2008 Section Business Session

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The resolutions listed below will be debated at the Section Business Session, Saturday, August 9, 2008. To access the committee report that accompanies each proposed resolution, click on the name of that resolution. If you have questions, contact the Section at iplaw@abanet.org, or call 312/988-5598.

Class I Resolutions - Full Debate:

• 108-3 — Determining patentability of a claim in a patent application
• 2008 Council -1A — Supports federal legislation to provide copyright-like protection for fashion designs
• 2008 Council -1B — Opposes federal legislation to provide copyright-like protection for fashion designs (Full Debate as Amended, if and only if 2008 Council -1A is not approved by the Business Session)

Class II and Class III Resolutions:

• 2007-2008 Proposed Resolutions and Committee Reports

Committee Reports

• Committee Report 104
• Committee Report 108
• Committee Report 112
• Committee Report 304
• Committee Report 356
• Committee Report 408
• Committee Report 601

Provide Comments:
All members should review the proposed resolutions immediately. If you have any objections to the classification or suggested changes to any proposed resolution, please contact the appropriate committee chair prior to the debate on the resolution (indeed, if possible, prior to the meeting). Each committee chair’s address, telephone number and e-mail address can be found on the Section's Committee page. If you need help in locating a committee chair, contact the Section office. This procedure should expedite the making of non-controversial changes in form and allow more time for debate on the substantive issues presented by the resolutions.

Register:
ABA Annual Meeting information, a complete Section event schedule, and online registration can be found at, http://www.abanet.org/intelprop/annual2008. All members are encouraged to attend the annual Business Session and Members Forum and to participate in the shaping of Section policy on important issues of IP law and practice. Registration for the ABA Annual Meeting is required for participation in any ABA-IPL events.

Rules of Debate for Business Session:
Robert’s Rules of Order Newly Revised (10th edition) will govern the rules of debate where the Section’s Bylaws and Section Manual do not otherwise apply.
Each resolution will be introduced by a five-minute statement in favor of the resolution followed by a five-minute statement in opposition to to resolution. Debate will proceed alternating between “pro” and “con” until it appears to the Chair that the positions of all speakers for one or the other position have been heard. The time limit for each person is one minute. A speaker may speak only once per resolution, except that the Chair, in the Chair’s discretion, may give the proponent of the resolution one minute for a response at the conclusion of the debate. If your point has been made by someone else, please try not to repeat it. The Section Parliamentarian, Morton David Goldberg, will advise the Chair on enforcing the rules.

Procedure for Additional Resolutions to Be Presented:
The following procedures will be followed for resolutions presented to the Resolutions Committee for consideration at the 2008 Business Session:

1.   Each noncommittee report resolution intended for consideration by the Section prior to the Business Session at the ABA Annual Meeting must be submitted as an e-mail attachment to the chair of the Resolutions Committee and to the ABA-IPL Section Director for receipt no later than July 18, 2008. Resolutions received thereafter will not be considered by the Section prior to the Business Session unless the Section Chair rules otherwise.
Any resolution submitted in this manner should be accompanied by the name and onsite Annual Meeting address of its proponent. The proponent shall recommend the desired action by the Committee, e.g. “full debate when Committee 102 resolutions are considered,” and shall also indicate whether or not a hearing before the Committee is desired.
With respect to each resolution properly before it in accordance with this paragraph, the Committee will make one or more of the following recommendations:

• The resolution should be considered by the Section in connection with a specific Committee report, as a special order of business, or as New Business;
• The resolution should be amended in some specified manner or that a substitute resolution should be considered.
• The resolution should be referred to an appropriate committee for study during the coming year.

The Committee’s recommendations will be submitted to the Section Chair for a decision prior to the Business Session.

2.   Any resolution to be submitted to the Section as New Business at the Business Session must first be submitted to the Resolutions Committee in electronic format as a Word document so that a sufficient number of copies may be made before such resolution is considered by the Section. Any such resolution must be accompanied by the name and onsite Annual Meeting address of its proponent.
The Committee will consider any such resolutions properly before it and make recommendations in accordance with (1) above. During the Business Session, these recommendations shall be reported to the Section for decision by the Section Chair, subject to approval of the Section.
If requested by the proponent, the Committee will also specify a time and place for a hearing, should the Committee agree that a need for a hearing exists. Failure of a proponent to appear at an announced hearing may, at the Committee’s discretion, amount to withdrawal of the subject resolution.
The Section Chair may place on the agenda and announce a time certain when the Resolutions Committee will again report to the Section.

3.   Late committee reports containing at least one resolution with a favorable committee vote shall be submitted to the Resolutions Committee at the same time they are submitted to other Section personnel who normally receive such reports. If received by the Committee no later than July 18, 2008, the Committee will make recommendations with respect to any approved resolutions in accordance with paragraph (1) above.

4.   Should a proponent wish to submit to the Resolutions Committee a resolution which is the same or substantially the same as one considered but not approved by a committee of the Section, the proponent shall:

a.   make known to the Resolutions Committee such prior action;
b.   make a strong showing of urgency;
c.    appear in person before the Resolutions Committee prior to the Council Meeting preceding the Business Session or, if unable to do so, arrange a conference call with the Committee to discuss the resolution; otherwise, the resolution will be referred to the appropriate committee for further study the following year.

Resolution Classifications
Class 1 Resolutions which Council believes should go to the floor of the Section for full debate.
Class 2 Resolutions which Council believes it may approve, disapprove, modify or recommit without submitting said resolutions to the floor.
Class 3 Resolutions which Council believes may rest and be reported only as committee resolutions.

2008 ABA-IPL MEMBERS FORUM

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The Members Forum will follow Saturday’s Business Session on August 9, 2008, during the ABA Annual Meeting.

Topic for 2008 Members Forum: Use of Trademarks in Internet Keyword Advertising

Whether the use of trademarks as “keywords” to trigger online advertising constitutes a use in commerce of such trademarks is an issue that has generated much controvery and a schism in the courts. Resolution of the issue has important implications for trademark owners, online advertisers and consumers alike. If such uses are uses in commerce, online advertisers and hosts of online advertisements may face a greater risk of liability if advertisers select trademarks as keywords. Some consumer advocates fear that a threat of liability will chill the use of trademarks in the online advertising arena and deprive consumers of valuable information. Many mark owners, on the other hand, fear that their marks will either be diluted or their consumers will be confused when advertisements for competitors are triggered by use of their marks. The Members Forum features open discussion on this fascinating and controversial subject.

Moderator:
Antoinette M. Tease, Antoinette M. Tease, P.L.L.C., Billings, MT. Section Council Member.

Proposition 1:
Using a trademark to trigger an online ad constitutes using the mark in commerce.
Michael Potenza, Debevoise & Plimpton, LLP, New York, NY

Proposition 2:
Using a trademark to trigger an online ad is not a use in commerce.
Joseph C. Gratz, Keker & Van Nest LLP, San Francisco, CA

 

In the Section’s tradition of deep thinking and analysis on issues, we will not be making policy nor voting on any position during the Members Forum. Rather it is an opportunity to present the various positions and hear the differing ideas regarding the issue.

Forum Materials

• IPL Forum I
• IPL Forum II
• IPL Forum III

 

Rules of Debate for Members Forum:

While all ABA Annual Meeting registrants are invited to attend, this Section Members Forum is an opportunity for Section members– only members of ABA-IPL, please– to express their views on the pros and cons. After a five-minute introduction to the topic and separate brief statements by proponents of each alternative, members will be given the opportunity at the Forum to express their own views. Debate will proceed until it appears to the Chair that the positions of all speakers have been heard. If your point has been made by someone else, please try not to repeat it. Since the Forum is not a Business Session, and in keeping with the informality of the discussion, no resolutions will be proposed. The time limit for each person is one minute. A speaker may speak only once, except that the Chair, in the Chair’s discretion, may give the moderator of the forum or any of the proponents one minute for a summary statement at the conclusion of the debate. The Section Parliamentarian, Tony Figg, will advise the Chair on enforcing the rules.

 

Section to Vote on By-Law Amendments Establishing a Publications Officer Position

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All Section members are notified that there will be a vote on proposed amendments to the Section By-Laws at the Section’s Annual Business Meeting at the ABA Annual Meeting, Saturday morning, August 9, 2008, 8:30-11:30 a.m. in the Starlight Rooms 1-2, 18th Floor, at the Waldorf-Astoria Hotel in New York.

The amendments, approved by the Section Council at its meeting on February 8, 2008, all relate to the creation of a new Section Publications Officer position. The ABA Board of Governors has approved these bylaw amendments subject to a vote of the Section membership at the 2008 ABA Annual Meeting in August.

The Publications Officer position follows from the Section’s Publications Plan, which established a Content Advisory Board, and three editorial products boards for books, magazine, and Annual Report. The amendments to the bylaws propose creation of a voting officer position, the Publications Officer, to oversee these activities and report to on them the Section Council.

The proposed changes are listed below. Added language is underlined and deleted language is struck out.

Article I, Section B was amended to add Publications Officer as a voting officer position. Further, as a result of the new Strategic Communications Plan, there will no longer be an Annual Report or an IPL Newsletter, so consequently, the current non-voting officer positions of Annual Publications Editor and Newsletter Editor are disbanded:

“B.       Organization and Procedure

The officials include a Chair, Chair-Elect, Vice-Chair, Secretary, Financial Officer, Publications Officer, Section Delegates to the House of Delegates, Immediate Past Chair, and Council.  The Chair-Elect may also appoint, to serve during his or her term as Chair, an Assistant to the Secretary, Annual Publications Editor and a Newsletter Editor.”

Article IV was amended to add the following Section 5 to describe the duties of the new Publications Officer position:

Section 5.  Publications Officer.  The Publications Officer shall oversee development of Section content in all formats and shall oversee development and implementation of a Section publication plan.  The Publications Officer shall also, upon request of the Chair, report to Council on the Section’s present and projected publication plan; and shall, at least once each year, prepare and submit a proposed plan to the Council for approval or modification at the time of the annual meeting or at such other time as may be expressly fixed by the Council.  The Publications Officer shall also prepare and submit to the Section, at the annual meeting, a report on the Section’s publication plan and shall prepare such other recommendations and special reports on publication affairs of the Section as may be requested by the Chair.

Article VII, Section 1 was amended as follows:

Section 1.  At each annual meeting of the Section, the Section shall elect:

1. a Chair-Elect, Vice-Chair, Secretary and, Financial Officer, and Publications Officer for a term of one year.

In addition, Article VII was amended to add the following Section 6:

Section 6.  The election of the Publications Officer at the 2008 Annual Meeting shall be deemed in compliance with these Bylaws, if such election and the preceding nomination therefore shall have complied with these Bylaws as otherwise amended at such Annual Meeting.

Finally, Article VIII, Section 3 was amended as follows:

Section 3.  Council.  (a)  The Council, during the interim between annual meetings of the Section, may fill vacancies in its own membership or in the offices of Secretary or, Financial Officer, or Publications Officer, or, in the event of a vacancy in all of the offices of Chair, Chair-Elect and Vice-Chair, may fill vacancies in the offices of Chair and Vice-Chair.  Members of the Council and officers so elected shall serve until the close of the next annual meeting of the Section

Section Elections to be Held at ABA Annual Meeting

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Section elections for open elective leadership positions will be held at the ABA Annual Meeting in New York City on Saturday morning, August 9, 2008 at the Waldorf-Astoria Hotel during the Section’s Annual Business Meeting.

The following candidates have been nominated for the 2008-2009 year:

 

	Chair-Elect: Don W. Martens, Newport Beach, CA. Mr. Martens is currently Section Vice Chair and chair of the Section’s Task Force on Patent Law Reform. In the past, he has served on the Section Council, and as Committee Chair for committees 402 – University Intellectual Property Law, 852 – Special Committee on Site Selection, 602 – Arbitration and Other Alternative Procedures, 604 – Court of Appeals for the Federal Circuit and Chair for Division I – Patents, Division VI – Litigation, Alternative Dispute Resolution & Related Issues, and Division IV – Related Legal Issues.
	Vice Chair: Q. Todd Dickinson, Fairfield, CT. Mr. Dickinson is a current member of the Section Council. He also serves as the Section’s Liaison to the WIPO Standing Committee on Patents. He is immediate past Deputy Secretary of Commerce and Director of the United States Patent and Trademark Office, a position he held from 2001- 2003.
	Secretary: Robert O. Lindefjeld, Pittsburgh, PA. Mr. Lindefjeld was re-nominated to his position as Secretary. He has served on the Section Council, and as Committee Chair for committees 104 – Patent Inter Partes Proceedings and 805 – Spring CLE.
	Financial Officer: Theodore H. Davis, Jr., Atlanta, GA. Mr. Davis was renominated to his position as Financial Officer. He is a former Council Member and has served in the past as Committee Chair for committees 201 – Federal Trademark Legislation, 202 – International Trademark Treaties & Laws, 204 – State Trademark Laws and Chair for Division II – Trademarks and Unfair Competition and Division IX – Publications.
	Publications Officer: Joseph M. Potenza, Washington, DC. Mr. Potenza is nominated for the newly created (pending Section and Board of Governors approval) officer position of Publications Officer. He currently serves as the Chair of the Content Advisory Board of the Section and as a member of the Section Council. Among many past positions he has held, he is a former Secretary of the Section, former Division Chair of Division VI, former Chair of Committees 108 – Patent System Policy Planning, 510 – Young Lawyers, 601 – Trial and Appellate Rules and Procedure, 801 – Summer IPL Conference, 805 – Spring Conference, former Liaison to the Section of Business Law, and a former Chair of the Section of Science & Technology Law, and a member of the ABA Standing Committee on Publications Oversight.

Members of the Section Council for a four-year term ending in 2012:

	Antoinette M. Tease, Billings, MT. Ms. Tease is currently a member of the Council, serving the balance of the term vacancy created by Don Martens when he was elected to the position of Vice Chair in 2007. She is also the Vice Chair of the Content Advisory Board of the Section.
	Gary L. Griswold, St. Paul, MN. Mr. Griswold is a past Division Chair of Divisions IV, VII, and X, as well as a past Committee Chair of Committees 108 – Patent System Policy Planning, 401 - Confidential Rights of Contractors with the Government, 404 - International Technology Transfer, 409 – Antitrust Matters, and 553 - Special Committee on Corporate Practice.
	Philip C. Swain, Boston, MA. Mr. Swain is a member of the Books Editorial Board, and the Section’s Liaison to the SOC Ad Hoc Committee on Ethics and Professionalism. He is a past Committee Chair of Committees 502 – Ethics and Professional Responsibility, 601 – Trial and Appellate Rules and Procedure, and 604 - Federal Appellate Practice and Procedure and served on the Nominating Committee in 2004-05
	Donna Gies, Minneapolis, MN. Ms. Gies is currently the Chair of Division III – Copyrights. She is a former Division Chair of Division VII – Information Technology, and has served as Committee Chair for Committees 301 – Copyright Legislation, 304 – Visual Arts and Dramatic Works, 702 - Databases.
	According to Section bylaws, Gordon Arnold, current Chair-Elect, automatically assumes the office of Chair for the 2008-2009 Association year.

The Nominating Committee is chaired William L. LaFuze, Houston, TX. In addition  to the Chair, the Nominating Committee is comprised of E. Anthony Figg, Washington, DC, Cyntha E. Kernick, Pittsburgh, PA, Theodore H. Davis, Jr., Atlanta, GA and Mark Whitaker, Washington, DC.

As noted in a previous e-News message to the Section, additional nominations for any position are to be made by petition signed by not less than 100 members of the Section, listed by their ABA ID number. The 100 names must be representative of at least three states and must indicate that the individual has agreed to the nomination. The petitions are to be sent to the Chair and the Secretary of the Section and are to be received by these individuals not less than four months before the Opening Assembly of the Annual Meeting. The Opening Assembly will be held on Saturday, August 9, 2008.