|Bush Extends Export
Administration Act Again
|8/16. President Bush signed a document
titled "Notice: Continuation of Emergency Regarding
Export Control Regulations", which extends the Export
Administration Act (EAA) for one more year. The EAA was
scheduled to expire on August 20, 2001. On August 17, 2001,
President Bush issued Executive
Order 13222 extending the EAA for one year. The current
action extends the EAA for another year.
Bush wrote that "Because the Export Administration Act
has not been renewed by the Congress, the national emergency
declared on August 17, 2001, must continue in effect beyond
August 17, 2002. Therefore, in accordance with section 202(d)
of the National Emergencies Act (50 U.S.C. 1622(d)), I am
continuing for 1 year the national emergency declared in
Executive Order 13222."
Sen. Mike Enzi (R-WY),
and others, have attempted to pass legislation in the 107th
Congress extending and reforming export control laws. The
Senate bill, S 149,
titled the "Export Administration Act of 2001",
sponsored by Sen. Enzi, is a major overhaul of export control
laws. It passed the Senate
Banking Committee on March 22, 2001 by a vote of 19-1. It
passed the full Senate on September 6, 2001, by a vote of
S 149 would ease restraints on the export of most dual use
products, such as computers and software. However, it would
raise penalties for violation of remaining prohibitions. It
would also repeal provisions of the 1998 National Defense
Authorization Act which require the President to use Million
Theoretical Operations Per Second (MTOPS) to set restrictions
on the export of high performance computers.
On August 1, 2001, the House
International Relations Committee approved HR 2581,
which is also titled the "Export Administration Act of
2001", sponsored by Rep. Benjamin Gilman
(R-NY), by a vote of 26-7. However, it is a much different
bill. The Bush administration supports S 149.
While S 149 passed the Senate overwhelmingly, it passed before
the terrorists attacks of September 11, 2001. It now faces new
opposition. No action has been taken in either the House or
Senate on this bill since September 11, 2001. On the other
hand, Sen. Fred Thompson
(R-TN), one of the leading opponents of S 149 in the
Senate, is retiring. Rep. Gilman has also announced his
|4th Circuit Rules in Lanham
|8/16. The U.S.
Court of Appeals (4thCir) issued its opinion
[PDF] in U.S.
Search LLC v. US Search.com, Inc., a trademark
U.S. Search LLC (LLC) is an executive recruiting and placement
firm based in Falls Church, Virginia, that specializes in
recruiting for the plastics industry. The company's President
is its sole recruiter. US Search.com, Inc. (Dotcom) is a
publicly traded Delaware corporation based in Los Angeles,
California, that provides access to online public record
information over the Internet and through the use of its toll
free telephone number, 1-800- USSEARCH. Its services are used
to locate people, and to verify prospective employees'
credentials and background after an employer had identified
the candidate. Dotcom registered the mark "1-800- U.S.
SEARCH" in 1998. After initiation of litigation, LLC
sought to register the mark "U.S. Search". The U.S.
Patent and Trademark Office rejected the application.
LLC filed a complaint in U.S. District Court (EDVa)
against Dotcom alleging false designation of origin under the
Lanham Act, 15
U.S.C. § 1125(a), and unfair competition under Virginia
common law. Dotcom counterclaimed against LLC alleging
infringement of its federally registered mark, pursuant to 15
U.S.C. §§ 1114, 1116-18, false designation of origin,
pursuant to 15 U.S.C. § 1125(a), and common law unfair
The District Court found that "U.S. Search" was not
entitled to service mark protection when used in connection
with LLC's executive recruiting services and granted summary
judgment to Dotcom. The Appeals Court affirmed.
|8/18. The U.S.
Court of Appeals (6thCir) issued its opinion
Smith v. Bureau of Prisons, a case in which a
federal prisoner complained regarding the quality and pricing
of telephone service afforded to federal inmates. The District
Court dismissed the complaint for failure to exhaust
administrative remedies. The Appeals Court affirmed.
|9th Circuit Issues Amended
Opinion in Syntek v. Microchip Technology
|8/16. The U.S. Court
of Appeals (9thCir) issued its amended
opinion [11 pages in 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,
in its original
opinion [13 pages in PDF], issued on April 8, 2002,
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
The amended opinion provides that the judicial proceeding is
stayed (not dismissed) pending outcome of the administrative
proceeding. The Appeals Court also denied Syntek's petition
The Appeals Court reasoned in its amended opinion that
dismissal might "unfairly disadvantage" Syntek. It
wrote that "Because the statute of limitations may
prevent Syntek from refiling its claim if necessary at the
conclusion of its administrative challenge to the Copyright
Office’s decision, we stay the proceedings pending the
outcome of the administrative process".
The amended opinion does not alter the original opinion's
analysis with respect to application of the primary
jurisdiction doctrine. The following description of the case
revises TLJ coverage of the original opinion. See, article
titled "Challenges to Source Code Copyright Registration
& the Doctrine of Primary Jurisdiction", in TLJ
Daily E-Mail Alert No. 406, April 9, 2002.
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
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 stayed the action pursuant to the
primary jurisdiction doctrine in order that the parties may
pursue appropriate administrative remedies before the
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
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
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
The Court concluded that all four factors are met, and hence,
that a stay pursuant to the doctrine of primary jurisdiction
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.
The original opinion is also published at 285 F.3d 857.
|DOJ Settles Antitrust Suit
|8/15. The Department of
Justice (DOJ) announced that it filed a proposed
settlement with the U.S.
District Court (EDVa) in its action against MathWorks
and Wind River Systems. The
DOJ filed a complaint on June 21, 2002, alleging violation of
Section 1 of the Sherman Act.
The complaint alleged that MathWorks and Wind River were
competitors in the development and sale of dynamic control
system design software tools, and that they entered into an
agreement that gave MathWorks the exclusive right to sell Wind
River's MATRIXx products and required Wind River to stop its
own development and marketing. See, DOJ
June 21 release.
The DOJ announced in an August 15 release
that the DOJ had "sought a judicially enforced sale of
the MATRIXx product line. The proposed settlement ensures that
an independent trustee will direct the attempted sale under
The DOJ previously settled with Wind River Systems.
|Wednesday, August 21
|Deadline for those persons requesting to testify at the Federal Election Commission's (FEC)
August 28-29 hearing to submit comments to the FEC regarding
its second Notice
of Proposed Rulemaking (NPRM) [67 pages in MS Word]
regarding the Bipartisan Campaign Reform Act of 2002 (BCRA),
the recently enacted campaign finance reform legislation. This
NPRM pertains to "electioneering communications".
The proposed rules would exempt webcasts. See also, FEC release.
|Thursday, August 22
|RESCHEDULED FOR SEPTEMBER 5.
|10:00 AM - 12:00 NOON. The Federal Communications Commission's
(FCC) Advisory Committee for the 2003 World Radiocommunication
Conference (WRC-03 Advisory Committee) will hold a meeting.
in Federal Register, July 19, 2002, Vol. 67, No. 139, at Page
47549. See, notice
in Federal Register, August 2, 2002, Vol. 67, No. 149, at
Pages 50437 - 50438, rescheduling the meeting.
|People and Appointments
|8/16. Supachai Panitchpakdi will become the new
Director General of the World
Trade Organization (WTO), effective September 1, 2002. He
will replace Mike Moore. Roderick Abbott, Kipkorir
Aly Azad Rana, Francisco Thompson Flôres, and Rufus
Yerxa will be the Deputy Directors General, effective
October 1, 2002. They will replace Ablassé Ouedraogo, Paul
Henri Ravier, Miguel Rodriguez Mendoza, and Andrew Stoler.
8/15. James Ziglar wrote a letter
[PDF] to President Bush stating that he will resign as
Commissioner of the Department of Justice's (DOJ) Immigration and Naturalization
Service (INS) "no later than December 31, 2002".
8/13. Douglass Maynard joined the law firm of Akin Gump as a
partner in the litigation practice group in the New York City
office. He focuses libel and media law, complex commercial
cases and white collar matters. He was previously associate
general counsel at Time Inc. Before that, he was an assistant
U.S. attorney in the Southern District of New York. See, release.
8/14. Craig Sherman and Mark Handfelt joined the
law firm of Wilson Sonsini
as partners in its Kirkland, Washington office. Sherman was
previously Managing Director of Venture Law Group's Pacific
Northwest office. See, release.
|About Tech Law Journal
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