| WTO AB Addresses U.S.
Statute Affecting Confiscated Trademarks |
1/2. A World Trade
Organization (WTO) Appellate Body (AB) issued a report
[108 pages in PDF] titled "United States -- Section 211
Omnibus Appropriations Act of 1998". The report found
that portions of Section 211, which is directed at trademarks
confiscated by Castro's Cuban communists, violates WTO rules.
However, AB report found that WTO members may protect
trademarks by establishing their own trademark ownership
criteria that take into consideration uncompensated takings.
Section 211. The U.S. Congress enacted the Omnibus
Appropriations Act of 1998 at the tail end of the 105th
Congress. It was a massive bill containing appropriations for
a wide range of agencies. It also contained a large number of
non appropriations items, such as the original Internet Tax
Freedom Act, and Section 211, which is the subject of this WTO
AB report.
Section 211 provides, in part, that "No U.S. court shall
recognize, enforce or otherwise validate any assertion of
treaty rights by a designated national or its successor- in-
interest under sections 44 (b) or (e) of the Trademark Act of
1946 (15 U.S.C. 1126 (b) or (e)) for a mark, trade name, or
commercial name that is the same as or substantially similar
to a mark, trade name, or commercial name that was used in
connection with a business or assets that were confiscated
unless the original owner of such mark, trade name, or
commercial name, or the bona fide successor- in- interest has
expressly consented." It further provides that "The
term ``designated national´´ has the meaning given such term
in section 515.305 of title 31, Code of Federal Regulations,
as in effect on September 9, 1998, and includes a national of
any foreign country who is a successor- in- interest to a
designated national." This regulation, in turn,
identifies post 1959 Cuba. Hence, the statute applies to
trademarks confiscated by Castro's communist government after
its take over of Cuba.
Havana Club Rum. The present proceedings resulted from
a dispute between claimants to the use of the mark
"Havana Club" in the U.S. in connection with the
sale of rum. Bacardi Ltd, a Bermuda corporation, claims that
it acquired the mark from the original owner. Pernod Ricard, a
French company, claims that it acquired the mark from Castro's
communist government.
Earlier Proceedings. The European Communities initiated
a WTO proceeding in which they alleged that Section 211 is
inconsistent with the obligations of the U.S. under the
Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS Agreement). A WTO panel ruled previously. Both
sides appealed that ruling.
AB Report. The WTO Appellate Body wrote that Section
211 violates WTO rules. It is contrary to the national
treatment and most favored nation obligations under WTO rules.
However, the AB added that "this ruling is not a judgment
on confiscation as that term is defined in Section 211. The
validity of the expropriation of intellectual or any other
property rights without compensation by a WTO Member within
its own territory is not before us. Nor do we express any
view, nor are we required to express any view in this appeal,
on whether a Member of the WTO should, or should not,
recognize in its own territory trademarks, trade names, or any
other rights relating to any intellectual or other property
rights that may have been expropriated or otherwise
confiscated in other territories. ... However, where a WTO
Member chooses not to recognize intellectual property rights
in its own territory relating to a confiscation of rights in
another territory, a measure resulting from and implementing
that choice must, if it affects other WTO Members, comply with
the TRIPS Agreement, by which all WTO Members are voluntarily
bound. In such a measure, that WTO Member must accord "no
less favourable treatment" to the nationals of all other
WTO Members than it accords to its own nationals, and must
grant to the nationals of all other WTO Members ``any
advantage, favour, privilege or immunity´´ granted to any
other WTO Member.
Both the USTR and EU issued press releases claiming victory.
See, USTR
release and EU
release. |
|
|
| Taiwan Joins WTO |
| 1/1. Taiwan became the 144th member of the World Trade Organization (WTO).
Secretary of Commerce Don Evans stated in a release
that "I congratulate Taiwan on this historic achievement.
Taiwan's accession to the WTO will further open Taiwan's
market to American exports of industrial goods and services,
including key telecommunications and financial services
sectors." |
|
|
|
| BXA Amends Control List
Regarding Computer Electronics |
| 1/3. The Bureau of Export
Administration (BXA) published a notice
in the Federal Register that it has amended its rules
regarding export of dual use items. These are changes to the
Commerce Control List (CCL), which identifies items subject to
Department of Commerce export controls. There are numerous
changes regarding microprocessors and other computer
components and technologies. These rule changes are effective
January 3, 2002. See, Federal Register, January 3, 2002, Vol.
67, No. 2, at Pages 457 - 478. |
|
|
| USPTO Revises Rules of
Practice Re PCT Applications |
1/4. The U.S. Patent and
Trademark Office (USPTO) published a notice
in the Federal Register that it has adopted a rule revising
its rules of practice relating to applications filed under the
Patent Cooperation Treaty (PCT).
The notice states that last year "the PCT Assembly
adopted an amendment to the PCT Article 22 ... to change its
time limit for entering the national stage of twenty months
from the priority date of the PCT application to a time limit
of thirty months from the priority date of the PCT
application."
The notice continues that "With this amendment to PCT
Article 22, the time limit under PCT Article 22 and the time
limit under PCT Article 39 will be the same: thirty months
from the priority date of the PCT application. Thus, the PCT
will provide a single time period for national stage
commencement for PCT applications, regardless of whether the
applicant filed a Demand for an international preliminary
examination. Therefore, applicants will no longer be required
to file a Demand for an international preliminary examination
under PCT Article 31 (and pay the international preliminary
examination fees under 37 CFR 1.482) in order to delay
commencement of the national stage until thirty months from
the priority date. An applicant's decision whether to file a
Demand under PCT Article 31 may be based upon whether the
applicant wants an international preliminary examination
report, and not upon whether the applicant wants to delay
commencement of the national stage until thirty months from
the priority date."
This rule is effective April 1, 2002. See, Federal Register,
January 4, 2002, Vol. 67, No. 3, at Pages 520 - 524. |
|
|
| People and Appointments |
1/3. The U.S. Telecom
Association (USTA), a Washington DC based group that
represents incumbent local exchange carriers, announced
expanded roles for its three VPs who oversee legislative,
policy and regulatory efforts. Michael Rubin will
continue to lead the lobbying efforts, with the title of VP,
Government Affairs and Chief Lobbyist. David Cohen will
manage the newly created policy division as VP, Policy. Lawrence
Sarjeant will oversee the law department as VP, Law and
General Counsel. The USTA is lobbying for passage of HR
1542, the Tauzin Dingell bill. See, USTA
release.
1/2. Robert Borchardt will be the 2002 Chairman of the
Board of Governors of the Electronic
Industries Alliance (EIA). Borchardt is Ch/CEO/P of Recoton Corporation, a
producer and marketer of consumer electronic accessories, home
speakers and car audio products and video game products. See, EIA
release.
1/2. Motorola announced
that Edward Breen is P/CEO, effective January 1, 2002,
and has been elected to the Board of Directors. He will report
to Christopher Galvin, the Ch/CEO. See, Motorola
release.
1/3. California Governor Gray Davis announced the appointment
of Jesse Szeto as Assistant Secretary of the Division
of Science, Technology and Innovation, of the Technology,
Trade and Commerce Agency. |
|
|
| FCC Reallocates Small
Spectrum Blocks |
| 12/28. The FCC announced
that it adopted an order reallocating 27 megahertz of spectrum
from federal government use to other uses. The order
reallocates seven small spectrum blocks: the 216-220 MHz,
1390-1395 MHz, 1427- 1429 MHz, 1429-1432 MHz, 1432-1435 MHz,
1670-1675 MHz, and 2385-2390 MHz bands. This is ET Docket No.
00-221. See, FCC
release. |
|
|
|
| Friday, Jan 4 |
10:00 AM - 1:00 PM. The FCC's Network
Reliability and Interoperability Council will hold a meeting.
See, notice
in Federal Register, November 13, 2001, Vol. 66, No. 219, at
Page 56823. Location: FCC, Commission Meeting Room, Room
TW-C305, 445 12th St. SW., Washington DC.
12:15 PM. The Federal
Communications Bar Association's Wireless
Telecommunications Practice Committee will host a luncheon.
The speakers will be advisors to the FCC Commissioners: Peter
Tenhula (Powell), Bryan Tramont (Abernathy), Paul Margie (Copps),
and Monica Desai (Martin). The price to attend is $15.00. RSVP
to Wendy Parish at wendy@fcba.org.
Location: Sidley Austin Brown
& Wood, 1501 K Street, NW Conference Room 6-E,
Washington DC.
Deadline to submit oppositions and comments to the FCC in
response to Cingular Wireless', Nextel's, and Verizon
Wireless' petitions for reconsideration of certain provisions
of the FCC's October 12 orders addressing and conditionally
approving requests for waivers and approval of revised
deployment plans for wireless Enhanced 911 (E911) services.
See, FCC
Notice. (CC Docket No. 94-102.) |
|
|
| Monday, Jan 7 |
9:15 AM. The U.S.
District Court (DC) will hold a hearing on Microsoft' motion
to amend the scheduling order (to delay the trial date) in the
government antitrust lawsuit. Nine of the state plaintiffs
have not joined in the settlement agreement negotiated by
Microsoft, the Department of Justice, and the other state
plaintiffs. See, order [PDF].
This is Civil Action No. 98-1233 (CKK), Judge Colleen Kotelly
presiding.
10:00 AM. The U.S. Court of
Appeals (FedCir) will hear oral argument in Bowers v.
Baystate Technologies, No. 01-1108. Location: Courtroom
402, 717 Madison Place, NW.
Deadline to resubmit comments with the U.S. Department of
Justice (DOJ) regarding the proposed settlement in the
antitrust case titled U.S. v. 3d Systems Corp. and DTM Corp.
(D.C. No. 1:01CV01237). The original comment period closed on
November 26, 2001. However, because of disruption of the U.S.
Mail in Washington DC, the DOJ requests that comments be
resubmitted. The deadline is 15 after publication of a notice
in the Federal Register on December 21, 2001, which would fall
on Saturday, January 5. See, notice
in Federal Register. |
|
|
| Tuesday, Jan 8 |
|
The Supreme
Court will hear oral argument in Festo Corporation v.
Shoketsu Kinzoku Koygo Kabushiki, No. 00-1543, a case
regarding the doctrine of equivalents in patent law. |
|
|
| Wednesday, Jan 9 |
10:00 AM. The U.S. Court of
Appeals (FedCir) will hear oral argument in Fantasy
Sports v. Sportsline.com, No. 01-1217, an appeal from the
U.S. District Court (EDVa). This is a patent infringement case
regarding U.S.
Patent 4,918,603, titled "Computerized Statistical
Football Game". (D.C. No. 99-CV-2131103; opinion at F.
Supp. 2d 886 (E.D.Va. 2000).) Location: Courtroom 402, 717
Madison Place, NW.
10:00 AM. The U.S. Court of
Appeals (FedCir) will hear oral argument in ManTech
Telecommunications v. US, No. 01-5090. Location: Courtroom
402, 717 Madison Place, NW.
12:15 PM. The Federal
Communications Bar Association's Telecom Competition
Issues Committee will host a brown bag lunch. Michael Katz,
a Deputy Assistant Attorney General for the DOJ's Antitrust
Division, and former Chief Economist of the FCC, will speak
about his observations on the similarities and differences
that characterize the two agencies' approach to competition
issues. Location: CTIA, 1250 Connecticut Ave., NW, 8th floor
conference room. |
|
|
| About Tech Law Journal |
Tech Law Journal publishes a free access web site and
subscription e-mail alert. The basic rate for a subscription
to the TLJ Daily E-Mail Alert is $250 per year. However, there
are discounts for entities with multiple subscribers. Free one
month trial subscriptions are available. Also, free
subscriptions are available for law students, journalists,
elected officials, and employees of the Congress, courts, and
executive branch, and state officials. The TLJ web site is
free access. However, copies of the TLJ Daily E-Mail Alert and
news items are not published in the web site until one month
after writing. See, subscription
information page.
Contact: 202-364-8882; E-mail.
P.O. Box 4851, Washington DC, 20008.
Privacy
Policy
Notices
& Disclaimers
Copyright 1998 - 2002 David Carney, dba Tech Law Journal. All
rights reserved. |
|
|