|Supreme Court Denies Cert In Steinbeck v. Penguin
5/18. The Supreme Court denied
certiorari in Steinbeck v. Penguin, a copyright case involving the
termination right provided for by
17 U.S.C. §> 304(d). See,
List [15 pages in PDF] at page 12, and Supreme Court
This lets stand the August 13, 2008,
[22 pages in PDF] of the
U.S. Court of Appeals
(2ndCir), which reversed the judgment of the District Court, which granted
summary judgment to two of author John Steinbeck's descendants.
John Steinbeck, author of Grapes of Wrath, Of Mice and Men, and
other classics, granted copyright licenses to Viking (predecessor of Penguin) in
1938 and 1939. The District Court held valid a section 304 notice of termination
executed by certain descendents in 2004.
The Court of Appeals reversed. It wrote that "We
consider on appeal whether an agreement entered into in 1994 between Steinbeck's
widow and the publisher terminated and superseded the 1938 agreement, and, if
so, whether the termination notice is therefore ineffective. Because the
termination right provided by section 304(d) pursuant to which the 2004
termination notice was issued applies only to pre-1978 grants of transfers or
licenses of copyright, and because the 1994 agreement left intact no pre-1978
grant for the works in question, we conclude that the 2004 notice of termination
is ineffective. The 1994 agreement remains in effect."
The descendants filed a petition for writ of
certiorari with the Supreme Court, which has now declined to hear the case.
This case is Thomas Steinbeck, et al. v. Penguin Group (USA) Inc., et al.,
Supreme Court of the U.S., Sup. Ct. No.
08-1039, a petition for writ of
certiorari to the U.S. Court of Appeals for the 2nd Circuit, App. Ct. Nos. 06-3226 and 06-3696.
|Supreme Court Denies Cert in Stored Communications Act and
Wiretap Act Case
5/18. The Supreme Court
denied certiorari Bansal v. Microsoft Hotmail, a case regarding
government seizure of e-mail from e-mail service provider Microsoft. See,
List [15 pages in PDF] at page 13, and Supreme Court
This lets stand the March 7, 2008
opinion [3 pages
in PDF], of the U.S. Court of
Appeals (3rdCir). The Court of Appeals designated this short opinion as per curiam and non-precedential.
Bansal proceeded pros se in the District Court, Court of Appeals, and Supreme
Akhil Bansal was previously criminally prosecuted for the illegal sale over the
internet of pharmaceutical products. The Court of Appeals wrote that the federal
"government issued several subpoenas and warrants to
Microsoft Hotmail, ordering it to divulge emails and furnish information
regarding Bansal’s account. Microsoft Hotmail complied pursuant to these court
Bansal filed a pro se civil complaint (without representation by an attorney)
against Microsoft in the U.S. District
Court (EDPenn) alleging violation of the Stored Communications Act SCA), the
federal wiretap act, and the state of Pennsylvania's wiretap act, in connection
with the federal government's seizure of his e-mail messages from Microsoft.
The District Court dismissed his complaint. He appealed to the Court of
Appeals. It affirmed.
It held that his SCA claim fails for two reasons. First, it held that the SCA
exempts "searches of stored electronic communications
by the party providing the communications service". Second, "the SCA
exempts all parties acting pursuant to a court order
The Court of Appeals also held that the federal
wiretap act claim fails because the act exempts providers of electronic
communication services from liability if they have disclosed information
pursuant to a court order.
Bansal then filed a petition for writ of certiorari with the Supreme Court. On May 18,
the Supreme Court denied this petition.
Statutes. The SCA and wiretap act both bar
certain conduct. Both also provide private rights of action for violations. Both
also provide exemptions for service providers acting pursuant to court order.
The SCA is codified at
18 U.S.C. §§ 2701-2712.
18 U.S.C. § 2701 provides at subsection (a) that "whoever ... intentionally accesses
without authorization a facility through which an electronic communication service is
provided ... and thereby obtains, alters, or prevents authorized access
to a wire or electronic communication while it is in electronic storage in such
system shall be punished ..."
18 U.S.C. § 2707 creates private right of action.
But, subsection 2701(c) then provides that subsection 2701(a) "does not apply
with respect to conduct authorized ... by the person or entity providing a wire or
electronic communications service ..." Also, subsection 2707(e) provides that
"A good faith reliance on ... a court warrant or order, a grand jury
subpoena, a legislative authorization, or a statutory authorization ...
is a complete defense to any civil or criminal action ..."
The federal wiretap act is codified at
18 U.S.C. §§ 2510-2522.
18 U.S.C. § 2511 provides, in part, that "any person who ... intentionally
intercepts, endeavors to intercept, or procures any other person to intercept or
endeavor to intercept, any wire, oral, or electronic communication ... shall be
punished". (E-mail is an "electronic communication.)
It also provides that "any person who ... intentionally uses, or endeavors to
use, the contents of any wire, oral, or electronic communication, knowing or
having reason to know that the information was obtained through the interception
of a wire, oral, or electronic communication in violation of this subsection ...
shall be punished".
18 U.S.C. § 2520 creates a private right of action.
But, subsection 2511(a)(2)(ii), the provision relied upon by the Court of
Appeals, then provides that "Notwithstanding any other
law, providers of wire or electronic communication service, their officers,
employees, and agents, landlords, custodians, or other persons, are authorized
to provide information, facilities, or technical assistance to persons
authorized by law to intercept wire, oral, or electronic communications or to
conduct electronic surveillance, as defined in section 101 of the Foreign
Intelligence Surveillance Act of 1978, if such provider, its officers,
employees, or agents, landlord, custodian, or other specified person, has been
provided with ... a court order directing such
assistance signed by the authorizing judge".
This case is Akhil Bansal v. Microsoft Hotmail, Supreme Court of
the U.S., Sup. Ct. No. 08-9243, a petition for writ of certiorari to the U.S.
Court of Appeals for the 3rd Circuit, App. Ct. No. 07-4515. The three judge
panel of the Court of Appeals was comprised of Judges Ambro, Jordan, and
Fuentes. The Court of Appeals heard an appeal from the U.S. District Court for the Eastern District of Pennsylvania,
D.C. No. 06-cv-04029, Judge Norma Shapiro presiding. Chief Justice John Roberts took no part in the consideration or decision of this petition.
|More Supreme Court News
5.18. The Supreme Court issued its
AT&T v. Hulteen, a case regarding Title VII, calculation of retirement
benefits, and pregnancy leave, at AT&T This case is Hulteen v. AT&T, Supreme
Court of the U.S., Sup. Ct. No. 07-543, a petition for writ of certiorari to the U.S.
Court of Appeals for the 9th Circuit.
5/18. The Supreme Court issued
Orders List [15 pages in PDF].
|Federal Circuit Holds No Jurisdiction Over
UK Holder of US Patent
5/18. The U.S. Court of Appeals
(FedCir) issued its divided
pages in PDF] in Autogenomics v. Oxford Gene Technology, a case
regarding personal jurisdiction in patent cases.
Oxford is the holder of
Patent No. 6,054,270 titled "Analying
polynucleotide sequences". Oxford is a
UK company without any offices, facilities, employees or agents in California.
However, the opinion of the Court of Appeals recites numerous other contacts
between Oxford and the U.S. Oxford has entered into licensing agreements with
California companies. It sent representatives to California to negotiate a
license with Autogenomics. Oxford either did or did not enter into a joint
venture with a California company, Agilent. The parties dispute the nature of
the relationship, and the District Court denied jurisdictional discovery. Oxford
representatives attended and presented at trade shows in California.
Autogenomics filed a complaint in the U.S.
District Court (CDCal) seeking a
declaratory judgment that certain claims of the Oxford patent are invalid and
unenforceable, and that Autogenomics did not infringe them. The District Court
dismissed the complaint for lack of personal jurisdiction.
Autogenomics brought the present appeal. The Court of Appeals affirmed in a
divided opinion. It held that there is neither general nor specific jurisdiction.
Judge Pauline Newman
dissented. She wrote that "The Federal Circuit again
restricts United States parties from access to our courts when a United States
patent is owned by a foreign entity. The court rules that the foreign patent
owner is not subject to suit in California despite its commercial presence in
California including the grant of at least ten patent licenses to companies in
California; despite a manufacturing venture of the patent owner with a
California-based company to produce and sell microarrays designed by the patent
owner; despite participation by the patent owner with respect to the patented
technology in trade shows and scientific meetings in California; and despite the
patent owner’s threats of infringement against Autogenomics, a California
company whose accused activities are conducted in California. On the entirety of
these contacts, jurisdiction of this declaratory judgment action was proper in
the Central District of California."
This case is Autogenomics, Inc. v. Oxford Gene Technology, Inc., U.S. Court
of Appeals for the Federal Circuit, App. Ct. No. 2008-1217, an appeal from the
U.S. District Court for the Central District of California, D.C. No. SACV
Kimberly Moore wrote the opinion of the Court of Appeals, in which
Judge Robert Gentleman (USDC/NDIll) joined. Judge Newman dissented.
This issue contains the following items:
• Supreme Court Denies Cert In Steinbeck v. Penguin
• Supreme Court Denies Cert in Stored Communications Act and Wiretap Act Case
• Federal Circuit Holds No Jurisdiction Over UK Holder of US Patent
|Washington Tech Calendar
New items are highlighted in red.
|Wednesday, May 20
The House will meet at 10:00 AM for legislative
business. The agenda the day includes a vote on HR 1676
the "Prevent All Cigarette Trafficking Act of
2009" or "PACT Act". See, Rep. Hoyer's
for week of May 18, and
schedule for May 20.
The Senate will meet at 9:30 AM. It will resume consideration of HR 2346
the supplemental appropriations bill.
9:15 AM. Solicitor General Elena Kagan will give a speech at an event hosted by Georgetown
University's (GU) law school titled "Striking the Balance: Fair and Independent Courts in a New Era".
Location: GU, Hart Auditorium, McDonough Hall, 600 New Jersey Ave. NW.
9:30 AM. The Senate Homeland Security and Government
Affairs Committee (SHSGAC) will meet to consider several pending nominations,
including Cass Sunstein (to be head of the OMB's Office of Information
and Regulatory Affairs) and David Heyman (to be Assistant Secretary at the
notice [PDF]. Location: Room 342, Dirksen Building.
10:00 AM. The
House Judiciary Committee (HJC) will hold a hearing on the Federal
Bureau of Investigation (FBI). The HJC will webcast this event. See,
Location: Room 2141, Rayburn Building.
10:00 AM. The Securities and Exchange
Commission (SEC) will hold a meeting to consider changes to the federal
proxy rules to facilitate director nominations by shareholders. See,
Location: SEC, Auditorium (Room L-002).
12:00 NOON - 2:00 PM. The DC Bar
Association will host a brown bag lunch titled "Standards & Patents:
Living with Contradictions". The speaker will be
Donald Purcell. He will
discuss the DC Circuit's April 22, 2008,
opinion [24 pages in PDF] in Rambus. v. FTC, 522 F.3d 456, the
Federal Circuit's December 1, 2008,
pages in PDF] in Qualcomm v. Broadcom, 548 F.3d 1004, and the 3rd
Circuit's September 4, 2007,
pages in PDF] in Broadcom v. Qualcomm, 501 F.3d 297. See also, story
titled "Supreme Court Denies Cert in Rambus Case" in
TLJ Daily Alert
No. 1,903, February 24, 2009;
titled "Court of Appeals Rules in Rambus v. FTC" in
TLJ Daily E-Mail
Alert No. 1,752, April 23, 2008; story titled "Federal Circuit Affirms in
Qualcomm v. Broadcom" in
TLJ Daily E-Mail
Alert No. 1,865, December 2, 2008; and
titled "3rd Circuit Rules that Deception of SDO Can Give Rise to Claims for
Violation of Sherman Act" in
TLJ Daily E-Mail
Alert No. 1,635, September 7, 2007. The price to attend ranges from $10 to
notice. The DC Bar Association has a history of excluding persons from its
events. For more information, call 202-626-3463. Location: D.C. Bar Conference
Center, B-1 Level, 1250 H St., NW.
1:00 PM. The President's Economic Recovery Advisory Board will hold its
first meeting. See,
notice in the Federal Register, May 5, 2009, Vol. 74, No. 85, at Pages
20779-20780. Location: White House, 1600 Pennsylvania Ave., NW.
2:00 PM. The House Appropriations Committee's
(HAC) Subcommittee on Financial Services will hold a hearing on appropriations
for the Office of Management and
Budget (OMB). The HAC will webcast this event. Location: Room 2359,
TIME? The U.S.-China Economic and
Security Review Commission will hold a meeting titled "China in Asia,
with particular focus on Pakistan, and the former Soviet Republics in Asia:
Economic and security issues and implications for the United States".
Location: Room __, Dirksen Building, Capitol Hill.
6:00 - 8:15 PM. The Federal Communications
Bar Association (FCBA) will host an event titled "Hot Topics in FCC
Enforcement". The first panel is titled "Current FCC Enforcement Topics:
Indecency, Payola, the Omnibus CPNI NAL and Other Substantive FCC Enforcement
Initiatives". The speakers will be Tom Davidson (Akin Gump), John Fiorini
(Wiley Rein), and Jon Frankel (Bingham McCutchen). The second panel is titled
"Important FCC Enforcement Procedural Issues for Practitioners: Consent Decree
Negotiations, Tolling Agreements, Escrow Agreements, and Statute of
Limitations Issues and Interpretations". The speakers will be Kathryn Berthot
(Chief of the FCC's Enforcement Bureau's Spectrum Enforcement Division), Mace
Rosenstein (Covington & Burling), and Irene Flannery (FCC's EB's
Investigations and Hearings Division). The price to attend ranges from $25 to
$150. Location: Bingham McCutchen, 2020 K St., NW.
Extended target date in the U.S. International Trade Commission's (USITC)
Section 337 proceeding titled "In the Matter of Certain Semiconductor Chips
With Minimized Chip Package Size and Products Containing Same" and numbered
notice in the Federal Register, April 1, 2009, Vol. 74, No. 61, at Pages
Deadline to submit certain initial comments to the Federal Communications
Commission (FCC) in response to its supplemental
Notice of Inquiry [22 pages in PDF] regarding its preparation of a
video competition report for the years ending June 30, 2007, June 30,
2008, and June 20, 2009. This deadline pertains to comments regarding 2007 and
2008. See, notice
in the Federal Register, April 27, 2009, Vol. 74, No. 79, at Pages
19085-19091. See also, story titled "FCC Resumes Its Statutory Obligation to
Study Video Competition" in
TLJ Daily E-Mail
Alert No. 1,886, January 21, 2009, and story titled "FCC Releases Amended
NOI on Annual Video Competition Reports" in TLJ Daily E-Mail Alert No. 1924,
April 11, 2009.
|Thursday, May 21
The House will meet at 10:00 AM for legislative business. See, Rep. Hoyer's
for week of May 18.
8:00 AM. The Federal Aviation Administration's (FAA) Commercial Space
Transportation Advisory Committee will meet. See,
notice in the
Federal Register, April 13, 2009, Vol. 74, No. 69, at Page 16914. Location:
FAA Headquarters Building, Bessie Coleman Conference Center, 2nd floor, 800
Independence Ave., SW.
9:00 - 10:30 AM. The Information Technology
and Innovation Foundation (ITIF) will host a panel discussion titled "Fiber
to the Library: Next Generation Broadband for Next Generation Libraries".
The speakers will be Rob Atkinson (ITIF), Don Means (Digital Village
Associates), and John Windhausen (Telepoloy). Location: ITIF, Suite 200, 1250
Eye St., NW.
10:00 AM. The
Senate Judiciary Committee (SJC) may hold an executive business meeting.
The agenda again includes consideration of S 417
the "States Secret Protection Act", and HR 985
and S 448 [LOC
both titled the "Free Flow of Information Act of 2009". See, stories
titled "Senate Judiciary Committee to Consider State Secrets Bill" and "9th
Circuit Rules in State Secrets Case" in TLJ Daily E-Mail Alert No. 1,933,
April 29, 2009. The agenda also includes consideration of the nominations of
David Hamilton to be a Judge of the U.S. Court of Appeals (6thCir), Andre
Davis to be a Judge of the U.S. Court of Appeals (4thCir), and Thomas Perez to
be Assistant Attorney General in charge of the Civil Rights Division. The SJC
rarely follows its published agendas. The SJC will webcast this event. See,
Location: Room 226, Dirksen Building.
10:00 AM. The
Senate Finance Committee (SFC) will hold a hearing titled "The U.S. -
Panama Trade Promotion Agreement". See,
Location: Room 215, Dirksen Building.
2:30 PM. The Federal Trade Commission's
(FTC) Bureau of Economics (BOE) will host a seminar by
Chris Knittel (UC
Davis). He is an economist, and co-author of the
pages in PDF] titled "Estimation of Random Coefficient Demand Models:
Challenges, Difficulties and Warnings". Location: FTC Conference Center,
601 New Jersey Ave., NW.
|Friday, May 22
The House will meet at 9:00 AM for legislative business. See, Rep. Hoyer's
for week of May 18.
|Monday, May 25
Memorial Day. See, Office of Personnel Management's (OPM)
of 2009 federal holidays.
The House will not meet the week of May 25-29.
The Senate will not meet the week of May 25-29. See, Senate
|Tuesday, May 26
9:00 AM - 3:45 PM. The
American Enterprise Institute (AEI) will
host an event titled "China Since Tiananmen: Power, Party, and Society".
There will be five panels, including one on competition, and another on the
economy. See, notice. Location:
AEI, 12th floor, 1150 17th St., NW.
2:00 - 3:30 PM. The Department of Justice's (DOJ)
Antitrust Division will host a seminar
conducted by Stefan Buehler (University of St. Gallen) on his
titled "Making Sense of Non-Binding Retail-Price Recommendations". To
request permission to attend, contact Patrick Greenlee at 202-307-3745 or atr
dot eag at usdoj dot gov. Location: Bicentennial Building, 600 E St., NW.
Deadline to submit initial comments to the Copyright Royalty Judges (CRJ)
in response to its Notice of Inquiry (NOI) regarding "the costs of census
versus sample reporting to assist the Judges in the revision of the interim
regulations for filing notices of use and the delivery of records of use of
sound recordings under two statutory licenses of the Copyright Act". See,
notice in the
Federal Register, April 8, 2009, Vol. 74, No. 66, at Pages 15901-15904. See
also, the CRJ's
notice in the Federal Register regarding its Notice of Proposed Rulemaking
(NPRM), Federal Register, December 30, 2008, Vol. 73, No. 250, at Pages
79727-79734, and the CRJ's
web page with
hyperlinks to the comments submitted in response to the NPRM.
|About Tech Law
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For information about subscriptions, see
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Copyright 1998-2009 David Carney. All rights reserved.