which the responding party reasonably believes to contain protected information shall be prominently stamped or marked with the appropriate designation from paragraph one. Any inadvertent disclosure without appropriate designation shall be remedied as soon as the disclosing party learns of its error, by informing all adverse parties, in writing, of the error. The parties should inform the Board only if necessary because of the filing of protected information not in accordance with the provisions of paragraph 12.
7) Production of documents
If a party responds to requests for production under Federal Rule 34 by making copies and forwarding the copies to the inquiring party, then the copies shall be prominently stamped or marked, as necessary, with the appropriate designation from paragraph one. If the responding party makes documents available for inspection and copying by the inquiring party, all documents shall be considered protected during the course of inspection. After the inquiring party informs the responding party what documents are to be copied, the responding party will be responsible for prominently stamping or marking the copies with the appropriate designation from paragraph one. Any inadvertent disclosure without appropriate designation shall be remedied as soon as the disclosing party learns of its error, by informing all adverse parties, in writing, of the error. The parties should inform the Board only if necessary because of the filing of protected information not in accordance with the provisions of paragraph 12.
8) Depositions
Protected documents produced during a discovery deposition, or offered into evidence during a testimony deposition shall be orally noted as such by the producing or offering party at the outset of any discussion of the document or information contained in the document. In addition, the documents must be prominently stamped or marked with the appropriate designation.
During discussion of any non-documentary protected information, the interested party shall make oral note of the protected nature of the information.
The transcript of any deposition and all exhibits or attachments shall be considered protected for 30 days following the date of service of the transcript by the party that took the deposition. During that 30-day period, either party may designate the portions of the transcript, and any specific exhibits or attachments, that are to be treated as protected, by electing the appropriate designation from paragraph one. Appropriate stampings or markings should be made during this time. If no such designations are made, then the entire transcript and exhibits will be considered unprotected.
9) Filing notices of reliance
When a party or its attorney files a notice of reliance during the party's testimony period, the party or attorney is bound to honor designations made by the adverse party or attorney, or non-party witness, who disclosed the information, so as to maintain the protected status of the information.
10) Briefs
When filing briefs, memoranda, or declarations in support of a motion, or briefs at final hearing, the portions of these filings that discuss protected information, whether information of the filing party, or any adverse party, or any non-party witness, should be redacted. The rule of reasonableness for redaction is discussed in paragraph 12 of this order.
11) Handling of protected information
Disclosure of information protected under the terms of this order is intended only to facilitate the prosecution or defense of this case. The recipient of any protected information disclosed in accordance with the terms of this order is obligated to maintain the confidentiality of the information and shall exercise reasonable care in handling, storing, using or disseminating the information.
12) Redaction; filing material with the Board
When a party or attorney must file protected information with the Board, or a brief that discusses such information, the protected information or portion of the brief discussing the same should be redacted from the remainder. A rule of reasonableness should dictate how redaction is effected.
Redaction can entail merely covering a portion of a page of material when it is copied in anticipation of filing but can also entail the more extreme measure of simply filing the entire page under seal as one that contains primarily confidential material. If only a sentence or short paragraph of a page of material is confidential, covering that material when the page is copied would be appropriate. In contrast, if most of the material on the page is confidential, then filing the entire page under seal would be more reasonable, even if some small quantity of non-confidential material is then withheld from the public record. Likewise, when a multi-page document is in issue, reasonableness would dictate that redaction of the portions or pages containing confidential material be effected when only some small number of pages contain such material. In contrast, if almost every page of the document contains some confidential material, it may be more reasonable to simply submit the entire document under seal. Occasions when a whole document or brief must be submitted under seal should be very rare.
Protected information, and relevant portions of pleadings, briefs or memoranda that reproduce, discuss or paraphrase such information, shall be filed with the Board under seal. The envelopes or containers shall be prominently stamped or marked with a legend in substantially the following form:
CONFIDENTIAL
This envelope contains documents or information that are subject to a protective order or agreement. The confidentiality of the material is to be maintained and the envelope is not to be opened, or the contents revealed to any individual, except by order of the Board.
13) Acceptance of information; inadvertent disclosure
Acceptance by a party or its attorney of information disclosed under designation as protected shall not constitute an admission that the information is, in fact, entitled to protection. Inadvertent disclosure of information which the disclosing party intended to designate as protected shall not constitute waiver of any right to claim the information as protected upon discovery of the error.
14) Challenges to designations of information as protected
If the parties or their attorneys disagree as to whether certain information should be protected, they are obligated to negotiate in good faith regarding the designation by the disclosing party. If the parties are unable to resolve their differences, the party challenging the designation may make a motion before the Board seeking a determination of the status of the information.
A challenge to the designation of information as protected must be made substantially contemporaneous with the designation, or as soon as practicable after the basis for challenge is known. When a challenge is made long after a designation of information as protected, the challenging party will be expected to show why it could not have made the challenge at an earlier time.
The party designating information as protected will, when its designation is timely challenged, bear the ultimate burden of proving that the information should be protected.
15) Board's jurisdiction; handling of materials after judgment
The Board's jurisdiction over the parties and their attorneys ends with the entry of a final judgment, unless jurisdiction is restored by grant of a post-judgment motion or as the result of an appellate proceeding. After entry of judgment, the parties' handling of protected information and materials is governed only by any agreements to which the parties may agree.
16) Other rights of the parties and attorneys
This order shall not preclude the parties or their attorneys from making any applicable claims of privilege during discovery or at trial. Nor shall the order preclude the filing of any motion with the Board for relief from a particular provision of this order or for additional protections not provided by this order.
By Agreement of the Following, effective ________________. [insert signature date]
________________________ ______________________
[print or type name and title [print or type name and title
of individual signing for of individual signing for
plaintiff] defendant]
_______________________ _______________________
[print or type name and law [print or type name and law
firm of attorney for firm of attorney for
plaintiff] defendant]
By Order of the Board, effective ____________________
_____________________________ .
[print or type name and title of Board attorney
or judge imposing order]
1 There may be a remedy at court for any breach of contract that occurs after the conclusion of this Board proceeding. See Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ 2d 1552, 1555 (TTAB 1987). See also, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698
(9th Cir. 1991).
----------------------------------------------
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
TRADEMARK TRIAL AND APPEAL BOARD
ACKNOWLEDGMENT OF AGREEMENT OR ORDER PROTECTING CONFIDENTIALITY OF INFORMATION REVEALED DURING BOARD PROCEEDING
I, ______________________________________________ [print name], declare that I have been provided with a copy of the Agreement or Order regarding the disclosure of, and protection of, certain types of information and documents during and after the above-captioned opposition or cancellation proceeding before the Trademark Trial and Appeal Board.
I have read the Agreement or Order and understand its terms and provisions, by which I agree to be bound. Specifically, I agree to hold in confidence any information or documents disclosed to me in conjunction with any part I take in this proceeding.
I declare under the penalty of perjury that these statements are true and correct.
___________________________________
[signature]
___________________________________
[print title, if applicable]
___________________________________
[date]
In the balance (TM): pending controversies
Copyright: Napster and MP3 copying on the Internet
Is a consumer's copying music over the Internet lawful, as is copying television programs on videotape, or infringing, as the Recording Industry Association of America asserts in its suit against Napster.
The Supreme Court, in the Betamax case, found a sufficient percentage of consumer videotaping of television broadcasts was to watch the program at a later time (timeshifting) rather than to make a permanent copy of the broadcast, and held such consumer behavior not a copyright infringement. Sony Corp. of America v Universal City Studios, 220 USPQ 665 (US 1984).
Napster links volunteering individuals who have MP3 (music format) files on their computers with other individuals who wish to copy those MP3 files. The MP3 files may be listened to on one's home computer, may be downloaded to a solid-state "Rio" listening device, or with additional computer equipment may be transferred to a home-made audio compact disk.
Napster suggests that if a consumer can copy a MP3 file from his or her hard drive without violating the copyright laws, then Napster's Internet directory service does not violate the copyright laws either. RIAA claims Napster is liable for contributory and vicarious copyright infringement, suggesting whatever an individual may do, a commercial entity may not create a business that induces individuals to do such acts, even if individually lawful.
Chapter 10 of the Copyright Act prohibits certain infringement actions:
§ 1008. Prohibition on certain infringement actions. No action may be brought under this title alleging infringement of copyright based on the manufacture, importation, or distribution of a digital audio recording device, a digital audio recording medium, an analog recording device, or an analog recording medium, based on the noncommercial use by a consumer of such a device or medium for making digital musical recordings or analog musical recordings. (17 USC § 1008).
Section 1001 definitions:
(4)(A) A "digital audio recording medium" is any material object in a form commonly distributed for use by individuals, that is primarily marketed or most commonly used by consumers for the purpose of making digital audio copied recordings by use of a digital audio recording device.
(B) Such term does not include any material object--
(i) that embodies a sound recording at the time it is first distributed by the importer or manufacturer; or (ii) that is primarily marketed and most commonly used by consumers either for the purpose of making copies of motion pictures or other audiovisual works or for the purpose of making copies of nonmusical literary works, including computer programs or data bases.
The RIAA commissioned a study by Field Research, in which 22% of Napster users said that because of Napster they did not buy CDs any more or bought fewer CDs. Napster commissioned a study by Professor Peter Fader of the Wharton School of the University of Pennsylvania. The Napster study found 91% of Napster users buy as much or more music than before they used Napster; 28% purchased more music.
Chief Judge Marilyn Patel of the Northern District of California court is deciding the matter.
According to the Wall Street Journal (15 May 2000), more than 70% of college students surveyed by an Internet research firm use the napster music service at least once a month.
Internet perspectives
The New York Times reports (10 May 2000) in a front page story that Ian Clarke is writing a program that may make it difficult to control the traffic in any digital information, including music, video, text, and software. Reportedly Clarke hopes the conflict over copyright enforcement on the Internet will result in a world in which all information is freely shared. Information creators may be less happy about this proposed future.
Linus Torvalds, the creator of Linux, an increasingly popular alternative computer operating system to Microsoft's Windows, says "Piracy is bad. Of course you should be able to sue over copyrights" (Wall Street Journal, 22 May 2000). Larry Wall, developer of the Perl language, suggests the "open source software movement" should be "about giving away things voluntarily. When you force someone to give you something, it's no longer giving, it's stealing. Persons of leisurely moral growth often confuse giving with taking" (Id.).
Trademark: Internet ICANN domain disputes not precedent in US courts
ICANN Internet domain disputes have had a new resolution procedure beginning January 2000, <www.icann. org/udrp>. Some members of the trademark bar have been displeased with some of the arbitrator's decisions and the reported opinions, see INTA listserve, <<intanet-l@inta.org>. Arbitrator's decisions can be found at <www.icann.org/cgi-bin/udrp/udrp.cgi>; a statistical summary at <www.icann.org/udrp/proceedings-stat.htm>.
Weber-Stephen v Armitage has held that US courts are not bound by the ICANN arbitrations. <www.law.com/professionals/techlaw.html>.
Patents to issue within twelve weeks
Due to budgetary constraints in FY2000, the US Patent and Trademark Office has revised its earlier objective, and now intends to issue patents within twelve weeks after the satisfaction of all outstanding requirements (1234 TMOG 39, 9May2000). The earlier objective was issue within four weeks.
PTO reestablished
As part of the reestablishment of the PTO the Assistant Commissioners of Patents and of Trademarks are now titled the Commissioner for Patents and the Commissioner for Trademarks (1234 TMOG 42). The head of the United States Patent and Trademark Office is the "Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office." Until further notice, no change is necessary to any mailing procedure, form, or other document submitted to the PTO; use of the new titles is also acceptable.
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