| Challenges to Source Code
Copyright Registration & the Doctrine of Primary
Jurisdiction |
4/8. The U.S.
Court of Appeals (9thCir) issued its opinion
[PDF] in Syntek
Semiconductor v. Microchip Technology, a case
in which an alleged infringer sought a declaratory judgment
from the U.S. District Court that a copyright registration of
computer source code is invalid. The District Court granted
summary judgment to the copyright holder. The Appeals Court
vacated. It held that, pursuant to the doctrine of primary
jurisdiction, the case should be dismissed without prejudice,
so that the infringer may seek an administrative remedy at the
Copyright Office.
Background. Microchip
Technology is a Delaware corporation based in Chandler,
Arizona. It designs, manufactures, and sells micro
controllers. Micro controllers are integrated circuits used to
control a particular system or process in an electronic
product. The operation of micro controllers is dictated by low
level programming micro instructions called micro code, which
are fixed in storage. Microchip manufactures and sells the PIC
16C5x micro controllers, which contain the PIC 16C5x micro
code.
Microchip registered its PIC 16C5x micro code with the U.S.
Copyright Office. However, the Appeals Court explained that
"Microchip did not have in its possession the original
PIC 16C5x source code when it registered its program with the
Copyright Office; so Microchip deposited source code that it
had decompiled from the object code embedded in the PIC 16C5x
computer chip. Microchip informed the Copyright Office of the
nature of its deposit". The Copyright Office then
registered the copyright.
Syntek Semiconductor is a Taiwan corporation that also
designs, manufactures, and sell micro controllers. Microchip
asserts that Syntek products have infringed its copyright.
Taiwanese Actions. Microchip has twice presented its
findings to the public prosecutor in Taiwan that Syntek has
produced and sold products that infringe its copyright. In a
1993 proceeding, Syntek was indicted, but later settled with
Microchip. More recently, the Taiwan prosecutor again indicted
Syntek and two of its senior officers for criminal copyright
infringement. The Taiwan criminal court found Syntek's
officers guilty of criminal copyright infringement in April of
1999. Syntek appealed that decision.
District Court. Syntek filed a complaint in March of
1999 in U.S.
District Court (DAriz) against Microchip seeking a
declaratory judgment that Microchip's U.S. copyright
registration of the PIC 16C5x micro code is invalid. Syntek
alleges that Microchip, by depositing source code that it had
decompiled from object code, did not comply with the
applicable regulations when registering its program. The
District Court granted summary judgment to Microchip.
Appeals Court. The Court of Appeals raised the question
of primary jurisdiction, sua sponte. It vacated the judgment
of the District Court and remanded with instructions to
dismiss the action without prejudice pursuant to the primary
jurisdiction doctrine in order that the parties may pursue
appropriate administrative remedies before the Copyright
Office.
The Appeals Court wrote that "Primary jurisdiction is not
a doctrine that implicates the subject matter jurisdiction of
the federal courts. Rather, it is a prudential doctrine under
which courts may, under appropriate circumstances, determine
that the initial decisionmaking responsibility should be
performed by the relevant agency rather than the courts."
It added that "The doctrine of primary jurisdiction is
not equivalent to the requirement of exhaustion of
administrative remedies."
The Appeals Court followed a four part test announced by the
Ninth Circuit in U.S. v. General Dynamics Corp., 828
F.2d 1356 (9th Cir 1987). The Appeals Court wrote in the
present appeal that "Although the question is a matter
for the court's discretion, courts in considering the issue
have traditionally employed such factors as (1) the need to
resolve an issue that (2) has been placed by Congress within
the jurisdiction of an administrative body having regulatory
authority (3) pursuant to a statute that subjects an industry
or activity to a comprehensive regulatory authority that (4)
requires expertise or uniformity in administration."
The Court analyzed each of these four factors. On the first
factor, it wrote that "Congressional intent to have
national uniformity in copyright laws is clear." On the
second factor, it wrote that "the question of whether
decompiled object code qualifies for registration as source
code under the Copyright Act and regulations is an issue of
first impression. It also involves a complicated issue that
Congress has committed to the Register of Copyrights."
On the third prong, the Appeals Court noted that Syntek seeks,
not a declaratory judgment that the copyright in invalid, but
rather a declaration that the registration is invalid. The
Appeals Court wrote, "Thus, resolution of the question at
hand requires an analysis of whether the agency acted in
conformance with its own regulations when it granted the
registration. Accordingly, referral to the agency for
consideration of these issues in the first instance is
particularly appropriate."
Fourth, and finally, the Court reasoned that while Syntek
plead that it seeks a declaration of registration invalidity,
this is indistinguishable from the administrative remedy of
copyright registration cancellation. Hence, it already has an
administrative remedy.
The Court concluded that all four factors are met, and hence,
that dismissal pursuant to the doctrine of primary
jurisdiction is appropriate.
The Court's ruling addresses only the doctrine of primary
jurisdiction. The Appeals Court did not address the question
of whether decompiled object code qualifies for registration
as source code under the Copyright Act and regulations. Nor
did it address whether a private right of action exists for
cancellation of a copyright registration.
Finally, the Appeals Court added that "we need not decide
... whether remedies are available under 17 U.S.C.
§ 701(e)". This section pertains to the general
responsibilities of the Copyright Office. See also, 17
CFR § 201.7, regarding cancellation of completed
registrations by the Copyright Office. |
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| SEC Official Addresses
Privacy and Information Security |
4/8. Lori Richards of the Securities
and Exchange Commission (SEC) gave a speech
titled "Furthering Good Compliance: Current Areas of
Focus in SEC Examinations". Richards is Director of the
SEC's Office of Compliance Inspections and Examinations. She
spoke at the National Regulatory Services, 17th Annual Spring
Compliance Conference, in Miami Beach, Florida.
She stated that "Regulation S-P, the SEC's new privacy
rules, became effective last July. During our exams, we're
placing particular focus on that part of the rule known as the
``safeguard rule,´´ which requires firms to have safeguards
over the security of information. Our information technology
staff are reviewing firms' information technology systems,
including firewalls, encryption and other protections."
The SEC promulgated Regulation
S-P, 17 CFR Part 248, pursuant to Section 504 of the Gramm
Leach Bliley Act. |
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| Delaware
Court Denies HP Motion to Dismiss |
| 4/8. The Delaware Chancery Court denied Hewlett Packard's (HP) motion to
dismiss Walter Hewlett's complaint regarding the merger of HP
and Compaq. HP issued a release
in which it stated that "We remain optimistic we will be
able to complete the merger on our current schedule. HP
continues its progress in integration planning and looks
forward to the receipt of the certified vote result from the
HP shareowner meeting, which is expected within a few
weeks." |
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| Silicon Valley
Representatives Seek More Funding for Chip Research |
4/8. Rep. Anna Eshoo
(D-CA), Rep. Zoe
Lofgren (D-CA), and Rep.
Michael Honda (D-CA), who represent three Silicon Valley
districts, wrote a letter
to Rep. Jerry Lewis
(R-CA) and Rep. John
Murtha (D-PA), the Chairman and ranking Democrat on the
House Appropriations Committee's Subcommittee on Defense,
asking that Defense Advanced Research Projects Agency's (DARPA)
Focus Center Research
Program (FCRP) be funded at the level of $10 Million in FY
2003.
The DARPA's web site states that the FCRP is a collaborative
effort between the DARPA, the Office of the Deputy
Undersecretary of Defense for Science & Technology, and
the Microelectronics Advanced Research Corporation to
establish centers in "Materials, Structures &
Devices" and "Circuits, Systems & Software"
at U.S. institutions of higher education.
The trio of Congressmen wrote that "Continuing
microelectronics technology advances are increasingly
difficult to make. As semiconductors become ever denser,
faster, and cheaper, they approach physical limits that will
prevent further progress with current chip making
processes." They added that "The research conducted
in this program is long range (typically eight or more years
out) and is essential for the timely development of
replacement technology for the current chip making
process." |
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| House Commerce Committee to
Mark Up Dot Kids Bill |
4/8. The House
Commerce Committee has scheduled a meeting to mark up HR
3833, "Dot Kids Implementation and Efficiency Act of
2002" for Wednesday, April 10. The Subcommittee on
Telecommunications and the Internet approved the bill on March
7 without amendment by a unanimous voice vote. It is sponsored
by Rep. John Shimkus
(R-IL), Rep. Ed Markey
(D-MA), and others.
This bill provides that "The NTIA shall require the
registry selected to operate and maintain the United States
country code Internet domain to establish, operate, and
maintain a second level domain within the United States
country code domain that provides access only to material that
is suitable for minors and not harmful to minors". |
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| ACT Comments
on Digital Music Copyright Issues |
4/8. The Association
for Competitive Technology (ACT) wrote a letter
[PDF] to several members of the House Judiciary Committee, and
its Court, Internet and Intellectual Property Subcommittee,
regarding digital music copyright issues. It stated that
"We strongly believe that the marketplace, without the
assistance of additional legislation or regulation, is in the
best position to respond to the demands of consumers and
copyright holders."
ACT wrote that "we remain steadfast in opposing
government mandated and managed technology standards". It
stated that "The government should not pick winners and
losers through its certification process; especially while the
IT industry is working to achieve an open DRM standard."
It also stated that "These standards will ``freeze´´
technology by requiring government approval of design changes.
Instead of real time innovation, we could easily end up with a
one size fits all standard."
ACT also commented on HR
2724, the Music Online Competition Act (MOCA), sponsored
by Rep. Rick Boucher
(D-VA) and Rep. Chris
Cannon (R-UT). ACT wrote that "MOCA's
nondiscriminatory licensing provision is tantamount to
compulsory licensing. ... We believe that compulsory licensing
schemes erode intellectual property rights and act as a
disincentive to innovate."
However, ACT recommended that the Congress amend 17 U.S.C.
§ 117. It wrote that "Section 117 permits the owner
of a copy of a computer program to make an additional copy of
the program where the making of such a copy is an essential
step in the utilization of the computer program conjunction
with a much and that it is used in no other matter. Given that
temporary or ``buffer´´ copies are a characteristic of most
forms of streaming digital content, there is a question as to
whether these copies should be precluded from liability. ACT
feels that language should be added to section 117 to remove
any uncertainty in this regard as it will aid in the creation
of robust DRM solutions for streaming content." |
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| IBM Touts
Its DRM Software |
4/8. IBM
announced "new software that enables customers to
digitally protect and secure copyrighted and digital content
for content management, distribution and e-commerce
applications. The new Electronic Media Management (EMMS)
software now includes support for open standards and can
secure all types of digital media, including audio, text,
video, and streaming media."
IBM further asserted that with its software "Hollywood
and entertainment content creators can share digital assets
and assign rights to a broader range of content. In
healthcare, a provider can transfer digitized patient records
between doctors, without compromising the security of these
protected records. Similarly, banks and financial institutions
that process requests from consumers for mortgages and loans
can use EMMS to protect this personal information and allow
status updates and approvals to be accessed only by authorized
individuals. Government agencies that generate video from
surveillance technology or scanned satellite images can
benefit from EMMS's rights management capability, which may be
used to prevent theft, unauthorized use and access, and ensure
authenticity of the content." See, IBM
release [PDF]. |
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| People and
Appointments |
4/1. James
Blank was named a partner in the New York office of
the law firm of Latham &
Watkins. He focuses on intellectual property litigation
and counseling, including patent infringement, trademark
infringement, trade dress infringement, unfair competition,
and copyright infringement. He also advises clients on
technology transactions and intellectual property issues that
arise in connection with mergers, acquisitions and corporate
financings. See, LW
release.
4/2. Jack Lever was named Chair of the Intellectual
Property Department of the law firm of McDermott Will & Emery. He
replaces Ray Lupo. See, MWE release.
4/4. Carolyn Gleason was named head of the
International Trade Practice Group of the law firm of McDermott Will & Emery. She
focuses on dispute settlement under the General Agreement on
Tariffs and Trade (GATT) and the World
Trade Organization (WTO). The group handles WTO cases,
import relief, customs work, export control work, bilateral
and regional trade issues, trade legislation and other
international trade matters, and preventing competitors from
engaging in unfair trade practices. See, MWE release.
4/5. The law firm of Hunton
& Williams elected 15 attorneys to partnership,
including Emerson Briggs, Doug Heffner, Derek Johnston, and
John Martin. Emerson
Briggs works in the Washington DC office, where he
focuses patent and trademark litigation at the administrative,
trial and appellate levels; he also works on the protection,
enforcement and licensing of e-commerce and Internet patents,
trademarks and copyrights. Doug
Heffner also works in the Washington DC office, where
he focuses on international trade. Derek
Johnston works in the Atlanta office, where he focuses
the development and commercialization of products and services
in the computer, software, hardware, Internet, e-commerce and
information technologies industries. John
Martin works in the Richmond office, where he focuses
on trial and appellate litigation, with an emphasis on
antitrust, intellectual property and unfair competition. See, HW
release.
4/8. Robert Mirelson was named Deputy Chief of the Federal Communications Commission's
(FCC) Consumer and
Governmental Affairs Bureau (CGB). His area of
responsibility will be consumer outreach. He previously worked
for Booz Allen Hamilton.
Before that, he served for 29 years in the U.S. Army. |
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| About Tech Law Journal |
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Privacy
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Notices
& Disclaimers
Copyright 1998 - 2002 David Carney, dba Tech Law Journal. All
rights reserved. |
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| Tuesday, April 9 |
The Supreme Court of the U.S. is on recess until Monday,
April 15.
The House will return from its Spring District Work Period. It
will meet at 2:00 PM for legislative business to consider a
number of measures under suspension of the rules.
8:30 AM. The Global Information
Infrastructure Committee will hold a meeting regarding Internet
use in China. For more information, contact Robert Rogers
at rrogers @giic.org or
202 261-6572. Location: Winner's Room, National Press Club, 529 14th
St. NW, 13th Floor.
9:30 AM - 12:00 NOON. The Federal
Trade Commission (FTC) and the Antitrust Division of the
Department of Justice will continue their joint hearings
titled Competition and Intellectual Property Law and Policy
in the Knowledge Based Economy. See, agenda.
Location: Room 432, FTC, 600 Pennsylvania Ave., NW.
10:00 AM. Mikhail Lesin, Minister of Information and Press of
the Russian Federation, will give a speech titled The State
of the Russian Media. Location: West Room, National Press Club.
2:00 PM. The House
Financial Services Committee will hold another hearing on HR
3763, the Corporate and Auditing Accountability,
Responsibility, and Transparency Act of 2002. Location: Room
2128, Rayburn Building.
4:00 PM. Margo
Bagley (Emory University School of Law) will give a
lecture titled Patently Unconstitutional: Geographic
Limitations on Prior Art in a Small World. For more
information, contact Robert Brauneis at rbraun @main.nlc.gwu.edu
or 202 994-6138. Location: George Washington University Law
School, 2000 H Street, NW.
5:30 PM. The House Rules
Committee will meet to adopt a rule for consideration of HR
3925, the Digital Tech Corps Act of 2002. Location:
H-312, The Capitol. |
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| Wednesday, April 10 |
The House will meet at 10:00 AM for legislative business. It
may take up HR
3925, the Digital Technology Corps Act of 2002.
9:30 AM - 4:30 PM. The Federal
Trade Commission (FTC) and the Antitrust Division of the
Department of Justice will continue their joint hearings
titled Competition and Intellectual Property Law and Policy
in the Knowledge Based Economy. See, agenda.
Location: Room 432, FTC, 600 Pennsylvania Ave., NW.
10:00 AM. The House
Commerce Committee will mark up HR
3833, the Dot Kids Implementation and Efficiency
Act of 2002. Location: Room 2123, Rayburn Building.
10:00 AM. The House
Appropriations Committee's Subcommittee on Commerce,
Justice, State, and the Judiciary will hold a hearing on the proposed
budget for the Federal Trade
Commission (FTC) for FY2003. FTC Chairman Timothy
Muris will testify. Location: Room H-309, The Capitol.
10:00 AM - 12:00 NOON. The AEI Brookings Joint Center for
Regulatory Studies will host a panel discussion titled Microsoft:
Making the Punishment Fit the Crime. The participants will
be Robert Hahn
(AEI Brookings), Robert Litan (AEI Brookings), George
Priest (Yale Law School), Steve
Salop (Georgetown Law Center), and Richard
Schmalensee (MIT Sloan School of Management). See, online registration
page. Location: Wohlstetter Conference Center, AEI, 12th
Floor, 1150 17th Street, NW.
RESCHEDULED. 10:30
AM. The Senate
Judiciary Committee's Subcommittee on Antitrust,
Competition, and Business and Consumer Rights will hold a
hearing titled Cable Competition and the ATT Comcast Merger.
Sen. Herb Kohl (D-WI)
will preside.
12:00 NOON. The Congressional
Internet Caucus Advisory Committee will host a luncheon
panel discussion on the use of e-learning to train
workers. The scheduled participants include Sen. Conrad Burns (R-MT), Rep. Johnny Isakson
(R-GA), Jerry Berman (Internet
Education Foundation), Rich Moran (Accenture), Daniel
Hamburger (Indeliq),
Greg Priest (SmartForce),
and retired Brig. Gen. Frank Anderson (Defense Acquisition University).
RSVP to RSVP
@netcaucus.org or call Danielle at 202 637-4370. Location:
Reserve Officers Association, First and Constitution Ave., NW.
2:00 PM. The House
Ways and Means Committee's Subcommittee on Select Revenue
Measures will hold a hearing the Extraterritorial Income
Regime. Location: Room 1100, Longworth Building. |
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| Thursday, April 11 |
The House will meet at 10:00 AM for legislative business.
9:30 AM. The House
Financial Services Committee will hold a meeting to mark
up several bills, including HR
3763, the Corporate and Auditing Accountability,
Responsibility, and Transparency Act of 2002, and HR
3764, a bill to authorize appropriations for the Securities and Exchange Commission
(SEC). Location: Room 2128, Rayburn Building.
9:30 AM - 4:30 PM. The Federal
Trade Commission (FTC) and the Antitrust Division of the
Department of Justice will continue their joint hearings
titled Competition and Intellectual Property Law and Policy
in the Knowledge Based Economy. See, agenda.
Location: Room 432, FTC, 600 Pennsylvania Ave., NW.
10:00 AM. The House
Judiciary Committee's Subcommittee on Courts, the
Internet, and Intellectual Property will hold an oversight
hearing titled The U.S.
Patent and Trademark Office: Operations and Fiscal Year
2003 Budget. Location: Room 2141, Rayburn House Office
Building.
10:00 AM. The House
Appropriations Committee's Subcommittee on Commerce,
Justice, State, and the Judiciary will hold a hearing on the
proposed budget for FY 2003 for the Office of Homeland
Security. Location: Room 2359, Rayburn Building.
10:00 AM. The House
Ways and Means Committee's Subcommittee on Trade will hold
a hearing on normal trade relations with Russia.
Location: Room 1100, Longworth Building.
10:00 AM. The Senate
Judiciary Committee has scheduled an executive business
meeting. Location: room 226, Dirksen Building.
11:00 AM. The Cato Institute
will host a book forum on Free
Trade under Fire [Amazon], by Douglas Irwin,
Professor of Economics at Dartmouth College. The speakers will
be Irwin, Robert Litan (Brookings) and Steve Clemons (New
America Foundation). Lunch will follow. See, CATO notice.
Location: 1000 Massachusetts Avenue, NW.
12:00 NOON - 1:30 PM. The Business
Software Alliance will host its 5th Annual "Talking
Technology" forum luncheon. Mark Forman, Associate
Director for Information Technology and E-Government with the Office of Management and
Budget (OMB), will speak. RSVP to Jeri Clausing at 202
530-5127 or jeric@bsa.org.
Location: Reserve Officers Association, One Constitution
Avenue, NE. |
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| Friday, April 12 |
The House will not be in session.
10:00 AM - 12:00 NOON. The American
Enterprise Institute (AEI) will hold a panel discussion
titled Is Open Source the Future of Software? The
participants will be Robert Hahn
(AEI Brookings), James Bessen
(Research on Innovation), David
Evans (NERA), Lawrence
Lessig (Stanford University), and Brad Smith (Microsoft).
See, AEI online
registration page. Location: 1150 17th St., NW.
10:00 AM - 12:00 NOON. The National
Commission on Libraries and Information Science (NCLIS)
will hold an open business meeting. See, notice
in Federal Register. Location: Conference Room, NCLIS Office,
1110 Vermont Avenue, NW, Suite 820.
The Federal Communications Bar
Association (FCBA) will host a luncheon. The speaker will
be Nancy
Victory, Director of the NTIA. RSVP to Wendy Parish at
wendy @fcba.org by
Tuesday, April 9, at 5:00 PM.
Deadline to submit comments to the Federal Communications Commission
(FCC) regarding its annual report to Congress regarding
progress made in achieving the objectives of the Open Market
Reorganization for the Betterment of International
Telecommunications Act (ORBIT Act), 47 U.S.C. § 646. The next
FCC Orbit Act report is due to Congress on June 15, 2002. See,
FCC
notice [PDF]. |
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| Monday, April 15 |
| Extended deadline to submit comments to the Federal Trade Commission
regarding proposed changes to its Telemarketing Sales Rule
(TSR). See, notice
in Federal Register. See also, FTC release. |
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