9/25. The House passed HR 3161, a bill authorizing the Federal Trade Commission (FTC) to implement a national do not call registry, by a vote of 412-8. See, Roll Call No. 521. Later in the day, the Senate passed the bill by a vote of 95-0. See, Roll Call No. 365. President Bush said he will sign the bill.

The Congress passed this bill in immediate response to the September 24 Order [19 page PDF scan] of the U.S. District Court (DOkla) in U.S. Security v. FTC, holding that the FTC's rule creating a do not call registry exceeds the statutory authority of the FTC.

HR 395, the "Do-Not-Call Implementation Act". Earlier this year, the Congress passed, and President Bush signed, HR 395, the "Do-Not-Call Implementation Act".

HR 395 provides, in part, that "The Federal Trade Commission may promulgate regulations establishing fees sufficient to implement and enforce the provisions relating to the `do-not-call' registry of the Telemarketing Sales Rule (16 CFR 310.4(b)(1)(iii)), promulgated under the Telemarketing and Consumer Fraud and Abuse Prevention Act (15 U.S.C. 6101 et seq.)."

The House passed this bill on February 12 by a vote of 418-7. See, Roll Call No. 26. The Senate passed the bill on February 13 by unanimous consent. President Bush signed it on March 11.

See also, stories titled "Senate Passes Do Not Call Implementation Act" in TLJ Daily E-Mail Alert No. 605, February 17, 2003, and "Bush Signs Do Not Call Implementation Act" in TLJ Daily E-Mail Alert No. 621, March 12, 2003.

HR 3161, the "This Time We Really Mean It Act". This bill was introduced late on September 24 by Rep. Billy Tauzin (R-LA) and Rep. John Dingell (D-MI), the Chairman and ranking Democrat on the House Commerce Committee, and by Rep. Fred Upton (R-MI) and Rep. Ed Markey (D-MA), the Chairman and ranking Democrat on the Telecom and Internet Subcommittee.

It is untitled, but Rep. Tauzin quipped that it "Perhaps we should call this bill, the ‘This Time We Really Mean It Act’ to cure any misunderstanding in the judicial branch."

This short bill provides as follows:

"SECTION 1. NATIONAL DO-NOT-CALL REGISTRY.
  (a) AUTHORITY- The Federal Trade Commission is authorized under section 3(a)(3)(A) of the Telemarketing and Consumer Fraud and Abuse Prevention Act (15 U.S.C. 6102(a)(3)(A)) to implement and enforce a national do-not-call registry.
  (b) RATIFICATION- The do-not-call registry provision of the Telemarketing Sales Rule (16 C.F.R. 310.4(b)(1)(iii)), which was promulgated by the Federal Trade Commission, effective March 31, 2003, is ratified."

An Errant Judge. FTC Chairman Timothy Muris (at right) stated that "Today, the Congress has once again ratified the authority of the Federal Trade Commission to establish a National Do Not Call Registry. I always have believed that the FTC had clear authority to establish the National Do Not Call Registry, and I applaud the Congress for acting so quickly to ensure that American consumers have the choice to stop unwanted telemarketing calls." See, release.

Rep. Dingell said in his floor statement on September 25 that "In 1994 we passed the Telemarketing Act to protect consumer privacy and curb abusive and abrasive telemarketing. Through that law, the Federal Trade Commission (FTC) created a national do-not-call registry, and over 50 million American consumers have registered their numbers with the list." He added that the "Do Not Call Implementation Act" had the effect of providing "necessary funding so the do-not-call list could go into effect on time."

Rep. Dingell (at right) continued. "Well, the telemarketers are back. Despite our previous efforts, an errant judge in Oklahoma agreed with the Direct Marketing Association that we did not give the FTC authority to create the list. Last night I once again introduced legislation with the distinguished Chairman of the Committee on Energy and Commerce to settle this question for all time. That legislation, which is before us today, unequivocally states the FTC is authorized to create and enforce a national do-not-call registry and it officially ratifies the existing list."

Rep. Tauzin also issued a statement. "Congress has already given the FTC the authority and the funding needed to create the national do-not-call list. But due to a misguided court decision that could have jeopardized one of the most consumer-friendly regulations to come out of Washington in a long, long time, the House had to reaffirm the FTC’s authority by taking up this legislation in record-breaking time. Perhaps we should call this bill, the ‘This Time We Really Mean It Act’ to cure any misunderstanding in the judicial branch."

Federal Communications Commission (FCC) Chairman Michael Powell had this to say: "Congress has acted swiftly, leaving no doubt that it stands behind the 50 million Americans who asked not to be bothered by unwanted calls. Let there be no doubt -- the FCC stands ready to enforce the Do Not Call list beginning October 1. The FCC is working in partnership with the FTC to ensure that telemarketers respect the wishes of American consumers. The FCC Do Not Call rules cover telemarketers from every industry and both interstate and intrastate calls, and working together we'll get the job done." See, release.

President Bush issued a statement. "Unwanted telemarketing calls are intrusive, annoying, and all too common. When Americans are sitting down to dinner, or parents are reading to their children, the last thing they want is a call from a stranger with a sales pitch. For that reason, I have strongly supported the actions of the Federal Trade Commission and the Federal Communications Commission to establish a National Do Not Call Registry and protect consumers. The millions of people who have signed up for the list have the right to reduce unwanted telephone solicitations."

Bush concluded, "I commend Congress for its rapid action to support the Registry, and I look forward to signing this legislation."

9/17. The U.S. Court of Appeals (6thCir) issued its opinion in DuPont v. Okuley, a case involving application of collaborative research agreements and employment contracts to patent rights.

John Okuley was a molecular biologist at Washington State University (WSU) who helped discover the genes for an enzyme. MSU had a collaborative research agreement with DuPont under which DuPont was assigned all intellectual property rights (IPR) obtained in the collaboration. Okuley also signed an agreement with DuPont assigning the IPR in dispute. Okuley asserts that he made his discovery while working in an Ohio State University (OSU) laboratory. And, OSU has waived any claims. Okuley did not cooperate with DuPont in its application for a patent on the enzyme.

DuPont filed a complaint in U.S. District Court (SDOhio) against Okuley seeking specific enforcement of the agreement, and a declaration that it was the owner of the IP. Okuley counterclaimed for a declaration that he was the inventor, and to rescind his personal assignment of patent rights to DuPont. The District Court held that it had no jurisdiction to determine inventorship, and granted summary judgment to DuPont on all other issues.

Okuley appealed to the U.S. Court of Appeals for the Sixth Circuit, not the Federal Circuit. The Appeals Court first addressed the Federal Circuit's has exclusive jurisdiction in patent appeals. It held that a regional circuit court has jurisdiction to determine ownership of a patent right, like ownership of any other property, but that it lacks jurisdiction to determine inventorship. The Court held that "As DuPont"s assignment theory sounded in contract, not patent law, DuPont's claim to the sole ownership of the gene did not invoke patent law jurisdiction. Therefore, appellate jurisdiction lies with this court."

The Appeals Court affirmed the District Court's holding that it lacked jurisdiction to determine inventorship. The patent application was pending before the U.S. Patent and Trademark Office (USPTO) when the District Court ruled. The Appeals Court wrote that "While the patent is still in the process of gestation, it is solely within the authority of the Director. As soon as the patent actually comes into existence, the federal courts are empowered to correct any error that the Director may have committed. Such a scheme avoids premature litigation and litigation that could become futile if the Director declined to grant a patent or voluntarily acceded to the claims of the would-be inventor prior to issue. We conclude, therefore, that the district court lacked jurisdiction to review the inventorship of an unissued patent."

The Appeals Court then addressed the issue of ownership, to which it applied state law. It wrote that the WSU faculty manual, which was a part of Okuley's employment contract, gave WSU "ownership in patents and other non-patentable intellectual products ... developed by its employees as a result of their employment". The Court ruled that Okuley's contract with WSU and assignment to DuPont were unaffected by OSU or its waiver. It rejected other arguments made by Okuley, and affirmed the District Court's holding that DuPont is the owner of the IP in question.

This case is E.I. DuPont de Nemours & Company v. John Joseph Okuley, U.S. Court of Appeals for the 6th Circuit, No. 01-3074, an appeal from the U.S. District Court for the Southern District of Ohio, at Columbus, D.C. No. 97-01205, Judge John Holschuh presiding.

9/25. Vice President Dick Cheney gave a speech in Washington DC in which he offered his take on the economy and technology.

He stated that "Since 2000, our economy has been dealt not just one shock, but three -- a set of challenges with few parallels in our history. First, the stock market began a steady decline in March of 2000, as investors realized that the economy was not healthy. Businesses cut their budgets for new investment and technology or equipment. And by early 2001, the economy was in recession. Just as we were beginning to pull out of the recession, our nation was attacked by terrorists on September 11, 2001. And those terrorists brought terrible grief to our people and the attacks were obviously a shock to the economy."

He added that "Earlier this year, we saw that our economy was still not growing fast enough, so we acted again. We passed additional tax relief for America's families and small businesses. ... Under the tax relief package the President signed in May, we raised the annual expense deduction for investments from $25,000 to $100,000 -- a sure way to promote investment in new equipment and software."

Cheney concluded that "We're already seeing the positive effects of our pro-growth policies across the country." For example, "Productivity is high and rising. Factory orders, particularly for high tech equipment, have been climbing since last spring."

9/24. The Federal Trade Commission (FTC) published in its web site the Stipulated Final Judgment for Permanent Injunction [PDF] in FTC v. Network Solutions, Inc., dba VeriSign Registrar. The FTC filed its complaint against VeriSign on Friday, September 12, 2003. See, story titled "FTC Sues VeriSign for Deceptive Trade Practices" in TLJ Daily E-Mail Alert No. 739, September 15, 2003. This judgment enjoins VeriSign from making any misleading or false representation that "A domain name registration is about to expire", "The expiration date of a domain name registration is near or on any date by which a consumer must respond ...", or "That the transfer of a domain name registration is only a renewal." The judgment also provides that VeriSign "shall provide redress to all consumers to whom it sent an expiration notice/invoice ... that resulted in the transfer or purchase of a domain name consistent with and under the terms and schdule of the class settlement in the Luxenberg v. VeriSign, Inc. ..." However, VeriSign did not admit liability or wrongdoing. See also, FTC release. 03 1907).

9/15. Kenneth Juster, Under Secretary of Commerce for Industry and Security, gave a speech titled "Taiwan and China Semiconductor Industry Outlook – 2003". Juster is head of the Department of Commerce's (DOC) Bureau of Industry and Standards (BIS), which is also known as the Bureau of Export Administration (BXA). He spoke in San Jose, California at a conference of the U.S.-Taiwan Business Council and the Fabless Semiconductor Association. He reviewed the history of the U.S. export control regime, export issues involving the People's Republic of China and Taiwan, and the semiconductor industry specifically.

9/25. The U.S. District Court (DColo) issued its Memorandum Opinion and Order [34 pages in PDF] in Mainstream Marketing v. FTC, a constitutional challenge to the Federal Trade Commission's (FTC) do not call registry. The Court held that the FTC's do not call registry violates the First amendment free speech rights of telemarketers. In the analysis of Judge Edward Nottingham, the registry is content based regulation of protected speech, because it applies to commercial telemarketers, but not to communications by charitable organizations.

The telemarketer plaintiffs, Mainstream Marketing Service, Inc., TMG Marketing Inc., and American Teleservices Association, filed a complaint in the District Court against the FTC and each of its Commissioners. It challenged the constitutionality of the FTC's amended Telemarketing Sales Rule, under the First and Fifth Amendments. It also challenged the statutory authority of the FTC, and alleged that the FTC acted arbitrarily and capriciously.

The District Court noted that the FTC's do-not-call registry does not apply to communications by charitable organizations. It held that "the court finds that the FTC's do-not-call registry does not materially advance its interest in protecting privacy or curbing abusive telemarketing practices. The registry creates a burden on one type of speech based solely on its content, without a logical, coherent privacy-based or prevention-of-abuse-based reason supporting the disparate treatment of different categories of speech. ... Were the do-not-call registry to apply without regard to the content of the speech, or to leave autonomy in the hands of the individual ... it might be a different matter. As the amended Rules are currently formulated, however, the FTC has chosen to entangle itself too much in the consumer's decision by manipulating consumer choice and favoring speech by charitable organizations over commercial speech. The First Amendment prohibits the government from enacting laws creating a preference for certain types of speech based on content, without asserting a valid interest, premised on content, to justify its discrimination. Because the do-not-call registry distinguishes between the indistinct, it is unconstitutional under the First Amendment."

The Court also directed the clerk to enter judgment in favor of the telemarketers enjoining the FTC from implementing its do not call registry.

FTC Chairman Timothy Muris stated in a release that "The court ruled that ``the FTC's Do Not Call registry does not materially advance its interest in protecting privacy or curbing abusive telemarketing practices.´´ Tens of millions of Americans who have registered more than 50 million phone numbers disagree."

"This court's reasoning, if adopted elsewhere, would effectively cripple virtually every do-not-call registry in the United States, whether state or federal. I do not believe that our Constitution dictates such an illogical result. To the contrary, our Constitution allows consumers to choose not to receive commercial telemarketing calls", said Muris.

Muris added that "We will seek every recourse to give American consumers a choice to stop unwanted telemarketing calls."

Federal Communications Commission (FCC) Chairman Michael Powell (at right) stated that the decision is "fundamentally flawed. We strongly believe the Do Not Call list withstands constitutional scrutiny." He added that "The FCC will join the FTC in taking every appropriate legal measure to ensure the will of the people is vindicated. We will vigorously defend the right of Americans to choose not to receive telemarketing calls. We are committed to working tirelessly to effectuate the will of the American people."

This case is Mainstream Marketing Service, TMG Marketing Inc., and American Teleservices Association v. Federal Trade Commission, et al., D.C. No. 03-N-0184, U.S. District Court for the District of Colorado, Judge Edward Nottingham presiding.

The House will not meet. See, Republican Whip Notice.

9:00 AM - 5:00 PM. Day two of a two day conference pubic workshop by the National Institute of Standards and Technology (NIST) on building secure configurations, security settings, and security checklists for information technology products widely used in the federal government. See, notice in the Federal Register, July 11, 2003, Vol. 68, No. 133, at Pages 41313 - 41314. Location: NIST, Lecture Room B, Bldg 101, Gaithersburg, MD.

12:00 NOON - 2:00 PM. The Progress & Freedom Foundation (PFF) will host a panel discussion titled "Universal Service: Who Gives, Who Gets and For How Long?" The speakers will be Matt Brill (senior legal advisor to FCC Commissioner Kathleen Abernathy), Kathryn Brown (Verizon), John Rose (OPASTCO), John Stanton (Western Wireless), and Nanette Thompson (Regulatory Commission of Alaska); Raymond Gifford (PFF) will moderate. RSVP to Rebecca Fuller at 202 289-8928 or rfuller@pff.org. Lunch will be served. Location: Room 2105, Rayburn Building.

Day three of a three day course hosted by the National Institute of Standards and Technology (NIST), and offered by MIS Training Institute, titled "Securing and Auditing Virtual Office Networks". The price to attend is $435. See, notice. Location: NIST, Gaithersburg, MD.

Deadline to submit reply comments to the Federal Communications Commission's (FCC) Notice of Inquiry (NOI) that solicits "data and information on the status of competition in the market for the delivery of video programming for our tenth annual report".

2:00 - 4:00 PM. The Federal Communications Commission's (FCC) Federal Advisory Committee on Diversity in the Digital Age will hold its first meeting. See, notice in the Federal Register, September 10, 2003, Vol. 68, No. 175, at Pages 53376 - 53377. Location: FCC, Commission Meeting Room, Room TW-C305, 445 12th St. SW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Young Lawyers Committee will host a brown bag lunch. The topic will be "Hot Topics in Consumer Affairs". For more information, contact Pam Slipakoff at 202 418-7705 or pslipako@fcc.gov. Location: Hogan and Hartson, 555 13th Street, NW.

Deadline to submit nominations to the Federal Communications Commission (FCC) for membership on the FCC's Intergovernmental Advisory Committee (IAC), which was previously known as the Local and State Government Advisory Committee. The FCC stated that this Committee provides "ongoing advice and information to the Commission on a broad range of telecommunications issues of interest to state, local and tribal governments, including cable and local franchising, public rights-of-way, facilities siting, universal service, broadband access, barriers to competitive entry, and public safety communications, for which the Commission explicitly or inherently shares responsibility or administration with local, county, state, or tribal governments." The deadline to submit nominations is September 29, 2003. See, FCC release [PDF] and FCC notice [3 pages in PDF].

8:30 AM - 6:00 PM. Day one of a two day conference titled "Workshop on Regional, State and Local Initiatives in Nanotechnology", hosted by the Department of Commerce (DOC) and the National Nanotechnology Coordination Office (NNCO). See, agenda [PDF]. Location: DOC, Main Auditorium, 14th Street and Constitution Ave., NW.

10:00 AM. The Senate Banking Committee will hold a hearing titled "State of the Securities Industry". Securities and Exchange Commission (SEC) Chairman William Donaldson will testify. See, notice. Location: Room 538 Dirksen Building.

10:00 AM. The Senate Governmental Affairs Committee's Investigations Subcommittee will hold a hearings to examine illegal file sharing on peer-to-peer networks and the impact of technology on the entertainment industry. Location: Room 106, Dirksen Building.

Deadline to submit applications to the National Institute of Standards and Technology (NIST) for its Electronics and Electrical Engineering Laboratory Grants Program (EEEL). The NIST stated that the EEEL Grants Program provides "grants and cooperative agreements for the development of fundamental electrical metrology and of metrology supporting industry and government agencies in the broad areas of semiconductors, electronic instrumentation, radio-frequency technology, optoelectronics, magnetics, video, electronic commerce as applied to electronic products and devices, the transmission and distribution of electrical power, national electrical standards (fundamental, generally  quantum-based physical standards), and law enforcement standards." See, notice in the Federal Register, February 20, 2003, Vol. 68, No. 34, at Pages 8211-8226.

Deadline to submit comments to the Transportation Security Administration (TSA) in response to it second Privacy Act notice and request for comments regarding its proposal to establish a new system of records to support the development of a new version of the Computer Assisted Passenger Prescreening System, CAPPS II. See, Federal Register, August 1, 2003, Vol. 68, No. 148, at Pages 45265 - 45269.

9:00 AM - 4:00 PM. Day two of a two day conference titled "Workshop on Regional, State and Local Initiatives in Nanotechnology", hosted by the Department of Commerce (DOC) and the National Nanotechnology Coordination Office (NNCO). See, agenda [PDF]. Location: DOC, Main Auditorium, 14th Street and Constitution Ave., NW.

9:00 AM - 5:00 PM. Day one of a two day meeting of the Federal Bureau of Investigation's (FBI) Compact Council for the National Crime Prevention and Privacy Compact. See, notice in the Federal Register: August 28, 2003, Vol. 68, No. 167, at Page 51807. Location: Radisson Hotel Old Town Alexandria, 901 North Fairfax Street, Alexandria, VA.

2:00 PM. The House Judiciary Committee's Subcommittee on Commercial and Administrative Law will hold a hearing titled "The Streamlined Sales Tax Agreement: States’ Efforts to Facilitate Sales Tax Collection from Remote Vendors". The hearing will be webcast. Press contact: Jeff Lungren or Terry Shawn at 202 225-2492. Location: Room 2141, Rayburn Building.

The Federal Trade Commission's (FTC) will require full compliance with its amended Telemarketing Sales Rule as of October 1, 2003. See, notice in the Federal Register, April 4, 2003, Vol. 68, No. 65, at Pages 16414 - 16415.

U.S. Patent and Trademark Office (USPTO) rules changes pertaining to USPTO fees takes effect. See, notice in the Federal Register July 14, 2003, Vol. 68, No. 134, at Pages 41532 - 41535. However, legislation is pending in the Congress that would supercede this rule. On July 9, 2003 the House Judiciary Committee approved HR 1561, the "United States Patent and Trademark Fee Modernization Act of 2003". See, story titled "House Judiciary Committee Approves USPTO Fee Bill" in TLJ Daily E-Mail Alert No. 695, July 10, 2003.

12:00 NOON - 1:30 PM. The Federal Communications Bar Association's (FCBA) Common Carrier Practice Committee will host a brown bag lunch. The topic will be "Antitrust Law and the Telecommunications Act of 1996: Broader Implications of the Supreme Court Trinko Case". The speakers will include Donald Russell (Robbins Russell), John Thorne (Verizon), and Chris Wright (Harris Wiltshire). RSVP to Cecelia Burnett at 202 637-8312 or cmburnett@hhlaw.com. This event was originally scheduled for September 18, but was rescheduled because of Hurricane Isabel. Location: Hogan & Hartson, 555 13th Street, NW, lower level.

The rules changes regarding the unbundling requirements of incumbent local exchange carriers (ILECs) that are contained in the Federal Communications Commission's (FCC) triennial review order [576 pages in PDF] take effect. See also, notice in the Federal Register, September 2, 2003, Vol. 68, No. 169, at Pages 52275 -  52306, describing the rules changes. See also, TLJ story titled "Summary of FCC Triennial Review Order", also published in TLJ Daily E-Mail Alert No. 725, August 25, 2003. See also, stories titled "FCC Announces UNE Report and Order", "FCC Order Offers Broadband Regulatory Relief", "FCC Announces Decision on Switching", "Commentary: Republicans Split On FCC UNE Order", and "Congressional Reaction To FCC UNE Order" in TLJ Daily E-Mail Alert No. 609, February 21, 2003.

Deadline to submit comments to the Federal Communications Commission (FCC) regarding the portion of the FCC's triennial review order [576 pages in PDF] that contains a notice of proposed rulemaking [NPRM] regarding modifications to the FCC's rules implementing 47 U.S.C. § 252(i), which requires local exchange carriers (LECs) to make available to other telecommunications carriers interconnection agreements approved under Section 252. See, notice in the Federal Register, September 2, 2003, Vol. 68, No. 169, at Pages 52307 - 52312, and September 2 FCC release [3 pages in PDF].

Target adjournment date for the House and Senate.

9:00 AM - 5:00 PM. Day two of a two day meeting of the Federal Bureau of Investigation's (FBI) Compact Council for the National Crime Prevention and Privacy Compact. See, notice in the Federal Register: August 28, 2003, Vol. 68, No. 167, at Page 51807. Location: Radisson Hotel Old Town Alexandria, 901 North Fairfax Street, Alexandria, VA.

12:15 PM. The Federal Communications Bar Association's (FCBA) Wireless Practice Committee will host a lunch. Bill Maher, Bureau Chief of the Federal Communications Commission's (FCC) Wireline Competition Bureau will address common carrier issues relevant to the wireless industry, including intermodal local number portability (LNP), intercarrier compensation and the triennial review order. The price to attend is $15.00. RSVP to Wendy Parish at wendy@fcba.org by 5:00 PM on Tuesday, September 30th.  Location: Sidley & Austin, 1501 K Street, NW, Conference Room 6E.