12/8. The Federal Communications Commission (FCC) released the agenda [PDF] for its December 15, 2004, meeting. The agenda includes an Order on Remand regarding incumbent local exchange carriers' (ILECs) obligations under 47 U.S.C. § 251 to make their network elements available on an unbundled basis. Other items include an order regarding UWB systems, and an NPRM on the use of cell phones on airplanes.

The items to be taken up by the FCC, in the order that they appear on the agenda, is as follows. First, the FCC will consider a Second Report and Order (R&O) and Second Memorandum Opinion and Order (MO&O) pertaining to Part 15 of its rules regarding ultra-wideband (UWB) transmission systems. This is ET Docket No. 98-153.

The FCC adopted its First Report and Order [119 pages in PDF] permitting the marketing and operation of certain types of new products incorporating UWB technology in 2002. The FCC received numerous petitions for reconsideration of the First R&O. The FCC addressed these in its Memorandum Opinion and Order and Further Notice of Proposed Rulemaking [91 pages in PDF] adopted on February 13, 2003. The MO&O portion largely reaffirmed the procedures adopted in 2002 to authorize the unlicensed operation of UWB, but made some changes to further facilitate the operation of imaging devices. The FNPRM portion proposed numerous new rules. See also, story titled "FCC Announces UWB Report and Order and Further NPRM" in TLJ Daily E-Mail Alert No. 604, February 14, 2003, and FCC release [2 pages in PDF], and story titled "NTIA Submits Comment to FCC in UWB Proceeding" in TLJ Daily E-Mail Alert No. 819, January 20, 2004.

Second, the FCC will consider a R&O establishing licensing and service rules for earth stations on vessels operating in the 5925-6425 MHz / 3700-4200 MHz (C-Band) and 14.0-14.5 / 11.7-12.2 GHz (Ku-band) frequencies. This is IB Docket No. 02-10. See, notice in the Federal Register, January 22, 2004, Vol. 69, No. 14, at Pages 3056 - 3064.

Third, the FCC will consider a R&O and FNPRM regarding several matters. This will address commercial air-ground telecommunications service. This is WT Docket No. 03-103. See also, notice in the Federal Register, July 25, 2003, Vol. 68, No. 143, at Pages 44003 - 44011. This item will also address the FCC's Part 22 non-cellular Public Mobile Service rules, and general aviation air-ground radiotelephone service mutually exclusive applications. Finally, the FCC will consider the application of Verizon Airfone for renewal of 800 MHz Air-Ground Radiotelephone license call sign KNKG804.

Fourth, the FCC will consider a NPRM regarding changes to the rule prohibiting the airborne use of cellular telephones.

Fifth, the FCC will consider a Second R&O, Order on Reconsideration, and FNPRM regarding modifications to the FCC's rules pertaining to the rural health care subsidy system. This is WC Docket No. 02-60.

Finally, the FCC will consider an Order on Remand regarding incumbent local exchange carriers' (ILECs) obligations under 47 U.S.C. § 251 to make network elements available on an unbundled basis. This is WC Docket No. 04-313 and CC Docket No. 01-338.

This event will be held at 9:30 AM on Wednesday, December 15, 2004 in the Commission Meeting Room, Room TW-C305, 445 12th Street, SW. The event will be web cast by the FCC. The FCC does not always take up all of the items on its agenda. The FCC does not always start its monthly meetings at the scheduled time.

12/8. The Supreme Court issued its opinion [15 pages in PDF] in KP Permanent Makeup v. Lasting Impressions, a trademark case. The Court held that "a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U. S. C. §1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith". It vacated the judgment of the Court of Appeals.

The opinion, which is unanimous, except as to a few footnotes, is based upon statutory interpretation of the relevant statute, 15 U.S.C. § 1115(b)(4).

Facts. KP Permanent Make-Up and Lasting Impressions are competitors in the permanent make-up business. Permanent make-up involves injecting pigment into the skin. Lasting Impressions registered a trademark with the U.S. Patent and Trademark Office (USPTO) that consists of the term "micro colors" set in white within a black box.

Lasting applied to the USPTO in 1992 for a registration, pursuant to 15 U.S.C. § 1051. The USPTO registered the mark to Lasting in 1993, and in 1999 the registration became incontestable, under 15 U.S.C. §1065. This is Registration No. 1,769,592.

However, KP also uses the term "micro colors" on its products and brochures. The Supreme Court assumed as true KP's claim that its use went back to 1990.

District Court. KP filed a complaint in U.S. District Court (CDCal) against Lasting Impressions seeking a declaratory judgment that it did not infringe Lasting's rights. Lasting Impressions counterclaimed alleging trademark infringement.

The District Court concluded that the term "micro colors" is generic, or if not generic, descriptive. It further held that neither party had acquired secondary meaning in the term "micro color." Finally, it held that that KP's use was protected under the "fair use" defense, 15 U.S.C. § 1115(b)(4).

Court of Appeals. On April 30, 2003, the U.S. Court of Appeals (9thCir) issued its opinion [20 pages in PDF] reversing and remanding. It is reported at 328 F. 3d 1061.

On the genericness issue, the Appeals Court held that "A reasonably minded jury could not conclude from the evidence produced that ``micro colors´´ is a generic term" and "KP's motion for summary judgment cannot be upheld on this ground. Furthermore, Lasting's motion for summary adjudication on the issue of genericness should be granted."

On the issue of descriptiveness, the Appeals Court held that "Lasting's incontestable registration is conclusive evidence that the mark is non-descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning in the term ``micro colors´´ apart from the mark. Therefore, KP’s motion for summary judgment cannot be upheld on this ground."

Finally, on the fair use issued, the Appeals Court held that "the fair use defense claimed by KP is a classic fair use defense that requires that there not be a likelihood of confusion. Because there are genuine issues of material fact concerning the likelihood of confusion, KP's motion for summary judgment cannot be upheld on this ground." It reversed the District Court on the fair use issue.

Statute. 15 U.S.C. § 1115(b)(4) provides, in part, that "To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce."

However, it continues that "Such conclusive evidence of the right to use the registered mark ... shall be subject to the following defenses or defects ... (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."

Supreme Court. The Supreme Court granted certiorari. It addressed only one issue, "whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, 15 U. S. C. §1115(b)(4), has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected." It held held that the party raising the fair use defense does not. And hence, it vacated the judgment of the Court of Appeals, and remanded. (The Supreme Court did not consider the Appeals Court holdings with respect to genericness and descriptiveness.)

The Supreme Court reasoned that "Two points are evident. Section 1115(b) places a burden of proving likelihood of confusion (that is, infringement) on the party charging infringement even when relying on an incontestable registration. And Congress said nothing about likelihood of confusion in setting out the elements of the fair use defense in §1115(b)(4)."

It continued that "Starting from these textual fixed points, it takes a long stretch to claim that a defense of fair use entails any burden to negate confusion. It is just not plausible that Congress would have used the descriptive phrase ``likely to cause confusion, or to cause mistake, or to deceive´´ in § 1114 to describe the requirement that a markholder show likelihood of consumer confusion, but would have relied on the phrase ``used fairly´´ in §1115(b)(4) in a fit of terse drafting meant to place a defendant under a burden to negate confusion."

The Court also pointed out that "Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no freestanding need to show confusion unlikely, it follows (contrary to the Court of Appeals’s view) that some possibility of consumer confusion must be compatible with fair use, and so it is." (Parentheses in original.)

It added that "The common law's tolerance of a certain degree of confusion on the part of consumers followed from the very fact that in cases like this one an originally descriptive term was selected to be used as a mark, not to mention the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first." And, "The Lanham Act adopts a similar leniency ..."

The Court also limited the scope of its opinion. It wrote that "While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit's consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant’s use is objectively fair."

It also wrote that "Since we do not rule out the pertinence of the degree of consumer confusion under the fair use defense, we likewise do not pass upon the position of the United States, as amicus, that the ``used fairly´´ requirement in § 1115(b)(4) demands only that the descriptive term describe the goods accurately. ... Accuracy of course has to be a consideration in assessing fair use, but the proceedings in this case so far raise no occasion to evaluate some other concerns that courts might pick as relevant, quite apart from attention to confusion. The Restatement raises possibilities like commercial justification and the strength of the plaintiff’s mark. Restatement §28. As to them, it is enough to say here that the door is not closed."

Justice Souter wrote the opinion of the Court. It was essentially unanimous. Justice Scalia joined in all of the opinion excepts two footnotes that reference legislative history, which he considers irrelevant. Justice Breyer joined in all of the opinion except another footnote.

This case is KP Permanent Make-Up, Inc. v. Lasting Impressions, Inc. et al, Supreme Court No. 03-409, on petition for writ of certiorari to the U.S. Court of Appeals for the 9th Circuit, App. Ct. No. 01-56055. The District Court case is CV 00–276–GLT (EEx).

8:30 - 10:30 AM. The Federal Communications Bar Association's (FCBA) Wireless Practice Committee will host a continuing legal education (CLE) seminar and breakfast titled "Spectrum Management 101: Nuts and Bolts of Spectrum Management -- Engineering, Legal, and Economic Perspectives". The speakers will include Julius Knapp (Deputy Chief of the FCC's Office of Engineering and Technology), Evan Kwerel (Senior Economic Advisor in the FCC's Office of Strategic Planning and Policy Analysis), and Christopher Wright (Harris Wiltshire & Grannis). See, registration form [PDF]. The price to attend ranges from $50 to $125. Location: Wiley Rein & Fielding, 1776 K St., NW.

9:00 AM. The U.S. District Court (DC) will hold a status conference in Electronic Privacy Information Center v. Department of Defense, No. 1:2004-cv-01219-CKK, a Freedom of Information Act (FOIA) case. On July 21, 2004, the Electronic Privacy Information Center (EPIC) filed a complaint [7 pages in PDF] seeking records pertaining to Verity K2 Enterprise. See, story titled "GAO Reports on Data Mining at Federal Agencies" in TLJ Daily E-Mail Alert No. 907, May 28, 2004, and story titled "EPIC Files FOIA Complaint Against DOD Seeking Records Regarding Data Mining Project" in TLJ Daily E-Mail Alert No. 945, July 26, 2004. Location: Courtroom 11, Prettyman Courthouse, 333 Constitution Ave., NW.

10:00 AM. The Federal Trade Commission (FTC) will hold a meeting, part of which will be closed to the public. The agenda includes oral argument in its proceeding pertaining to Rambus, Inc., Docket No. 9302, and consideration of the Rambus matter. For more information, contact Mitch Katz at the FTC's Office of Public Affairs at 202 326-2180. Location: FTC Building, Room 532, 600 Pennsylvania Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel G, will hear oral argument in Israel Bio-Engineering (No. 04-1153 and 04-1301). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel H, will hear oral argument in Eolas Technologies v. Microsoft (No. 04-1234) and Morton v. The First Years (No. 04-1308). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

12:00 NOON. The Federal Communications Bar Association's (FCBA) ETP Committee will host a brown bag lunch. The speaker will be Ed Thomas, Chief of the Federal Communications Commission's (FCC) Office and Engineering and Technology (OET). Location. FCC, Room 6-B516.

6:00 - 8:00 PM. The DC Bar Association's Computer and Telecommunications Law Section will host a social event titled "A CTLS Evening Gathering And Keynote With Jeff Pulver". The speaker will be Jeff Pulver. See, notice. Prices vary from $25 to $40. For more information, call 202-626-3463. Location: 21 Hundred Restaurant, Westin Embassy Row, 2100 Massachusetts Ave., NW.

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in Savannah College of Art and Design v. FCC, No. 04-1024. Judges Ginsburg, Garland and Williams will preside. Location: Prettyman Courthouse, 333 Constitution Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel I, will hear oral argument in Collegenet v. Applyyourself (No. 04-1202). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel J, will hear oral argument in Rasmusson v. SmithKline Beecham (No. 04-1191) and Watson Industries v. Murata Electronics (No. 04-1235). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

12:00 NOON - 2:00 PM. The Progress and Freedom Foundation (PFF) will host a panel discussion titled "Grokster and the Supreme Court: The Case For and Against Consideration". The speakers will include Mitch Glazier (Recording Industry Association of America), Alan Davidson (Center for Democracy and Technology), Jonathan Band (Morrison & Foerster), James DeLong (PFF), Solveig Singleton (PFF), and Mitch Glazier (RIAA). See, notice and online registration page. The PFF filed an amicus curiae brief [12 pages in PDF] on November 8. Press contact: Patrick Ross at 202 289-8928 or pross@pff.org. Lunch will be served. Location: Room B369, Rayburn Building, Capitol Hill.

CANCELLED. 2:00 - 3:00 PM. The North American Numbering Council (NANC) will hold a meeting by conference call. See, notice of cancellation [PDF].

The Supreme Court will begin a recess that will last through Monday, January 10, 2005. See, Order List [9 pages in PDF] at page 9.

8:30 AM - 4:00 PM. The CTIA will host a one day seminar on the Federal Communications Commission's (FCC) Nationwide Programmatic Agreement [PDF] and the FCC/USET Tribal Best Practices Agreement. These pertain to the FCC's historic preservation review process. The price to attend is $200 for CTIA members and $300 for non-members. The deadline to register is December 10. See, notice. Location: CTIA, 1400 16th Street, NW.

TIME CHANGE. 10:00 AM - 1:30 PM. The American Enterprise Institute (AEI) will host a program titled "The Proper Direction for Telecommunications Reform Legislation". The speakers will include Harold Furchtgott-Roth (former FCC Commissioner), Robert Crandall (Brookings), Greg Sidak (AEI), Robert Hahn (AEI Brookings Joint Center) and John Mayo (Georgetown University's McDonough School of Business). Duane Ackerman, Chairman of BellSouth, will give the luncheon address, optimistically titled the "The Telecommunications Act of 2005". See, notice and registration page. Press contact: Veronique Rodman at 202 862-4871 or vrodman@aei.org. Location: AEI, 12th floor, 1150 17th St., NW.

12:00 NOON. The Americans for a Secure Internet (ASI) will host a luncheon and panel discussion titled "Why Santa Shops Online". The speakers will be Steve DelBianco (NetChoice), Wayne Crews (Competitive Enterprise Institute), Raynor Dahlquist (VeriSign), and Jonathan Zuck (Association for Competitive Technology). Register by December 13. See, registration page. For more information, contact Abigail Phillips at 202 331-2130 ext. 107. Location: Phoenix Park Hotel, 520 North Capitol Street, NW.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) program titled "2004 Intellectual Property Law Year in Review Series: Part 2 -- Copyright, Trademark and Internet". The speakers will be Brian Banner (Banner & Witcoff), Beckwith Burr (Wilmer Cutler & Pickering), and and Terence Ross (Gibson Dunn & Crutcher). See, notice. Prices vary from $70 to $115. For more information, call 202 626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H St., NW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) regarding the high cost universal support mechanisms for rural carriers and the appropriate rural mechanism to succeed the five year plan adopted in the Rural Task Force Order. See, notice in the Federal Register, September 3, 2004, Vol. 69, No. 171, at Pages 53917 - 53923.

9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. The event will be webcast. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

Day one of a two day workshop hosted by the Federal Trade Commission (FTC) titled "Peer to Peer File-Sharing Technology: Consumer Protection and Competition Issues". November 15 is the deadline to submit comments and requests to participate. See, FTC release and notice [13 pages in PDF] to be published in the Federal Register. Location: FTC Satellite Building, 601 New Jersey Ave., NW.

2:00 - 4:00 PM. The WRC-07 Advisory Committee's Informal Working Group 3: IMT-2000 and 2.5 GHz Sharing Issues will meet. See, FCC notice [PDF]. Location: FCC, 445 12th Street, SW, Room 7-B516 (7th Floor South Conference Room).

6:00 - 8:00 PM. The Federal Communications Bar Association (FCBA) will host a continuing legal education (CLE) seminar titled "New Frontiers in Digital Video: Recent Developments in Copyright Law and The FCC’s Role in Content Protection". The speakers will be Fritz Attaway (Motion Picture Association of America), Sarah Deutsch (Verizon Communications), Gigi Sohn (Public Knowledge) and James Burger (Dow Lohnes & Albertson), and Rick Chessen (FCC). To register, contact Ann Henson or Heidi Kurtz at 202-293-4000. Prices range from $50 to $125. Location: Dow Lohnes & Albertson, 8th Floor, 1200 New Hampshire Ave., NW.

11:00 AM. The Federal Communications Bar Association's (FCBA) Legislation Committee will host an event. The speaker will be Gregg Rothschild (Democratic Counsel, House Commerce Committee). He will speak on legislative issues. RSVP to Helene Marshall at hmarshall@wrf.com. Location: Wiley Rein & Fielding, 1776 K St., NW.

12:00 NOON - 1:30 PM. The DC Bar Association's Intellectual Property Law Section and Legislative Committee will host a program titled "Update On Justice Department Enforcement Of Intellectual Property Laws". The speakers will be Daniel Bryant (Assistant Attorney General in charge of the DOJ's Office of Legal Policy, and Vice-Chair of the DOJ's Intellectual Property Task Force) and Barbara Berschler. See, notice. Prices vary from $15 to $30. For more information, call 202 626-3463. Location: D.C. Bar Conference Center, B-1 Level, 1250 H St., NW.

1:30 - 4:30 PM. The Executive Office of the President's (OEP) Office of Science and Technology Policy's (OSTP) National Science and Technology Council's (NSTC) Committee on Technology, Committee on Homeland and National Security's Infrastructure Subcommittee will hold a meeting that is closed to the public. For more information, contact John Hoyt at john.hoyt@dhs.gov or 202 772-9959. Location: White House Conference Center (Truman Room).

Day two of a two day workshop hosted by the Federal Trade Commission (FTC) titled "Peer to Peer File-Sharing Technology: Consumer Protection and Competition Issues". See, FTC release and notice [13 pages in PDF] to be published in the Federal Register. Location: FTC Satellite Building, 601 New Jersey Ave., NW.

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