n Up Luxury a true source indicator of their “personal hygiene tissues,” or is it merely descriptive of the product?; and (2) are consumers likely to be confused about the origin of the alleged infringer’s product—e.g., will consumers see the toilet with your mark on it and believe that it is sold by your TP-selling adversary?[x] This second prong is creatively termed the “likelihood of confusion” test.

Although different jurisdictions have adopted their own methods of analyzing whether consumers are likely to be confused, the various tests are comprised of multiple factors and essentially embody the same concepts. For an example, see the factors from the Ninth Circuit.

Factors from the Ninth Circuit
The test from the Ninth Circuit includes the following eight factors:

(1) strength of the mark;
(2) proximity of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) type of goods and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the mark;
(8) and likelihood of expansion of the product lines.[xi]

While “some factors—such as the similarity of the marks and whether the two companies are direct competitors—will always be important,”[xii] others are given more or less weight depending on the context.[xiii] For instance, where products compete in the market, similarity of the marks is key.[xiv] However, “[w]hen the goods are related, but not competitive, several other factors are added to the calculus.”[xv]

Applying the Test to Your Scenario

For this exercise, we’ll assume that the TP maker’s mark is valid.[xvi] As a result, we must analyze the likelihood of consumer confusion as to the source of your product. We’ll do so using the Ninth Circuit’s factors. Because the products do not compete (even in fantasyland), we need to address factors other than just similarity of the marks.

For purposes of brevity, let’s say that we already know that your respective marketing channels are distinct and that there’s no evidence of actual confusion that they are the source of your product. Their mark is likely suggestive or arbitrary[xvii] so let’s assume it’s relatively strong (boooo, hiss. Strong marks are afforded greater protection). Now, we’ll assess the remaining factors to determine the likelihood of confusion in this scenario, beginning with similarity of the marks.

“Similarity of the marks is tested on three levels: sight, sound, and meaning.”[xviii] In assessing this factor, the marks “must be considered as they are encountered in the marketplace.”[xix] As a refresher, the marks at issue here are Light-n-Up Deluxe™ in relation to toilets and Light’n Up Luxury® in relation to toilet paper.[xx] Although the meanings of the marks arguably differ, and they are most likely not encountered near each other in the marketplace, they look and sound very similar. As a result, this factor will likely weigh against you. Not great so far.

The next factor we’ll address is proximity of the goods. The more related the goods are, the more likely consumers will be confused as to source, especially if the products are used together.[xxi] TP and toilets are like biscuits and gravy—you don’t always get one with the other, but it’s good when you do. Thus, because the products are complementary, this factor will also likely weigh against you.

Regarding the type of goods and degree of customer care, the more important or expensive the goods are, the more discerning a purchaser will likely be in the brand they choose.[xxii] TP is generally a low-ticket item; however, if you had a dollar from every person who’s had an unfortunate encounter with subpar toilet paper, you wouldn’t be selling toilets for a living. Thus, considering that the price of your high-end commodes is roughly $1,000 (can you even put a price on saving the world, though?), and that choosing which TP to purchase is a crucial decision, we’ll conclude that consumers have heightened spidey senses regarding brand choice both when purchasing toilets and the corresponding tissue. As a result, confusion as to source is less likely, and this factor will likely weigh in your favor.

Next, let’s address your intent in selecting the mark. This one’s easy. You certainly did not mean to capitalize on the efforts of those hufflepuffs; you didn’t even know they existed! They’d be hard-pressed to prove otherwise. Thus, this factor will likely weigh in your favor as well. Two for two, now.

Although things are looking a bit bleak, you have an ace up your sleeve. “Even where the . . . factors weigh in favor of the movant, . . . territorial divisions may prevent confusion.”[xxiii] Thankfully, you operate only in the Northwest while they operate exclusively in the Midwest, so consumer confusion is likely non-existent. Bada bing bada boom, you’re good to go, right?! Not so fast. We need to analyze one more factor to determine whether you can continue in your Light-n-Up Deluxe™ toilet-selling bliss—the likelihood of expansion factor.

Under the likelihood of expansion factor, “a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.”[xxiv] “The question is whether the parties are likely to compete with a similar product in the same market.”[xxv] This factor is also relevant where products are closely related and one party plans to expand into the other’s geographic area, as confusion is more likely in that circumstance as well. Turning to your quandary: You’re not about to start selling toilet tissue, but if that big-name company you’re planning to sign a contract with will be selling your product in the Midwest, you may be in hot water. Lucky for you, they only run brick and mortar stores in your region and have the online presence of a luddite.

However, if those TP sellers can demonstrate imminent entry into your area or legitimate effort to break into the toilet game, your hopes and dreams may be flushed.[xxvi] Because we want your story to have a happy ending, let’s say that they admit they have no intention of moving into your market or selling your product, now or in the future. Phew—our adventure has ended! You can wipe the sweat from your brow and tell them to kindly put a lid on it.

The End: Getting a Handle on What We’ve Learned

What can we take away from this whirlwind experience? Perhaps most apparent from this scenario is that due diligence is key both when choosing a trademark and when deciding whether to expand into other markets once a trademark is established. It’s well worth the cost to conduct a thorough clearance search to avoid valid infringement claims or quashed hopes of expansion down the road.

Further, federal registration is highly recommended, as it provides perks such as the exclusive right to use the mark in connection with the goods, a presumption that the mark is valid, and the ability to license or assign the mark, among other benefits.

Finally, as in most circumstances, strength is a good thing. The more removed a mark is from describing the product (or service) the stronger it is, and the greater protection it will receive. Indeed, if a mark is too descriptive, it won’t qualify for trademark protection at all. Thus, never simply “call it as you see it” in the trademark realm—“pie” cannot be a trademark for pie, no matter how you slice it.

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[i] Hogwash, of course. A productive and zealous advocate such as yourself would never be bored in such a circumstance.

[ii] This statistic is complete fiction. However, a quick search for “marriage fights over toilet seat” is surprisingly fruitful and entertaining.

[iii] Polished steel, obviously, for aesthetic appeal. You’re not a robot.

[iv] It’s pliable…don’t ask questions.

[v] A little weak for a TM, if you ask me—you’re basically just describing what it does. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).

[vi] Not the dark and stormy kind—the light and fluffy variety in which one envisions hearts and teddy bears.

[vii] They’ve not only registered their mark, but they’re also the senior user. Thus, they have priority. Shucks!

[viii] Not literal flight—we’re not in Neverland, after all.

[ix] See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163–64 (1995). “[T]rademark law. . . quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Id. “At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Id. at 164.

[x] Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018).

[xi] Id. at 264 n.6 (quoting S. California Darts Ass’n v. Zaffina, 762 F.3d 921, 930 (9th Cir. 2014)). These are also known as the “Sleekcraft” factors, which were announced in AMF Inc., 599 F.2d at 351. Other circuits have adopted a test that closely resembles that of the Ninth Circuit. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 319 (3d Cir. 2015). Although courts rarely seem to stray from the listed factors in their analyses, the lists are non-exhaustive. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp., 793 F.3d at 319; Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011).

[xii] Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).

[xiii] Id. (“Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. . . . [I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.”). Further, “satisfaction of the likelihood-of-confusion standard requires a ‘probability of confusion, not a mere possibility.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009)).

[xiv] AMF Inc., 599 F.2d at 348.

[xv] Id. (footnote omitted).

[xvi] Notably, federal registration of a mark “is ‘prima facie evidence that the mark is . . . valid (i.e., protectable), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999)).

[xvii] We won’t wade through the specifics here, but see AMF Inc., 599 F.2d at 349, for what those terms entail.

[xviii] AMF Inc., 599 F.2d at 351.

[xix] Id.

[xx] The ™ symbol may be used on non-registered marks, while ® may only be used on federally-registered marks.

[xxi] Restatement (First) of Torts § 731 cmt. c. (1938). “[I]f the two kinds of goods are used together, such association is more expectable than when they are used separately for different purposes. Pancake flour and maple syrup are likely to be associated with one source more readily than pancake flour and women’s shoes.” Id.

[xxii] Brookfield Commc’ns, Inc., 174 F.3d at 1060.

[xxiii] Russell Rd. Food & Beverage, LLC v. Spencer, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *2 (D. Nev. Jan. 28, 2013).

[xxiv] AMF Inc., 599 F.2d at 354 (quoting Restatement (First) of Torts § 731(b) & cmt. c). “When goods are closely related, any expansion is likely to result in direct competition.” Id.

[xxv] Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993).

[xxvi] See Russell Rd. Food & Beverage, LLC, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *3. “Likelihood of entry denotes an immediate, impending entry of the federal registrant into the junior user’s territory.” Id. (quoting 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:33 (4th ed. 2012)). “For instance, a federal registrant may prove that it has leased premises and is ready to begin sales, or that it has licensed the mark for the disputed territory.” Id.

By David E. Kerrick

I first wanted to be a lawyer sometime between 1957 and 1966. It was during this time that I was introduced to perhaps the greatest lawyer of all time, Perry Mason. Perry came into our house once a week on our black and white TV screen and captured my imagination completely.

Perry was a sole practitioner but never worked alone. He was assisted by two side-kicks, his beautiful secretary, Della Street, and his suave investigator, Paul Drake. Between the two of them, the critical piece of evidence was always delivered to Perry in the courtroom just in the nick of time. Perry would then cross-examine a confession out of the witness or the real killer would sometimes emerge from the gallery in tears knowing they had been caught.

Perry’s nemesis was Hamilton Burger, the Los Angeles District Attorney. Mr. Burger was assisted by the LAPD and, in particular, one senior officer, Lieutenant Tragg. Burger and Tragg always had, at the beginning of the episode, an undisputable circumstantial case against Perry’s client. But by the end of the hour, Perry and his team would present, in open court, the exonerating evidence, which always, coincidentally, provided Burger and Tragg with the identity of the person they should have been prosecuting.

Perry and Burger were superb courtroom gladiators who picked their words perfectly and effortlessly. They were great masters of the spoken English language. They could each deliver a good zinger, but there was never any comment personally against the other lawyer. Always showing the utmost respect for one another and the Court.

Burger lost graciously every episode. You could tell, though, that just one time he would like to beat the famous Perry Mason. Burger’s consolation was that Perry would make justice happen. The wrongfully accused was released and Burger now had the real killer.

Perry and Della were single, I guess. There was never any mention of spouses or children.

I would imagine to myself, sometimes, that they would make a couple, but it never happened. Perry was absorbed in his work 24/7 and Della had to assist him at the same intensity. There was never time for romance.

There were lots of cocktails and cigarettes, and Paul Drake smoked more cigarettes than anyone I have ever seen. He made it look so very cool. He was always in a suit but somehow able to blend with the witnesses that he interviewed and get the information Perry needed.

There was a different villain for every episode, the real killer. Among the regular cast, however, Lieutenant Tragg was something of a villain. He was quite zealous in his work and was always convinced that Perry’s clients deserved the gallows. Until, of course, the truth was revealed in the end.

As practicing lawyers, we can learn many lessons from Perry Mason.

Law Office Management

It is best to just take one case at a time. The phone in Perry’s office does not ring all day long, never do people drop in wanting to know when their project will be done. He is able to fully focus, finding justice for one innocent accused per week.

Wellness

Perry is always cool and collected. And despite all of the pressure that seemingly must be hanging over him, he never needs a vacation. Perry works every day, every evening, and every weekend. I assume he even works on holidays. The secret to wellness, apparently, is to not have a spouse, children, a home life, or personal obligations outside the office.

Succession Planning

When you take one case at a time, you don’t need a succession plan because when you go down there won’t be a hundred loose ends left up in the air.

Civility

The key to Perry’s success at always remaining civil is that he never litigates cases with idiots. His trials are always against the next best lawyer in town, a zealous adversary with impeccable diction and professional demeanor. In the courtroom, it then becomes a competition to see who will be the most articulate and respectful advocate. Never let them see you sweat or vent anger.

Attorney’s Fees

I never saw Perry Mason extract a fee from any of his clients. It never occurred to me at my young age that Perry would need money to pay his office rent and his help. All of that must have just happened by osmosis. The lesson here is that if you work on significant matters for significant people, the money will take care of itself. Don’t trouble yourself with billable hours.

Lawyer Advertising

Perry never advertised. It seemed that everyone in Los Angeles would know when you find yourself wrongfully accused of homicide in the deepest possible legal hole, you know by reputation alone the man to see is Perry Mason – he’s your one shot at justice. When you win stunning victories in every front page case you take, people will find you.

When the Perry Mason series had its nine-year run on television, I was 6 to 15 years old. It is true that Perry Mason is a fictional lawyer, but the power of his courtroom performance and the important nature of his work started my first interest in law and lawyers. Later, I received other encouragement along the way from real lawyers, family members, and friends. But when I think back to the very beginning of my legal apprenticeship, it was under the tutelage of the greatest lawyer of all time, Perry Mason. Who wouldn’t want to be Perry Mason?

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By Carey A. Shoufler

Idaho was well represented at the recent National High School Mock Trial Championship in Athens, Georgia. Idaho’s courtroom artist, Mikayla Dougherty, placed third in the National Courtroom Artist Contest and Laina Wyrick from Idaho’s national mock trial team was one of only 10 students chosen as an Outstanding Witness. One note of interest: Mikayla’s award-winning drawing includes Laina on the witness stand.

Laina Wyrick

More than 140 students play witness roles at the National Mock Trial Championship and only 10 of those students receive an Outstanding Witness award, as determined by the judging panels over four rounds of competition. This year, Laina Wyrick from the Logos School in Moscow was one of those students.

Laina participated in mock trial for three years. During that time she took on both attorney and witness roles for her team and always played the role of expert witness. Her coach, Chris Schlect, indicated that she has a superior technical mind, which made her a formidable expert witness. Chris said, “She knew the case better than the opposing attorneys and could not be touched in cross-examination. She parried tough questions with refined distinctions while holding her ground when she needed to, all the while maintaining an air of scientific objectivity that is the hallmark of a strong expert witness.”

Laina recently graduated from Logos and will be attending Washington State University in the fall, where she will be studying physics and mathematics.

Mikayla Dougherty

Mikayla Dougherty from Lewiston High School represented Idaho in the National Courtroom Artist Contest. Her task was to observe trials with an eye toward finding the most interesting or newsworthy action and accurately depicting a chosen scene in a sketch that was completed during a two-hour round of competition. The National Courtroom Artist Contest was piloted in Boise in 2016 and follows a similar format to Idaho’s contest, with the top three entries acknowledged at an awards ceremony at the end of the competition weekend.

This was Mikayla’s first year participating as a courtroom artist. As someone who is interested in art, (in fact, Mikayla will begin her studies next year at University of Nevada Las Vegas in fine art, with a focus on drawing, painting, and printmaking) she was excited when she heard an announcement saying that one of the ways she could participate in mock trial was as a courtroom artist. She says it ended up being a really good experience for her. “I was so excited when they called my name. There were so many talented artists who participated and it’s was an honor to place in the top three.”

Mikayla traveled to Athens with her teacher and mock trial coach, Shannon VanBuren, who believes that courtroom art is a great opportunity for student-artists to improve their skills and present their work to others. “It has been such a wonderful experience to have the courtroom artists as part of the mock trial program. They bring a vibrant spirit to the competition and it has always been great seeing their work.” Ms. VanBuren was proud of what Mikayla accomplished at the national competition in Athens. “She had an opportunity to experience new ways to portray scenes and better her art.”

The Idaho Law Foundation and the Law Related Education Program congratulate Mikayla and Laina for their well-deserved awards. We are proud to count them among our mock trial participants and wish them success in their college careers.

For more information about Idaho’s Mock Trial Program, contact Carey Shoufler at cshoufler@isb.idaho.gov or visit the Mock Trial website at idahomocktrial.org.

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By Lindsey M. Welfley

An Idaho native through and through, Justice Walters was born in Rexburg in 1938 and graduated from Idaho Falls High School in 1957. The path to law school began early for Walters; since his junior high days and into high school, the suggestion to go into the legal profession was ever-present – classmates had made it known they would be attending law school, Walters’ ninth grade speech teacher encouraged the legal profession as a great choice, and on senior day before graduation local attorney Eugene Bush came to speak to the seniors interested in law. Walters recalled it was at that point “I knew I was headed to law school.” He transferred to the University of Idaho receiving his L.L.B. in 1963 and later his Juris Doctorate. Justice Walters considers himself a lifelong learner and his subsequent academic achievements are a testament to that quality – Walters received an L.L.M. degree from the University of Virginia and has spent his career attending courses at the University of Washington Law School, New York University Law School, the University of Kansas School of Law, and the National Judicial College in Reno, Nevada.

Justice Walters was admitted to the Idaho State Bar in 1963, alongside admission to the United States District Court for the District of Idaho and the Ninth Circuit Court of Appeals. Walters served as a law clerk to the Chief Justice of the Idaho Supreme Court from 1963 to 1964 and then as an attorney for the Idaho Senate during the 1965 legislative session. It was at this time that he entered the private practice in Boise, practicing from 1964 until 1977 when then-Governor John Evans appointed him to the bench as District Judge for the Fourth Judicial District. Walters served in that capacity from 1977 to 1982 and served as Administrative District Judge of the Fourth Judicial District from 1981 to 1982.

In the early 80s, the Idaho Court of Appeals was in its formative stage. When the Court was officially created in 1981 Governor Evans named Walters as one of the three original members. Walters was then selected by the Chief Justice of the Idaho Supreme Court to serve as Chief Appellate Judge and was reappointed to that position on the bench through seven two-year terms, from 1982 to 1997. By the late 90s, Walters had built a reputable tenure on the bench – in preparation for his next judicial appointment. In 1997, Walters was appointed by then-Governor Phil Batt as the 50^th Justice to serve on the Idaho Supreme Court. Walters was elected in May 1998 to a six-year term on the Court. He retired in July 2003 but continued to work for many years as a senior justice.

While holding onto his Idaho roots, Justice Walters’ career took him all over the country for leadership and educational opportunities alike. Walters was a member of the American Bar Association for over 25 years and served on the Board of Directors for both the American Judicature Society and the Idaho Law Foundation, Inc. Walters served as an officer and president of the Council of Chief Judges of the State Intermediate Courts of Appeals, and during his tenure developed lifelong friendships among judges at the trial court and appellate court levels nationwide. For over 20 years, both before and after retirement, Walters served as a visiting judge for the International Law and Technology Moot Court competition each fall at the John Marshall Law School in Chicago, Illinois – an experience he mentions was “great fun, meeting contacts from all over the country who are just true, great friends.”

Back in Idaho, Walters chaired the Idaho Supreme Court’s Criminal Rules Committee, the Jury Reform Committee, and the pattern Criminal Jury Instructions Committee. He was active in many community affairs, serving as President of the Vista Lions and of the Boise Jaycees and as an instructor for numerous continuing legal and judicial education programs with the Idaho State Bar and at the University of Idaho College of Law. During his tenure on the Idaho Supreme Court, the Court of Appeals and the District Court, Justice Walters participated in over 4,200 appeals. At the time of his retirement, he had been the author of 1,372 appellate opinions. Following his retirement in 2003, Justice Walters continued to serve in the judiciary as a Senior Judge, sitting as a judge pro tem with the Idaho Supreme Court and the Idaho Court of Appeals, continuing to write opinions for both courts and serving as an Appellate Settlement Conference mediator and Idaho State Bar discipline investigator.

Aside from strictly law-related volunteer commitments, after retirement, Walters served for 10 years as a trustee with the Idaho State Historical Society and in 2018 received the Society’s Esto Perpetua Award for his contributions to the preservation of Idaho history. He volunteers as a tour guide at the Old Idaho Penitentiary and as a docent at the Idaho State Historical Museum.

In 2015, Walters received the prestigious George G. Granata, Jr. Professionalism Award from the Idaho Judiciary for his contributions and service as a motivating and inspirational role model to his colleagues on the bench. He and his wife, Harriet, have been married for 60 years and have three children: Craig, Robyn and Scott, seven grandchildren and three great-grandchildren, expecting another in August 2019.

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By Lindsey M. Welfley

William (Bill) Gigray is a Caldwell native and has been a longstanding positive force in his local community for decades. Bill grew up around the legal profession; his late father, William Gigray, Jr., was a member of the Idaho State Bar for over 60 years and instilled the importance of family, faith, community service and giving back. After Bill graduated from Caldwell High School, he followed in his father’s footsteps and decided a career in the legal profession was the right fit for him.

Bill is a two-time Vandal, having attended the University of Idaho for both his undergraduate and graduate degrees. Bill received his B.A. from the University of Idaho in 1969. Immediately thereafter, he attended the University of Idaho College of Law. Bill met his wife during their time at the University of Idaho together and in 1971, Bill married Barbara Anderson. Bill graduated with his Juris Doctorate one year later, in 1972, and together Bill and Barbara moved from Moscow to Boise, then Portland before finally settling in Caldwell. Bill was admitted to the Idaho State Bar in 1973 and is also admitted to the Federal Courts, United States Supreme Court, and the Ninth Circuit Court of Appeals.

Upon graduation from law school and admittance to the Bar, Bill began in private practice in Caldwell with the Gigray Miller firm until 1990 and subsequently continuing as a shareholder of the law firm of White Peterson in Nampa. He practices municipal law, business law, estate planning, governmental law, probate, and real estate. As part of his distinguished career, Bill has served in several leadership capacities both Bar-related and otherwise. Bill served as Third District Bar Association President early on in his career, from 1978 through 1979. He held a position on the Idaho Trial Lawyers Association Board of Directors from 1998 through 2003, serving as the President of ITLA from 2001 through 2002.

Additionally, Bill is a member of several reputable organizations and committees. In Idaho, he is a member of both the Idaho Supreme Court Civil Rules Committee and the Idaho Supreme Court Civil Rules Ad Hoc Committee. On the national scale, Bill is a member of Trial Lawyers of America and the National School Boards Associations’ Council of School Attorneys.

In 2006, Bill was awarded the Idaho State Bar Professionalism Award for his admirable embodiment of professional courtesy throughout the duration of his career. When interviewed for that award over a decade ago, Bill expressed his belief that professionalism as a virtue is grounded in respect for each other and for the rule of law that he and his legal peers serve. Those sentiments, and his beliefs, have not changed. He states: “How we conduct ourselves in this practice toward our clients, with the people we deal with on behalf of our clients and with each other matters a great deal.” He goes on to say, “Without professionalism, there is no profession.”

Bill is equally committed to community engagement outside the legal world and is heavily involved in both his church and civic groups. Over the years he has served as president of the Jaycees, Optimist Club, Greenbelt Civic League of Caldwell, Inc., the Caldwell Foundation for Education Opportunity, Inc., the Foundation for Ada/Canyon Trails Systems, Inc. (FACTS), and is currently the Moderator of the Permanent Judicial Commission of the Synod of the Pacific of the Presbyterian Church, U.S.A. He has spent countless hours doing school board work and municipal work; both of which have made marked positive impacts on the communities in which he’s worked.

Just as Bill’s father left a legacy by way of another generation of Gigray attorneys, so too has Bill. He and his late wife, Barbara, have three children; Anne, William IV, and Mary. Their daughter, Mary Gigray of Caldwell, is also an Idaho attorney. Mary continues the Gigray legacy in the legal profession and is a public defender in Canyon County. She is known by her colleagues as a noteworthy lawyer and another great member of her community and of the Bar – virtues instilled by her father. After Bill’s wife passed away, she relocated to Canyon County.

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By Lindsey M. Welfley

Over nearly 40 years in law practice, Jeffrey Fereday has fashioned a distinguished career in water rights, natural resources, and environmental law. Growing up in Boise, he developed an appreciation for public lands and often experienced the out of doors while hunting, fishing, and backpacking. These interests helped lead him into his areas of legal specialty later on. Fereday graduated from Borah High School in 1968 and attended Columbia University in New York City, graduating in 1972.

During his college years and for a while after, Jeff supported himself by fighting wildland fires for the Forest Service and the Bureau of Land Management. For six years he was a smokejumper, first in Idaho and later in Alaska. From 1973 to 1977 Fereday worked for the Idaho Conservation League, beginning as a volunteer and ending up as its Executive Director. He entered Lewis and Clark Law School in Portland, Oregon in 1977, attracted there by the law school’s then-fledgling environmental law program. At Lewis and Clark, Jeff was associate editor of the law review, Environmental Law, the nation’s first law review devoted to this subject. Years later, the Law School recognized Jeff as a Distinguished Environmental Law graduate.

In 1980, Fereday graduated from Lewis and Clark Law School, was admitted to the Washington State Bar, and took his first job in Washington D.C. in the Honors Program at the Solicitor’s Office at the Department of the Interior. The following year, he married Kay Hummel, also a Boise native, and was admitted to the Idaho State Bar. In 1981, due to the change in administration after the 1980 election, the Honors Program was eliminated, leaving Fereday and his 13 fellow program attorneys without employment. The young lawyers sued, claiming the new administration violated Federal Employment Rules, in a case entitled Fereday et al v. Watt. Although the suit failed, Interior’s former Solicitor, Clyde Martz, offered Jeff and one of his fellow plaintiffs a new opportunity as attorneys at his Denver firm, Davis, Graham & Stubbs. It was at Davis Graham where Jeff built his foundation in water law, representing water conservation districts, farmers, and cities in water rights transfers, mitigation plans, and in disputes between ground and surface water users. Jeff maintains lasting friendships with several colleagues from the Colorado water bar.

In 1985, Jeff and Kay moved back to their hometown after Jeff was offered the opportunity to start a water rights and environmental practice at Givens Pursley, then primarily a boutique real estate firm run by Ken Pursley, one of Jeff’s early mentors at the Idaho Conservation League. Jeff’s efforts to build that practice eventually led him back to his Colorado colleagues in search of legal talent. Both Mike Creamer and Chris Meyer joined Givens Pursley through those efforts. Fereday was made partner in 1987. He and Kay welcomed their first son, Wyatt, in 1988, followed by their second son, Charlie, in 1992.

Fereday has argued several cases in the Idaho Supreme Court, worked on cases which resulted in landmark precedents for water rights in Idaho and has served as Arbitrator in disputes before the United States Supreme Court related to apportionment of the waters of the Republican River, an interstate waterway. One of his more rewarding projects, Fereday recalled, was his work, pro bono, that resulted in the preservation of Box Canyon in the Hagerman Valley. On the other side of the environmental divide, Fereday singles out a successful defense of a mining claim in wilderness, in litigation that established new federal law pertaining to the Equal Access to Justice Act. That controversial mining claim was ultimately patented and then promptly purchased by the Forest Service, another result of Fereday’s efforts in this case.

Fereday cites several professional relationships as having a marked impact on his career. Bill Hillhouse, Greg Hobbs, and the late Clyde Martz were Fereday’s primary mentors at Davis Graham & Stubbs. During his time at Interior, Fereday cites John Leshy as a significant influence. As to his colleagues in Idaho, Fereday singles out Michael Creamer, Chris Meyer, Deb Nelson and Michael Lawrence, all attorneys in practice at Givens Pursley, as trusted and valuable colleagues in his areas of practice. “I have had the pleasure of working with some brilliant lawyers.”

Outside of the legal profession, Fereday says his main passion is playing guitar. “It’s the best kind of meditation,” says Fereday. Fereday also enjoys Nordic skiing with his wife and sons – both of whom have been national-level competitors – and trekking through Idaho’s great outdoors, whether hiking, road biking, or mountain biking.

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By Lindsey M. Welfley

Robert Chastain grew up in Boise and is a tried and true Idahoan. Chastain attended Borah High School and played baseball before attending Boise State University for his undergraduate education. Contemplating his next steps after receiving his undergrad from Boise State, Chastain took his father’s advice to find a career that would provide him with a “license to eat.” He decided between two of the more common options at the time – school teacher, or lawyer – choosing the latter. Chastain relocated to Utah to attend law school at the University of Utah S.J. Quinney College of Law.

During law school, Chastain was hired as an intern by Greg Bower, former Ada County Prosecutor. Chastain cites Greg as one of his mentors and role models: “Greg taught me the importance of going to work and showing up on time […] he gave me room to make my own decisions, to grow, to both succeed and fail.” Chastain received his juris doctorate in 1981 and returned to Idaho immediately thereafter for admission into the Idaho State Bar that same year. Chastain met his wife, Marilyn (also an Idaho attorney), a few years later in 1983 while she was working at the Boise City Attorney’s Office. They were married in 2000.

After relocating to Idaho post-law school, Chastain began working in the Ada County Prosecutor’s Office. He prides himself in his time as a prosecutor as it gave him the foundation on which he would later build a career in criminal defense. Chastain worked his way through the ranks and became a felony prosecutor by the time he left the Prosecutor’s Office. After his time at the Prosecutor’s Office, Chastain briefly worked for a small firm. He quickly determined that he did not enjoy civil law quite like he had enjoyed the criminal side of things. At that point, he ventured into opening his own solo practice, in which he has been practicing ever since.

Early on in his career, Chastain was introduced to another of his trusted mentors. Larry Scott was a public defender while Chastain worked at the Prosecutor’s Office and Chastain recalls one of the more important lessons he learned from Larry: “You knew when you talked to Larry that his word was gold. He said something was going to happen or he was going to do something and you could go to the bank on it.” This lesson on the value of being true to your word stuck with Chastain throughout his career and is a quality he admires in many other attorneys and colleagues. He says, “It’s a heck of a lot easier to practice law when you trust your opposition.”

In addition to mentors within the profession, Chastain speaks highly of his late father’s influence on his life. “My father was and always has been a huge influence on me. He instilled the idea that you’re going to have to work and support yourself – and he was right. Not a day goes by I don’t think about him.”

Chastain practices criminal defense at his small Boise firm Chastain Law Offices in downtown Boise. Over the course of his career, he has tried several high profile murder cases and is one of the few Idaho attorneys who is death penalty certified. Chastain has worked closely with attorney Deborah Kristal throughout his career and they have tried several controversial murder cases together.

Those who have known Chastain over the years admire him for his quiet control and ability to get along with everyone he deals with. A longtime friend and colleague of Chastain’s, Fourth District Magistrate Judge Michael Oths mentions that, in a legal genre that doesn’t get the recognition it deserves, Chastain is widely regarded as one of the best criminal defense attorneys around while consistently staying properly humble. Being held in such high regard by his friends and colleagues is just one measure of Chastain’s high reputation.

Outside of the office, Chastain enjoys “playing the horses” and has traveled around the country for several thoroughbred races and events. Chastain does his best to stay young, mentioning, “I still play old-guy softball with Brad Andrews and Mike Oths. We have a good time and I’ve done that for about 35 years.” He and Marilyn have kept to their roots and live in Boise; they have a black Labrador named Roz.

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