November 2003 Chair's Bulletin

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Chair's Bulletin

VOL. 9 NO. 3 NOVEMBER 2003

House Committees Deliberate on Database Protection

Hayden W. Gregory
Section Legislative Consultant

When the September 23 joint hearing of the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property and the Energy and Commerce Committee Subcommittee on Commerce, Trade, and Consumer Protection was announced, many expected it to be a first step toward the early enactment of legislation to provide increased legal protection for compilations of information in databases. However, the hearing left the impression that database legislation is far from a done deal.

Such legislation, seen by proponents to be needed since the 1991 U.S. Supreme Court Feist decision narrowing copyright protection for such compilations, has been under consideration in the Congress for the past eight years. For the past five years, the Judiciary Committee and the Commerce Committee have each advocated their own bills on the subject, with the Judiciary Committee supporting legislation that would provide broader protection and stronger remedies for database owners.

Four years ago, each Committee reported its own bill to the House, but unresolved conflicts between the two led to the demise of both bills. At that point, the two committees decided to try for a negotiated resolution of their differences, and instructed their staffs to work together toward this end. That three-year process produced a joint staff recommendation of a draft bill, the "Database and Collections of Information Misappropriations Act of 2003," which was the subject of the September 23 hearing.

In most instances, the release of such a draft agreement signals resolution of differences between the two committees, with approval in both committees and in the House to follow shortly. However, by the time members completed their opening statements at the hearing, it was evident that sharp divisions of opinion still exist between the members of the two committees on the need for and wisdom of the proposed legislation.

In his opening remarks, Commerce Committee Subcommittee Chairman Cliff Sterns raised questions concerning the constitutionality of the proposed legislation in light of the U. S. Supreme Court's 1991 Feist decision, striking down copyright protection based on investment of time and resources and requiring originality. Sterns and other committee members, including some on the Judiciary Committee, questioned whether the degree and manner of protection proposed in the bill for factual information contained in databases might exceed the permissible limits of copyright protection spelled out in Feist.

U.S. Copyright Office General Counsel David Carson, testifying in general support of the legislation, asserted that the bill proposes valid database protection based on the Commerce Clause of the Constitution and not on the Copyright Clause, but many members seemed to be unconvinced by this distinction.

Opposition to the legislation was also expressed by the U.S. Chamber of Commerce, whose President and CEO, Thomas J. Donahue, questioned the need for the legislation in light of protection for databases already available under other IP laws, state trespass and misappropriation laws, and through contract and licensing agreements. Noting that the Chamber's membership includes many of America's most significant database producers and claiming that they would be asking for new legislation if it was needed, Donahue indicated that the Chamber believes that the legislation presents a threat of frivolous and costly litigation that would be damaging to businesses of all industries.

A copy of the bill that was considered at the September 23 hearing can be found at here.

The proposed legislation is under study by the Section's Databases Committee (No. 702).

ABA Files Amicus Brief
Opposing Adverse Inferences

Richard P. Beem
Co-Chair, Amicus Briefs
(Committee 605)

The Section has obtained approval for the ABA to file an amicus brief in Knorr-Bremse v. Dana, No. 01-1357 (Fed. Cir.). The Federal Circuit has taken the case en banc to reconsider its precedent "concerning the drawing of adverse inferences, with respect to willful patent infringement, based on the actions of the party charged with infringement in obtaining legal advice, and withholding that advice from discovery."

The brief lists, as counsel for Amicus Curiae, ABA President Dennis W. Archer and Section Amicus Briefs Committee Co-Chairs Richard P. Beem and Joseph N. Welch II. The brief is based on ABA policy from a resolution passed by the Section after full consideration:

"Section opposes in principle a blanket rule under which the failure of an accused infringer to introduce an opinion of counsel at trial will permit an inference to be drawn that either no opinion was obtained or, if an opinion was obtained, it was contrary to the accused infringer's desire to initiate or continue its use of the patentee's invention." (Passed 1990 SP57 R108 2A; Retained 2001; Approved by ABA 2001).

COMMITTEE NEWS

Computer Programs
(Committee 701)

Donna Gies
Committee Chair

Based in part upon Montana Business Incubator's research and at the request of Toni Tease, solo practitioner and patent attorney and Chair of the Open Source Code Subcommittee of the Section's Computer Programs Committee (Committee 701), Don McGowan of Osler, Hoskin & Harcourt LLP in Montreal has prepared a review of open source software initiatives at the government level outside of the USA. The paper reviews various open source licenses and the differences between them.

The paper is available here. For more information, contact Toni Tease at toni@teaselaw.com or Don McGowan at dmcgowan@osler.com.

Section To Co-Sponsor 2004 National CLE Conference

On January 3-8, 2004, the Section will co-sponsor the intellectual property law sessions at the 2004 National CLE Conference, coordinated by Law Education Institute (LEI). The Conference includes nine programming tracks.

The sessions cover aspects of patents, trademarks, copyrights, global IP law, and e-commerce.
The program will be held at the Snowmass Conference Center in Snowmass Village at Aspen, Colorado. For conference details see www.lawedinstitute.com, or call 800-926-5895.

European Parliament:
Software Is Patentable

Software in Europe is patentable, as long as certain conditions are met, according to the European Parliament in its delayed vote on September 25 (see Chair's Bulletin, October 2003 issue). The European Parliament voted on amendments to the proposed Directive on the Patentability of Computer-Implemented Inventions. The Parliament amended the text of the proposed Directive prepared by the European Commission (the European Union's executive body), which was originally issued over a year ago.

The Directive as approved by the Parliament retains the requirement that to be patentable, an invention must make a "technical contribution." The Parliament also emphasized "the mere implementation of an otherwise unpatentable method on a computer is not in itself sufficient to warrant a finding that a technical contribution is present." A determination that "business method" patents should continue to be unpatentable under the European Patent Convention prompted the inclusion of these provisions.

The Parliament also expressly endorsed reverse engineering of software to achieve interoperability and stated that patent rights should not prevent this. The EU Commission version had merely stated that decompilation should be permitted to the extent permitted under copyright law.

The proposal now moves to the European Council, where it will be considered in November. Given the controversy surrounding some of the provisions, approval by the member states of the European Union is not assured. If passed, the member states of the European Union will have to incorporate the law into their national patent. If agreement is not reached on the Directive, the European Commission has indicated that it may seek other ways to harmonize patent protection for software in Europe, including by direct amendment to the European Patent Convention.

The Section is studying the proposal for possible comment, since it will significantly affect interests of American companies and IP lawyers.

See Dr. Robert Harrison's full discussion of the Directive, European Parliament: Software Directive at www.abanet.org/intelprop/european_parliament.doc.

Section Profiles:
Young Lawyer Committee
Co-Chairs Promote IP Activities

Melanye Johnson and Kim Jessum are Co-Chairs of the Section's Young Lawyers Committee. They spearhead coordination of activities and programs for young lawyer members of the Section, including the Practical Tips CLE programs.

Melanye joined the Section to meet and share ideas with other members of the profession who practice Intellectual Property law.

Melanye practices law for E.I. duPont de Nemours & Company. Her practice in-house includes intellectual property litigation (federal and state courts), licensing, and counseling. Her first cases as a lawyer were in patent and trade secret litigation.

Melanye believes that the future for the Section looks phenomenal as the legal profession continues to realize the expansive impact of IP law on daily life, which she hopes will result in increased member participation in the Section. She perceives IP law as something that is constantly changing, because technology is constantly evolving. She believes that our laws will continue to expand to reflect the changing nature of technology and innovation.

Melanye is also a member of the ABA's Section of Litigation, and a Young Lawyers Division Liaison to the Section of Science and Technology Law.

Kim Jessum practices law with Morgan, Lewis & Bockius LLP's Philadelphia office. She finds herself active in the Section, because it provides a great opportunity to meet other intellectual property practitioners.

Kim's practice focuses on different areas within patent law that include litigation, business transactions, prosecution and client counseling.

Kim observes the constant demand for IP practitioners. She comments that there is a surge in transactions involving IP and patent and trademark prosecution when the economy is strong and an increased need for IP litigation when the economy is not so strong. Kim predicts a more diverse group of IP attorneys in the Section's future. She finds it encouraging to see more women and minorities entering the profession.

Kim serves as Chair of the Intellectual Property and Internet Law Committee of the Young Lawyer's Division; she is also a liaison to that Division and a member of the ABA's Section of Litigation.

BNA Flyer: Patent Litigation Strategies Handbook with 2003 Cumulative Supplement

BNA Letter from Bob Sacoff, Section Chair and Bill LaFuze, Chair-Elect

Moot Court Competition
Seeks Volunteer Judges

The Moot Court Competition, scheduled for January 17-18 at The George Washington University Law School, seeks judges to grade written briefs and evaluate oral arguments. Contact Ali Levin at alevin@law.gwul.edu, or James Cobb at jcobb05@law.gwu.edu.