Category Archives: Legislation

Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods

by Christina Frangiosa

On July 31, 2009, Representative Daniel B. Maffei (D-NY) introduced H.R. 3499, to be called the “Trademark Protection Act” in the House of Representatives. The Bill purports to assess civil liability for unfair competition in the form of misleading the public as to the geographic source of a particular product. This provision would amend Section 1125(a)(1), which prohibits “False designations of origin, false descriptions and dilution” in the use of trademarks in commerce in the U.S. 15 U.S.C. § 1125(a)(1).

Apparent Objection to Relocating Manufacturing to China

Among the findings Rep. Maffei proposes, he explains why he introduced the Bill: “Syracuse China was an upstate New York manufacturer in the city of Syracuse. The company was founded in 1871 as the Onondaga Pottery Co. and was one of the last major china makers in the U.S. On April 9, 2009, after more than 130 years in business, Libbey Inc. (of Toledo, Ohio) halted production in Syracuse, eliminating 275 local jobs. Libbey plans to continue selling dinnerware under the name ‘Syracuse China’ even after they stop production at the New York-based plant, but the company will manufacture the product in other countries and import them into the U.S.” H.R. 3499 § 2 (3).

It appears that the Syracuse China Company (which appears to be a different legal entity than the one identified in Rep. Maffei’s Bill) owns a valid registration in the word SYRACUSE, standing alone, which is registered in connection with “China tableware and ornamental chinaware” (Reg. No. 104,744, registered in 1915, alleging a date of first use in 1897). The registration was renewed in 2005, and could be asserted against a different company seeking to confuse consumers about the source of the goods sold in connection with a confusingly similar mark. (That being said, it’s possible that the Libbey Company referenced in the Bill is somehow affiliated or related to the Syracuse China Company such that litigation would not be considered.)

Indeed, it appears that at one time, predecessors of the Syracuse China Company registered variations of the mark “SYRACUSE CHINA” and then let the registrations lapse. Specifically, the following three registrations are marked “dead” in the U.S. Patent & Trademark Office’s database – and therefore cannot be asserted in litigation against some one else’s actual use of the mark in commerce:

* SYRACUSE CHINA (& design), Reg. No. 734,163 applied to “dinnerware and tableware made of China” and was registered in 1962 (alleging a date of first use in 1961). The registration was deemed abandoned in 1987 when the registrant failed to renew it.

* SYRACUSE CHINA 1871 (& design), Reg. No. 841,235 applied to “dinnerware and tableware made of China” and was registered in 1967 (alleging a date of first use in 1966). The registration was deemed abandoned in 1989 when the registrant failed to renew it.

* SYRACUSE CHINA CORPORATION (& design), Reg. No. 975,004 applied to “dinnerware and tableware made of China” and was registered in 1973 (alleging a date of first use in 1972). The registration was deemed abandoned in 1994 when the registrant failed to renew it.

Protection of “Weak” Marks

Also interesting about this proposed Bill is the following draft “finding:” “Trademarks that describe some feature or quality of the goods or that are based on someone’s name or a geographic term are considered to be ‘weak’ and thus are not protectable under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising or other public awareness of a weak trademark, the trademark will be considered distinctive and can be registered with the [US Patent & Trademark Office].” H.R. 3499 § 2 (2).

The statement that “weak” marks are not protectable under U.S. trademark law perhaps goes too far, and despite the second sentence of these draft findings, suggests that these marks may never be protectable. Certainly, in any litigation or other dispute involving a “weak” mark, the parties will debate whether the owner of that mark has demonstrated secondary meaning or acquired distinctiveness, such that the consuming public would automatically associate such a “weak” mark used in connection with the relevant goods or services with the owner of the mark – in other words as a “source indicator”. Descriptive marks such as these can acquire distinctiveness and obtain a level of trademark protection that seems to somewhat be undervalued in the draft “findings” in this Bill.

In addition, this Bill appears to focus only on the ability to register a trademark with the U.S. Patent & Trademark Office. Under U.S. law, trademarks can be protected from misappropriation and confusingly similar use by someone else based on the actual use of the earlier mark in commerce. There is no requirement that every trademark be registered before protection from infringement is available. Instead, senior rights may even exist for unregistered marks in certain circumstances. Notably, the Bill contemplates amending the civil liability provisions relating to marks that are either registered or unregistered – including those known as “common law marks”.

There are definitely benefits to filing an application for trademark registration – including the presumption that the registrant can expand the use of its mark nationwide on the goods or services described in the registration. Even the U.S. Patent & Trademark Office will only register a mark if there has been bona fide use in U.S. commerce, as demonstrated by evidence submitted by the applicant through the application process. See Trademark Manual of Examining Procedure (“TMEP”) § 901.01 (quoting statutory language: “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”).

In addition, even after registration, if a registrant stops using the mark in U.S. commerce, the registration can be cancelled or narrowed to only those goods or services on which the mark continues to be in active use. See TMEP § 1604.10 (explaining requirements to maintain a registration, which will be cancelled if continued use cannot be demonstrated).

Conclusions

Upon introduction, the Bill was referred to the House Committee on the Judiciary. At present, no hearings are scheduled for the Bill. It is unclear whether there will be any further action taken on the Bill.

It also appears that this issue of misidentification of geographic source of origin might not be a pivotal issue for Rep. Maffei. Press releases relating to the various legislative initiatives that he has sponsored or speeches that he has delivered are available on his web site, but none of them relate to this Bill (at least, none had been posted at the time that this blog entry was prepared). Instead, the only relevant reference appears to be Rep. Maffei’s June 23rd announcement that the Syracuse China Company was eligible for Trade Adjustment Assistance.

Current status of the Bill can be found through the legislature’s search service, Thomas.gov.

Copyright Protection Proposed for Fashion Designs

by Christina Frangiosa

Under current law, fashion designs and patterns are not protected from infringement by the Copyright Act. Instead, they are considered “useful designs” that are beyond the scope of the current Act. Recent legislation proposed in the House, however, seeks to change this by amending Chapter 13 of the Copyright Act and extend copyright protection for limited purposes and a limited term. Design Piracy Prohibition Act, H.R. 2196, 111th Congr. (proposed April 30, 2009).

Provisions of H.R. 2196

H.R. 2196 was proposed by Rep. William D. Delahunt (D-MA), and co-sponsored by 23 other members of the House. It proposes to amend 17 U.S.C. § 1301 (and following), and to extend limited protection to all clothing, including “undergarments, outerwear, gloves, footwear and headgear” as well as various accessories and luggage (namely “handbags, purses, wallets, duffel bags, suitcases, tote bags and belts”) and frames for eyeglasses. H.R. 2196 § 2(a)(2)(B).

Rather than providing blanket copyright protection as you might find for an original literary work (e.g., a book), this bill proposes that copyright protection would only last for three years beginning on the date of publication of the registration or the date on which the design is first made public, whichever is earlier. Id. § 2(d); 17 U.S.C. § 1304 (determining when protection begins). The bill defines an “infringing article” as one for which “the design . . . has been copied from a design protected under this chapter, or from an image thereof, without the consent of the owner of the protected design.” H.R. 2196 § 2(e). Importantly, however, the bill excludes the following from this definition: “an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture or similar medium.” Id. 2(e)(2). Presumably, these “copies” are permitted, at the least, for advertising or marketing purposes.

There is also a carve-out for designs that are independently created, reflect a “trend” or if they are “not closely and substantially similar in overall visual appearance to a protected design.” Id. A “trend” is further defined as “a newly popular concept, idea or principle expressed in, or as part of, a wide variety of designs of articles of appear that create an immediate amplified demand for articles of apparel embodying that concept, idea or principle.” Id. § 2(a)(2)(B).

Unlike other provisions in the Copyright Act, in order to obtain copyright protection for fashion designs, this bill requires an owner to apply for registration within six (6) months of making the design available to the public either in the U.S. or another country. Id. § 2(f)(1). Failure to apply for registration within that narrow window of time will eliminate the designer’s ability to sue under copyright law relating to copies of that specific design. Id.

The bill also anticipates that the Copyright Office would provide free public access to a database cataloging all of the fashion designs that have been registered under this provision. Id. § 2 (j); id. § 2(j)(a)(3). In order for this to be effective, owners must provide a “brief description of the design for purposes of matching the search criteria of the searchable database . . . [but this description] shall in no way limit the protection granted to the design or the subject matter of the registration.” Id. § (f)(3). The database will also contain a “substantially complete visual representation of all fashion designs submitted for registration under this chapter” as well as certain objective information. Id. § 2(j).

This bill also increase certain penalties for filing for protection inappropriately, so that the current statute would be revised to read: “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a design under this chapter shall pay a penalty of not less than $5,000 [current amount is $500] and not more than $10,000 [current amount is $1,000], and any rights or privileges that individual may have in the design under this chapter shall be forfeited.” Id. § 2(h); see also 17 U.S.C. § 1327 (emphasis added).

If enacted, this bill would have immediate effect. Id. § 3.

Prior Proposals

In 2006, the Copyright Office presented a written statement to the House Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, explaining why the limitations proposed in the then-current bill (H.R. 5055, 109th Congr., 2d Sess., introduced March 30, 2006) might be acceptable. Statement, July 27, 2006. (“The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.”). For instance, the Copyright Office applauded the 3-year limitation to protection proposed by the bill:

“Because the peak demand for such [high-fashion] designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer’s reasonable expectation of exclusivity. . . . The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.” Id.

The Statement outlines in detail prior proposals seeking protection for fashion and industrial designs, dating back to 1914. Id. Hearings were held about H.R. 5055 on July 27, 2006, but the bill was not enacted before the end of the session.

Current Status of H.R. 2196

Upon introduction on April 30, 2009, the bill was referred to the House Committee on the Judiciary.

Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security

by Christina Frangiosa

On June 4, 2009, the House passed H.R. 2200, the Transportation Security Administration Authorization Act, which authorized various programs of the TSA. There are at least two House Reports that analyzed the impact and scope of the bill, but the minute details of each are largely beyond the scope of this post. See H.R. Rep. No. 111-123 (May 19, 2009); H.R. Rep. No. 111-127 (May 21, 2009).

Instead, of particular importance was Amendment No. 10 (H. AMDT. 172), introduced on June 4, 2009, by Rep. Jason Chaffetz (R-UT). Cong. Rec. H6206 (daily ed. June 4, 2009); see also id. H6208 (Rep. Chaffetz’s arguments in further support of the Amendment). The Amendment proposed limitations on the use of Whole Body Image (WBI) scanners at airport security checkpoints as a primary screening method, and recommended that travelers be given the option to have a pat-down search instead, unless other primary screening methods identify the person as a potential security risk.

Key Provisions (from a Privacy Perspective) of the Amendment

The key sections of this Amendment are:

(2) PROHIBITION ON USE FOR ROUTINE SCREENING.—Whole-body imaging technology may not be used as the sole or primary method of screening a passenger under this section. Whole-body imaging technology may not be used to screen a passenger under this section unless another method of screening, such as metal detection, demonstrates cause for preventing such passenger from boarding an
aircraft.

(3) PROVISION OF INFORMATION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be provided information on the operation of such technology, on the image generated by such technology, on privacy policies relating to such technology, and on the right to request a pat-down search under paragraph (4) prior to the utilization of such technology with respect to such passenger.

(4) PAT-DOWN SEARCH OPTION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be offered a pat-down search in lieu of such screening.

(5) PROHIBITION ON USE OF IMAGES.—An image of a passenger generated by whole-body imaging technology may not be stored, transferred, shared, or copied in any form after the boarding determination with respect to such passenger is made.

Cong. Rec. H6207 (daily ed. June 4, 2009). These amendments were proposed as modifications to 49 U.S.C. § 44901.

House Reports Analyzing Proposed Legislation & Amendments

House Report 111-127 discusses the various amendments to the Bill, and provides another source of the text of the amendment. H.R. Rep. No. 111-127 (May 21, 2009). House Report 111-123 is also available and worth reading for its concise summary of the purpose of the bill. H.R. Rep. No. 111-123 (May 19, 2009).

Arguments in Support of the Amendment

Rep. Carol Shea-Porter (D- NH) co-sponsored the amendment and spoke in support of its adoption:

“When this full-body imaging technology was first introduced, the TSA said that it would only be used as a secondary screening method for those people who set off the metal detectors. Now it has become very clear that the TSA intends for this technology to replace metal detectors at airports all over the country. The New York Times reported as much in an April 7, 2009, article.

“The Chaffetz/Shea-Porter amendment would ensure that full-body imaging remains a secondary screening method. It would also ensure that the people who do go through it are well informed and are given the option of a pat-down.

“Mr. Chair, we do not take this amendment lightly. As a member of the Armed Services Committee, I am very aware of the security threats that are facing our country. We, too, want to ensure that the Department of Homeland Security and the TSA have the tools they need to prevent future terrorist attacks. However, the steps that we take to ensure our safety should not be so intrusive that they infringe upon the very freedom that we aim to protect.

“Two weeks ago, I went to Washington National Airport to view one of these machines. I saw how the technology is being used. I saw the pictures it produces and the inadequate procedures TSA has put into place to protect our privacy. The images are incredibly revealing as I will show you here. This is a gross violation of a person’s right to privacy. It is also illogical because, if we allow this intrusion into our lives, then there should be this same scan at every single train station, at every building that we enter and on every single bus that we board.

So I ask that my fellow Members join me in voting for this resolution and for this amendment.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

In response to the opposition raised during the session (quoted in detail below), Mr. Chaffetz argued in favor of the Amendment:

“Whole-body imaging does exactly what it’s going to do. It takes a 360-degree image of your body. Now, I want to have as much safety and security on the airplanes I’m flying every week, but there comes a point in which in the name and safety and security we overstep that line and we have an invasion of privacy. This happens to be one of those invasions of privacy.

“Now I understand why the gentleman from California expressed his concern. Let me be clear that this amendment on whole-body imaging only limits primary screening. It can be used for secondary screening. You may get people with artificial hips or knees or something else, and they may elect this kind of screening. It’s perfect for them.

“But to suggest that every single American–that my wife, my 8-year-old daughter–needs to be subjected to this, I think, is just absolutely wrong. Now, the technology will actually blur out your face. The reason it does this is because there is such great specificity on their face, that they have to do that for some privacy. But down in other, more limited parts you could see specifics with a degree of certainty that, according to the TSA as quoted in USA Today, ‘You could actually see the sweat on somebody’s back.’ They can tell the difference between a dime and a nickel. If they can do that, they can see things that, quite frankly, I don’t think they should be looking at in order to secure a plane. You don’t need to look at my wife and 8-year-old daughter naked in order to secure that airplane.

“Some people say there is radio communication. There is distance. Well, it’s just as easy to say there is a celebrity or some Member of Congress or some weird-looking person. There is communication.

“You say you can’t record the devices. Many of us have mobile phones or have these little cameras. There is nothing in this technology that would prohibit the recording of these. With 45,000 good, hardworking TSA employees, 450 airports, some two million air traffic travelers a day, there is inevitably going to be a breach of security. And I want our planes to be as safe and secure as we can, but at the same time, we cannot overstep that bound and have this invasion of privacy.

“I urge my colleagues to vote in support of this amendment.”

Cong. Rec. H6208 (daily ed. June 4, 2009).

Arguments in Opposition to the Amendment

Rep. Charles Dent (R-PA) argued in opposition to the amendment, but noted that his opposition was reluctant – favoring the heightened need for security over a slight risk to an individual’s privacy rights:

“Just yesterday, I visited Reagan National Airport and took a look at the whole-body imaging machines over there, and I just have to say a couple of things about this.

“I was impressed by the technology. It seems that we have a great deal of satisfaction from passengers who utilize that type of screening. There are limitations to the magnetometer. A magnetometer can pick up metallic items, like keys, but other prohibited items, like liquids and C4 for potential explosives, will be detected under the whole-body imaging technology but not under a magnetometer. So I do believe that this technology is valid.

“As for the privacy concerns that have been raised, while I understand them, I think they have been overstated. There are strong, strong restrictions in place to make sure that those individuals, the transportation security officers who actually help the passengers go through the whole-body imaging scanning, are not in contact with the person who is actually viewing the image. Those people are in a separate room, so they’re separated. The face of the individual is also blurred, so that’s another protection.

“So I do think that this technology is very valuable. It will help make us safer. Again, I think it is a step in the right direction. So I would reluctantly oppose the amendment. I understand the concerns expressed, but nevertheless, I feel that this technology is valuable and that it enhances security.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

Rep. Daniel E. Lungren (R-CA) opposed the amendment, but without suggesting any reluctance in his opposition:

“I happen to be one of those people who happens to have an artificial hip. Every time I go through, I set off the screener. Every time I go through, I get hand-patted down, and even though they do it in a very nice way, frankly, that’s far more intrusive than going out to the Reagan National Airport and going through that particular system that we’re talking about with those pictures.

“We have been working for many years since 9/11 to try and come up with devices which will allow us to be able to detect those kinds of things that, if brought on airliners, would be a threat to all passengers. The whole-body imaging technology, which this amendment seeks to stop in terms of its application as a primary means of screening, can detect many things such as small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. Let me underscore that: this device that this amendment seeks to take off the table as a primary means of screening can detect small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. That ought to be enough for us to understand this.

“If you look at the privacy questions, let’s be clear: the person who actually is there, the employee of TSA who is there when you go through this machine, is not the one who reads the picture. That person, he or she, is in another room–isolated. They never see you. They actually talk to one another by way of radio. So this idea that somebody is sitting in this little room, waiting to see what you look like, frankly, is sort of overblown.

“All I can say is this: I have been through many, many pat-downs because I happen to have an artificial hip. Going through this at Reagan National Airport was so much quicker so less intrusive of my privacy than what we go through now. For us to sit here now and to pass an amendment which is going to stop this development and application, frankly, I think, is misguided.

“With all due respect to the gentleman from Utah, who I know is sincere about that, and to the gentlewoman, who is also sincere, I would ask you to rethink this. From my experience, this is far more protective of my privacy than what I have to go through every time I go to the airport, number one; but more importantly, it protects me and every other passenger to a greater extent than any other procedure we have now. We aren’t doing this because we want to do it. We’re doing it because we have people around the world who want to kill us, who want to destroy our way of life, and they have utilized commercial airliners for that purpose in the greatest attack in our Nation’s history since Pearl Harbor.

“This is a device which helps us take advantage of our technological know-how to gain an advance on the enemy. I would hope we would not do this by way of this amendment.”

Cong. Rec. H6207 – H6208 (daily ed. June 4, 2009).

Current Status of the Bill and Amendment

Initially, the Amendment failed – as recorded by voice vote at 3:00 p.m. on June 4, 2009. (Cong. Rec. H6208). Mr. Chaffetz demanded a record vote, and the vote was postponed until later the same day. Id. Shortly after 4:00 p.m, the amendment passed by a vote of 310 – 118.

The full text of the Amendment can be found in the following places: Cong. Rec. H6206 (daily ed. June 4, 2009); and H.R. Rep. No. 111-127 (May 21, 2009). Text of the bill and the amendments can also be found by checking the current status of either one – they are cross-linked.

The full Bill (H.R. 2200), as amended, passed the House by a record vote of 397 – 25. Cong. Rec. H6216 (daily ed. June 4, 2009). Presumably, this Bill will now travel to the Senate for re-introduction under a new Bill number and further debate.

Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records)

by Christina Frangiosa

On February 13, 2009 – four days before the Stimulus Bill was enacted by President Obama – Senator Sheldon Whitehouse (D-Rhode Island) introduced Senate Bill 444, entitled “National Health Information Technology and Privacy Advancement Act of 2009.” This Bill follows on the heels of both HIPAA’s Privacy Rule (45 CFR Parts 160 and 164, Subparts A and E) and certain amendments in the Stimulus Bill (enacted on February 17, 2009 as Public Law No. 111-5) in that it provides specific detail about how the health information technology system would be created.

Among other things, this Act proposes the creation of a Corporation to coordinate the activities of various federal agencies and to effectuate the creation of a national program for health information technology. (Section 5.) The corporation would be required to be incorporated, within 180 days of the enactment of the Bill, by nine individuals whose skills and background are specified in the Act. (Id.)

Of particular interest in this Bill is the identification of a Chief Privacy Officer, along with a detailed specification of duties. (Section 5(d)(1).) Although the Stimulus Act provided that a Chief Privacy Officer be appointed within 12 months after the enactment of the Stimulus Act (i.e., by February 2010), the duties ascribed to this CPO were vague: “to advise the National Coordinator on privacy, security, and data stewardship of electronic health information and to coordinate with other Federal agencies (and similar privacy officers in such agencies), with State and regional efforts, and with foreign countries with regard to the privacy, security, and data stewardship of electronic individually identifiable health information.” (Pub. L. No. 111-5 § 3001(e).)

In contrast, S. 444 provides more substantial detail about the duties of this Chief Privacy Officer: (i) “ensure that the use of technologies by the corporation sustain, and do not erode, privacy protections relating to the use, collection, and disclosure of personal information;” (ii) ensure that all personal information kept in the system is maintained as required by the Privacy Act of 1974; (iii) “evaluate legislative and regulatory proposals involving the collection, use, and disclosure of personal information by the Federal Government;” (iv) report on proposed rules and procedures of the corporation, including the type of information collected and the number of people affected; and (v) provide an annual report to Congress on the corporation’s activities affecting privacy. (Section 5(d)(1)(B).) The corporation is only supposed to exist for ten years. (Section 5(h).)

This corporation – and implicitly the Chief Privacy Officer as the operating head of the corporation – would operate a national health information technology and privacy system and would be the gatekeeper to the data held in the system. The Bill contemplates that the corporation would provide data access both to individuals and to “authorized providers and payers of health care services” – as well as determine the rules for accessing the non-personally identifiable information in the system. (Section 5(f)(1)(B) and (C).)

Impact

Currently, individual providers and health plans maintain their own sets of their patient’s medical records. If one wanted a copy of his or her medical records from his or her family doctor, he or she could obtain a copy from the doctor. Hospital records are similarly kept by the hospitals. Each of these providers can also set up relationships with data repository centers (known as “business associates” under HIPAA) to manage the protected health information (PHI) of their patients. This system allows them to forward to an outside administrative organization any requests for access to a particular patient’s record – and thereby reduce some of the administrative burden of maintaining electronic medical records on the actual provider.

Both the Stimulus Act and this Bill (and perhaps others) contemplate the collection of these data on a national level, in a central repository. HIPAA’s Privacy Rule is apparently unaffected – “This title may not be construed as having any effect on the authorities of the Secretary [of Health and Human Services] under HIPAA privacy and security law.” (Pub. L. No. 111-5 § 3009(a)(1).) As a result, the national repository would similarly be required to keep as sacrosanct an individual’s personally identifiable information. Still, it’s a national repository – a centralized collection of all of the medical data relating to a particular individual.

The Bill was read twice and referred to the Senate Committee on Health, Education, Labor, and Pensions. See current status. It remains to be see whether this Bill will see any further action in Congress. Given the heightened interest in creating centralized electronic medical records, however, it is likely that a bill of this type, providing the administrative structure to implement the requirements of the Stimulus Bill, would indeed be enacted in the near future.

Newly Introduced Bill Would Require Shutter Sounds in Camera Phones

by Christina Frangiosa

On January 9, 2009, Representative Pete King (R-New York) proposed H.R. 414 (Camera Phone Predator Alert Act), which requires camera phones to be manufactured in a way that broadcasts the shutter sound a “reasonable” distance when a user takes a picture. According to the findings within the Bill, “Congress finds that children and adolescents have been exploited by photographs taken in dressing rooms and public places with the use of a camera phone.” Section 2.

The Bill does not contain any definitions or standards, and seems to grandfather all existing phones already on the market. Indeed, the sound requirement would only be applied one year after the effective date of the Bill, should it be enacted. Specifically, the Bill requires that all camera phones manufactured after that date may not have any means for the user to disable sound. The applicable “sound” is defined rather generically: “a tone or other sound audible within a reasonable radius of the phone.” Section 3.

The Bill provides for enforcement by the Consumer Product Safety Commission, with civil penalties set forth in 15 U.S.C. § 2069. It is unclear whether this Bill, if enacted, would provide for any private right of action (say, by the person whose picture was taken using a soundless camera phone manufactured after the effective date).

This may also have a minor impact in preventing piracy in the copyright world, since it is quite easy to snap a picture using your camera phone in a museum or other private location of artwork that is presumably protected by copyright. If the sound on your phone is turned off, and if the flash does not activate, it’s possible that no one would know that you made a “copy” of a copyrighted work, perhaps in violation of the Copyright Act. (Taking a picture alone does not automatically result in a finding of copyright infringement – there are substantial factual inquiries that must be made before such a finding occurs.)

Oddly, Rep. Pete King’s press releases web site makes no mention of his introduction of this Bill – although it does reference other Bills that he has introduced or supported. According to Thomas, the Bill was read into the Record when it was introduced and has been referred to the House Committee on Energy and Commerce.