Charles P. Baker
Section Chair, 2001-2002

When the Supreme Court on February 25 granted certiorari to hear a case involving the constitutionality of a recent copyright statute, many of us were surprised. Talking with copyright experts in our Section, however, it became plain that this case will probably be a major one for copyrights as well as other forms of intellectual property.As Past Section Chair Mort Goldberg of New York said, "This is one of the most important copyright cases the Court has decided to hear in many decades-- indeed, it may rank with cases like Graham v. John Deere, Kewanee Oil v. Bicron Corp., Diamond v. Chakrabarty, and The Trademark Cases [1879]. The case could present a field day for those who have an anti-IP sentiment-- those who say information wants to be free, less protection is necessarily better, the public domain promotes the progress of science and useful arts better than IP, and when technology advances, IP rights must be cut back."The Section immediately began the process of obtaining the two ABA approvals required for submission of an amicus brief on behalf of the ABA. ABA policy approval is required, and approval by ABA Standing Committee on Amicus Curiae Briefs is required. The schedule was tight-- only a few weeks to obtain the approvals in order to have enough time to prepare the brief. With guidance from Judy Saffer of New York, who chairs the Section’s Copyright Division, Donna Gies of Eagan, Minnesota, and her Copyright Legislation Committee, and Mary Kevlin of New York, and her Authors Committee, prepared reports and resolutions in about ten days for voting on by their respective committees. As this column is being written, those reports and votes are being sent to the Section’s Council, which will meet by telephone conference to consider and adopt a position. Our Section Director Betsi Roach and Legislative Consultant Hayden Gregory will then have a few days to prepare a submission to the ABA Executive Committee, which can adopt ABA policy when the Board of Governors and the House of Delegates are not available. We trust the Executive Committee will agree that the Section’s position, supported by the reports of Donna and Mary’s committees, is sound, and it will become ABA policy.Simultaneously, the Section’s own Amicus Briefs Committee, chaired by Mike Jakes of Washington, DC, and Cynthia Kernick of Pittsburgh, under the leadership of Pete Peterson of San Antonio, chair of the Section’s Litigation Division, are preparing the detailed submission required for approval by the ABA Amicus Committee.

Turning to the substance of the case, Eldred v. Ashcroft, 239 F.3d 373 (D.C. Cir. 2001), upheld the Sonny Bono Copyright Term Extension Act, which the Section successfully urged Congress to adopt pursuant to a Section resolution based on the Report of Committee 301 Copyright Legislation. That legislation extended the term of copyright protection from 50 years after death of an author to 70 years, or from 75 years to 95 years for corporate copyright holders. Congress based the extension on its power under the Constitution to secure for "limited times" exclusive property rights for inventors and creators of original works. The D.C. Circuit Court of Appeals rejected a contention that the extended period was longer than needed "to promote the progress of science" and the arts. The questions on which certiorari was granted are,

1. Did the D.C. Circuit err in holding that Congress has the power under the Copyright Clause to extend retrospectively the term of existing copyrights?

2. Is a law that extends the term of existing and future copyrights "categorically immune from challenge under the First Amendment"?

The real world issues at stake are the many works that are still used in a consistent way by their owners and are important sources of revenue. These would enter the public domain 20 years earlier if copyright extension laws are declared unconstitutional. People like Eric Eldred, the plaintiff, whose website publishes public domain works, object to such extensions as being retroactive. Those who support the defendant contend that without copyright protection, people could not afford to be creative, and this extension, which brings U.S. law closer to the law in Europe, does not mean that extensions will go on forever.

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CSTB Seeks Input On Domain Name System

The Computer Science and Telecommunications Board (CSTB) of the U.S. National Academy of Sciences is soliciting input regarding its study mandated by the U.S. Congress on Internet Navigation and the Domain Name System (DNS).

This study will examine potential new technologies or new uses of existing technologies that could support and improve the operation of the DNS and the navigation tools to meet these demands. The relevant legal, economic, political and social issues will also be considered.

The CSTB is currently soliciting public comment concerning the issues being addressed by this study as well as the following: (1) the particular characteristics of individual nations that are not being accommodated by currently-available mechanisms for Internet navigation; (2) the extent to which people in each country use domain names directly to find information that they seek on the Internet; (3) the technological challenges that inhibit citizens of a country from finding the information that they seek on the Internet; and (4) specific comments on improving Internet navigation and the DNS.

Comments are needed by April 10th; any input received after that might not be posted nor considered by the committee in its deliberations.

Further details on the study and this request can be found at www.cstb.org/web/project_dns.

Senate Judiciary Acts on State Sovereign Immunity

Hayden W. Gregory
Section Legislative Consultant

On February 27, the Senate Judiciary Committee held a hearing on S. 1611, a bill to restore remedies against State infringement of intellectual property rights. These remedies became unavailable as a result of U.S. Supreme Court decisions in 1999 invalidating statutes enacted in 1990 and 1992 to abrogate State sovereign immunity from suit for IP infringement. S. 1611 and an identical House bill, H.R. 3204, include provisions that would deny money damages to a State for infringement of its own IP rights unless that State waived sovereign immunity from suit when the State is itself the alleged IP infringer.

Copies of the prepared witness statements at the hearing can be found on the Judiciary Committee home page at judiciary.senate.gov, under "Hearings."

PTO Director James Rogan, testifying on behalf of the Administration, expressed support for legislation to reestablish State liability for IP infringement, but did not endorse S. 1611, noting that the Administration is in the process of determining the best legislative vehicle for that purpose. Chairman Leahy responded that S. 1611 is the only vehicle that has been put forward and urged the Administration to support it, noting that organizations such as the ABA and the Chamber of Commerce had done so.

The ABA support for the enactment of S. 1611 that Chairman Leahy referred to was expressed in a letter sent to Leahy by Section Chair Charles Baker on February 22. A copy of that letter is posted on the section website under Section Advocacy. S. 1611 is available under IPL Legislation.

House Committee Looks At Trademark Dilution Act
Hayden W. Gregory
Section Legislative Consultant

The House Subcommittee on Courts, the Internet, and Intellectual Property held an oversight hearing February 14 on the Federal Trademark Dilution Act (FTDA). Since its enactment in 1995, U.S. Circuit Courts of Appeal have split over the interpretation of when dilution of a famous mark occurs under the Act. Two Circuits have held that "actual, consummated harm" must be established, while three others have required only a showing of "likelihood of dilution." The IP Subcommittee is considering draft legislation to amend the FTDA to resolve the dispute in favor of a "likelihood of dilution" standard. Witnesses at the hearing expressed support for such amendments. Witness statements are available on the Internet at: www.house.gov/judiciary/courts.htm under the "February 14" hearing.

ICANN President Proposes Balanced Structural Reform
by Marylee Jenkins
Section Counsel

On February 24, 2002, ICANN’s President, M. Stuart Lynn, issued the "President's Report: ICANN The Case for Reform", a report proposing structural reforms of ICANN. In the Report, Mr. Lynn stated that not all of the original expectations of ICANN had been realized and that the original concept of a purely private sector body has been shown impractical.

Mr. Lynn suggested that ICANN needed a well-balanced public-private partnership, rather than a totally private or a totally governmental model. He proposed changing the current ICANN Board to a fifteen member Board of Trustees with ten members being At-Large Trustees (five nominated by governments and confirmed by the Board of Trustees and five nominated by an open Nominating Committee process and confirmed by the Board of Trustees) and five members being Ex Officio Trustees (chairs or designees) of three Policy Councils, and the Technical Advisory Committee and the ICANN CEO. A designee of the Internet Architecture Board and the chair of the Governmental Advisory Committee would serve as non-voting liaisons to the Board of Trustees.

The current Supporting Organizations would be replaced by three Policy Councils-- Address and Numbering Policy Council, Generic TLD Names Policy Council and Geo- graphic TLD Names Policy Council-- which would provide advice to the Board. A Technical Advisory Committee and a Security Committee would also be created.

According to Mr. Lynn, transparency and accountability would be achieved by allowing the Board of Trustees to make policy decisions and by the creation of a Manager of Public Participation and an Ombudsman. Finally, Mr. Lynn proposed that ICANN’s funding would come from both governmental and private participants and include both contributions for core functions and fees for services.

Mr. Lynn's report can be found at www.icann.org/general/lynn-reform-proposal-24feb02.htm.

 

Comprehensive CLE Programs

to be featured at the

2002 Summer IPL Conference

June 26-30, 2002Loews Philadelphia Hotel

Philadelphia, Pennsylvania

Visit the Section website for complete program details.

Online registration available after April 1st--

www.abanet.org/intelprop/summer2002

As with past Summer IPL Conferences, this year’s Conference offers a comprehensive selection of continuing legal education sessions covering a wide array of intellectual property law issues. Included this year is a special session offering Ethics credit. Check out the CLE program schedule below:

Wednesday, June 26

1:45-5:15 p.m.

Focus on Global Intellectual Property Law-- Global Perspectives on Technology Transfer and IP Procurement; Global Perspectives on IP Enforcement and Licensing.

Thursday, June 27

8:15-11:45 a.m.

Patent Litigation-- Festo: Where Do We Go From Here? A View from the Bar; from the Bench; from Inside the Corporation; Approaches to Construction.

Trademarks-- Uniform Domain Name Dispute Resolution Policy; Trade Dress and Dilution Recent Developments; Managing Your Brand Name On-Line; Hot Topics at the USPTO.

1:45-5:30 p.m.

Section Business Session--Features debate on the resolutions presented by the Section Committees, and discussion of important topics of interest to the IP law field. This year the Session will be Webcast on the Internet for individuals unable to attend in person.

Friday, June 28

8:15-11:45 a.m.

Intellectual Property in the eBusiness Environment-- Update on Domain Names; Fair vs. Unfair Use and Initial Interest; Securing Digital Rights for Authors; Business Method Patents.

Patent Prosecuting and Licensing-- IP Procurement-- Perspectives from corporations using outside counsel and in-house counsel; a law firm concentrating solely on patent prosecution; an IP Holding Company; Financing Licensing and Other Portfolio Extraction.

1:45-5:15 p.m.

Ethics Issues-- Conflicts of Interest; Prior Representation and the "Substantial Relationship" Test; Attorney’s Dual Role as Patent Prosecutor/Litigator; Conflicts Arising From Firm Mergers/Lateral Hiring; Controversial Issues Relating to the Ethical Rules.

Copyright Issues-- Protecting Artistic Expression in Useful Articles; U.S. Copyright; U.S. Design Patent; European Union Design Directive; New Act of The Hague Agreement; Architectural Works Copyright Protection Act; Year in Review; Copyright Cases; Copyright Initiatives.

Saturday, June 29

8:30-11:45 a.m.

Hot Topics in Intellectual Property Law-- The Economic Consequences of Trade Secret Misappropriation: Anti-Counterfeiting and License Protection in the Entertainment Arena: Anatomy of a Raid; Fair Use of Copyrighted Material; Limits on Privacy/Publicity Rights in the Context of "Non-Commercial" Commercial Speech.

And there’s more-- In addition to our comprehensive lineup of CLE programs, the Summer IPL Conference also offers a variety of social events-- luncheons, receptions, and the Annual Dinner-Dance. A slate of tours will cover a broad cross-section of Philadelphia area destinations, including the Philadelphia Museum of Art; Historic Philadelphia; the Seaport Museum and battleship New Jersey; the Barnes Foundation; Longwood Gardens and Brandywine Battlefield; Winterthur Gardens, the Hagley Museum and Brantwyn Estate; and an excursion bus to Atlantic City. The thrill of participatory competition returns with the annual Golf and Tennis Tournaments. There will also be a recreational group bicycle tour along the Schuylkill River trails.

The Loews Philadelphia Hotel-- For hotel reservations, call the Loews directly at 215/627-1200. Mention the ABA-IPL Summer Conference to receive the conference rate of $215 single/$235 double occupancy. The room reservation cutoff date is May 24.

The Summer IPL Conference will provide something of value to everyone in attendance. Don’t miss out on this opportunity. For further information, or to register online (after April 1), visit www.abanet.org/intelprop/summer2002, or call 312/988-6254.

The Summer IPL Conference--

Where IP Lawyers Should Be