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Many arbitration agreements adopt the American Arbitration Association’s rules, especially the AAA’s Commercial Arbitration Rules. In those rules, Rule R-7(a) explicitly gives the arbitrator “the power to rule on his or her own jurisdiction, including any objections with respect to the existence, scope, or validity of the arbitration agreement or to the arbitrability of any claim or counterclaim.” (Emphasis added.)

The likely upshot of a unanimous decision of the U.S. Supreme Court is that, if parties adopt rules such as AAA Rule R-7, and those rules “clear[ly] and un­mis­tak­abl[y]” delegate arbitrability determinations to the arbitrator, then all demands for arbitration must be run through the arbitration process at least to determine arbitrability — even if a particular demand for arb­i­tra­tion seems clearly excluded by the language of the arbitration provision it­self. See Henry Schein, Inc. v. Archer & White Sales, Inc., No. 17-1272 (U.S. Jan. 8, 2018), reversing 878 F.3d 488 (5th Cir. 2017).

In Henry Schein, the arbitration provision in the contract expressly ex­clu­ded demands for injunctive relief:

Disputes. This Agreement shall be governed by the laws of the State of North Carolina. Any dispute arising under or related to this Agreement (except for actions seeking injunctive relief and disputes related to trademarks, trade secrets, or other intellectual property of [Schein]), shall be resolved by binding arbitration in accordance with the arbitration rules of the American Arbitration Association [(AAA)].

Id., slip op. at 2 (citation omitted, italics added).

One of the parties sued the other in court, demanding injunctive relief (among other things) The defendant moved to compel arbitration.

A magistrate judge ruled that the arbitration provision’s incorporation of AAA rules had the effect of clearly delegating the arbitrability decision to the arb­i­tra­tor. The district judge reversed, however, and the Fifth Circuit affirmed the district judge’s ruling, on the basis that the injunctive relief carve-out in the arbitration provision made the arbitration demand “wholly groundless.” See 878 F.3d at 491.

But then, in an opinion by Justice Kavanaugh, the Supreme Court unan­i­mous­ly vacated and remanded the Fifth Circuit’s decision. While the Court ex­pressed no view whether the contract actually did delegate arbitrability de­ter­min­a­tions to the arbitrator, see slip op. at 8, it held that the “wholly ground­less” ex­cep­tion cited by the Fifth Circuit was inconsistent with the Federal Arbi­tra­tion Act. See id at 5.

(The Court was untroubled by the prospect of the case being ping-ponged between arbitration and litigation. See id. at 7.)

Drafting lesson: If your arbitration provision adopts rules that delegate arb­i­tra­bil­i­ty de­ci­sions to the arbitrator, then you might want to consider whether that’s what you want — and if not, then stating explicitly in your arbitration provision that the court, not an arbi­tra­tor, is to determine whether particular claims are arbitrable.


Contract management can be expensive, but lack of it can be even more costly.  General Nutrition Centers (GNC) was given a painful lesson in this truth to the tune of a $1.1 million jury verdict — which could have been much higher.

In Olive v. General Nutrition Cen­ters, Inc., No. B279490 (Cal. App. Dec. 27, 2018), the plaintiff, a model and actor, appealed the damage award for being too low; the appeals court affirmed the judgment below, and also affirmed denial of the plaintiff’s claim for attorney fees. The case arose because GNC’s outside photographic agency shot photos of some 16 models that GNC used in an ad cam­paign. Among the models was one Jason Olive, who was paid $4,000 for a three-hour photo shoot and for the right to use his likeness for one year (a “model release”), with GNC also having an option to extend the model release for one additional year.

In a classic example of things falling through the crack, GNC did not keep track of when the model releases expired; neither did GNC’s photo­graphic agency, which by then was no longer doing work for GNC.  Con­se­quent­ly, when GNC’s ads continued to feature the likenesses of sev­er­al of the models, including Mr. Olive, it was for longer than the agreed period covered by the model releases.

GNC settled with the other models for between $5,000 and $32,000 each in exchange for five-year extensions of their model releases; Mr. Olive, how­ever, held out for more. Rejecting an eventual GNC offer of $150,000, he sued GNC, under a California statute, for mis­ap­pro­pri­­a­tion of his likeness.

GNC admitted liability; the lawsuit was about the proper measure of dam­ages. Mr. Olive initially asked for some $55 million, but the jury awarded him a total of $1.1 million. This was far less than what Mr. Olive had sought, but it was still far more than what GNC had paid any of the other models — and far less than GNC might have paid if it had insisted on the perpetual right to use the models’ likenesses, as pointed out by Santa Clara Law professor Eric Goldman, who explains the case in detail at his Technology and Marketing Law blog.


In a case involving a software sale gone wrong, the federal district court in Min­ne­sota provides a nice recap of how courts analyze whether or not a given soft­ware-license transaction is governed by Article 2 of the Uniform Com­mer­cial Code (which covers sales of goods):


Article 2 of the UCC applies to “transactions in goods.”  Under Illinois law, whether a sale of software constitutes a “transactions in goods” depends on various considerations.

One consideration is the rights conferred to the purchaser by the Agreement. A transaction that nominally involves a mere license to use software will be considered a sale under the UCC if it involves a single payment giving the buyer an unlimited period in which it has a right to possession.

Another consideration is whether the components of the software package were developed from scratch.  Off-the-rack software is almost always a good. Customization or modification of a standard software product is generally considered the manufacture of a good rather than a service.

Additionally, contracts for the sale of software often include provisions of services, such as training and technical support. Where there is a mixed contract for goods and services, there is a transaction in goods only if the contract is predominantly for goods and incidentally for services.  Article 2 applies to sales of software where the ancillary services offered are similar to those generally accompanying sales of computer systems, such as installation, training, and technical support.

Here, the Agreement is the sale of software that has been customized for Prairie River’s business.

  • First, Prairie River purchased a perpetual enterprise license, meaning that Prairie River has a non-transferable right and license to perpetually access and use the Software.
  • Second, the Complaint and the Agreement suggest that the Software is a standard Procura product. Customization of the Software is considered the manufacture of the Software in this case.
  • Third, the ancillary services provided in the Agreement are the sorts of services — installation, training, and technical support — expected to accompany a sale of software.

Accordingly, the Court concludes that the Agreement governs a sale of goods subject to Article 2 of the UCC.


Prairie River Home Care, Inc. v. Procura, LLC, No. 17-5121 (D. Minn. July 30, 2018) (denying defendant’s motion to dismiss) (cleaned up, bullets added).

Hat tip:  Richard Raysman and Elliot Magruder, Potentially Unconscionable Warranty Precludes Licensor’s Motion To Dismiss (Mondaq.com Oct. 5, 2018).


If your client is going to contractually commit to using commercially rea­son­able ef­forts to do something — and if your client expects that obligation to require some­thing less than “all reasonable efforts” — then you’ll want to make that expectation clear in the contract itself:  In its October 1 decision in Akorn, Inc. v. Fresenius Kabi AG, No. 2018–0300–JTL, slip op. (Del. Ch. Oct. 1, 2018), the influential Dela­ware chancery court noted the chasm be­tween the meaning of that term to transactional lawyers versus to courts:

  • “Deal practitioners have a general sense of a hierarchy of efforts clauses,” said the court; this hierarchy ranges from good faith efforts at the low end, through reasonable efforts, commercially reasonable effortsreasonable best efforts, and finally best efforts. See id., slip op. at 213-14 (footnote omitted).
  • On the other hand (the court continued): “Commentators who have sur­veyed the case law find little support for the distinctions that transactional lawyers draw.” Id., slip op. at 214 (footnote omitted).

Seemingly disregarding practitioners’ views, the chancery court continued the Delaware trend —which that court itself started — of treating com­mer­­ci­al­ly rea­sonable efforts as requiring the obligated party to take “all rea­son­able steps”:

Under the Merger Agreement, Akorn was obligated to use commercially rea­sonable efforts to operate in the ordinary course of business in all mat­erial respects. As interpreted by the Delaware Supreme Court in Williams, this standard required that Akorn “take all reasonable steps” to main­tain its operations in the ordinary course of business. The record establishes that Akorn breached that obligation in multiple ways.

Akorn, Inc., slip op. at 216 (emphasis added), following Williams Cos. v. Ener­gy Transfer Equity, L.P., 159 A.3d 264 (Del. 2017). In Williams Cos, the state su­preme court had followed (see 159 A.3d at 272) the chancery court’s own decision in Hexion Specialty Chem., Inc. v. Huntsman Corp., 965 A.2d 715, 755 (Del. Ch. 2008). So in one sense, the Akorn decision com­ple­ted a round trip from the chancery court to the supreme court and back again.

These Delaware precedents make it important for contract drafters to consider defining what they mean by commercially reasonable efforts, as I argued in more detail here and in the Texas Bar Journ­al, as well as in the California bar’s Business Law News.

(To give credit where due:  Vice Chancellor Laster’s Axiom opinion, spanning 247 (!) pages with over 110 pages of factual narrative and 866 (!) foot­notes, provides an impressive survey of scholar­ship about Material Adverse Change clauses and Material Adverse Effect [or Event] definitions. Axiomsupra, text accompanying nn.521-68. )


Massachusetts non-compete restrictions take effect

See this analysis at the Trading Secrets blog by Dawn Mertineit, Erik Weibust and Katherine Perrelli.

In case you wondered what notwithstanding really meant ….

In an October 1 decision, the Seventh Circuit provided helpful citations sup­port­ing the common understanding of the term notwithstanding as meaning:

… without prevention or obstruction from or by; in spite of, despite, and it implies the presence of an obstacle … notwithstanding, in essence wipes out anything to the contrary[.]

Soarus L.L.C. v. Olson Mat’ls Int’l Corp., No. 18-1144, slip op. at 5 (7th Cir. Oct. 1, 2018) (cleaned up), citing, inter alia, N.L.R.B. v. SW General, Inc., 137 S. Ct. 929, 939 (2017) (in the context of interpreting a statute).

What it takes for a forum selection provision to be exclusive

A recap from the U.S. district court in Oregon:

 If the text of the forum selection clause is mandatory, courts must enforce the clause, absent exceptional circumstances, and venue will lie in the chosen forum only.

To be mandatory, a forum selection clause must contain wording suggest­ing that the parties intended to designate the specified forum as the ex­clu­sive forum. When the forum selection clause specifies only one permissible jurisdiction, however, the clause [i.e., exclusivity] will generally not be en­forced without some further language indicating the parties’ intent to make jur­isdiction exclusive.

In other words, a forum selection clause is permissive when it merely shows that the parties have consented to jurisdiction in a particular locale, but does not preclude litigation elsewhere.

Summit Foods, Inc. v. Viking Packaging Technologies, Inc.,  No. 3:18-cv-1470-SI, slip op. at 4 (D. Ore. Sept. 28, 2018) (denying defendant’s motion to dis­miss or transfer venue) (cleaned up).

The forum-selection provision in question was the following:

The courts of Sheboygan County Wisconsin will have jurisdiction to en­ter­tain and determine all disputes and claims both at law and in equity arising out of or in any way connected with the validity, existence, enforceability, con­­struc­tion, breach or alleged, threatened or anticipated breach of this Con­tract, to which the parties admit to having personal jurisdiction over them.

Id. at 6. The court held that this language didn’t go far enough to require that litigation be held in Sheboygan County.


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