|News Briefs from
September 26-30, 2001
Anti Terrorism Bill
9/29. President Bush used his weekly radio address on Saturday to advocate
passage of the Anti
Terrorism Act of 2001 [PDF]. He stated, "I'm asking Congress for new
law enforcement authority, to better track the communications of terrorists, and
to detain suspected terrorists until the moment they are deported. I will
also seek more funding and better technology for our country's intelligence
community." See, transcript.
Fed Circuit Rules in Dow v. AVI
9/28. The U.S.
Court of Appeals (FedCir) issued its opinion in Dow
Chemical v. Astro-Valcour, a patent infringement case. The
in suit involve processes for the production of polyethylene sheet
foam. The issue on appeal was whether, when challenging the validity of a patent
under 35 U.S.C. §
102(g), a prior inventor must have known that he was an inventor. The
Appeals Court held that such a state of mind is not required. Affirmed.
President Signs U.S. Jordan FTA
9/28. President Bush signed HR 2603, a
bill implementing the U.S. Jordan
Free Trade Agreement (FTA) [PDF]. See, White
This FTA is significant for Middle Eastern politics. In addition, Jordan is only
the fourth country to sign a FTA with the U.S. This document also contains some
potentially trend setting provisions pertaining to intellectual property rights
(IPR) and electronic commerce. It addresses patents, trademarks, copyright, and
enforcement of IPR. Jordan agreed to ratify and implement the WIPO's
Copyright Treaty and WIPO Performances and Phonograms Treaty within two years.
The FTA also provides that "each Party shall seek to refrain from: (a)
deviating from its existing practice of not imposing customs duties on
electronic transmissions; (b) imposing unnecessary barriers on electronic
transmissions, including digitized products; and (c) impeding the supply through
electronic means of services ..."
The Senate passed the bill by a voice vote on September 24. The House passed the
bill on July 31. The FTA was negotiated by the Clinton Administration last year.
Patent Fees Increase on October 1
9/28. The USPTO released a statement
regarding the new patent fees which take effect October 1, 2001. Fees are being
increased to reflect changes in the Consumer Price Index over the last twelve
GAO Reports that Agencies Will Not Comply with GPEA
9/28. The GAO released
a report [41 pages in PDF]
titled "Electronic Government: Better Information Needed on Agencies'
Implementation of the Government Paperwork Elimination Act". The GPEA,
which became law in 1998, requires that by
October 21, 2003, federal agencies provide the public, when practicable, with
the option of submitting, maintaining, and disclosing required information
electronically, instead of on paper. The report finds that "many
agencies may be at risk of not meeting GPEA objectives." The report was
prepared for Sen. Joe Lieberman
(D-CT), Chairman of the Senate
Committee on Governmental Affairs.
Internet Tax News
9/28. Sen. George Allen (R-VA) sent a
"Dear Colleague letter" to members of the Senate urging passage of
legislation to extend the existing moratorium on certain Internet taxes, which
is set to expire on October 21. Sen. Allen is the sponsor of S 777, a
bill that would make the existing moratorium permanent. See also, Allen
release. See also, HR 1675
(permanent moratorium) and HR 1552 (five
year extension), both sponsored by Rep.
Chris Cox (R-CA). This is one of many issues that was sidetracked by the
events of September 11. The House
Judiciary Committee had scheduled a hearing on HR 2526, the
"Internet Tax Fairness Act of 2001", for the morning of September 11.
9/28. The Progress and Freedom Foundation (PFF)
issued a paper [PDF]
titled "The Internet, Taxation, and the Constitution". The paper
concludes that "there are constitutionally permissible methods for taxing
the Internet." However, it also concludes that there are
"constitutional means available to Congress to prevent further taxation,
and even to roll back some of the existing taxation." The paper also
recommends "extending, or making permanent, the current moratorium on
e-commerce." It also offers a caution about multistate tax cartels: "A
careful look at the Constitution—and the Commerce, Import-Export, and Compact
Clauses, in particular -- together with legal precedents should give any citizen
ample reason to be suspicious of multi-state tax-collection cartels. Such
efforts would undermine the federalist principles on which this nation was
founded -- and on which it has thrived." The paper was written by Kent
Lassman and Anna Duff for the Claremont Institute.
Excite@Home Seeks Bankruptcy Protection
9/28. Excite@Home (ATHM) filed a Chapter 11 petition for bankruptcy in the U.S.
Bankruptcy Court (NDCal). See, ATHM
release. In addition, it stated that "it has agreed to sell essentially
all of its broadband Internet access business assets and related services to
AT&T for $307 million in cash".
Kotelly Sets Schedule for Remedy Proceeding in Microsoft Case
9/28. The U.S. District
Court (DDC), Judge Colleen Kotelly presiding, held a status hearing in the
Microsoft antitrust case. The Court also issued its Scheduling Order [PDF].
9/28. The NTIA
published in its web site Amendment
4 to the Department of Commerce - ICANN
Memorandum of Understanding, and Amendment
2 to the Cooperative Research and Development Agreement (CRADA) with ICANN.
Fed Circuit Rules in BTG v. Genentech
9/27. The U.S.
Court of Appeals (FedCir) issued its opinion in Bio-Technology
General v. Genentech, a patent infringement case involving the
issue of lack of enablement.
Genentech is the assignee of U.S.
Patent No. 4,601,980, titled "Microbial expression of a gene for human
growth hormone". The jury answered "NO" to the question "Has
BTG proven by clear and convincing evidence that the '980 patent did not enable
a scientist skilled in the art in July 1979 to make any mature human growth
hormone of 191 amino acids?" Nevertheless, the District Court granted BTG's
motion for judgment as a matter of law that the patent is invalid for lack of
enablement. The Appeals Court reversed the judgment of invalidity and remanded
for further proceedings with respect to infringement.
FEC Adopts NPRM Regarding Political Activity on the Internet
9/27. The Federal Election Commission (FEC)
approved a Notice of
Proposed Rulemaking (NPRM) [PDF] at its September 27 meeting regarding
political activity on the Internet. The FEC is the agency charged with enforcing
the Federal Election Campaign Act (FECA), which regulates political
contributions and expenditures. While the FEC had previously considered wide
ranging regulation of political speech on the Internet, this NPRM merely
proposes to permit certain personal political web sites, and to allow
corporations and unions to put certain hyperlinks and press releases in their
web sites. See, TLJ story.
5th Circuit Grants En Banc Rehearing in Veeck v. SBCCI
9/27. The U.S. Court of Appeals (5thCir)
issued an order
granting a rehearing en banc in Veeck
v. SBCCI. A three
judge panel issued its divided opinion
on February 2, 2001, upholding the District Court's judgment of copyright
infringement. Both Courts held that a copyrighted work does not lose it
protection when adopted into law.
Background. The Southern Building Code
Congress International (SBCCI) is a nonprofit organization that develops,
promotes, and promulgates model building codes. Local governments, in turn,
enact its codes into law by reference, in whole, or in part. SBCCI asserts a
copyright in each of its codes. Peter Veeck, who also uses the name Texoma
Regional Web, operates a web site
that contains information about North Texas. Several towns in North Texas have
adopted SBCCI model codes. Veeck purchased from SBCCI CDs with copies of the
building codes. In disregard of the software license and copyright notice, Veeck
copied and published these building codes into his web site.
District Court. Veeck filed a complaint in U.S.
District Court (EDTex) against SBCCI seeking declaratory relief; SBCCI
counterclaimed for infringement. The Court ruled on cross motions for summary
judgment that Veeck had infringed valid copyrights, and permanently enjoined
Veeck from further infringement.
Appeals Court. A divided three judge panel affirmed. The majority wrote
that "if code writing groups like SBCCI lose their incentives to craft and
update model codes and thus cease to publish, the foreseeable outcome is that
state and local governments would have to fill the void directly, resulting in
increased governmental costs as well as loss of the consistency and quality to
which standard codes aspire. A second glance at the names of the amici
supporting SBCCI's position in this case provides an idea of the potential sweep
of a contrary holding that the authors of model codes could not enforce
copyrights in their works once the ultimate reason for their very creation is
See also, TLJ story, 5th Circuits Affirms
Judgment of Internet Copyright Infringement, February 5, 2001.
7th Circuit Rules in Trademark Case
9/27. The U.S.
Court of Appeals (7thCir) issued its opinion
v. Chicago Tribune, a trademark and unfair competition case.
Diana Packman holds federal and Illinois trademarks for the phrase "the joy
of six," for use in relation to football and basketball games. The Chicago
Tribune published a newspaper that ran front page headlines with the phrase
"The Joy of Six". Front Page News produced t-shirts that reproduced
this front page. Packman filed a complaint in U.S. District Court against the
Chicago Tribune and Front Page News alleging trademark infringement under 15
U.S.C. § 1114, unfair competition under 15 U.S.C. § 1125(a), and trademark
infringement under Illinois law, in connection with the reproduction of the
Chicago Tribune front page on t-shirts. The District Court granted defendants'
motion for summary judgment on the grounds of fair use, and absence of a
likelihood of confusion of products. The Appeals Court affirmed.
7th Circuit Reverses in Goss Graphics v. DEV
9/27. The U.S.
Court of Appeals (7thCir) issued its opinion
Graphics v. DEV Industries, a theft of trade secrets case.
However, the issue on appeal involved dismissal of suits, with leave to
reinstate, on the grounds that they are likely to settle. In this case, the
District Court dismissed the case, and later refused to reinstate after the
failure of settlement negotiations. The Appeals Court reversed.
Judge Posner wrote that "We have repeatedly criticized the practice of
dismissing suits before they have been concluded, with leave to reinstate the
suit." He continued that "the district judge's annoyance at the
parties' failure to settle was not a valid ground for killing the plaintiff's
suit. Federal courts do have authority to require parties to engage in
settlement negotiations ... but they have no authority to force a settlement.
... If parties want to duke it out, that's their privilege."
Antitrust Division v. Computer Associates
9/27. The Department of Justice filed a
civil complaint in U.S. District Court against Computer
Associates (CA) in connection with its 1999 acquisition of Platinum
Technologies International. CA SVP and General Counsel Steven Woghin stated in a
"From the moment we announced our intention to acquire Platinum until the
DOJ approved the transaction, CA acted reasonably and lawfully ... We have been
cooperating fully with the DOJ for the past two and-a-half years, and we are
extremely disappointed by their actions today."
Bush Addresses Anti Terrorism Bill
9/27. President Bush gave a speech
at the CIA Headquarters in Langley, Virginia,
in which he referenced the Administration's Anti Terrorism Act of
2001 [PDF]. The bill would increase the electronic surveillance authority of
law enforcement and intelligence agencies, among other things. Bush and Attorney
General John Ashcroft seek passage of the bill on an expedited basis.
Bush stated: "I intend to continue to work with Congress to make sure that
our law enforcement officials at home have got the tools necessary -- obviously,
within the confines of our Constitution -- to make sure the homeland is
secure; to make sure America can live as peacefully as possible; to make sure
that we run down every threat, take serious every incident. And we've got
to make sure, as well, that those who work for the nation overseas have got the
best available technologies and the best tools and the best funding
Chamber Names New Chief Lobbyist
9/27. The U.S. Chamber of Commerce named
Rolf Lundberg to head its lobbying efforts before the U.S. Congress. He
previously worked for Sen. Trent Lott
(R-MS), former Sen. Bob Dole (R-KS), and the Senate Finance Committee, as counsel
on international trade and tax issues. See, release.
Copyright Office Extends Deadline
9/27. The Copyright Office (CO)
extended its deadline to submit comments on its proposed amendments to the
regulations governing the content and service of certain notices on the
copyright owner of a musical work. The notice is served or filed by a person who
intends to use the work to make and distribute phonorecords, including by means
of digital phonorecord deliveries, under a compulsory license, pursuant to 17 U.S.C. § 115. The
new deadline is October 12. See, original notice in
Federal Register, August 28, 2001, Vol. 66, No. 167, Page 45241 - 45245. See
extending deadline, in Federal Register, Thursday, September 27, Vol. 66, No.
FCC Grants CALEA Extension
9/27. The FCC's Common Carrier Bureau
adopted and released an Order
[PDF] in which it granted extensions of time to named carriers to comply with
the FCC's implementation of the Communications
Assistance or Law Enforcement Act (CALEA). See also, FCC
Public Notice [PDF] of September 28.
9/27. California Gov. Gray Davis announced the appointment of Judge Carlos
Moreno as an Associate Justice of the California Supreme Court. He replaces
former Justice Stanley Mosk, who died in June. Moreno is currently a U.S.
District Court Judge for the Central District of California.
9/27. The Recording Industry Association of
America (RIAA) gave Rep. John
Conyers (D-MI) an honorary community service award for his contributions in
support of the music community at a reception in his honor. Rep. Conyers is the
ranking Democrat on the House
Judiciary Committee, which has jurisdiction over bills affecting copyright
law. See, RIAA release.
GAO Reports on IPR and E-Commerce Aspects of FTAA
9/26. The GAO released
a report [131 pages in
PDF] titled "Free Trade Area of the Americas: Negotiators Move Toward
Agreement That Will Have Benefits, Costs to U.S. Economy." It concludes
that "the United States could benefit substantially from commitments from
other FTAA countries to liberalize services and strengthen protection of
investment and IPR."
Intellectual Property Rights. The report concludes that "Because the
United States maintains a decisive competitive advantage in high technology,
knowledge based industries that are dependent on IPR, this is one of the most
important topics for U.S. negotiators. FTAA countries have somewhat divergent
interests in this area. Developed countries want to bolster enforcement of
existing rules and cover new technologies, such as the Internet and
biotechnology. Developing countries, despite wider recognition of the importance
of IPR to fuel innovation and investment, are reluctant to go beyond existing
trade and IPR treaties and face the need to build enforcement capacity. Certain
issues within the negotiations, such as compulsory licensing and the patenting
of plants, animals, and biological processes, may also prove
controversial." See also, report at pages 58-64.
Electronic Commerce. The report states that "Because fostering a
supportive environment and maintaining a liberal trading regime for e-commerce
are goals of FTAA nations, they have created a forum to share information.
E-commerce issues also arise in several areas of the FTAA negotiations, such as
the exchange of goods and services and the protection of intellectual property.
The FTAA could result in commitments that provide a more open and predictable
environment for this promising technology." See also, report at pages
Sen. Wyden Proposes NET Guard
9/26. Sen. Ron Wyden (D-OR) proposed
forming an National Emergency Technology Guard during a speech in the Senate.
Sen. Wyden is a member of the Senate
Commerce Committee, and Chairman of its Science, Technology, and Space
He stated that "It seems to me that what this country needs is essentially
a technology equivalent of the National Guard, an emergency technology guard --
I have been calling it in my mind Net Guard, or a national emergency technology
guard -- that in times of crisis would be in a position to mobilize the Nation's
information technology, or IT, community to action quickly, just as the National
Guard is ready to move during emergencies."
He elaborated that "A national volunteer organization of trained and
well-coordinated units of information technology professionals from our leading
technology companies ought to be in a position to stand at ready with the
designated computer equipment, satellite dishes, wireless communicators, and
other equipment to quickly recreate and repair compromised communications and
He also stated that "I intend to use the subcommittee that I chair of the
full Commerce Committee that is chaired by Senator Hollings to initiate a dialog
among congressional, corporate, military, and nonprofit leaders to begin a new
effort to mobilize information technology in times of crises."
More Intel Via Patent Infringement Suits Filed
9/26. Intel announced that it filed four
patent infringement lawsuits in Germany, the United Kingdom, and Hong Kong
against Via Technologies
and others. Intel alleges that "Via's C3 Microprocessors and P4X266
chipsets infringe on eight Intel patents." Intel's complaint filed in
Germany alleges that the P4X266 chipset infringes on European patent EP 0 694
849 and German patent DE 195 80 990. One Intel complaint filed in the United
Kingdom alleges that Via's P4X266 chipset infringes on U.K. patent 2 287 162B
and European patent 694 849 B1. Another Intel complaint filed in the United
Kingdom alleges that Via's C3 microprocessor infringes U.K. patent 2 230 118,
U.K. patent 2 261 753 and U.K. patent 2 326 494. Finally, Intel's complaint
filed in Hong Kong alleges that Via's C3 microprocessor infringes Hong Kong
patent 931073, Hong Kong patent 1006754 and Hong Kong patent 1016711. See, Intel
AOLTW Seeks FTC Approval of Two Alternative Cable Broadband
9/26. AOL Time Warner submitted to the FTC's Bureau of Competition a motion
titled "Motion for Approval of Non Affiliated ISP and Alternative Cable
Broadband ISP Service Agreement". AOLTW is required, pursuant to
¶ II.A.2 of the FTC's Decision
and Order [PDF] approving the merger of AOL and Time Warner, dated April 17,
2001, to enter into such agreements, and to obtain FTC approval. The FTC
published a redacted
version of the motion [PDF] in its web site. This motion seeks FTC approval
of its agreement with Internet Junction Corp.,
a regional ISP based in Florida.
9/24. AOL Time Warner also submitted a second redacted
motion [PDF] seeking approval of its agreement with New York Connect.Net, Ltd., a regional ISP based
in New York City.
¶ II.A.2. provides: "Within ninety (90) days after the date that
Respondents make Available to any Subscriber an Affiliated Cable Broadband ISP
Service, Respondents shall enter into Alternative Cable Broadband ISP Service
Agreements that have received the prior approval of the Commission with at least
two (2) Nonaffiliated ISPs (other than the Non-affiliated ISP that is party to
the Alternative Cable Broadband ISP Service Agreement approved by the Commission
pursuant to ¶ II.A.1. of this Order in that Identified Cable Division)
that have received the prior approval of the Commission to make Available
additional Non-affiliated Cable Broadband ISP Services to Subscribers in that
Identified Cable Division."
The deadline to submit public comments to the FTC on these two motions is
October 24, 2001.
9/26. Alison Pauly,
and Amy Smith
joined the Menlo Park office of the law firm of Perkins Coie as associates in the firm's
intellectual property and patent practice group. Pauly and Shanberg focus on
intellectual property litigation. Both were formerly associates at the law firm
of Wilson Sonsini Goodrich & Rosati in
Palo Alto. Smith is a patent prosecution attorney with specialties in biology
and chemistry who previously worked at Woodard Emhardt Naughton Moriarty &
McNett in Indianapolis, Indiana. See, PC release.
9/26. California Gov. Gray Davis announced the appointments of Richard Mosk
and Dennis Perluss to the California Court of Appeal in Los Angeles.
9/26. The NTIA
published a notice of
vacancy for the position of Associate Administrator for International Affairs.
This position is responsible for the development and management of the NTIA's
international telecommunications and information policy. The job pays $120,261
9/26. The FTC
announced that it settled a civil lawsuit that it filed in U.S. District Court (DAriz)
against RJB Telecom and its principals for illegally billing consumers' credits
cards and phone bills for access to their pormographic web sites. The settlement
agreement bars deceptive billing practices in the future, requires e-mail
confirmation of membership requests and prompt refunds of improperly billed
charges, and the establishment of a $250,000 escrow fund, to be forfeited if the
settlement agreement is violated. See, FTC release.
9/26. Exodus Communications filed a Chapter
11 bankruptcy petition with the U.S. Bankruptcy Court (DDel). See, Exodus
Go to News Briefs from September 21-25.