|USTR Releases 3rd Annual Report on WTO
Compliance by PR China
12/13. The Office of the U.S. Trade
Representative (USTR) released a
report [90 pages in PDF] titled "2004 Report to Congress on China's WTO
The People's Republic of China acceded to the
World Trade Organization (WTO) three years ago, on
December 11, 2001. The Congress has, by statute, required the USTR to provide it with
annual reports on China's WTO compliance. The present report is the third.
See, second report [73 pages in PDF] and
titled "USTR Releases 2nd Annual Report on WTO Compliance by PR China" in
TLJ Daily E-Mail
Alert No. 803, December 19, 2003; and first report [55 pages in PDF]
and story titled "USTR Reports to Congress on PR China's WTO Compliance"
in TLJ Daily E-Mail
Alert No. 567, December 13, 2002.
The report begins by stating that "China committed to implement a set of sweeping
reforms that required it to lower trade barriers in virtually every sector of
the economy, provide national treatment and improved market access to goods and
services imported from the United States and other WTO members, and protect
intellectual property rights (IPR). China also agreed to special rules regarding
subsidies and the operation of state-owned enterprises, in light of the state’s
large role in China’s economy."
The report states that "China deserves due recognition for the
tremendous efforts made to reform its economy to comply with the requirements of the
WTO. It is beyond the scope of this Report, however, to detail all the ways in which China
is in compliance with its commitments. This Report sets out to reflect the significant
concerns raised by U.S. stakeholders regarding China’s efforts to implement its
WTO commitments and China’s adherence to WTO rules. As the Report shows, while
China’s efforts to fulfill its WTO commitments are impressive, they are far from
complete and have not always been satisfactory, and China at times has
demonstrated difficulty in adhering to WTO rules."
Intellectual Property Rights. The report states that "Upon joining
the WTO, China agreed to overhaul its legal regime
to ensure the protection of intellectual property rights in accordance with the
WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement). China has undertaken substantial efforts in this regard, as it has
revised or adopted a wide range of laws, regulations and other measures. While
some problems remain, China did a relatively good job of overhauling its legal
"However, China has been much less successful in ensuring
effective IPR protection, as IPR enforcement remains problematic. Indeed,
counterfeiting and piracy in China are at epidemic levels and cause serious
economic harm to U.S. businesses in virtually every sector of the economy. One
U.S. trade association reports that counterfeiting and piracy rates in China
remain among the highest in the world, exceeding 90 percent for virtually every
form of intellectual property."
The report goes on to discuss at length, at pages 62-71, problems with China's
IPR regime. It finds that China's laws and regulations are "generally in line with
international norms in most key areas", but with exceptions.
The report finds IPR enforcement by the Chinese
government is lacking. It states that "effective IPR enforcement has not been
achieved, and IPR infringement remains a serious problem throughout China. IPR
enforcement is hampered by lack of coordination among Chinese government
ministries and agencies, local protectionism and corruption, high thresholds for
criminal prosecution, lack of training and weak punishments." The report goes on
to detail weaknesses and deficiencies in the administrative, criminal and civil
Telecommunications. The just released third
annual report discussions telecommunications on pages 75-76.
It concludes that "China has not yet established a truly
independent regulator in the telecommunications sector. The current regulator,
MII, while nominally separate from the current telecommunications operators,
maintains extensive influence and control over their operations and continues to
use its regulatory authority to disadvantage foreign firms."
Much of the discussion here is a repeat from the second annual report
released last December.
Although, the latest report adds updates. For example, it states that "In
April 2003, new problems developed with MII’s issuance of the Catalogue of
Telecommunications Services. MII reclassified several telecommunications
services from the value-added category to the basic category, contrary to widely
accepted international practice. MII also placed restrictions on what new
services could be classified under the value-added category. These moves have
limited the ability of U.S. firms to access China's telecommunications market.
Under China's Services Schedule, basic services are on a slower liberalization
schedule, and MII subjects them to higher capitalization requirements. Indeed,
MII requires suppliers of basic services to satisfy an excessive registered
capital requirement of RMB 2 billion ($241.2 million). A review of capital
requirements around the world shows essentially no capital requirements in many
WTO member markets, including, for example, Argentina, Australia, Brazil, Chile,
the member States of the European Union, Japan and the United States."
The 2004 also states that "MII continues to process applications very
slowly for the few foreign-invested telecommunications enterprises that have attempted
to satisfy MII’s licensing requirements. For example, as China nears the end of its third
year of WTO membership, the United States is not aware of a single application for a
license to provide value-added services that has completed the MII licensing process."
The report adds that "In 2004, a draft of the long-awaited Telecommunications
Law began to circulate among Chinese ministries and agencies. The United States and
U.S. industry have urged China also to circulate the draft law for public comment. If
China takes the initiative, this law could be a vehicle for addressing existing market
access barriers and other problematic aspects of China’s current telecommunications
|Supreme Court Denies Cert in Copyright and
Reverse Passing Off Case
12/13. The Supreme Court denied certiorari,
without opinion, in Silverstein v.
Penguin Putnam, a compilation copyright and reverse passing off case. See,
Order List [6 pages in PDF] at page 5. This lets stand the
opinion [PDF] of the Second
Circuit, which reversed a summary judgment for the author of a compilation of
old poems. The case now goes back to the District Court for trial.
for Writ of Certiorari [40 pages in PDF] of Silverstein.
Background. Dorothy Parker was a poet, theater critic, book reviewer, and
screenplay writer who was active in New York City's literary scene in the 1920s and
1930s. She is best know for her cynical humor, such as her
quip about the Yale University
prom. She wrote for magazines, such as Vanity Fair,
The New Yorker, and Life. She also
collected and published three volumes of poetry,
Enough Rope (1926), Sunset Gun (1928), and Death and Taxes (1931).
The poems of these three collections have been continuously in
print, by Penquin, since 1944 in one volume,
The Portable Dorothy Parker [Amazon].
However, she did not collect and publish all of her poetry. Stuart Silverstein,
the plaintiff in this litigation, collected 122 of her poems that had not been published
in any of her three volumes of poetry. He also wrote footnotes. Scribner
published his compilation in one volume titled
Not Much Fun: The Lost Poems of Dorothy Parker [Amazon]. Amazon's reviewers praise
the book, and Silverstein's footnotes.
Scribner obtained some commercial success with its sale of
Not Much Fun. Then, Penquin published, without authorization from Silverstein or
Scribner, a book titled Dorothy Parker: Complete Poems, which cut and
pasted the poems that Silverstein had collected.
The Court of Appeals gave this description of Penquin's actions. "This
compilation re-published her three existing collections
and added at the end a section called ``Poems Uncollected by Parker.´´ The end
section contained 121 of the 122 poems printed in Silverstein's book, ordered
chronologically rather than in Silverstein’s more subjective arrangement.
However, Penguin concedes that the editor who prepared that section photocopied
Not Much Fun, cut the poems apart with scissors, and pasted them into the
Penguin manuscript chronologically. Complete Poems does not reference or
acknowledge Silverstein or Not Much Fun." (Footnote omitted.)
Neither of the parties to this litigation claim authorship of any of the
underlying poems. Parker wrote them. Moreover, none of the parties claim a
copyright interest in any of the poems. Silverstein claims a copyright interest
in his compilation.
District Court. Silverstein filed a complaint in
U.S. District Court (SDNY) against
Penguin Putnam alleging copyright infringement, violation of Section 43(a) of
the Lanham Act for reverse passing off, and violation of the laws of the state
of New York regarding immoral trade practices and unfair competition.
The District Court, Judge John Keenan presiding, granted Silvertein's motion
for summary judgment on the copyright infringement claim, and permanently enjoined
Penquin from selling its book, Dorothy Parker: Complete Poems. The District
Court held that Silverstein's compilation involved sufficient creativity to make it
an original work of authorship.
The District Court also granted Silverstein summary judgment on
his Lanham Act claim. It held that Penguin's failure to credit Silverstein
constituted a willful false designation of origin. The District Court also found
that Silverstein's state law claims were not preempted by federal copyright law,
and granted summary judgment for Silverstein. Penguin appealed.
Appeals Court. The Court of Appeals reversed and remanded.
It wrote that "compilations of fact may be copyrightable even though
facts themselves are not protected", citing the Supreme Court's 1991
in Feist Publications v. Rural Telephone Service Co., 499 U.S. 340.
However, the Appeals Court added, quoting from Feist, that "Because ``the
sine qua non of copyright is originality,´´ a compilation must possess ``at
least some minimal degree of creativity´´ to warrant copyright protection." It
reasoned that Silverstein was not entitled to summary judgment on the originality
issue. That is, it concluded that Parker wrote the entire set of her poetry,
Parker selected which poems to collect and published, and therefore, Parker
selected the set of unpublished poems. Silverstein did not compile collection;
Parker did. Hence, there is a triable issue of fact.
The Court's analysis faced several obstacles. For example,
Silverstein had to exercise judgment as to which works were in fact authored by
Parker, and then, which of these works, or parts thereof, constitute poetry, as opposed
to prose or some other genre. The Court went to great length to explain these inputs as
insignificant. The Appeals Court held that there are material issues in dispute,
and that summary judgment was therefore inappropriate. It vacated the
injunction, reversed the summary judgment and remanded to the District Court.
The Appeals Court opinion also reversed the District Court on
the Lanham Act and state claims, but without analysis independent of its
The case thus returns to the District Court on remand. Hypothetically,
Silverstein could still prevail, after further summary judgment motions, or
after trial, on any or all of his claims. However, the Appeals Court's opinion
diminishes the likelihood that he will prevail on the copyright issues.
Rabinowitz of the law firm of Neal Gerber &
Eisenberg represents Silverstein. He spoke with TLJ. He said that "it seemed
clear ... that the Feist minimal level of originality had clearly been
The Court of Appeals tried to impose a higher threshhold." He added, that "we
think that Judge Keenan will continue to see it that way."
Reverse Passing Off and Dastar v. Fox. On June 2, 2003, the Supreme
Court issued an its
[18 pages in PDF], in Dastar v. Fox, another Lanham Act reverse passing
off case. However, that opinion was issued after the District Court's opinion in
the present case. See also,
story titled "Supreme Court Reverses in Dastar v. Fox" in
TLJ Daily E-Mail
Alert No. 672, June 3, 2003.
Passing off occurs when a producer misrepresents his own goods or services as
someone else's. Reverse passing off occurs when a producer misrepresents someone
else's goods or services as his own. Both can be actionable under the Lanham
Act, which makes actionable not only the misleading use of marks, but also the
false designation of origin of goods.
Section 43(a) of the Lanham Act, which is codified at
15 U.S.C. § 1125(a),
provides, in part, that "Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or misleading
representation of fact, which -- (A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person, or (B) in
commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person's goods,
services, or commercial activities, shall be liable in a civil action by any
person who believes that he or she is or is likely to be damaged by such act."
Justice Scalia, writing for the Supreme Court, expressed skepticism about
using one form of intellectual property protection to protect another. He wrote
that §43(a) "prohibits actions like trademark infringement that deceive
consumers and impair a producer's goodwill", but "The words of the Lanham Act
should not be stretched to cover matters that are typically of no consequence to
Moreover, while the Dastar case involved movies and video, Scalia wrote that
the analysis should be the same for any "communicative product", including a
Silverstein has argued that the Dastar case is distinguishable.
This case is Stuart Silverstein v. Penguin Putnam, Inc.,
Sup. Ct. No. 04-618, on petition for writ of certiorari to the U.S. Court of
Appeals for the 2nd Circuit. The Appeals Court case is No.
03-7363, Judges Dennis Jacobs, Ralph Winter, and Chester
Straub presiding. The U.S. District Court for the Southern District of
New York case is No. 01 Civ. 309, Judge Keenan presiding.
|Federal Circuit Rules in Blackberry Patent
12/14. The U.S. Court of Appeals (FedCir)
issued its opinion
[60 pages in PDF] in NTP v. Research in Motion, a patent infringement case
involving RIM's Blackberrys. NTP prevailed below, obtaining a $53 Million
judgment. The Court of Appeals affirmed in part, vacated in part, and remanded.
Research In Motion (RIM) makes Blackberrys. NTP holds U.S.
Patents Nos. 5,436,960, 5,625,670, 5,819,172, 6,067,451, and 6,317,592, which
pertain to technology for integrating existing e-mail systems with radio
frequency (RF) wireless communication networks, to enable mobile users to
receive e-mail over a wireless network.
NTP filed a complaint in
U.S. District Court (EDVa) against RIM alleging infringement of its patents
in suit. The District Court entered judgment of infringement for NTP, awarded
damages to NTP of $53,704,322.69, and enjoined RIM from further infringement.
RIM brought this appeal.
The Court of Appeals held that the District Court erred in construing the
claim term "originating processor", but did not err in construing any of the
other claim terms on appeal. The Court of Appeals also affirmed the District
Court's finding of infringement.
This case is NTP, Inc. v. Research in Motion, Ltd., App. Ct. No.
03-1615 , an appeal from the U.S. District Court for the Eastern District of Virginia,
Judge James Spencer presiding, D.C. No. 3:01CV767. Judge Linn wrote the opinion of the
Court of Appeals, in which Judges Schall and Michel joined.
|Washington Tech Calendar
New items are highlighted in red.
|Wednesday, December 15
The House will next meet on January 4, 2004 at 12:00 NOON. See,
Republican Whip Notice.
The Senate will next meet on January 4, 2005 at 12:00 NOON.
The Supreme Court will next
meet on Monday, January 10, 2005. See,
List [9 pages in PDF] at page 9.
9:30 AM. The Federal Communications
Commission (FCC) will hold a meeting. The event will be webcast. See,
agenda [PDF]. Location:
FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).
Day one of a two day workshop hosted by the
Federal Trade Commission (FTC) titled "Peer
to Peer File-Sharing Technology: Consumer Protection and Competition Issues".
November 15 is the deadline to submit comments and requests to participate. See, FTC
notice [13 pages in
PDF] to be published in the Federal Register. Location:
FTC Satellite Building, 601 New Jersey Ave., NW.
12:00 PM. The Cato
Institute will host an panel discussion titled "Reflections of a Free-Trade
Democrat". The speakers will by
Rep. Cal Dooley (D-CA), I.M. Destler (author of
American Trade Politics), and Daniel Griswold (Cato). Lunch will be served
after the program. See,
notice and registration page. Location: Cato, 1000 Massachusetts Ave., NW.
2:00 - 4:00 PM. The WRC-07 Advisory Committee's Informal Working Group
3: IMT-2000 and 2.5 GHz Sharing Issues will meet. See, FCC
notice [PDF]. Location: FCC, 445 12th Street, SW, Room 7-B516
(7th Floor South Conference Room).
3:30 - 4:30 PM. The New
America Foundation (NAF) will host a panel discussion titled "How Will We
Pay For The Digital Future of Public Broadcasting". The speakers will be Jim
Barksdale (former CEO of Netscape), Reed Hundt (McKinsey and Co. and former FCC Chairman),
Kathleen Cox (President of the Corporation for Public Broadcasting), Pat Mitchell
(President of PBS), John Lawson (P/CEO of the Association of Public Television Stations),
and Michael Calabrese (NAF). RSVP to Jennifer Buntman at
or 202 986-4901. See,
Location: American Enterprise Institute (AEI), 12th Floor, 1150
17th Street, NW.
6:00 - 8:00 PM. The Federal
Communications Bar Association (FCBA) will host a continuing legal education (CLE)
seminar titled "New Frontiers in Digital Video: Recent Developments in Copyright
Law and The FCC’s Role in Content Protection". The speakers will be Fritz
Attaway (Motion Picture Association of America),
Sarah Deutsch (Verizon Communications), Gigi Sohn
(Public Knowledge) and James Burger (Dow
Lohnes & Albertson), and Rick Chessen (FCC). To register, contact Ann Henson or Heidi
Kurtz at 202-293-4000. Prices range from $50 to $125. Location:
Dow Lohnes & Albertson, 8th Floor, 1200 New
Hampshire Ave., NW.
|Thursday, December 16
11:00 AM. The Federal Communications Bar
Association's (FCBA) Legislation Committee will host an event. The speaker will
be Gregg Rothschild (Democratic Counsel, House Commerce Committee). He will
speak on legislative issues. RSVP to Helene Marshall at
Wiley Rein & Fielding, 1776 K St., NW.
12:00 NOON - 1:30 PM. The DC
Bar Association's Intellectual Property Law Section and Legislative Committee will
host a program titled "Update On Justice Department Enforcement Of Intellectual
Property Laws". The speakers will be
Daniel Bryant (Assistant Attorney General
in charge of the DOJ's Office of Legal Policy, and Vice-Chair of the DOJ's Intellectual
Property Task Force) and Barbara Berschler. See,
Prices vary from $15 to $30. For more information, call 202 626-3463. Location: D.C.
Bar Conference Center, B-1 Level, 1250 H St., NW.
1:30 - 4:30 PM. The Executive Office of the
President's (OEP) Office of Science and
Technology Policy's (OSTP)
National Science and
Technology Council's (NSTC) Committee on Technology, Committee on Homeland
and National Security's Infrastructure Subcommittee will hold a meeting that
is closed to the public. For more information, contact John Hoyt at
email@example.com or 202 772-9959.
Location: White House Conference Center (Truman Room).
Day two of a two day workshop hosted by the
Federal Trade Commission (FTC) titled "Peer
to Peer File-Sharing Technology: Consumer Protection and Competition Issues".
See, FTC release and
notice [13 pages in
PDF] to be published in the Federal Register. Location: FTC Satellite Building, 601
New Jersey Ave., NW.
|Friday, December 17
9:30 AM - 12:00 NOON. The U.S. China
Policy Foundation will host an event titled "Prospects for U.S.-China
Relations in Bush Administration". For more information, contact Chi Wang at
202 547-8615. Location: Murrow Room, National Press
Club, 529 14th St. NW, 13th Floor.
12:00 NOON. Deadline to submit comments to
the Office of the U.S. Trade Representative
(USTR) regarding various trade related telecommunications issues. The
USTR seeks comments on "Whether any WTO member is acting in a manner that is
inconsistent with its commitments under the WTO Basic Telecommunications
Agreement or with other WTO obligations", "Whether Canada or Mexico has failed
to comply with their telecommunications commitments or obligations under
NAFTA", "Whether Chile or Singapore or any other FTA partner with an Agreement
that comes into force on or before January 1, 2005 has failed to comply with
their telecommunications commitments or obligations under the respective FTAs",
"Whether other countries have failed to comply with their commitments under
additional telecommunications agreements", and "Whether there remain
outstanding issues from previous Section 1377 reviews". See, notice in the
Federal Register, Vol. 69, No. 226, Wednesday, November 24, 2004, at Page
|Tuesday, December 21
12:00 NOON. The Federal
Communications Bar Association's (FCBA) Executive Committee will meet.
Location: Wiley Rein & Fielding, 1776 K
Extended deadline to submit reply comments to the
Federal Communications Commission (FCC) in response to
its Notice of
Proposed Rulemaking and Declaratory Ruling (NPRM & DR) [100 pages in PDF] regarding
Assistance for Law Enforcement Act (CALEA) obligations upon broadband internet
access services and voice over internet protocol (VOIP). This NPRM is FCC 04-187 in ET
Docket No. 04-295. The FCC adopted this NPRM at its August 4, 2004 meeting, and released it
on August 9. See, story
titled "Summary of the FCC's CALEA NPRM" in
TLJ Daily E-Mail Alert No. 960,
August 17, 2004. See,
notice in the Federal Register, September 23, 2004, Vol. 69, No. 184, Pages
56976 - 56987. See also,
notice of extension [PDF].
|About Tech Law Journal
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