10/28. The U.S. Court of Appeals (6thCir) issued its opinion [6 pages in PDF] in DaimlerChrysler v. The Net Inc., affirming the District Court's judgment for DaimlerChrysler (a trademark holder) against cyber squatters, under the Anti-Cybersquatting Consumer Protection Act (ACPA). The Court of Appeals also held that the ACPA does not violate the takings clause of the Constitution, and that in a ACPA case the trademark hold is entitled to an injunction that is broader than the scope of its ACPA claim.

"Dodge" has been a registered trademark of plaintiff DaimlerChrysler since 1939. DaimlerChrysler also used the telephone number 1-800-4-A-DODGE beginning in 1995, and registered the domain 4ADODGE.com in 1995. Defendant Keith Maydeck, while serving time in a federal prison in 1996, had defendant Michael Sussman register the domain name, foradodge.com, in the name of Net Inc. There is no such corporate entity.

Maydeck asserts that he registered this domain name in connection with his plans to offer "dodging" services, such as tax and creditor avoidance. Yet, he also registered numerous other domain names that included corporate trademarks, as well as domain names that mimick the domain name of government agencies. Moreover, the foradodge.com web site contained a hyperlink to a pormography web site.

DaimlerChrysler filed a complaint in U.S. District Court (EDMich) against Maydeck, Sussman, and Net Inc. alleging violation of the ACPA. The District Court granted summary judgment to DaimlerChrysler, ordered the transfer of the domain name, and enjoined the defendants for using the marks DODGE, 4ADODGE, or any variations thereof, not only in registered domains, but in any communications. Defendants brought this appeal, pro se.

The Court of Appeals affirmed in a rather straightforward application of the ACPA, which is codified at 15 U.S.C. S 1125(d).

The Court wrote that "A trademark owner asserting a claim under the ACPA must establish the following: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit." The Court held that all five elements were established.

In its analysis of bad faith, the Court applied nine non-exclusive factors enumerated at 15 U.S.C. § 1125(d)(1)(B)(i), and found that eight factors weighed in favor of DaimlerChrysler, while one was neutral -- factor VI.

The sixth bad faith factor is "the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct". There were discussions regarding the sale of the domain name, but the parties disputed the facts regarding who made the first offer regarding sale of the domain name.

One other notable aspect of this ruling is that it addressed the defendants' argument that the ACPA involves a takings clause violation. The Fifth Amendment of the Constitution provides that "nor shall private property be taken for public use without just compensation".

The Court references several District Court opinions on application of the takings clause to the ACPA, and several general takings clause cases. It concluded that "the ACPA does not effect a taking."

The Court also upheld the injunction against using the marks DODGE and 4ADODGE in any communications against a claim that it was too broad. The Court held that "a plaintiff is entitled to an injunction that is somewhat broader than the scope of its ACPA claim in order to protect the reputation and goodwill it has established in its marks and to prevent defendants from infringing on, or otherwise harming, those marks".

This case is DaimlerChrysler v. The Net Inc., et al., No. 03-1950, an appeal from the U.S. District Court for the Eastern District of Michigan at Detroit, D.C. No. 98-74186, Judge Paul Borman presiding. Judge Kennedy wrote the opinion of the Court of Appeals, in which Judges Cook and Joseph Hood joined.

10/25. The Recording Industry Association of America (RIAA) announced that various record companies settled the case Arista Records v. Sakfield Holding Company, a copyright infringement lawsuit against the individuals and company associated with the puretunes.com website.

Sakfield Holding Company, a Spanish company located in Madrid, Spain, operated a web site located at www.puretunes.com that allowed persons to download copyrighted musical works owned by the plaintiffs without their authorization.

The RIAA stated in a release that the defendants are enjoined from further infringement of the plaintiffs' music copyrights, and that "under the settlement agreement, Sakfield Holding Co. is ordered to pay the major record companies $10 million while the four individuals behind the service must pay a total of $500,000."

See also, story titled "District Court Rules on Personal Jurisdiction Over Foreign Web Site Operator in Copyright Infringement Case" in TLJ Daily E-Mail Alert No. 887, April 29, 2004.

This case is Arista Records, Inc., et al. v. Sakfield Holding Company, S.L., et al., U.S. District Court for the District of Columbia, D.C. No. 03-1474 (RCL), Judge Royce Lamberth presiding.

10/28. CNET News published series of articles and tables that list and analyze the voting records of all Senators and Representatives on a range of technology related bills. This series provides individual voting records and overall scores for each Senator and Representative. It also provides party level data.

It concludes that "Senate Republicans scored an average of 61 percent -- 15 points higher than their Democratic counterparts, who on average scored 46 percent. The gap was mirrored in the ratings garnered by their counterparts in the U.S. House of Representatives, where Republicans boast a 68 percent collective score compared with 52 percent for Democrats."

TLJ published a congressional scorecard for second session of the 104th Congress (1998) in January of 1999. This study found that while some Republicans and Democrats in both houses obtained perfect scores, the average score for Republicans was higher than the average score for Democrats in both the House and Senate. TLJ also collected and analyzed data on votes in the first session of the 105th Congress (1999), but did not publish a scorecard. The 1999 scores for individual Senators and Representatives correlated highly with their 1998 scores. Also, the average score for Republicans was higher than the average score for Democrats in 1999.

The CNET study covers the time period 1995 through 2004 for Senators. The Senate roll call votes used include the Communications Decency Act (CDA), the Digital Millennium Copyright Act (DMCA), the original Internet Tax Freedom Act (ITFA) in 1998, the Y2K liability limitation bill in 1999, the bill to modernize the export control regime in 2001, the trade promotion authority bill, a bill that included the research and development (R&D) tax credit, and other bills.

The CNET study covers the time period 1998 through 2004 for Representatives. The House roll call votes used include a bill to increase the number of H1B visas (1998), a Y2K liability limitation bill (1999), an extension of the ITFA (2000), a bill extending permanent normal trade relations (PNTR) status to China (2001), the USA PATRIOT Act (2001), the Tauzin Dingell communications bill (2002), the trade promotion authority bill (2002), the USPTO fee bill (2004), the stock options accounting bill (2004), a bill that includes an extension of the R&D tax credit (2004), and other bills.

The CNET study includes the voting record of Sen. John Kerry (D-MA), the Democratic nominee for President. However, there is no voting record for President George Bush, since he is not a Member of Congress. Hence, no comparison of the two candidates is possible. However, Sen. Kerry scored below the average for his Senate colleagues.

10/28. The Department of Homeland Security (DHS) announced that its adopted its first biometric facial recognition standard. The DHS stated in a release that it "will use the standard as technical criteria upon which to design equipment such as cameras and software for facial recognition. The standard supports visual human facial comparison and computer automated comparisons for watch list checks and for computer identification and verification. It also facilitates the interchange of photographs across systems, and will assist in the future development of interoperable biometric applications."

10/28. A grand jury of the U.S. District Court (DNJ) returned indictments charging 19 individuals with various federal crimes in connection with the operation of a website that facilitated the trafficking in stolen identity information and documents, and stolen credit and debit card numbers. See, DOJ release.

10/28. William Donaldson, Chairman of the Securities and Exchange Commission (SEC), gave a speech in New York, New York to the International Organization of Securities Commissions. He stated that "The fundamental issue for everyone involved in financial markets today, regardless of company or country, must be to maintain high standards that breed trust and confidence. This becomes increasingly important at a time when investors can -- and do -- move capital around the globe with a few keystrokes on a computer. Recent history has taught us that capital will flee environments that are unstable or unpredictable -- whether that's a function of lax corporate governance, ineffective accounting standards, or a lack of transparency."

10/28. The Recording Industry Association of America (RIAA) announced the filing of yet another round of 750 civil lawsuits against individual John Doe defendants alleging copyright infringement in connection with their use of peer to peer systems. See, RIAA release.

10/28. The Cellular Telecommunications and Internet Association (CTIA) announced the election of directors and officers for 2005. See, CTIA release.

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10/28. The Federal Communications Commission (FCC) released the text [86 pages in PDF] of its Report and Order that amends Part 15 of the FCC's rules for broadband over powerline (BPL) systems. The FCC adopted, but did not release, this item at its October 14, 2004 meeting. This item is FCC 04-245 in ET Docket No. 04-37 and ET Docket No. 03-104. See also, story titled "FCC Adopts BPL Report and Order" in TLJ Daily E-Mail Alert No. 997, October 15, 2004.

10/28. Federal Communications Commission (FCC) Commissioners Michael Copps and Jonathan Adelstein announced that they will host an event pertaining to media concentration. It will be held on December 9, 2004 at 7:00 PM at Hamline University in St. Paul, Minnesota. See, release.

10/28. The Federal Communications Commission's (FCC) Enforcement Bureau (EB) released an Order and Consent Decree [8 pages in PDF] that fines TON Services, Inc. $40,000 for violating the universal service reporting and contribution requirements of 47 U.S.C. § 254, and the FCC's rules thereunder. Specifically, this item decrees that TON Services shall make a "voluntary contribution", that TON Services comply with the FCC's construction of the universal service reporting and contribution requirements in the future, and that the FCC dismiss its investigation of TON Services. FCC Chairman Michael Powell stated in a release [PDF] that "We cannot and will not tolerate refusals to comply with our contribution rules. We will continue our strong enforcement in this area to help ensure that telecommunications services are available to all Americans. When carriers contribute their fair share we ensure that the universal service fund remains on a sound footing." TON Services provides services to truck drivers and other travelers. It provides load/equipment posting, freight matching, advertising services, truck insurance, flower bouquet ordering, and other truck driver related services. It also provides access to pre-paid calling cards, payphones, WiFi access and data jacks at truck stops.

The calendar section of TLJ Daily E-Mail Alert No. 1,006 (Thursday, October 28, 2004) and TLJ Daily E-Mail Alert No. 1,005 (Wednesday, October 27, 2004) incorrectly stated that the FCC will be closed on November 2, 2004.

The House is in recess until November 16, 2004. See, Republican Whip Notice.

The Senate is in recess until November 16, 2004.

Day five of a five day conference hosted by the Office of the Secretary of Defense (OSD) Networks and Information Integration (NII) and the Joint Chiefs of Staff titled "7th Annual DoD Spectrum Management Conference". See, notice. Location: Radisson Hotel, Annapolis, Maryland.

Deadline to submit comments to the Federal Communications Commission (FCC) in response to its notice of proposed rulemaking (NPRM) regarding the Emergency Alert System (EAS). The FCC adopted this NPRM at its August 4, 2004 meeting, and released it on August 12, 2004. This NPRM is FCC 04-189 in EB Docket No. 04-296. See, notice in the Federal Register, August 30, 2004, Vol. 69, No. 167, at Pages 52843 - 52847.

Daylight Savings Time ends.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel A, will hear oral argument in Nellcor Puritan v. Masimo Corporation (04-1247). (The Court will decide Hoffer v. Microsoft, No. 04-1103, on the briefs.) See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel B, will hear oral argument in Harris Corp. v. Ericsson (No. 03-1625) and Syntex USA v. Apotex (No. 04-1252). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

2:00 PM. The U.S. Court of Appeals (FedCir), Panel C, will hear oral argument in Evident Corp. v. Church & Dwight Co. (No. 03-1541) and Lewis v. Agriculture Facilities (No. 04-1255). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

Deadline to submit comments to the National Institute of Standards and Technology (NIST) regarding the first draft of NIST Special Publication 800-52 [33 pages in PDF], titled "Guidelines on the Selection and Use of Transport Layer Security". Submit comments and questions to Matthew Fanto at matthew.fanto@nist.gov.

Deadline to submit comments to the National Institute of Standards and Technology (NIST) regarding the second public draft of NIST Special Publication 800-53 [94 pages in PDF], titled "Recommended Security Controls for Federal Information Systems". Submit comments and sec-cert@nist.gov.

General Election Day.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel D, will hear oral argument in IEX Corp. v. Blue Pumpkin Software (No. 04-1068) and Postx Corp. v. Secure Data (No. 04-1257). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel E, will hear oral argument in Ishida Co. v. Taylor (No. 04-1102) and Lawman Armor v. Master Lock (No. 04-1276). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

2:00 PM. The U.S. Court of Appeals (FedCir), Panel F, will hear oral argument in Commissariat v. Chi Mei Optoelecton (No. 04-1139) and Howmedica v. Tranquil Prospect (No. 04-1302). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

Rescheduled date for the Federal Communications Commission's (FCC) Auction No. 37, pertaining to FM broadcast construction permits. See, notice in the Federal Register, July 16, 2004, Vol. 69, No. 136, at Pages 42729 - 42742.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel G, will hear oral argument in Purdue Pharmaceutical v. Endo Pharmaceutical (No. 04-1189) and Transonic Systems v. Fresenius USA (No. 04-1439). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel H, will hear oral argument in Anheuser Busch v. Crown Cork & Seal (No. 04-1185). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Common Carrier Practice Committee will host a brown bag lunch. The topic will be "Intercarrier Compensation Reform -- Where Is It Headed?". The speakers will be Steve Morris (Deputy Division Chief of the FCC's Wireline Competition Bureau's Pricing Policy Division), Ken Pfister (Great Plains Communications), and Rich Rindler (Swidler Berlin), and others. RSVP to Cecilia Burnet at cmburnett@hhlaw.com or 202 637-8312 by October 29. Location: Hogan & Hartson, 555 13th Street, NW, Litigation Center Conference Room.

2:00 PM. The U.S. Court of Appeals (FedCir), Panel I, will hear oral argument in Bayer AG v. Housey Pharmaceuticals (No. 04-1194). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) program titled "Ten Ways to Protect Intellectual Property When Drafting E-Commerce Agreements". The speaker will be Walter Effross (American University law school). See, notice. Prices vary from $70 to $115. For more information, call 202 626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H Street, NW.

RESCHEDULED FOR NOVEMBER 9. 9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. The event will be webcast. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

8:30 AM - 12:15 PM The Federal Communications Bar Association's (FCBA) Engineering and Technical Practice Committee will host an event titled "Tour of the FCC's Engineering and Technology Laboratory". The program includes transportation to and from the FCC, and lunch with FCC lab personnel in Columbia, MD. The price is $45. RSVP to Heidi Kurtz at 202-293-4000 or heidi@fcba.org. Registrations, payments and cancellations are due no later than Friday, October 29, 2004..

8:30 AM - 12:30 PM. The North American Numbering Council (NANC) will meet. See, FCC notice [PDF]. Location: FCC, Room TWC305, 445 12th, SW.

8:30 - 11:30 AM. The Software and Information Industry Association (SIIA) will host a seminar titled "Software Licensing Best Practices Seminar Series: Licensing to Uncle Sam: How it Impacts Software License Agreements". See, notice. Prices vary. Location: Mintz Levin, 12010 Sunset Hills Road, Suite 900 Reston, VA.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel J, will hear oral argument in Corus Staal BV v. Commerce (No. 04-1107) and Taghulk Proprietary v. Service Corp. (No. 04-1201). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel K, will hear oral argument in Freeman v. Gerber Products (No. 04-1203). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

4:00 PM. Julie Cohen (Georgetown University Law Center) will present a paper titled "Copyright, Commodification, and Culture: Locating the Public Domain" at an event hosted by the Dean Dinwoodey Center for Intellectual Property Studies at the George Washington University Law School (GWULS). For more information, contact Robert Brauneis at 202 994-6138 or rbraun@law.gwu.edu. The event is free and open to the public. See, notice. Location: GWULS, Faculty Conference Center, Burns Building, 5th Floor, 716 20th St., NW.

Deadline to submit comments to the Department of Homeland Security's (DHS) Bureau of Customs and Border Protection (CBP) in its rulemaking proceeding regarding recordation of copyrights and enforcement procedures to prevent the importation of piratical articles. See, notice in the Federal Register, October 5, 2004, Vol. 69, No. 192, at Pages 59562 - 59569. See also, story titled "Bureau of Customs and Border Protection Conducts DMCA Rulemaking" in TLJ Daily E-Mail Alert No. 998, October 18, 2004.

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in NJ TV Corp v. FCC, No. 03-1444. Judges Henderson, Rogers and Williams will preside. Location: Prettyman Courthouse, 333 Constitution Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel M, will hear oral argument in Junker v. Eddings (No. 04-1208), ASM America v. Genus Inc. (No. 04-1211), Mayer Berkshire v. Berkshire Fashion (No. 04-1254), and Carolina Tobacco v. Bureau of Customs (No. 04-1269). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

2:00 PM. The U.S. Court of Appeals (FedCir), Panel N, will hear oral argument in Invitrogen v. Clonetech Labs (No. 04-1039). See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Wireless Telecommunications Practice Committee will host a luncheon. The topics will be wireless services and homeland security, CALEA, network outage reporting, and wireless priority service. The speakers will be Jeffery Goldthorp (FCC Office of Engineering and Technology), Geraldine Matise (OET), and Christopher Guttman-McCabe (CTIA). The price to attend is $15. See, registration form [PDF]. Location: Wiley Rein & Fielding, 1776 K St., NW.

12:00 NOON. Deadline to submit comments to the Office of the U.S. Trade Representative (USTR) regarding its out of cycle reviews of Malaysia, Poland, and Taiwan, pursuant to Section 182 of the Trade Act of 1974, which is codified at 19 U.S.C. § 2242 (also known as Special 301), which requires the USTR to identify countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on intellectual property protection. See, notice in the Federal Register, October 13, 2004, Vol. 69, No. 197, at Pages 60928 - 60929.

Deadline to submit comments to the Federal Communications Commission's (FCC) Office of Engineering and Technology (OET) in response to Geophysical Survey Systems, Inc.'s (GSSI) request for a waiver of Part 15 of the FCC's rules to permit the higher power operation of ultra-wideband (UWB) non-contact ground penetrating radars (GPRs). See, FCC notice [2 pages in PDF]. This is ET Docket No. 04-374.