Practice, Civil, Standing, Declaratory proceeding, Action in nature of mandamus, Relief in the nature of certiorari. Administrative Law, Standing, Judicial review. Declaratory Relief. Mandamus. Board of Education. Commonwealth, Education. Education. School and School Committee. Labor, Public employment.
Civil actions commenced in the Superior Court Department on July 18, July 23, and October 21, 2014.
After consolidation, motions to dismiss were heard by Kimberly S. Budd, J.
Laurie R. Houle for the plaintiffs.
Iraida J. Alvarez, Assistant Attorney General (Pierce O. Cray, Assistant Attorney General, also present) for the defendants.
VUONO, J. In these consolidated cases, we consider the propriety of actions taken by the Commissioner of the Massachusetts Department of Elementary and Secondary Education (commissioner) and by the Massachusetts Board of Elementary and Secondary Education (board) in creating and approving “turnaround plans” for chronically underperforming schools pursuant to the so-called Achievement Gap Act (Act), G. L. c. 69, § 1J. The plaintiffs, New Bedford Educators Association (NBEA), Holyoke Teachers Association (HTA), and Boston Teachers Union (BTU) (collectively, the unions), filed separate complaints, later amended, in the Superior Court against the commissioner, the board, and its chairman (collectively, the defendants), alleging that the defendants failed to satisfy the requirements of the Act with regard to four chronically underperforming schools located in New Bedford, Holyoke, and Boston. The unions sought declaratory relief pursuant to G. L. c. 231A. NBEA and HTA also sought certiorari review under G. L. c. 249, § 4, and relief in the nature of mandamus pursuant to G. L. c. 249, § 5. The defendants moved to dismiss the unions’ complaints under Mass.R.Civ.P. 12(b)(1), 365 Mass. 754 (1974), for lack of subject matter jurisdiction. Following a hearing, a judge dismissed the complaints, concluding that the unions did not have standing to challenge the turnaround plans because the unions’ primary concerns were outside the area of interest protected by G. L. c. 69, § 1J, and because the defendants’ statutory duty was to students, not to local teachers’ unions. On appeal, the unions contend that the judge erred in dismissing their complaints solely on the basis of standing. For the reasons that follow, we affirm.
Statutory framework. To give context to the unions’ claims, we set forth in some detail the provisions of the Act. When the Legislature enacted the Education Reform Act of 1993, it declared that a paramount goal of the Commonwealth was “to provide a public education system of sufficient quality to extend to all children . . . the opportunity to reach their full potential and to lead lives as participants in the political and social life of the commonwealth and as contributors to its economy.” G. L. c. 69, § 1, as amended through St. 1993, c. 71, § 27. In furtherance of this goal, the Legislature rewrote the Act in 2010 to remedy deficiencies in underperforming and chronically underperforming schools, thereby improving student achievement. See G. L. c. 69, § 1J, as amended through St. 2010, c. 12, § 3. The “chronically underperforming” designation is reserved for the most challenged schools, such as those in the present case, and is based on multiple indicators of school quality. See G. L. c. 69, § 1J(a); 603 Code Mass. Regs. § 2.06(2) (2012). This designation can only be imposed where a school previously has been deemed “underperforming” and has failed to improve. G. L. c. 69, § 1J(a).
Once the commissioner designates a school as chronically underperforming, the commissioner is required to create a turnaround plan for the school in accordance with specific provisions of the Act. See G. L. c. 69, § 1J(m); 603 Code Mass. Regs. § 2.06(6) (2012). The commissioner “shall convene a local stakeholder group of not more than 13 individuals for the purpose of soliciting recommendations on the content of such plan in order to maximize the rapid academic achievement of students.” G. L. c. 69, § 1J(m). As relevant here, two members of the stakeholder group shall be the president of the local teacher’s union (or a designee), and a teacher from the chronically underperforming school who is chosen by the faculty of that school. Ibid. The commissioner must convene the local stakeholder group within thirty days of a school being designed as chronically underperforming, and the group must make its recommendations to the commissioner within forty-five days of its initial meeting. Ibid. The commissioner is statutorily required to give “due consideration” to the recommendations of the stakeholder group. Ibid.
When considering such recommendations, the commissioner has broad authority under the Act to implement changes to resolve the deficiencies that have caused a school to be designated as chronically underperforming. See G. L. c. 69, § 1J(n). Among other remedial measures, and “[n]otwithstanding any general or special law to the contrary,” the commissioner may expand, alter, or replace a school’s curriculum and program offerings, may provide additional funds to the school from the district’s budget, may expand the school day or the school year or both, may add full-day kindergarten classes if none exist, and may “establish steps to assure a continuum of high expertise teachers.” G. L. c. 69, § 1J(o). The commissioner also may limit, suspend, or change the provisions of any collective bargaining agreement, provided that he “shall not reduce the compensation of an administrator, teacher or staff member unless the hours of the person are proportionately reduced,” and the commissioner “may require the school committee and any applicable unions to bargain in good faith for 30 days before exercising authority” under the relevant statutory provision. Ibid. In addition, after consultation with local unions, the commissioner may “require the principal and all administrators, teachers and staff to reapply for their positions in the school, with full discretion vested in the superintendent regarding his consideration of and decisions on rehiring based on the reapplications.” Ibid. The turnaround plan shall include quantifiable annual goals to facilitate assessment of the school across numerous “measures of school performance and student success.” G. L. c. 69, § 1J(n).
Within thirty days of the local stakeholder group making recommendations, the commissioner must submit a preliminary version of the turnaround plan to the stakeholder group, the superintendent, and the school committee, all of whom may propose modifications to the plan within thirty days of its submission. See G. L. c. 69, § 1J(p). The commissioner “shall consider and incorporate the modifications into the plan if the commissioner determines that inclusion of the modifications would further promote the rapid academic achievement of students at the applicable school.” Ibid. The commissioner is free to alter or reject any of the proposed modifications. See ibid. Within thirty days of receiving such modifications, “the commissioner shall issue a final turnaround plan for the school and the plan shall be made publicly available.” Ibid.
Within thirty days of the issuance of the final turnaround plan, the superintendent, the school committee, or the local union may appeal to the board regarding one or more of the components of the plan, including the absence of any proposed modifications. See G. L. c. 69, § 1J(q). Based on its consideration of the challenged components, a majority of the board may vote to modify the final turnaround plan. See ibid. The decision of the board regarding an appeal shall be made within thirty days and “shall be final.” Ibid.
Factual and procedural background. We summarize the relevant facts alleged in the unions’ amended complaints and supporting exhibits. See Dartmouth v. Greater New Bedford Regional Vocational Technical High Sch. Dist., 461 Mass. 366, 368 (2012). In March, 2010, the commissioner designated the Paul A. Dever Elementary School (Dever School) and the John P. Holland Elementary School (Holland School), both in Boston, as underperforming schools. The superintendent of the Boston public schools created and implemented a turnaround plan for each one. In the fall of that same year, the Morgan Full Service Community School (Morgan School) in Holyoke and the John Avery Parker Elementary School (Parker School) in New Bedford also were designated as underperforming schools. The superintendents of their respective school districts created and implemented turnaround plans. Over the next three years, improvement efforts at the four schools were unsuccessful. Consequently, on October 30, 2013, the commissioner designated all four schools as chronically underperforming and thereafter appointed a receiver for each one.
In accordance with the Act, the commissioner convened local stakeholder groups to provide recommendations regarding a new turnaround plan for each school. The commissioner also notified the school committee and the teachers union in each city that he intended to exercise his authority under G. L. c. 69, § 1J(o), to change the provisions of each school’s collective bargaining agreement. In particular, the commissioner stated that each turnaround plan would include a longer school day, a longer school year, a performance-based compensation system, and new working conditions. By his letter, the commissioner required the school committee and the union in each city to bargain in good faith for thirty days in connection with these matters.
On March 7, 2014, the commissioner released a preliminary turnaround plan for each of the four schools. The local stakeholder groups for three of the schools reconvened and proposed several modifications, which were submitted to the commissioner. In April, 2014, the commissioner issued a final turnaround plan for each school. With the exception of the Holland School, the commissioner also provided each local stakeholder group, superintendent, and school committee with a memorandum describing the modifications he had chosen to adopt, and explaining why other modifications were not included in the final turnaround plans.
Each union appealed the final turnaround plan for its respective school to the board and proposed modifications to multiple provisions of the plans. Shortly thereafter, the commissioner provided the board with memoranda explaining the development of the turnaround plans and addressing the perceived flaws in the unions’ proposed modifications. The board considered NBEA’s appeal at a special meeting held on May 19, 2014. After hearing arguments from NBEA and the commissioner, the board voted to accept some, but not all, of the union’s proposed modifications. The board then posted on its Web site the modified final turnaround plan for the Parker School. The board considered the appeals from HTA and BTU at a special meeting held on June 9, 2014. After hearing arguments from the unions and the commissioner, the board voted to accept some, but not all, of the modifications proposed by HTA, and the board voted to reject all of the modifications proposed by BTU. The board posted on its Web site the modified final turnaround plan for the Morgan School. The final turnaround plans for the Dever School and the Holland School, which were not modified by the board, already had been made available to the public.
The unions then commenced the present actions in the Superior Court. In their amended complaints, NBEA and HTA alleged that the final turnaround plans for the Parker School and the Morgan School, respectively, did not comport with the requirements of G. L. c. 69, § 1J, that such turnaround plans failed to maximize the rapid academic achievement of students, that the process by which the board voted on proposed modifications to the turnaround plans was legally flawed, and that the defendants’ actions were arbitrary and capricious. BTU alleged in its amended complaint that the final turnaround plan for the Dever School was statutorily deficient because it eliminated the dual language program on the basis of demonstrably false evidence, and that the final turnaround plans for both the Dever School and the Holland School were statutorily deficient because neither the new compensation system nor the new dispute resolution procedure would help to maximize the rapid academic achievement of students. The judge allowed the parties’ joint motion to consolidate the three actions for purposes of pretrial case management. The judge subsequently granted the defendants’ motions to dismiss the amended complaints under Mass.R.Civ.P. 12(b)(1) for lack of subject matter jurisdiction, concluding that the unions lacked standing to properly bring their claims. This consolidated appeal ensued.
Discussion. “Standing is an issue of subject matter jurisdiction that is properly challenged by way of a motion to dismiss under rule 12(b)(1).” Indeck Maine Energy, LLC v. Commissioner of Energy Resources, 454 Mass. 511, 516 (2009) (Indeck). See Ginther v. Commissioner of Ins., 427 Mass. 319, 322 (1998), quoting from Tax Equity Alliance v. Commissioner of Rev., 423 Mass. 708, 715 (1996) (“[O]nly persons who have themselves suffered, or who are in danger of suffering, legal harm can compel the courts to assume the difficult and delicate duty of passing upon the validity of the acts of a coordinate branch of government”). An appellate court reviews the allowance of a motion to dismiss de novo, accepting the allegations in the complaint as true and drawing all reasonable inferences in favor of the plaintiff. See Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674, 676 (2011). In order to withstand a motion to dismiss, the complaint must include factual allegations sufficient “to raise a right to relief above the speculative level.” Iannacchino v. Ford Motor Co., 451 Mass. 623, 636 (2008), quoting from Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Where the factual allegations do not plausibly suggest an entitlement to relief, the complaint must be dismissed. See Iannacchino v. Ford Motor Co., supra.
Declaratory judgment. The unions contend that the judge erred in concluding that they did not have standing to seek declaratory relief with respect to the defendants’ alleged failure to satisfy the requirements of G. L. c. 69, § 1J, in creating and approving the four turnaround plans. In the unions’ view, the defendants’ actions were arbitrary and capricious because they did not serve to promote the rapid academic achievement of students at chronically underperforming schools. The unions argue that, given the important role of teachers in the turnaround process, the defendants’ failure to adopt modifications proposed by the local stakeholder groups, and the resulting flaws in the turnaround plans, harmed the teachers’ interests in promoting rapid academic achievement and ensuring compliance with the Act. Moreover, the unions continue, because the Legislature gave them “stakeholder” status, the defendants owed the unions and their member teachers a duty to comport with the provisions of G. L. c. 69, § 1J, and to ensure that the turnaround plans were not deficient. Consequently, the unions assert that they have standing to seek declaratory relief. We conclude that the plain meaning of the statute is that the duties imposed under § 1J run to the students, and, thus, the unions do not have standing.
An action for declaratory judgment under G. L. c. 231A may be brought in the Superior Court “to obtain a determination of the legality of the administrative practices and procedures of any municipal, county or state agency or official” that are alleged to be in violation of State law. G. L. c. 231A, § 2, as amended by St. 1974, c. 630, § 1. “To obtain declaratory relief in a case involving administrative action, ‘a plaintiff must show that (1) there is an actual controversy; (2) he has standing; (3) necessary parties have been joined; and (4) available administrative remedies have been exhausted.’” School Comm. of Hudson v. Board of Educ., 448 Mass. 565, 579 (2007) (Hudson), quoting from Villages Dev. Co. v. Secretary of the Executive Office of Envtl. Affairs, 410 Mass. 100, 106 (1991). It is well established that “G. L. c. 231A does not provide an independent statutory basis for standing.” Enos v. Secretary of Envtl. Affairs, 432 Mass. 132, 135 (2000) (Enos). Therefore, to establish standing to challenge the actions of an administrative agency or official, a plaintiff must allege “an injury within the area of concern of the statute or regulatory scheme under which the injurious action has occurred.” Ibid., quoting from Massachusetts Assn. of Indep. Ins. Agents & Brokers, Inc. v. Commissioner of Ins., 373 Mass. 290, 293 (1977). See Indeck, 454 Mass. at 517. That is to say, the plaintiff’s injury must come within the “zone of interests” protected by the statute. Enos, supra, quoting from Penal Insts. Commr. for Suffolk County v. Commissioner of Correction, 382 Mass. 527, 532 (1981). Moreover, it is not enough for a plaintiff to allege an injury caused by some act or omission of the defendant. See Ten Persons of the Commonwealth v. Fellsway Dev. LLC, 460 Mass. 366, 380 (2011). The plaintiff also must show that the defendant violated some duty that it owed to the plaintiff. See ibid. See also Penal Insts. Commr. for Suffolk County v. Commissioner of Correction, supra; Enos, supra.
“[S]tanding is not measured by the intensity of the litigant’s interest or the fervor of [its] advocacy.” Pratt v. Boston, 396 Mass. 37, 42 (1985), quoting from Valley Forge College v. Americans United for Separation of Church & State, 454 U.S. 464, 486 (1982). “In the final analysis, we must decide whether standing exists by examining several considerations, including the language of the statute in issue; the Legislature’s intent and purpose in enacting the statute; the nature of the administrative scheme; decisions on standing; any adverse effects that might occur, if standing is recognized; and the availability of other, more definite, remedies to the plaintiffs.” Enos, 432 Mass. at 135-136. “[W]e pay special attention to the requirement that standing usually is not present unless the governmental official or agency can be found to owe a duty directly to the plaintiffs.” Id. at 136.
Based on our review of the language and purpose of G. L. c. 69, § 1J, as well as other relevant considerations, we conclude that the Legislature did not intend to confer standing on the unions to seek judicial review of the commissioner’s creation and the board’s approval of turnaround plans for chronically underperforming schools. The Act is a comprehensive statutory and regulatory scheme that is designed to remediate deficiencies at such schools in order to promote and maximize the rapid academic achievement of students. See G. L. c. 69, § 1J(m)-(q), (z); 603 Code Mass. Regs. §§ 2.00 et seq. (2012). The Legislature conferred broad authority on the commissioner to create the turnaround plans through an expedited administrative process, and it gave the board final authority to approve such plans. See G. L. c. 69, § 1J(m)-(q). The Act does not contemplate delaying the implementation of the turnaround plans by conferring standing on the unions to then challenge the defendants’ actions through litigation. See Hudson, 448 Mass. at 584 (local school committees did not have standing to seek declaratory relief from Board of Education decision granting school charter under G. L. c. 71, § 89, where such challenge would “necessarily distort the collaborative purpose of the process, frustrate what was intended to be a nonadversary administrative procedure, and subvert the very purpose of the statutory scheme”). The intent of the Legislature is clear from the plain words of the statute, and we are not at liberty to deviate from the legislative mandate. See Boston Hous. Authy. v. National Conference of Firemen & Oilers, Local 3, 458 Mass. 155, 162 (2010) (where statutory language is clear and unambiguous, it is conclusive as to intent of Legislature, and we do not vary its meaning).
It goes without saying that teachers play an integral role in the turnaround process for chronically underperforming schools. First and foremost, however, the Act is concerned with giving the commissioner every available resource to maximize the rapid academic achievement of students. To that end, as we have discussed, the Legislature authorized the commissioner, among other matters, to expand the school day or school year or both; to limit, suspend, or change the provisions of any collective bargaining agreement; to require good faith bargaining for thirty days over the terms of such agreement; and to require teachers to reapply for their positions in the schools. See G. L. c. 69, § 1J(o). These statutory provisions plainly suggest that any alleged harm to the unions or their members caused by the creation and approval of the turnaround plans, including changes to the terms and conditions of employment of teachers at the affected schools, is not within the “zone of interests” protected by the Act. See Beard Motors, Inc. v. Toyota Motor Distribs., Inc., 395 Mass. 428, 431-432 (1985) (not every party claiming harm from violation of statutory scheme has standing to bring action thereunder). Regardless of any adverse consequences to the unions, the Legislature gave the commissioner wide-ranging authority to implement whatever changes the commissioner deemed necessary to effectuate the purpose of the Act. As such, it is the needs of the students attending chronically underperforming schools that are protected under the Act.
The Legislature intended for the unions to have a specific role in the turnaround process under G. L. c. 69, § 1J. First, the commissioner was required to include the president of the local teacher’s union (or a designee) and one teacher in each local stakeholder group, and he did so. See G. L. c. 69, § 1J(m). However, the inclusion of these two union representatives among the ten or eleven individuals comprising each stakeholder group did not confer any special status on the unions. See Enos, 432 Mass. at 137-139 (participation in administrative process does not automatically confer standing on party to seek judicial review of resulting decision). Second, the commissioner was required to consider the recommendations of the stakeholder group when creating the preliminary and final turnaround plans. See G. L. c. 69, § 1J(m)-(p). These recommendations were from the stakeholder group as a whole, not from any stakeholder in particular, and nothing in the Act obligated the commissioner to incorporate them into the turnaround plans. The commissioner here did consider the recommendations and modifications from the local stakeholder groups, choosing to accept some and to reject others. Lastly, within thirty days of the issuance of the final turnaround plans, the unions were statutorily authorized to appeal to the board; this right to appeal also was conferred on the superintendent and the school committee. See G. L. c. 69, § 1J(q). Although the board was obligated to review the unions’ appeals, the board was not required to adopt any of the proposed modifications to the turnaround plans, and the decision of the board regarding each appeal was final. See ibid. Here, the board heard the unions’ appeals at two special meetings, considered arguments made by the parties, and voted to accept some, but not all, of the unions’ proposed modifications. This was all that was required. In our view, the unions have not shown that the defendants violated any duty that they owed directly to the unions.
For the foregoing reasons, we conclude that the unions do not have standing to seek declaratory relief. To rule otherwise would ignore the comprehensive authority conferred on the commissioner and the board by the Legislature, and would cause substantial delay to the turnaround process. The purpose of the Act — to maximize the rapid academic achievement of students at chronically underperforming schools — would be undermined. Moreover, the unions may not seek declaratory relief in the absence of a private right of action where the Legislature intended to foreclose such a remedy. See Boston Med. Center Corp. v. Secretary of the Executive Office of Health & Human Servs., 463 Mass. 447, 471 (2012); Frawley v. Police Commr. of Cambridge, 473 Mass. 716, 724 (2016). We have no reason to believe that our conclusion regarding the unions’ standing will prevent the Act from being administered properly, in accordance with the Legislature’s intent.
Relief in the nature of mandamus. NBEA and HTA contend that they are entitled to mandamus relief under G. L. c. 249, § 5, to compel the defendants to act in accordance with the provisions of G. L. c. 69, § 1J.
“It is well settled that relief in the nature of mandamus is extraordinary and may be granted only to prevent a failure of justice in instances where there is no alternative remedy.” Callahan v. Superior Ct., 410 Mass. 1001, 1001 (1991). “A complaint in the nature of mandamus is ‘a call to a government official to perform a clear cut duty,’ and the remedy is limited to requiring action on the part of the government official.” Simmons v. Clerk-Magistrate of the Boston Div. of the Hous. Ct. Dept., 448 Mass. 57, 59-60 (2006), quoting from Doe v. District Attorney for the Plymouth Dist., 29 Mass. App. Ct. 671, 675 (1991). “Mandamus is not an appropriate remedy to obtain a review of the decision of public officers who have acted and to command them to act in a new and different manner.” Boston Med. Center Corp. v. Secretary of the Executive Office of Health & Human Servs., 463 Mass. at 470, quoting from Harding v. Commissioner of Ins., 352 Mass. 478, 480 (1967). Like the declaratory judgment statute, the mandamus statute does not provide an independent basis for standing. See Indeck, 454 Mass. at 516. Ordinarily, for a plaintiff to have standing to bring a mandamus action, the plaintiff must allege a breach of duty owed to the plaintiff by the public defendant. See Perella v. Massachusetts Turnpike Authy., 55 Mass. App. Ct. 537, 539 (2002).
Here, NBEA and HTA have not established that they are seeking the enforcement of any nondiscretionary duties. We conclude, therefore, that NBEA and HTA do not have standing to bring an action for relief in the nature of mandamus. Further, even if they did have standing, they have not sought to compel the defendants to perform a clear cut statutory duty in the face of official inaction. Instead, NBEA and HTA have requested mandamus relief in the hope that the commissioner and the board will be ordered to act in a new and different manner when creating and approving the turnaround plans. Mandamus is not an appropriate remedy in these circumstances.
Review in the nature of certiorari. Finally, NBEA and HTA contend that they are entitled to certiorari review under G. L. c. 249, § 4. They argue that such review is warranted not only because have they been injured by the turnaround process and lack an alternative remedy, but also because their appeals to the board constituted quasi judicial proceedings.
A civil action in the nature of certiorari is “a limited procedure reserved for correction of substantial errors of law apparent on the record created before a judicial or quasi-judicial tribunal.” Hudson, 448 Mass. at 575-576. See St. Botolph Citizens Comm., Inc. v. Boston Redev. Authy., 429 Mass. 1, 7 (1999). “To obtain certiorari review of an administrative decision, one must show ‘(1) a judicial or quasi-judicial proceeding; (2) a lack of all other reasonably adequate remedies; and (3) a substantial injury or injustice arising from the proceeding under review.’” Hudson, supra at 576, quoting from Warren v. Hazardous Waste Facility Site Safety Council, 392 Mass. 107, 117 (1984). In determining whether a government body acts in a quasi judicial manner, a court looks to “the form of the proceeding reasonably employed by the agency, and the extent to which that proceeding resembles judicial action.” Hoffer v. Board of Registration in Med., 461 Mass. 451, 457 (2012). We consider several factors in distinguishing a quasi-judicial proceeding from one that is legislative or purely administrative: “(1) whether the proceeding is preceded by specific charges; (2) whether the proceeding involves sworn testimony by witnesses subject to cross-examination, or a party attesting to certain facts, as opposed to unsworn statements by interested persons advocating for or against a proposed new policy; (3) whether the agency conducts an investigation into the veracity of attested-to facts; (4) whether the proceeding culminates in an individualized determination of a party’s entitlement to some benefit, or an individualized course of discipline, as opposed to culminating in the adoption of a rule of general applicability; and (5) whether the proceeding is followed by the adoption of formal findings of fact.” Revere v. Massachusetts Gaming Commn., 476 Mass. 591, 600-601 (2017) (citations omitted).
Based on our assessment of these factors, we conclude that the board’s review of the appeals submitted by NBEA and HTA did not occur in the context of quasi judicial proceedings. Rather, the special board meetings to consider the unions’ appeals were wholly administrative. That being the case, the NBEA and the HTA are not entitled to certiorari review under G. L. c. 249, § 4.
 Commissioner of the Massachusetts Department of Elementary and Secondary Education, and Massachusetts Board of Elementary and Secondary Education.
 Holyoke Teachers Association vs. Chairman of the Massachusetts Board of Elementary and Secondary Education & others; Boston Teachers Union vs. Chairman of the Massachusetts Board of Elementary and Secondary Education & others.
 In their amended complaints, the unions also alleged that the defendants’ actions violated provisions of the United States Constitution and the Massachusetts Declaration of Rights. The parties subsequently filed a joint stipulation of dismissal with respect to these constitutional claims. Therefore, such claims are not before us in the present appeal.
 Indicators of school quality include “student attendance, dismissal rates and exclusion rates, promotion rates, graduation rates or the lack of demonstrated significant improvement for 2 or more consecutive years in core academic subjects, either in the aggregate or among subgroups of students, including designations based on special education, low-income, English language proficiency and racial classifications.” G. L. c. 69, § 1J(a). Under the Act, “[n]ot more than 4 per cent of the total number of public schools may be designated as underperforming or chronically underperforming at any given time.” Ibid.
 A turnaround plan shall include the following components: (1) steps to address the social service and health care needs of students and their families, including mental health and substance abuse screenings; (2) steps to improve or expand child welfare and law enforcement services in the school community; (3) steps to improve workforce development services provided to students and their families; (4) steps to address achievement gaps for English language learners, low-income students, and special education students; (5) steps to provide alternative English language learning programs for students with limited proficiency; and (6) a financial plan for the school. G. L. c. 69, § 1J(n).
 The other members of the local stakeholder group shall include “(1) the superintendent, or a designee; (2) the chair of the school committee, or a designee; . . . (4) an administrator from the school, who may be the principal, chosen by the superintendent; . . . (6) a parent from the school chosen by the local parent organization; (7) representatives of applicable state and local social service, health and child welfare agencies, chosen by the commissioner; (8) as appropriate, representatives of state and local workforce development agencies, chosen by the commissioner; (9) for elementary schools, a representative of an early education and care provider . . . ; and (10) a member of the community appointed by the chief executive of the city or town.” G. L. c. 69, § 1J(m).
 A teacher with professional teacher status in a school declared to be chronically underperforming can be dismissed “for good cause,” but “may seek review of a termination decision . . . by filing a petition for expedited arbitration with the commissioner.” G. L. c. 69, § 1J(o).
 The board may modify a final turnaround plan if it determines that “(1) such modifications would further promote the rapid academic achievement of students in the applicable school; (2) a component of the plan was included, or a modification was excluded, on the basis of demonstrably-false information or evidence; or (3) the commissioner failed to meet the requirements of [G. L. c. 69, § 1J(m)-(p), pertaining to turnaround plan development for chronically underperforming schools], inclusive.” G. L. c. 69, § 1J(q).
 NBEA and HTA alleged that the preliminary turnaround plans for their respective schools did not include an adequate financial plan, suspended the salary provisions of the collective bargaining agreement, increased working hours without a commensurate increase in compensation, and tied teachers’ compensation to their scores on performance evaluations. In addition, NBEA alleged that the preliminary plan for the Parker School did not include steps to address the achievement gap for special education students, and HTA alleged that the preliminary plan for the Morgan School did not include steps to address the achievement gap for students who had limited proficiency in English. HTA also alleged that the preliminary plan suspended the grievance procedure in the collective bargaining agreement and replaced it with a “dispute resolution” procedure that gave the commissioner final decision-making authority. Finally, BTU alleged that the preliminary turnaround plan for the Dever School called for the discontinuation of a dual language program.
 The local stakeholder group for the Holland School did not submit to the commissioner any proposed modifications to the school’s preliminary turnaround plan.
 NBEA and HTA alleged that the deficiencies that they had identified in the preliminary turnaround plans for the Parker School and the Morgan School, respectively, were not resolved in the final turnaround plans. See note 9, supra. BTU alleged that, in addition to discontinuing the dual language program at the Dever School, the final turnaround plans for both the Dever School and the Holland School increased working hours without a commensurate increase in compensation, imposed a new compensation model, and replaced the grievance procedure in the collective bargaining agreements with a new “dispute resolution” procedure.
 NBEA also informed the board that several members of the local stakeholder group for the Parker School hindered the ability of other members of the group to propose modifications to the preliminary turnaround plan relating to teachers’ hours and compensation.
 Under rule 12(b)(1), “the judge may consider affidavits and other matters outside the face of the complaint that are used to support the movant’s claim that the court lacks subject matter jurisdiction.” Ginther v. Commissioner of Ins., 427 Mass. at 322 n.6.
 General Laws c. 69, § 1J(o), provides that, notwithstanding the commissioner’s authority to limit, suspend, or change the provisions of any collective bargaining agreement, the commissioner “shall not reduce the compensation of an administrator, teacher or staff member unless the hours of the person are proportionately reduced.” To the extent that teachers’ hours are increased as a result of the commissioner’s decision to “expand the school day or school year or both,” the Act does not impose on the commissioner a corresponding obligation to raise teachers’ compensation. Ibid. See Commissioner of Correction v. Superior Ct. Dept. of the Trial Ct. for the County of Worcester, 446 Mass. 123, 126 (2006) (“We do not read into the statute a provision which the Legislature did not see fit to put there, nor add words that the Legislature had an option to, but chose not to include”). The fact that the Legislature did not include such an obligation in § 1J(o) strongly suggests an awareness that the turnaround process could require teachers to work longer hours for the same compensation, and approval of the same.
 Although we express no view on the matter, we do not foreclose the possibility that, in different circumstances, the parent of a student attending a chronically underperforming school could have standing on behalf of that student to bring an action against the defendants for an alleged failure to comply with the requirements of G. L. c. 69, § 1J. See Indeck, 454 Mass. at 526 n.15.
 The unions have alleged that they have “associational standing,” on behalf of their members, to seek declaratory relief. To have associational standing, an organization must establish, among other requirements, that “its members would otherwise have standing to sue in their own right.” Animal Legal Defense Fund, Inc. v. Fisheries & Wildlife Bd., 416 Mass. 635, 638 n.4 (1993), quoting from Hunt v. Washington State Apple Advertising Commn., 432 U.S. 333, 343 (1977). The reasons why the unions do not have standing are equally applicable to individual teachers. Therefore, we conclude that the unions’ claims regarding associational standing are unavailing.
 Although NBEA and HTA requested mandamus relief in their amended complaints, the judge did not specifically address whether they were entitled to such relief. They again have raised this issue on appeal, and we proceed to address it. See Hingham Mut. Fire Ins. Co. v. Smith, 69 Mass. App. Ct. 1, 7 & n.9 (2007).
 As with their requests for mandamus relief, NBEA and HTA requested certiorari review in their amended complaints, but the judge did not specifically address whether they were entitled to such review. See note 17, supra. They again have raised this issue on appeal, and we proceed to address it. See Hingham Mut. Fire Ins. Co. v. Smith, 69 Mass. App. Ct. at 7 & n.9.


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May the city council provide for the entry upon and inspection of private buildings and construction projects within the municipality in order to investigate its building department and to insure proper conduct of the building inspectors and officials of the city in the enforcement of the South Florida Building Code?
The governing body of the City of Tamarac cannot validly provide for the warrantless entry upon and inspection of private buildings and construction projects within that municipality for the purpose of investigating the city's building department or to insure proper conduct of the city's building inspectors and officials in the enforcement of the South Florida Building Code as statutorily incorporated into Ch. 71-575, Laws of Florida, and made applicable to all municipalities and unincorporated areas of Broward County.
The code, which goes on to establish detailed building construction requirements and standards, was made applicable to all municipalities and unincorporated areas of Broward County by Ch. 71-575, Laws of Florida. You inquire as to whether the foregoing right of entry provision of the code is limited in application to the building official and his duly authorized representatives for the purpose of code enforcement or whether other persons authorized by the governing body of the city may also enter private buildings, structures, and premises and inspect the same as a means of investigating the city's building department, its building officials and inspectors, and alleged violations of the statutory building code.
In this regard, the Fourth Amendment to the United States Constitution, made applicable to the states through the due process clause of the Fourteenth Amendment, Mapp v. Ohio, 367 U.S. 643, reh. den. 368 U.S. 871 (1961), guarantees to all persons the right of privacy free from unreasonable state intrusion. See also Art. I, s. 12, State Const. The effect of these organic provisions securing freedom from unreasonable searches is, in general and except as an incident to lawful arrest, to render a warrant necessary whenever a search of a person's private premises is to be made, 29 Fla. Jur. Search and Seizure s. 27, p. 251; and, generally, no search warrant is issuable except on probable cause. Id. at s. 31, p. 255.
either consent or a warrant supported by particular physical and demographic characteristics of the areas to be searched. Id. See also See v. City of Seattle, 387 U.S. 541, 545 (1970), in which the court concluded that administrative entry, without consent, upon the portions of commercial premises which are not open to the public may be compelled only through prosecution or physical force within the framework of a warrant procedure.
More recently, the United States Supreme Court has established a limited exception to this "administrative warrant" requirement, holding that, even in the absence of consent, an administrative inspection may be made without a warrant if the business searched is one in which there is a legitimate public interest in close regulation and if the search is conducted under the authority of a statute meeting certain specificity requirements. United States v. Biswell, 406 U.S. 311 (1972); 29 Fla. Jur. Search and Seizure s. 11, p. 225. In Biswell, the court upheld a warrantless search made pursuant to a federal statute permitting entry "during business hours [of] the premises (including places of storage) of [regulated firearms businesses] for the purpose of inspecting or examining (1) any records or documents required to be kept . . . and (2) any firearms or ammunition kept or stored . . . at such premises." See 18 U.S.C. s. 923(g). The search was lawful despite the absence of a warrant since it was made "[i]n the context of a regulatory inspection system of business premises which is carefully limited in time, place and scope. . . ." See 406 U.S. at 315.
"In contrast to such broad delegation of inspection authority [as that involved in See, supra], the statutory grants of inspection power here under review [26 U.S.C. ss. 5146(b) and 7606(a)] are carefully defined and narrowed to the point where they grant little, if any, more authority than that which would be extended in a warrant issued by a magistrate after review. . . .
. . . the imposition of a requirement that alcohol tax inspectors obtain warrants before carrying out the specifically defined inspection authorized by statute would serve no useful purpose in protecting the Fourth Amendment rights of the liquor dealer. Those rights are already protected by the restrictions contained in the statute itself. We are not dealing here with 'area' or 'general' searches of the type authorized by municipal codes, and there is no need to utilize the warrant machinery as a means of establishing standards for protection against unwarranted intrusions possible under such codes. Here the area eligible for inspection is clearly and narrowly defined; the purpose is relevant; the scope is limited; and all of these aspects are well known to the operators of the premises being inspected. Nothing of consequence therefore would be achieved through individualized review by a magistrate. In the proper exercise of his discretion, the magistrate would be compelled to issue a warrant as a matter of course, duplicating the limited authority already granted by statute. In short, the statute here under consideration is the equivalent of a warrant." See 410 F. 2d at 201, 202.
See also Youghiogheny and Ohio Coal Company v. Morton, 364 F. Supp. 45 (S.D. Ohio 1973) (mine inspection); Terraciano v. Montanye, 360 F.Supp. 1377 (W.D. N.Y. 1973) (pharmacy inspection); United States v. Lituin, 353 F.Supp. 1333 (D.D.C. 1973) (food and drug inspection); United States v. Business Builders, Inc., 354 F.Supp. 141 (N.D. Okla. 1973) (food and drug inspection)."
Finally, in Youghiogheny and Ohio Coal Company v. Morton, supra, it was emphasized that warrantless, unannounced administrative inspections, as contemplated in Biswell, supra, must be for the purpose of the statute authorizing such inspections and that the statutory power to inspect cannot be used to conduct a search for other purposes. See 364 F.Supp. at p. 50. See also Olson v. State, 287 So.2d 313 (Fla. 1973), stating that such warrantless inspections and searches are constitutionally justified only in those exceptional situations where the public welfare demands different treatment for them and only then when the exceptions are made plainly to appear in the governing statutes. Id., at p. 315.
Applying the foregoing constitutional considerations to the instant inquiry, there may well be such a legitimate public interest in the close regulation of building construction under Ch. 71-575, supra, and the specificity of s. 201.2 of the code (quoted above) as statutorily incorporated by Ch. 71-575 may be such that the inspection of buildings, structures, and premises by the building official or his duly authorized representative may be conducted without an administrative warrant. Moreover, it is well settled in this jurisdiction that a statute found on the statute books must be presumed to be valid and must be given effect until it is judicially declared unconstitutional. Evans v. Hillsborough County, 186 So. 193, 196 (Fla. 1938). In any event, a determination as to the necessity of the building official or his duly authorized representative to obtain an administrative warrant in order to make inspections and to enforce and prevent violations of the statutory building code need not be made here, since your inquiry goes to the authority of other municipal officials to enter upon buildings, structures, or premises for a purpose other than direct code enforcement or prevention of violations thereof. And, as previously noted, valid statutory power to conduct a warrantless inspection for a particular purpose, if it does exist, cannot be used to conduct a search for another purpose. See Olson v. State, supra. Thus, in this instance, s. 201.2 of the code cannot be relied upon as authority for other municipal officials or their designees to enter private buildings and enter upon building construction projects to insure proper conduct by a building official or inspector or to investigate into a city building department. It might be noted that s. 203.4(c) of the code provides that the Broward County Board of Rules and Appeals, upon the request of any person charged with the responsibility of enforcing the code (including city councilmen), or upon its own initiative, shall conduct investigations into enforcement of the code.
In sum, therefore, I am of the opinion that the city council may not constitutionally provide for the warrantless entry into and inspection of private buildings and construction projects within the municipality for the purpose of investigating the city's building department or to insure proper conduct of the city's building inspectors and officials in the enforcement of the South Florida Building Code.

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Ross Winans took out a patent in 1847 “for making the body of a burden railroad car of sheet iron, the upper part being cylindrical, and the lower part in the form of a frustum of a cone, the under edge of which has a flange secured upon it, to which flange a movable bottom is attached” (see, description in Winans v. Denmead1). Defendants had made cars similar to Winans’, except that the form was octagonal instead of circular. In the infringement lawsuit, the U.S. Supreme Court determined that Winans’ patent was a new mode of operation, and what was claimed was merely a form separable from substance, and thereby covering various forms if the forms were “so near ... as substantially to embody the patentee's mode of operation, and thereby attain the same kind of result as was reached by [the] invention.” The analytical standard was later distilled into Function/Way/Result or F/W/R for the Doctrine of Equivalents in finding for patent infringement.
The rise of the Doctrine entailed profound impact on future patent practice. On the one hand, it effectively strengthened protection of the patentee’s rights, but on the other, it also created tremendous public inconvenience of uncertainty as to where the patent power stops.
Speaking of the range of patent protection, a general analogy is the method of measuring one’s land property by using “metes and bounds.” In fact, the development of the patent system resembles that of the real estate system in many ways. In the pioneering days, an early settler came upon a new land. He built a new house, cultivated a new field, and raised a few chickens. He did not have neighbors, and worried little about intruders. He had no reason to build a fence or mark the boundaries of his property - “My property is all that I need, all that I can control, and all that is connected to the central point of interest - my home,” he would claim. And if this home becomes the center of town in the 21st century, the property can no longer be measured this way, but precisely by inches.
As a lawful monopoly, the range of a patent must be made clear, which is unexceptionally required by patent laws throughout the world, for, e.g., at least one independent claim, and the claim must be clear. In the Chinese Patent Law, e.g., Art. 26 mandates that the written description must give a clear and complete exposition of the invention….; and the range of protection shall be indicated on the basis of the written description; and Art. 56 further stipulate that the patent is protected in accordance with the range of the claim or claims, and the written description or drawings may be used for interpretation of the claims. The Implementing Regulations under the Patent Law further details that the claim shall point out the technical features, and claim the range of protection in clear and concise terms.
As previously stated, the Doctrine is necessary, without which, a copyist could easily avoid infringement liabilities by making insubstantial alterations. However, because of the uncertainty in the “equivalents,” the Doctrine never squares well with the definiteness requirement for patent claims.
The criteria for the equivalents are for the “substantial function,” in “substantially the same way,” and to achieve “substantially the same result.” This simply begs the question: how substantial is substantial? What are standards this substantiality may be measured against? Can it be specified in some way?
In the famous (or maybe infamous) case of Corning Glass Works v. Sumitomo (1989), 6 the Doctrine was pushed to an extreme. Corning developed a product and a method for making fiber optics which involved reducing impurities in the core so as to increase refractive index (RI) which greatly increased the distance for telecommunication. It was commonly known that by increasing RI, the distance of fiber optic communications may be increased. Defendant Sumitomo achieved this result of increased RI by adding impurities into the layer around the core, which, in technical sense, could be easier to accomplish. The court found that adding impurities in the reflective layer and reducing impurities in the core was to “carry substantially the same function, in substantially the same way, to achieve substantially the same result.” Once handed down, the decision raised many brows in Japan, and critics believed that it was due to anti-Japanese sentiment. The author of this article asked several people on various occasions, “Do you believe that these two products are substantially the same?” The answers invariably were in the negative. Some even believe that the Sumitomo product could be a separately patentable technology. In the view of this author, Corning might have, perhaps, really overlooked what was considered an equivalent, which was evidenced by their filing of the process patent for reducing impurities in the core. In other words, if Corning never contemplated the Sumitomo solutions, it could not have made that invention which was determined as an equivalent, let alone encompassing it into the patent claims. Stated simply, Corning in effect embraced by way of the expansive Doctrine what was outside the scope of its invention. Such an expansive reach is indeed causing uncertainty as to the scope of the patent claims.
In practical areas, some judicial developments in employing the Doctrine can be no less worrisome. For example, the Intermediary Court of Shenzhen decided that a “bowl-shaped” heat radiator is equivalent to a “cylinder-shaped” one in the infringement case of Zalmantechco, Ltd. (S. Korea) v. PCCooler (of Shenzhen) (involving Chinese Pat. No. ZL02800004.8).
The Written Description which indicates the method of “the blind board being processed by the rotating blade in a mode other than being suspended” does not preclude other modes; it is merely a comparable mode.
Whereas, the accused device precisely employed the mode of having the blind board being suspended when processed by a rotating blade. When the testifying experts refused to give their opinions, the Court went ahead with its own finding of technical facts as one of typical equivalents where the patented product solved two technical problems with one device and the accused product solved the two problems with two devices. Moreover, the Court proffered an “inferiority” theory by which an equivalent would be found if the accused device is “inferior” to the patented product. It should be practically improper for a court, when contemplating legal issues involving patents, to offer a judgmental opinion on the technical superiority or inferiority of a product, for that is a matter of many considerations, including such factors as cost and effect, market conditions, etc. To make it worse, the Court commented that an accused product would sometimes be superior and sometimes inferior over the patented product. Then which one is the determining factor?
In this author’s view, the Doctrine of Equivalents, absent an objective standard for determination, could be used to extend patent coverage to a “substantially” non-equivalent which is clearly outside the range of the patent claims.
It is a generally accepted principle that the patent ought to clearly point out and distinctly claim the range of protection, which has been specifically provided in the patent statutes of various countries. However, woodenly applying this rule in claims construction would sometimes produce unfair result (as, e.g., where an infringer finds a loophole in the patent to evade liabilities), hence the Doctrine. But a closer look at Winans v. Denmead would reveal that the U.S. Supreme Court in 1853 when employing the Doctrine was still struggling with the central claiming mentality, which was to interpret the patent claims primarily according to the written description for a “principle” - a mode of operation - which was not limited by the claim that was merely an embodiment of the principle.
The Doctrine of Equivalents, as opposed to the general principle of clearly pointing out and distinctly claiming, is therefore an equitable exception, and as such, it has to be used very cautiously, so as not to swallow the general principle. If, for example, any patentee could extend the patent coverage at will to what is not literally covered by the patent under the Doctrine of Equivalents, the “controlled evil” of patent, then, will be out of control, and become a naked monopoly.
Maximization of one’s patent right, of course, is understandably the hope of every patent owner, especially by means of some expansive interpretation of the patent claims when an accused product does not fall within the literal boundary of the patent claims. But this has to be done on basis of clear legal support, and this happens only as an exception to the general rules. The Patent Law has unequivocally mandated in Art. 56 that “The range of protection for invention or utility model patents is determined by the contents of the claims; the written description and drawings may be used in claim interpretation.” What is meant in Art. 56 (1) “determined by” is clearly to set the demarcation against which the rights are measured; and (2) when [and only when] ambiguities arise as to the meaning of the words in the claims, the written description and the drawings may be used for proper interpretation. In other words, the law in the first clause would be nonsense if the second can override it. By the same token, a motorbike could have become an equivalent of a bike (suppose the “bike” discloses the features of rear wheel drive and front wheel steering).
The Doctrine of Equivalents in defining the boundaries of the monopolistic powers has in practice brought more ambiguities and uncertainties than to provide effective protection of the patent rights. In the view of this author, such practical failure came as a natural result from the failure to appreciate the nature of the Doctrine, as well as other existing available mechanisms.
The Doctrine of Equivalents is a non-definable concept. Theoretically, the equivalent must be substantially the same as the claimed features, i.e., without expanding the claims. But the equitable concept of “substantially” in reality has always been used in expansive interpretation of the claim. There’s no denying of the equitable value in the Doctrine, but the question remains as to where the expansion would stop. The current limitations of the Doctrine (e.g., prosecution history estoppels, which creates more problem than it solves in light of the prosecution history), works neither for the protection of the patent rights nor for clarifying the protection range. It should in fact, in this author’s view, be not too difficult to find a reasonable solution from the currently existing mechanisms.
Jurisprudentially, the range of patent protection may not be expanded, which theory has been widely adopted in various national patent practices. But it is a fact that the claim-expanding Doctrine has also been widely accepted as well. Some may say that it does not in theory expand the claims, which, since it so conflicts with the general principle of “clearly pointing out and distinctly claiming,” is not much worth of commenting.
3. Taking the expanded claims in light of the prior art, and evaluating patentability (novelty and non-obviousness); if it fails, the defense would stand, and no infringement under the Doctrine of Equivalent may be found, and vice versa.
This solution, being worthwhile of consideration, has its shortcoming in that it overlooked whether the expansion had been sufficiently disclosed in the written description.
In the view of this author, a measure, somewhat similar to “reissue” used in American patent practice would be highly recommendable.
Like any patent, a reissued patent can also be challenged for validity.
2. In litigation involving patent infringement, the patentee may request the court to interpret the current claims, but it may never ask the court to rewrite the claims, let alone for patentability evaluation of a rewritten portion, which is the professional realm of the patent administration.
6. A reissued patent stands on a much better footing than an ordinary patent, for any patent that has been twice affirmed by the patent authorities would theoretically have cleared all possible defects; whereas, an unchallenged patent would have to be scrutinized relentlessly in the invalidation process, again in a much weaker position.
The reissue mechanism is premised on the equity basis, or more precisely, the practice of exceptions to the general rules. A reissue may not be requested unless some defects have been detected; and such defects are the result of unintentional error of the inventor, because of which, the inventor has claimed more, or less, than he has right to.
It is the belief of this author that a “hypothetical” examination, if it cannot be immediately adopted by legislation for understandable reasons, could at least provide some working models in the judicial process, such as the trial hearing somewhat like the Markman Hearing, taking testimony from experts like Patent Office examiners so as to achieve similar result of reissue, and to minimize the uncertainties resulting from relying on the Doctrine.
It is a fundamental principle that the range of patent rights must be clearly defined, without which, the monopolistic powers of the patent would be unleashed for misuse and extensive waste of judicial resources would result, making the patent a naked tool for constraining competition in the marketplace, and the legislative goal of “promoting science and technology” a nullity. On the other hand, the claims should not be a prison for the patentee; neither should it be a vehicle for intentional copyist to evade punishment of the law. The Doctrine of Equivalent is effective to the extent of closing the loophole so that the patent is not just a “paper patent” for the inventor’s right, but equally important, it should not be overlooked for the effect of causing uncertainties as the range of patent protection.
In handling judicial disputes, it would be wise to follow the established principles in the existing framework, and avoid making excessive exceptions. If uncertainties of patent claims could be avoided by available legal remedies to suppress infringement, it would be unwise to resort to other means (such as the Doctrine) that would unnecessarily result in making the range of patent protection less certain.
The patent reissue scheme has been a successful practice, and fully operational for about two hundred years in the United States. It has proved to be effective and legislated into the patent statute. Such a scheme is worth studying by patent authorities in all countries, and could be adopted first in the judicial process, and eventually, into the patent law.
1. Winans v. Demead, 56 U.S. (15 How.) 330 (1853).
2. All U.S. patent documents prior to 1836, the so-called “X-Patents,” were destroyed in the famous 1836 Patent Office fire. Some have been retrieved from various private collections and local libraries since then. So, for this reason, we can hardly have any specific example of a real patent from then.
3. See, generally, Janice M. Mueller, An Introduction to Patent Law, CTIIC Pub’g House, 2003.
4. It ought to be noted that a general misunderstanding exists as to “central claiming” and “peripheral claiming.” These are primarily techniques for patent claim drafting, not claims construction theories. It has been so misinterpreted that even Patent Office official spoke about a “compromise” method between “central” and “peripheral” in claims construction, which could have been resulted from mistranslation.
In U.S., in fact, a court handling patent infringement must first take the patent claims as it finds them, construe them according to their plain meaning to determine the scope of the protection; and when ambiguities arise, they may be resolved against the background of the written description and the drawings, if any.
5. Festo v. Shoketsu, Id.
6. Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989).
7. 339 U.S. 605 (1950).
8. See, Adelman, Rader, Thomas, Wegner, Patent Law, West Group, 1998, at 897 (Notes: Criticizing Graver Tank).
10. Some commentators use the expression of “the principle of equivalent,” which, in principle, should be a mistake.
11. Janice M. Mueller, An Introduction to Patent Law, Chap. 9.
12. See, 35 U.S.C. §§ 251, 252.

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The Complainant is eBay Inc., San Jose, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is Fu ZhiYong, ZhengZhou, China.
The disputed domain names <asebay.com> and <ebaysoho.com> are registered with Bizcn.com, Inc.
The disputed domain name <ebaysohos.com> is registered with FastDomain, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2007. On June 14, 2007, the Center transmitted by email to Bizcn.com, Inc. and FastDomain, Inc. a request for registrar verification in connection with the domain names at issue. On June 15, 2007 and June 16, 2007, Bizcn.com, Inc. and FastDomain, Inc. transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. The Respondent did not submit any formal response. An email communication was received from the Respondent on July 3, 2007, which the Center has included in the case file and has forwarded it to the Panel for consideration as an informal Response.
The Center appointed Susanna H.S. Leong, Bruce E. O’Connor and Linda Chang as panelists in this matter on August 14, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The certification required by paragraph 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the statements made by a complainant, and the certification required by paragraph 5(b)(vii) of the Rules is the minimum to demonstrate the admissibility of the statements made by a respondent.
Without certification, a Panel may choose not to consider any submission, even in the case of pro se parties.
With certification, the Panel gives weight to those statements that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under paragraph 10(d) of the Rules.
In this case, Complainant has provided the required certification and its submission has been admitted. Most of the statements by Complainant are backed up by documents, are uncontested by Respondent, and are given considerable weight by the Panel.
Respondent has failed to submit any evidence other than his own statements, and has failed to provide the certification required by paragraph 5(b)(vii) of the Rules.
The Panel has decided to consider Respondent’s statements but has given them little weight.
The Complainant is eBay Inc., a Delaware corporation with its principal place of business in San Jose, California, USA. The Complainant has operated its “www.ebay.com” website under the EBAY name since September 1991 in connection with online commerce, trading and internet auction services and continues to do so.
The Complainant owns several federal registrations for the EBAY word mark in the United States of America and it owns numerous foreign trademark registrations for the EBAY word mark, including registrations in China, Taiwan, Province of China, Hong Kong, SAR of China, Japan, Viet Nam, Republic of Korea (the), Singapore, Malaysia, Thailand, Indonesia, the European Union, New Zealand, Australia, Benelux, Canada, Germany, Iceland, India, Israel, Mexico, Norway, Peru, Chile, Turkey, United Kingdom, Columbia, Czech Republic, Romania, Hungary, Saudi Arabia, Venezuela, South Africa and Switzerland. The Complainant also owns numerous pending trademark applications for the EBAY word mark in various jurisdictions around the world, including Egypt, India, Bulgaria, Jamaica and Pakistan.
The Complainant provides its online market place services in numerous countries all over the world and its services are offered in numerous languages and are accessible from virtually any location around the globe using the Internet. As of March 31, 2007, there were approximately one-hundred million items listed for sale on the eBay website at any given time. The Complainant has over two-hundred-thirty-three million registered users worldwide. In addition to its online trading services, the eBay website offers a variety of related services, including currency conversion tools, access to escrow services, charity auctions, theme-oriented pages and many others.
The disputed domain names were registered by the Respondent on September 29, 2005; September 27, 2006 and January 15, 2007. As of June 1, 2007, the <asebay.com> domain name resolved to the website at “www.asebay.com”. Like the Complainant’s website, the Respondent’s website at “www.asebay.com” is an English language online marketplace, which does not contain any Chinese text and which makes a variety of consumer goods available for sale. The trademarks and trade dress used on the Respondent’s website are identical or nearly identical to the trademarks and trade dress of the Complainant’s.
As of May 30, 2007, both the <ebaysoho.com> and <ebaysohos.com> domain names resolved to the website at “www.ebaysoho.com”. Like the Complainant’s website, the Respondent’s website at “www.ebaysoho.com” is an English language online marketplace, which does not contain any Chinese text and which makes a variety of consumer goods available for sale.
On April 25, 2007, counsel for the Complainant sent cease and desist letters and emails to the Respondent regarding its unauthorized use of the Complainant’s EBAY mark and the disputed domain names <asebay.com>; <ebaysoho.com>; and <ebaysohos.com>. A separate cease and desist letter was sent to the Respondent also on April 25, 2007 objecting to the unauthorized use of an imitation of the Complainant’s seven coloured eBay logo which the Respondent used in connection with a separate English language online marketplace that does not contain any Chinese text at “www.1837tiffany.com/shop”. This website no longer displays an imitation of the Complainant’s seven-coloured eBay logo.
1. The <asebay.com> domain name wholly incorporates the Complainant’s distinctive EBAY mark, adding merely an ordinary descriptive or non-distinctive word. The Complainant contends that the addition of the word “as” to the Complainant’s EBAY mark exploits the trademark significance of the EBAY mark by suggesting that the Respondent’s “www.asebay.com” website is “similar to” or “as” the eBay site. Consequently, the Complainant contends that the addition of the prefix “as” does not lessen, but rather reinforces, the confusing similarity between the <asebay.com> domain name and the Complainant’s EBAY mark. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; and Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.
2. The disputed domain names of <ebaysoho.com> and <ebaysohos.com> are also confusingly similar to the Complainant’s EBAY mark because these domain names again incorporate the Complainant’s distinctive and famous EBAY mark in its entirety, adding only the merely descriptive geographical term “SoHo[s]”. See The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493; Roberto Tomassini, Ty Canada Inc. and Ty Inc. v. Mike Chan at Beanie Canada, WIPO Case No. D2001-1366; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; and Creative Technology, Ltd. v. Cleveland Polite, WIPO Case No. D2006-1211.
3. The Complainant asserts that the EBAY trademark is famous. It is a coined word and the Complainant has been using the EBAY mark since at least as early as September 1995 in connection with its online person-to-person trading services. The Complainant has devoted substantial resources to advertise and promote its services and products under the EBAY mark and the mark embodies the substantial goodwill that the Complainant has earned as a result of providing high quality services and products. The Complainant further contends that it enjoys a widespread reputation in the marketplace as a high quality trading forum and the EBAY mark was ranked 47th most valuable brand in the world by Business Week Magazine. Consequently, by adopting domain names that wholly incorporate the Complainant’s EBAY mark, and which convey the same overall visual and phonetic impression as the Complainant’s mark, the Respondent has created marks which are confusingly similar to the Complainant’s famous mark and has attempted to capitalize on the valuable EBAY brand. The Complainant contends that the Respondent intends to mislead consumers to believe that the domain names and/or their operator are affiliated with or endorsed by the Complainant. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; and Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.
1. The Respondent registered the disputed domain names on September 29, 2005; September 27, 2006; and January 15, 2007. By these dates, the Complainant has well established rights in its EBAY mark, domain name and website at “www.ebay.com”.
2. The Respondent is not an authorized dealer, distributor or licensee of the Complainant even though the Respondent has asserted that both “ASEBAY” and “Ebaysoho” are websites established by a team of Ebay’s sellers. Despite this fact, the Respondent uses the distinctive and famous EBAY mark and logo on its websites at “www.asebay.com” and “www.ebaysoho.com” without authorization.
3. The Respondent is using the disputed domain names for commercial purposes. Like the Complainant’s website, the Respondent’s websites at “www.asebay.com” and “www.ebaysoho.com” are English language online marketplaces, which do not contain any Chinese text and which make a variety of consumer goods available for sale. The trademarks and trade dress used on the Respondent’s websites are identical or nearly identical to the trademarks and trade dress of the Complainant’s. The Respondent’s use of the disputed domain names for this purpose is in the Complainant’s view not bona fide according to the UDRP precedent.
4. The mere addition of a descriptive or generic word does not create a new or different mark in which the Respondent has legitimate rights.
1. Given the Complainant’s prominence on the Internet, it is clear that the Respondent registered the disputed domain names in bad faith, with full knowledge that by including the EBAY mark as part of his domain names this would likely cause an Internet user visiting the websites at “www.asebay.com” and “www.ebaysoho.com” to assume that the domain names are somehow sponsored by or affiliated with the Complainant.
2. The fact that the Respondent registered and is using the domain names that incorporate the Complainant’s entire EBAY mark, blatantly uses the EBAY logo and trade dress on its website at “www.asebay.com” and states that “ASEBAY is established by a team of Ebay’s sellers” and further states that “Ebaysoho is established by a team of Ebay’s sellers” on his website at “www.ebaysoho.com”, support a finding of bad faith.
3. The Respondent’s bad faith is emphasized by its pattern of registering and using domain names incorporating the Complainant’s trademark with intent to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
4. The Respondent’s bad faith is further supported by the fact that he registered the domain names well after the Complainant registered its EBAY trademark and established rights in its <ebay.com> domain names.
5. The Respondent and/or persons affiliated with the Respondent modified the website at “www.1837tiffany.com/shop” after receiving the cease and desist letter from the Complainant and such action is additional evidence of bad faith.
6. The Respondent has neither taken down the offending website at “www.asebay.com” and “www.ebaysoho.com” nor deactivated the referring URL at “www.ebaysohos.com”. According to the Complainant, this is also evidence of bad faith.
That the Respondent is a current student and is experimenting on the creation of various styles of website designs. With regard to the website for the domain name <asebay.com>, he has downloaded the Complainant’s “www.ebay.com” website designs for purposes of research and study. After the Respondent has been notified that the domain name <asebay.com> has infringed the intellectual property rights of the Complainant, he is agreeable to relinquish his rights to the domain name <asebay.com> and shut-down the website “www.asebay.com”.
With regard to the domain name <ebaysohos.com>, the Respondent explained that this is merely his attempt to register for a foreign bluehost space. In order to register for a bluehost space, registration of a domain name is a pre-requisite. The domain name does not display any web pages of its own and is linked to the website of “www.asebay.com”. The Respondent believes that he is not the only person in the world who has registered a domain name which incorporates the word “ebay” and he questions whether every single one of these domain names has infringed the Complainant’s intellectual property rights. The Respondent further contends that according to this logic, the Complainant eBay would also have infringed the rights of <eb.com>; <eba.com> or <bay.com> which in his mind is a ridiculous conclusion.
With regard to the domain name <ebaysoho.com>, the Respondent’s contentions are the same as (2) above. Furthermore, the Respondent contends that the website of “www.ebaysoho.com” is different in terms of style and contents from the Complainant’s eBay website and has no connections with the said website. Therefore, the Respondent contends that there can be no consumer confusion and to rely on the trade dress of website of “www.asebay.com” as a basis of complaint against the domain name <ebaysoho.com> is inappropriate.
a. That the domain names are in English and that the domain names do not refer to or connote China or any Chinese words.
b. That the domain names each resolve to websites that are entirely in English and these websites do not contain any Chinese text.
c. Furthermore, the other website at “www.1837tiffany.com/shop” is in English and the Respondent or persons affiliated with the Respondent made substantive changes to this website upon receiving the English-language cease and desist email and letter from the Complainant’s counsel on April 25, 2007.
d. The Respondent’s websites are largely grammatically and syntactically correct.
All these factors cited from (a) to (d) demonstrate that the Respondent understands and is proficient in English.
On June 27, 2007, the Center issued a notification to the Respondent on the issue of the language of the proceeding stating that under the circumstances the Center would proceed with the matter and would refer any subsequent determinations to be made by the Panel.
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain names and the contents of the Respondent’s websites. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. This is especially evident when the website at “www.1837tiffany.com” was changed by the Respondent or persons affiliated with the Respondent after receiving the cease and desist notifications from the Complainant. Furthermore, the Respondent has also been notified of the administrative proceeding in both English and Chinese. The Respondent has also made an informal email Response in Chinese to the Complainant’s complaint, which is acceptable to the Center and the Panel (with Panelist O’Connor relying on the representations of Panelists Leong and Chang as to the substance of Respondent’s statements). The choice of English as the language of the present proceeding is on balance fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Panel will be rendered in English.
The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights and continue to have such rights in the EBAY mark in many countries throughout the world.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark EBAY and (b) the prefix English word “as”. The element “ebay” is the dominant and the distinctive element of the Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of a descriptive English word “as” does not prevent the disputed domain name from being identical or confusingly similar and is not sufficient to render the disputed domain name distinctive from the trademark of the Complainant.
Similarly, the disputed domain names comprise (a) an exact reproduction of the Complainant’s trademark EBAY and (b) a suffix which either is a geographical location referring to the “Soho” district in New York City or London or an acronym for “Small Office Home Office”. In either case, the mere addition of such a suffix is not sufficient to render the disputed domain names distinctive from the trademarks of the Complainant and does not change the fact that they are confusingly similar to the Complainant’s EBAY mark.
Bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trademark; (b) the highly distinctive character of the Complainant’s EBAY mark; (c) the dominant component of the disputed domain names; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain names <asebay.com>; <ebaysoho.com>; and <ebaysohos.com> are confusingly similar to a trademark or service mark in which the Complainant has rights.
4. The Complainant’s EBAY word mark is a coined word which is highly distinctive and it enjoys a worldwide reputation with regard to its online marketplace services. Consequently, in the absence of contrary evidence from the Respondent, the EBAY mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Respondent has not adduced any evidence before the Panel to demonstrate that he has rights or legitimate interests in the domain names in any of the abovementioned circumstances. The Respondent has submitted that the website for “www.asebay.com” was done as an experiment and that he has downloaded the web pages of the Complainant’s “www.ebay.com” for purposes of research and study. However, it is also clear from the evidence adduced by Complainant that the Respondent is using “the look-alike” website at “www.asebay.com” for commercial purposes as a variety of consumer goods are offered for sale at this website. Such a use by the Respondent cannot constitute any legitimate rights or interests on its part. In fact, the Respondent in his Response is prepared to relinquish its rights on this disputed domain name and shut down the website “www.asebay.com”. As for the other two disputed domain names <ebaysoho.com> and <ebaysohos.com>, the Panel finds that it does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interest in the said domain names.
Firstly, the Panel finds that the Complainant enjoys a worldwide reputation in its highly distinctive EBAY trademark with regard to its very successful online market place services since 1995. In view of the Complainant’s fame and notoriety in its EBAY mark and its highly successful business model online, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain names. In fact, the Respondent did not deny that he had knowledge of the Complainant’s trademark at the time of the registration of the disputed domain names. In its Response, the Respondent admitted that he has downloaded the contents of the Complainant’s “www.ebay.com” websites for his website at “www.asebay.com”. The Respondent’s knowledge of the Complainant’s EBAY mark before or at the time of registration is undisputed.
The Complainant has also adduced evidence to prove that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering similar online marketplace services. Given the fame of the Complainant’s EBAY mark, the compelling conclusion is that the Respondent, by choosing to register and use domain names which are confusingly similar to the Complainant’s famous mark, intended to ride on the goodwill of the Complainant’s mark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Consequently, the Respondent has through the use of a confusingly similar domain names created a likelihood of confusion with the Complainant’s EBAY trademark and this constitutes a misrepresentation to the public that his websites are in one way or the other associated or connected with the Complainant’s. The Complainant’s arguments that the domain names are registered and are being used in bad faith are further buttressed by the evidence that the Respondent has not merely registered and used domain names that incorporate the Complainant’s entire EBAY mark, but has also blatantly used the eBay seven-coloured logo and trade dress on its website at “www.asebay.com” with accompanying statements such “ASEBAY is established by a team of Ebay’s sellers” and that “Ebaysoho is established by a team of Ebay’s sellers” on its website at “www.ebaysoho.com”. On the other hand, the Respondent has not succeeded in convincing the Panel that his choice of the disputed domain names and his conduct as far as the websites on to which these domain names resolve are in fact bona fide.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <asebay.com>; <ebaysoho.com>; and <ebaysohos.com> be transferred to the Complainant.

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