• Wi n t e r 2 0 0 2 E d i t i o n 1

R

INSIDE THIS ISSUE:

In Memory ofRobert Shaw / 1

Profile: Silkevon Lewinski / 1

Notable Happenings / 3

IP Faculty Activities / 4

Stem Cells:In the Line of Fire / 7

XML: An Attemptto Put Order to anEmerging Marketplace / 9

Lawyering inIAM Programs / 9

Hague ConventionConcerns allIntellectual Property / 11

Electronic Evidence / 13

From the Editor / 17

Student Profile:Hyuk Jung Kwon / 19

Calendar / 20

G E R M E S H AU S E N C E N T E R N E W S L E T T E R • Wi n t e r 2 0 0 2

See VON LEWINSKI, page 2

F R A N K L I N P I E R C E L A W C E N T E R

IN MEMORY OF ROBERT SHAWPROFESSOR OF LAW AND DIRECTOR,PTC RESEARCH FOUNDATIONBY JON R. CAVICCHI, I .P. L IBRARIANAND ASSISTANT PROFESSOR OF RESEARCH

OBERT SHAW passed away on January 4, 2002 afterlong and difficult health challenges. Many faces have

come and gone at Pierce Law in the past five yearssince Bob Shaw retired. Change is constant and

natural. We head into the future with new faculty and staffwho will build their own legacy of success. Nonetheless, as weface the future, it is helpful to look at the past, lest we forgetthose who have gone before us and presented us with a solidinstitution with the oldest and most renowned IP programs inthe nation. Bob Shaw was instrumental in building the IP programs we have today. I spoketo faculty, staff and alums to prepare this celebration of the life and career of this man, whowas most of the time quiet and humble, and at other times outspoken on topics and causeshe deeply cared about. Those who worked with Bob over his two decades at Pierce Lawagree with Professor Tom Field, who characterized him “as a consummate professional whotook practice and teaching very seriously.” He was dedicated to his family, patent law, hisstudents and legal education.

Bob was a native of Illinois. He received his B.S. (Electrical Engineering) from the Universityof Illinois and his LL.B. from New England School of Law. Bob was a fighter pilot in WorldWar II for the Navy, flying Wildcats off of Jeep carriers in the Pacific, landing at night on

See SHAW, page 5

PROFILE: SILKE VON LEWINSKIBY SAMANTHA WHITNEY (JD/MIP ’03)

SINCE 1993, Dr. Silke von Lewinski has been an adjunctprofessor at Franklin Pierce Law Center (Pierce Law),teaching International and Comparative Copyright Law.This course is offered in the spring semester and the summersession, Pierce Law’s Intellectual Property Summer Institute(IPSI). She will once again be teaching at Pierce Law in theupcoming spring semester.

Although I participated in last summer’s IPSI program,I did not have the pleasure of getting to know Dr. vonLewinski or taking her course. I did have, however, the

opportunity to speak with her personally while interviewing her for this article. She immediatelyimpressed me as a very intelligent and pleasant woman. Indeed, Dr. von Lewinski’s resume ismost enviable and impressive.

FRANKLIN PIERCE LAW CENTER

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

Published by the Kenneth J.Germeshausen Center for the Law of

Innovation and Entrepreneurship

Editor:Karl Jorda

Student Editor:Shelly Hokenstad (JD ’02)Assistant Student Editor:Marnell Boehmer (JD ’03)

Administrative Editor:Carol Ruh

Photography:Carol Ruh/Linda Turner

Created in 1985 through thegenerosity of Kenneth J. and PaulineGermeshausen, the GermeshausenCenter is the umbrella organization

for Franklin Pierce Law Center’sspecialization and policy studies

in the legal protection, management,and transfer of intellectual property,

especially relating to thecommercialization of technology.

The Germeshausen Center Newsletteris published three times a year foralumni/ae, students and friendsof Franklin Pierce Law Center.

Our readers are encouragedto send news, photos,

comments or letters to:

Carol RuhFranklin Pierce Law Center

2 White StreetConcord, NH 03301 USA

cruh@fplc.edu

GERMESHAUSEN CENTERNEWSLETTER

Professor William Hennessey first broachedwith Dr. von Lewinski the question ofwhether she would be interested in teachingat Pierce Law, when he met her at a meetingof ATRIP (International Association for theAdvancement of Teaching and Research in IP)in Salamanca, Spain in 1991.

Subsequently, when Professor Karl Jordawas at the Max-Planck Institute as a VisitingScholar in 1990 and 1991, he got to knowDr. von Lewinski and, since Pierce Law atthat time intended to expand and fill a gapin its curriculum with a full complementof international and comparative patent,trademark and copyright law courses, hepersuaded her to come to Pierce Law.She accepted enthusiastically and theMax Planck Directors, Professor Dr. Beierand Professor Dr. Schricker, gladly gaveher permission.

Her first course in March 1993 was aninstant success and former Dean, Bob Viles,recognized this in a certificate, where hesaluted her “for…conscientiously preparinga three-week course in International &Comparative Copyright Law, enthusiasticallyinspiring her students to understand, toengage and to learn, and willingly sharingexpertise and insight with students andfaculty colleagues alike” and in a letter to her,where he acknowledged that “(h)aving…people from Europe like yourself participatein our academic program adds dimensionsto transnational treatment of legal subjectsthat our own faculty cannot as effectivelyoffer.” By now she has taught this courseover twenty times at Pierce Law, where thehope is she will continue to come back yearafter year.

In addition to teaching at Pierce law, Dr.von Lewinski also participated—afterhelping to organize it—in the SeventhBiennual Intellectual Property SystemMajor Problems Conference, held onNovember 14, 1998, which explored thetopic “Digital Technology and Copyright:A Threat or a Promise?”

She also participated in a joint-degreeprogram between Pierce Law and the GulfInstitute for International Law in Dubai,UAE in December 1997/January 1998,teaching a 2-credit hour copyright courseand will be a guest lecturer in ProfessorJorda’s International Intellectual PropertyLaw course at Tuft University’s FletcherSchool of Law & Diplomacy in their Spring2002 term.

Since 1985, Dr. von Lewinski has beenassociated with The Max-Planck Institutefor Foreign and International Patent,Copyright and Competition Law inMunich, Germany, the world’s epicenterfor IP research and the mecca for foreignIP scholars. She was first an associatemember and since 1995 has served as headof the Dept. on International Law andDeveloping Countries.

Not content with being a department headat Max Planck and an adjunct professor atPierce Law, Dr. von Lewinski also serves orhas served as adjunct, lecturer or visitingprofessor at the Johannes-GutenbergUniversity in Mainz, the PolytechnicalUniversity in Zurich, McGill Universityin Montreal, Columbia University inNew York, Université Laval in Quebec, theUniversity of Paris (Sceaux/Sorbonne), theUniversity of Montpellier, the Universityof Toulouse, and finally the Université deNantes. In the Spring of 2002, she will beteaching at Melbourne University inAustralia for the first time.

There is much, much more, when it comesto her professional activities. She hasserved or is now serving as a consultantand expert for the European Community(EC) Commission in Brussels regardingEC Directives on rental and lending rights,for the government of Madagascar and forseveral Central and Eastern Europeancountries with respect to drafting newcopyright legislation. Furthermore, she hasrepresented the European Communities,Germany and/or Max Planck at manyDiplomatic Conferences and meetings ofWIPO Committees of Experts in Geneva.

Dr. von Lewinski, simply put, is likely toshow up any time any place on the globe, asfor instance, in Madagascar, Goa in India,Irkutsk in Siberia, Armenia, Georgia,Uzbekistan, Jamaica and anywhere inEurope, Japan, the United States andCanada. Often she can be seen in high-powered fora on cutting-edge issues, as forinstance, last year at a Roundtable Discussionat Columbia University on laws prohibiting

VON LEWINSKI, from page 1

See VON LEWINSKY, page 6

Graphic Design & Typography:Ampers&® Studio, Newmarket, NH

• Wi n t e r 2 0 0 2 E d i t i o n 3

NOTABLE HAPPENINGS…JUDGE ARTHUR J. GAJARSADISTINGUISHED JURIST-IN-RESIDENCE AT FRANKLINPIERCE LAW CENTERThe Honorable Arthur J. Gajarsa served asdistinguished jurist-in-residence, October9 and 10, at Pierce Law. Judge Gajarsa,who sits on the U.S. Court of Appeals forthe Federal Circuit, Washington, DC, wasappointed to the bench by President Clintonin 1997. “We are honored to host a jurist ofJudge Gajarsa’s stature at Franklin PierceLaw Center. He enjoys a national reputation.It is also appropriate because he presidesover many cases that involve intellectualproperty issues, an area in which we excel,”said Dean John Hutson. Judge Gajarsaaddressed several classes during his visit, aswell as meet with students in small groups.Former special counsel and assistant to thecommissioner of Indian Affairs, Bureau ofIndian Affairs, U.S. Department of Interior,Judge Gajarsa was a partner and officer withJoseph, Gajarsa, McDermott and Reinerprior to his appointment. He is the recipientof numerous awards including the Order ofCommendatore, Republic of Italy in 1995,the Alumni Fellow Award from RensselaerPolytechnic Institute in 1996, and the PaulR. Dean Award from Georgetown UniversityLaw Center in 1998.

THE GREENBERGTRADEMARK INSTITUTEPierce Law is in the process of creatingThe Greenberg Trademark Instituteand Greenberg Chair of InternationalTrademark Law named for Allen Greenberg,

who has enjoyed an impressive careerspanning three decades practicing intellectualproperty law. During that time the shifttoward a global economy also intensifiedthe focus and growing internationalimportance of trademark law. Allen wasdeeply rooted in its practical implicationsduring his 20-year tenure at the Coca-ColaCompany. His charge to protect thefamous Coca-Cola trademarks took him tomore than 100 countries. His membershipin several national and international legaland professional associations, including theABA, the USCIB, the ICC, INTA and ASIPI,reflects his vast experience and commitmentto the field of IP law.

The mission of The Greenberg TrademarkInstitute is to provide a forum for professionalsfrom across the globe to meet and examinecritical topics in managing intellectualproperty assets. The Institute will addressthe pragmatic needs of trademark owners,as well as the political, legal and socialimplications of intellectual property law.All Institute activities will adhere to thehighest standards for academic integrity.

The Greenberg Trademark Institute andThe Greenberg Chair of InternationalTrademark Law at Franklin Pierce LawCenter will be the epicenter of trademarkeducation and research worldwide.National and international trademarkowners and practitioners, lawyers,government officials, instructors andmarketers will regularly meet at PierceLaw, one of the United States’ topintellectual property law schools to

empirically examine the global issuesconfronting today’s IP professionals.

PIERCE LAW SIPLA’SFIRST ANNUAL SYMPOSIUMOn November 10, the Student IntellectualProperty Law Association (SIPLA) held itsFirst Annual Symposium—The Future ofIntellectual Property. Speakers includedClark Lackert and Larry Tronco, King &Spalding; Dr. David Marsh, Arnold &Porter; David Crosby, Mintz Levin CohnFerris Globsky and Popeo; as well as theImmediate Past President of AIPLA, M.Andrea Ryan and Professor John Orcutt ofPierce Law. The topics covered were:AIPLA’s Three Year Strategic Plan and theRole of the Law Student, New Technologiesand IP, Recent Developments in Biotechnologyand Patent Law, Start-Up Companies: AnEffective Means for Monetizing Innovations,and Global Trademark Harmonization inthe 21st Century: TRIPS and Beyond. PierceLaw’s SIPLA was formed to promote IPissues and maintain a high standard ofprofessionalism in the Pierce Law community.The organization brings Pierce Law students,faculty, alumni and members of the legalcommunity together from the full spectrumof IP concerns, including: Patents, Copyrights,and Trademarks, and other areas of lawaffecting IP. The Pierce Law SIPLA Officersare to be commended for putting on such afine program. (Jenae Avalone, A.J. Bahou,Brad Chin, Keshev Dhakad, Tom Holsten,Robin Irving, Bill Lambert, James Larke,Chuck Meier, Janet Moreira, Leigh Willey,and Anne Yates.)

@V I S I T T H E F R A N K L I N P I E R C E

L AW C E N T E R I P M A L L

www.ipmall.fplc.edu

“One of the internet’s best sites devoted to intellectual property.”

—The Internet Lawyer

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

IP FACULTY ACTIVITIESProfessor Tom Field’s book, Introduction toIntellectual Property, has been accepted forpublication by Carolina Academic Press.Joe Feretti (LLM ’01) of Crowe & Dunlevywill be teaching from it at the University ofOklahoma in the spring and Field expectshim to join as co-author by the time thefinal manuscript is submitted next summer.

The IP Mall is proud to host the Webversion of Jon Garon’s book, IndependentFilm Making, which remains a work inprogress (the site and the book). The texthas not been finished and final editing workneeds to be done. The IP Mall is helpingProfessor Garon make the book availablein this form to help the reader who cannotwait another year to have these suggestionsprovided in print. New chapters will beposted regularly as the writing and editingprocess continues. (www.ipmall. fplc.edu/hosted_resources/ifm/index.html)

Dean John Hutson and Professor BillHennessey travelled to Beijing the weekafter Thanksgiving, to meet with officialsof Tsinghua University School of Law, inorder to work out details directly followingthe ABA’s approval of the 2002 Pierce Law-Tsinghua summer study abroad program.It was Dean Hutson’s first visit to China,and though short, was most memorable.In addition to visiting the Tsinghua campus,where they met with Professors Bing Wang(Pierce LLM ’01) and Jianyuan Cui (PierceVisiting Scholar ’00), they met with alumsBaidi Gu (Pierce MIP ’89) and Jian Ma(Pierce LLM ‘00), and took in such populartourist sights as the Forbidden City, ManchuSummer Palace, and the Great Wall. ProfessorHennessey also participated in a two-dayseminar November 26-27 on “CurrentIssues in Intellectual Property Protection,”sponsored by Procter & Gamble at TsinghuaUniversity, and also gave a talk on patentprotection for business method relatedpatents in the U.S.

On December 12, Professor Susan Richeyand Bill Murphy were presenters for a NewHampshire Bar Association CLE programon “E-Commerce and Internet Issues,” heldin Manchester.

Professor Karl Jorda participated with threepresentations in a two-day program onIntellectual Property Strategies, held byIntertech Seminars in Manchester, NH on

October 1 and 2. The topics of his talks were:“Techniques for Harvesting Inventions,”“The Patent/Trade Secret Interface,” and“Technology Licensing Dos and Don’ts.”Then on October 8-9, he attended a WorldJurist Association Seminar held at theHungarian Supreme Court in Budapestand gave a talk on “Enforcement of PatentRights in the United States: Damages andInjunctions.” And on November 8, he wasthe lead-off speaker at an InternationalSymposium on Intellectual PropertyEducation, organized by Tokai Universityand held in Tokyo. The topic of his addresswas “Intellectual Property Education atFranklin Pierce Law Center: History, CurrentStatus and Programs.”

With his talk in Tokyo, Professor Jorda hadreached a milestone: 250 major career talkssince 1971, and 175 since 1989, when he cameto Pierce Law. Out of the 250 presentations,40 were in Spanish and 5 in German. Theywere delivered under the auspices of WIPO,

PIPA, UN, LES, ACPC, USIA, AIPPI, IABA,PLI, and many other international, national,state and local associations and organiza–tions. Venues for these talks were fortycountries, including such remote countries asMadagascar and Mongolia. Many of thesetalks were published in such IntellectualProperty and Licensing/Technology Transferjournals and publications as JPTOS, PLIHandbooks, AIPLA Quarterly Journal, LESNouvelles, BNA’s World Licensing Report,PIPA Proceedings, CIPA Journal (British),PTIC Journal (Canadian), GRUR Journal(German), Derechos Intelectuales (BuenosAires), Actas de Derecho Industrial y Derechode Autor (Spain), and others.

With speaking engagements already linedup in Amman, Jordan in January; Mumbai(Bombay), India in February; Bogota,Colombia in March; Osaka, Japan in Apriland New Delhi, India in May, ProfessorJorda will go on “fighting the good fight.”

• Wi n t e r 2 0 0 2 E d i t i o n 5

small carriers before the days of hightechnology. He was in a private patent lawpractice from 1949 to 1967 at which timehe was hired as the patent attorney for theMassachusetts Institute of Technology(MIT) where he served from 1967 to 1980.He was hired as a Lecturer in Patent Law atPierce Law in 1977. In 1980 he wasappointed Director of the PTC ResearchFoundation, and Editor of IDEA: TheJournal of Law and Technology and he waselevated to the rank of full Professor,teaching Patent Practice and Procedure Iand II, Selected Topics in IntellectualProperty I and II and Patent Moot Court.

Of himself he wrote the following for thePierce Law Admissions Bulletin shortlybefore he retired:

“From 1967 and 1980 I was a patentattorney for the Massachusetts Instituteof Technology covering a wide spectrumof technical disciplines, although mytechnical training is in electrical engineering.Since 1977 I have taught patent practicecourses at FPLC, and, since cominghere full-time in 1980, I have served asDirector of the PTC Research Foundation.The patent practice training places greatemphasis on claim drafting and applicationdrafting, responding to communicationsfrom the Patent and Trademark Office(PTO), and a study of the law as it appliesto all aspects of the patent practice inthe PTO and more generally. This is atwo- year offering, and in the secondyear the law and practice are studied togreater depth. Our graduates have foundpatent employment with some of thiscountry’s largest industrial companiesand with law firms specializing in theintellectual-industrial property practice.”

The story of Bob’s contribution to thefounding and building of IP at PierceLaw is best described by the founderRobert Rines and the founder of theGraduate Programs, Homer Blair.

According to Rines, Bob pioneered thenovel curriculum for patent law courses atlaw schools. He helped found and grow thePTC Research Foundation and conferenceprograms as its Director. During his mostactive years he provided “laboratory” patent

practice opportunities for Law Centerstudents in assisting in handling severalhundred patents and licensing transactionsfor Faculty at Dartmouth, University ofMassachusetts, MIT, Carnegie Mellonand US Army Research Labs and others.

Bob was best known for his expertise inpatent prosecution, but Bob also hadconsiderable experience with patentlitigation. Rines stated that when hefounded Pierce Law he relied heavily on Bobfor assistance in a considerable number ofpatent trials in which Rines was involvedall over the world. “Bob was an excellentobserver and listener in court and oftenprovided insights for winning trials.”

Bob was involved with the Board of theAcademy of Applied Science, which helpedfound Pierce Law. He was particularlyinvolved in national programs by theAcademy for encouraging young inventorsand scientists. Bob was Rines’ “strong rightarm” in helping develop the Chinese andKorean patent alumni of the Law Centerand accompanied Rines to the Far East inthis connection. He assisted Rines andProfessor Bryan Harris in negotiatingcooperative programs with the BritishInstitute of Patentees and Oxford University.Bob was closely involved with Rines inlaunching of the Germeshausen Center andin working with Mr. Germeshausen andRines on numerous patent interests.

Rines stated that Bob felt that the mostimportant talent of patent lawyer was inknowing how to analyze the real inventiveconcept and translating that into competentclaim language. Bob always stressed that histutelage at Rines & Rines under David Rines,for whom the David Rines Professorship wasnamed, was responsible for giving him insightsinto claim drafting to help teach studentsto rise above the average patent lawyer.

Homer Blair talks of the effectiveness ofthe patent law team approach established atPierce Law. Blair’s background was corporate.Bob was the expert in university patentingand licensing. Professor Tom Field had beena patent examiner. Rines had been inprivate practice. All four professors haddifferent backgrounds and insights. Bobtaught the basics of patent law for decades

to thousands of patent lawyers in the making.For most of those years he “taught it hisway” according to Blair. Bob was very involvedand interested in teaching. He had a solidbackground when he became a teacher,which Blair felt made him a more effectiveteacher. Bob was involved in IP managementbefore it became a discipline. According toBlair, Bob “would dig around at MIT” forIP opportunities.

For many years, Bob “was the patent program”at Pierce Law. Attorney Kevin Carroll, whoworked with Bob as a student and is nowan adjunct patent professor, tells “althoughBob stopped teaching Patent Practice yearsago, he has left his mark on this course. Wecontinue to use drafting assignments thatoriginated with Bob Shaw, and I often mentionhis name when instructing students on the‘art’ of patent claim drafting.”

Bob was devoted to his students. I was astudent in one of the final Patent Practiceclasses he taught while earning my LL.Mdegree. I would visit Bob in his office andoften find him in lengthy conversationswith foreign students who were vexed bytechnical jargon along with the Englishlanguage. Bob was an unending source ofmentorship. He gave unconditionally ofhimself. Professor Bill Hennessey tells thatBob was the biggest help in starting theMIP program. He would always organize atrip to climb Mount Cardigan in the earlyfall. Bob had a quiet appreciation of thebeauty of nature and the unique splendorof New Hampshire. He spent innumerablehours counseling (and comforting) foreignstudents who struggled through his courses.Hennessey tells that Bob and his wife Rubywere a home away from home for manystudents. “Few realized how much kindnessand inspiration he spread to others. Bobknew all of his students as individuals, ourlikes and dislikes, our strengths and weaknesses.He knew how to instill confidence in hisstudents through his example, his constantgood cheer, and his willingness to hear andconsider another side of the story.”

Bob was a student of science and haddeep interests in the area of neurology.

SHAW, from page 1

See SHAW, page 6

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

Attorney Rochelle Blaustein, who assisted Bob as a student and later as an AssistantProfessor recalls many long conversations on matters of science.

There were many sides to Bob. According to Emeritus Professor Richard Hesse, “Bob wasone of the few ‘technology’ people on the faculty who showed any real interest in otheraspects of law and legal education. He was deeply concerned about government and civilliberties. While we seldom agreed on the more controversial issues of our times, Bob wasalways thoughtful and open to discussion. Those who knew him knew how committedBob was to liberty as he saw it.” Hennessey also agreed: “Bob had a rock-solid commitmentto justice and liberty.”

Still others remember Bob in different ways. Bob was a family man. He and Ruby adoptedtwo children. He loved children. Professor Sarah Redfield relates, “One of the things thatendeared Bob to me was his interest in children. After I had Alex, Bob starting stocking hisoffice with a few children’s books so he’d have something to read should I stop by with myson. Later, he and Alex became friends in their own right, with Bob giving Alex some muchmore serious science books. And when Althea came along, he continued his friendship withher and with me.” Bonnie Morrison (Library Serials Assistant) worked as Bob’s assistantfor fifteen years. She remembers him as good hearted. Bob “went above and beyond thecall of duty for the students”, spending lots of time with them. He was a mentor to many,giving advice to many alums in the field. Bonnie said that many alums still call and askabout him.

Bob was an unassuming person. To look at him in his flannel shirt, you would not thinkof this man as a patent lawyer. Bob loved good Italian food, running and travel. Hefrequented many local restaurants. Attorney Carroll tells that he thinks of Bob wheneverhe has breakfast at the Foothills Restaurant in Warner, where Bob was a regular andfavorite customer. Bob loved to be on the move. Paula Jewell, Library Services Supervisorstates, “I liked him about as much as I have ever liked anyone here. He was a good man. Iwould have lunch in the café with him and we would talk about Illinois where we are bothfrom. He was funny, and so very bright.” Bob lived near Jewell in East Concord and he wasa jogger until his illness caused him to stop. “He would be out in any weather. In the rainI would see him out in his yellow rain slicker. When he was unable to jog he walked, untilhe could not even do this.”

Rines tells that Bob was a “great square dancer.” He and Bob belonged to the UnitarianChurch and never missed a square dance or couples club hayride. Rines jokes that “Bobalways kept us laughing - even in the bitterest cold.” Bob liked to have a good time. Mostremember him for his sense of humor. Rines remembers him as “extremely congenial andfun loving.” Professor Hesse states, “in contrast to Bob’s aggressive attitude in defense ofhis ideology, Bob had a wonderful sense of humor and a capacity to laugh at himself. Hewas an enjoyable colleague.” Blair remembers Bob as “a serious guy with good sense ofhumor; pleasant, quiet and conscientious and frank in faculty meetings.”

Bob will be missed by thousands of students whose life he touched and by those who workedwith him. Rines sadly said, “Bob will be sorely missed as friend and colleague and certainlyas a mentor to many of the earlier FPLC patent law students.” Hennessey concludes, “Mostimportant to me, he was a fiercely loyal friend and colleague.”

Pierce Law honors Bob Shaw in many ways. On September 30, 1995 the Bob Shaw readingarea was dedicated in the new Intellectual Property Library. Over one hundred students,faculty, inventors and staff contributed to the space. Dean John Hutson announced onJanuary 10, 2001 that a scholarship in the name and memory of Bob Shaw is beingestablished. Bob loved to read in the Library. Bob loved students. That the students willbenefit in his memory surely would make him smile, his big warm smile.

circumvention of technological protectionmeasures attached to copyrighted works.

On top of her vast professional experience,Dr. Silke von Lewinski has given about 140major talks and (co)authored four booksand about 120 articles and contributions tobooks on topics relating to internationaland European copyright law and problemsof new technologies. She is so prolific thatshe can hardly keep track of her talks andpublications. In her words: “I can neverkeep up with my publications and talks—it’s nearly uncontrollable.”

In 1991, Dr. von Lewinski received theHeinrich-Hubmann Award for the besttreatise of the year in copyright. This awardis given by the German literary collectionsociety, “VG Wort.” It was named afterHubmann, a leading expert in Germancopyright law, who had died shortly before,and it was inaugurated with her doctoraldissertation.

Dr. von Lewinski is a member of ALAI(Assocication Litteraire et ArtistiqueInternationale), ATRIP, and theInternational Editorial Board of “LesCahiers de la Propriété Intellectuelle”in Canada and others.

Finally, her impressive resume boasts fluencyin German, English, French and Italian andreading knowledge of Dutch, Swedish,Norwegian, Danish, and Spanish. What apolyglot on top of everything else!

When I asked Dr. von Lewinski if she alwaysknew she wanted to practice IP law, sheexplained to me “that general law studieswere less stimulating, and that it was myinterest in art and literature that finallybrought me to the study of IP, particularlycopyright laws and their harmonization.”

Last summer she had a great surprise instore for all of us. She turned out to be anaccomplished concert violinist, when sheperformed—a first for her in the U.S.—ina concert presented by The Concord Music

VON LEWINSKI, from page 2SHAW, from page 5

See VON LEWINSKI, page 7

• Wi n t e r 2 0 0 2 E d i t i o n 7

ESTEM CELLS: IN THE LINE OF FIREBY MICHAEL DIRKSEN (JD ’04)

XCITING ADVANCES are being made in the field of stem cell technology. Theseadvances have brought stem cell technology to the forefront of debates around the

world. Scientists, politicians, and ethicists are debating the function and utility ofstem cells, as well as the associated moral and ethical ramifications. Humankind canbenefit greatly from stem cell research because of the ability to diagnose, treat and preventa wide-range of diseases and afflictions.

A stem cell is defined as a cell that has the ability to divide an indefinite number of times,yielding specialized cells with each division. The study of human embryonic developmentgives scientists a view of how these cells arise. There are three distinct levels used to outlineembryonic cell development, labeled as, totipotent, pluripotent, and multipotent stem cells.A totipotent cell is a single cell that has the ability to generate an entire organism. Natl. Inst.of Health, Stem Cells: A Primer <http://www.nih.gov/news/stemcell/primer.htm> (May 2000).A pluripotent stem cell arises after further embryonic development from the totipotentstage. They do, however, maintain the ability to differentiate into any number of differentcells. A single pluripotent stem cell cannot generate an entire organism through divisionitself, nor can a pluripotent stem cell generate specific cells like blood cells. Id. Multipotentstem cells have the ability to divide for an indefinite period of time and have the capacityto create specific types of cells, such as red blood cells. Id. A multipotent stem cell completelydevelops in the embryo, approximately four days after fertilization.

Since stem cells are the first cells created during embryonic development, researchers wantto better understand the fundamental principles of development so they can better foreseedevelopmental issues as they arise. Stem cells can be collected from a variety of sources suchas adult humans, umbilical cords, aborted fetuses, and surplus embryos donated fromfertility clinics. A more controversial form of collecting stem cells arises when a scientistchooses to culture their own embryos in vitro for the sole purpose of harvesting stem cells.Id. Today, scientists are concentrating on collecting pluripotent stem cells and studying theirability to further develop into multipotent cells.

There are difficulties involved with each collection method listed above, either on ascientific level or on a moral and ethical level. A conundrum arises in which the easiestway to collect stem cells creates the most ethical issues and the most difficult way to collectstem cells does not promote ethical dilemmas. For example, researchers when attemptingto collect stem cells from adult humans exert an overwhelming effort. Yet, collection fromadult humans remains the source least debated on an ethical level. The increased effort isnecessary since researchers have to sift through thousands and thousands of other cellsjust to collect a few stem cells. Given that adult stem cells have not been isolated from eachtissue in the human body, collection methodologies are discovered on the run, which isnot very time efficient. Natl. Inst. of Health, <http://www.nih.gov/news/stemcell/ primer.htm>.Rather than performing research on the benefit of stem cells, time is spent trying to findstem cells from adult human samples.

Research has not been completed on whether adult stem cells have the same ability to divideas do newly proliferated stem cells. Research is underway to determine if adult stem cellsare considerably more “tired” than a cell collected from a four-day-old embryo. Based onthe shear number of times a stem cell replicates during an organism’s lifetime, a logicalargument exists that points to the adult stem cell being less prolific. Scientists want themost viable cell lines possible, and if stem cells collected from adult humans are not asviable, then researchers are likely to use cells amassed from fetuses and embryos.

Many moral and ethical issues arise from the usage of stem cells derived from fetuses andembryos. Researchers can legally obtain aborted fetuses from women who undergo anabortion and wish to donate the fetus. Many “Right to Life” activist groups demonstrate

Club in the Annichiarico Theatre. Sonatasand other pieces by Mozart, van Beethoven,Brahms, Wieniawski and Sarasate were inher repertoire. It was a most memorableperformance, which was televised later on PSA.It called for an encore, and she promised onenext summer.

Dr. von Lewinski began playing the violinat the age of five, won several awards atGerman youth competitions, and becamea member of the Federal German YouthOrchestra. She has performed as a memberof various orchestras and chamber musicensembles, made radio and televisionappearances, and has been on tour through–out Germany. She also performed inMoscow and Leningrad with the MainzCathedral Orchestra, and at the officialceremony celebrating the first anniversaryof the German unification, in Berlin.

Anent her academic credentials in law, Dr.von Lewinski studied at the Johannes-Gutenberg University in Mainz, Germany1979-81; the University of Geneva, 1981-82; and the Ludwig-Maximilian Universityin Munich, 1982-84. She passed both herFinal Examination and her Bar Examinationwith honors in Munich in 1985 and 1988,respectively. She then obtained her doctoratefrom the Free University in Berlin in 1989,with a thesis on public lending rights.

This enviable record of teaching, lecturing,writing, and consulting easily makes Dr.Silke von Lewinski Europe’s foremost expert,in Professor Jorda’s estimation, on copyrightsand especially on what she calls her mainareas of interest: international copyrighttreaties, harmonization of Europeancopyrights and adaptation of copyrights tonew technologies. Keep up the good work!

Samantha Whitney (JD/MIP ’03) is fromGermany. She has a BA in Financial and

Managerial Economicsfrom the University ofNew Hampshire andplans to practice IP lawin the Southwestern U.S.upon graduation.

See STEM CELLS, page 8

VON LEWINSKI, from page 6

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

significant portion of the intellectual propertyrelated to stem cell technology, includingclaims to most of the 60 existing embryonicstem cell lines and related technologies. Thepowerful patents that WARF possesses areU.S. Patent Nos. 5,843,780 (‘780) and6,200,806 (‘806). Speculation is rampantin the industry that the ‘806 patent waswritten so broadly that anyone who attemptsto derive a stem cell line, will infringe onthe ‘806 patent. One may surmise that sinceWARF controls a significant amount ofintellectual property in this area, researchersmay give their federal dollars to WARF inreturn for access to WARF’s protected stemcell lines. Robert C. Scheinfeld and ParkerH. Bagley, New York Law Journal (Sept. 27,2001) (available at <http://www.law.com/cgi-bin/gx.cgi/AppLogic+FTContentServer?pagename=law/View&c=... 9/27/01>). Themethods of stem cell isolation and collectiondeveloped by WARF scientists are consideredthe industry standard. Id. Other researchcenters who hold patents on stem cellrelated technologies are Johns HopkinsUniversity, the National Jewish Center forImmunology and Respiratory Medicine,and Vanderbilt University, to name a few.

Research shows that stem cells may havethe potential to cure and prevent devastatinghuman diseases such as heart disease, liverdisease, diabetes, cancer, and diseases ofthe nervous system. It is also likely thatstem cells may be able to prevent, diagnose,and treat diseases such as Parkinson’s andAlzheimer’s. Am. Ass’n for the Advancementof Sci., Report on Stem Cell Research <http://www.aas.org/spp/dspp/ sfrl/projects/stem/main/htm> (Sept. 2000). Today, a personwho suffers a spinal cord injury that leadsto paralysis requires a miracle to recover.Present medical science is unable to curemany types of spinal cord injuries, in part,because spinal cord cells do not regenerateafter complete organism development likeskin cells do. In the future, a doctor will havethe ability to implant a spinal cord stem cellinto your spine to create new cells that willhave the ability to reverse your paralysis.This manner of therapy is already being usedto treat types of leukemia with increasinglevels of success. Diseased or incompetentblood stem cells are being removed andbeing replaced by newer, more viable stemcells that have the ability to proliferate andheighten the immune system of the patient.

This is just the beginning in applying stemcell technology to the goal of benefitinghumankind.

What happens when a magical cure isdiscovered and a research group begins tocreate embryos for the sole purpose ofharvesting stem cells? One could speculatethat an industry may be created, the likes ofwhich we cannot comprehend at this pointin time. If scientists were allowed to createa supply of stem cells, it would be possiblefor pharmaceutical companies to test drugbased treatments on human cells in a mannernever before thought possible. John F.Lauerman, Stem Cell Debate Focuses onEthics <http://www.masslive.com/newsindex/springfield/index.ssf?/news/pstories/ae915ste. html> (Sept. 15, 2001). That wouldreduce the amount of human trials thatwould be necessary for pharmaceuticaldevelopment projects. Linda Bevington,Stem Cells and the Human Embryo <http:www.bioethix.org/resources/overviews/stemcell.html> (1999).

It is inevitable that the broad issue ofstem cell technology, involving both thedevelopment and the collection of cells,will continue to be a hotly debated topicover the months and years to come. Thegovernment will likely have a say in whatprocesses are legitimate, thereby focusingresearch down a certain path. The U.S.Congress is preparing to hear testimonyfrom both sides of this debate before theybegin to enact legislation. When and if thegovernment enacts legislation, it couldseverely aid or hinder the research processcurrently underway. Government inter–vention may hinder the results gained fromexperimentation if research is limited tospecific areas, but it could also focus effortson important problems that need to besolved. Humankind is just beginning tounderstand the immense benefits thatstem cell technology research can offer. Tolimit research possibilities in this burgeoningarea would be a shame because a vast arrayof knowledge presently lies within the reachof science.

Michael Dirksen (JD’04) is from Shortview,MN. He has a BA inBiology from St. John’sUniversity in Collegeville,MN and plans to practiceIP law upon graduation.

heavily against this process. Fertility clinicsprovide another source of embryos forresearch. The clinics produce multipleembryos for their clients, in vitro, and usethe most promising embryos forimplantation into the uterus. Researchersobtain the surplus embryos that wouldhave otherwise been discarded after awoman becomes impregnated. This hasproven to be a plentiful resource for stemcell collection. In vitro fertilization is atechnology that has enabled scientists toculture multiple embryos. This technologyis beneficial for couples having difficultyconceiving a child, but it also provides aresearcher with freedom to explore embryonicdevelopment. In vitro fertilization allowsa researcher to closely follow embryonicdevelopment and offers them a chance tocollect stem cells at precise moments in thedevelopment cycle.

The U.S. government has announced thatit will not fund any projects that deal withembryonic cultivation in the laboratory forresearch purposes. President Bush hasgranted federal funds to the 60 existingembryonic stem cell lines but has disallowedany further development of embryonic stemcell lines saying that this form of researchshould not “encourage further destructionof human embryos that have at least thepotential for life.” U.S. Government,Embryonic Stem Cell Research <http://www.whitehouse.gov/news/releases/2001>(accessed Sept. 9, 2001). President Bushwent on to state that this research shouldcontinue to promote the sanctity of life“without undermining it.” Id. The governmentwill continue to fund research programs thatuse stem cells from aborted fetuses andembryos that were created for reproductivepurposes. Embryos created for the solepurpose of scientific research will not begiven any federal funding. Id. The NationalInstitutes of Health (NIH), the governmentalbody that controls stem cell research, agreeswith the President on his policy for federalfunding. The NIH believes that federal fundingof stem cell research will open doors for manyother researchers who were previouslyunable to study embryonic stem cells.

The Wisconsin Alumni Research Foundation(WARF) is an influential private player inthe stem cell industry today. They own a

STEM CELLS, from page 7

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I

EXTENSIBLE MARKUP LANGUAGE (XML):AN ATTEMPT TO PUT ORDER TO AN EMERGING MARKETPLACEBY MATTHEW A. FORKNER (JD ’04)

LAWYERING IN IAM PROGRAMSBY VINCE MACRI (LLM ’02)

WHERE THE WEB SERVICESMARKET IS HEADED

MAGINE USING your personal computer,digital cell phone, digital television, orwireless handheld computer to request

from a network, a consolidated statementof your financial accounts from severalunrelated banks, credit card companies andbrokerages. In seconds, one table, containingall of this information and formatted to displayproperly on whichever device you are usingat the time is available to you. Using voicecommands, or just a few keystrokes you cantransfer money instantly from your brokerageaccount to your checking account. You couldeven use the internet to transfer cash fromyour brokerage account to your checkingaccount automatically when it drops belowa certain amount. Brent Schlender, Damnthe Torpedoes? Full Speed Ahead, Business2.0, (July 2000) (Available at http://www.business2.com/articles/mag/0,1640,8042,FF.html)

For such advanced capabilities to beavailable to you, the many companiesinvolved in the above illustration mustfreely share data and information. Todaysuch sharing is not possible because thedatabases involved are made up of manydifferent languages, formats and protocolsmaking the combination or collaborationof the data nearly impossible. Each bankand brokerage firm guards their databasefrom others, prizing it as a valuable asset,and competitive advantage. This thinkingquickly gives way to the realization thatcompanies can derive more benefit fromsharing these databases to create moreefficiency and give more value to theircustomers. The result is that manycompanies are working feverishly to makethis collaborative experience a reality. It isdependent on the adaptation of a standardprogramming language that allows data tobe shared freely and force compatibilitywith one another. Id. This type of collabo–

ration constitutes a new marketplace thatis quickly evolving.

Society is becoming more dependent onweb services. A web service is nothing morethan a database-driven Website whereconsumers come together to use an application(database-driven Website) in a collaborativemanner. Michael Vizard, Developers mustfocus on linking Web services to boost Netcollaboration, InfoWorld (March 16, 200101:01 PM PST) (Available at http://www.infoworld.com/articles/op/xml/01/03/19/010319opvizard.xml). Some of themore well known Web services directed atconsumers are Yahoo!, eBay, and Amazon.com.The problem is that there is no feasible wayto link these Web services to one anotherallowing full interaction among applications.Each Web service is “an island of informationand content unto itself, which defeats that

See XML, page 10

This article relates to intellectual assetmanagement (IAM), a relatively new fieldof opportunity for lawyers (particularlyintellectual property (IP) lawyers), and,broadly, their preparation for and participationin IAM programs.

LEASE CONSIDER the followinghypothetical scenario; your biggest

client (or, for corporate counsel, thecompany CEO) phones your office at 7 p.m.(just as your hand reaches for the doorknob),to ask if you can attend a meeting tomorrowmorning at 8 a.m. sharp. Sure you can andthe subject, says your caller, is “to participateas a member, of the company’s new IAMteam.” Stunned, you call home to say you’llbe late, very late. Then you:

(a) peruse the IAM statute;

(b) read your state and federal circuitIAM cases;

(c) phone your uncle, a U.S.D.C. Judge;

(d) e-mail your law review roommate;

(e) research everything (you should haveremembered) from Professor NermienAl-Ali’s course on IAM.

The correct answer is not (a) or (b) theydon’t exist; not (c) your uncle, the Judge,retired and as an economy measure had hisphone disconnected; not (d) your lawschool roommate who must now charge,even you, $575/hour to research it. It’s (e)that’s correct, so you dust off and open upthe compilation of readings from ProfessorAl-Ali’s IAM course. You find, as ProfessorAl-Ali has taught, that the scope of IAMincludes everything from “knowledge inemployees’ heads and…databases… [to]intellectual property rights, and innovationprocesses.” Your class notes tell you that IAMis a total business management approachdirected to driving business growth anddevelopment and includes measuring/

monitoring, managing and leveragingintangible assets of all kinds, found throughoutthe enterprise, for the purpose of maximumvalue addition and/or extraction. For aneven more detailed methodology, you areled to Professor Al-Ali’s novel CIAM system,which relates to the comprehensive manage–ment of the process and development ofIA’s linked to strategic goals. Finally, yournotes produce references to ICM, the “C”meaning capital. You are informed thatmany companies today face down globalcompetition with intellectual capital, i.e.brains not brawn, valuing informationover infrastructure. Accordingly, the next,advanced, replacing tool for IAM will beICM. After several intense hours of readingyou phone home again to say you’ll be very,very late.

See IAM, page 11

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

fundamental collaborative promise of theInternet.” Id. The initiatives underway willcreate an infrastructure that will enableWeb services to link together and interact.Id. This infrastructure will be based on anew programming language, ExtensibleMarkup Language (XML).

A CASE FOR XML

The Web service “island” that we now knowwill become an “application that exposes itsfeatures programmatically over the Internetor Intranet using standard Internet protocolslike XML. The key to making web serviceswork across the Web is to finally agree toone data format. Many leading corporationsare advocating that the format be XML. “Atthe lowest level, systems need to speak thesame language. In particular, communicatingapplications need to have a set of rules forhow they are going to represent differentdata types and how they are going to representcommands.” Andrew Layman and JohnMontgomery, Web Services, and the .NETFramework, TopXML.com, (Available athttp://www.topxml.com/xml/articles/dotnetintro/). Business to businesstransactions benefit by enabling companiesto transact industry by industry in a muchmore efficient and cost effective manner.XML will simplify building exchangesbecause it will make each company’s inventoryand pricing data universally comprehensible.Chris King, CEO of Utility.com, a companythat helps electric utilities share excesscapacity, concedes “the biggest single barrierto our ability to offer competitively pricedelectricity is the cost, complexity, andreliability of data exchange. With XML, we’rethere.” Damn the Torpedoes? Full SpeedAhead, (http://www.business2.com/articles/mag/0,1640,8042,FF.html).

BENEFITS OF XML

XML is fast becoming the web standard fordata exchange and the preferred languageof electronic business. Wylie Wong, Microsoftto divulge more XML plans, CNET News.com,(July 27, 2001, 5:35 a.m. PT) (Available athttp://news.cnet.com/news/0-1003-200-6694161.html). XML enables softwarecompanies, corporate programmers, andweb developers to create Web services thatcan call or summon specific information ortransaction capabilities from one or moresites and synthesize them into a customized

Web page. Damn the Torpedoes? Full SpeedAhead, (http://www.business2.com/articles/mag/0,1640,8042,FF.html). Adopting XMLas the standard allows websites to displaytheir data in a way that is understooduniversally. This enables information, pulledfrom unrelated sites anywhere in the world,to “spontaneously synthesize” into interactivepages, or collaborative webservices, customizedto a specific person based on their preferences,irregardless of the device being used. XMLis a standardized way of storing data andtext, spreadsheet numbers, pricing lists andemployee records to name a few. It giveseach passage of text a little extra informationto make it readily identifiable by almost anymachine. Id.

SWORN ENEMIES MUST COMETOGETHER TO FACILITATE EXCHANGEIN THE NEW MARKETPLACE

In order for these changes to take place andcreate a standard in the new marketplace,XML must be accepted and adopted by all.This is difficult as you look at a landscapeof technology companies that have historicallybeen archrivals and intensely competitive.Many are realizing the benefit to all, as wellas the necessity of standards and uniformityacross the industry. Microsoft, IBM, Novell,Oracle, Sun Microsystems, Hewlett Packard,Apple and more than 400 other companieshave formed what is known as the WorldWide Web Consortium. It has been formedto be a central body that will agree on oneversion of XML for all parties. Id. Additionally,industries are coming together to establishstandards based on XML. For example thetravel industry is establishing commonstructure for travel, destination, restrictionsand pricing models based on mutuallyagreed XML standards. Microsoft to divulgemore XML plans ( http://news.cnet.com/news/0-1003-200-6694161.html). Directoryvendors are also coming together to providea perfect illustration of how difficult it isfor companies to share data and why sharingis beneficial. The level of communicationpossible through the use of XML is nearlyimpossible today because each companyuses different formats to describe theirproprietary information. Exchanging dataamong directories is key to the future of e-commerce. A standard way to query adatabase, such as by user name, address orpreferences, is key so these data can be usedin web-based applications to identify and

control a users access to applications or createcustom applications for the user. XML isthat standard. Novell is a company that hasannounced their intension to connect Novelldirectory services to other directories throughXML. John Fontana, Novell and Microsoftagree on XML-based standard, CNN.COM(July 14, 1999 Web posted at: 12:29 p.m.EDT (1629 GMT)) (Available at http://www.cnn.com/TECH/computing/9907/14/xml-ent.idg/).

NEW CHALLENGES IN PROTECTINGINTELLECTUAL PROPERTY

All this talk of sharing makes advocates ofintellectual property rights nervous. Thisemerging model will require the opensharing of data and would rely on the factthat “these structured data can be importedand instantly manipulated by softwareprograms and devices that had nothing todo with creating them in the first place.”Damn the Torpedoes? Full Speed Ahead,(http://www.business2.com/articles/mag/0,1640,8042,FF.html). Perhaps this is openingthe door for a lot of uncontrollable piratingof intellectual property. Steps are being takento control access to and monitor use of thedata, but nothing is bullet proof, and weare far from having the answers we need.Databases that have historically beenguarded by individual entities will now berequired to be open to others for sharing,yes with restrictions and controls, but theyare still more vulnerable. This is analogousto the U.S. becoming vulnerable by beingan open and free society; open borders andgreat freedoms are maintained on the beliefthat such a way of life is of greatest benefitto the most people. Similarly, companiesparticipating in this new marketplace maketheir intellectual property more vulnerableto abuse. In both cases, the society or thecompany agree to some increased riskexpecting the benefits to outweighthe detriments.

Matthew Forkner(JD’04) is from Portland,OR. He has a BS inBusiness Administrationfrom the University ofMontana. He plans toexpand on his experience

in the software industry by practicing softIP and corporate law upon graduation.

XML, from page 9

• Wi n t e r 2 0 0 2 E d i t i o n 11

I

As a lawyer you are trained to know how toprotect your client’s (company’s) interests.As a matter of course many business decisionsare made incorporating your advice, whichin turn is based on your command of statutes,and precedent, combined with your experienceand creativity. You are mindful that companyliability is a big part of your responsibilityand will affect your participation on theIAM team. You are also mindful that over-aggressively gathering competitive intelligencemight, possibly, cross over the lines of theEconomic Espionage Act, 18 USC 1331 etseq., and/or the Stolen Property Act, 18 USC2314. So, you prepare for tomorrow’s 8 a.m.meeting keeping the following overview inmind and with the understanding that evenwhile on a management team, for liabilityissues you are ‘primus inter pares.’

IAM bubbled up as a discrete managementfield in or about the early 1990’s. By 2000 itis said to have emerged “as a practice”. Infact, patent lawyer Russell J. Barron, Esq.spearheads what is believed to be the nation’sfirst, law firm (Foley and Lardner, Milwaukee,Wis.) owned IAM consulting business, theINTX Group (part of a larger consortium).IAM consulting is almost always done by amulti-disciplinary team, only some of whomare lawyers. As usual, there are likely to beturf issues. IAM engaged lawyers will likelyrub elbows with company IP counsel deployedto particular business units. According toProfessor Karl Jorda: “…an IP departmentmay have sections aligned with operatingunits, where each attorney/agent handles theentire spectrum of work from processinginvention disclosures…to… litigation andlicensing of cases on his/her docket.”

There is no one-way street to executing anIAM program. The genesis of IAM and itsvarious processes and modes of applicationare a fascinating study in business/legalresponse and managerial diversity. As forwhy a law firm would establish a separate,freestanding group for IAM consulting, itis relevant to answer that question foryourself, at some point. I will return to itshortly. A clue, what kinds of activities

IAM, from page 9

See IAM, page 12

HAGUE CONVENTION CONCERNS ALLINTELLECTUAL PROPERTYBY JOE REARDEN (JD ’03)

NTELLECTUAL PROPERTY right holders and their counsel should be following thedevelopments surrounding the awkward-sounding but critically important HagueConvention on Jurisdiction and Recognition and Enforcement of Judgments in Civil

and Commercial Matters. In June of 2001, negotiators representing 50 countries met inBrussels to prepare a revised draft of the proposed convention. Initiated almost ten yearsago by the U.S. as an attempt to bolster the international enforcement of U.S. judgments,the convention has recently become highly contentious. This is mainly due to the massivewaves of international communication and transactions, often over the Internet andinvolving intellectual property, and its potential to create a tsunami of litigation.

CURRENT CONTROVERSY

Recent media reports have fueled the controversy with nightmare scenarios of acompany’s keystone inventions being stolen and patented in a foreign country. Theterrifying scenario spirals downward with a domestic patent holder having to defendagainst a foreign court’s infringement judgment, which is being enforced against them athome. Non-IP scenarios are equally frightening, such as being sued for libel in a foreigncountry for posting something to the Internet that would be protected as free speech athome. In the U.S. it sounds like a terrible extension of the recent French court caseconcerning the Nazi memorabilia auctions that Yahoo! ended up pulling from its websitesworldwide. The resultant fear is that the Hague Convention would encourage this type ofbehavior and effectively snuff out free speech on the Internet.

HISTORICAL BASIS

Given this bonfire of grievances against the Hague Convention, one might ask what thosenegotiators are even considering. Historically, the proposed convention has engenderedtwo purposes: first, to assure that judgments issued by a court in one country are enforcedby other countries; and second, to establish jurisdictional rules governing transnationallegal disputes. Considering the difficult jurisdiction and enforcement issues that arepresent in every international communication or transaction, it is no wonder thatdivergent views have become explosive under the pressure of recent negotiations.

The current situation is exacerbated by the fact that there are major differences betweenmembers’ laws on many of these issues. For instance, U.S. personal jurisdiction is based ona somewhat murky due process determination of minimum contacts, fair play, andsubstantial justice. This contrasts with other conference members’ more objectiveconsiderations, like the personal domicile of contracting parties under the BrusselsConvention. Secondly, the much less controversial topics of recognition and enforcementare quite similar to U.S. standards, including requirements for the force of res judicata,postponement of enforcement if subject to review, and methods of verification. While theapproach to recognition of foreign judgments is similar under the Brussels Convention, inpractice the enforcement of U.S. judgments remains contentious, principally due to U.S.courts granting outlandish punitive and exemplary damages by European standards. Theproposed convention, however, attempts to assuage this situation by providing a clausethat allows the refusal of recognition or enforcement if manifestly incompatible withdomestic public policy.

U.S. RESPONSE TO THE CURRENT DRAFT

Overall, U.S. response to the 1999 draft of the Convention has not been favorable. Whilesome U.S. businesses are generally in favor of expanding potential enforceability ofjudgments against some foreign defendants, they are concerned about reducing the basisfor claiming jurisdiction over all foreign defendants. Consumer protection groups alsohave voiced concern over the potential to weaken consumer rights, particularly in light ofthe prevalence of “click-through” contracts on the Internet. In addition, U.S. free speech

See HAGUE, page 16

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does every law firm’s professional liabilityinsurance cover?

The terms “intellectual assets” are, for thepurposes of this discussion, an oxymoron.Property principally derived from theintellect and appearing as an asset on acompany balance sheet, (which accountsfor the book value of such property) doesnot exist. Intellectual assets are intangibles,accounted for, illusively, in “good will.”They do not appear on balance sheets and,in turn, intangible assets are not accountedfor in a company’s book value. At the sametime the market value (outstanding sharesmultiplied by share price) of virtually everycompany whose name you recognize (e.g.GE, Royal Dutch Shell, Microsoft, Exxon,Coca-Cola, Intel, Merck), dwarfs their bookvalues and does so at ratios of 20 (or more)to 1. This is mainly due to the capital market’sperception of the value of each company’sintangible assets. While intangible assetscan include facts such as customer base,customer loyalty and distribution networks,the driving force behind intangibles isintellectual assets including all those withwhich you are familiar; patents, trademarks,copyrights, trade secrets, etc., i.e. theintellectual property (“IP”) group which isclearly, legally protectable. As an IP lawyeryou’re a natural recruit to an IAM team.A good part of IAM is IP and you’ve beentrained to prepare, prosecute, maintain andprotect IP, no problem, slam dunk. You’rehalf right.

IAM may not be a problem for you, but itis not a slam dunk. The new tool in yourtoolbox is an entrepreneurial lever, notexactly a tool you’ve been trained to use.The heart of IAM is to leverage the company’sintangibles so as to add to and extract valuefor growth. That having been done, percep–tions in the capital markets result in increasedprice/share and ipso facto increased totalmarket value for your client company. Youwill be using that lever while interfacing withbusiness executives and managers who knowthat the ratio of intangible to tangible assets(according to the Brookings Institute)changed from 20:80% in 1978 to 73:27%in 1997. Driving market value by leveragingassets is core business management domain.You e-mail home adding another “very” toyour late return prognostication.

IAM, from page 11 Leveraging is legal exploitation. While lawyersare comfortable with the legal part of legalexploitation there is an understandableprofessional sensitivity to exploitation. Atthe swashbuckling end of the spectrum, “doit, let ‘em sue us” is not exactly the style ofmost corporate or outside counsel. However,on a practical, balanced level, protectingyour client’s interests often involves proactive,value-added legal advice. While there is anatural and reasonable tension betweenlawyering and leveraging/managing, it’sdone every day. Just keep in mind that, atthe end of the IAM team’s day, you are thelawyer and the responsibility to protect yourclient endures.

As IAM matures to the status of ordinary andcustomary business procedure, query whetherofficers’ and directors’ fiduciary duties willextend to informed business judgmentsregarding intangible assets, only part of whichare intellectual property. This is clearly arhetorical question. It’s only a matter of timeuntil IAM plays a role in securities andfiduciary duty litigation. The issues willlikely be knotty. For example, if much ofintellectual property is defined as “wastingassets”, how nimble must be officers anddirectors in managing those assets? Is therenot a correlative management urgency affixedto dealing with “wasting assets?” If IAMincludes virtually all company knowledgeand information, how much of that canpossibly be the responsibility of officersand directors? And should and can officersand directors know the value of companyintellectual assets? Is your answer differentupon recall that most companies run assetratios of about 75:25 (intangible to tangibleassets)? Will there not emerge a natural“disclosure” tension between the benefits ofcorporate transparency and good investorrelations on one side and reasonable needto keep some intangible assets (or partsthereof) undisclosed in order to protectcompetitive processes and opportunities?And referring to queries noted above, arelawyer members of an IAM team to be deemedofficers or lawyers from the standpoint of dutyof care, privileged confidentiality andprofessional liability insurance coverage?

The best one word piece of advice to lawyersengaged in IAM processes, is nimbleness.

Our training in critical thinking, analysis,issue identification, synthesizing legal prin–ciples to solve problems and communicatingis perfect for contributing to IAM. Knowledgeof the law distinguishes us from businessexecutives, managers, scientists, engineersand creative artists. The working lawyeris invariably cross-trained by his clients’businesses and can spot good opportunities.Russell J. Barron, Esq. gives a “nimble”example: “Hardly any conventionally trainedbusiness person would know that the claimsof a U.S. patent can be expanded in the twoyears following issuance (broadening reissue).But a creative IA trained lawyer would…create systems and attitudes…to takeadvantage of the (broadening) opportunities.”

IA is a comprehensive term. According toProfessor Bill Hennessey, who contributesthe following version of IA classification:“Intellectual property comes into existencethrough legal protection. As a firm beginsto mine information about how it identifies,creates and exploits a portfolio of intellectualproperty through licensing, mergers andacquisitions, strategic alliances, finance,and even donations, it begins to turn itsintellectual properties into intellectualassets. But it is only when a firm creates athorough and comprehensive process foridentifying and measuring intellectualassets throughout its business operations,customer relations, human resources, andknowledge management that it can be saidto be managing its intellectual capital.”

IAM is distinct from, but, at times, umbrellasover intellectual property management. Anoteworthy example of the latter is IBM’s“patent factory” exploitation of its ownunused and other patents, licensed-out atover $1 billion per year, up from $30 millionin 1990. If we consider that this is only onecompany, exploiting one kind of IAM, thesize of the umbrella is not small. Anotherexample is Texas Instruments, which is saidto earn more from technology licensingthen from manufacturing. Other IAMplayers are, GE with its Six Sigma processthat is directed to developing and deliveringnear-perfect products and services, and3M’s system of granting managers 15% oftheir time to pursue any project they wish,which is coupled with a corporate mission

See IAM, page 13

• Wi n t e r 2 0 0 2 E d i t i o n 13

Uto seed innovation so that 25% of 3M’s salescome from products introduced in the mostrecent five years. The Swedish company,Skandia weighs in with the Skandia Navigatorwhose basic principle is that human capital(focus) drives future performance. Thereare many other IAM programs on-going inmany industries.

IAM is as variable as the companies,industries and markets it addresses. Theliberation of tacit and express knowledge,intellectual processes, know-how, businessprocesses, and means by which to adaptto market changes may all be consideredelements of IAM. Seeding innovations,identifying and leveraging assets andcompetitive intelligence are all part ofIAM. As a function of variability, it ishighly unlikely that IAM will be restrictedto a fixed number of formats. There are lotsof IAM models to follow and approaches tometrics with which to wrestle, but, inevitably,the special attributes and commercialculture and market environment of yourclient will draw a blueprint for an IAMeffort that is likely to produce good results.Nothing is set in stone, you’ll need to belawyerly and nimble and you’ll need to tapinto the dynamic IAM literature, much ofwhich is literally current. For example, thetools for intellectual asset valuations areundergoing current development by forensicintellectual asset valuation specialists andlicensing professionals. The LicensingExecutives Society (LES) will publishpreliminary standards for IA valuation thisfall, 2001.

The birds are chirping. You turn off theoffice lights and head home secure in theknowledge that you know enough to knowthat you don’t know enough. Then againyou’re a lawyer and you know how to dealwith uncertainty. You’ve got about threehours before the 8 a.m. meeting.

Vince Macri (LLM ’03) received his lawdegree from the University of Virginia.He practiced law for more than 20 years

and worked as abusiness executive inthe medical clinicallaboratory industry forover 10 years beforereturning to law schoolat Pierce Law as anLLM candidate.

ELECTRONIC EVIDENCEBY SIGRID TEJO (JD ’03)

NTIL RECENTLY, the rules of discovery relating to written communication werewell established. With advancements in computer-technology and the advent ofcomputer-based communication, discoverable evidence is no longer restricted to

tangible mediums, but can also be found in electronic forms. The Nielson/Net RatingsReport (2000) estimated the number of email users in the U.S. alone is around 122.6million and by the year 2005, North Americans will send over 18 billion email messages aday. INFOWORLD (September 25, 2000). While rapid advancements in computer technologycontinue to change the nature of communication, courts have recently moved towardsadmitting electronic evidence at trial. The question now posed continues to be: How dolawyers properly admit and authenticate electronic evidence at trial? This article discussesthe trend to include electronic evidence in the discovery process, what is discoverable andhow lawyers are currently able to use electronic evidence at trial.

Traditionally, documentary evidence was tangible, i.e. a printed piece of paper. Documentaryevidence however, is no longer just limited to the information found on that piece of paper.Information is now available in electronic form, opening a new venue in the law andrequiring changes in the old rules to address this new development. William Decoste,Sender Beware: The Discoverability and Admissibility of E-Mail, 2 Vand. J. Ent. & Prac. 79,80 (2000). Despite being an intangible form, the “general proposition found in most caselaw is that electronic [evidence] is governed by the same rules and framework as papermaterial.” Id.

In 1970, the Advisory Committee realizing the inadequacy in the existing discovery rules,saw a need to revise the Rule 34(a) Federal Rules of Civil Procedure to address under whatcircumstances litigants could discover electronic information. Christine Sgarlatta Chungand David J. Byer, The Electronic Paper Trail: Evidentiary Obstacles to Discovery andAdmission of Electronic Evidence, 4 B. U. J. Sci. & Tech. L. 5, 26 (1998). The amendmentto Rule 34(a) of the Federal Rules of Civil Procedure changed the term “document” toinclude “data compilations from which information can be obtained, translated, if necessary,by the respondent through detection devices into a reasonably useable form.” Id. Not untilrecently, however, has computer data become a prevalent subject of discovery, mainly becauseof the advances made in the ability to process the electronic data. Kimberly D. Richard,Electronic Evidence: To Produce or Not to Produce, That is the Question, 21 Whitter L. Rev.463, 471 (1999)(citing, Susan J. Silvernail, Electronic Evidence: Discovery in the ComputerAge, 58 Ala. L. 176, 177 (May 1997).

PRODUCTION OF ELECTRONIC EVIDENCE—WHAT IS DISCOVERABLE?

Historically, the idea that electronic evidence could be discoverable was hard to imagine.This was true for several reasons: (1) electronic evidence is not tangible, therefore no onewould want it; (2) the electronic information could be hidden on the computer orencoded; and (3) the electronic information could be easily discarded. Richard, 21 WhitterL. Rev. at 470 (citing Joey Frazier, Electronic Sleuthing: John Jessen’s Evidence DiscoveryEnterprises, Law PC 1 (Aug. 15, 1993)). However, despite these beliefs, courts beganordering parties to produce electronic evidence during the discovery process.

Daewoo Electrs. Corp. v. U.S, 650 F. Supp. 1003, 1005 (Ct. Int’l Trade 1986) was the firstcase to address the discoverability of electronic evidence. The Daewoo court acknowledgedthe “novelty” of electronic technology and “affirmed the general policy that informationwhich is stored, used or transmitted in new forms should be available through discoverywith the same openness as traditional forms.” Id. at 1006. The court also found that the“use of new forms of technology should assist in avoiding compliance with discovery

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orders simply because of “excessivetechnical distinctions…[i]t would be adangerous development in the law if newtechniques for easing the use ofinformation become a hindrance todiscovery or disclosure in litigation.” Id.

Despite the efforts of both the AdvisoryCommittee and the courts, two generalmisconceptions still exist regarding thediscoverability and admissibility of electronicevidence. Much of the legal confusion isbased on the idea that: (1) once electronicevidence is deleted it is no longer retrievableand (2) that since the information is storedin electronic form, privacy rights, much likepersonal mail, protect it. Decoste, 2 Vand. J.Ent. & Prac. at 81. In reviewing the case law,however, courts have broadly applied thediscovery rules in relation to electronicmaterial making these misconceptions nolonger valid. Id.

A letter can be touched, passed around,photocopied and enlarged. Being tangible,a letter possesses a reality in the mind of thedrafter. Email and data, on the other hand,are intangible. Email cannot be touched orheld (unless printed). Electronic evidencedoes not possess the qualities that make it“real.” Thus, “unlike its traditional writtencounterpart, people often use email [electronicsources] to say things they would nevermemorialize in writing…this is often due tothe users misperception that email [electronicevidence] is impermanent.” Richard, 21Whitter L. Rev. at 466 (citing Gregory M.Bergman, et.al. The Electronic Smoking Gone,6, 7 (unpublished manuscript, on file withWhitter Law Review). Therefore, “withchanging discovery rules, rapid accumulationof electronic data, growing and uncontrolleduse of electronic mail (email), and increaseduse of sophisticated backup and archivesystems, the problems associated with theadmissibility of electronic evidences islikely to intensify.” Id. at 464-65.

USE OF ELECTRONICEVIDENCE AT TRIAL

Even though a photograph may be wortha thousand words, without the properfoundation or authentication, the courtcannot accept that photograph as evidence.By laying the proper foundation and

providing authentication, such as anunaltered negative or the person whotook the photograph, litigants have beenable to overcome the problems with earlyforms of electronic evidence. However,with the continued advances and growingsophistication of the Internet, lawyersmust continue to overcome hurdles toget electronic evidence admitted at trial.

HEARSAY AND THE BUSINESSRECORDS EXCEPTION

Rule 801(c) of the Federal Rules of Evidencedefines hearsay as “a statement, other thanone made by the declarant while testifyingat the trial or hearing, offered in evidenceto prove the truth of the matter asserted.”Even “electronic records that contain theassertion of a person, and are offered to provethe truth of the matter asserted, containhearsay.” Searching and Seizing Computersand Obtaining Electronic Evidence inCriminal Investigations, Computer Crime andIP Section, Criminal Division, 189 (March2001). When evidence needed at trial containshearsay, it becomes necessary to fit thatelectronic record within a hearsay exception,Rules 803-807 of the Federal Rules ofEvidence. The most commonly used exceptionfor electronic evidence is the businessrecords exception.

U.S. v. Russo, 480 F.2d 1228 (6th Cir. 1973)is one of several cases that began to lay thefoundation for the admissibility of electronicmail under the business records exception.With the popularity of computers and theease of using computers to maintain businessrecords and documents, the courts had todecide whether “there was any qualitativedifference, for evidentiary purposes, betweencomputerized business records and datarecorded on paper.” Decoste, 2 Vand. J. Ent.& Prac. at 85. If electronic evidence is to beoffered at trial for the truth of what it asserts,proponents of such evidence must overcomea hearsay challenge; failure to do so willlikely result in the loss of valuable evidence.Anthony J. Dreyer, When the Postman BeepsTwice: The Admissibility of Electronic MailUnder the Business Records Exception of theFederal Rules of Evidence, 64 Fordham L.Rev. 2285, 2310 (1996).

In Strauss v. Microsoft Corp., 1995 WL326492 at 4; 69 Fair Empl. Prac. Cas. (BNA)1576, the plaintiff sought to admit emailmessages that were both embarrassing and

potentially damaging to Microsoft. Throughdiscovery, the plaintiff obtained electronicmail in which her supervisor sent messagesto other staff members containing sexualremarks and inappropriate sexual referencesregarding the female employees. Id.

Microsoft objected to the admission ofthese damaging email messages on the basisthat “the messages were irrelevant, unfairlyprejudicial to Microsoft and would confuseand mislead the jury.” Dreyer, 64 FordhamL. Rev. at 2299 (citing Strauss v. Microsoft,1995 WL 326492 at 4). The court, however,admitted the email messages and “in sodoing, the court treated electronic materialas indistinguishable from other forms ofevidence, at least with respect to basicadmissibility questions of relevance andprejudice.” Decoste, 2 Vand. J. Ent. & Prac.at 86. The decision by the Strauss court“held that email is both discoverable andadmissible in civil cases, indicating thatemail will generally be analyzed under thesame rules and framework as paper andother non-electronic communications.” Id.

In U.S. v. Ferber, 955 F. Supp. 90 (D. Ma.1997), the government was confronted withthe hearsay objection when it sought toadmit incriminating email messages underRule 803(6) of the Federal Rules of Evidence,laying a foundation that the printout ofthe message was authentic and accurate.The government proffered to the courtthat it was the “defendant company’spractice to send email messages to co-workers immediately following an importanttelephone conversation with a client andtherefore would qualify under the businessrecords exception.” Decoste, 2 Vand. J. Ent.& Prac. at 92. The court, however, concludedthat this foundation was insufficient towarrant admission of the email as a businessrecord exception because “while it mayhave been routine business practice to sendsuch messages, the court held that it was notenough and the plaintiff had to also provethat the company required the maintenanceof such records.” Id.

By admitting hearsay evidence, a court allowsa litigant to avoid three fundamental deviceswhich maximize the accuracy of testimonybefore the jury: “cross-examination ofwitnesses who testify at trial, the oath

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administered to witnesses before they testify,and the opportunity for the jury to observethe demeanor of the testifying witnesses.”Dreyer, 64 Fordham L. Rev. at 2302 (citingCalifornia v. Green, 399 U.S. 149, 154 (1970)).Cross-examination gives the jury theopportunity to see any “insincerity andperhaps even faulty perception and memoryon the part of the witness.” Dreyer, 64Fordham L. Rev. at 2303 (citing, EdmundM. Morgan, Hearsay Dangers and theApplication of the Hearsay Concept, 62Harv. L. Rev. 177, 88 (1948)). Even whenthe court admits hearsay testimony, cross-examination of the hearsay declarant stilldoes not remove any of the hearsay dangers.Id. (citing California v. Green at 154 (1970)).Sometimes cross-examination is the onlychallenge available to the court or jury tootherwise accepting a statement as fact, andthe elimination of cross-examination caneasily lead the jury to an unjust conclusion.Additionally, the fear of perjury chargesgenerally ensures the accuracy and honestyof testimony, however, out-of-court statementsare not under oath, and declarants are notsubject to perjury charges. Id. (citing Bridgesv. Wilson, 326 U.S. 135, 153 (1945)). Byeliminating the threat of prosecution forperjury, there is no longer a safeguard toensure the truth of the testimony. Finally,out-of-court statements prevent the juryfrom being able to assess the characterand integrity of the declarant to make adetermination as to the accuracy of thetestimony. Id. (citing Mattox v. U.S., 156U.S. 237, 242-43 (1895)).

As mentioned earlier, one of the morecommon hearsay exceptions used to admitelectronic communication is the businessrecord exception. The business recordsexception is codified as Rule 803(6) of theFederal Rules of Evidence and embodies theprincipals of necessity and trustworthiness.Id. at 2304 (citing Christopher B. Muellerand Laird C. Kirkpatrick, 4 Federal Evidence,s 444, at 486 (1994)). “The necessity for theexception arises from the fact that mostbusiness records are often composite[s] ofinformation gleaned from many sources.”Id. Since it would require many witnessesto verify the information from the varioussources, the business records exception

eliminated the “need for courts to taketestimony from multiple witnesses, eachof whom would add only narrow points onthe matters asserted within the hearsaydocument.” Id. The second element, trust–worthiness, stems from the practical needin business to depend upon the accuracy ofthe business records to compete effectivelyand from the internal checks and balancessystem in the business community which“assure[s] a kind of expertise and reducerisks of mistake” in business records. Id.Although it would seem that most businessrecords are maintained for self-interestreasons, Rule 803(6) of the Federal Rules ofEvidences allows the court to use discretionto exclude business records if their originsindicate lack of trustworthiness.

A piece of evidence must have five elementsto qualify as a business records exception.Id. at 2305 (citing Mueller and Kirkpatrickat § 445). The first element under Rule 803(6)of the Federal Rules of Evidence requires thatelectronic evidence be the type of informationor record made during the course of a“regularly conducted business activity.” TheFederal Rules Committee wanted to ensurethe trustworthiness of business records andtherefore, records made outside the courseof regular business activities lacked sufficientguarantees of trustworthiness. Id. (citingH.R. Rep. No. 650, 93d Cong. 2d Sess. (1974),reprinted in 1974 U.S.C.C.A.N. 7051, 7087).“If…the supplier of the information doesnot act in the regular course, an essential linkis broken.” Id. at 2306 (citing the AdvisoryCommittee’s notes on Rule 803(6) FederalRules of Evidence).

Secondly, Rule 803(6) of the Federal Rulesof Evidence states that the business mustmake the record as part of its “regular practice.”“The rationale for this requirement is similarto the “regular course” requirement; a recordthat is made on a regular basis is likely tobe more accurate, and hence, more trust–worthy.” Id. (citing 2 McCormick, OnEvidence, 286 (4th ed. 1992)). The FederalRules of Evidence does not define “regularpractice,” however the courts have developedits own interpretation. See U.S. v. Grossman,614 F.2d 295, 297 (1st. Cir. 1980) (findingthat a catalog, printed only once a year,satisfied the “regular course” requirementunder Rule 803(6)); Rosenberg v. Collins,

624 F.2d 659, 665 (5th Cir. 1980) (computerdata compilations…should be treated asany other record of regularly conductedactivity when admitting computer-basedrecords of cash transfers).

The third requirement under Rule 803(6)is that the record must have been madeby a “person with knowledge” of theinformation—“[t]hat is, the informationrecorded must have originated with someonewho had first-hand knowledge thereof.” Id.at 2306 (citing, White Ind. v. Cessna AircraftCo., 611 F. Supp. 1049, 1059 (W.D. Mo.1985)). Many courts have broadly construedthis requirement. For example, the personwho physically makes the record need nothave first-hand knowledge of the informationcontained within the record. See U.S. v.Moore, 923 F. 2d 910 (1st. Cir. 1991). In U.S.v. Zapata, 871 F.2d 616, 625-26 (7th Cir.1989), the Court found that the personalknowledge requirement was satisfied whentestimony of an individual, who was notacting under a business duty to preparethe record, but merely verified that it wasprepared by someone who was acting undera business duty was used to enter businessrecords. Dreyer, 64 Fordham L. Rev. at 2307.

Records must also be made “at or near thetime” the information was obtained. Thisrequirement has been subject to somewhatliberal interpretation. “No bright-line rulegoverns what is considered timely, and courtsare free to exercise discretion in evaluatingthe facts of each case.” Id. (citing MissouriP. R.R. v. Austin, 292 F.2d 415, 423 (5th Cir.1961)). The Seventh Circuit, in Wheeler v.Sims, 951 F.2d 796, 804 (7th Cir. 1992),upheld the admissibility of a record madeeleven days after the events that it reportedhad transpired. However, the First Circuit,in Hiram Ricker & Sons v. Students Int’lMediation Soc., 501 F.2d 550, 554 (1st Cir.1974) excluded records made one weekafter the information contained thereinwas first reported. In the case of computerrecords, time may not be a factor, as computersystems make records contemporaneouswith an event. Likewise, printouts createddays after a transaction could still becontemporaneous if the data was electron–

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ically stored at a prior time. Special attentionwill be necessary for the courts to fashion adefinition of “timely” in computer report cases.

The fifth element, “the record must beaccompanied by foundation testimony,” wasaddressed by the Ninth Circuit in U. S. v.Catabran, 836 F.2d 453, 457-58 (9th Cir. 1988).In Catabran, the court admitted under thebusiness records exception computer-generated ledgers, inventory, and payrollrecords. Dreyer, 64 Fordham L. Rev. at 2309(citing Catabran at 456-58). In its analysis,the court noted that “it is immaterial thatthe business record is maintained in acomputer rather than in company books,”provided that the proponent of the evidencelays a proper foundation. Id. (citing Catabranat 457). Additional special attention will benecessary for the courts to fashion standardsapplicable to the reliability of computerself-generated reports.

Foundation issues and hearsay requirementsall attempt to deal with the spectrum ofhuman error in reporting second handinformation. If the introduction of computerrecord keepers removes the element of error,new rules may need to be promulgated sothat the assumption of human frailty is nottransferred to computer technology.

AUTHENTICATION AND THERELIABILITY OF COMPUTERINFORMATION

The issue of authentication of electronicinformation was first addressed fifteen yearsago. In 1986, Rudolph J. Peritz, posed thequestion: should courts continue to infertrustworthiness simply from the traditionalelements of the “shop-book rule,” or shouldproof of computer system reliability constitutepart of a more comprehensive foundationfor qualifying business records? Rudolph J.Peritz, Computer data and Reliability: A Callfor Authentication of Business Records underthe Federal Rules of Evidence, 80 Nw. U. L.Rev. 956, 957 (1986). In the year 2001, thequestion remains unanswered, however, thetrend seems to be that “computer outputshould be qualified like any other businessrecord, despite the fact that computer systemsstore, retrieve and manipulate informationin ways significantly different from earlieror manual systems.” Id. at 958.

Federal Rules of Evidence 901(a) states:“admissibility is satisfied by evidence

sufficient to support a finding that thematter in question is what its proponentclaims.” In other words, when a lawyerintroduces a computer record at trial, thelawyer must establish exactly what thatrecord is and what it will help to prove.Searching and Seizing Computers andObtaining Electronic Evidence in CriminalInvestigations, Computer Crime and IPSection, Criminal Division, 184 (March2001). In addition, Rule 803(6) of the FederalRules of Evidence requires that testimony ofthe custodian of the information or someother qualified witness before admitting thedocument into evidence. In U.S. v Moore,923 F.2d 910, 915 (1st. Cir. 1991), the Courtreasoned that the person testifying did nothave to be a computer expert. The persontestifying merely needed to be someonewho had knowledge of the relevant factsbecause “such testimony establishes theregular practices and procedures surroundingthe creation of the records, the very elementsthat are necessary for a finding of trust–worthiness.” Dreyer, 64 Fordham L. Rev. at2307 (citing U.S. v. Wables, 731 F.2d 440,449 (7th Cir. 1984)).

Courts are not likely to refuse to admitelectronic evidence at trial simply becausethe defendant alleges, with nothing more,that the evidence had been tampered withand is therefore untrustworthy. See U.S. v.Bonallo, 858 F.2d 1427, 1436 (9th Cir. 1988).However, the mere allegation of tamperingor that the evidence is untrustworthy goesto the weight of the evidence, and not toadmissibility. Id.

In the case of U.S. v. Briscoe, 896 F.2d 1476,1494 (7th Cir. 1990), the court held thatchallenges to the reliability of computergenerated records can be overcome by thegovernment, if sufficient facts to warrant afinding that the records are trustworthy arepresented, and the opposing party is affordedan opportunity to inquire into the accuracythereof. Searching and Seizing Computers andObtaining Electronic Evidence in CriminalInvestigations, Computer Crime and IPSection, Criminal Division, 187 (March2001). This finding is consistent with Rule901(b)(9) which allows the admission of“evidence describing a process or systemused to produce a result and showing thatthe process or system produces an accurateresult.” Likewise, in Moore, electronic

advocates warn that achieving the conventionwill lead to Internet-based speech restrictionsaccording to the stringent standards ofmember states like China, Morocco, or Turkey.However, some intellectual property rightsholders see another side to the convention,namely the potential for effective worldwideinjunction relief against foreign pirates.

RECENT IP NEGOTIATIONS

On June 13, 2002, a working group metas part of the larger Brussels diplomaticconference to discuss Article 12—ExclusiveJurisdiction and its implications for IP.On one side, some participants lobbied tomaintain the current provision undersubsection 4, which maintains exclusivejurisdiction for validity and infringementactions related to deposited or registeredrights (typically, patents and trademarks)in the place of registration, but exceptingcopyright and neighboring rights even ifregistered. On the other side were mainlyEuropean advocates for the inclusion ofnon-exclusive jurisdiction for infringementactions. Also debated was whether Article12 subsection 6 could provide an exceptionto the registered rights exclusion, if arisingas an incidental question. But such con–sideration was rebutted as derogation fromthe territorial nature of registered rights.

CONCLUSION

The Hague Convention is a crucible inwhich traditional associations are brokendown. For example, media and entertainmentinterests are pitted against free speechadvocates. While big software companiesare quietly in support of the convention,big ISPs are vocally against it. Getting pastthe horror stories of foreign courts and theclash of foreign cultures, it may be helpfulto consider the opportunity presented bythe underlying structural change and touse the proposed convention to harmonizetransnational jurisdiction and clarifyjudgment enforcement procedures.

Joe Rearden (JD ’03)has a B.A. in SocialSciences, with aconcentration inEconomics, from theUniversity of St. Thomasin St. Paul, MN.

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T

From the Editor

THE THIRTY-YEAR LASER PATENT WARI

WO RIVETING books hit the bookstores recently. Both are rival accounts of whoinvented the laser and are hard to put down. How the Laser Happened—Adventuresof a Scientist (Oxford University Press, 1999) by Charles H. Townes is one and Laser:

The Inventor, the Nobel Laureate, and the Thirty-Year Patent War (Simon Schuster, 2000) byNick Taylor is the other one, in which the inventor is Gordon Gould and the Nobel Laureateis Charles Townes. Nick Taylor tells the story of Gould’s “flash-of-genius” conception of thelaser in 1957 and the long battles against the “double-phalanx of big government and bigindustry” to obtain several basic laser patents. For decades industry scoffed at the notionthat Gould was a true laser pioneer. He was considered an impostor, who as a ColumbiaUniversity graduate student had stolen the laser concepts he patented from Townes, hisprofessor. Townes, the inventor of the maser, the now forgotten forerunner of the laser,received the Nobel Prize for his invention. However, by claiming in his book that the laseris but one example of a maser, Townes implies that he won the Nobel Prize for his role inthe invention of the maser and the laser. The only prize Gould ever won for his pioneeringlaser inventions was the Inventor-of-the-Year Award from the Intellectual Property Owners(IPO) in 1978. However, it is Gould who has been reaping millions in royalties from severalhundreds of licensees and the royalty stream will continue to flow well into 2005, when thelast of this commercially-important laser patents expires.

II

The licensing of the Gould laser patents to every laser manufacturer is an equally fascinatingstory that I never tire of recounting in my IP licensing classes and lectures, especially sinceI had some personal involvement. It is a case history to end all case histories. It is a timeless,priceless masterpiece of win/win licensing. It is proof positive that intractable controversiescan have perfect win/win outcomes. Based on a creative licensing scheme, reluctant small lasermanufacturers were lured into the fold, when the basic Gould patents were still in litigationand when the equally reluctant big manufacturers were sworn holdouts, who believed it wasthey who created the laser industry with thousands of subsequent patented improvementinventions. The final holdouts were the two biggest laser manufacturers, at the time, namely,Spectraphysics Corporation and Coherent Corporation. Spectraphysics was owned in thelate eighties by Ciba-Geigy Corporation (now Novartis), my then employer. But even afterall prosecution in the U.S. Patent Office and all appeals in courts as well as all infringementlitigation had ended in Gould’s favor, Coherent and Spectraphysics were still standing pat.Spectraphysics, for instance, was inexplicably relying on a legal opinion from outside counselthat the Gould patents were invalid and unenforceable, due to defenses based on non-infringement, obviousness over prior art, non-enablement, indefiniteness, laches, estoppeland inequitable conduct.

III

According to the jacket of Laser: The Inventor, The Nobel Laureate, and the Thirty-Year PatentWar by Nick Taylor, who also authored the memoirs of former astronaut John Glenn, “Laseris Gould’s story—a grand story of technology and law—and an eye-opening look at thepatent process in America, the nexus of the worlds of business and science.”

The idea of the laser—Light Amplification by Stimulated Emission of Radiation—“struckGould with the force of revelation” in the middle of one night in November 1957. He wasa perennial graduate student in physics at Columbia, struggling to finish his Ph.D. thesison amplifying microwaves but lost interest therein after his laser conception.

Gould worked feverishly for three days filling a notebook with his calculations for harnessingthe power of light waves. On the third day, he had the foresight to have his notebook

evidence was admitted where “the ordinarybusiness circumstances described suggesttrustworthiness, at least where absolutelynothing in the record in any way impliesthe lack thereof.” Id. (citing U.S. v. Moore,923 F. 2d 910, 915 (1st Cir. 1991)).

Notably, once a minimum standard oftrustworthiness is established, questionsas to the computer records’ accuracy arealmost always eliminated. U.S. v. Cabran,836 F.2d 453, 458 (9th Cir. 1988). Issues ofreliability “resulting from…the operationof the computer” and not the system itselfaffect only the weight of the evidence, notits admissibility. Searching and SeizingComputers and Obtaining Electronic Evidencein Criminal Investigations, Computer Crimeand IP Section, Criminal Division, 187(March 2001). Thus, the admissibility ofelectronic evidence is not affected by thefact that a computer generated the evidence,but is raised only when the foundation ofthe computer program’s reliability is notproperly made.

CONCLUSION

The availability of electronic evidence causes“new challenges, burdens and potential newabuses to arise during the discovery process.”William J. Ruane and James K. Lehman,Running the Gaunlet: Responding to Discoveryof Electronic Documents, 2 (February 22, 2001).

The courts are in a constant position ofcatching up with emerging technology. Untilrecently they have cut and paste together abody of law designed to deal with technologythey may not fully understand. Until thejudiciary and the Bar act in a proactivemanner to educate themselves as to therealities and misconceptions of computercommunication technology, “the problemsand risks associated with electronic discoverywill continue to multiply as technologicaladvances provide for ever more novel waysto “store, organize and transfer electronicinformation.” Id. at 14.

Sigrid Tejo (JD ’03)from St. Thomas, VirginIslands has a MA inPolitical Science fromStetson University. Sheplans to practicecriminal law in theVirgin Islands upongraduation.

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LASER WAR, from page 17 IV

On the licensing front, it was not until Patlexdevised ingenious licensing schemes thattheir objectives of licensing all laser manu–facturers and users without litigation, wererealized. Patlex acquired an 80% owner–ship in the Gould patent rights (with Gouldretaining 20%), when it was formed toexploit and license them.

What were the ingenious license terms thatPatlex offered to laser manufacturers beforetheir biggest competitors, Spectraphysicsand Coherent, were brought to their knees?Patlex inserted into their standard agreementcarrying a five-percent royalty rate—whichhappens to be the most commonly usedroyalty rate in patent licensing—a step-up orascending royalty rate, starting at 2%, goingto 3-1/2% and settling at 5%. This increasingroyalty rate did not depend on sales volumebut rather on whether Spectraphysics orCoherent were either sued for infringementor licensed by Patlex. When one of thesecompetitors was either licensed or sued, therate increased to 3.5% and the final rate of5% became effective, when both competitorswere either licensed or sued. This reasonable-royalty scheme reduced significantly thecompetitive disadvantage vis-à-vis the twoholdouts and removed all infringementrisks and thereby provided what might becalled peace of mind. These licenses alsocontained a most favored licensee (MFL)clause to assure licensees that if later licensees,in particular Spectraphysics and Coherent,received better money terms, such termswould be passed on to all earlier licensees.A license with step-up royalty and MFL termswas clearly embraceable by laser manufacturersand the Patlex licensing drive acceleratedand succeeded as all laser manufacturers,except for Spectraphysics and Coherent,became licensees in short order.

And what did it take to entice these lastholdouts? The breakthrough came, first withCoherent, followed closely by Spectraphysics,with the negotiation of volume breakpoints(or descending royalty rates), at which theroyalty rates were to be reduced from thestandard rates as sales volume increased, asfollows: $0-$15 million, 5.0%; $15-$20million, 3.0%; $20-$25 million, 1.0%; and$25 million and above, 0.5%. Spectraphysics’sales volume was far in excess of $25 millionMost licensees paid a 5% royalty, since most

licensees had U.S. sales under $15 million.Spectraphysics’ effective royalty rate was onlyabout 1.7% due to the volume-breakpointscheme. Since Spectraphysics furthernegotiated caps on royalties and a lump-sum payment on “present value” terms, theirtotal royalty obligations were discharged by acheck in an amount of less than $10 million.This contrasted very favorably with litigationcost exposure of over $5 million, and, in caseof defeat, a total royalty exposure of about$50 million.

Interestingly, the former astronaut FrankBorman, who had become the Chairmanof Patlex, came to Spectraphysics to settlethe matter and when he entered the conferenceroom, sat down, looked around with a bigsmile and stated that within the hour,Spectraphysics would be a licensee, nobodybelieved him, of course. But when he finishedoffering the volume-breakpoint scheme, itwas a done deal. There was jubilation aroundthe table. It was a true win/win resolution:for Patlex, the final holdout was licensedand for Spectraphysics, it was an offer theycould not refuse.

The same volume-breakpoint clause was,of course, offered to all existing licensees inaccordance with the MFL provision of thelaser licenses.

Although other licensees insisted on gettingthe “same effective rate” under the MFLclause rather than just the “same terms,” nolitigation ensued about this issue. In fact,when Amoco was allowed to partially “pay-up” their license and this deal was offeredto other licensees, there were no takers.

V

In a Washington Post article on “Who inventedthe laser?” with the by-line “A new bookmakes the case for a Columbia graduatestudent as the father of the revolutionarytechnology,” Michael Riordan, physicistand science historian at Stanford University,offers this as his conclusion:

Townes has already presented a very differentaccount of this epochal invention in hisrecent autobiography, How the Laser Happened(1999). The actual truth, I suspect, liessomewhere in the chasm between these twoextremes (the rival claims). Gould certainlydeserves some of the credit and rewards for

notarized in a candy store around the corner.And based on his notarized notebook, hewas able to prevail in several multi-partyinterferences with big corporations attackinghis inventorship claim and invention orpriority date. Taylor describes Gould’s struggleover thirty years in a style that at timesseems like a soap opera as it delves into hisromantic relationships and marital problems.Laser also shows how frustrating it can befor an inventor not to reap the rewards ofhis ideas and not even being able to workon and develop his invention. A smalltechnology firm had become interested inGould’s laser, had employed Gould andhad won a Defense Department contract todevelop lasers for the military. But Gouldwas denied a security clearance because ofpast communist associations and thus couldonly watch from the sidelines as colleaguestried to build a working laser in a fierce racewith larger, better-funded research labs. Asthe tale develops, the reader understandshow much perseverance it takes to butt headswith big government and big business,especially when the stakes are very high.

In How the Laser Happened, Charles Towneshas a plaintive and wistful chapter entitled“The Patent Game,” which starts with theskeptical but understandable observationthat “(t)he credit for invention, and even themeaning of invention, is a slippery thing.”He bemoans the fact in this chapter thatalthough he had invented not only the maserbut also the “optical maser,” i.e. the laser, afterhe joined Bell Labs, the Bell Labs patentattorneys dropped the ball in not filing apatent application early enough out of “lackof enthusiasm for the laser patent” and “lackof understanding the technical potentialand ramifications” of the laser and then not“adequately covering several disclosedextensions and variations” of the laserinvention in the patent application, that wasultimately filed. But he also blames himself:

I could probably have saved Bell Labs andmyself a lot of later trouble if I had paidmore attention to the patent draft.

Charles Townes had everything that Gouldlacked, as for instance, very importantacademic and government appointmentsand esteem in the scientific community.In the dispute between the two men, fewdoubted Townes’s word, while nearly everyonederided Gould’s claims.

See LASER WAR, page 19

• Wi n t e r 2 0 0 2 E d i t i o n 19

Fhis contributions—mainly conceiving waysto “pump” a laser’s atoms up to the higherenergy levels required—and for being theone who named this device the laser, too.But to me he hardly seems to be its soleinventor, as Taylor tries to portray him.While Gould was still scribbling secretlyin his notebook, Schawlow and Towneswere openly publishing their ideas in aleading journal. Their article stimulatedalmost all the researchers who soon beganworking on lasers and achieved the earliestworking models.

And some final thoughts on the licensingcase history. It clearly illustrates the dynamicinterplay of step-up royalty/MFL clauses anda descending royalty scheme, with the formerinducing the smaller players to sign up whenthe bigger competitors—here Coherent andSpectraphysics—are holdouts and thus havean additional competitive edge by not payingany royalties. And the volume-breakpointschedules entice the holdouts to take outlicenses, inasmuch as their total royaltyexposure is significantly reduced, e.g. downto about 1.7% in the case of Spectraphysics.

This licensing story played out in the eighties.But it is not ancient history at all. Invaluablelessons can be learned from the masterfullicensing scheme of the Gould laser patents,as it illustrates important licensing conceptsand ingenious licensing strategies. Firstand foremost, it shows that one can bevery creative in crafting win-win licenseagreements and thereby resolve intractablecontroversies and disputes. As was stated byTom Arnold:

“(T)he various clause concepts are as keysupon a piano. Each may be played loudly,softly, staccato or with lingering resonance;and each may be played in solo melody orin chords with the others in infinite variety;they constitute a piano upon which infinitevarieties of transactions can be played.”(Tom Arnold, “Basic Considerations inLicensing”, Les Nouvelles, v.15, p.171, 177,Sept. 1980)

Karl F. JordaDavid Rines Professor of IntellectualProperty Law & Industrial InnovationDirector, Kenneth J. GermeshausenCenter for the Law of Innovation &Entrepreneurship, Franklin Pierce LawCenter, Concord, NH

STUDENT PROFILE: HYUK JUNG KWONBY CATHERINE A. WENDELKEN (JD/MIP ’03)

RANKLIN PIERCE Law Center (Pierce Law)welcomes Hyuk Jung Kwon (JD ‘04). Hyuk Jung

is from Seoul, Korea and is pursuing intellectualproperty studies here at Pierce Law. His goal is to becomea leading expert in intellectual property in this knowledge-based age. Hyuk Jung has earned a BA, a MPA and aMA in Law, Public Administration, and Literature atHangyang University in Korea. He currently holds a patentattorney license and has served with the Korean governmentfor more than ten years.

Shortly before becoming a full-time student at Pierce Law,Hyuk Jung was the Director of the Commissioners Office for the Korean IntellectualProperty Office (KIPO). His primary role was to develop intellectual property policymaking in Korea. Prior to his directorship, Hyuk Jung was Senior Deputy Director for theInternational Cooperation Division, leading an effort to promote internationalcooperation. As Deputy Director, Hyuk Jung has also worked in the Anti-CounterfeitingDivision where his main function was to prevent unfair competition activities such ascounterfeiting well-known trademarks and to enhance the protection of trade secrets. Tostrengthen intellectual property protection for KIPO, Hyuk Jung renovated legal andadministrative regulations and procedures including the revision of “Regulations underthe Unfair Competition Prevention and Trade Secret Protection Law.”

Hyuk Jung has also worked in the Trademark Division of KIPO as an examiner of trademarkapplications. As an examiner, he was involved with various international policy meetingsfor the harmonization of trademark laws, protection for geographical indications, andprotection of well-known marks.

Adding to his accomplishments, Hyuk Jung has also served as an Assistant Trial Judge forthe Korean Industrial Property Tribunal deciding cases involving trademarks and industrialdesigns. In addition, he has lectured extensively on intellectual property laws at the NationalPolice Investigation Training Institute under the Korean National Police University and theInternational Intellectual Property Training Institute.

His lecturing experiences go back to the time when he first became interested in the field ofintellectual property as a law student and a government official. While studying law andworking in the intellectual property field, Hyuk Jung published three articles: (1) A Lectureon Public Administration, (2) A Study on the Improvement of the Trial System related toIntellectual Property Rights in Korea, and (3) A Study on the International Role and Policy ofSmall States under the New World Order.

Hyuk Jung has also participated as a government delegate in the 34th World IntellectualProperty Organization (WIPO) Assembly, the WIPO Committee on Well-Known Marks,and the WIPO Symposium on the International Protection of Geographical Indications.

When Hyuk Jung is taking a break from his work activities, he can be found fishing, touring,playing Baduk (oriental chess), and now studying in the Pierce Law library. Let us all welcomeHyuk Jung to the Pierce Law community and wish him continued success on becoming anexpert in intellectual property in this knowledge-based age.

Catherine A. Wendelken(JD/MIP ’03) is from Akron,OH. She has a BA inChemistry from theUniversity of Akron andplans to practice patent lawupon graduation.

LASER WAR, from page 18

G E R M E S H AU S E N C E N T E R N E W S L E T T E R

FRANKLIN PIERCE LAW CENTER

FIRST ANNUAL LITIGATION TECHNOLOGY COMPETITIONApril 12-14, 2002Pierce Law, Concord, NHtcheesman@fplc.edu

BASIC PATENT COOPERATION TREATY (PCT) SEMINAR FORPATENT ATTORNEYS, PATENT AGENTS AND PATENT ADMINISTRATORSApril 26-27, 2002Courtyard Marriott, Concord, NHwww.fplc.edu/TreatySem/treatsem.htm

MEDIATION SKILLS FOR IP & COMMERCIAL DISPUTESMay 20-24, 2002Pierce Law, Concord, NHwww.fplc.edu/ipb/ipsi00broch.htm#MEDIATION

INTELLECTUAL PROPERTY SUMMER INSTITUTEAT TSINGHUA UNIVERSITY SCHOOL OF LAWJune 10-July 12, 2002Beijing, Chinawww.fplc.edu/ipb/CHIPSI/ChipsiIndex.htm

INTELLECTUAL PROPERTY SUMMER INSTITUTEMay 20-July 12, 2002Pierce Law, Concord, NHwww.fplc.edu/ipb/ipsi00broch.htm

ELEVENTH ANNUAL ADVANCED LICENSING INSTITUTEJuly 15-19, 2002Pierce Law, Concord, NHwww.fplc.edu/ali/ali_app.htm

G E R M E S H AU S E N C E N T E R • Ca l e n d a r o f Ev e n t sF R A N K L I N P I E R C E L A W C E N T E R

The Germeshausen Newsletter can now be accessed at: www.fplc.edu/news/pubs/Germindex.htm

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