|Court Rules That Search Engines Use of
Trademarks to Display Banner Ads May Infringe Trademarks
1/14. The U.S. Court of Appeals
(9thCir) issued its
opinion [28 pages in PDF] in Playboy v. Netscape, a trademark
case involving the use of trademarked terms to displays ads with search results.
Playboy Enterprises, Inc. (PEI) has trademarked the terms "playboy" and
"playmate". Netscape and Excite operated web based search engines. They sold
advertising space to pormographic website operators. In particular, Netscape and
Excite sold the display of banner ads on search results pages that were produced
after users entered the trademarked terms. That is, users who typed either of
the trademarked terms were given results pages with banner ads for the porm sites.
PEI filed complaint in the U.S. District
Court (CDCal) against Netscape and
Excite alleging trademark infringement and trademark dilution. The District Court granted
summary judgment to Netscape and Excite on both claims. PEI appealed.
On the infringement claim, PEI argued that there is initial interest
confusion. That is, by keying adult oriented ads to PEI's trademarks, so that
the ads appear immediately after the user enter PEI's trademark, Netscape and
Excite actively created confusion regarding the sponsorship of those ads. The
Court of Appeals, relying on
Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999), reversed
and remanded, holding that there are genuine issues materials issues of fact.
The Appeals Court also reversed and remanded on the trademark dilution claim,
holding that there are genuine issues of material fact regarding both the
famousness of the marks and the defendants' commercial use of the marks.
This case is Playboy Enterprises, Inc. v. Netscape Communications
Corporation, and Playboy Enterprises International, Inc. v. Excite, Inc., Nos.
00-56648 and 00-56662, appeals from the U.S.
District Court for the Central District of California, Judge Alicemarie Stotler
presiding, D.C. Nos. CV-99-00320-AHS and CV-99-00321-AHS-02
|6th Circuit Rules in Cell Tower Case
1/15. The U.S. Court of Appeals
(6thCir) issued its
opinion in Omnipoint v. City of Southfield, a cell tower location case.
The Appeals Court affirmed the District Court's summary judgment for Southfield
based upon failure to file suit within the 30 day statute of limitations.
Omnipoint (VoiceStream) provides personal communications
systems in southeastern Michigan. It sought a special use permit from the City
of Southfield to build a 150 foot monopole antenna tower to cover a gap in its
coverage. Southfield denied the application.
U.S.C. § 332 provides, at § 332(c)(7)(A) that "Except as provided in this
paragraph, nothing in this chapter shall limit or affect the authority of a
State or local government or instrumentality thereof over decisions regarding
the placement, construction, and modification of personal wireless service
facilities." § 332(c)(7)(B) then provides limitations to this general rule.
§ 332(c)(7)(B)(ii) prevents state and local governments from unreasonably
discriminating among providers, and from prohibiting the provision of service.
§ 332(c)(7)(B)(iii) provides that "Any decision by a State or local government
or instrumentality thereof to deny a request to place, construct, or modify
personal wireless service facilities shall be in writing and supported by
substantial evidence contained in a written record."
Finally, there is a statute of limitations in the statute. § 332(7)(B)(v)
provides that "Any person adversely affected by any final action or failure to
act by a State or local government or any instrumentality thereof that is
inconsistent with this subparagraph may, within 30 days after such action or
failure to act, commence an action in any court of competent jurisdiction."
VoiceStream filed a complaint in U.S.
District Court (EDMi) against
Southfield alleging violation of Section 332. The District Court granted summary
judgment to Southfield on the grounds that the complaint was filed after the
running of the statute of limitations.
The Appeals Court affirmed. VoiceStream filed its complaint on
July 3, 2001. The Court ruled that the 30 days
began to run on April 9, 2001, which was the date that the minutes of the city
council meeting at which the application was denied were approved.
This case is Omnipoint Holdings, Inc. dba VoiceStream Wireless v. City of
Southfield, Southfield City Council, U.S. Court of Appeals for the 6th
Circuit, No. 02-1713, an appeal from the U.S. District Court for the Eastern
District of Michigan, at Detroit, D.C. No. 01-72482, Judge Denise Hood presiding.
|GAO Reports on Use of Public Key
Infrastructure at Federal Agencies
1/15. The General Accounting Office (GAO)
released a report [58
pages in PDF] titled "Information Security: Status of Federal Public Key
Infrastructure Activities at Major Federal Departments and Agencies"
The report, which was prepared for the
House Government Reform Committee,
and its Subcommittee on Technology, Information Policy, Intergovernmental
Relations and the Census, states that "Increasingly, the federal government is
using the World Wide Web and other Internet-based applications to provide online
public access to information and services as well as to improve internal
"To properly conduct communications and transactions with the
government over the Internet may require security assurances that go beyond
simple security measures -- such as passwords -- to properly safeguard
sensitive, personal, and financial data. Public key infrastructure (PKI)
offers many of the security assurances that, when fully and properly implemented,
can protect online communications and transactions", states the GAO.
This report is a follow up to a similar report by the GAO
conducted in 2001. The present report is based upon an examination of up to date
information on PKI initiatives at 24 federal departments and agencies. This
report specifically examines the
Federal Bridge Certification
Authority (FBCA) and Access Certificates
for Electronic Services (ACES) programs.
The GAO found that "24 agencies involved in our query, 20 are
pursuing a total of 89 PKI initiatives. The 89 initiatives are at various stages
of development, and collectively they represent a significant investment,
estimated at about $1 billion. In addition, the governmentwide FBCA and ACES
programs continue to promote the adoption and implementation of PKI, but these
programs have seen mixed progress and results. The level of participation in the
FBCA, which provides a means to link independent agency PKIs into a broader
network, is the same as in 2001 -- four agencies are certified to operate through
the network. Additional agencies are planning to participate in the future, as
well as nonfederal organizations, such as the state of Illinois, the Canadian
government, and educational consortiums. Similarly, the ACES program, which
offers agencies various PKI services through a General Services Administration
(GSA) contract, has garnered lower than expected participation among federal
|USPTO Announces Top Ten Patent Companies
1/12. The U.S. Patent and
Trademark Office (USPTO) released its preliminary list of the entities
receiving the most patents in 2003. IBM tops the
list for the 11th consecutive year. See, USPTO
and summary table below.
Hewlett Packard boasted in a
that it moved up from No. 9 in 2002 to No. 5 in 2003, with a 27 % increase. HP
also announced that "it has formed an intellectual property (IP) licensing
organization designed to increase revenue and improve technical collaborations
Steve Fox, HP VP and Deputy General Counsel, Intellectual Property, stated
that "we launched a major effort to increase our intellectual property portfolio
... We have been holding 'innovation' workshops designed to encourage the
technical workforce to disclose more inventions."
Joe Beyers, VP, Intellectual Property Licensing, stated that "Historically,
HP's intellectual property has provided value to the company in the form of
innovative products and protection from our competitors ... This approach has
served us well, but in many cases we have missed out on the opportunity to gain
additional value from HP's inventions beyond product revenue. Capturing these
additional opportunities is important to HP as the competitive environment in
which we operate continues to intensify. Also, by making HP's intellectual
property more broadly available, we can improve our collaboration with other
IBM also touted its first place in the patent ranking. It stated in a
release that its extended "its run as the world's most innovative company to
eleven consecutive years. Led by growth in patents that fuel the company's
latest on demand computing and services offerings, IBM eclipsed the nearest
company by more than 1,400 patents."
Nick Donofrio, IBM SVP, Technology and Manufacturing, stated that "IBM's
commitment to research and development has driven more than a decade's worth of
patent leadership and is a major factor in our emergence as the world's leading
IT, services and consulting company ... That said, we consider patents a
starting point on the path to true innovation. What differentiates IBM from
other companies is our ability to rapidly apply these inventions to new products
and offerings that solve the most pressing business challenges of our clients."
Although IBM leads all other companies in new patents every year, its
Chairman and CEO recently gave a speech in which he expressed a lack of
enthusiasm for the patent system.
Sam Palmisano, the Chairman and CEO of IBM, gave a lengthy
speech in Washington
DC on October 30, 2003 to the Council on Competitiveness in which he discussed
innovation. What was notable about Palmisano's speech was what he did not say. He never
argued that according legal protections to inventors incents innovation and
investment in innovative endeavors.
Palmisano mentioned patents only once -- to state that IBM gets more than anyone
else. He mentioned "intellectual property" only once -- to ask rhetorically,
"How can we go beyond traditional notions of ``R&D´´ and intellectual property
A common denominator of most speeches, papers, reports, and books regarding
innovation is the argument that giving patent protection to inventors incents
innovation. See, related story below, titled "IBM CEO Advocates Government
Support for Innovation Ecosystem".
|IBM CEO Advocates
Government Support for Innovation Ecosystem
1/12. Sam Palmisano, the Chairman and CEO of IBM, gave a
in Washington DC on October 30, 2003 to the Council on Competitiveness in which
he discussed innovation. He stated at the outset that he would address "How it
happens, where it happens, and why."
It was a CEO speech -- polished and practiced, and packed with eloquent
phrases -- but maddeningly vague on key points. But, he was clear on the many
Like many others who have examined innovation, he believes that the study of history is important
for understanding this subject. He did not, however, cite any historical works
that pertain to innovation. Moreover, most of his few references to history were
recent developments in information and bio technology.
He concludes that "There are times and places and certain
conditions under which innovation absolutely flourishes." But, he rejects the
notion that innovation is "just human genius". He said that "if we study human
history, we know that that's simply not true."
Indeed, for Palmisano
(at right), there isn't much human about innovation. His speech is about
corporations, research universities and governments. And, altogether, in
interconnected by networks, they form an "innovation ecosystem". People are
merely employees and workers who have skills and hold jobs within the ecosystem.
In listing the numerous factors that have made the U.S. an "engine of
innovation", he lists in one bullet point "access to natural resources and
labor". Apparently, people come with the land, like serfs.
But, innovations "emerge from this ecosystem". He never precisely
defines this "ecosystem". But, perhaps its meaning is captured in his phrase
"a unique sort of cooperation and collaboration among the federal government,
national and military labs, private sector R&D efforts, research universities and
He also states that "innovations ... require -- not just on invention or
discovery -- but the fusion of developments across multiple industries and fields."
Moreover, innovation involves "application and exploitation across multiple
Then, he also states that governments can and should endeavor to create
conditions that lead to innovation.
So, what can a government do to become more innovative? He lists several items,
including "investing in education and job skills", "teaching their citizens the
language of modern commerce ... software", building "modern network
infrastructures", and entering into "multilateral trade agreements".
He later adds that the U.S. government's role in creating the conditions for
innovation includes "basic research", nurturing "strategic partnerships among
the private and public sectors, universities and labor", and "building the
national infrastructure necessary to participate in the global innovation
What is also notable about his speech is what he left out. First, unlike many
others who have examined innovation, he does not
identify freedom or democracy as being conditions that support innovation.
Second, while he references "businesses", "company",
"business investment", "capital markets", "private sector",
and "rule of law", he leaves out many of
the topics addressed by those he argue that free markets are essential for
innovation. He makes no reference to competitive markets, creative destruction,
deregulation, or government transparency. He never makes a statement to the
effect that free markets are a necessary condition for innovation.
Third, he did not say the intellectual property rights (IPR) protections promote
innovation. He mentioned IPR only twice. In both instances, he diminished its
importance. For example, he asked rhetorically, "How can we go beyond
traditional notions of "R&D" and intellectual property and identify and nurture
the intersections that lead to innovation?" He seems to be saying that
traditional notions of intellectual property do not promote innovation.
He also states at one point that IBM receives more patents than any other
company. But, he makes no comments about the importance of patent protection,
or the value of patents to IBM.
Nor did not state that SCO filed a complaint against IBM in state court in
Utah last year alleging misappropriation of trade secrets, tortious interference, unfair
competition and breach of contract in connection with IBM's alleged use of
proprietary UNIX code.
Tech Law Journal began a series of articles innovation and public policy
before the holidays. The article continues this series.
|House Commerce Committee Seeks Chicago
School Records in Investigation of E-Rate Waste, Fraud and Abuse
1/15. Rep. Billy Tauzin (R-LA) and
Rep. James Greenwood (R-PA) wrote
to the Chicago Public Schools requesting records relevant to
House Commerce Committee investigation
into the Federal Communications Commission's
(FCC) e-rate subsidy program.
Rep. Tauzin is the Chairman of the
House Commerce Committee. Rep. Greenwood (at right) is the Chairman of its Subcommittee
on Oversight and Investigations.
The letter requests "Copies of all audits of E-rate related work at Chicago
Public Schools (CPS) conducted for CPS, including, but not limited to, the
internal audits conducted by KPMG", "Copies of reviews, assessments, or
memoranda regarding E-rate related work or performance of such work for CPS,
including, but not limited to, memoranda prepared for the Chicago Board of
Education or members of the Board", and other records.
The letter does not reference the problem of waste, fraud and abuse in the
e-rate program. However, the House Commerce Committee has been conducting an
investigation into waste, fraud and abuse.
See, related stories: "Reps. Tauzin & Greenwood Request GAO
Report on E-Rate Waste, Fraud & Abuse" in
TLJ Daily E-Mail Alert No.
791, December 3, 2003; "House Commerce Committee Requests Information from IBM in
E-Rate Fraud Investigation" in TLJ
Daily E-Mail Alert No. 698, July 15, 2003; "House Commerce Committee Subpoenas
USAC for E-Rate Records" in
TLJ Daily E-Mail Alert No. 652,
April 30, 2003; and "Rep. Tauzin Writes Powell Re Waste Fraud & Abuse In E-Rate
Program" in TLJ Daily
E-Mail Alert No. 624, March 17, 2003.
|Cato Paper Criticizes Compulsory Licensing
1/15. The Cato Institute released a
paper [15 pages in PDF]
titled "Compulsory Licensing vs. the Three "Golden Oldies" Property Rights,
Contracts, and Markets", by Robert Merges.
Merges, a law professor at the University of California at Berkeley, writes
that "Rather than allowing musicians, artists, and other copyright owners to
negotiate licensing terms for use of their works, a compulsory license forces
copyright owners to allow use of their works under legislatively set prices and
restrictions on use."
He argues that today, "markets for digitized works do not suffer
from market failures. Furthermore, the Internet has reduced the transaction
costs that once served as a key rationale for compulsory licensing. Recent
developments suggest that fears of excessive control of digital content are
overblown. Without enhancing compulsory licensing, the digital landscape is
diverse, as the case of music demonstrates. There is free music, temporarily
free music, and low-cost music online. Offline, music companies are lowering the
prices of CDs."
He recommends repealing the digital public performance right
compulsory license, and letting "Sound-Exchange and any competitors that may
arise deal directly with webcasters." He also recommends resisting appeals to
legislate more compulsory licenses."
|Microsoft Agrees to Modify Windows XP
Feature At Request of DOJ
1/15. The Department of Justice's (DOJ)
Antitrust Division released a
statement titled "Microsoft Consent Decree Compliance
Advisory" that pertains to the "Shop for Music Online" feature in
XP operating system.
The DOJ stated that "Section III.H of the Final Judgment requires Microsoft
to allow end users and OEMs to specify a non-Microsoft middleware product --
such as a web browser, e-mail client, or media player -- as the default
middleware product to be launched in place of Microsoft's corresponding
The DOJ continued that "As part of the Department's ongoing review of
Microsoft's compliance with Section III.H, the Department has investigated a
feature within Windows XP called ``Shop for Music Online,´´ which allows a user
to go online to purchase music compact discs from retailers. The Department was
concerned that the ``Shop for Music Online´´ feature invokes Microsoft's
Internet Explorer even when the user has chosen a different default web browser,
such as Netscape, Opera or Mozilla. The Department concluded that the invocation
of Internet Explorer by the 'Shop for Music Online' feature violated Section
III.H of the Final Judgment. The Department discussed its concerns with
The DOJ added that "Without necessarily agreeing with the Department's
position, Microsoft has agreed to remove the override of the user's default
browser contained in ``Shop for Music Online.´´ Microsoft expects to have this
modification to Windows XP available to consumers in February or March, through
a ``Windows Update´´ download."
|Washington Tech Calendar
New items are highlighted in red.
|Friday, January 16
The House is in adjournment. (It will convene on January 20, 2004.)
The Senate is in adjournment. (It will convene on January 20, 2004.)
9:30 AM. The U.S. Court of Appeals
(DCCir) will hear oral argument in Advanced Communications Corp. v.
FCC, No. 03-1082.
Judges Rogers, Garland and Williams will preside. Location: 333 Constitution Ave. NW.
Deadline to submit comments to the
National Institute of Standards and Technology's
(NIST) Computer Security Division (CSD) in
response to its
Change Notice [2 pages in PDF] regarding Federal Information Processing
Standard (FIPS) 180-2, the Secure Hash Standard. Comments should be addressed
to firstname.lastname@example.org. See also,
180-2 [75 pages in PDF], released on August 1, 2002.
|Monday, January 19
Martin Luther King Day.
Iowa Presidential Caucuses.
|Tuesday, January 20
The House will return from recess.
The Senate will return from recess. It will resume
the omnibus appropriations bill for Fiscal Year 2004.
9:30 AM - 5:00 PM. The
Federal Communications Commission's (FCC)
Federal Advisory Committee on Diversity for Communications in the Digital
Age's Financial Subcommittee will hold a meeting. The meeting will address
"regulatory initiatives and the availability and access to capital for women
and minorities in the telecommunications industry". See, FCC
notice. Location: FCC, Commission Meeting Room, 445 12th St., SW.
|Wednesday, January 21
12:00 NOON - 1:45 PM. The AEI-Brookings Joint Center
for Regulatory Studies will host a panel discussion titled "What's Right and
What's Wrong with Corporate Finance Governance in the U.S. Today?". The
speakers will be Robert Hahn (AEI-Brookings),
Randall Kroszner (University
of Chicago), Paul
Atkins (SEC Commissioner), and
Steven Kaplan (University
of Chicago). See,
notice. Location: American Enterprise
Institute, Twelfth floor, 1150 17th St., NW.
12:00 NOON. The
Federal Communications Bar Association's (FCBA)
Transactional Practice Committee will host a brown bag lunch. The topic will be
contract enforceability and dispute resolution provisions, including arbitration
versus judicial resolution, choice of law, and choice of forum. For more information,
contact Laurie Sherman at
email@example.com or 703 216-3150. Location: Skadden Arps, 1440
New York Ave., 11th floor.
|Friday, January 23
10:00 AM - 3:00 PM. The
Federal Communications Commission's (FCC)
Technological Advisory Council will meet. See,
notice in the Federal Register, December 19, 2003, Vol. 68, No. 244, at
Pages 70796 - 70797. Location: FCC, 445 12th St., SW, Room TW-C305.
12:15 PM. The Federal
Communications Bar Association's (FCBA) Young Lawyers Committee will host a brown
bag lunch. The topic will be "Hot Communications Issues on the Hill". The
speakers will be Neil Fried (Republican Counsel,
House Commerce Committee), Gregg Rothschild (Democratic Counsel, House Commerce Committee),
Carosi (Republican Counsel,
Senate Commerce Committee), and Paul Nagle (Attorney-Advisor, FCC Office
of Legislative Affairs). For more information, contact Jason Friedrich at 202
354-1340 or firstname.lastname@example.org
or Pam Slipakoff at 202 418-7705 or
email@example.com. Location: Drinker Biddle & Reath,
1500 K Street, 11th Floor.
Deadline to submit reply 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.
Extended deadline to submit comments to the
Federal Communications Commission (FCC) in response to
of Proposed Rulemaking [35 pages in PDF] regarding unlicensed devices. See,
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
[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. See also, FCC
[PDF] extending the deadline from January 9 to January 23.
1/15. The Federal Communications Commission
(FCC) held a meeting to hear presentations from FCC officials regarding
implementation of the FCC's strategic plan and a review of FCC's policies and
procedures. See, presentation outlines in PDF.
1/15. The Federal Communications Commission
(FCC) issued a Notice
of Apparent Liability for Forfeiture that, in effect, fines World Communications
Satellite Systems, Inc. $560,000 for willful and repeated violations of Section 258
of the Communications Act and FCC rules. The NAL states that it submitted changes of
the preferred carriers of consumers without their authorization and verification.
That is, it slammed consumers. See also, FCC
1/15. The Office of Personnel Management (OPM)
notice in the Federal Register that summarizes, and provides a comment
deadline for, the OPM's proposed rule implementing provisions in the
E-Government Act of 2002 that authorize the temporary assignment of employees in
the field of information technology management (IT) between the federal
government and private sector organizations. Comments are due by March 15, 2004.
See, Federal Register, January 15, 2004, Vol. 69, No. 10, at Pages 2308 - 2311.
Rep. Tom Davis (R-VA) (at right),
Chairman of the House Government Reform
Committee, issued a release in which he outlined the agenda for the Committee
for 2004. Several agenda items are technology related, including oversight of the
General Services Administration's (GSA)
reorganization of the Federal Technology Service (FTS). See, story titled "GSA Audit Faults Government Contracting for
Information Technology" in TLJ Daily E-Mail Alert No. 816, January 15, 2004. The
agenda also includes implementation of the E-Government Act of 2002, including a
review of the Digital Tech Corps, Cooperative Purchasing, and Share-in-Savings
contracts. The agenda also includes oversight of
agency compliance with the Federal Information Security Management Act (FISMA).
The agenda also includes oversight of the
Department of Homeland Security (DHS), including the US-VISIT program, and a
review of all Transportation Security Administration (TSA) operations, including
airline passenger screening and air cargo security.
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