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December 15, 2004, 9:00 AM ET, Alert No. 1,038.
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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 Compliance".

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 story 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 regime."

"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 enforcement regimes.

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 regime."

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.

See also, Petition 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 opinion 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 copyright analysis.

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.

Mark 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 met."

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 opinion [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 purchasers."

Moreover, while the Dastar case involved movies and video, Scalia wrote that the analysis should be the same for any "communicative product", including a book.

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 Infringement Case

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, Order 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 release and 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, notice. 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 Location: 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, notice. 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 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 68439.

Tuesday, December 21

12:00 NOON. The Federal Communications Bar Association's (FCBA) Executive Committee will meet. Location: Wiley Rein & Fielding, 1776 K St., NW.

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 imposing Communications 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].

Thursday, December 23

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division regarding the FIPS 201 and SP 800-73 public drafts. See, document [91 pages in PDF] titled "Federal Information Processing Standard 201 (FIPS 201), Personal Identity Verification for Federal Employees and Contractors", and document [99 pages in PDF] titled "Special Publication 800-73 (SP 800-73), Integrated Circuit Card for Personal Identity Verification". Submit comments to

Friday, December 24

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays.

People and Appointments

12/13. President Bush announced his intent to nominate Mike Leavitt to be Secretary of Health and Human Services. He is currently Administrator of the Environmental Protection Agency (EPA). See, White House release and transcript of White House event.

12/14. Wendy Wysong was named Deputy Assistant Secretary of Commerce for Export Enforcement in the Department of Commerce's (DOC) Bureau of Industry and Security (BIS). See, release.

12/14. David Sanders was named Chairman of the Board of Directors of the Information Technology Association of America (ITAA), and Henry Steininger was named Vice Chairman. Sanders is a VP of Perot Systems. He replaces Roy Haggerty, P/CEO, of Ajilon. Steininger is Managing Partner of Grant Thornton.

More News

12/14. The Federal Communications Commission (FCC) issued a Public Notice [PDF] that states that the FCC has rechartered its Consumer Advisory Committee (CAC), and that the deadline to submit applications and nominations for membership on the CAC is January 31, 2005. This item is DA 04-3892.

12/14. The Federal Communications Commission's (FCC) Advisory Committee on Diversity for Communications in the Digital Age adopted some recommendations. See, FCC release [PDF].

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