9/28. The House approved HR 4077, the "Piracy Deterrence and Education Act of 2004 ", by a voice vote. The Senate has yet to take any action on this bill.

Rep. James Sensenbrenner (R-WI), the Chairman of the House Judiciary Committee, stated in the House that "this legislation addresses the growing piracy problem facing our Nation's creative community. New technologies have made copyright piracy an even easier activity to undertake than before. The number of pirating files continues to increase. Although the technology is not the problem, our Nation's laws need to be updated to reflect the impact of this new technology."

Rep. Adam Schiff (D-CA), a member of the Committee, stated in the House that "Intellectual property theft has become a rampant and serious threat to the livelihoods of all copyright creators. Digital technologies like the CD burner, the Internet, and the MP3 audio-compression standard, while enhancing the consumer experience, have greatly facilitated copyright theft and led to an explosion in its prevalence. Studies indicate that at any given time more than 850 million copyright-infringing files are being illegally offered for distribution through just one peer-to-peer, file-swapping network. Innumerable Web sites, file transfer protocol servers, Internet affinity groups, and Internet relay chat channels also constitute havens for copyright theft."

Rep. Schiff (at right) added that "While not a panacea, the changes made by H.R. 4077 will play an important role in addressing the piracy problem. It has become clear that law enforcement authorities need additional resources, statutory authority, and incentives to become productive participants in the antipiracy battle."

Rep. John Conyers (D-MI), the ranking Democrat on the Committee, spoke in favor of the bill, but expressed his opposition to the inclusion of Section 112, which is the "Family Movie Act of 2004", also know as the ClearPlay bill.

Rep. Lamar Smith (R-TX), Rep. Heather Wilson (R-NM), Rep. Sheila Lee (D-TX), and Rep. Gene Green (D-TX) also spoke in support of the bill.

Legislative History. The original version of this bill was introduced on March 31, 2004 by Rep. Lamar Smith (R-TX), Rep. Howard Berman (D-CA), and Rep. John Conyers (D-MI). However, it has grown and evolved.

Also, HR 4077 is a successor bill to HR 2514, which was introduced on June 19, 2003. See, stories titled "Representatives Smith & Berman Introduce Internet Piracy Education Bill" in TLJ Daily E-Mail Alert No. 686, June 24, 2003; and "House CIIP Subcommittee Holds Hearing on Piracy Deterrence and Education Act" in TLJ Daily E-Mail Alert No. 701, July 18, 2003.

The House Judiciary Committee's Subcommittee on Courts, the Internet, and Intellectual Property (CIIP) amended and approved HR 4077 on March 31, 2004.

The full Committee amended and approved HR 4077 on September 8, 2004. This mark up added the language of HR 4586, the "Family Movie Act of 2004", which is also known as the ClearPlay bill. See, story titled "House Judiciary Committee Approves Intellectual Property Bills" in TLJ Daily E-Mail Alert No. 973, September 9, 2004.

Bill Summary. § 101 states the title of the bill. § 102 recites Congressional findings.

§ 103 creates a voluntary program at the Department of Justice (DOJ) to provide notices to apparent infringers. It provides that the DOJ may establish a program, in which the DOJ "in cases where persons who are subscribers of Internet service providers appear to be engaging in copyright infringing conduct in the course of using that Internet service, would send to the Internet Service providers notices that warn such persons of the penalties for such copyright infringement. The Internet service providers may forward the notices to such persons."

§ 104 pertains to the DOJ's computer hacking and intellectual property units (CHIPs), which exist in only a few of the many U.S. Attorneys Offices. This section requires that any DOJ unit "responsible for investigating computer hacking or responsible for investigating intellectual property crimes is assigned at least one agent to support such unit for the purpose of investigating crimes relating to the theft of intellectual property."

§ 105 creates a public education program at the DOJ, to "educate the general public concerning the value of copyrighted works and the effects of the theft of such works on those who create them".

§ 106 provides that "Section 411(a) of title 17, United States Code, is amended in the first sentence by striking `Except for' and inserting `Except for an action brought by the Government of the United States or by any agency or instrumentality thereof, or' ."

That is, 17 U.S.C. § 411 establishes registration of a copyright as a prerequisite for filing a claim for copyright infringement. However, some pirates obtain and distribute works before they are completed, or after completion but before the Copyright Office has issued a certificate of registration. Moreover, this early piracy can cause tremendous economic harm to the ultimate copyright holder. This provision allows federal prosecutors to take action against these early pirates without having to wait for the completion of the registration process.

§ 107 authorizes the appropriation of $15 Million for "the investigation and prosecution of violations of title 17, United States Code" -- that is, the copyright laws.

§ 108 criminalizes using camcorders to copy movies in motion picture exhibition facilities, such as movie theatres. This is aimed at those who take camcorders into movie theatres and surreptitiously copy movies, thereby enabling pirates to obtain and market copies of movies as soon as they are shown in a theatres.

§ 109 recites Congressional findings regarding peer to peer systems. It creates no new law. It states, for example, that "Massive volumes of illegal activity, including the distribution of child pornography, viruses, and confidential personal information, and copyright infringement occur on publicly accessible peer-to-peer file sharing services every day."

§ 110 increases criminal penalties for various crimes related to copyright infringement.

§ 111 revises federal sentencing guidelines for crimes related to copyright infringement.

§ 112 is the "Family Movie Act of 2004", which was originally introduced as a stand alone bill, HR 4586. It provides an exemption from copyright infringement for skipping content.

It adds a new paragraph (11) to 17 U.S.C. § 110. Section 106 lists the exclusive rights of copyright. Section 110 provides that "Notwithstanding the provisions of section 106, the following are not infringements of copyright: ..." It currently contains ten numbered exemptions. This present bill would add an eleventh, which reads as follows:

   "(11)(A) the making of limited portions of audio or video content of a motion picture imperceptible by or for the owner or other lawful possessor of an authorized copy of that motion picture in the course of viewing of that work for private use in a household, by means of consumer equipment or services that (i) are operated by an individual in that household; (ii) serve only such household; and (iii) do not create a fixed copy of the altered version; and
   (B) the use of technology to make such audio or video content imperceptible, that does not create a fixed copy of the altered version."

The CIIP Subcommittee held a hearing on this topic on May 20, 2004. See, story titled "House CIIP Subcommittee Holds Hearing on DVD Filtering Technology" in TLJ Daily E-Mail Alert No. 903, May 21, 2004. Rep. Smith and Rep. Randy Forbes (R-VA) introduced HR 4586 on June 16, 2004. On July 8, the CIIP Subcommittee amended and approved the bill. On July 21, the full Committee amended and approved the bill.

See also, Huntsman v. Soderbergh, U.S. District Court for the District of Colorado, D.C. No. 02-1662 (MJW). This case involves legal issues of copyright infringement, derivative works, and Section 43 of the Lanham Act.

9/28. The Senate Judiciary Committee released the agenda for its business meeting of Thursday, September 30, 2004. The agenda includes 14 nominations, 16 bills, 6 private bills, and 4 resolutions. The Committee typically holds over most of the items on its agenda. This agenda includes the Inducing Infringement of Copyrights Act.

Nevertheless, the items on its agenda include the following:

• S 2560, the "Inducing Infringement of Copyrights Act of 2004".
• HR 2391, the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004".
• S 1635 the "L-1 Visa (Intracompany Transferee) Reform Act of 2003".
• S 2396, the "Federal Courts Improvement Act of 2004".
• S 2373, a bill to modify the prohibition on recognition by U.S. courts of certain rights relating to certain marks, trade names, or commercial names, in the case of confiscations by the communist government of Cuba.
• S 2204, the "Stop Terrorist and Military Hoaxes Act of 2004".
• S __, a bill to reauthorize the Department of Justice.

Inducement of Infringement. S 2560 is the bill sponsored by Sen. Orrin Hatch (R-UT), Sen. Patrick Leahy (D-VT), and others, to create a new cause of action in the Copyright Act for inducement of infringement. See, draft version of this bill released by the Senate Judiciary Committee on September 24, 2004.

This bill was on the Committee' agenda last week, but was held over.

CREATE Act. This is the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004", a bill to promote collaborative research.

The House passed its version of the bill, HR 2391, on March 10, 2004 by a voice vote. See, story titled "House Passes CREATE Act" in TLJ Daily E-Mail Alert No. 854, March 11, 2004. The Senate approved its version, S 2192, on June 25, 2004. The bills are substantially the same. The report language that accompanies the two bills differs.

These bills amend Section 103(c) of the Patent Act, which is codified at 35 U.S.C. § 103, to address the August 8, 1997 opinion of the U.S. Court of Appeals for the Federal Circuit in OddzOn Products, Inc. v. Just Toys, Inc., which ruled that derived prior art may serve as evidence of obviousness.

Section 103(c) currently provides a safe harbor for inventions that are the product of collaboration involving co-inventors within a single company. However, scientific research is increasingly being conducted jointly by multiple companies, universities, government labs, and/or other entities.

The holding in the OddsOn case threatens to discourage collaborative research, where the scientists involved are not employed by the same company or entity. Basically, the Court interpreted Section 103(c) to mean that prior art under Sections 102(f) or 102(g) could be used to determine the obviousness of an invention where there is no common ownership or assignment of the invention and information being shared among the collaborators, and the information exchanged is not publicly known. The bill amends Section 103 to provide that patentability is not precluded in the case of research conducted across entities pursuant to a joint research agreement.

9/28. The U.S. Court of Appeals (9thCir) issued its split opinion [PDF] in RJ Reynolds v. Shewry, a First Amendment case involving compelled speech. This case does not involve any technology or communications industry sectors. It is about tobacco. However, government compelled speech has a long history in communications.

The state of California imposes a tax on cigarettes. It then uses some of the revenues to fund a media advertising campaign that criticizes the tobacco industry. The majority wrote that "this campaign has been to portray the tobacco industry itself as deceptive and as an enemy of the public health".

R.J. Reynolds and other tobacco companies filed a complaint in U.S. District Court (EDCal) against Sandra Shewry, in her capacity as Director of the California Department of Health Services, and others, alleging that California violates their First Amendment right not to be compelled to fund speech.

The District Court granted California's motion to dismiss for failure to state a claim upon which relief can be granted. The tobacco companies brought this appeal.

Judge Raymond Fisher wrote the opinion of the Court, in which Judge Betty Fletcher joined. The majority affirmed the District Court.

The Court distinguished the Supreme Court's recent opinion in United States v. United Foods, Inc., 533 U.S. 405 (2001).

In that case Justice Anthony Kennedy wrote, in holding unconstitutional a tax used to fund speech, that "Just as the First Amendment may prevent the government from prohibiting speech, the Amendment may prevent the government from compelling individuals to express certain views ... First Amendment concerns apply here because of the requirement that producers subsidize speech with which they disagree."

Judge Fisher reasoned that United Foods is inapplicable because in the California case the "tax is used to produce a message that indisputably comes from the government itself."

Fisher wrote too that "It has long been established that the First Amendment prohibits the government from compelling citizens to express beliefs that they do not hold", but that "Nothing in United Foods suggests that the compelled speech doctrine applies to situations where the government imposes an excise tax on private citizens and then uses the money to speak in the name of the government itself."

He concluded that "When the government acts as a speaker it may espouse views that directly contradict those of taxpayers without interfering with taxpayers’ freedom of expression. In a democracy based on majority rule, such a conclusion is inescapable."

Judge Stephen Trott wrote a dissent in which he quoted from the Constitution ("Congress shall make no law ... abridging the freedom of speech"), from Thomas Jefferson ("To compel a man to furnish contributions of money for the propagation of opinions which he disbelieves is sinful and tyrannical"), and from John Marshall ("the power to tax is the power to destroy").

He concluded that "review under any of the available standards reveals that the compelled assessments in this case constitute an exceptional case of government intrusion on the right not to be compelled to finance speech. Indeed, the Act is designed to force one particularly disfavored group to fund speech directly undermining that group's reputation. Such state action offends the very essence of the First Amendment."

This case is R.J. Reynolds Tobacco Company, et al. v. Sandra Shewry, et al., U.S. Court of Appeals for the Ninth Circuit, App. Ct. No. 03-16535, an appeal from the U.S. District Court for the Eastern District of California, D.C. CV-03-00659-LKK, Judge Lawrence Karlton presiding.

The House will meet at 10:00 AM. See, Republican Whip Notice.

8:30 AM - 5:00 PM. Day two of a three day meeting of the National Institute of Standards and Technology's (NIST) Information Security and Privacy Advisory Board (ISPAB). See, notice in the Federal Register, September 22, 2004, Vol. 69, No. 183, at Pages 56746 - 56747. Location: Hilton Hotel, 620 Perry Parkway, Gaithersburg, MD.

10:00 AM. The House Judiciary Committee will meet to mark up several bills, including HR 10, the "9-11 Recommendations Implementation Act", and HR 3143, the "International Consumer Protection Act of 2003". HR 3143, which is sponsored by Rep. Cliff Stearns (R-FL) and Rep. Janice Schakowsky (D-IL) has already been approved by House Commerce Committee; it has also been jointly and sequentially referred to Judiciary, Financial Services, and International Relations Committees, for a period expiring on October 1, 2004. Press contact: Jeff Lungren or Terry Shawn at 202 225-2492. Location: Room 2157, Rayburn Building.

10:00 AM. The House Financial Services Committee will meet to mark up HR 10, the "9-11 Recommendations Implementation Act". Location: Room 2128, Rayburn Building.

10:00 AM. The House Commerce Committee's Subcommittee on Telecommunications and the Internet will hold a hearing titled "An Examination of Wireless Directory Assistance Policies and Programs". See, notice. Location: Room 2322, Rayburn Building.

12:00 NOON - 1:30 PM. The Federal Communications Commission (FCC) will hold a meeting on common carriers issues and proceedings. Jeffrey Carlisle (acting Bureau Chief of the FCC's Wireline Communications Bureau), Carol Mattey (Deputy Bureau Chief of the FCC's WCB), and Jane Jackson (Deputy Bureau Chief of the FCC's WCB) will preside. The agenda is "Common carrier ``hot topics´´ and upcoming FCC proceedings". RSVP to Monica Desai at monica.desai@fcc.gov or 202 418-7419 by Monday, September 27. The Federal Communications Bar Association (FCBA) states in its web site that this is a brown bag lunch hosted by its Common Carrier Practice Committee. Location: FCC, 8th floor, Conference Room No. 5.

12:15 PM. The Federal Communications Bar Association's (FCBA) Online Communications Practice Committee will host a brown bag lunch. Stu Ingis of the law firm of Piper Rudnick will address "Internet Privacy Issues". RSVP to Wendy Parish at wendy@fcba.org. Location: Davis Wright Tremaine, 1500 K Street, NW, Suite 450.

Deadline to submit comments to the Federal Communications Commission (FCC) in response to its Public Notice [PDF] requesting interested parties to provide comments on the Multi-band OFDM Alliance Special Interest Group's (MBOASIG) request for a waiver of Part 15 of the FCC's rules regarding ultra-wideband (UWB) systems that employ multi-band orthogonal frequency division multiplexed (MBOFDM) modulation techniques.

The House will meet at 10:00 AM. See, Republican Whip Notice.

8:30 AM - 12:00 NOON. Day one of a three day meeting of the National Institute of Standards and Technology's (NIST) Information Security and Privacy Advisory Board (ISPAB). See, notice in the Federal Register, September 22, 2004, Vol. 69, No. 183, at Pages 56746 - 56747. Location: Hilton Hotel, 620 Perry Parkway, Gaithersburg, MD.

9:00 AM. Federal Communications Commission (FCC) Commissioner Kathleen Abernathy will host an event titled "briefing for members of the media". Location: Abernathy's office, Room 8B115, FCC, 445 12th Street, SW.

9:30 AM. The Senate Judiciary Committee will hold an executive business meeting. The agenda may include consideration of S 2560, "Inducing Infringement of Copyrights Act of 2004". Press contact: Margarita Tapia (Hatch) at 202 224-5225 or David Carle (Leahy) at 202 224-4242. Location: Room 226, Dirksen Building.

10:00 AM. The House Judiciary Committee will continue its meeting to mark up HR 10, the "9-11 Recommendations Implementation Act". Press contact: Jeff Lungren or Terry Shawn at 202 225-2492. Location: Room 2157, Rayburn Building.

CANCELLED. 10:30 AM - 12:30 PM. The House Science Committee will hold a hearing on HR 4670, an untitled bill to provide for the establishment of a "Center for Scientific and Technical Assessment". Location: Room 2318, Rayburn Building.

2:30 PM. The Senate Commerce Committee's Subcommittee on Communications will hold a hearing on the the security of the internet root servers and domain name system. See, notice. The hearing will be webcast by the Committee. Location: Room 253, Russell Building.

4:00 PM. Rebecca Tushnet will present a paper titled "The First Amendment as Battery Acid: Free Speech versus False Advertising" at an event hosted by the Dean Dinwoodey Center for Intellectual Property Studies at the George Washington University Law School (GWULS). For more information, contact Robert Brauneis at 202 994-6138 or rbraun@law.gwu.edu. The event is free and open to the public. See, notice. Location: GWULS, Faculty Conference Center, Burns Building, 5th Floor, 716 20th St., NW.

Deadline to submit comments to the Internal Revenue Service (IRS) regarding its "advanced notice of rulemaking proceeding" regarding expanding the current three percent excise tax on telephone service to new "communications services" to "reflect changes in technology". See, notice in the Federal Register, July 2, 2004, Vol. 69, No. 127, at Page 40345, and story titled "IRS Publishes Advance NPRM Regarding Expanding the Excise Tax on Telephones to Include New Technologies" in TLJ Daily E-Mail Alert No. 931, July 6, 2004.

Deadline to submit comments National Institute of Standards and Technology (NIST) regarding Draft NIST Special Publication 800-70 [PDF] titled "Security Configuration Checklists Program for IT Products". Send comments to checklists@nist.gov.

Deadline to submit written comments, or requests to participate, to the Federal Trade Commission (FTC) for the FTC's and the National Institute of Standards and Technology's (NIST) event titled "Email Authentication Summit", to be held on November 9-10, 2004. The FTC's interest in this issue is dealing with spam and fraudulent e-mail. The Simple Mail Transfer Protocol (SMTP) for the email system allows information to travel freely with relative anonymity and ease, thereby enabling cheap bulk unsolicited distribution, and fraud. The purpose of this summit is to encourage the development, testing, evaluation and implementation of domain level authentication systems. See, notice in the Federal Register, September 15, 2004, Vol. 69, No. 178, at Pages 55632 - 55636.

The House will meet at 9:00 AM. See, Republican Whip Notice.

12:15 PM. The Federal Communications Bar Association's (FCBA) Wireless Committee will host a luncheon. The price to attend is $15. Registrations and cancellations are due by 5:00 PM on Tuesday, September 28. See, registration form [PDF]. Location: Sidley Austin, 1501 K Street, NW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its notice of proposed rulemaking (NPRM) regarding Amateur Radio Service rules. The FCC adopted this NPRM on March 31, 2004, and released it on April 15, 2004. This NPRM is FCC 04-79 in WT Docket No. 04-140. See, notice in the Federal Register, August 17, 2004, Vol. 69, No. 158, at Pages 51028 - 51034.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to the Wireline Competition Bureau's (WCB) public notice inviting interested parties to update the record pertaining to petitions for reconsideration of the 1997 Price Cap Review Order. This is in CC Docket Nos. 94-1 and 96-262. See, notice [PDF].

Deadline to submit comments to the Federal Trade Commission (FTC) regarding its consent agreement with its Bonzi Software, Inc., it owners and officers, Joe Bonzi and Jay Bonzi. On September 1, 2004, the FTC filed an administrative complaint [6 pages in PDF], and simultaneously entered into an Agreement Containing Consent Decree [7 pages in PDF]. The FTC alleged violation of Section 5(a) of the FTC Act, which is codified at 15 U.S.C. § 45, in connection with the deceptive marketing and sale of software named "InternetALERT". See, notice in the Federal Register, September 9, 2004, Vol. 69, No. 174, at Pages 54667 - 54668. See also, story titled "FTC Stops Deceptive Claims by Security Software Maker" in TLJ Daily E-Mail Alert No. 970, September 6, 2004.

The Supreme Court will hear the first oral arguments of its October 2004 Term.

Day one of a two day event hosted by the Department of Commerce's Bureau of Industry and Security titled "17th Annual Update Conference on Export Controls and Policy". Location: Washington DC.

3:00 - 4:00 PM. The Federal Communications Commission's (FCC) Advisory Committee on Diversity for Communications in the Digital Age will meet by teleconference. See, FCC notice [PDF], and notice in the Federal Register, September 24, 2004, Vol. 69, No. 185, at Pages 57293 - 57294.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to it Public Notice [PDF] requesting interested parties to provide comments on filings by AT&T and TracFone Wireless regarding eligible telecommunications carrier (ETC) designations and the Lifeline and Link-Up universal service support mechanism. This is CC Docket No. 96-45 and WC Docket No. 03-109.

The Supreme Court will hear oral argument in KP Permanent Makeup v. Lasting Impressions, No. 03-409. The U.S. Court of Appeals (9thCir) issued its opinion [20 pages in PDF] on April 30, 2003. The Supreme Court granted certiorari on January 9, 2004. See, story titled "Supreme Court Grants Cert in Trademark Case" in TLJ Daily E-Mail Alert No. 813, January 12, 2004. This case is No. 03-409.

8:30 AM. The President's Council of Advisors On Science and Technology (PCAST) will hold an open meeting. The agenda includes a discussion of transatlantic research and development cooperation. See, notice in the Federal Register, September 23, 2004, Vol. 69, No. 184, Pages 57029 - 57030. Location: Horizon Ballroom, Ronald Reagan Building, International Trade Center, 1300 Pennsylvania Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in NCR v. Palm. This is No. 04-1093. Location: Courtroom 203, 717 Madison Place, NW.

10:00 AM - 12:00 NOON. The World Radiocommunication Conference (WRC-07) Advisory Committee's Informal Working Group 5: Regulatory Issues will meet. See, FCC notice [PDF]. Location: FCC, Room 6-B516 (6th Floor South Conference Room).

12:15 PM. The Federal Communications Bar Association's (FCBA) Engineering & Technical Practice Committee will host a brown bag lunch. The topic will be "activities for the coming year". RSVP to Deborah Wiggins at dwiggins@g2w2.com. Location: Goldberg Godles Wiener & Wright, 1229 19th St., NW.

Day two of a two day event hosted by the Department of Commerce's Bureau of Industry and Security titled "17th Annual Update Conference on Export Controls and Policy". Location: Washington DC.

8:30 AM - 12:15 PM. The U.S. Chamber of Commerce will host a conference, and release a report, both of which are titled "Sending the Right Signals: Promoting Competition Through Telecommunications". See, notice and agenda [PDF]. Location: U.S. Chamber of Commerce, 1615 K Street, NW.

TIME? The Federal Communications Commission (FCC) will host a one day symposium titled "Unleashing the Educational Power of Broadband". Location: FCC, 445 12th Street, SW.

12:15 PM. The Federal Communications Bar Association's (FCBA) International Telecommunications Committee will host a brown bag lunch titled is "Planning Meeting to Discuss Proposed Programs and Obtain Suggestions for the Upcoming Year". RSVP to Evelyn Zamora at zamorae@coudert.com. Location: Coudert Brothers, 1627 I Street, NW, 11th Floor.

Day one of a two day conference hosted by the National Institute of Standards and Technology (NIST), Department of Homeland Security (DHS) and the National Cyber Security Partnership's (NCSP) Coordinating Committee titled "Common Criteria Users' Forum". Amit Yoran, the Director of the DHS's National Cyber Security Division, will speak from 8:30 - 9:00 AM on October 6. The event is free for government employees. The price to attend is $100 for non-government employees. See, notice [PDF]. See also, the NCSP's April 2004 report [104 pages in PDF] containing recommendations regarding common criteria. Location: L'Enfant Plaza.

6:00 - 8:00 PM. The DC Bar Association's Intellectual Property Law Section and Litigation Section will host a continuing legal education (CLE) program titled "What You Need to Know About Copyright Damages". The speaker will be Terence Ross (Gibson Dunn & Crutcher). See, notice. Prices vary from $80 to $115. For more information, call 202 626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H Street, NW.

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