Tech Law Journal Daily E-Mail Alert
December 31, 2003, 2:00 PM ET, Alert No. 808.
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Sir Tim Berners-Lee

12/31. Queen Elizabeth II announced her annual New Year's Honours List. She made Tim Berners-Lee a Knight Commander of the Order of the British Empire. He is a British citizen, and the inventor of the world wide web. He is currently a professor at the Laboratory for Computer Science (LCS) at the Massachusetts Institute of Technology (MIT). He also directs the World Wide Web Consortium (W3C) at MIT. And, he is the author of Weaving the Web: The Original Design and Ultimate Destiny of the World Wide Web.

FCC Releases Cognitive Radio Technology NPRM

12/30. The Federal Communications Commission (FCC) released its Notice of Proposed Rule Making and Order [53 pages in PDF] in its proceeding titled "In the Matter of Facilitating Opportunities for Flexible, Efficient, and Reliable Spectrum Use Employing Cognitive Radio Technologies". The FCC adopted, but did not release, this item at its December 17 meeting. This is FCC 03-322 in ET Docket No. 03-108.

Comments will be due 75 days after publication of a notice in the Federal Register; reply comments will be due within 105 days. The FCC has not yet published this notice in the Federal Register.

The NPRM states that "cognitive radio technologies ... include, among other things, the ability of devices to determine their location, sense spectrum use by neighboring devices, change frequency, adjust output power, and even alter transmission parameters and characteristics. Cognitive radio technologies open spectrum for use in space, time, and frequency dimensions that until now have been unavailable."

The NPRM elaborates that "Cognitive radio technologies can be used to improve spectrum access and efficiency of spectrum use under at least four possible scenarios. First, a licensee can employ cognitive radio technologies internally within its own network to increase the efficiency of use. Second, cognitive radio technologies can facilitate secondary markets in spectrum use, implemented by voluntary agreements between licensees and third parties."

"Third, cognitive radio technologies can facilitate automated frequency coordination among licensees of co-primary services. Such coordination could be done voluntarily by the licensees under more general coordination rules imposed by Commission rules, or the Commission could require the use of an automated coordination mechanism. Fourth, cognitive radio technologies can be used to enable non-voluntary third party access to spectrum, for instance as an unlicensed device operating at times or in locations where licensed spectrum is not in use."

The FCC seeks comment "on how our rules and enforcement policies should address possible regulatory concerns posed by authorizing spectrum access based on a radio frequency (RF) device’s ability to reliably gather and process real-time information about its RF environment or on the ability of device and/or users to cooperatively negotiate for spectrum access. We propose and seek comment on rules intended to allow a full realization of the potential of these technologies under all our regulatory models for spectrum based services."

The order portion of this item closes ET Docket No. 00-47, titled "In the Matter of Authorization and Use of Software Defined Radios".

Steve Largent, P/CEO of the Cellular Telecommunications & Internet Association (CTIA), stated in a release that "it is incumbent on the FCC to ensure that the adoption of new rules for these emerging technologies will not create the potential for interference to existing licensees upon which millions of American consumers already depend." He added that "The FCC should consider the technical and economic feasibility of cognitive radios -- and confirm through actual testing that they will not interfere with other consumer services -- before adopting any final rules in this proceeding".

Circuit Courts Issue Opinions in Intellectual Property Cases Involving Toys

12/29. Three three judge panels have issued opinions recently in intellectual property cases involving famous toys. Two cases involve Barbie Dolls made by Mattel. These cases, like numerous other Barbie cases, were decided by the U.S. Court of Appeals (9thCir). The third case involves Beanie Babies made by Ty. Like other Beanie Baby cases, this one was decided by the U.S. Court of Appeals (7thCir).

See, December 29 opinion [40 pages in PDF] in Mattel v. Walking Mountain Productions, December 22 opinion [16 pages in PDF] in Ty v. Softbellies, and December 22 opinion [22 pages in PDF] in Mattel v. Greiner and Hausser,

Mattel v. Greiner and Hausser. The Greiner and Hausser (G&H) case deals with procedural issues of personal jurisdiction, venue and forum non conveniens in multijurisdictional litigation involving patent claims. G&H sued Mattel in Germany, and Mattel sued G&H in California.

Mattel filed a complaint in U.S. District Court (CDCal) seeking to enforce a settlement entered into by Mattel and G&H 40 years ago, and to enjoin G&H's prosecution of its case in Germany. The District Court ruled that the present action does not relitigate issues settled in a case brought in 1961 in the U.S. District Court, and dismissed the U.S. District Court action for lack of personal jurisdiction over the defendants, improper venue, forum non conveniens, and the impropriety of using the Declaratory Judgment Act, 28 U.S.C. § 2201, to adjudicate issues that Mattel might assert as affirmative defenses in the German action.

The 9th Circuit reversed. It held that the present action is sufficiently related to the 40 year old action to support a finding of personal jurisdiction over the defendants. Basically, the Court held that the exercise of personal jurisdiction over G&H today is appropriate because G&H purposefully availed itself of the privilege of conducting activities in California when it filed the lawsuit in California against Mattel in 1961.

Mattel v. Walking Mountain Productions. The Walking Mountain Productions case deals with issues arising out of taking and selling photographs (that include Barbie Dolls) for the purposes of social commentary. Hence, the opinion discusses at length the fair use and parody defense to claims of infringement of copyrights, trademarks, and trade dress.

Thomas Forsythe, who does business as Walking Mountain Productions, takes and sells pictures of nude Barbie dolls juxtaposed with vintage kitchen appliances. Forsythe asserts that his pictures are an artistic critique of the objectification of women, and a criticism of the "conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies."

Some of the titles of his pictures are "Fondu a la Barbie", "Barbie Enchiladas", and "Malted Barbie". The Appeals Court observed that Forsythe's Barbies are often depicted in "sexualized positions".

Says Forsythe, "Barbie is the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture."

Mattel is neither amused by Forsythe's sense of humor, nor intellectually curious about the sociological interpretation of its products. It filed complaints in the U.S. District Courts for both the Northern and Central Districts of California alleging copyright, trademark and trade dress infringement and dilution.

When an art historian and curator of photography at the San Francisco Museum of Modern Art (SFMOMA) prepared an expert witness report in support of Forsythe, Mattel sought burdensome discovery unrelated to the litigation from the SFMOMA. (The Appeals Court affirmed the District Court's order quashing the subpoena, and awarding SFMOMA its counsel fees and expenses.)

The District Court granted summary judgment to Forsythe on all of Mattels claims. The Appeals Court affirmed. It also vacated the District Court's denial of Forsythe's request for attorneys fees.

The Court wrote a lengthy analysis of the purpose of copyright protection, the four prong test of fair use codified at 17 U.S.C. § 107, and the nature of parody. It concluded that "Having balanced the four § 107 fair use factors, we hold that Forsythe’s work constitutes fair use under § 107’s exception. His work is a parody of Barbie and highly transformative. The amount of Mattel’s figure that he used was justified. His infringement had no discernable impact on Mattel's market for derivative uses. Finally, the benefits to the public in allowing such use -- allowing artistic freedom and expression and criticism of a cultural icon -- are great. Allowing Forsythe’s use serves the aims of the Copyright Act by encouraging the very creativity and criticism that the Act protects."

On the trademark infringement claim, the Appeals Court applied a balancing test, and concluded that "the public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion about Mattel's sponsorship of Forsythe's works."

Mattel also alleged that Forsythe infringed Barbie's trade dress. The Appeals Court held that Forsyth's use of undressed Barbies constituted nominative fair use. The Court wrote that "Barbie would not be readily identifiable in a photographic work without use of the Barbie likeness and figure. Forsythe used only so much as was necessary to make his parodic use of Barbie readily identifiable, and it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work."

And finally, the Appeals Court also affirmed the District Court's grant of summary judgment to Forsythe on the trademark and trade dress dilution claims.

Ty v. Softbellies. In the Beanie Baby case, the maker of Beanie Babies (Ty) filed a complaint in U.S. District Court (NDIll) against Softbellies alleging trademark infringement.

Beanie Babies made by Ty are toys made by putting bean pellets inside of bags, that are designed to resemble animals. Screenie Beanies made by Softbellies have chamois bellies and are sold to the public through computer stores for use in wiping computer screens.

Ty is a frequent plaintiff in Northern District of Illinois. Moreover, a disproportionate number of the opinions on appeal in Ty cases are written by Judge Richard Posner. Judge Posner has also just co-authored a book titled The Economic Structure of Intellectual Property Law.

Much of the opinion addresses when trademark terms become generic terms. The opinion also addresses procedural issues pertaining to expert witnesses and evidence in trademark cases.

The Softbellies case may be of limited interest to the technology sector. However, Judge Posner's future opinions in other Ty cases may have an impact on the tech sector as well as the toy sector. For example, Judge Posner has already hinted at extending the doctrine of misuse to copyright licensing practices and litigation strategies intended to suppress critical reviews of its products. See, May 30, 2002 opinion in Ty v. Publications International. This case, and the doctrine of misuse, are covered in story titled "3rd Circuit Breaks New Ground on Copyright Misuse" in TLJ Daily E-Mail Alert No. 727, August 27, 2003.

These cases are:

  • Mattel, Inc. v. Walking Mountain Productions and Tom Forsythe, U.S. Court of Appeals for the 9th Circuit, Nos. 01-56695 and 01-57193.
  • Mattel, Inc. v. Greiner and Hausser GMBH, et al., U.S. Court of Appeals for the 9th Circuit, No. 02-56272, an appeal from the U.S. District Court for the Central District of California, Judge Nora Manella presiding, D.C. No. CV-02-00322-NMM
  • Ty, Inc. v. Softbellies, Inc., U.S. Court of Appeals for the 7th Circuit, No. 03-1592, an appeal from the U.S. District Court for the Northern District of Illinois, Eastern Division, D.C. No. 00 C 5230, Judge Charles Norgle presiding.
The TLJ Daily E-Mail Alert will not be published on Thursday, January 1, or Friday, January 2.
DOJ Settles Case Against Interactive Computer Service

12/30. The Department of Justice's (DOJ) Civil Rights Division (CRD) announced that it settled a civil lawsuit that it filed earlier this year against the operator of an interactive website that allows landlords, leaseholders and property managers to post notices of apartments and rooms for rent. Under the terms of the settlement, the web site operator must pay $15,000 and "adopt adopt a non-discrimination policy". See, DOJ release.

The DOJ filed a civil complaint in the U.S. District Court (DNJ) against Spyder Web Enterprises, LLC, the operator of the web site, alleging violation of the Fair Housing Act, which is codified at 42 U.S.C. §§ 3601, et seq.

The complaint alleges that there are advertisements posted in the website that "indicate preferences, limitations, and discrimination based on race, sex, familial status, and national origin".

The CRD brings many enforcement actions. What is notable about this action is that the advertisements that the CRD alleges are a violation of the Act are posted by the users of the web site, but the legal action is against the operator of the web site.

The complaint describes how advertisements are posted to the website: "The website lists private apartments and houses for rent. A landlord or person seeking to sublet an apartment can post the advertisement for a rental unit in any region throughout the country free of charge; the fee is paid by the individual looking for housing." Similarly, the web site states that "Landlords, leaseholders and property managers post their apartment rentals and rooms for rent ..."

The Congress has passed legislation giving immunity to interactive computer service providers for material posted by others. Specifically, the Telecom Act of 1996, at 47 U.S.C. § 230(c)(1), provides that "No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider".

Section 230 further states that "It is the policy of the United States ... to preserve the vibrant and competitive free market that presently exists for the Internet and other interactive computer services, unfettered by Federal or State regulation".

The CRD has a history of pursuing regulation that would impede the use and development of the internet. For example, former Assistant Attorney General in charge of the CRD, Deval Patrick, wrote a letter on September 9, 1996 to Sen. Tom Harkin (D-IA) in which he stated that "The Americans with Disabilities Act (ADA) requires ... places of public accommodation to furnish appropriate auxiliary aids and services where necessary to ensure effective communication with individuals with disabilities ... Covered entities under the ADA are required to provide effective communication, regardless of whether they generally communicate through print media, audio media, or computerized media such as the Internet. Covered entities that use the Internet for communications regarding their programs, goods, or services must be prepared to offer those communications through accessible means as well." Patrick wrote that web site operators could comply with the ADA by providing audio tapes and braille copies of their web sites.

See also, TLJ story titled "Do Web Sites Violate the Americans with Disabilities Act?", February 10, 2000. And see, TLJ story titled "District Court Holds ADA Does Not Apply to Web Site", October 18, 2002, which pertains to the U.S. District Court (SDFl) Order Granting Defendant's Motion to Dismiss in Access Now v. Southwest Airlines (also published at 227 F.Supp.2d 1312.)

TLJ placed numerous telephone calls to the Civil Rights Division, the U.S. Attorney's Office for the District of New Jersey, and the Office of Public Affairs on December 30 and 31 to discuss the DOJ's understanding of the relationship of Section 230 to the various laws that the CRD enforces. No calls were returned.

More News

12/30. President Bush issued a Proclamation regarding implementation of the United States-Chile Free Trade Agreement, and a second Proclamation regarding implementation of the U.S. Singapore Free Trade Agreement.

12/16. The U.S. Court of Appeals (DCCir) issued its opinion [11 pages in PDF] in BDPCS v. FCC, a spectrum auction case. This case is BDPCS, Inc., v. FCC and USA, U.S. Court of Appeals for the District of Columbia, No. 00-1369, a petition for review of a final order of the FCC.

Washington Tech Calendar
New items are highlighted in red.
Wednesday, December 31

The House is in adjournment.

The Senate is in adjournment. (It will convene on January 20, 2004.)

The Supreme Court is in recess. (It will return on January 12, 2004.)

Deadline to submit a paper or panel proposal for the National Institute of Standards and Technology's (NIST) Spam Technology Workshop to be held on February 27, 2004. For more information, contact Joan Hash at 301 975-3357. See, notice in the Federal Register, November 25, 2003, Vol. 68, No. 227, at Pages 66075 - 66076.

Thursday, January 1

News Years Day.

Friday, January 2

The Federal Communications Commission's (FCC) new broadcast flag mandate takes effect. The FCC announced and released its Report and Order Further Notice of Proposed Rulemaking [72 pages in PDF] on November 4, 2003. This item is FCC 03-273 in MB Docket 02-230. See, notice in the Federal Register (December 3, 2003, Vol. 68, No. 232, at Pages 67599 - 67607) summarizing and stating the effective date of these rules. For more information, contact Rick Chessen or Susan Mort at or 202-418-7200. See also, stories titled "FCC Releases Broadcast Flag Rule" in TLJ Daily E-Mail Alert No. 772, November 5, 2003; and "FCC Publishes Notices Regarding Broadcast Flag Proceeding" in TLJ Daily E-Mail Alert No. 794, December 8, 2003.

Monday, January 5

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Report and Order and Further Notice of Proposed Rulemaking [198 pages in PDF] in it proceeding titled "In the Matter of Promoting Efficient Use of Spectrum Through Elimination of Barriers to the Development of Secondary Markets". The FCC adopted this item on May 15, 2003, but did not release it until October 7, 2003. This is FCC 03-113 in WT Docket No. 00-230. See, TLJ story titled "FCC Adopts Order Allowing Some Secondary Leasing of Spectrum", May 15, 2003, and story titled "FCC Finally Releases R&O and FNPRM in Secondary Spectrum Markets Proceeding" in TLJ Daily E-Mail Alert No. 755, October 8, 2003.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) regarding its proposed rule changes regarding revision of patent term extension and patent term adjustment provisions related to decisions by the Board of Patent Appeals and Interferences. See, notice in the Federal Register, December 4, 2003, Vol. 68, No. 233, at Pages 67818 - 67821.

Deadline to submit comments to the Office of the U.S. Trade Representative (USTR) regarding the operation and effectiveness of, and the implementation of and compliance with, the World Trade Organization (WTO) Basic Telecommunications Agreement, other WTO agreements affecting market opportunities for U.S. telecommunications products and services, the telecommunications provisions of the North American Free Trade Agreement (NAFTA), Chile FTA and Singapore FTA, and other telecommunications trade agreements. See, notice in the Federal Register, December 8, 2003, Vol. 68, No. 235, at Pages 68444 - 68445.

Tuesday, January 6

12:15 PM. The Federal Communications Bar Association's (FCBA) Mass Media Practice Committee will hold a brown bag lunch titled "Meet the Trade Press". The speakers will be Bill McConnell (Broadcasting and Cable), Brooks Boliek (Hollywood Reporter), Mike Feazel (Communications Daily), Ted Hearn (Multichannel News), Susan Crabtree (Variety), and Leslie Stimson (Radio World). Location: 8th Floor Conference Room, Dow Lohnes & Albertson, 1200 New Hampshire Ave., NW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) regarding its notice of proposed rulemaking (NPRM) regarding human exposure to radiofrequency (RF) energy. The FCC adopted this notice of proposed rulemaking on June 12, 2003, and released it on June 26, 2003. This is ET Docket No. 03-137. For more information, contact Robert Cleveland in the FCC's Office of Engineering and Technology at 202 418-2422 or See, notice in the Federal Register, September 8, 2003, Vol. 68, No. 173, at Pages 52879 - 52889.

Wednesday, January 7

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Webmethods v. iWork Software, No. 03-1410. This is a patent infringement case brought by iWork Software in the U.S. District Court (NDIll). Webmethods moved to intervene pursuant to Rule 24, Federal Rules of Civil Procedure, but the District Court denied the motion. Location: Courtroom 402, 717 Madison Place, NW.

Friday, January 9

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Fujitsu Compound Semiconductor v. U.S., No. 03-1293. Location: Courtroom 201, 717 Madison Place, NW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Wireless Committee will host a luncheon. Mark Rubin (Western Wireless) and Marie Gillory (National Telephone Cooperative Association) will speak on universal service and the distribution of funding in rural areas. The price to attend is $15. RSVP to Wendy Parish at by 5:00 PM on Wednesday, January 7. For more information, contact Laura Phillips at 202 842-8891 or Location: Sidley Austin, 1501 K Street, NW, 6th Floor.

EXTENDED TO JANUARY 23. Deadline to submit comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking [35 pages in PDF] regarding unlicensed devices. See, notice in the Federal Register, December 10, 2003, Vol. 68, No. 237, at Pages 68823 - 68831. The FCC adopted this NPRM on September 10, 2003. See, FCC release [PDF]. The FCC released the NPRM [35 pages in PDF] on September 17, 2003. This NPRM is FCC 03-223 in ET Docket No. 03-201. See also, stories titled "FCC Announces NPRM Regarding Unlicensed Devices" in TLJ Daily E-Mail Alert No. 739, September 15, 2003, and "FCC Announces Deadlines for Comments on Unlicensed Devices NPRM" in TLJ Daily E-Mail Alert No. 800, December 16, 2003.

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