Académique Documents
Professionnel Documents
Culture Documents
Quarterly
www.floridabar.org www.internationallawsection.org
In ThIs Issue:
Message from the Chair ...................3 From the Editor .................................4 World Roundup........................... 8-15 The Quest for Intellectual Property Protections in a Digital Age..........17 Football Association Premier League Limited and others v. QC Leisure and others; Murphy v. Media Protection Services Limited Landscape Change for Rights Licensing in Europe, But Not All Good News for Public Venues .....21 The Glivec Cases: Novartis and the New Pharmaceutical Patent Regime in India ................27 Christian Louboutin and U.S. Customs and Border Protection ..31 Honda Motor Co. Ltd. v. Friedrich Winkelmann: Raising the Bar on Bona Fide Intent to Use in U.S. Trademark Applications ...36 A Practical Guide to Introducing Products in the Dominican Republic.......................................38 Pleural Plaques: The North-South Divide...........................................44 Creating Jobs and Strengthening the U.S. Economy Through the E Visa ....................................49 The Redesigned U.N. Internal Justice System: Providing Administrative Justice to International Civil Servants? ....................................53 High-Speed Public Policy for Algae-Based Biofuel as a Viable Energy AlternativeImproving Florida-China Relations Through Sustainable Collaboration ....... 56 Section Calendar ........................ 64
The Call
Your corporate client has just advised you that it has acquired a new company and has asked you review the new companys trademark portfolio to determine what marks are registered and where, and ultimately to make recommendations regarding the assignment and continued protection of those marks. You are told that the portfolio consists of trademarks in the United States and abroad. You begin reviewing the acquired marks and all information regarding
their ownership. After a review of the marks acquired, you need to determine the requirements of various countries to assign the marks to your corporate client. The assignment process may include the issuance of powers of attorneys that may require an apostille. Assignment forms may need to be executed by both the assignee and assignor and, in most instances, assignments will need to be notarized and translated. Legalization by the consulate in the United States of
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The International Law Quarterly is prepared and published by the International Law Section of The Florida Bar. Nicolas Swerdloff, Miami Chair Richard C. Lorenzo, Miami Chair-elect C. Ryan Reetz, Miami Secretary Peter A. Quinter, Miami Treasurer Edward M. Mullins, Miami Immediate Past Chair Mark R. Weiner, Tampa CLE Chair Alvin F. Lindsay, Miami Editor-In-Chief Angela Froelich, Tallahassee Program Administrator Lynn M. Brady, Tallahassee Layout Elizabeth Ortega Media Contact, ECO Strategic Communications, eco@ecostrats.com
Articles between 7 and 20 pages, doublespaced, involving the various disciplines affecting international law may be submitted via email in MS Word format (with the use of endnotes, rather than footnotes). Please contact Alvin.Lindsay@hoganlovells.com for submissions and for any questions you may have concerning the Quarterly.
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a conflicting mark in one of the Member States, a Madrid Protocol application or a national application may be a better option for that particular client seeking to register its mark(s) in Europe.
that the description of goods in a Madrid Protocol application cannot be broader than the goods or services associated with the basic trademark registration (or basic trademark application8). Since a description of goods may be more restrictive in the United States than in other contracting countries, advising the client to use its trademark registered in another contracting country as the basic trademark registration may afford more protection to the client if the client has that option. If a Madrid Protocol application is based on a U.S. registration, the Madrid Protocol application can be filed with the United States Trademark Office 9 (USPTO) whose role is ministerial at best in certifying that the Madrid Protocol application is identical to the U.S. trademark registration (or pending trademark application). The USPTO certifies that the basic U.S. trademark registration (or pending application) and the Madrid Protocol application depict the same mark, that the owner is the same, and that the goods or services described are not broader than the goods or services of the basic trademark registration. The USPTO then sends the Madrid Protocol application to the World Intellectual Property Organization (WIPO) for processing. The Madrid Protocol application is completely dependent on the basic trademark application or trademark registration. If the basic pending trademark application is objected to and later denied registration, the Madrid Protocol application will be defeated. In addition, if the Madrid Protocol application is based on an existing trademark registration and that registration is cancelled during a period of five years from the date of registration, then the Madrid Protocol application (or international registration) will also be defeated.10 The advantage of filing a Madrid Protocol application is that the client will be filing one application, dealing with one office in one language, and filing one fee. The official languages of the Madrid Protocol are English, Spanish and French. Notably, the perception that there is only one filing fee may be misleading. Unlike the CTM application, where a CTM registration will provide the client with trademark protecPage 5
the REP, the other designations are not affected. Only if the basic trademark application or trademark registration is denied or cancelled, will the entire IR be cancelled. As with a CTM application, the trademark owner has the option to convert a rejected IR to individual national applications within three months of the cancellation of the IR. If the REP is opposed in one of the designated countries, the trademark owner will need the assistance of foreign counsel to defend the opposition, and additional fees will be incurred for engaging the foreign counsel. A trademark office may also require additional information or require that the applicant respond to an office action.14 If that is required, the trademark owner would also have to engage local counsel in that jurisdiction,15 and the benefits of filing a Madrid Protocol application will be diminished. The owner of an IR can request additional extensions of protection to other contracting countries at any time during the life of the IR.16 Another advantage of filing a Madrid Protocol application is that [o]nce an extension of protection is granted in at least one country, the international registration is renewable every ten years from the initial date of the registration17 with WIPO. The trademark owner may choose to renew the registration with respect to all of the goods or services listed in the original IR or fewer than all, and with respect to all of the [contracting] countries to which protection has been extended or to fewer than all.18 The same will apply for assignment of a trademark. This may result in substantial cost savings for your client. Another consideration to keep in mind if you are filing an assignment of an IR is that the assignee must be domiciled, incorporated or must have an industrial or commercial establishment in a contracting country.19 The basic trademark registration must be renewed separately from the IR registration.20 Additional benefits of filing under the Madrid Protocol21 include not having to deal with translations and related costs and not having to incur additional fees to engage foreign counsel to file the trademark application.22
national Applications
If the client wants to protect its trademark abroad, filing a national application in the country where the client is planning to introduce its goods or services is always a reliable alternative even if the expense may be higher than using a uniform system of registration. Relying on the expertise of foreign trademark counsel provides the client more predictability during the application process since local counsel will be familiar with navigating the system within the jurisdiction and, in the event obstacles arise, the foreign counsel will be able to advise the client how to overcome those issues. Currently, the only option for clients wishing to register marks in most of Latin America and the Caribbean is by filing country-specific national applications with the assistance of foreign counsel in the particular jurisdiction. The client must be aware that in addition to filing fees and attorneys fees in registering marks in Latin America and the Caribbean, translation costs and legalization costs may also be incurred. In some instances, legalization by apostille is necessary for powers of attorney and other required documentation. Certification of documents by a United States consulate of the particular jurisdiction may also be necessary. In some countries in South America, the processing time for a trademark application may be years. An advantage of registering a mark in some countries in South America is that the trademark owner may designate for protection an entire class of products or services associated with its mark even if its products constitute only a single item within the international class, thereby affording the trademark owner broader protection and a tremendous advantage in preventing others from using similar marks within the same international classification, even if their products are not similar. Most Latin American countries have adopted the international classification of goods and services consisting of forty-five classes.23 As is the case in other areas of law, when working with foreign counsel it is imperative to maintain constant communication and reinforce the expectations and objecWinter 2012
into force. Colombias adoption of the Madrid Protocol makes Colombia the first country in South America to adopt it. 8 The basic trademark can be a pending trademark application that must be filed prior to the filing of the Madrid Protocol application in any of the Madrid Protocols contracting countries, or it may be based on an existing trademark registration already filed in one of the contracting countries. 9 The USPTO does not conduct any substantive review of the Madrid Protocol application. 10 An attack to the basic registration is referred to as a central attack. 11 Even though the initial cost of the Madrid Application will be substantial, it should be more economical than filing individual national applications in that the client is not incurring attorneys fees. That being said, if there is any opposition in any of the designated countries, the client may still be required to hire foreign counsel to defend the objection proceeding. 12 In some countries, a trademark office does not conduct substantive reviews of a trademark application. Instead the trademark office publishes the trademark, and it is up to the trademark owners to file oppositions to the pending application. 13 Natalie Hanlon-Leh, Kathleen S. Herbert, Adam Lindquist Scoville, A Brand New World: International Trademark Registration and the Madrid Protocol, 32 Colo. law. 89 (Oct. 2003). 14 An office action is a request by the examining personnel of a trademark office for additional information addressing deficiencies in the application or a substantive denial of the application based on conflicting registered or pending marks. 15 Bruce Londa, U.S. Trademark Owners may now file International Trademark Registrations, 11 Metro. Corp. Couns. 63 (Sept. 2003). 16 Irene Segal Ayers and Leigh N. Doran, New in 2003: Cheaper and Faster International Trademark Registration, 228 the legal IntellIgenCer 27 (10 Feb. 2003). 17 Id. 18 Id. 19 Londa, supra note 15. An IR cannot be assigned to a Brazilian company because Brazil is not a contracting country to the Madrid Protocol. 20 Hanlon-Leh et al., supra note 13. 21 Madrid Protocol. 22 It is recommended to engage counsel to clear the proposed trademark. 23 International trademark classification and the headings of the international trademark classes are established by the Committee of Experts of the Nice Union, also known as the Nice Classification. The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011) published by WIPO and available at http://www.wipo.int/classifications/en/index/html. 24 For instance, in Mexico if a third party has applied for application of your clients mark but the application is pending, no opposition proceeding is available and the client has to wait until the mark is registered to institute a cancellation proceeding.
Conclusion
In deciding whether to file a CTM application, an international application through the Madrid Protocol, or a country-by-country national application will depend on the clients needs, objectives and budget. When you receive the call from a client that it has acquired a new company, your role as counsel is to review the facts and recommend the best strategy to meet the clients objectives of obtaining maximum protection for its marks abroad while simultaneously managing the clients expectations and minimizing costs.n
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Asia: China and Taiwan
By Mikki Canton mcanton@usa.net China says nO to the european unions emissions Trading scheme. With Chinas refusal to participate in the EUs Emissions Trading Scheme, the controversy over a possible trade war over carbon-emissions trading looms and shows no sign of being resolved in the near future. China has officially banned all airlines in the country from joining the European Unions Emissions Trading Scheme (ETS). This scheme, implemented from 1 January 2012, levies charges on flights in European Union airspace based on carbon emissions. The ban comes on the heels of Chinas Air Transport Associations refusal to support the ETS. As a result of this action, Chinese carriers may not increase their fares or levy new fees to comply with the scheme. This latest move by China, joined by the United States and Canada in opposing the ETS, is being watched with considerable apprehension. While the EU could prohibit Chinese airlines from flying into the EU, that is highly improbable as China may retaliate in a number of ways, all serious enough to complicate matters worldwide. Analysts believe that resolution may be achieved by an international body, such as the World Trade Organization, or through a cooperative compromise, which is unlikely to happen. Either way, China has acted upon its refusal to participate and has put the ball in the court of the EU, which must carefully decide its next move. Taiwan holds presidential election. On 14 January 2012, the Nationalist Party candidate, and Harvard-educated incumbent, Ma Ying-jeou won the presidential race, which is remarkable given that he supports economic cooperation and partnership with mainland China. Though Taiwan, formerly known as Formosa and now known as The Republic of China, is not pursuing unification with its formerand some argue very presentfoe, President Mas victory symbolically represents Taiwans support for improved economic relations with China and the 1992 Consensus that there is but one China. No one, however, seems to agree on what that means for Taiwan. Most Taiwanese believe that, regardless of their countrys economic engagement with China, Taiwan must remain autonomous and independent. In spite of serious disagreements on this issue between Taiwans two leading parties, over 40% of Taiwans wealth is invested in mainland China, and the numbers keep growing. While long-standing U.S. support towards Taiwan is unwavering, Taiwan remains a source of tension in the United States relationship with China. proposed cigarette packaging law. Australias Tobacco Plain Packaging Bill 2011, a draft law that aims to make tobacco products less attractive to consumers, would prohibit all logos and require certain coloring and layout on cigarette packs, including health warnings over a substantial portion of each package. Though other countries have previously attempted to adopt similarly strict requirements for cigarette packaging, Australia would be the first country to actually implement such measures. On 27 June 2011, Phillip Morris Asia Limited (PMA), owner of Australian affiliate Philip Morris Limited, served a Notice of Claim on the Commonwealth of Australia pursuant to Article 10 of the bilateral investment treaty between Hong Kong and Australia for the promotion and protection of investments. PMA argues that the plain packaging legislation constitutes an expropriation or deprivation of its investments in the two Australian companies because of its detrimental impact on the value of those trademarks. In an interesting development, the Australian government has recently stated that PMA did not have any interest in the Australian affiliate Philip Morris Limited until 23 February 2011, nearly one year after the Australian government had made its policy position public.
Asia: singapore
By Santiago Cueto sc@cuetolawgroup.com Changes proposed to digital evidence rules. The Ministry of Law recently proposed changes to Singapores Evidence Act to allow computer output evidence to be treated the same as all other forms of evidence. Under current laws, computer data can be submitted as court evidence only after it is certified by forensic computer experts, among other technical requirements. The proposed change will do away with such requirements. An additional proposal would introduce evidentiary presumptions to admit certain classes of reliable electronic records that are unlikely to be tampered with, such as evidence stored by a neutral third party.
Caribbean
By Sandy Jones sjones14@gmail.com new business-friendly laws in Puerto Rico. Puerto Rico has new legislation designed to attract more business. The recently created Ponce Port Authority is intended to turn the Port of the Americas, already the deepest port in the Caribbean at fifty feet, into an international trans-shipment port through a superior management scheme. Moreover, Governor Luis Fortuo signed new legislation on 17 January 2012 to improve the islands ap-
Australia
By Peter anagnostou peter.anagnostou83@gmail. com Phillip Morris opposes
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peal to foreign investors. Among the new laws are the Service Export Development (SED) and Incentives for the Transfer of Individual Investors to Puerto Rico (TIIPR). The SED creates tax incentives for income earned on exported services. The applicable tax rates can range up to a 4% fixed tax rate with exemptions on property taxes. A favorable tax decree, issued to businesses, initially lasts for twenty years with a possible ten-year extension. The TIIPR is designed to encourage individuals to transfer their passive investments into Puerto Rico by means of a tax exemption for qualifying individuals (e.g., persons who were not domiciled in Puerto Rico for the fifteen-year period preceding 17 January 2012). new u.s. tax law to impact Caribbean banks. In an effort to combat tax evasion by persons holding investments in offshore accounts, the U.S. government passed legislation requiring more transparency in foreign institutions with such accounts. The Foreign Account Tax Compliance Act, enacted in 2010, will require foreign banking institutionssuch as those located in traditional tax havens in the Caribbeanto divulge information about accounts held by U.S. nationals beginning on 30 June 2013. This legislation also includes a requirement to report on companies with a substantial U.S. ownership interest.
many of the 2006 amendments to the Model Law, including provisions addressing interim measures and preliminary orders. Costa Ricas adoption of the UNCITRAL Model Law is a step towards establishing and promoting international commercial arbitration legal principals in that country. usRDC goes to arbitration against Guatemala. U.S.-based Railroad Development Corporation requested arbitration against the Republic of Guatemala under DR-CAFTA for Guatemalas alleged improper termination of a contract to manage Guatemalas railroad system. The case was filed in 2007 as the first claim under DR-CAFTA, and the merits hearing took place in December 2011. The merits hearing was transmitted live on the ICSID website pursuant to Article 10.21.2 of DR-CAFTA, which provides that tribunals must conduct hearings open to the public and shall determine, in consultation with the disputing parties, the appropriate logistical arrangements. A final award is expected near the end of this year. el salvador ethics guidelines introduced in October 2011. Fundacin LIDERA, in conjunction with the U.S. Agency for International Development (USAID), introduced the first code of proposed ethics guidelines for lawyers practicing in El Salvador. The proposed code was introduced with the endorsement of El Salvadors Supreme Court. Although the ethical code is not binding on attorneys practicing in El Salvador, it offers greater awareness of ethical standards in the practice of law. ICsID annulment proceeding in Panama tax dispute. An ICSID proceeding brought by Nations Energy and Electric Machinery Enterprises, among others, against the Republic of Panama in 2006, alleging that the Re-
publics denial of the claimants attempt to transfer certain tax credits to third parties breached the expropriation and fair and equitable treatment provisions of the U.S.Panama BIT was dismissed, and the claimants were ordered to pay over US$4 million to the Republic in legal fees and costs. The claimants have since moved to annul the award. The annulment proceeding is pending before an ad hoc ICSID Committee.
european union
By Santiago a. Cueto sc@cuetolawgroup.com Proposed laws would impose heavy fines on Internet companies for failure to protect user information. The European Commission recently proposed changes to current data privacy laws that would force Internet companies to protect user information more effectively or face fines. The laws are intended to improve online defenses and unify data protection laws across all European Union countries. The proposed rules would apply to data handled outside the EU if the companies involved offered services to citizens living in the twentyseven-nation zone. Companies found to have violated the rules could face fines of up to 2% of a companys annual revenue, which could amount to hundreds of millions of dollars for many Internet and technology companies. If approved by all twenty-seven member states and the European Parliament, the rules would become law by the end of 2013. europe opens door to lawsuits over online content. The European Court of Justice recently issued a groundbreaking ruling giving plaintiffs, no matter where they reside, the right to sue in an EU member state of their choosing over online content that is alleged to be defamatory or a violation of
Central America
By Christopher C. Kokoruda ckokoruda@astidavis.com new Costa Rica arbitration law in effect. In May 2011, Costa Ricas new arbitration law, based on the UNCITRAL Model Law, entered into force. Costa Ricas new arbitration law provides an updated framework for international arbitrations and reflects
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the plaintiffs privacy rights. In reaching its decision, the court focused on constitutional precedent that establishes jurisdiction in the place where the harmful event occurred or may occur. The decision is significant because it allows individuals to sue anywhere in the EU, regardless of whether the individual or the publication has any real connection to the chosen forum where a complaint is filed. direct investment. All equity instruments with built-in options lose their equity character and must comply with Indias external commercial borrowing guidelines. The FDI policy does not currently include a specific definition for the term option. This provision, as it stands, will have an adverse impact on foreign investors who utilize put options as a mode of exit from Indian investment. Government makes strides to open doors to foreign retail giants. Global giants such as Wal-Mart and Carrefour have been eyeing Indias lucrative retail sector, currently dominated by mom and pop operations. Indias Cabinet, headed by Ajit Kumar Seth, has cleared a proposal to allow 51% FDI in multi-brand retail and to permit 100% investment in single-brand retail. The Cabinets recommendation will require investors to spend 50% of the investment in building and maintaining back-end infrastructure. Each foreign retailer would also be required to commit at least US$100 million through investment. Facebook, Google, and nineteen other companies asked to censor objectionable material. Facebook and Google have appealed a recent lower-court ruling ordering the development of a mechanism to block objectionable material in India. Using Indias recently enacted law making companies responsible for user content posted on their website, Vinay Rai claimed that websites were showing images offensive to Christians, Hindus and Muslims. The lower court agreed. Google and Facebook have appealed, arguing that they have a global policy of non-interference even if content posted on their respective websites is obscene or objectionable. The high courts order, which will center on the issues of freedom of speech and expression in India, is set to be pronounced in early February.
Japan
By Mahesh H. Nanwani MNanwani@gunster.com Asian site location policy implemented. To stem the tide of foreign companies moving their Asia headquarters and facilities out of Japan to other Asian countries, the Japanese government adopted a series of economic revitalization policiesthe Asian Site Location planto revive Japan as the business center of Asia by using various tax reductions, subsidies and other incentives. In 2011, the Ministry of Economy, Trade and Industry proposed a bill under which qualifying multinationals would be entitled to preferential corporate tax for five years; preferential income tax treatment; preferential treatment under the Foreign Exchange Act; special exemptions for patent fees; and special treatment for small and medium firms capitalized at over 300-million yen. The bill also provides for expedited visa processing for foreign workers. Additionally, in April 2011, the Ministry of Economy, Trade and Industry proposed the first subsidy program in furtherance of the Asian Site Location policy. Under the program, foreign companies that establish new, qualifying Asia headquarters or R&D facilities in Japan are entitled to subsidies from the Japanese government on such items as survey and design costs for building, refurbishing or for facility installation; costs for purchasing, building or refurbishing facilities; costs for purchasing, leasing, and installing equipment and software; and leasing costs for facilities. The application period for this subsidy program closed in October 2011, and the initial awards were issued in December 2011. Companies selected under the program include the following Japanese subsidiaries of U.S. companies: NeoPhotonics Japan Godo Kaisha, Nihon Cabot Microelectronics, K.K. and 3M Health Care Ltd. Additional
India
By Sumeet H. Chugani schugani@diazreus.com Central government proposes new land titling bill. A proposed bill will replace Indias flawed deed system and implement a new electronic registration system to provide conclusive evidence of title ownership. If enacted, the legislation will offer a new safeguard for property owners, enhance transparency in land records and foster a new market for title insurance. Ministry of Corporate Affairs introduces new Fast-Track exit scheme for defunct companies. The new Fast Track Scheme allows companies registered under the Companies Act of 1956 and that have been inoperative or defunct to strike their names from the register of companies by satisfying the conditions under Section 560 of the Companies Act. Companies requesting fast-track status must have no assets or liabilities and must not have carried out business for at least one year before application under the new provision. new provisions in Indias FDI policy. New provisions in the foreign direct investment (FDI) policy require equity shares, or convertible preference shares with no built-in options of any type, to qualify as eligible instruments for foreign
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programs are expected to be adopted in 2012 to promote the Asian Site Location policy further.
Mexico
By a. renee Pobjecky Renee@pobjeckylaw.net Approval of new trade and tax agreements. On 9 January 2012, the Department of Foreign Relations announced the following three decrees: (1) Decree approving the Commercial Integration Agreement with Peru; (2) Decree approving the Free Trade Agreement with the Republics of Costa Rica, El Salvador, Guatemala, Honduras and Nicaragua; and (3) Decree promulgating the Agreement that Amends the Agreement between the United Mexican States and the Republic of Singapore to Avoid Double Taxation and Prevent Tax Evasion with respect to income taxes. negotiations to join the TransPacific Partnership. On 14 November 2011, during the annual summit of the Asia-Pacific Economic Cooperation (APEC) Forum in Hawaii, the Secretary of the Economy of Mexico indicated that negotiations have begun with countries that are members of TransPacific Partnership (TPP), as well as with national industry sectors, in order to participate in this initiative. The TPP is a multilateral free-trade agreement between various members of APEC. Through its participation, Mexico expects greater economic growth, investment and export possibilities. united states and Mexico vs. Organized Crime. A debate currently exists in Mexicos Congress, the mass media and newspapers over the legality of collaboration between
Korean Peninsula
By Patrick M. Talbot talbot@handong.edu KORus FTA coming closer to reality. The Korea-U.S. Free Trade Agreement (KORUS FTA), signed initially in June 2007, took a giant step closer toward becoming a reality in late November when it was ratified by the Korean National Assembly. This came after President Obama signed legislation on 21 October 2011 enacting the KORUS FTA as part of American law. In order for the KORUS FTA to enter into force, both countries must enter into a series of implementing steps, with an indefinite time frame for completion but apparent resolve to move quickly. The FTA is expected to result in the elimination of tariffs on most consumer and industrial products traded between the countries, in about a five-year span after implementation. Several agricultural products from the U.S. will experience immediate elimination of tariffs once the treaty enters into force. The FTA is expected to improve U.S. automakers access to the Korean market drastically. Access to government procurement contracts for U.S. suppliers should also improve. In addition, the FTA will allow a vast expansion of U.S. legal services into South Korea. The KORUS FTA is not without strong opposition from some sectors of Korean society. The judiciary is taking steps either to block its implementation or to renegotiate it. Large protests in Seoul are also common, including one recently, involving an
the U.S. and Mexico against the illegal activities of organized crime. A recent article in the New York Times indicates that U.S. forces have trained nearly 4,500 Mexican federal agents, eavesdropped on telephone conversations, interrogated suspects and handled informants. The Mexican government has refused comment on the matter, citing national security reasons. Mexicos President, however, has reiterated his request to obtain additional assistance from the U.S. in the war against organized crime.
Middle east
By Omar K. Ibrahem omar@okilaw.com shoura Council approves saudi Arabia draft arbitration law. The process of revising and modernizing the Kingdom of Saudi Arabias (KSA) arbitration regime is underway. The KSAs Shoura Council recently approved a new draft arbitration law. While the details of the new law are still emerging, the draft law is intended to resolve problems under the existing arbitral regime and to expedite the arbitral process. The draft law consists of fifty-eight articles and was written in conformity with Islamic law and the international conventions to which the KSA is a signatory. united Arab emirates new business bankruptcy law in final stages of approval. The UAE Ministries of Finance and the Economy and Central Bank have delivered a draft business bankruptcy law to the Ministry of Justice. Modeled after bankruptcy laws in the United States and the United Kingdom, the new UAE business bankrupt-
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cy law would afford companies protection from debt-holders and time to restructure their business to regain solvency, similar to a Chapter 11 bankruptcy in the United States. Once approved by the Ministry of Justice, the draft law will be submitted to the Cabinet, then the Federal National Council and, finally, Sheikh Khalifa, President of the UAE, before becoming law. effect of Jordans new tenantlandlord laws worries business leaders. Passed in 2011, Jordans new tenantlandlord laws have gone into effect, raising concern among many Jordanian business leaders. Among the provisions in the law that have business leaders worried is paragraph A of Article 7, which reads: Tenants heirs are allowed to retain residential properties for three years and commercial properties for six years following the tenants death. Business leaders are working together through the Jordanian Chamber of Commerce to find ways to influence the implementation mechanisms of the new law. Value added tax a possibility in Qatar. Despite posting a huge surplus in 2011, mainly due to hydrocarbon revenues, Qatar is weighing the possibility of a value added tax (VAT) on private companies. While the proposal is still in its infancy, Qatar would enact a VAT in conjunction with other members of the Gulf Cooperation Council (GCC). The proposed VAT is intended to diversify Qatars revenues and reduce Qatars dependence on hydrocarbon revenues. Iraq awards us$998 million deal to samsung Group. Iraq and Russias Lukoil Holding awarded the Samsung Group a US$998 million deal to develop Iraqs West Qurna phase 2 oil field. Samsung is slated to build a central processing facility for oil production in the field. Lukoil and Norways Statoil ASA were awarded a twenty-year service contract for West Qurna Phase 2 in December 2009.
Russia
By anna V. Tumpovskiy justanna@hotmail.com Russias investment climate warms up. After many years of being the only major economy not a member of the WTO, Russia was finally granted membership on 16 December 2011. Russia now has to begin the process of ratifying and finalizing the accession agreement. According to the World Bank, Russia does not stand to reap immediate benefits from this membership, but the long-term benefits might be substantial (a 3.3 % increase of the annual GDP in the next few years, totaling at least US$58 billion). Since Russia is a major oil exporter, over 50% of Russian foreign trade is already tariff free; however, some of the raw material industries can gain substantially from increased market access and protection from anti-dumping measures. The remaining issue is the Jason-Vanik Act, the U.S. Cold War provision that restricts trade to former members of the Communist bloc. This provision directly conflicts with the WTO policy of giving fellow members most-preferred status. Removing this outdated policy, would allow the United States to reap many benefits as Russia is a major market for many American goods. As the Russian government looks to liberalize and, in some cases, conform some of the federal laws to the European standard, the legislatures redraft of the Russian anti-monopoly laws is a welcome step forward. On 3 January 2012, the new amendment On Protection of Competition Law (the Competition Law) came into effect. The new law not only amends almost all chapters of the federal law but also changes a number of related legislation
such as federal law on mineral resources, natural monopolies, privatization of state and municipal property, and even criminal law. The legislature heeded the need for clearer guidelines after the Russian Federal Anti-Monopoly Service issued a regulatory decision in a case involving pharmaceutical company OOO Novo-Nordisk that raised possible inconsistencies between a multinationals conduct of compliance and Russian anti-monopoly law. The new law clarifies that provisions of the Competition Law shall apply to agreements concluded outside Russia by and between Russian or foreign individuals or entities, and to acts conducted by the same, provided that such agreements or acts affect the competitive environment in Russia. Therefore, the Competition Law covers agreements and acts regarding stocks, shares, or other rights with respect to foreign companies. One of the most important aspects that the new law introduces is the concept of intra-group agreements that could be exempt from the majority of restrictions based on the single control group assessment. On 18 December 2011, in an attempt to attract more foreign investment, Russias new federal law came into effect amending: (1) the Federal Law On Procedure for Foreign Investments in Business Entities of Strategic Significance for National Defense and State Security (the Strategic Investment Law), and (2) Article 6 of the Federal Law On Foreign Investments in the Russian Federation (collectively, the Amendments). The Strategic Investment Law was enacted in 2008 to restrict foreign investment in companies involved in so-called strategic activity. Foreigners interested in investing in such companies had to seek prior governmental approval. The Amendments now exclude from the list of strategic activities:
Transactions of companies controlled by Russian beneficiaries (individuals or legal entities); International financial organizations
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(IFOs) created under international treaties with participation of the Russian Federation or IFOs having an international agreement with the Russian Federation; Companies from the civil sector that do not have operations with sources of radiation (as a primary activity); Data-encryption activities performed by banks having no capital subscription of the Russian Federation.
decisions in Paran and the rest of Brazil. Inepar can appeal to the Superior Tribunal of Justice, the highest Brazilian commercial court, but such appeal is unlikely to succeed in light of recent decisions by that court. new regulation regarding declaration of foreign capital. As a result of government policy in the 1980s, some Brazilians sent money to offshore accounts without declaring the values to the Brazilian Central Bank. Recently, the Brazilian government has taken steps to try and regulate this situation. One of those steps is Resolution 3854 from the National Monetary Council, requiring all residents in Brazil to declare all assets outside Brazil with a value of US$100,000 or more. This action builds on the Brazilian governments attempts to bring back foreign capital. Major change in antitrust regulation. Following extended debate in the business press, Brazil passed a new antitrust law, Law 12529/11. The law dramatically changes the method for obtaining approval for mergers from government authorities. Now parties must notify regulators and receive their approval prior to most mergers. The new law also changes the requirements for compulsory notification. The law takes effect 1 June 2012. In the interim, regulators are working on further rules and regulations to guide parties through the approval process. Rule change for the purchase of rural property by foreigners. With more companies and individuals buying rural land in Brazil, the Brazilian Land Development Agency has enacted new rules to control the acquisition and
lease of rural properties by foreigners. The regulation is Normative Instruction 70/11 of 9 December 2011.
These amendments comprise the first set of amendments and will likely exclude more activities/industries from the Strategic Investments Law in the second set of amendments, currently being negotiated by the Federal Security Service of Russia.
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World Roundup
aims at establishing mechanisms to prevent and sanction abuse by economic groups. The new statute, adopted in October of 2011, has not been well received by the Ecuadorian business community which, through the Ecuador Chamber of Commerce, has filed a judicial action seeking to annul several articles of the new act on constitutional grounds. Perhaps the most controversial new provision prohibits bankers and owners of media groups from holding more than 6% in other enterprises. Other constitutional objections to the new statute include: (1) the creation of a regulatory board appointed and controlled exclusively by the executive power, instead of the Ecuadorian state, with broad authority to establish and regulate state monopolies; (2) the submission of autonomous regional governments to the regulatory board; and (3) the exclusive control granted to the executive power with respect to prices of goods. Peruvian indigenous communities granted rights to be consulted on programs or projects. Last September, the Peruvian Congress adopted the law on prior consultation of indigenous people under Convention No. 169 of the International Labor Organization (ILO). Member countries must align national legislation, policies and programs with the Conventions stated purpose of protecting indigenous or tribal groups and safeguarding their integrity. The new legislation grants indigenous or original groups the right to be consulted regarding legislative or administrative measures that may directly affect their collective rights or their cultural identity. To further this goal, governmental entities promoting measures shall comply with a special procedure aimed at involving protected groups and seeking their agreement with the proposed measure. The law also grants indigenous communities the right to challenge an administrative measure where the governmental entity fails to initiate a consultation process upon request of the affected indigenous group. The legislation grants local communities a major role with respect to new projects related to the exploitation of Peruvian natural resources. Venezuela creates advisory bodies to coordinate disputes arising out of nationalization process. Since taking office, Venezuelan President Hugo Chavez has engaged in a comprehensive and controversial program of nationalization and expropriation of many industries and companies. This process has triggered a number of international arbitrations against Venezuela itself or state-owned entities. The ICSID website currently lists approximately seventeen cases pending against Venezuela. There are also numerous commercial arbitrations against state-owned entities arising out of measures taken by the government to secure control over certain industries. Last December, in an effort to coordinate the defense of Venezuela and its stateowned entities, President Chavez issued decrees creating two advisory bodies: (1) the Superior Council for the International Defense and Sovereignty of the Bolivarian Republic of Venezuela; and (2) the Strategic Superior Council on Expropriations. The first Council will have as its purpose to establish guidelines and strategies with respect to international proceedings in which the government or state-owned entities are involved. The Council on Expropriations aims to establish guidelines for the Venezuelan government on how to exert its expropriation powers, including issuing recommendations as to which assets to expropriate and how to negotiate with the parties affected by such expropriations. Both Councils are to be formed with the highest officers of the government, including the vice-president, attorney-general and several ministers. It is unclear how the creation of these two Councils will affect the current prosecution of the many cases currently filed against Venezuela or its state-owned entities. Soon after the creation of the two Councils, Venezuela officially denounced the ICSID Convention, perhaps an indication of a change in direction in Venezuelas policy with respect to these cases. Important Venezuelan supreme Court decision regarding countrys exchange control regime. Since 2003 Venezuelas Central Bank has had exclusive control over the sale and purchase of foreign currency. Congress also enacted legislation criminalizing certain transactions in foreign currency. Notwithstanding the exchange control regime, the government allowed certain mechanisms for Venezuelans to acquire foreign currency by purchasing U.S. dollar-denominated securities from local banks or brokerage houses and then selling them outside Venezuela. Likewise, many agreements included payment in foreign currency. At the same time, there is a substantial differential between the official and black market rates to acquire United States dollars in Venezuela, which makes it very convenient for a debtor to pay a foreign currency-denominated obligation in local currency. On 2 November of 2011, in a very important case, the Constitutional Chamber of Venezuelas highest court, the TSJ, annulled a decision of the Civil Chamber of the same court on constitutional grounds. The Civil Chamber had previously held that although the exchange-control regime imposes restrictions on the ability to acquire foreign currency, there was no prohibition to enter into agreements in foreign currency and, as there were alternative and informal mechanisms for converting Bolivars into foreign currency, the debtor could have easily used these to pay its debt. The Constitutional Chamber disagreed and annulled the decision of the Civil Chamber on two fundamental grounds: first, that Venezuelan law provides that with respect to any obligation payable in Venezuelan territory, the debtor may always fulfill its obligation by paying local currency at the
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official exchange rate applicable on the date of payment; second, that the Civil Chamber, by acknowledging an informal regime to access foreign currency, invited the parties to breach and subvert the existing legal exchange control system, which at the same time implied condoning a criminal offense under Venezuelan law. Such position, in the Constitutional Chambers view, represented a violation of Venezuelan public policy. Therefore, the Constitutional Chamber concluded that the debtor had the right to pay its obligation in local currency at the official rate applicable as to the date of payment.
on 28 December 2011, changes Article 41 of the Argentinian Penal Code, doubling the minimum and maximum time to be served when any of the crimes set forth in this Code is perpetrated with the purpose to terrorize the population. The same standard applies if the crime obliges the authorities to perform an act or abstain from performing one. In addition to tougher penalties for a range of financial crimes, including tax evasion, bribery, money laundering and the financing of terrorism, the new law also criminalizes any action that might disrupt the countrys economy, such as a run on the banks. The laws broad language has generated several protests inside and outside Argentina. One of its most vocal critics is Eugenio Zaffaroni, a justice on Argentinas Supreme Court. Argentina to place new controls on imports. On 23 January 2012, the Official Gazette published the AFIPs (Administracin Federal de Ingresos Pblicos, translated as the Federal Administration of Public Income) General Resolution No. 3255/2012, which became effective on 1 February 2012 and will make it more complicated to import products into Argentina. (Argentina Customs is part of AFIP.) According to the new regulation, importers will have to file a certain Declaraciones Juradas Anticipadas de Importacin (literally, Sworn Affidavit in Advance of Import) and, as a practical matter, will be required to obtain prior authorization from Customs and other government agencies to import. Chiles supreme Court orders twoyear deadline on human rights cases. According to The Santiago Times, on 11 January 2012, Chiles Supreme Court announced a two-year deadline for closing all cases related to human rights abuses in Chile during the military dictatorship that
ruled the country from 1973-1990. The newspaper says that in order to comply with the deadline, the Supreme Court will appoint two more judges to the courts that are designated to handle human rights cases, raising the total number to six. Mercosur signs free trade agreement with Palestinian Authority. On 20 December 2012, at a presidential summit in Montevideo, Uruguay, members of the South American trade block Mercosur (Argentina, Brazil, Paraguay and Uruguay) signed a free trade agreement with the Palestinian Authority, similar to the FTA that Mercosur has in place with Israel.
united states
By Peter a. Quinter PQuinter@becker-poliakoff. com Global entry Trusted Traveler Program U.S. Customs and Border Protection recently published a rule making permanent the Global Entry Trusted Traveler Program, which speeds the passage of air passengers arriving in the United States through customs and immigration inspections by more than 70%. The pilot program started in 2008 and more than one million persons have been admitted into the program since then. In fact, those already admitted have now been granted a full five-year membership in Global Entry beginning from the time of their first enrollment. Currently, Global Entry is open to U.S. citizens, lawful permanent residents, Dutch citizens, and Mexican nationals although there is a thorough application and interview process to be admitted. If an individual does not meet the requirements of Global Entry, his or her application may be denied though there is an appeals process.n
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are for the publics convenience and unlimited use and that uploading protected works to YouTube is okay. Unfortunately, the convenience and common practice of infringing activity on UGC sites masks the seriousness of copyright violations and the complexity of copyright law. The House Judiciary Committee estimates that 25% of Internet traffic is infringing.4
The Protect Intellectual Property Act, also referred to as PIPA, was the Senates version of SOPA with few differences.
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that might, in the effort to catch intellectual property thieves, cause us to lose the benefits derived from online free speech.
A Global Issue
SOPA opponents quickly compared its provisions to Chinas web censorship policies. The idea that America would import any part of Chinas web censorship policy to protect intellectual property raised First Amendment concerns and concerns regarding collateral damage to the public interest. Despite Chinas web censorship and extensive oversight, the World Trade Organization in 2009 found that China failed to protect and enforce U.S. copyrights and trademarks on a wide range of goods.14 The International Intellectual Property Alliance modestly estimated a loss of $3.7 billion in music, movie, book and software sales.15 Ironically, that same year, a group of Chinese writers claimed that Google infringed on their copyrights by scanning their books into the Google Library.16 The Business
Software Alliance recently reported that 78% of all software sold in China in 2010 was pirated.17 One of the most stunning acts of piracy in China came to light last year with the discovery of a counterfeit Apple Store in the city of Kunming, complete with a Genius Bar, transparent staircase and blue t-shirted staff.18 Although China has signed onto the Berne-Convention Treaty and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), it has failed to enforce copyright laws mandated by those agreements. Online piracy is a global issue in need of more effective measures to address the unique cultures where it exists. In its 2010 report, the Business Software Alliance reported PC software piracy rates by region.19 Central and Eastern Europe were tied with Latin America as the most prevalent regions, having 64% of pirated PC software. The Asia-Pacific region, the Middle East and Africa rounded out the top four. North Americas PC software piracy rate was the lowest, at an estimated 21%. While some
Aball Milne Kalil, P.A. is a Miami legal boutique, now in its nineteenth year, which focuses its practice on international commercial litigation, international business transactions, tax and estate planning, and domestic real estate transactions. The firms attorneys are fluent in a number of languages including English, Spanish, Portuguese and French, and have connections with a strong network of capable lawyers across the United States, Europe, Latin America and the Far East. www.aballi.com
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Following the rulings against Grokster and Napster and their file-sharing practices, Steve Jobs provided a profitable, legal solution to rights holders and intermediaries of protected works with his ninety-nine-cent iTunes download option. The future lies in embracing such relevant, innovative technologies.n Kimra Major-Morris is an intellectual property and business law attorney in Orlando, Florida.
1 Victoria Espinel, Aneesh Chopra, & Howard Schmidt, K. Major-Morris Obama Administration Responds to We the People Petitions on SOPA and Online Piracy, the whIte house Blog, 14 Jan. 2012, http://www.whitehouse.gov/ blog/2012/01/14/obama-administration-responds-wepeople-petitions-sopa-and-online-piracy. 2 http://judiciary.house.gov/issues/Rogue%20Websites/011812_SOPA%20Myth%20vs%20Fact.pdf. 3 Nick Perry, Popular File-sharing Website Megaupload Shut Down, u sa t oday , 20 Jan. 2012, available at http://www.usatoday.com/tech/ news/story/2012-01-19/megaupload-feds-shut-
Conclusion
As nations scramble to address online piracy and the United States Congress attempts to find a medium between protection of property and public interest, it will be fascinating to witness the evolution of this unique area of the law. The House Judiciary Committee defended its interest in censoring infringing online activity by comparing it to the duty to stop online child pornography.25 As it stands, the broad language of SOPA buries former Justice Potter Stewarts
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Football Association Premier League Limited and others v. QC Leisure and others; Murphy v. Media Protection Services Limited
Landscape Change for Rights Licensing in europe, But not All Good news for Public Venues
By Danielle amor, London, England
A ruling of the Court of Justice of the European Union (CJEU) has recently raised the interplay between the notion of a free internal market within the European Union and the rights of television broadcasters to restrict access to their services from outside the territory for which they were intended. The decision has left both consumers and rights-holders in a state of flux, pending an application of the ruling by national courts. This article considers the complex issues addressed by the CJEU; namely, do copyright laws in the EU provide sufficient redress for broadcasters with exclusive rights in one particular member state, and is it against the fundamental principles of the EU Treaty to permit broadcasters to prevent access to services that are legitimate in other member states? are no longer) by the operators of the Arab Radio and Television Network (ART). In theory, FAPL would be prepared to license the rights outside the UK on a global or pan-European basis, but traditionally the interest in such a licence has been low because operators tend to broadcast in only one territory, often due to language barriers (e.g., German subscribers want to receive German programming). In the UK, a typical subscription to the BSkyB sports channels for a public venue (such as a pub) costs some several thousand pounds per year. In Greece, a subscription and ancillary equipment costs around 700 per year. Both services broadcast the same footage, albeit with different commentary, advertisements and so on. Enterprising individuals (such as the defendants in the first and second combined cases, to whom we shall refer as the suppliers), realised the potential market for the cost savings and began importing Greek and ART decoder cards into the UK, thereby allowing pubs (such as the four defendants in the third action, which defendants shall be referred to as the pubs) to receive the Greek or North African broadcasts in the UK and screen the matches to customers. Aside from the cost savings, the foreign signal was of particular benefit to pubs since in the UK live football matches cannot be broadcast between 2:45 and 5:15 on a Saturday afternoon so as to promote attendance at the games. The decoder cards were legitimate in the sense that they had been supplied by NOVA or ART. In order to obtain the Greek cards, however, the suppliers had to provide details of Greek residents or businesses using the cards. On the ART cards was printed, at least for a time, a prohibition that the cards were not to be used outside the territory in which they were sold. The importance of this case is that it did not concern pirate cards manufactured and supplied by unauthorised third parties. The decoder cards in question were authorised by the rights-holder in the territory in question, except that the rights-holder was under an obligation to prohibit access to its service from outside the territory. FAPL argued that the sale of these foreign decoder cards in the UK and their use to receive foreign broadcast signals of English Premier League matches infringed FAPLs rights in the UKin particular, their copyright on the underlying works comprising the broadcast and their right to prevent unauthorised reception of broadcast transmissions. Essentially if this practice were permitted, it would undermine FAPLs entire licensing system, with the provider offering the cheapest subscription likely to become the pan-European broadcaster. This would seriously impact FAPLs revenues and, potentially, the success of the competition. In the criminal case, Ms. Murphy ran a pub in Hampshire and had obtained a decoder card that enabled her to access the NOVA broadcasts of the English football matches. Ms. Murphy was convicted under section 297(1) of the Copyright, Designs and Patents Act 1988 (CDPA) for dishonestly receiving a programme included in a broadcasting service with the intent to avoid payment of any charge applicable to such reception. Ms. Murphy was fined 2,000 and ordered to contribute 5,000 towards the prosecutions costs. Upon hearing Ms. Murphys appeal, the High Court
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Background
The CJEU was asked to provide a preliminary ruling on a number of questions arising from two cases before the UK courts, one being a set of combined civil actions and the other a criminal action. In the civil actions, the High Court of England and Wales was hearing claims brought by the Football Association Premier League (FAPL). FAPL runs the top-flight national football competition in England and holds the rights to record and broadcast the football matches which it licenses to broadcasters on a territorial basis depending on demand. In the UK and Ireland, the rights are held exclusively by BSkyB. In Greece, the rights to screen the matches are held by the operators of the Greek platform NOVA (also claimants in these proceedings). In the Middle East and North Africa, the rights were held (but
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Issues
Both cases involved a number of complex issues requiring interpretation of national and European legislation and the consideration of the relationship between intellectual property rights and anti-competitive practices. The High Court proffered its own opinions on some of the issues, the Advocate-General delivered her (non-binding) opinion on the case in February 2011, and then the CJEU gave its ruling in October 2011. This article focuses on the CJEU ruling and its impact on the outcome of the cases. 1. Are the defendants liable for having used unauthorised equipment in the uK to access foreign broadcast signals? Sections 297A and 298 of the CDPA provide civil and criminal penalties in the UK for the supply and possession of apparatus designed or adapted to enable access to pro-
(b) Can national law prevent the use of a conditional access device if it is not illicit? Lord Justice Bunton, hearing the Murphy appeal, considered that if Article 3(2) of CAD prevented member states from implementing measures that go beyond those required by the remainder of the directive, any such national measures that have been implemented must be assessed in accordance with the usual principle of
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course you cant partition the market on a geographical basis, they would say . . . and so said the CJEU. By conferring upon rights-holders legal protection in the event of a breach of the terms of use of the foreign decoder cards, national legislation constitutes a restriction on the freedom to provide services in breach of Article 56 TFEU unless it can be objectively justified. The CJEU acknowledged that the protection of intellectual property rights is an accepted justification for restrictions on the free movement of goods or services. In this case, however, FAPL could not claim copyright in the football matches per se since they were not works. Nonetheless, pursuant to Article 165(1), TFEU member states are to contribute to the promotion of European sporting events. Therefore, if the national legislation in question is designed to confer protection on sporting events, such a restriction may be justifiable provided it does not go beyond the objective of protecting the intellectual property at issue, a matter for the national court to assess. Intellectual property rights, said the CJEU, are intended to enable rights-holders to exploit their works commercially in return for remuneration, but they do not guarantee the opportunity to demand the highest possible remuneration. Only appropriate remuneration is ensured. In this case, the rights-holders are remunerated for the broadcast services from the member state of broadcast (for example, NOVA pays a licence fee to FAPL from Greece). There is nothing to stop FAPL from requesting higher remuneration based on the potential reception of the broadcast throughout the EU. This territorial exclusivity has resulted in an artificial price differential between the partitioned national markets. This, according to the CJEU, is irreconcilable with the TFEU. The premium paid for such territorial exclusivity does not form part of the appropriate remuneration that must be ensured. Further, such territorial restrictions in FAPLs licensing agreements constitute a restriction on competition pro-
hibited by the TFEU if FAPL obliges national broadcasters not to supply decoding devices enabling access to their service outside the territory covered by the licence agreement (e.g., Greece). FAPLs argument that the restriction is justified on the grounds that the broadcast blackout period in the UK encourages people to attend games at the stadiums was also rejected. The CJEU held that if this is a legitimate concern, appropriate provisions could be included in the rights agreements with broadcasters, but it would not be legitimate to restrict access to the service completely. Consequently, the prohibition on the use of foreign decoding devices cannot be justified on the basis of protecting intellectual property rights or promoting match attendance. Therefore, the TFEU precludes national legislation that makes it unlawful to import into the UK and sell and use foreign decoding devices. This conclusion is not affected by the fact that some subscribers procured the decoder devices through the use of false names and addresses and/ or used them for an unauthorised purpose (i.e., residential subscribers who used the card for a commercial purpose). PUBS 2; FAPL NIL
Principle of free movement of goods trumps any intellectual property rights subsisting in the football matches and the promotion of match attendance. The FAPL has already been appropriately remunerated for the exploitation of its broadcasts. Territorial restrictions in licence agreements are permitted, but a ban on the sale of decoders crossborder is not; and the goal of promoting attendance at stadiums is not sufficient justification for such partitioning.
The CJEU noted that this aspect of the decision does not affect the conclusion of Coditel I which concerned the communication of works to the public without authorisation from the relevant rights-holders in
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issue, Kitchin LJ did refer the matter to the CJEU. The CJEU used the language from its earlier decision in Infopaq to rule that it is for the national court to decide whether transient fragments of the copyright works within the decoder or on the television screen contain elements that are the expression of the authors own intellectual creation. In this regard, the CJEU essentially agreed with Kitchin LJs interpretation. (b) Transient copy defence Section 28A CDPA transposes Article 5(1) of the Copyright Directive and provides a defence to infringement with respect to transient copying. In order to benefit from the defence under the Copyright Directive, the copy must be temporary, transient or incidental, and be an integral and essential part of a technological process (it was agreed these criteria were met). In addition, the copys sole purpose must be to enable a lawful use of the work and it must have no independent economic significance. The claimants argued that use of the work was not lawful, and since the pubs do not have a BSkyB subscription, the transient copy is the sole basis upon which FAPL and BSkyB can extract value from their rights. Kitchin LJ showed some sympathy with the defendants argument that the transient copies in the decoder could not have any independent value. With respect to the transient copies of the television screen, however, he thought it may be important to take other matters into account, including the extent to which the underlying works form only a small part of the programming (here, the artistic works) and whether it is reasonable for FAPL to seek to extract further fees in addition to those already paid. On lawfulness, the CJEU ruled that since the reception of broadcasts and their visual display in private circles is not an act restricted by UK or EU legislation and since the use of foreign decoding devices is also permitted in the UK, the transient acts of reproduction have the sole pur-
pose of enabling lawful use in accordance with the Copyright Directive. In addition, the CJEU thought no independent economic significance was derived from the temporary acts of reproduction. Such acts form an inseparable and non-autonomous part of the process of reception and are not capable of forming an additional economic advantage beyond that derived from the mere reception of the broadcasts. In reaching this decision, the court took into account the purpose of the provision; namely, the promotion of the development and operation of new technologies, which could be impeded if technological processes in decoder boxes and on television monitors were not permitted. PUBS LEAD IT, 3-NIL!!
There is no liability for infringement by copying. Only a substantial part of the artistic works forming part of the broadcast are capable of being reproduced within the decoders and on the TV monitors (not the films or the sound recordings), and the defendants can rely on the transient copying defence with respect to that copying.
(c) Communication to the public Communication to the public is a current hot topic in the UK, receiving much commentary and attention that has proven particularly useful for claimants with regard to internet streaming and websites that make available pirated content, although the protected scope of such communication is pending consideration by the CJEU in another reference from the UK on broadcasting rights. Section 20 CDPA makes it an act restricted by copyright to communicate to the public: a literary, dramatic, musical or artistic work; a sound recording or film; or a broadcast. Communication to the public means communication by electronic transmission and includes the broadcasting of a work. The claimants submitted that the pubs were communicating the copyright
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And so it would seem, despite the suppliers being entitled to sell the Greek and North African decoder cards and despite the pubs being entitled to purchase and use them in the UK, the pubs are not entitled to screen certain works comprising the broadcast to the public without authorisation from the FAPL or NOVA. (d) Free showing of a broadcast defence Thats not quite the end of the story, however. Section 72 CDPA states that it is not an infringement of broadcasts, certain sound recordings or films to show or play a broadcast in public to persons who have not paid for admission to the place where the broadcast is seen or heard. Interestingly, in the High Court the FAPL accepted that customers of pubs are not to be treated as having paid for admission. It should also be remembered that FAPL was not relying on copyright in the broadcasts but the underlying works forming part of the broadcast. In the High Court, Kitchin LJ accepted that this section provides a defence to section 19 CDPA infringement (namely infringement by performance, showing or playing of a work in public) of films but not underlying works such as musical works forming part of the broadcast. Does section 72 also provide a defence to communication to the public? The section was
not considered by the CJEU in its ruling but was subsequently applied when the FAPL case returned to the High Court.
Final score
On 3 February 2012, the High Court delivered its judgment in the FAPL case following a hearing in December 2011.1 Applying the CJEUs ruling, Lord Justice Kitchin decided that certain copyright works owned by the claimants had been infringed by communication to the public by the pubs, and the suppliers were also liable for authorising the pubs to so infringe. Kitchin LJ also decided that section 72 CDPA did apply to infringement under section 20 (communication to the public) as well as under section 19 (showing or playing certain works in public). Otherwise, the entire purpose of section 72 would be defeated since there would always be infringement by virtue of the acts in question under section 20. This is a helpful clarification of the legislation. Victory is, however, bittersweet for the claimants. Due to the section 72 defence and the other findings of the High Court decision in 2008, only the artistic works and musical works forming part of the broadcast have been infringed by the defendants; namely, the FAPL/NOVA logos and other graphics that appear on screen during the matches, and the FAPL anthem. In light of the scale of the infringements, Kitchin LJ
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Post-Match Review
Neither party is likely to be particularly overjoyed with the final result. The CJEU effectively ruled in the defendants favor on all but one issuebut no doubt FAPL will
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Introduction
With a reputation as an insufficiently regulated frontier for inventors, India is now becoming known as one of the stricter jurisdictions in which to apply for a patent. For multinational corporations (MNCs) in the pharmaceutical industry, Indias amended intellectual property (IP) code offers an opportunity to perform research and development (R&D) while protecting marketing rights to the final product, all at a lower cost than if performed in the West. MNCs, however, face the prospect that their existing products may not enjoy the same protection enjoyed in other countries and the prospect that market competition will be fiercer. Over the past decade, India has largely overhauled its patent protection laws in order to comply with the countrys obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Greater legal protections for inventors ordinarily would encourage creative entry into a market, but here, stricter regulations imposed on innovators and laboratories may be too restrictive to facilitate quick patent approvals. MNCs attempting to shield their prize products in the new patent regime are already challenging some of its provisions. Critics of these new laws argue that the stricter policies continue to promulgate a system favoring and protecting local industry rather than inviting fair participation in the market by outside players. The Indian government and domestic pharmaceutical advocates counter that these laws create a level playing field for all companies and encourage the distribution of lower-cost drugs to the general population. This article offers a short overview of the current patent regime in India, as well as
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analysis of several recent cases highlighting the frustrations of MNCs accustomed to more liberal patent laws in Western countries. These case studies touch upon two TRIPS-related and pharmaceutical-specific IP enforcement concerns for MNCs: tolerance of evergreening, and process versus product patents. Since 2005, Indias patent laws have become stricter in scope and enforcement, incorporating the countrys international obligations under the TRIPS agreement. The IP legal code relating to patents, before the Patent (Amendment) Act of 2005 (Amendment Act), was molded both by the countrys own protectionist and socialist political culture and by the British laws in effect before independence.
similar legal structures. For example, the Indian Patents and Design Act of 1911 integrated the British patent system into the local code, and although colonial law, it was not designed to encourage Indian entrepreneurship.2 It would not be until 1970 that India had an IP code consolidating the looser patent policies that had been enacted by the newly independent government in order to develop a domestic pharmaceutical industry. In 1970, the Congress passed the Patent Act, which was intended to reverse the dominance of foreign corporations and prevent them from obtaining patents only to export the products and revenues generated. The Act accomplished this goal not by recognizing product patents (the patent specifically protecting the invented or discovered final product), but by recognizing only process patents (a patent protecting the process used to create the product). Besides scaring away MNCs from operating in India by ignoring product patents, the focus on process patents had the consequence of guiding the domestic pharmaceutical industrys growth toward production of generic drugs and reverse-engineering, a less sustainable strategy than one focused on innovation and R&D.3 In 1994, the TRIPS agreement was incorporated into the General Agreement on Trade and Tariffs (GATT). The purpose of TRIPS was to provide a universal standard for intellectual property laws that would combat piracy, clarify and consolidate previous IP-related treaties, and streamline trade. For purposes of this analysis, the most important part of the Agreement affecting the pharmaceutical industry in India is the requirement that member countries make patents available for any inventions, whether products or processes.4 TRIPS
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evergreening Controversy
Under Section 3(d) of the Amended Act,
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Looking Ahead
The Novartis case has received much attention over the past half-decade for more than just being the first case to challenge a portion of the Amendment Act. The outcome of this case, considering its extended litigation history, is important because a plethora of cases related to Section 3(d) are waiting to be docketed around the country.30 Other product patent applications have been denied or invalidated based on Section 3(d) of the Amendment Act, but in the Novartis case, the Indian Supreme Court will have the opportunity to clarify any misconceptions that remain about whether Indias patent regime is truly TRIPS-compliant. A decision against Novartis would appear to leave an uncertain future for MNCs in the Indian pharmaceutical sector. Without domestic protection for product patents, some Indian pharmaceuticals may continue to challenge foreign patents belonging to MNCsand the validity of any domestic applicationby simply producing their own generic version. Thus, the Supreme Courts interpretation may greatly affect the patience MNCs have for the Indian market. If the Supreme Court holds against Novartis, it may have the positive effect of forcing MNCs in India to innovate; but with cheaper labor to the north in Chinaand more established and convenient patent regimes in the Westthat is unlikely. If the Court decides in favor of Novartis, MNCs will have more incentive to begin or continue investing in R&D within India. Indian pharmaceutical companies, too, will be forced to invest more heavily in product innovation and veer away from generic-focused production models due to fewer opportunities to rely on the traditional model of process patents.31 As the Indian Supreme Court prepares to issue its final decision, and other avenues of appeal for Novartis seem to have run dry, all eyes will be on this case. This decision, likely more than any other related to
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counterfeit and infringing merchandise from entering the U.S. CBPs IPR Database extends and facilitates the protection that is provided by federal trademark and copyright law; specifically, the Lanham Act or Trademark Act for trademarks, and the Copyright Act for copyrights. The U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office administer these laws as they relate to the filing of applications and granting of registrations, and the U.S. federal courts are the sole forum for disputes concerning these laws after the trademark or copyright has been registered. The fact that the USPTO and the Copyright Office control the registration and record keeping regarding trademarks and copyrights is important to know because without a valid trademark or copyright registration, CBP will not allow the recordation of the intellectual property. CBP relies on the USPTO or the Copyright Office to determine whether the intellectual property should be registered and afforded the appropriate protection. The process for a trademark owner to record
a trademark with CBP starts with the USPTO. The trademark owner must first fill out a trademark application and go through the trademark registration process, which can take over a year in many circumstances. Although it may seem like common sense, the trademark application must establish use in commerce prior to being registered. CBP requires a registration number to establish that the trademark has been registered. Thus, a mere intent-to-use application, which allows the applicant to begin the trademark registration process before actual use in commerce has begun, will be insufficient for purposes of a CBP recordation, as no registration number is issued until actual use in commerce has been established. After the trademark owner successfully registers the trademark with the USPTO, an application to CBP must be submitted to be recorded on the IPR Database. Since the heavy lifting has already been done by the USPTO, the recordation application takes substantially less time to process, and recordations may be achieved in a matter of weeks or months. A notable difference between the USPTO and CBP applications is that the latter asks for the names of subsidiaries, affiliates, or licensees that are allowed to import merchandise bearing the trademark. The fact that CBPs recordation application includes such an inquiry underscores the difference between CBP and USPTO responsibilities. Unlike the USPTO, CBP uses the recordation information in a policing role to prevent infringing or counterfeit merchandise from entering the U.S., whereas the USPTO application is used to qualify a trademark for federal protection. Once recorded with CBP, the trademark will be listed in the IPR Database, which
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International Law Quarterly special Brazil edition Release and holiday Party
14 December 2011
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because YSLs shoes had a similar red bottom. YSL refused to stop selling the shoes, and CL brought suit for trademark infringement, among other things. YSL countered, claiming that CLs mark was unworthy of trademark protection and should therefore be cancelled. The opinion in the Louboutin case gives full credit to the recognition achieved by CLs trademark, and the shoes that the trademark adorns. CL desired to break away from the industry standard and add a unique element to its shoes. The redlacquered bottoms on CLs shoes were meant to excite and be considered flirtatious, memorable, engaging, and passionate. CLs efforts worked, and in the fashion world and high-end social circles and clothing markets, the red-lacquered soles on the bottom of high-heeled shoes became closely associated with CL. For this recognition and brand status, CL was able to demand upward of $1,000 for pairs of its shoes. The evidence establishing the consumer publics recognition of the redlacquered sole as a CL shoe was substantial and incontrovertible. Since one of the key goals of trademark law is to prevent consumer confusion as to the source of the goods, it would seem that CL would have an easy case. Unfortunately for CL, this case took a turn in the opposite direction. YSL did not challenge the fact that shoppers associated CLs trademark with the source of the goods. YSLs challenge was instead based on the doctrine of aesthetic functionality. Aesthetic functionality stands for the proposition that a design is functional and should not be afforded trademark protection if its aesthetic value is able to confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs.4 Color, in particular, may not be protectable where it is functional, meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product and therefore would put a competitor at a disadvantage.5 The Louboutin court found that CLs
trademark was functional and should not be afforded trademark protection. The court reasoned that a mere color was insufficient to identify sponsorship or source in the fashion industry because, like art, fashion uses colors or designs in an expressive, functional and ornamental manner. To prevent other designers from using a color would restrict an artists or designers ability to express or convey emotion or feeling through art. For example, such a restriction would prohibit competitors in the industry from making certain types of shoes that were designed to be only one color, or monochromatic, due to the style or expression of the shoe. The court found this kind of restriction impermissible and contrary to the goal of trademark law protection. On the other hand, the court noted that the use of color in a mark is allowed but only in distinct patterns or combinations of shades that manifest a conscious effort to design a uniquely identifiable mark embedded in the goods.6 The court ended its opinion by stating that CLs claim for trademark infringement must fail because such infringement requires a trademark that merits protection. Since the court found CLs trademark to be unworthy of trademark protection, there could be no infringement. The court, and Judge Victor Marrero, went further and stated that an order cancelling the trademark was imminent unless CL could show good cause against it. Given that CLs trademark has all but been revoked, the decision has received a lot of attention. CBP, however, has not given Louboutin due attention, and CLs trademark recordation still exists on the IPR Database. Although this is partially due to the fact that the case continues to make its way through the judicial process, it does raise an important question: how would CBP know if CLs trademark was cancelled? After pondering this question, conducting research, and making phone calls to both the USPTO and CBP, it was determined that CBP does not know a trademark is cancelled until somebody contacts CBP and provides proof thereof. At
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M. De Biase
Endnotes:
1 Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011). 2 Intellectual Property Rights Fiscal Year 2011. CBP Publication 0153-0112 (6 Jan. 2012). 3 Restricted gray-market articles are articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the U.S. or a corporation or association created or organized within the U.S. and imported without the authorization of the U.S. owner. 19 C.F.R. 133.23(a). 4 Louboutin, 778 F. Supp. 2d at 450 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 170 (1995)) (internal citations omitted). 5 Louboutin, 778 F. Supp. 2d at 450, 453. 6 Id. at 451; see, e.g., Louis Vuitton Malletier, 454 F.3d at 116 (LV monogram combined in a pattern of rows with 33 bright colors); Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 WL 1675080, at *5 (S.D.N.Y. June 10, 2009).
We want you!
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Raising the Bar on Bona Fide Intent to use in u.s. Trademark Applications
By James Michael Faier, Chicago, Illinois
More than 60% of the trademark applications filed in the United States Patent and Trademark Office (USPTO) may have a fatal flaw. A federal trademark applicant must prove either use of the trademark or declare, at time of filing, a bona fide intention to use the trademark. This bona fide requirement is for both intent to use (1b) and foreign registration (44) applicants. Bona fide requires documentary evidence of intent, says the USPTOs Trademark Trial and Appeal Board (the TTAB or board). In the case of Honda Motor Co., Ltd. v. Friedrich Winkelmann,1 Honda, which holds CIVIC registrations, opposed Winkelmans application to register V.I.C. for vehicles and parts. Honda prevailed on a Motion for Summary Judgment. Winkelmann claimed both 1b and 44 filing bases. Honda argued that as a matter of law Winkelmanns application was void from the start because he lacked a bona fide intent to use when he filed his application. Honda buttressed its argument with discovery responses from Winkelmann. Honda asked Winkelmann for his business plans, strategies, arrangements, and methods used in connection with the use of, or intent to use, the mark for the identified goods. Honda also asked for the channels to be exploited. Winkelmann responded that he had no activities in the U.S., and he had not produced the requested materials for the U.S. market. Asked for documents to evidence an intent to use, Winkelmann responded, Not Applicable. Winkelmann contended evidence of his bona fide intent to use the mark in the U.S. is found in his use of the mark in Europe and through the trademark applications and trademark registrations owned in other countries. Winkelmann provided to Honda printouts in German from his website and provided
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copies of his German, European and international (WIPO) registrations. The TTAB held that while the evidence necessary to support bona fide intent to use may differ from case to case, the evidence provided by Winkelmann of foreign registrations and Internet printouts did not demonstrate trademark use for the claimed goods.2 The TTAB noted that as a general rule, the fact question of intent is badly suited for resolution through a motion for summary judgment.3 The board wrote that the absence of any documentary evidence regarding an applicants bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1(b) of the Trademark Act. The board held that the documents did not show that the applicant had an intent to use the mark in the United States. The Board noted that the website printouts were not translated into English, and that the images on the website related to car care packages and not vehicles or other goods recited in the application. The board held that the materials presented did not create a genuine issue of material fact sufficient to defeat the Motion for Summary Judgment.4 According to the USPTO Trademark Electronic Search System (TESS), applicants filed 4,473,873 applications from 1990 to 2011. Only 1,750,096 of those applications claimed that the marks in the applications were in use (1a of the Act) when the application was filed. In the other 2.7 million cases, the applicant (basing the application on 1b Intent to Use, 44e Foreign Registration, or, more recently, 66a Madrid Protocol) declared a bona fide intention to use the mark. In light of the Honda decision, applicants would be well served to have a business plan and other documentation in their files at the moment the application is filed. Although this case does not provide
information on point, an applicant who files an application without bona fide intent to use the mark may not cure that failure by actions at a later time since the statute requires such intent at the time of filing. In its decision, the TTAB identified interrogatories and requests for documents from Opposer (Honda) to Applicant (Winkelmann). Opposer propounded discovery that focused on the period prior to the filing of the application. In its interrogatories, Opposer asked for (1) business plans, strategy papers, and arrangements used by Applicant in connection with the use of, or the intent to use, the mark for the identified goods, and (2) the channels of trade to be exploited in the U.S. by Applicant. In its document requests, Opposer asked for (1) documents to identify all intended uses of Applicants mark on, or in connection with, the claimed goods, (2) documents to identify products of Applicant associated with Applicants mark intended to be used, and (3) documents Applicant intends to use to promote, advertise, publicize, offer to sell and/or sell in connection with the mark. In addition to the 1(b) filing basis, Winkelmann claimed foreign registration basis under Section 44 of the federal trademark act. The board noted that when an applicant files an application based on 44, the applicant must verify in writing a bona fide intent to use the mark in U.S. commerce. When that bona fide intent under 44 is questioned, the board uses the same objective, good-faith analysis that it applies in a bona fide intent question in a 1(b) matter.5 The board appears to point to the importance of evidence in the record of an existing business that provides the goods or markets the service listed in the application. In a footnote in the Winkelmann decision, the TTAB cited to Lane Ltd. v. Jackson International Trading Co.6 In Lane, the
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tential marks, file to register them, and then embark on testing to whittle them down. The U.S. continued to be a country that required actual use as the basis for registering a trademark. Most countries around the world do not require evidence of use prior to registration. The open question raised by the Winkelmann decision is whether there is much benefit to be had from the intent to use provisions if one must make a large planning investment prior to filing an intent to use application.n James Michael Faier, M.P.P., M.B.A., J.D., is a registered patent attorney in Chicago. He holds degrees from Pomona College,
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1 March 2007. The countrys legislation now contains the minimum standards of protection, although the DR has not yet unified trademark registrations among the contracting parties. For the purposes of unifying trademark registrations, the DR-CAFTA contracting parties agreed to make all reasonable efforts to ratify or accede to the Madrid system, which is comprised of the Madrid Agreement Concerning the International Registration of Marks (1891) and its modifications, and the Madrid Protocol of 1989, and its further modifications, currently administered by the International Bureau of WIPO located in Geneva, Switzerland. The Madrid system allows trademark owners to have a trademark protected in several countries at the same time by filing one application directly with a national or regional trademark office.3 Because the Dominican Congress has not yet ratified
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Law no. 173 Regarding Protection of Agents, Importers of Merchandise and/or Products in the DR
The foreign manufacturer may import and sell products in the DR directly or through a local distributor or agent. When designating a distributor, the foreign manufacturer will have to take into consideration the DRs protectionist agency legislation: Law No. 173 on Protection of Importer Agents, Importers of Merchandise and/ or Products of 6 April 1966, as amended (Law 173),25 which governs the distribution and sale of goods and services and the distribution or agency relationship between a foreign manufacturer (licensor) and a local distributor (licensee). The principal objective of Law 173 is to protect the rights of local distributors, agents, and/or representatives from unfair practices of foreign enterprises, such as the unilateral termination of contracts.
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heat resistant and insulating properties in shipyards across Scotland but particularly in Clydeside, in locomotive construction, motor engineering and at the oil refineries in Grangemouth to name but a few areas. The result is that West Dunbartonshire in Scotland has the highest incidence of mesothelioma in the UK, with Inverclyde, Renfrewshire and Glasgow similarly affected.1 Asbestos use was similarly prevalent in England, particularly in the railway industry, the heavy manufacturing industries in the North East (Tyneside is classed as an area of high risk for mesothelioma deaths2) and in the nationwide construction industry as asbestos and asbestos-containing materials were used in a large number of buildings. For a long time the dangers of asbestos use were observed but not widely understood. Increased life expectancy and advances in medical science have meant that asbestos-related disease, which often takes several decades to develop after exposure, has become more prevalent. It is difficult to estimate the number of asbestos-related cancer deaths per year in the UK but the Health and Safety Executive estimates it
Constituent elements of the tort (in england) and delict (in scotland) of negligence
The actionability of pleural plaques in England and Scotland has led to judicial examination of what constitutes damage for the purposes of the tort/delict of negligence. For the purposes of this article,
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making capacity of the Scottish government. The legislation was framed in such a way as to make pleural plaques claims financially realistic from the standpoint of the affected individual by ensuring that liability of the negligent employer could be passed to the insurer. It is perhaps worth pointing out that not every claim based upon the Act will succeed. All the Act does is remove one procedural bar to recovery. Issues of proof, causation and liability remain in each case. In fact, issues of proof and causation may become particularly acute given that, post Rothwell, pleural plaques are not actionable in England. The pursuers will have to persuasively demonstrate that their pleural plaques resulted from exposure to asbestos whilst working in Scotland. For those individuals who worked both north and south of the border, it may be particularly difficult to prove which exposure led to the formation of the plaques. As all cases under the Act have been sisted (i.e., stayed) pending insurers appeal (and now to the Supreme Court), it will be some time before these issues of proof and causation are subject to judicial scrutiny. The Act is not directly aimed at insurers but at negligent employers who may have employers liability insurance which covers their negligent acts or omissions. The Act requires that the exposure to asbestos be shown to have occurred through the fault of the insured employer. The Inner House said that in that respect, when choosing to underwrite an employers liability risk, the insurer takes the risk that the law may develop in a way which results in the insured employer having a liability in circumstances which at the time of concluding the contract of insurance may not have been envisaged as giving rise to a liability.20 The Act does not, therefore, alter the insurers contractual liability to its insured. The liability incurred by the insurance companies will be for the negligent behaviour of the person or persons who paid their premiums. The Act simply, and importantly, differentiates the circumstances in which a claim for negligence can be brought from those in England.
A two-tier system?
We are left with a situation where in one jurisdiction, actions in delict may be brought on the basis of pleural plaques and in another, the House of Lords and the government have decreed that they are not sufficient damage for the purposes of the tort of negligence. Although, constitutionally speaking, this is arguably reflective of the impact of devolution in Scotland and the right of the Scottish Parliament to legislate for its people, from an insurance perspective it creates an interesting dichotomy where insurers straddle the two jurisdictions. A nationwide employer with a single employers liability policy will be indemnified for its liabilities stemming from pleural plaques in Scotland but not in England. Equally, employees of that nationwide company will be able to receive compensation for their pleural plaques in Scotland but not in England, and this may bring with it attendant issues of employment law. Scotland has decided that the country should not be responsible for the negligent mistakes of private employers who have the benefit of insurance, particularly where it is said that those insurers have been proceeding for the past thirty years at least that
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EWHC 88. 8 Id., 64. 9 Grieves v. FT Everard & Sons [2006] EWCA Civ 27. 10 Gibson v. McAndrew Wormald & Co. Ltd. 1998 SLT 562. 11 Axa General Ins. Ltd. & Ors v. The Lord Advocate & Ors [2011] CSIH 31. 12 Id., 12. 13 Id., 15. 14 Id., 19. 15 Axa General Ins. Ltd., Petitioners: [2009] CSOH 57. 16 Axa General Ins. Ltd. and ors, Petitioners [2010] CSOH 2. 17 Id., 230. 18 Axa General Ins. Ltd. & Ors v. The Lord Advocate & Ors [2011] CSIH 31. 19 Id., 148. 20 Id., 144. 21 Ministry of Justice briefing, Government announces measures on asbestos related illness, 25 Feb. 2010.
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Winter 2012
Creating Jobs and strengthening the u.s. economy Through the e Visa
By Giselle Carson, Jacksonville, Florida
As a result of the increased scrutiny of L-1 (Intra-Company Transferee) visas at USCIS, immigration attorneys and clients are looking at alternative visas to allow foreign skilled and talented entrepreneurs to come to the U.S. One of those visa options is the nonimmigrant E visa, which provides foreign nationals the opportunity to live, work, study and potentially gain legal permanent residency in the United States. There are three types of nonimmigrant E visas available: E-1 (for Treaty Trader); E-2 (for Investors); and E-3 (for certain Specialty Occupation Professionals from Australia). This article will focus on the E-2 visa, which is the most commonly used. the Department of State website.3 Treaties were first negotiated with Costa Rica (1852), Argentina (1854), Switzerland (1855) and Yugoslavia (1882). After World War II, a flurry of negotiation ensued between the U.S. and other nations to promote trade, and a significant number of the treaties currently supporting E visa applications came into existence. The countries most recently added to the list were Chile and Singapore in 2004. To qualify, the individual investor or employee and the E business must have the nationality of the same treaty country.4 The persons nationality is determined by the authorities of the country of which the person claims nationality. The business nationality is determined by the nationality of the majority owners of the business. When the treaty business is at least 50% owned by nationals of the same treaty country, the nationality requirement is satisfied. Problems can arise when the business is less than 50% owned by nationals of the treaty country. In those situations, a careful analysis of the nationalities involved must be undertaken, and the attorney should consider creating a trust and/or restructuring the business to satisfy the nationality requirement. A business applying for E status may have only one qualifying nationality. If the owner is a dual national (other than a U.S. citizen), he/she must chose which nationality to use, taking into consideration that the E employees of the company must possess the nationality of the qualifying country and hold themselves as nationals of that country. Nationals of a treaty country who are also U.S. citizens or U.S. legal permanent residents are not considered nationals of the treaty country and cannot be counted toward determining the 50% ownership for purposes of E-2 eligibility.
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scrutiny and inconsistencies of adjudications by consular posts around the world, coupled with the irrevocable expenses incurred by the client, can cause much stress to the applicant and his/her family.
Persons eligible
The Immigration and Nationality Act1 (INA) provides nonimmigrant E-2 classification for a national of a country with which the United States maintains an appropriate treaty of commerce and navigation and who is coming to the U.S. to develop and direct the operations of an enterprise in which the national or the petitioning company has invested, or is actively in the process of investing, a substantial amount of capital.
Additional Requirements
An E-2 Visa applicant must also show that: He/she has invested or is actively in the process of investing funds that are at risk or subject to loss if the business fails.5 Loans secured with assets of the investment are not allowed. Uncommitted funds in a bank account or similar security are not considered an investment. It is permissible to place some of the investment funds committed to the enterprise in an escrow account pending visa adjudication. The enterprise is real and operational.6 Speculative or idle investments do not qualify. The investment is substantial and proportional to the cost of the enterprise. The percentage of the amount invested in a low-cost enterprise is expected to be higher than the percentage of amount invested in a high-cost enterprise.7 The investment is not marginal.8 It must generate sufficient present or future income to provide a minimal living for more than the investor and his/her family. The investor is coming to the U.S. to develop and direct the enterprise.9 If the applicant is not the principal investor, he/she must be employed in a supervisory, executive or highly specialized capacity. Ordinary skilled and unskilled workers do not qualify. The applicant intends to depart the U.S. when the E status terminates.
Proof
Under the current economic climate, failure to offer sufficient proof that the business can create and support jobs for U.S. workers is one of the most common causes of E visa denials.11 A marginal enterprise is one that does not have the present or future capacity to generate more than enough income to provide a minimal living for the investor and his/her family. In order to show that an existing business is not marginal, the investor can present: U.S. corporate income tax returns; audited financial statements; annual reports; payroll registers; W-2 and W-4 tax forms; or cancelled checks for salaries paid and/ or corresponding payroll accounts. If the foreign investor is purchasing an existing business that has posted a net operating
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The Foreign Affairs Manual (FAM) notations for an E visa are very helpful. Lawyers should be sure to consult 9 FAM 41.51 and its notes on the E visa requirements when preparing the application.
Where to Apply
Whether to apply for E status in the U.S. or at the consular post is an important strategic determination that must be made after a full analysis of the facts of the case and the requirements of the applicable consular post. Although a foreign national in the U.S. can apply for a change of status to E status, in many cases it is best if the foreign national applies for an E visa at the consulate abroad because the general consensus is that the Department of State has primary jurisdiction for E visa issuance, and E classification approval by USCIS is not binding on the consular post. Unlike many other nonimmigrant visas, E petition approval by USCIS is not required in order to apply for a new E visa at a consular post. Visa applicants who obtain E visa classification in the U.S. will need to submit a new E visa application to the consulate for de novo adjudication. Factors to consider in deciding whether to apply in the U.S. or abroad include: consular processing will typically take longer than USCIS using premium process adjudication; consular posts have very specific formatting and presentation requirements that might be difficult to fulfill during the initial filing; and traveling needs. The applicant might be best served by applying at the consular post if he/she needs to travel abroad soon and/or frequently.
Length of stay
An E visa is typically issued for five years; however, the I-94, providing the length of stay allowed in the U.S., is given for two years at a time. In practice, a foreign national can depart the U.S. before the end of the five-year visa expiration and obtain a new I-94 providing an additional two years of authorized stay, which has the effect making the initial visa good for seven years. Extensions of stay may be applied for indefinitely, as long as the enterprise is viable and the applicant continues to meet the visa qualifications.
Conclusion
Despite its challenges, we are fortunate to have the E visa as an option for foreign nationals who want to come to the U.S. to live and work, helping to create jobs and strengthen our economy. I am hopeful that in the future our immigration laws will also include a more direct path for foreign entrepreneurs to obtain permanent residency in the U.S. so that they can continue to contribute to our country.n Giselle Carson is a shareholder with Marks Gray, P.A., in Jacksonville, Florida, and practices primarily in the areas of U.S. and global immigration and business, civil G. Carson litigation, wills, and estate planning. Ms. Carson was born in Cuba and immigrated to Montreal, Canada, before coming to the U.S. She is a frequent writer and lecturer on immigration and has represented clients in federal court and before federal and state agencies. She is General Counsel for the Jacksonville Regional Chamber of Commerce and a board member of the Jacksonville Bar Association. Ms. Carson can be reached at gc@ marksgray.com. Endnotes:
1 INA sec. 101(a)(15)(E). 2 9 FAM 41.51, Exhibit 1. 3 http://travel.state.gov/visa. 4 9 FAM 41.51 N2, N3.1, N.3.3; 22 C.F.R. sec. 41.51. 5 9 FAM 41.51 N8. 6 9 FAM 41.51 N9. 7 9 FAM 41.51 N10. 8 9 FAM 41.51 N11. 9 9 FAM 41.31 N12. 10 9 FAM 41.51 N10.4. 11 22 C.F.R. 41.51(b)(1)(i)); 9 FAM 41.51 N11. 12 22 C.F.R. 41.51; 9 FAM 41.51 N15.
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then enters into formal litigation against the U.N. Secretary-General at the UNDT. Cases may often be complex and require case-management hearings, pre-hearing motions, and oral hearings at one of the UNDTs locations (New York, Geneva or Nairobi). Thereafter, the UNDT, by means of a sole judge, renders a judgment on the case. A major innovation of the redesigned U.N. system is the establishment of the United Nations Appeals Tribunal (UNAT), which empowers either the staff member or the Secretary-General to file an appeal of a UNDT judgment. The UNAT ordinarily sits as a panel of three judges and decides matters by majority vote.10 The UNAT is competent to review appeals that allege, inter alia, that the UNDT exceeded or failed to exercise its jurisdiction, erred on a question of law, committed an error in procedure such as to affect the decision of the case, or erred on a question of fact, resulting in a manifestly unreasonable decision.11
Perhaps the best known example so far of the UNDTs judicial independence is the Bertucci judgment of 3 May 2010, in which a U.N. staff member applied for the post of Assistant Secretary-General in the Department of Economic and Social Affairs.14 After being interviewed and short-listed for the post, Bertucci became the subject of various widely publicized investigations. These ultimately did not result in any finding of impropriety, but Bertuccidue at least in part to the publicitywas not selected for the post. Instead, the U.N. hired another candidate without allegedly ever having interviewed that person for the post as was required by applicable U.N. procedures. Nevertheless, in filings before the UNDT, the Secretary-Generals legal representatives first asserted, and later departed from the assertion, that the appointee was interviewed for the post. The SecretaryGenerals office refused to comply, on the basis of confidentiality, with a court order to produce relevant documents.15 As a result, in a strongly worded opinion, the UNDT took an adverse inference against the U.N. Administration, found that the U.N. failed to follow its procedures with respect to the recruit, and found in favor of Bertucci by default judgment.16 On 11 March 2011, however, the UNAT set aside the default judgment because it determined that the UNDT had violated the Secretary-Generals right to a hearing and had exceeded its competence. The case was remanded to the UNDT President for further consideration.17 Nevertheless, the UNAT expressed its astonish[ment] at the U.N. administrations contradictory statements during the proceedings and noted that it was empowered to draw appropriate conclusions from the administrations refusal to execute the UNDTs order to disclose evidence to the court.18 Despite the UNATs reversal of the lower courts default judgment, the Bertucci case is strong evidence of the judicial independence, professionalism and competence of the judges of the redesigned U.N. system of administration of justice. Bertucci also demonstrates that the UNDT is prepared to overrule the U.N.s administrative authority where there has been a violation of its
internal laweven in politicized cases. Notwithstanding the above, there is still much work to be done to provide truly effective justice to staff members of international organizations. Staff members who wish to challenge administrative decisions face an uphill battle: proceedings are complex, experienced international civil service lawyers are costly, and most importantly, the limited resources of the U.N. Office of Staff Legal Assistance means that not all meritorious litigants will receive free legal representation. Therefore, fears of an inequality of arms are not ill-founded. In addition, non-staff members of the U.N., such as consultants or interns, have no recourse to the UNDT/UNAT even though they may participate in the core work of the organization and play an important part in its operations. Finally, the UNDT/UNAT is thus far disinclined to reinstate staff members who have been separated from U.N. service, and financial remedies may not properly compensate staff members for the professional harm that was caused by an unlawful decision. Nevertheless, the Bertucci case is but one example of the growing body of evidence revealing that international administrative tribunals are now more than a mere fig leaf of justice and may soon constitute a fig tree for international civil servants. Neil Fishman, LL.M. (Leiden), J.D. (Florida International), is assistant legal officer, Special Tribunal for Lebanon (STL), and adjunct lecturer of law, The Hague University of Applied Sciences. He may be contacted at neilfishman@gmail.com. Mr. Fishman previously served as a legal consultant to the U.N.-International Criminal Tribunal for the former Yugoslavia (UN-ICTY) Staff Association. The views expressed herein are those of the author alone and do not necessarily reflect the views of the STL or any other organization with which he is or has been associated. Endnotes:
1 See Reparation for Injuries Suffered in the Service of the United Nations, 1949 I.C.J. Reports 174, 185-87 (11 April). 2 See Yearbook of International Organizations,
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App. 3: Table 1, Number of International Organizations in this Edition by Type (2004/2005), available at http://www.uia.org/statistics/organizations/ types-oldstyle_2003.pdf. (The Appendix lists 245 conventional international bodies and 1743 other international bodies as of 2005. Please note that this number does not include non-governmental bodies such as Human Rights Watch that were not established by States.) 3 4 5 See U.N. Doc. A/65/350 at 10, 2. See C.F. aMerasInghe, 1 the law oF the InternaCIvIl servICe 9 (1994).
7 The ILO Tribunal adjudicates cases arising from over 50 international organizations such as the International Criminal Court, Interpol, the World Health Organization, and the World Trade Organization, to name but a few. See the ILO Administrative Tribunal website, http://www.ilo.org/public/english/tribunal. 8 See the U.N.s website, http://www.un.org/en/oaj/ unjs/. 9 See Report of the Secretary-General, Administration of Justice, 5, U.N. Doc. A/66/275 (8 Aug. 2011). 10 See U.N. Doc. A/Res/63/253 (17 March 2009), U.N.A.T. Statute, art. 10. 11 Id., U.N.A.T. Statute, art. 2. 12 Matthew Parish, An Essay on the Accountability of International Organizations, Intl org. l. rev. 277,
290 (2010). 13 See the U.N.s Activity Reports of the Office of Administration of Justice for leading jurisprudence, available at http://www.un.org/en/oaj/unjs/resource. shtml. 14 U.N. Dispute Tribunal, Bertucci v. SecretaryGeneral of the United Nations, Judgment No. UNDT/2010/080, 1-2. 15 Id., 12. 16 Id., 30. 17 U.N. Appeals Tribunal, Bertucci v. SecretaryGeneral of the United Nations, Judgment No. 2011UNAT-12 , 11 March 2011, 52. 18 Id., 44, 53.
tIonal
Id.
6 See United Nations Staff Regulations and Staff Rules, U.N. Doc. ST/SGB/2011/1 at iii.
(1367R)
Friday, June 22, 2012 Gaylord Palms Resort & Convention Center, Orlando/Kissimmee
Program Chair: Jennifer R. Diaz, Becker & Poliakoff, Coral Gables CLE Credit: 1.50 hours, .50 ethics / 1.50 hours International Law Certification
10:25 a.m. 10:30 a.m. Introductions Moderator: Ava Borrasso, Astigarraga Davis Mullins & Grossman P.A., Miami 10:30 a.m. 10:50 a.m. Hot Topics & Annual Developments Richard Lorenzo, ILS Incoming Chair, Hogan Lovells US LLP, Miami Mr. Lorenzo will cover a variety of hot topics and recent developments in the field of arbitration. 10:50 a.m. 11:15 a.m. Ethical Considerations Eduardo Palmer, Eduardo Palmer P.A., Coral Gables Mr. Palmer will address recent legislative developments in the State of Florida. In addition, Mr. Palmer will provide an overview of common ethical considerations for practitioners in arbitration proceedings and related case law.
11:15 a.m. 11:35 a.m. Developments in Domestic, International and Class Action Arbitration Overview of Case Law John H. Rooney, Jr., John H. Rooney Jr., P.A., Miami Mr. Rooney will address key recent legal decisions in the areas of domestic, international and class action arbitration. He will provide an overview of the most significant decisions. 11:35 a.m. 11:45 a.m. Questions and Answers Richard Lorenzo, ILS Incoming Chair, Hogan Lovells US LLP, Miami Eduardo Palmer, Eduardo Palmer P.A., Coral Gables John H. Rooney, Jr., John H. Rooney Jr., P.A., Miami Register for this program through Annual Bar Convention Registration. See The Florida Bar website, www.floridabar.org, for more information.
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Introduction
With Floridas rising population and skyrocketing energy consumption, a noose hangs around the neck of the states energy supply as it inches closer to a breaking point. Floridas residential electricity demand is one of the highest in the nation.1 Census data indicate that Florida remains one of the fastest-growing states of the past decade, adding 2.8 million people.2 Creating sustainable energy alternatives is no longer just trendy, but imperative. U.S. Senator Bill Nelson (D-FL) introduced legislation in the 2011 congressional session to extend a tax incentive program to algae-based biofuel producers, an incentive that is already afforded other cellulosic biofuel producers.3 Senator Nelsons legislation seeks to curb dependence on foreign oil through S. 748, the Algae-Based Renewable Fuel Promotion Act of 2011.4 The language of the companion House bill is straightforward: To amend the Internal Revenue Code of 1986 to expand the definition of cellulosic biofuel to include algae-based biofuel for purposes of the cellulosic biofuel producer credit and the special allowance for cellulosic biofuel plant property.5 This bill should be considered a momentous stepping-stone to more energy options for Americans. Technology for the production of energy from algae is proliferating. Considering the short life span of algae and its replication capacitiesand the high-return on investment for algae-based biofuelthe energy possibilities are limitless. Yet, the technology remains stagnant and underdeveloped in certain respects. The potential for algae-based biofuel will not be fully realized without considerable political will and scientific expertise. This paper will explore whether algae-based biofuel is a viable alternative energy option and how the proposed federal tax incentive and other
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governmental and educational programs could help propel its development. No current regulation exists specifically with respect to algae-based biofuel as it falls under the broad category of cellulosic biofuels. This paper suggests public policy imperatives in Florida, in concert with the proposed algae-based biofuel tax credit, to address the economic issue of having this renewable energy alternative become sustainable and less costly in order to encourage its use on a broader scale. Floridians cannot do it alone. Policy-makers in Florida and in Chinaa country also making strides in the algae-based biofuel sectorwill need to work together. Other U.S. states might take a lesson from Florida and view China as a natural strategic partner.
barrel.9 Authors of the EBI report, Nigel Quinn and Tryg Lundquist of the Lawrence Berkeley National Laboratory (LBNL), conclude, Algae oil production will be neither quick nor plentifulten years is a reasonable projection for the R&D to allow a conclusion about the ability to achieve relatively low-cost algae biomass and oil production, at least for specific locations.10 After a ten-year hiatus, even the U.S. government is stepping up research and development for algae-based biofuel. The federal government and the private sector have recognized that the location of algae processing plants is crucial. For example, operations next to carbon-producing power plants, or manufacturing plants, could sequester the CO2 that is created and use those emissions to help grow the algae, which need CO2 for photosynthesis.11 In Earth: The Sequel, Fred Krupp, President of the Environmental Defense Fund, and staff member Miriam Horn, delve into the issues of algae-based biofuel with such clarity and conviction that even the strongest skeptics would be persuaded that algae-based biofuels are a sustainable energy option. Space constraints prevent a detailed elaboration as to the science of synthesizing algae into fuel, but this book is absolutely spectacular in laying out the wonder of what the authors dub voracious algae.12 These microscopic, single-cell creatures are high-energy orioles ideal for making biodieselproducing 30 times more vegetable oil per acre than sunflowers or rapeseedand are rich in carbohydrates that can become ethanol and proteins for animal feed.13 Algae also filter air pollutants and neutralize acids in splitting nitrogen oxidesprecursors to smoginto harmless nitrogen and oxygen.14 In fact, they are the worlds most efficient converters of carbon dioxide to oxygen and biomass.15 From a scientific perspective,
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Tax Incentives under the Algae-Based Renewable Fuel Promotion Act Of 2011
Initially the author sought to explore policy options for wind energy in her home state of Florida, but research and written correspondence with the offices of U.S. Senator Marco Rubio (R-FL) and Florida legislator Scott Plakon (R)23 suggested that wind as an alternative energy option in Florida should be given limited credence despite the states vast shoreline and peninsular geography. Floridas natural coastline is, however, conducive for algae-based bio-fuel production. Working with federal, state, and municipal bodies, algae is ripe for picking and being converted to biofuel in Florida. The tax incentive legislation introduced
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While the Algae-Based Renewable Fuel Promotion Act of 2011 provides tax incentives to algae-based biofuel producers, the tax incentive is in some respects a tax disincentive to traditional energy producers like oil and gas. Innovative tax strategies such as those embedded in the Act could revolutionize how alternative energy is now viewed, making algae biofuel an energy sector mover and shaker.
By forging a deeper alliance with China over trade missions and energy policies, Florida could quite possibly help preserve its own rustic beauty, meet growing energy demands and hopefully usher in a new era in the development of sustainable energy in the United States. Former U.S. Representative and 1978 gubernatorial candidate Lou Frey founded the Lou Frey Institute of Politics and Government at the University of Central Florida. He often coordinates educational programs with former Florida Governor and U.S. Senator Bob Graham and other leading legislators, policy-makers and legal experts. In the past, the Lou Frey Institute has conducted symposiums on alternative energy and China. The Spring 2011 Symposium was entitled, The U.S. & China: What does the Future Hold? The Center would be an excellent forum to discuss further public policy possibilities for enhancing and developing algae-based biofuel as a sustainable energy and for encouraging cooperation with the Chinese. Florida universities could take the lead in research with funding from private companies like Algenol and the state and federal governments. In fact, the University of Florida, Florida State University, the University of Central Florida, the University of Miami, and the University of South Florida already have exchange programs with Chinese uniWinter 2012
versities and think tanks to further research. In October 2007, the Greater Tampa Chamber of Commerce, in conjunction with the Chinese Chamber of Commerce, conducted a trade mission to the Chinese cities of Guangzhou, Beijing, and Shanghai.33 Since 2007, xenophobic public policies have forestalled some business initiatives between Floridians and the Chinese. Now would be an excellent time to reinvigorate those halted efforts. To end the dependence on foreign oil will require Floridians to be willing to work with foreign nationals, businesses, and universities to gain the technological expertise, business acumen, and scientific know-how to rid Florida of its addiction to foreign oil.
Conclusion
In energy regulation, as in the law, there are no easy answers. With scientific expertise and political willpower, algae biofuels are ripe for harvesting in the energy sector. Federal tax incentives could be gamechangers for algae-based biofuel technology in terms of developing a long-term energy strategy that reduces high energy prices and our dependency on foreign oil without harming Floridas environment or coastal economy. Even if this appears to be a case of easier said than done, Floridians have their backs against the wall in the energy sector. With its population rate continuing to rise, Florida has no option but to consider algae-based biofuel. n Nadia B. Ahmad is pursuing an LL.M
in environmental and n a t u r a l re s o u rc e s law and policy at the University of Denver Sturm College of Law. She is admitted to The Florida Bar and practiced in Florida for five years prior to N. Ahmad moving to Colorado. Ms. Ahmed graduated from the University of California at Berkeley with high honors in comparative literature with language emphases in English and Latin. At the University of Florida Levin College of Law, she was a Virgil Hawkins Fellowship recipient and served as Assistant Editor-in-Chief of The Florida Journal of International Law.
1 Florida Energy Workforce Consortium, About Us, http://getintoenergyflorida.com/about.html (accessed 12 Aug. 2011). 2 L. Parker, Florida Growth Not So Slow After All, aol news, 24 Dec. 2010, http://www.aolnews. com/2010/12/24/florida-population-growth-notso-slow-after-all-census-shows/ (accessed 12 Aug. 2011). 3 Email from the office of Senator Bill Nelson (29 July 2011) (on file with author). 4 Id. 5 Text of H.R. 4168 [111th]: Algae-based Renewable Fuel Promotion Act of 2010 (15 Nov. 2010), available at http://www.govtrack.us/congress/billtext. xpd?bill=h111-4168. 6 M. Walton, Algae: The Ultimate in Renewable Energy, CNN, 4 Oct. 2008, http://articles.cnn. com/2008-04-01/tech/algae.oil_1_algae-researchfossil-fuels-nrel/2?_s=PM:TECH (accessed 9 Aug. 2011). 7 S. Feldman, Algae Fuel Inches Toward Price
Endnotes:
Parity with Oil, solveClIMate news, 22 Nov. 2010, http://solveclimatenews.com/news/20101122/algaefuel-inches-toward-price-parity-oil (accessed 10 Aug. 2011). 8 Id. 9 Id. 10 Id. 11 Walton, supra note 6. 12 Fred Krupp & MIrIaM horn, earth: the sequel -- the raCe to reInvent energy and stop gloBal warMIng 89-139 (2008). 13 Id. 14 Id. 15 Id. 16 Id. 17 Id. 18 Feldman, supra note 7. 19 Id. 20 Id. 21 Id. 22 Id. 23 Email from J. Marquez, the Office of Rep. Plakon, Longwood, Fla. (22 July 2011) (on file with author). 24 Algol Biomass Organization, Sen. Bill Nelson touts algae-based fuel at south Lee plant, 26 Oct. 2010, http://www.algalbiomass.org/news/1919/senbill-nelson-touts-algae-based-fuel-at-south-lee-plant/ (accessed 12 Aug. 2011). 25 Id. 26 Id. 27 Id. 28 Id. 29 Intl Energy Agency [IEA], Taxing Energy: Why and How, at 141 (1993). 30 Id. 31 Id. 32 e. MartInot & l. JunFeng, worldwatCh InstItute, powerIng ChInas developMent: the role oF renewaBle energy 1-46 (2007). 33 Greater Tampa Chamber of Commerce, China Outbound Trade Mission, Oct. 2007, http://www. tampachamber.com/files/china2007missionregistrationform.pdf (accessed 20 July 2011).
www.floridabar.org/CLE
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request them, of contractual documents held on the U.S. territory by American attorneys. The French Supreme Court confirmed that the French blocking statute applies even if the requested documents are located in the U.S. as long as, pursuant to Articles 113-7 and 113-8 of the French Criminal Code, there is a French victim at the time the offence is committed and this French victim files a complaint with the French criminal authorities.6
use the Federal Rules and are not bound by the strictures of discovery under The Hague Evidence Convention. Strauss v. Credit Lyonnais The first court after Christopher X to consider the import of the French blocking statute was the Federal District Court for the Eastern District of New York in its decision of 10 March 2008 in Strauss v. Credit Lyonnais S.A.8 In this case, the victims (and their estates) of multiple terrorist attacks allegedly perpetrated by Hamas in Israel alleged that, among others, Crdit Lyonnais, a financial institution incorporated and headquartered in France, had provided material support to terrorists in violation of U.S. antiterrorism laws. The plaintiffs sought discovery from Crdit Lyonnais under the Federal Rules, and Crdit Lyonnais moved for a protective order compelling plaintiffs to seek discovery through The Hague Evidence Convention and excusing it from discovery that Crdit Lyonnais claimed was protected under the French blocking statute.9 To determine whether plaintiffs should have to seek discovery only under The Hague Evidence Convention, the court applied factors enumerated in Paragraph
Despite Christopher X, u.s. courts refuse to allow the French blocking statute to deny parties use of the Federal Rules to obtain discovery:
The recent conviction by the French Supreme Court in Christopher X, and its reminder of the broad scope of application of the French blocking statute, has not convinced U.S. federal courts that applicants seeking discovery in France should limit themselves to the means available under The Hague Evidence Convention. Four cases decided in the federal courts since Christopher X have considered the French decision but have given it little weight.7 They all have concluded that applicants seeking discovery from a French party may
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The court considered the effect of the French blocking statute only with respect to the fifth and sixth factors. With regard to the fifth factor (the comity analysis), the court adopted the U.S. Supreme Courts ruling in Aerospatiale according to which American courts are not required to adhere blindly to the directives of such a statute.11 It also distinguished the facts of Christopher X from those in the present case. In Christopher X, the prosecuted lawyer was not conducting discovery against a party within the confines of the Federal Rules or pursuant to court order. The lawyer had made false statements, and MAAF filed a complaint with the French authorities to initiate prosecution under the blocking statute.12 These distinguishing facts, along with the interest the court found France would have in eliminating terror financing, weighed in favour of allowing discovery pursuant to the Federal Rules under the comity analysis. With respect to the sixth factorthe hardship on Crdit Lyonnais of complying with the discovery requestthe court found that the prospect of facing criminal penalties for compliance weighed in favour
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of the objecting party. Nonetheless, the court held that if the objecting party were a party to the action, as in that case, such hardship would be afforded less weight in the analysis.13 Moreover, the court found that Crdit Lyonnais had failed to show that the French government was likely to prosecute or otherwise sanction Crdit Lyonnais for having complied with a U.S. court order compelling discovery. Because on balance the factors weighed in favour of the plaintiffs (except, possibly, the foreign origin of the documents sought and Crdit Lyonnais good faith), the court denied Crdit Lyonnais motion for a protective order and compelled it to produce all documents pursuant to the plaintiffs discovery requests in accordance with the Federal Rules.14 Thus, although the court considered the possibility that Crdit Lyonnais could be prosecuted for complying with its order, the court found such possibility to be remote given the distinguishing facts between this case and Christopher X. Accordingly, the court afforded the Christopher X decision little weight in the comity and hardship analyses, particularly in light of the fact that Crdit Lyonnais was a party to the action itself. subsequent case law In October 2009, the Federal Bankruptcy Court for the District of Delaware also considered the effects of the French blocking statute in a discovery dispute in which a party sought discovery from a Dutch party that claimed that the information was located at its affiliates premises in France. After determining that the discovery sought was in the control of the Dutch party, Maasvlakte, and could be compelled, the court in In re Global Power Equipment Group15 applied the seven balancing factors articulated in Strauss. In assessing Frances comity interests, the court concluded that the French interest here is particularly attenuated. Maasvlakte was not a French company; the facility at issue in the litigation was not located in France; the majority of the information sought was not developed in France; and the information was only transferred to
France by the Dutch company, a party to the trial, subject to the courts jurisdiction. Moreover, witnesses had testified at deposition that the French government would have little interest in protecting such information from discovery.16 In considering the potential hardship on the party, the court noted that Maasvlakte voluntarily filed a proof of claim in the bankruptcy and thereby submitted to the jurisdiction of the court. On the other hand, the court acknowledged the possibility that Maasvlakte could expose itself to prosecution in France if it complied with discovery under the Federal Rules. The court found, however, that the risk of prosecution was remote, because in the twenty years since the enactment of the blocking statute, French authorities had prosecuted under it only once and because Maasvlakte had not shown that there was any likelihood that it or its French affiliate would be prosecuted for complying with the discovery requests. In particular, the court rejected Maasvlaktes argument that The Hague Evidence Convention was the only means to obtain evidence from its non-party French affiliate. The court cited the Supreme Courts failure in Aerospatiale to make a distinction between discovery taken from a litigant or from a third party.17 As in Strauss, the court thus concluded that on balance the factors weighed in favor of permitting the party seeking discovery to employ the Federal Rules and did not require it to use the more limited means available under The Hague Evidence Convention. Two cases in 2010 again gave short shrift to the French blocking statute. In In re Air Cargo Shipping Services Antitrust Litig. MDL,18 the Federal District Court for the Eastern District of New York ordered the French airline Air France to produce documents that it had withheld on the ground that their production would be prohibited by the French blocking statute. The documents in question consisted of documents that the U.S. Department of Justice already had obtained in the course of its criminal antitrust investigation into the same activities that formed the basis for the civil antitrust claims at issue in the case.
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6 French Supreme Court, Criminal Chamber, 30 January 2008, Pourvoi no. 06-84.098. 7 Two other recent cases since the Christopher X decision also have declined to allow a French party to avoid application of the Federal Rules by citing to the French blocking statute but have not explicitly considered the import of the Christopher X decision. In re SNP Boat Serv. SA, 453 B.R. 446 (S.D. Fla. 2011); Metso Minerals Indus., Inc. v. Johnson Crushers Intl, Inc., 276 F.R.D. 504 (E.D. Wis. 2011). 8 9 249 F.R.D. 429. Id. at 435, 437.
10 Id. at 438, 439. 11 Id. at 450. 12 Id. at 451. 13 Id. at 454. 14 249 F.R.D. 456. 15 418 B.R. 833 (Bankr.D.Del. 28 Oct. 2009). 16 Id. 17 Id. 18 NO. 06-MD-1775, MDL 1775, 2010 WL 1189341 (E.D.N.Y. 29 Mar. 2010). 19 Id. at *3, citing Aerospatiale. 20 Id. at *3, citing Adidas (Canada) Ltd. v. SS Seatrain Bennington, nos. 80 Civ. 1911, 82 Civ. 0375, 1984 WL 423, at *3 (S.D.N.Y., 30 May 1984) and United States v. Gonzalez, 748 F.2d 74, 78 (2d Cir. 1984)). 21 Id. at *4. 22 No. Civ. A. 1:10-511, 2010 WL 5574325, affd 2011 WL 102675 (E.D.Va. 10 Jan. 2011). 23 Id. at *2.
Conclusion
Although U.S. courts are aware ofand explicitly have consideredFrances first conviction of a French national for violation
C. Di Meglio
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The Florida Bar Continuing Legal Education Committee and the International Law Section present
Audio CD
Recorded February 24, 2012 at J.W. Marriott Marquis, Miami
Course No. 1422C
12:30 p.m. 1:45 p.m. Luncheon (included in registration fee) 1:45 p.m. 2:45 p.m. Breakout Sessions What You May Not Know About Litigating in Latin America Moderator: Gustavo Lamelas, DLA Piper (US) LLP, Miami What You Need to Know about Enforcing Your Arbitral Award Abroad Moderator: C. Ryan Reetz, DLA Piper (US) LLP, Miami 2:45 p.m. 3:00 p.m. Break 3:00 p.m. 4:00 p.m. Breakout Sessions Cross Border Enforcement: The Role of Prosecutors, Regulators, and Defense Attorneys Moderator: Matthew Menchel, Kobre & Kim, LLP, Miami The Next Generation of Investor-State Arbitration: A Review of the Logical Steps Moderator: Alberto Wray, FoleyHoag LLP, Washington, D.C. and Quito, Ecuador 4:00 p.m. 4:15 p.m. Break
4:15 p.m. 5:15 p.m. Plenary Session Ethics Issues in International Litigation: Fee Sharing, Suit Financing Moderator: Martin Kenney, Martin Kenney & Co., Tortola, British Virgin Islands 5:30 p.m. 7:00 p.m. Reception (included in registration fee) J.W. Marriott Marquis
CLE CREDITS
CLER PROGRAM
(Max. Credit: 11.0 hours) General: 11.0 hours Ethics: 1.0 hour
CERTIFICATION PROGRAM
(Max. Credit: 11.0 hours) Business Litigation: 8.0 hours Civil Trial: 8.0 hours Criminal Appellate: 1.0 hour Criminal Trial: 1.0 hour International Law: 11.0 hours
ELECTRONIC MATERIALS: Every CLE course will feature an electronic course book in lieu of a printed book for all live presentations, live webcasts, webinars, teleseminars, audio CDs and video DVDs. This searchable, downloadable, printable material will be available via e-mail several days in advance of the live course presentation or thereafter for purchased products. We strongly encourage you to purchase the book separately if you prefer your material printed but do not want to print it yourself. Effective July 1, 2010.
TO ORDER AUDIO CD OR COURSE MATERIALS BY MAIL, SEND THIS FORM TO The Florida Bar, Order Entry Department: 651 E. Jefferson Street, Tallahassee, FL 32399-2300 with a check in the appropriate amount payable to The Florida Bar or credit card information filled in below. If you have questions, call 850/561-5831. Name ____________________________________________________________________________ Florida Bar # __________________________ Address _______________________________________________________________________________________________________________ City/State/Zip _______________________________________________________________ Phone # ____________________________________ Email Address __________________________________________________________________________________________________________ ABF: Course No. 1422C
Check enclosed made payable to The Florida Bar Credit Card (Advance registration only. Fax to 850/561-5816.)
Signature: _____________________________________________________________________________________Exp. Date: ____/____ (MO./YR.) Name on Card: ______________________________________________________________ Billing Zip Code: ____________________________ Card No. ______________________________________________________________________________________________________________ TO ORDER AUDIO CD OR COURSE MATERIALS, fill out the order form above, including a street address for delivery. Please add sales tax. Tax exempt entities must pay the non-section member price. Please include sales tax unless ordering party is tax-exempt or a nonresident of Florida. If this order is to be purchased by a tax-exempt organization, the media must be mailed to that organization and not to a person. Include tax-exempt number beside organizations name on the order form.
AUDIO CD
(includes electronic course material) $345 plus tax (section member) $395 plus tax (non-section member)
(1422C)
TOTAL $ _______
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The Florida Bar Continuing Legal education Committee and The International Law section present
sCheDuLe:
8:25 a.m. 8:30 a.m. Opening Remarks William H. Newton, III, Esq., Law Offices of William H. Newton, III, Miami Program Chair Margarita P. Muina, Esq., Law Offices of Margarita P. Muina, P.A., Miami Program Vice Chair 8:30 a.m. 9:20 a.m. Overview of International Tax and estate Planning Developments William H. Newton, III, Esq., Law Offices of William H. Newton, III, Miami 9:20 a.m. 10:10 a.m. Putting FATCA into Context: The International Focus on Information exchange Professor Patricia Brown, Director, Masters of Taxation Program, University of Miami School of Law, Coral Gables 10:25 a.m. 11:15 a.m. Choice of entity Issues and International Tax Planning Seth Entin, Esq., Greenberg Traurig, Miami 11:15 a.m. 12:05 p.m. Cutting-edge Developments With Respect to Tax Fraud and Collection Considerations as Related to International Tax Andrew H. Weinstein, Esq., Holland and Knight L.L.P., Miami Kevin Packman, Esq., Holland and Knight L.L.P., Miami
1:30 p.m. 2:20 p.m. Globalization and Legal education Professor Patricia White, Dean, University of Miami School of Law, Coral Gables 2:20 p.m. 3:10 p.m. Current Issues in estate and Gift Tax Planning for u.s. situs Assets Margarita P. Muina, Esq., Law Offices of Margarita P. Muina, P.A., Miami 3:25 p.m. 4:15 p.m. expatriation Current Issues and Required Disclosures Shawn P. Wolf, Esq., Packman, Neuwahl and Rosenberg, Coral Gables William Yates, Esq., Associate Chief Counsel (International), Internal Revenue Service, Washington, D.C. 4:15 p.m. 5:05 p.m. Transfer Pricing in the Current economic environment Ian Gray, Esq., Economics Partners, L.L.C., Denver, CO Robert A. Feinschreiber, Esq., Feinschreiber & Associates, Key Biscayne 5:05 p.m. 5:10 p.m. Closing Remarks William H. Newton, III, Esq., Law Offices of William H. Newton, III, Miami Program Chair Margarita P. Muina, Esq., Law Offices of Margarita P. Muina, P.A., Miami Program Vice Chair
AuDIO CD (1299C):
(Cost including electronic materials)
MemberoftheInternationalLawSection:$195plustax Non-sectionmember:$245plustax
CLeR PROGRAM
(Max. Credit: 8.0 hours) General: 8.0 hours Ethics: 1.5 hours (Max. Credit: 8.0 hours) International Law: 8.0 hours Tax Law: 6.0 hours Wills, Trusts & Estates: 6.0 hours
CeRTIFICATIOn PROGRAM
To ORDeR AuDIO CD OR COuRse MATeRIAL, go to FLORIDABAR.ORG/CLe and search by course number 1299R.
The International Law Quarterly
Page 65
Winter 2012
The Florida Bar Continuing Legal Education Committee and The International Law Section present
WEBINAR
Presentation Dates:
November 10, 2011, December 8, 2011, February 15, 2012, March 15, 2012, and April 26, 2012 12:00 noon 1:00 p.m. EST
Course Nos. 1401, 1402, 1403, 1404, 1405, 1406R
The Florida Bar International Law Section is pleased to announce its 2011-2012 International Law Webinar Series. Over the course of six months, we will provide an easy and affordable manner to earn CLE credits and listen to presentations from the comfort of your home or office. You may register for each live webinar individually or purchase the entire live series at a discount. In addition, each program will be audiotaped and an audio cd (including electronic course material) will be available after April 26, 2012.
wEBINAR
As a webinar attendee you will listen to the program over the telephone and follow the materials online. Registrants will receive webinar connection instructions 2 days prior to the scheduled course date via e-mail. If you do not have an e-mail address, contact Order Entry Department at 850-561-5831, 2 days prior to the event for the instructions.
December 8, 2011
12:00 noon 1:00 p.m. Managing U.S. Discovery Assistance in International Arbitration (1402R) Gustavo J. Lamelas, DLA Piper LLP (US), Miami
CLE CREDITS
(Max. Credit: 6.0 hours for the Entire Series) General: 1.0 hour (per program) Ethics: 1.0 hour (April 26 Webinar Only)* (Max. Credit: 6.0 hours for the Entire Series) International Law: 1.0 hour (per program)
Seminar credit may be applied to satisfy CLER / Certification requirements in the amounts specified above, not to exceed the maximum credit. See the CLE link at www.floridabar.org for more information. Prior to your CLER reporting date (located on the mailing label of your Florida Bar News or available in your CLE record on-line) you will be sent a Reporting Affidavit if you have not completed your required hours (must be returned by your CLER reporting date).
CLER PROGRAM
CERTIFICATION PROGRAM
REFUND POLICY: A $25 service fee applies to all requests for refunds. Requests must be in writing and postmarked no later than two business days following the live course presentation or receipt of product. Registration fees are non-transferrable, unless transferred to a colleague registering at the same price paid.
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TO REGISTER OR ORDER AUDIO CD BY MAIL, SEND THIS FORM TO: The Florida Bar, Order Entry Department, 651 E. Jefferson Street, Tallahassee, FL 32399-2300 with a check in the appropriate amount payable to The Florida Bar or credit card information filled in below. If you have questions, call 850/561-5831. Name __________________________________________________________________ Florida Bar # _______________________ Address _____________________________________________________________ Phone: ( City/State/Zip _________________________________________________ E-mail
*E-mail address required to transmit electronic course materials and is only used for this order.
) _______________________ ABF
* _____________________________________
ELECTRONIC MATERIALS: Every CLE course will feature an electronic course book in lieu of a printed book for all live presentations, live webcasts, webinars, teleseminars, audio CDs and video DVDs. This searchable, downloadable, printable material will be available via e-mail several days in advance of the live course presentation or thereafter for purchased products. We strongly encourage you to purchase the book separately if you prefer your material printed but do not want to print it yourself. Effective July 1, 2010.
Signature: _______________________________________________________________________________________________ Name on Card: ______________________________________________ Billing Zip Code: _______________________________ Card No. ________________________________________________________________________________________________
Please check here if you have a disability that may require special attention or services. To ensure availability of appropriate
accommodations, attach a general description of your needs. We will contact you for further coordination.
AUDIO CD
Private recording of this program is not permitted. Delivery time is 4 to 6 weeks after 04/26/12. TO ORDER AUDIO CD, fill out the order form above, including a street address for delivery. Please add sales tax. Tax exempt entities must pay the non-section member price. Those eligible for the above mentioned fee waiver may order a complimentary audio CD in lieu of live attendance upon written request and for personal use only.
Please include sales tax unless ordering party is tax-exempt or a nonresident of Florida. If this order is to be purchased by a tax-exempt organization, the media must be mailed to that organization and not to a person. Include tax-exempt number beside organizations name on the order form.
AUDIO CD
(1407C) (includes Electronic Course Material for all 5 programs) $200 plus tax (section member) $250 plus tax (non-section member) TOTAL $ _______
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PAID
Section Calendar
For more information, visit www.internationllawsection.org.
seMInARs/PROGRAMs
Thursday, April 26, 2012 (WEBINAR) ethics Considerations in International Dispute Resolution (#1405R) Richard J. Dewitt, Dewitt Law/Resolve Disputes, Coral Gables Friday, June 22, 2012 Current Trends in Arbitration (#1367R) Annual Florida Bar Convention Gaylord Palms Resort & Convention Center Orlando/Kissimmee
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Winter 2012