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January 4, 2002, 9:00 AM ET, Alert No. 339.
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WTO AB Addresses U.S. Statute Affecting Confiscated Trademarks
1/2. A World Trade Organization (WTO) Appellate Body (AB) issued a report [108 pages in PDF] titled "United States -- Section 211 Omnibus Appropriations Act of 1998". The report found that portions of Section 211, which is directed at trademarks confiscated by Castro's Cuban communists, violates WTO rules. However, AB report found that WTO members may protect trademarks by establishing their own trademark ownership criteria that take into consideration uncompensated takings.
Section 211. The U.S. Congress enacted the Omnibus Appropriations Act of 1998 at the tail end of the 105th Congress. It was a massive bill containing appropriations for a wide range of agencies. It also contained a large number of non appropriations items, such as the original Internet Tax Freedom Act, and Section 211, which is the subject of this WTO AB report.
Section 211 provides, in part, that "No U.S. court shall recognize, enforce or otherwise validate any assertion of treaty rights by a designated national or its successor- in- interest under sections 44 (b) or (e) of the Trademark Act of 1946 (15 U.S.C. 1126 (b) or (e)) for a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated unless the original owner of such mark, trade name, or commercial name, or the bona fide successor- in- interest has expressly consented." It further provides that "The term ``designated national´´ has the meaning given such term in section 515.305 of title 31, Code of Federal Regulations, as in effect on September 9, 1998, and includes a national of any foreign country who is a successor- in- interest to a designated national." This regulation, in turn, identifies post 1959 Cuba. Hence, the statute applies to trademarks confiscated by Castro's communist government after its take over of Cuba.
Havana Club Rum. The present proceedings resulted from a dispute between claimants to the use of the mark "Havana Club" in the U.S. in connection with the sale of rum. Bacardi Ltd, a Bermuda corporation, claims that it acquired the mark from the original owner. Pernod Ricard, a French company, claims that it acquired the mark from Castro's communist government.
Earlier Proceedings. The European Communities initiated a WTO proceeding in which they alleged that Section 211 is inconsistent with the obligations of the U.S. under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement). A WTO panel ruled previously. Both sides appealed that ruling.
AB Report. The WTO Appellate Body wrote that Section 211 violates WTO rules. It is contrary to the national treatment and most favored nation obligations under WTO rules. However, the AB added that "this ruling is not a judgment on confiscation as that term is defined in Section 211. The validity of the expropriation of intellectual or any other property rights without compensation by a WTO Member within its own territory is not before us. Nor do we express any view, nor are we required to express any view in this appeal, on whether a Member of the WTO should, or should not, recognize in its own territory trademarks, trade names, or any other rights relating to any intellectual or other property rights that may have been expropriated or otherwise confiscated in other territories. ... However, where a WTO Member chooses not to recognize intellectual property rights in its own territory relating to a confiscation of rights in another territory, a measure resulting from and implementing that choice must, if it affects other WTO Members, comply with the TRIPS Agreement, by which all WTO Members are voluntarily bound. In such a measure, that WTO Member must accord "no less favourable treatment" to the nationals of all other WTO Members than it accords to its own nationals, and must grant to the nationals of all other WTO Members ``any advantage, favour, privilege or immunity´´ granted to any other WTO Member.
Both the USTR and EU issued press releases claiming victory. See, USTR release and EU release.
Taiwan Joins WTO
1/1. Taiwan became the 144th member of the World Trade Organization (WTO). Secretary of Commerce Don Evans stated in a release that "I congratulate Taiwan on this historic achievement. Taiwan's accession to the WTO will further open Taiwan's market to American exports of industrial goods and services, including key telecommunications and financial services sectors."
BXA Amends Control List Regarding Computer Electronics
1/3. The Bureau of Export Administration (BXA) published a notice in the Federal Register that it has amended its rules regarding export of dual use items. These are changes to the Commerce Control List (CCL), which identifies items subject to Department of Commerce export controls. There are numerous changes regarding microprocessors and other computer components and technologies. These rule changes are effective January 3, 2002. See, Federal Register, January 3, 2002, Vol. 67, No. 2, at Pages 457 - 478.
USPTO Revises Rules of Practice Re PCT Applications
1/4. The U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register that it has adopted a rule revising its rules of practice relating to applications filed under the Patent Cooperation Treaty (PCT).
The notice states that last year "the PCT Assembly adopted an amendment to the PCT Article 22 ... to change its time limit for entering the national stage of twenty months from the priority date of the PCT application to a time limit of thirty months from the priority date of the PCT application."
The notice continues that "With this amendment to PCT Article 22, the time limit under PCT Article 22 and the time limit under PCT Article 39 will be the same: thirty months from the priority date of the PCT application. Thus, the PCT will provide a single time period for national stage commencement for PCT applications, regardless of whether the applicant filed a Demand for an international preliminary examination. Therefore, applicants will no longer be required to file a Demand for an international preliminary examination under PCT Article 31 (and pay the international preliminary examination fees under 37 CFR 1.482) in order to delay commencement of the national stage until thirty months from the priority date. An applicant's decision whether to file a Demand under PCT Article 31 may be based upon whether the applicant wants an international preliminary examination report, and not upon whether the applicant wants to delay commencement of the national stage until thirty months from the priority date."
This rule is effective April 1, 2002. See, Federal Register, January 4, 2002, Vol. 67, No. 3, at Pages 520 - 524.
People and Appointments
1/3. The U.S. Telecom Association (USTA), a Washington DC based group that represents incumbent local exchange carriers, announced expanded roles for its three VPs who oversee legislative, policy and regulatory efforts. Michael Rubin will continue to lead the lobbying efforts, with the title of VP, Government Affairs and Chief Lobbyist. David Cohen will manage the newly created policy division as VP, Policy. Lawrence Sarjeant will oversee the law department as VP, Law and General Counsel. The USTA is lobbying for passage of HR 1542, the Tauzin Dingell bill. See, USTA release.
1/2. Robert Borchardt will be the 2002 Chairman of the Board of Governors of the Electronic Industries Alliance (EIA). Borchardt is Ch/CEO/P of Recoton Corporation, a producer and marketer of consumer electronic accessories, home speakers and car audio products and video game products. See, EIA release.
1/2. Motorola announced that Edward Breen is P/CEO, effective January 1, 2002, and has been elected to the Board of Directors. He will report to Christopher Galvin, the Ch/CEO. See, Motorola release.
1/3. California Governor Gray Davis announced the appointment of Jesse Szeto as Assistant Secretary of the Division of Science, Technology and Innovation, of the Technology, Trade and Commerce Agency.
FCC Reallocates Small Spectrum Blocks
 12/28. The FCC announced that it adopted an order reallocating 27 megahertz of spectrum from federal government use to other uses. The order reallocates seven small spectrum blocks: the 216-220 MHz, 1390-1395 MHz, 1427- 1429 MHz, 1429-1432 MHz, 1432-1435 MHz, 1670-1675 MHz, and 2385-2390 MHz bands. This is ET Docket No. 00-221. See, FCC release.
Friday, Jan 4
10:00 AM - 1:00 PM. The FCC's Network Reliability and Interoperability Council will hold a meeting. See, notice in Federal Register, November 13, 2001, Vol. 66, No. 219, at Page 56823. Location: FCC, Commission Meeting Room, Room TW-C305, 445 12th St. SW., Washington DC.
12:15 PM. The Federal Communications Bar Association's Wireless Telecommunications Practice Committee will host a luncheon. The speakers will be advisors to the FCC Commissioners: Peter Tenhula (Powell), Bryan Tramont (Abernathy), Paul Margie (Copps), and Monica Desai (Martin). The price to attend is $15.00. RSVP to Wendy Parish at Location: Sidley Austin Brown & Wood, 1501 K Street, NW Conference Room 6-E, Washington DC.
Deadline to submit oppositions and comments to the FCC in response to Cingular Wireless', Nextel's, and Verizon Wireless' petitions for reconsideration of certain provisions of the FCC's October 12 orders addressing and conditionally approving requests for waivers and approval of revised deployment plans for wireless Enhanced 911 (E911) services. See, FCC Notice. (CC Docket No. 94-102.)
Monday, Jan 7
9:15 AM. The U.S. District Court (DC) will hold a hearing on Microsoft' motion to amend the scheduling order (to delay the trial date) in the government antitrust lawsuit. Nine of the state plaintiffs have not joined in the settlement agreement negotiated by Microsoft, the Department of Justice, and the other state plaintiffs. See, order [PDF]. This is Civil Action No. 98-1233 (CKK), Judge Colleen Kotelly presiding.
10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Bowers v. Baystate Technologies, No. 01-1108. Location: Courtroom 402, 717 Madison Place, NW.
Deadline to resubmit comments with the U.S. Department of Justice (DOJ) regarding the proposed settlement in the antitrust case titled U.S. v. 3d Systems Corp. and DTM Corp. (D.C. No. 1:01CV01237). The original comment period closed on November 26, 2001. However, because of disruption of the U.S. Mail in Washington DC, the DOJ requests that comments be resubmitted. The deadline is 15 after publication of a notice in the Federal Register on December 21, 2001, which would fall on Saturday, January 5. See, notice in Federal Register.
Tuesday, Jan 8

The Supreme Court will hear oral argument in Festo Corporation v. Shoketsu Kinzoku Koygo Kabushiki, No. 00-1543, a case regarding the doctrine of equivalents in patent law.

Wednesday, Jan 9
10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Fantasy Sports v., No. 01-1217, an appeal from the U.S. District Court (EDVa). This is a patent infringement case regarding U.S. Patent 4,918,603, titled "Computerized Statistical Football Game". (D.C. No. 99-CV-2131103; opinion at F. Supp. 2d 886 (E.D.Va. 2000).) Location: Courtroom 402, 717 Madison Place, NW.
10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in ManTech Telecommunications v. US, No. 01-5090. Location: Courtroom 402, 717 Madison Place, NW.
12:15 PM. The Federal Communications Bar Association's Telecom Competition Issues Committee will host a brown bag lunch. Michael Katz, a Deputy Assistant Attorney General for the DOJ's Antitrust Division, and former Chief Economist of the FCC, will speak about his observations on the similarities and differences that characterize the two agencies' approach to competition issues. Location: CTIA, 1250 Connecticut Ave., NW, 8th floor conference room.
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