Robert W. Sacoff
Section Chair, 2003-04

Dear colleagues and fellow members of the Section of Intellectual Property Law: Greetings.
As the 2003-2004 ABA year gets rolling, I am writing this Chair's Bulletin, my first, shortly after becoming Section Chair at the ABA Annual Meeting in San Francisco. Through many years of committee work in our Section, work chairing various committees and the Trademark Division, and serving as a member of Council, I have had the privilege of learning from, and being mentored by, some of the brightest and wisest lawyers in our field of practice, including but not limited to our recent Past Chairs, Mark Banner, Charlie Baker and Ed Fiorito. I hope enough of it has sunk in that I will serve the Section well in the year to come, because we surely have a lot of challenges in front of us - challenges as a lawyers' association (the largest IP organization in the world, I might add, as former Section Chair Greg Maier says he "never tires of saying"), challenges facing each of us as professionals, and challenges facing our clients in protecting and enforcing their intellectual property assets in a dynamically changing global environment.

Our Section is only as strong as its leadership, and only as effective as its membership support enables it to be- by participation in committee work, Section advocacy, continuing legal education, publications, and other Section initiatives. So I am starting my term by sending out a CALL TO ACTION! Please JOIN a committee, if you are not a member of one already. ATTEND one or more of our great (and fun) meetings this year - our Foreign IP Trials program at Fordham in New York City in October, or our 19th Annual Intellectual Property Law Conference in Washington in the Spring (cherry blossom time!), or our Summer IPL Conference next June in Toronto. VOLUNTEER to write an article for one of our publications, or REQUEST A SPEAKING OPPORTUNITY at one of our meetings. OFFER TO CHAIR A SUBCOMMITTEE on one of our committees - this is always music to our committee chairs' ears.

Our committee list and meeting schedule are all on the web site. If you want any advice or guidance, contact either me directly, or our Section Director, Betsi Roach, or any Division or Committee Chair. I hope to see new people participating in our Section meetings and activities this year, whether you are a new Section member or an existing Section member who has not been active in the past.

To summarize some of my own goals for the Section during the coming year, I am going to reprint the following article, which I was asked to write for the National Law Journal's special edition covering the ABA Annual Meeting. The NLJ asked all the incoming ABA Section Chairs to summarize their vision for their respective Sections. As a conscientious IP lawyer, I dutifully note that this particular article is copyrighted by the National Law Journal, and is reprinted here with their kind permission.

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IP LAW - HOT! HOT! HOT!
(Special to the National Law Journal)

It is a busy, exciting and rewarding time to be an IP lawyer. How many other legal specialties saw three Supreme Court cases decided last term (the Victoria's Secret, Dastar, and Eldred v. Ashcroft trademark and copyright cases)? How many others will see a new international treaty take effect this November to streamline their practice (the Madrid Protocol, facilitating trademark registration in approximately sixty countries)? How many others deal daily with branding and copyright piracy across the global marketplace, as well as inventions and infringements on the cutting edge of technology?

The IP field faces constantly new issues and swift changes legislatively, judicially, domestically and abroad. To help our Section's 22,000 members rise to these challenges, we will continue to provide an open and accessible forum to discuss and debate IP law, recommend policy, and serve our members' interests through advocacy, publications, CLE and networking. Against that background, here are some of the specific goals for the year.

We will continue to deliver high-powered CLE in our Washington Spring meeting (April 1-2, 2004), our IP Summer Conference (June 16-20, 2004), and our Litigation Tips programs. We will add a Trademark Day meeting with government personnel to our popular Copyright Day. We will increase our visibility and voice on international issues, to address the increasingly global scope of the business of American companies and the IP issues faced by their lawyers. First, our Section will co-sponsor a Foreign IP Litigation program on October 3-4, 2003, at Fordham University Law School. Sitting judges from courts in China, Germany, Italy, Japan and the U.K. will try a hypothetical patent, trademark and copyright case in five mini-trials to illustrate their respective trial practices. Second, our Summer IP Conference in Toronto next June will explore cross-border issues and afford interaction with our Canadian colleagues.

We will continue to produce high quality Section publications, which our member surveys identify as a top priority. We will also launch a new electronic newsletter and publish new books on trademark infringement remedies and IP issues in franchising. We are running a new member satisfaction survey, with results to be addressed in a triennial strategic planning retreat this September.

We are taking steps to increase in-house corporate IP lawyers' participation in Section activities and leadership, while continuing our ongoing efforts to promote gender, racial and ethnic diversity and opportunity in our Section's leadership and CLE programs.

We will continue our Section advocacy in the courts (as with our amicus curiae brief in the Victoria's Secret trademark case last year), in Congress (lobbying to end Patent Office fee diversion, perhaps amending the Federal Trademark Dilution Act, and promoting a Federal Right of Publicity Statute), and before the pertinent federal agencies (as with our testimony before the U.S. Patent & Trademark Office on the Madrid implementing regulations and the USPTO strategic plan). We will have a busy year and intend to stay ahead of the curve.

The preceding article is Copyright © 2003. National Law Journal. Reprinted with permission.

Trademark law developments

The traditional trinity of primary practice areas within the field of intellectual property law is patent, trademark and copyright law. There are, of course, related fields and this is not meant to denigrate them, but these are the principal substantive areas of law that comprise IP practice today. They are very different areas of law, based on different underlying principles, statutory and common law, but they intersect because clients tend to care first about securing exclusive rights to their IP assets, and only secondarily about the particular legal vehicle for providing that exclusivity.

Those of you who know me know that I am primarily a trademark lawyer and litigator, not a patent lawyer. It speaks highly of our Section that a trademark or copyright lawyer can become Section Chair, as it demonstrates the scope and commitment of our Section genuinely to be the SECTION OF INTELLECTUAL PROPERTY LAW. This is an important distinguishing feature of our association, of which we should all be justifiably proud.

Though I am primarily a trademark lawyer, I will represent and advocate the interests of our Section and its members, to the best of my ability, with respect to all issues that fall within our purview. That said, I intend not to miss an opportunity to advocate our Section's positions and interests in the realm of trademark law. For example, we will organize the Trademark Day noted above, with pertinent USPTO personnel to replicate the success of the Copyright Day we have held for many years.

Against that background, I want to emphasize the significance of the United States' adherence to the Madrid Protocol, which will facilitate foreign trademark application filings on behalf of U.S. companies in a very cost effective manner. The IPL Section has long been a supporter of the Madrid Protocol, both by its own Section resolutions and by successfully moving the ABA House of Delegates to adopt the following resolution as ABA policy in 2001:

"Resolved, that the American Bar Association approves the adherence by the United States to the Protocol to the Madrid Agreement for the International Registration of Trademarks, adopted in Madrid, Spain on June 27, 1989, and the amendment of the Lanham Act, 15 U.S.C. § 1051 et seq. (1994 & Supp. II 1996), to the minimum extent required for United States adherence."

On August 2nd, the U.S. deposited its instrument of accession to the Madrid Protocol to WIPO, in Geneva, Switzerland, which administers International Registrations under the treaty. The USPTO is on schedule to commence accepting Madrid applications on November 2, 2003, and finalize the implementing regulations toward the end of August. This follows our Section's written comments, (www.abanet.org/intelprop/response.doc) and testimony in the USPTO hearing on the proposed implementing regulations.

But the larger significance of U.S. adherence to the Madrid Protocol transcends trademark law. It is yet another piece of evidence that the world has become a global marketplace, and IP owners need to protect their intellectual property assets in a harmonious international structure of rules. Madrid is a success story of international cooperation in moving toward harmonization of IP rights. Stay tuned for developments on the patent harmonization front, with reports of the inter-association meeting in London coming up this fall, in which our Section will participate.

PTO fees and funding

USPTO funding, fees and ending the diversion of user fees are issues important to all our Section's members, so here is a brief update. On July 23rd, the House of Representatives passed H.R. 2799, the Departments of Commerce, Justice, and State, the Judiciary and Related Agencies Appropriations Act. The Act contains funding for the US Patent and Trademark Office for fiscal year 2004, which begins on October 1, 2003. The bill calls for funding of $1,238,700,000 for the PTO, about $57 million more than the Office will receive this year, and $156 million less than President Bush requested. However, $200 million of the Bush request was contingent upon the enactment of legislation to increase fee revenue by at least that amount, which legislation has not been enacted.

Our Section has consistently opposed the diversion of PTO user fee revenue to fund other activities, and last year we succeeded in making this one of the ABA's legislative priorities. A record number of Section members lobbied Congress on ABA Day last Spring to end PTO fee diversion. Based on the current estimate of $1.3 billion revenue in 2004 (not including any amounts resulting from enactment of higher fees), net diversion in FY 2004 would be about $60 million under H.R. 2799. Only about $1.14 billion of the FY04 collections would be provided to the Office, but $100 million of revenue collected in previous years would be carried forward, thus reducing the net diversion (the difference between total collections and total funding made available) to about $60 million.

It is not yet clear how actual funding for the PTO would be affected by the enactment of H.R. 1561, the pending bill that would increase PTO user fees and raise about $200 million additional revenue. As approved by the House Judiciary Committee on July 9, H.R. 1561 would make all user fee revenue available to the Office immediately upon collection, without having to ever go through the appropriations process. However, congressional appropriators successfully opposed a similar bill two years ago that would have taken PTO funding out of the appropriations process, and have signaled their opposition to this feature of H.R. 1561. If a fee bill is enacted that does not have such a provision, it will be up to the discretion of the appropriation committees whether the additional revenue is made available to the PTO.

In this regard, the report of the Appropriations Committee to accompany the current funding bill was notably critical of the PTO's progress in implementing the five-year Strategic Plan for the Office. It stated, "the Committee is not convinced of the prudence of appropriating additional resources for a process that is in need of and is undergoing a systematic overhaul." This contrasts with a Senate Appropriations Committee report a year ago, which stated that the Office's efforts were "generally responsive to direction from Congress" to develop and implement such a plan, and which stated "If any implementing legislation including fee changes are approved by Congress and enacted into law, the Committee would favorably consider a supplemental request that would use any additional fee income resulting from increased PTO fees to improve patent quality and reduce patent and trademark pendency at the PTO."

Prospects for PTO funding is further complicated by the fact that enactment of the fee bill is by no means assured, given the controversy concerning the anti-diversion provisions. Some key supporters of the fee bill, both within Congress and in the private sector, have indicated that they will oppose the bill if it is stripped of its anti-diversion provisions.

Our Section, and our Legislative Consultant Hayden Gregory, will be actively monitoring, reporting on, and endeavoring to influence further legislative developments in this regard.

Outsourcing of patent searching

I conclude with an update on a controversial USPTO restructuring and cost-efficiency initiative. H.R. 1561, the PTO fee bill, also contains an amendment adopted by the Judiciary Committee that would place restrictions on implementation of the Office's plan to contract out the patent searching function to private search firms. The bill would require the successful completion of an 18-month pilot project to demonstrate the feasibility of outsourcing the search function. The results of the pilot project would be reported by the PTO Director to the Patent Public Advisory Committee, which would evaluate the success of the project and report its findings to Congress. Full implementation of contractor searching could proceed one year later unless Congress enacts legislation to prohibit it.

A copy of H.R. 1561, the PTO fee bill, containing the text of the bill as approved by the House Judiciary Committee, can be accessed at www.abanet.org/intelprop/pto_fee_bill1561.doc. We have referred the matter for study by the appropriate Section committee and will report further in due course.

Databases Committee
(Committee 702)

Antoinette M. Tease
Committee Co-Chair

Based in part on research conducted by the Montana Business Incubator and at the request of Toni Tease, General Counsel for Rocky Mountain Technology Group, Inc. and Chair of the Open Source Code Subcommittee of the Section's Committee 701-Computer Programs Committee, Don McGowan of Osler, Hoskin & Harcourt in Montreal is preparing a review of open source software initiatives at the government level outside of the USA. The paper will review various open source li-censes and the consequences of each for governments with respect to open source software. Using the SCO v. IBM case and the related litigation between Red Hat and SCO as examples, the paper will also review the effect of US litiga-tion and practices on the international community. Contact Toni Tease at tonit@rmtg.com or 406/869-6402.

Special Committee on
Promotion and Marketing Law
(Committee 463)

Thad Chaloemtiarana
Committee Chair

Special Committee 463 will study copyright, patent and trademark issues and implications in the field of promotions and marketing law. The Committee is soliciting members and accepting recommendations on topics of particular interest to the Section. Contact Thad Chaloemtiarana with ideas at tc@pattishall.com or 312/554-8000.

BNA Books Issues Supplement to PTC Regulations Publication

BNA, announces publication of the June 2003 Supplement to Patent, Trademark, and Copyright Regulations.
Patent, Trademark, and Copyright Regulations provides a convenient, one-volume compliation of all the intellectual property regulations found in Volume 37 of the C.F.R. plus extra materials not published in Volume 37.

The publications are available online at www.bnabooks.com.