TLJ News from October 6-10, 2006

DOJ Fines Oracle $98.5 Million

10/10. The Department of Justice (DOJ) announced in a release that Oracle will give $98.5 Million to the U.S. to settle the DOJ's claim that Oracle violated the False Claims Act by engaging in "defective pricing disclosures".

The DOJ further stated that its claims date back to March 17, 1997, and involved PeopleSoft. Oracle acquired PeopleSoft in 2005. Hence, the DOJ release states that Oracle "inherited PeopleSoft's liability".

The DOJ further disclosed that $17.7 Million will be paid to the PeopleSoft employee who initially made the allegations.

The DOJ's release does not assert that Oracle, or PeopleSoft, made a claim for goods or services that it did not provide, or that it failed to provide software or services as contracted. Rather, the DOJ's assertion is that PeopleSoft "made pricing disclosures to GSA that were not current, accurate and complete concerning the sale of software licenses and related maintenance services" prior to entering into contracts with the government.

Rod Rosenstein, the U.S. Attorney of the District of Maryland, spoke at a news conference on October 10, 2006. He stated in the prepared text of his speech that "The contract resulted in approximately $127 million of software sales and $77 million in maintenance sales before it ended in September 2005."

The DOJ and Oracle executed a 17 page document titled "Release and Settlement Agreement" on October 10, 2006. It recites that "Oracle denies all the allegations ... and denies that it has any liability for PeopleSoft's actions", and that it enters into the agreement "without admission of fault or wrongdoing".

Neither the DOJ's release, Rosenstein's speech, nor the settlement agreement disclosed whether or not the DOJ's present action, or the size of the fine, is related to, or in retaliation for, Oracle's successful opposition to the DOJ's failed attempt to block Oracle's acquisition of PeopleSoft in 2004. That legal action in the U.S. District Court (NDCal) resulted in a complete and humiliating defeat for the DOJ.

TLJ spoke with a representative of the U.S. Attorneys Office for the District of Maryland on October 11, 2006, who stated that there is no connection between the present action and the 2004 antitrust action.

On February 26, 2004, the DOJ and several states filed a complaint in U.S. District Court (NDCal) against Oracle alleging that its proposed acquisition of PeopleSoft would lessen competition substantially in interstate trade and commerce in violation of Section 7 of the Clayton Act, which is codified at 15 U.S.C. § 18. The DOJ sought an injunction of the proposed acquisition. See, story titled "Antitrust Division Sues Oracle to Enjoin Its Proposed Acquisition of PeopleSoft" in TLJ Daily E-Mail Alert No. 846, March 1, 2004.

However, while almost companies faced with the threat of legal action by the DOJ to block a merger or acquisition capitulate or negotiate a settlement, Oracle fought back. It won a prompt and decisive legal victory.

The District Court held that the government failed to meet its burden of showing by a preponderance of the evidence that the proposed merger is likely substantially to lessen competition in a relevant product and geographic market. Hence, the Court directed the entry of judgment against the government, and in favor of Oracle. See, story titled "DOJ Loses Oracle Case" in TLJ Daily E-Mail Alert No. 974, September 10, 2004.

After its 2004 defeat, the then head of the DOJ's Antitrust Division, Hewitt Pate, stated in a release that "The Department is considering its options."

The False Claims Act is codified at 31 U.S.C. §§ 3729-33. 31 U.S.C. § 3729 provides, in part, that "Any person who--
  (1) knowingly presents, or causes to be presented, to an officer or employee of the United States ... a false or fraudulent claim for payment or approval;
  (2) knowingly makes, uses, or causes to be made or used, a false record or statement to get a false or fraudulent claim paid or approved by the Government;
  (3) conspires to defraud the Government by getting a false or fraudulent claim allowed or paid;
  (4) has possession, custody, or control of property or money used, or to be used, by the Government and, intending to defraud the Government or willfully to conceal the property, delivers, or causes to be delivered, less property than the amount for which the person receives a certificate or receipt;
  (5) ..."

Oracle was represented by Everett Johnson of the Washington DC office of the law firm of Latham & Watkins.

The U.S. Constitution provides, in the 8th Amendment, that "Excessive bail shall not be required, nor excessive fines imposed, ..."

Supreme Court Denies Cert in TCPA Preemption Case

10/10. The Supreme Court denied certiorari in, Inc. v. North Dakota, No. 06-127. See, Order List [18 pages in PDF], at page 3.

This is a case regarding whether the federal Telephone Consumer Protection Act of 1991 (TCPA) preempts a North Dakota telephone solicitation statute that bars making precorded phone calls for political polling purposes.

The Supreme Court passed up an opportunity to bring some clarity to the meaning and scope of the limited preemption language in the TCPA.

The Supreme Court's denial of certiorari lets stand the judgment of the Supreme Court of North Dakota upholding the state statute in State ex rel. Stenehjem v., Inc. Its opinion is also reported at 712 N.W.2d 828 (2006). wrote in its petition [PDF] that "Telephones are an important instrument in political campaigns. Petitioner is a survey and database company that relies upon interactive-voice response and speech-recognition technology on outbound calls using prerecorded messages to query households through survey polls, identify supporters, and later encourage those supporters to turn out to vote. The company has used this technology in many political campaigns and initiatives, including campaigns in the State of North Dakota in the 2004 elections." See also, petitioner's reply brief [PDF].

See also, Supreme Court docket. FreeEats is represented before the Supreme Court by Emilio Cividanes, John Cooney, Ian Volner, and Ronald Jacobs of the Venable law firm.

And see, August 2006 article by Amy Worlton of the law firm of Wiley Rein & Fielding (WRF) on litigation under the TCPA preemption clause. (WRF prepared an amicus brief in the case for the U.S. Chamber of Commerce.)

Supreme Court Denies Cert in At Home v. Cox and Comcast

10/10. The Supreme Court denied certiorari in At Home Corporation v. Cox Communications and Comcast, No.06-147. See, Order List [18 pages in PDF], at page 3.

This case pertains to application of Section 16(b) of the Securities Exchange Act of 1934, which is codified at 15 U.S.C. § 78p(b), in an action to recover alleged short-swing profits obtained by insiders of At Home.

This lets stand the judgment of the U.S. Court of Appeals (2ndCir), which affirmed the judgment of the U.S. District Court (SDNY), which dismissed the Section 16(b) claim. See, April 28, 2006, opinion [18 pages in PDF] of the Court of Appeals. The Court of Appeals case is App. Ct. No. 05-0115-cv. The opinion of the District Court is reported at 340 F. Supp. 2d 404 (SDNY 2004).

At Home is represented by Joseph Allerhand of the New York, New York office of the law firm of Weil Gotshal & Manges. Cox is represented by Michael Hays of the Washington DC office of the law firm of Dow Lohnes. Comcast is represented by Michael Shuster of the New York, New York law firm of Kasowitz Benson Torres & Friedman. See also, Supreme Court docket.

And see, amicus brief [38 pages in PDF] of the Securities and Exchange Commission (SEC) filed with the Court of Appeals.

People and Appointments

10/10. Pete Leon joined Comptel as VP of Legislative Affairs. He previously worked as legislative director for Rep. Eliot Engel (D-NY). See, Comptel release.

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10/10. The Supreme Court denied certiorari in Apotex v. Pfizer, No 05-1006. See, Order List [18 pages in PDF], at page 12. This lets stand the judgment of the U.S. Court of Appeals (FedCir). See, Supreme Court docket. The Order List adds that "The Chief Justice took no part in the consideration or decision of this petition.

10/10. The Federal Trade Commission (FTC) released a report [61 pages in PDF] titled "Municipal Provision of Wireless Broadband". The report describes wireless internet technologies that are currently in use or being developed, summarizes the legal status of wireless internet, and describes operating models being used to provide wireless internet service. It also summarizes arguments in favor of municipal wireless internet provision, including its commercial and noncommercial uses, and arguments for limiting or prohibiting municipal wireless internet provision. It also covers competition policy issues. See also, FTC release.

Bush Signs Trademark Dilution Revision Act

10/6. President Bush signed HR 683, the "Trademark Dilution Revision Act of 2006". See, White House release.

Moseley v. V Secret. This bill responds to the Supreme Court's March 4, 2003 opinion [21 pages in PDF] in Moseley v. V Secret, a case involving whether the plaintiff in a lawsuit for violation of the Federal Trademark Dilution Act (FTDA) must show actual economic loss. The Sixth Circuit held that economic harm may be inferred. The Supreme Court reversed. Its opinion is also reported at 537 U.S. 418.

The Supreme Court wrote that "The relevant text of the FTDA ... provides that ``the owner of a famous mark´´ is entitled to injunctive relief against another person's commercial use of a mark or trade name if that use ``causes dilution of the distinctive quality´´ of the famous mark. 15 U. S. C. §1125(c)(1) (emphasis added). This text unambiguously requires a showing of actual dilution, rather than a likelihood of dilution."

See also, story titled "Supreme Court Rules in Trademark Dilution Case" in TLJ Daily E-Mail Alert No. 618, March 6, 2003.

Legislative History. Rep. Lamar Smith (R-TX), the Chairman of the House Judiciary Committee's (HJC) Subcommittee on Courts, the Internet and Intellectual Property (CIIP), introduced this bill on February 9, 2005.

The CIIP Subcommittee held a hearing on February 17, 2005. See, story titled "CIIP Subcommittee Holds Hearing On Trademark Dilution Revision Act" in TLJ Daily E-Mail Alert No. 1,081, February 23, 2005.

The CIIP Subcommittee approved the bill on March 3, 2005, and the full HJC amended and approved the bill on March 17, 2005. See also, House Report No. 109-23.

The House approved the bill under suspension of the rules on April 19, 2005, by a vote of 411-8. See, Roll Call No. 109.

The Senate then approved a different version of the bill on March 8, 2006. On September 25, the House approved the Senate version.

Bill Summary. The FTDA is codified at 15 U.S.C. § 1125(c). It is also known as Section 43(c) of the Lanham Act.

Subsection (c)(1) previously provided that "The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection." It then enumerated several factors that the court may consider in determining whether a mark is distinctive and famous.

HR 683 amended this, so that it now provides, "Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." (Emphasis added.)

The bill further provides that "a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
  (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
  (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
  (iii) The extent of actual recognition of the mark.
  (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register."

The bill further provides that "dilution by blurring" is "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
  (i) The degree of similarity between the mark or trade name and the famous mark.
  (ii) The degree of inherent or acquired distinctiveness of the famous mark.
  (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  (iv) The degree of recognition of the famous mark.
  (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
  (vi) Any actual association between the mark or trade name and the famous mark."

Also, it provides that "dilution by tarnishment" is "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark".

The bill also modified the list of exemptions. The bill provides that "The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
  (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--(i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
  (B) All forms of news reporting and news commentary.
  (C) Any noncommercial use of a mark."

Reaction. The U.S. Chamber of Commerce praised the bill in a release. The Bruce Josten stated in this release that "Without it, American brand owners would be susceptible to having their reputations tarnished and the distinctiveness of their trademarks blurred". He added that "Since the Supreme Court's 2003 ruling in the case of Moseley v. V Secret, America's famous mark owners have been left without effective protection for their trademark. This bill will protect brand owners by providing a more precise and limited definition for what constitutes a famous trademark".

US and EU Enter Into New PNR Agreement

10/6. The Department of Homeland Security (DHS) and the European Union (EU) released an agreement [3 pages in PDF] regarding the expanded use of passenger name record (PNR) data.

Secretary of Homeland Security Michael Chertoff stated in a release that under this agreement, the "U.S. Customs and Border Protection will have new flexibility to share PNR data with other counter-terrorism agencies within the U.S. government, carrying out the President’s mandate to remove obstacles to counter-terrorism information sharing. The new flexibility will apply to agencies within DHS as well as to the Department of Justice, the FBI, and other agencies with counter-terrorism responsibilities; sharing will be allowed for the investigation, analysis, and prevention of terrorism and related crimes."

Michael ChertoffChertoff (at left) added that "the agreement will allow the department to receive PNR data earlier, thus increasing our ability to identify potential terrorists".

The EU wrote in its release that "The interim agreement enables PNR data in the reservation systems of air carriers to continue to be transferred to the US in the same way as under the previous Agreement. The US Administration may access electronically PNR data from air carriers' reservation/departure control systems located within the territory of the EU Member States, in accordance with specific undertakings. This system will be replaced in due course by one under which airlines in the EU will send the required data to the US. Under the interim Agreement, the EU will ensure that air carriers operating passenger flights in foreign air transportation to or from the US process PNR data contained in their automated reservation systems as required by the US Administration."

On May 30, 2006, the EU's Court of Justice (COJ) issued its judgment in European Parliament v. Council of the European Union, annulling the 2004 PNR agreement [7 pages in PDF] between the US and the EU. See also, COJ release [PDF] explaining the judgment. This annuled the Council of the European Union's decision (No. 2004/496/EC) dated May 17, 2004, regarding the "Agreement between the European Community and the United States of America on the processing and transfer of PNR data by Air Carriers to the United States Department of Homeland Security, Bureau of Customs and Border Protection". It also annuls the European Commission's decision (No. 2004/535/EC) dated May 14, 2004 on the "adequate protection of personal data contained in the Passenger Name Record of air passengers transferred to the United States Bureau of Customs and Border Protection".

The Electronic Privacy Information Center (EPIC) wrote in its web site that "The new agreement gives the Europeans greater control over the disclosure of passenger data to the United States. However, it leaves unresolved whether the United States has adequate privacy protections to safeguard the private information of European consumers."

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10/6. President Bush signed HR 1036, the "Copyright Royalty Judges Program Technical Corrections Act". See, White House release.

10/6. The Federal Communications Commission (FCC) released a Memorandum Opinion and Order [7 pages in PDF] in its proceeding titled "In the Matter of K. Rupert Murdoch (Transferor) and Fox Entertainment Group (Transferree) Applications for Transfer of Control of Fox Television Stations, Inc." The MOO states that "we grant these applications to transfer control". This MOO further states that "we also grant applicants’ request for waiver of the local ownership rule and grant applicants a permanent waiver of the newspaper/broadcast cross-ownership prohibition to permit continued ownership of The New York Post and WNYW(TV), and a temporary waiver of the newspaper/broadcast cross-ownership prohibition to permit continued ownership of The New York Post and WWOR-TV." This MOO is FCC 06-122.

10/6. The National Institute of Standards and Technology (NIST) released its Draft Special Publication 800-103 [70 pages in PDF] titled "An Ontology of Identity Credentials, Part I: Background and Formulation". The deadline to submit comments to the NIST is 5:00 PM on Wednesday, November 15, 2006.

Go to News from October 1-5, 2006.