In SCM Corporation v. Langis Foods Ltd., 539 F.2d 196 (1976), decided on June 23, 1976, the U.S. Court of Appeals for the District of Columbia Circuit interpreted section 44(d) of the Lanham Trademark Act (15 U.S.C. 1126(d)) to give a foreign applicant which has used its trademark in its home country, after filing its trademark application there but prior to filing it in the United States, a "constructive use date" as of the date of the foreign filing. The Court found that this interpretation was reinforced by article 4 of the relevant treaty-the International Convention for the Protection of Industrial Property (the Paris Union treaty), as revised in 1934 (TS 941; 53 Stat. 1748; 3 Bevans 223).

The case presented the issue whether a Canadian corporation, which had filed a trademark application in Canada, had priority in registering that trademark in the United States over a domestic corporation when: (1) the Canadian corporation filed its application in Canada without prior use anywhere; (2) it subsequently filed a timely application to register the trademark in the United States based upon its earlier Canadian application; (3) it used the trademark in Canada, but not in the United States, prior to its U.S. application; and (4) the domestic corporation used the trademark in the United States after the Canadian application was filed but before the Canadian corporation's U.S. application was filed. The District Court concluded that the domestic corporation was entitled to registration of the trademark. The Court of Appeals reversed.

It noted that while section 44(d) of the Lanham Act protects the rights acquired by third parties, it expressly protects only those "rights acquired by third parties before the date of the filing of the first application in the foreign country. . . ." Further, it said, the section impliedly recognizes registration based on something other than "use in commerce," namely a foreign registration. Moreover, sections 44(b) and 45 of the Act (15 U.S.C. 1126(b) and 1127) evidence the intent of Congress "to provide rights and remedies stipulated by treaties and conventions respecting trademarks." Turning to article 4 of the Paris Union treaty, the Court observed:

This revised version clearly provides that an intervening use during the priority period cannot give rise to rights on the part of third parties. The only rights of third parties specifically protected are "[those] rights acquired by third parties before the day of the first application on which priority is based." Thus, to the extent that the property rights in this case depend on the Paris Union treaty, article 4 reinforces our conclusion that a foreign applicant's mark must be protected in this country from the date of the foreign application even as against an intervening first use by another in the United States. . .

Patents

Hughes Aircraft Co. v. United States, 534 F.2d 889 (1976), was an action brought in the U.S. Court of Claims for alleged infringement of plaintiff's patent pursuant to the Government's participation with the United Kingdom in a joint defense satellite communications program (Skynet II). It posed four separate questions on whether the claim properly lay within the Court's patent and general jurisdiction:

(1) whether the use or manufacture of plaintiff's patented invention, purportedly on behalf of the U.K. Government, constituted a use or manufacture "by or for the United States" sufficient to vest jurisdiction under 28 U.S.C. 1498(a);

(2) whether plaintiff's claim "grows out of" or is "dependent upon❞ a 1970 U.S.-U.K. Memorandum of Understanding so as to preclude the Court's jurisdiction by virtue of 28 U.S.C. 1502;

(3) whether the Skynet II program, insofar as U.S. expenses under it were to be fully reimbursed by the U.K., was a "non-appropriated" fund activity as to which the Court lacks jurisdiction by virtue of 28 U.S.C. 2517; and

(4) whether the omission from the 1968 Foreign Military Sales Act (FMSA), 22 U.S.C. 2751-94, of the special patent infringement jurisdictional provision contained in predecessor statutes manifests congressional intent to eliminate the Court of Claims' jurisdiction over claims arising from the Government's foreign military sales activities.

The Court of Claims held on April 14, 1976, that it had jurisdiction of the claim pursuant to 28 U.S.C. 1498(a), which vests exclusive jurisdiction in that Court over patent infringement claims against the Government arising under (1) unlicensed use or manufacture of a patented invention by the United States directly, and/or (2) unlicensed use or manufacture of a patented invention for the United States or with its authorization or consent. The Court denied defendant's motion for summary judgment and remanded the case to the Trial Division for disposition of the remaining issues of fact and law.

The Court concluded that Skynet II, like similar defense programs, was undertaken as much for the benefit of the United States as for the United Kingdom, as evidenced by the language of the FMSA (22 U.S.C. 2751 et seq.), which sets forth a policy of cooperation "in furtherance of the security objectives of the United States." It found further that the U.S. Government had given its authorization and consent for any infringements which might occur under Skynet II, and that the Department of Defense had acted within the scope of its authority in doing so. In any event, the Court said, its jurisdiction would remain under the "use by the United States" provision of 28 U.S.C. 1498(a), since the National Aeronautics and Space Ad

ministration (NASA) and the Air Force had exercised direct and conclusive control of the satellite for a substantial period.

In response to the second question posed above, the Court held that, although the claim might never have arisen except for the existence of the Memorandum of Understanding, the claim did not rely on the Government's omission to do anything which it promised to do under the agreement, and thus did not grow out of and was not dependent on it so as to preclude the Court's jurisdiction by virtue of 28 U.S.C. 1502. Section 1502 provides that:

Except as otherwise provided by Act of Congress, the Court of Claims shall not have jurisdiction of any claim against the United States, growing out of or dependent upon any treaty entered into with foreign nations.

In interpreting this section, the Court noted that international executive agreements are considered as "treaties" for purposes of this statute, citing Yassin v. United States, 76 F. Supp. 509, 517 (1948).

On question (3), the Court rejected the argument that since all expenditures made by the United States in connection with Skynet II were reimbursable by the United Kingdom, the program was not supported by appropriated funds. On the contrary, it found that Skynet II was directly dependent upon and designed to be dependent upon regular appropriated Department of Air Force/Department of Defense funds, under the 1968 FMSA (22 U.S.C. 2761, 2762).

Finally, the Court found no congressional intent to eliminate Court of Claims' jurisdiction over claims arising from the Government's foreign military sales activities, by reason of the omission from the 1968 FMSA of a special patent infringement jurisdictional provision, corresponding to section 606 of the 1961 Foreign Assistance Act (FAA) (22 U.S.C. 2356). The latter places jurisdiction for patent infringement claims, in connection with assistance furnished under the Act, in the district court of the United States or in the Court of Claims. Relying on the legislative history of the 1968 FAA, the Court said the 1968 Act was not intended wholly to supersede the 1961 Act, but merely to amend and repeal certain provisions. It noted that section 606 was codified as 22 U.S.C. 2356, remained in full force and effect, and under the 1961 Act was "applicable to, inter alia, foreign military sales." Consequently, said the Court of Claims, its jurisdiction under 28 U.S.C. 1498(a) was not barred as to claims properly arising from the Government's foreign military sales activity.

Copyright

On October 19, 1976, the President signed Public Law 94-553 (90 Stat. 2541; 17 U.S.C. 101 et seq.), "An Act For the general revision of the Copyright Law, title 17 of the United States Code, and for other purposes." It is to take effect on January 1, 1978. This was the first

overall revision of U.S. copyright law since 1909. It contains a number of provisions which are significant in terms of U.S. international copyright relations. A summary of those provisions prepared by the Office of Business Practices, Bureau of Economic and Business Affairs, Department of State, follows:

Section 104, "Subject matter and scope of copyright: national origin," sets forth the basic criteria under which works of foreign origin can be protected under U.S. copyright law. Published works are subject to protection under any one of the following conditions:

(A) On the date of first publication, one or more of the authors is a national, domiciliary, or sovereign authority of a country with which the United States has copyright relations pursuant to treaty or is stateless;

(B) The work was first published in the United States or in a UCC [Universal Copyright Convention] country;

(C) The work is published by the United Nations or the Organization of American States;

(D) The work is covered by a Presidential proclamation extending protection to works originating in a specified country which extends protection to U.S. works on "substantially the same basis" as to its own works.

Section 302, "Duration of copyright: works created on or after January 1, 1978," deals with the duration of copyright protection. (This is probably the single most important section in terms of U.S. international copyright relations.) Essentially, section 302(a) provides for a copyright term of the life of the author plus 50 years after this death, with special provisions covering the terms of copyright in anonymous and pseudonymous works and works made for hire. (Protection for works created before that date is dealt with in varying manners, depending upon whether they were previously subject to statutory copyright and, if so, whether they are in their first or second term of copyright on January 1, 1978. The new law does not accord copyright to works "entering" the public domain before January 1, 1978.) Such a term of protection is in line with the practice of most countries of the international copyright community and will also remove a major obstacle to the possible adherence of the United States to the Berne Convention for the Protection of Literary and Artistic Works. [The United States is a party to the other worldwide copyright agreement, the Universal Copyright Convention (TIAS 3324; 6 UST 2731; entered into force for the United States September 16, 1955).] Our membership in the Berne Convention would facilitate and simplify international copyright protection for U.S. nationals.

Section 601, "Manufacture, importation, and public distribution of certain copies," concerns the so-called "manufacturing clause" which is designed basically to protect the U.S. printing industry. The manufacturing clause of the current law severely limits the importation into or the distribution within the United States of English language books authored by U.S. nationals or domiciliaries, unless the copies are produced in, or made from type set in, or plates made in, the United States.

Section 601 liberalizes the present manufacturing clause. First, a violation of the manufacturing clause would not affect the right of the copyright proprietor in a book to authorize a motion picture version or other derivative use of the work. It only affects enforcement of the copyright as against unauthorized reproduction and distribution of the work. Second, the number of copies of any work authorized by a U.S. national, or domiciliary, and manufactured abroad that may be imported has been increased from 1,500 to 2,000, provided that the U.S. Customs Service is presented with an import statement issued under the seal of the Copyright Office. Third, manufacture in Canada is equated with U.S. manufacture under the new law. Fourth, and most important, the manufacturing clause will expire on July 1, 1982. Fifth, even before July 1, 1982, a new exception to the manufacturing clause (section 601(b) (7)) has been added which allows an individual American author, through choice or necessity, to arrange for printing and distribution of his work by a foreign rather than a domestic U.S. publisher, and permits importation into and distribution in the U.S. of unlimited copies of the foreign edition. This addition was proposed by the Authors League of America to enable a U.S. author to go abroad in seeking a publisher if he so desires; this exception is generally not available where U.S. publishing companies are involved in publication of the work.

A number of other provisions that have international copyright implications should be mentioned. Unauthorized duplication (piracy) of sound recording has been a problem both domestically and internationally. Sound recordings will continue to be fully protected under U.S. copyright law. Previously, sound recordings have been protected by an amendment to the 1909 Copyright Act, enacted in October 1971. In addition, secondary transmissions by cable of television signals received from Mexico and Canada will be subject to compulsory licensing procedures which will require compensation. Finally, section 201(e) prohibits giving effect in the United States to involuntary transfers of authors' rights by government bodies unless a previous voluntary transfer had occurred, such as a sales agreement with a publisher. This would have the effect of preventing governments from seizing the copyright of a dissident author in order to suppress publication of his works in the United States.

Dept. of State telegram 279836 to all diplomatic posts, Nov. 13, 1976. For a statement on the purpose and history of the 1976 revision of U.S. copyright law and a section-bysection analysis, see H. Rept. 94-176 and S. Rept. 94-473.

International Cooperation

International Energy Program

The International Energy Agreement (IEA) signed at Paris on November 18, 1974, entered into force definitively on January 19,