William L. LaFuze
Section Chair, 2004–05

The pace of work on numerous projects underway in the Section of Intellectual Property Law continues to be brisk. I name below only a few of the many noteworthy events since the last Chair’s Bulletin.
First, the Section of Intellectual Property Law’s brief in Phillips v. AWH Corp. has been filed. Thanks again to Don Dunner and Richard Rainey for their efforts in getting this brief prepared in record time, with an extremely high-quality work product.
Second, the leadership of the Section continues to look for ways for Section self-improvement. We want the Section to provide as many useful services and meaningful programs as possible to our members. We also want to be an association that is highly desired for membership by persons who are intellectual property specialists (and those seeking to be intellectual property specialists). In that regard, the leadership spent a weekend in Chicago last fall in which we undertook a self-examination of where the Section is, and where it wants to go, with its structure, operations, and programs. Tony Figg headed a Task Force to study the results of the self-examination, resulting in several recommendations to Council for material change for the Section. At the ABA Annual meeting in Atlanta in August, the Council took several important steps to effect those changes. First, Council decided to hold three meetings spaced throughout the year. As a result, the midwinter meeting of the section leadership will be moved from January to November. Also, the summer conference held in June, usually at a resort location, and the major CLE programs associated with the summer conference, will be moved to the ABA’s Annual meeting, which is held in August. There are many details and transition plans that are required to effect these major changes. Other important potential changes will be considered at Council’s meeting in late October.
In my last Chair’s column, I reported on the efforts of the ABA to prevent the diversion of fees from the Patent and Trademark Office to other agencies within the Department of Commerce. About the time of my last letter, the ABA wrote two letters to several Senators and the Appropriations committee opposing the plan of the Appropriations committee to approve an appropriations bill, with the fee bill tacked on, which had no guarantee that fees would not be diverted from use by the Patent and Trademark Office. Unhappily, I must report that the Senate Appropriations Committee did not follow the ABA position and approved the bill without change. Thus, efforts to stop patent fee diversion must continue.
Next, I have appointed a Task Force, headed by Donna Bergsgaard, to study the Induce Act. New technology continues to pose new issues as to the extent of protection under our copyright law and enforcement alternatives. As a sequel to the Napster litigation, the Grokster case considered the legality of file sharing and transfer of copyrighted works in light of technology which moved would-be copyright infringers one step further from the clear reach of copyright protection. The Induce Act, if passed, would afford copyright owners a broad form of enforcement by imposing liability on those who create and commercialize new technologies used to manipulate and transfer copyrighted works. A basic issue arises for technologies that have both infringing and non-infringing uses. Consideration of the Induce Act and the Grokster case involves determining the proper balance as a matter of policy as to who should be liable for violations of copyright law. Other members of the Task Force are Fred Koenigsberg, Judy Saffer, Ralph Oman, Kate Spelman, Erich Andersen, David Einhorn, and Lisa Dunner.
I have also appointed a Task Force to design a new electronic masthead and “look and feel” for Section publications to enhance our marketing efforts. Chaired by Past Chair Bob Sacoff, this task force includes: Betsi Roach, Pamela Banner Krupka, David H.T. Kane, Lisa Dunner, Mike Monahan, and Todd German. The Task Force is working with a design consultant and is expected to bring a new look and feel to our e-mails and publications soon.
Don Martens and his FTC Task Force have been hard at work finalizing the Section’s FTC report. The report was approved in almost all essentials by Council in August but has been returned to Committee 108 for some additional work and to obtain a report that is complete in all respects.
The Section Chair believes that a revision of the bylaws is in order to clarify certain provisions, and to provide the greatest flexibility to the Section Council for managing the affairs of the Section. Mort Goldberg will chair this Task Force, which will include Tony Figg, Bob Armitage, Rob Lindefjeld, and Bill Keefauver.
The decision in Knorr-Bremse v. Dana Corp. was rendered by the Court of Appeals for the Federal Circuit in the last few weeks. In that case, the Court rejected the adverse inference rule in patent cases. That rule previously provided that an adverse inference could be drawn when a party having an opinion of counsel refused to produce the opinion on a claim of privilege. I am pleased to report that the Federal Circuit adopted essentially the same position and logic set forth in the Amicus Brief filed by the Section of Intellectual Property Law in that case – a position echoed by several other organized bar groups.
This promises to be an active and meaningful year for our Section, and I look forward to working with the many delightful volunteers who serve the Section.

Notice to Section Membership: Proposed Amendments of the Section Bylaws

Please see below proposed amendments of Section bylaws. The amendments were approved by the Section Council at its meeting on July 13, 2004, but insufficient time remained for notice to be given for a vote on them at the August 7, 2004 meeting of the Section at the ABA Annual Meeting in Atlanta. According to Section bylaws, a vote will now be taken at the Business Session of the Section at the ABA Annual Meeting, to be held on Saturday, August 6, 2005 at the Four Seasons Hotel in Chicago. (Time and room to be announced at a later date.)
The purpose of the amendments to Article V, Sections 1 and 3, is to implement the recommendations made by the Section's blue-ribbon Long Range Planning Committee to enable the Section to be more responsive to developing issues by giving the Section Council more flexibility in responding to external developments, e.g., in legislative or administrative matters, where the need for a Section response is urgent.  Adoption of these amendments will provide the Section with a capability for such greater responsiveness similar to that of other large Sections in the Association.
The purpose of the amendment to Article VI, Section 4, is to clarify that Section action at business meetings of the Section requires a majority vote of the registered members present and voting.
The proposed changes are listed on the attached pages, added language is underlined and deleted language is struck out.

 

 

 

Section of Intellectual Property Law Bylaw Amendments

[Added language is underlined; deleted language is struck out.]

Article V
Duties and Powers of the Council

Section 1.        
The Council shall have general supervision and control of the affairs of the Section subject to the provisions of the Constitution and Bylaws of the American Bar Association and the Bylaws of this Section.  The Council shall especially authorize all commitments or contracts which shall entail the payment of money.  The Council shall not, however, authorize commitments or contracts which shall entail the expenditure of funds in excess of the funds on deposit with the Association to the credit of the Section.
Additionally, the Council shall have full authority to act for the Section.  However, if such action would be  inconsistent with an  existing action by the Section , , Council may take such inconsistent action only upon an affirmative vote, subject to Sections 4 and 5, of two-thirds (2/3) of Council members present.  Any such action taken by the Council pursuant to this authority shall immediately constitute action for the Section and shall be reported to the members of the Section at the next meeting of the Section.  The Section shall have the power, at such meeting or at any subsequent meeting of the Section, to rescind, reverse, modify or overrule action taken by Council.
No action by the Section shall be considered an existing action by the Section after ten (10) years from the date of that action unless readopted by Council or the Section membership.
At appropriate times, as determined by the Section Officers Conference, the Council is authorized to submit a nomination for a Section member‑at‑large of the Board of Governors.  The selection of the nominee shall be made by the Council with due regard for the eligibility requirements for election to the Board of Governors. 

Section 2.        
The Council may ratify the establishment of special committees by the Chair or the Chair‑Elect and may authorize the Chair to create new standing committees to perform such duties and exercise such powers as the Council may direct, subject to the limitations of these Bylaws and the Bylaws of the American Bar Association.

Section 3.        
Subject to Sections 4 and 5, a majority of the members of Council constitutes a quorum, and no less than a majority of such quorum in favor of a Council action shall suffice to validate such action. 

Section 4.        
Members of the Council when personally present at a meeting of the Council shall vote in person, but when absent may communicate their vote, in writing, upon any proposition, to the Secretary and have it counted, with the same effect as if cast personally at such meeting.

 

Section 5.        
The Chair of the Section may, and upon the request of any member of the Council shall, submit or cause to be submitted in writing, to each of the members of the Council, any proposition upon which the Council may be authorized to act, and the members of the Council may vote upon such proposition or propositions so submitted, by communicating their votes thereon, in writing over their respective signatures to the Secretary, who shall record upon his or her minutes each proposition so submitted, when, how, at whose request same was submitted, and the vote of each member of the Council thereon, and keep on file such written and signed votes.  If the votes of a majority of the members of the Council so recorded shall be in favor of such proposition or if such majority shall be against such proposition, such majority vote shall constitute the binding action of the Council.

Article VI
Meetings

Section 1.        
The annual meeting of the Section shall be held during the annual meeting of the American Bar Association, in the same city or place as such annual meeting of the American Bar Association, with such program and order of business as may be arranged by the Council.

Section 2.        
Special meetings of the Section may be called by the Chair upon approval of the Council, at such time and place as the Council may determine.

Section 3.        
The members of the Section registered for and present at any meeting shall constitute a quorum for the transaction of business.

Section 4.        
Binding action during business meetings of the Section shall be by a majority vote of the registered members present and voting.

Section 5.        
When a member desires to speak, he or she will rise and address the presiding officer.  Upon being recognized, he or she will state his or her name.

Section 6.        
No member shall speak more than once at the same session upon any one question without the unanimous consent of the registered members present.

Section 7.        
No member shall speak more than three minutes on any one question without unanimous consent of the registered members present, unless he or she is engaged in making a report of a committee.

Section 8.        
The member who originally made the report or motion under discussion shall also be permitted to close the debate on same.
           

 

Section 9.        
Robert's Rules of Order Newly Revised (10th edition) shall be the parliamentary authority to govern meetings of the Section in parliamentary situations not covered by these Bylaws, unless a particular meeting of the Section otherwise directs.

Committee News

Committee 409 – Antitrust Matters

Edward V. Filardi and Carole E. Handler, Committee Co-Chairs

Committee 409 – Antitrust Matters, along with the Antitrust Section’s Intellectual Property and International Committees and the Section of International Law’s International Antitrust Law Committee are sponsoring a brown bag lunch titled “Gray Markets: What restraints can firms place on the reimportation of products?”
A panel of experts will discuss the rationale for and legality of import restraints that are imposed by U.S. manufacturers on their foreign customers that prevent these customers from reselling products that they purchased in foreign countries in the U.S. Restraints involving products that contain substantial intellectual property rights, such as pharmaceuticals, will receive particular attention, as well as ongoing cases.
The program will take place on Tuesday, November 16, from 12:00 noon to 1:45 p.m., at Cleary, Gottlieb, Steen & Hamilton, in Washington, D.C. Participants can attend in person, by phone, or by satellite. For details and to RSVP, e-mail info@ei.com.

 

Committee 505 – Membership

Betty A. Ryberg, Committee Chair

Do not miss the opportunity to serve on the Membership Committee this year. There are still openings. The committee is charged with encouraging enrollment of new members in the Section and retaining current IPL members. The committee is in the process of formulating exciting new activities for the upcoming year. This is the chance to help shape the future of the Section and to make a difference.
Fill out a committee form at www.abanet.org/intelprop/bulletin/committee_form.doc and mail or fax it in today.

PIIPA Seeks Volunteer
IP Professionals
Established in 2002, Public Interest Intellectual Property Advisors, Inc. or “PIIPA” is an international non-profit organization that makes pro bono professional intellectual property counsel available to developing countries and non-profit public interest organizations that seek to promote health, agriculture, biodiversity, science, culture, and the environment. Intellectual property professionals willing to consider volunteering their services on a pro bono basis are encouraged to review the PIIPA website and complete a volunteer form at www.piipa.org. For more information, contact Steven C. Price, Ph.D. at scprice@piipa.org or (202) 633-0811.

 

Mark Your Calendar—

 

20th Annual Intellectual Property Law Conference
April 14-16, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

2005 Summer IPL Conference

June 22-26, 2005
Palace Hotel
San Francisco, CA