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CHESTER'S
World of Innovation & Trade Law
March 2008
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Editor-In-Chief
J. F. (Jim) Chester, JD/LL.M
Managing Editor
Bradford Luo
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UPCOMING SEMINARS
International Trade Finance
Date: March 27, 2008
Time: 9 A.M. - Noon
Place: Fort Worth International Center CALL (817) 392-2672 FOR INFO
Cost: $33.00 (Complimentary Breakfast will be served )
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Fundamentals of International Trade Regulation
Date: May 1, 2008
Time: 6 P.M. - 8 P.M.
Place: NAPM- Wichita, Kansas
EMAIL tandcjackson@cox.net FOR INFO
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Fundamentals of International Trade Regulation
Date: July 24, 2008
Time: 6 P.M. - 8 P.M.
Place: NAPM- San Antonio
EMAIL BWolfe@swri.org FOR INFO
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Customs Seizure Leads to Civil Suit against Alleged Counterfeiter
Philip Morris USA recently a lawsuit in federal court in the Central District of California against Nice Pak Products, Inc.
of Orangeburg, N.Y. The lawsuit is aimed at stopping the importation, distribution, and sale of counterfeit cigarettes and
the unauthorized use of Philip Morris USA's trademarks.
This suit arises from a seizure by the U.S. Bureau of Customs and Border Protection (Customs) at the Port of Los Angeles on
August 24, 2007. Nice Pak Products was listed on Customs' Notice of Seizure as the importer of record of counterfeit Marlboro®
cigarettes.
According to a company press release, this action is part of the company's continuing civil litigation effort against importers
of counterfeit cigarettes. Over the past four years, Philip Morris USA has filed 29 other cases against counterfeit importers
in federal courts in California, Florida, New York and Texas. In these cases, Philip Morris USA has prevailed against dozens
of individuals and entities involved in the importation of counterfeit cigarettes.
"Trafficking in counterfeit cigarettes is illegal, and we do not want our trademarks misused," said Charlie Whitaker, vice
president, Compliance and Brand Integrity, Philip Morris USA. "This represents the latest in a series of actions we are taking
to protect our brands and the law abiding businesses that sell them from unfair competition."
If you are interested in getting Customs to assist you in protecting your intellectual property, contact Chester/Associates
at ip@tradelawfirm.com
SOURCE: www.philipmorrisusa.com
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Pineapples, Bananas, and Marijuana(s)
Imagination and drug trafficking, apparently, go hand in hand.
Border Patrol agents assigned to the Falfurrias Border Patrol Traffic Checkpoint located on U.S. Highway 281, recently questioned
a driver of a tractor-trailer as to his citizenship. While questioning the driver, Agents find almost three tons of marijuana
concealed in a shipment of pineapples.
A search of the trailer led to the discovery of 132 bundles marijuana hidden within a load of pineapples, weighing 5,701 pounds
with an estimated value of over $4.5 million. The driver, a thirty-three year old U.S. citizen from El Paso, Texas was arrested.
Source: US Customs and Border Protection
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Customs Set to Impose 10 + 2 Security Filing Rules
U.S. Customs and Border Protection (CBP) has published on January 2, 2008 a proposed rule that will require importers and
carriers to electronically submit additional information on cargo before it is brought into the United States by vessel (i.e.,
ocean freight). The security filing, also known as "10+2," is another step in Department of Homeland Security (DHS) strategy
to better assess and identify high-risk shipments to prevent terrorist weapons and materials from entering the United States.
The 10+2 refers to information on: (1) a vessel stow plan used to transmit information about the physical location of cargo
loaded aboard a vessel bound for the U.S; and (2) container status messages, which report container movements and changes
in status (e.g., empty or full).
In addition, the following 10 data elements must be filed in the importer security file:
* Manufacturer (or supplier) name and address
* Seller (or owner) name and address
* Buyer (or owner) name and address
* Ship-to name and address
* Container stuffing location
* Consolidator (stuffer) name and address
* Importer of record number/foreign trade zone applicant
identification number
* Consignee number(s)
* Country of origin, and
* Commodity Harmonized Tariff Schedule number
Public comment period officially ends on March 2, 2008, and Customs plans to implement the rule, with any changes, in the
fall of 2008.
If you have questions about how to prepare for these prospective import rule changes, please contact Chester/Associates,
PLLC at trade@tradelawfirm.com
Source: U.S. Customs and Border Protection
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USPTO Making It a Bit More Difficult for Foreign Registrants
A few new developments in the Trademark Trial and Appeals Board (the "TTAB") opinions might trouble foreign registrants.
The TTAB regards false statements made in the trademark registration process, either for actual use or Declaration of Intent
to Use, as fraud on the USPTO. And a finding of such fraud renders applications or registration void. Further, proof of
fraudulent or deceptive intent is not required to establish fraud; rather, the TTAB will only rely on &"objective manifestation
of that intent" in documents submitted. See Medinol Ltd. V. Neuro Vasx. Inc., 67 USPQ2d 1205 (TTAB).
Bona fide intention to use marks in commerce in the United States has been a requirement for registration under Section 44
and 66. In Intel Corp. v. Steve Emeny, a non-precedential decision, Intel Corp successfully opposed Emeny's registration
of the mark "Ideas Inside" which was declared to be used for purposes, such as on-line ordering and distribution services
for a host of goods, search engine services, and digital transmission services. But TTAB found a lack of the requisite bona
fide intent to use, thus rejecting Emeny's registration.
These developments, especially the bona fide intent to use, might be tall barriers to foreign registrants used to civil law,
because in many civil law jurisdictions there is no actual or intent to use requirements for registration.
Developments in the United States affects not only would-be foreign registrants but also U.S. rights holders in that many
foreign countries pay close attention to IP policies in the United States. Whether foreign countries in civil law jurisdictions
will impose use or intent to use remains to be seen, but if you have questions about registering your trademarks in foreign
countries either directly or through the Madrid Protocol, please contact Chester/Associates, PLLC at IP@tradelawfirm.com.
Source: USPTO
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BIS to Implement "Deemed Export" Policy Changes
The Bureau of Industry and Security (BIS), an agency under the Department of Commerce with jurisdiction over exports, has
completed its review of the Deemed Export Advisory Committee's (DEAC) report. The BIS review was conducted in coordination
with the Departments of Defense, State, and Energy to consider the report’s analysis and recommendations as a basis
for reforming current deemed export policy.
A deemed export is any release (i.e., sharing or demonstrating) of sensitive technology to a foreign national - even if
the release occurs inside the United States. Given the significant role that foreign nationals play in the U.S. research
system, deemed export policy has significant implications for U.S. national security and economic competitiveness. Strict
enforcement of deemed export rules is a matter of U.S. national security.
While certain prospective actions remain undetermined, BIS has been requested to immediately:
* Create an Emerging Technologies Advisory Committee, composed of representatives from leading research universities, government
research labs, and industry to make recommendations to BIS regarding emerging technologies on a regular basis; and
* Improve outreach and engagement efforts to the academic and technology communities about the progress and scope of the deemed
export policy efforts.
Compliance with export rules and regulations requires constant vigilance and sound internal strategies. If you have questions
about how to comply with the export or deemed export rules, contact Chester/Associates at trade@tradelawfirm.com
Source: BIS
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Beaumont Boy Battles Jersey Boys: Joint Authors of Copyrightable Work
Who gets paid from Jersey Boys the 2006 award winning musical about the musical group the Four Seasons? Is it Texas attorney
Rex Conrad Woodard's heirs or Thomas Gatano DeVito, an original member of the Four Seasons, or both? The show continues to
gross over one million dollars per week from Broadway performances alone. So who gets paid is a big issue.
Woodard, a music buff and writer, wrote numerous articles on the Four Seasons. Prior to his death in 1991, Woodard entered
into a written agreement with DeVito to co-author DeVito's biography and to share equally in any profits from the book or
adaptations. The biography chronicled the Four Seasons/DeVito's career and even touched on issues such as mob involvement
and police investigations of the group's members.
In 2007, Woodard's widow located a 1991 copyright registration for an identical manuscript registered solely in the name of
DeVito. It was also discovered that writers of Jersey Boys had obtained the manuscript and used it for inspiration in writing
the musical and several scenes were adopted from the manuscript. Arguably, the Jersey Boys production is a derivative work
of the Woodard/DeVito unpublished manuscript which entitles Woodard's heirs to compensation from the Jersey Boys production.
This article appears courtesy of Tamera H. Bennett, a Texas-based entertainment lawyer. For entertainment law questions,
contact Tamera Bennett at info@tbennettlaw.com.
SOURCE: Corbello v. DeVito, 1:2007cv00985, E. Dist. Tex. (Beaumont) Dec. 28, 2007.
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Sorry, "Judge Alex": Federal Arbitration Act Preempts State Law
Preston is an entertainment lawyer who performs management services for movie and TV performers, including Ferrer, who performs
on TV as "Judge Alex." Their contract contained a standard arbitration clause.
The Federal Arbitration Act (FAA) provides for the enforcement of arbitration clauses in commercial contracts. California's
Talent Agencies Act (TAA), on the other hand, requires parties to a contract first bring their disputes before the California
Labor Commission before bringing the case in court, or to an arbitrator.
When Preston commenced arbitration proceedings to collect fees allegedly owed, Ferrer sought relief from the California Labor
Commissioner arguing that Preston was an unlicensed talent agent and that their agreement is void. Ferrer also sued in California
court seeking to enjoin the arbitration, and Preston filed a motion to compel arbitration. The trial court enjoined the arbitration
pending final resolution by the Labor Commissioner. The California Court of Appeal affirmed, and the California Supreme Court
wisely refused to review, kicking the ball to the U.S. Supreme Court.
Not so surprisingly, the Court held that when parties agree to arbitrate all questions arising under a contract, the FAA,
9 U. S. C. §1 et seq., supersedes state laws lodging primary jurisdiction in another forum, whether judicial or administrative.
Regardless of how one feels about the outcome, the fact is that once arbitration is the selected dispute resolution method,
getting out of that option is next to impossible. If you have question about how to protect your contractual rights, please
contact Chester/Associates at trade@tradelawfirm.com.
Source: PRESTON v. FERRER, U.S. Supreme Court, No. 06-1463 (2008).
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USTR Seeks Public Comments on Anti-counterfeiting Trade Agreement
The Office of the United States Trade Representative (USTR) seeks to negotiate an anti-counterfeiting trade agreement to strengthen
international cooperation, enforcement practices, and participants' legal frameworks to address counterfeiting and piracy.
USTR requests written comments from the public concerning specific matters that should be the focus of such an agreement.
DATES: Submissions must be received on or before 5 p.m. on Friday, March 21, 2008.
ADDRESS: All comments should be sent (i) electronically, to the following e-mail address: ACTA@ustr.eop.gov, with ``Anti-Counterfeiting
Trade Agreement (ACTA): Request for Public Comments'' in the subject line, or (ii) by fax, to Rachel Bae, at (202) 395-3891,
with a confirmation copy sent electronically to the e-mail address above.
If you want to comment, please present your comments as directed. If you have questions regarding anti-counterfeiting, anti-piracy,
please contact Chester/Associates, PLLC at trade@tradelawfirm.com.
Source: US Trade Representative Office
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No claim to government works. Otherwise, © Chester/Associates, PLLC 2008
The material in this newsletter is for informational purposes only. It is not legal advice, and does not create an attorney-client
relationship. To subscribe, or to be removed from this subscription list, send an email to: chestersworld@tradelawfirm.com.
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Chester/Associates, PLLC
Trademarks — Transactions — Trade
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Dallas, Texas 75206
Ph 214.800.2845
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