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In September 2016, the European Commission published its proposal for a new Directive on Copyright in the Digital Single Market, including its controversial draft Article 13. The main driver behind this provision is what has become known as the ‘value gap’, i.e. the alleged mismatch between the value that online sharing platforms extract from creative content and the revenue returned to the copyright-holders. Yet, as many commentators have argued, the obligations introduced by the proposed text are incompatible with existing EU directives, as well as with the EU Charter of Fundamental Rights, as interpreted by the CJEU. It thereby risks creating more legal uncertainty than it resolves.
We suggest that the proposal additionally suffers from a more fundamental shortcoming: it misconceives the real problem afflicting EU copyright law, i.e. the proliferation of copyright infringement online in general, not only through Web 2.0 hosts. This problem is compounded by an increasingly outdated EU copyright framework: currently, this allows infringing end-users to hide behind their online anonymity, while failing to provide any mechanism for the compensation or remuneration of right-holders for the infringements these users commit. Faced with this impasse, right-holders have shifted their focus to internet intermediaries. Yet, while the CJEU’s recent case law has waded into the tricky area of intermediary liability, no complete system of rules determining what obligations intermediaries have to prevent or remove online copyright infringement currently exists at the EU level.
Absent a more stable legal basis, targeted superstructure initiatives such as the current proposal are set up for failure. If EU copyright law is to be reformed, it is on these crucial weak spots that proposals should focus. To address them, we suggest an alternative approach that better tackles the problem of the unauthorised use of protected content over digital networks. Our proposal is two-pronged, consisting of: a) the introduction of a harmonised EU framework for accessory copyright liability; and b) the adoption of an alternative compensation system for right-holders covering non-commercial direct copyright use by end-users of certain online platforms. As we explain below, this solution avoids the difficulties encountered by the current reform proposal, while successfully targeting the copyright framework’s real failings.
One of the most prominent gaps in EU copyright law is the lack of a harmonised regime for accessory liability. In view of the ubiquity of intermediation in internet-based communications, this fragmentation is particularly problematic for online infringement. Introducing a harmonised solution would thus enable addressing such infringement, helping to resolve the ‘value gap’ controversy.
The big question, of course, is how to shape such a harmonised accessory liability framework. Helpfully, the case law of the CJEU has indicated the way forward. Instead of reinventing the wheel, we suggest that the EU legislator should take its cue from that case law.
In its recent decisions on communication to the public, the CJEU has emphasised the need both for an ‘act of communication’ and for that act to be done with some level of knowledge. Following this lead, a future EU intermediary liability copyright regime would have to comprise what we have termed a ‘conduct element’ and a ‘mental element’. While the first would focus on whether the defendant’s behaviour has contributed to an infringement, the second would consider their mindset. Where at least one of the elements is absent, the defendant should be absolved from liability. If both are satisfied, either the defendant should immediately be held liable for the infringement or they should be placed under an obligation to take appropriate action.
The CJEU’s decisions on the notion of an ‘act of communication’ are helpful in indicating the appropriate threshold for the conduct element. In recent years, the Court has taken an expansive approach, focusing on what it has termed ‘interventions to give access’. While initially it required that such interventions be ‘indispensable’ for the dissemination of the work to third parties, eventually, in Ziggo, it broadened the notion to include any intervention without which the public would be able to enjoy the work ‘only with difficulty.’ This is in contrast to Recital 23 of the InfoSoc Directive, according to which the right of communication to the public should not cover any acts other than ‘transmissions or retransmissions’.
Following the CJEU’s model, we suggest that the ‘conduct element’ should incorporate any non-minimal participation in the copyright infringement of another party. All that is required is that, without the defendant’s involvement, ‘in principle’ infringing would be ‘more complex’. We consider that this permissive approach is appropriate. In our view, it is the defendant’s state of mind that should determine which conduct elements give rise to accessory liability.
In addition to ‘acts of communication’, the case law of the CJEU has emphasised that a mental element must also be present. So far, the mental element has only been mentioned by the Court in accessory liability cases. It is reasonable to assume this limitation will be maintained in future, preserving the ‘strict’ nature of primary copyright liability. The result would be a divide between classic ‘transmission’ cases (governed by Recital 23), for which no mental element is necessary, and ‘intervention short of transmission’ cases, where a mental element would be required.
Two main types of mental element exist: intent and knowledge. GS Media, Filmspeler and Ziggo all indicate that the lower standard of knowledge of the primary infringement should suffice.
Further than this, we suggest that both specific and general knowledge should be accepted. Historically, national European courts have tended to opt for the stricter ‘specific’ approach; however, with the rise of modern technologies, a relaxing of the standard towards ‘general’ knowledge is suitable. Notably, in Ziggo, general knowledge that the defendant’s services were used to provide access to works published without authorisation from the right-holders was deemed sufficient by the CJEU.
Similarly, given the oft-referenced objective of EU copyright law to provide right-holders with a ‘high level of protection’, our proposal suggests that both actual and constructive knowledge should be acceptable. After all, GS Media imposed liability where the provider of a hyperlink ‘knew or ought to have known that the hyperlink he posted provides access to a work illegally placed on the internet’. At the same time, the wording ‘ought to have known’ carries real meaning: the accessory cannot be expected to go to unreasonable lengths to uncover infringements. Most importantly, the general monitoring prohibition of Article 15 of the E-Commerce Directive (ECD) must be respected, as must the limits set by the Charter of Fundamental Rights of the EU. An accessory cannot be said to have constructive knowledge where that knowledge could only be acquired through monitoring its entire platform.
The scope of the mental element should affect the consequences for the defendant where both the conduct and mental elements are present. The CJEU is again helpful here: while in GS Media, where only knowledge was considered, the Court indicated that a notice-and-takedown framework might apply to hyperlink providers, in Filmspeler and Ziggo, where there were indications of intention, this option was not discussed.
We propose that this approach be further pursued in EU accessory copyright liability. A sensible framework would require that, if an accessory intended an infringement, its behaviour should be by definition unacceptable. Liability should therefore ensue. On the other hand, if the intermediary only has knowledge of the infringement, the violation of a duty of care must first be established.
The type of duty should depend on the type of knowledge. So, as in GS Media, if the intermediary has specific knowledge of an infringement it has through its conduct supported, it will be reasonable to expect that it remove it. Depending on the circumstances, other measures (including preventive ones) might also be appropriate, e.g. the suspension of repeat infringers, notifying the authorities or the provision of identifying data on the user to the authorities. On the other hand, if the intermediary has only general knowledge of mass infringements using its systems, the removal of content would require unacceptable general monitoring. As a result, other measures must be considered. The posting of warning duties is an obvious candidate.
Where the accessory fails to take the measures due by it, assuming it had the ability to take those measures or at least ought to have ensured that it had that ability, it should be held liable. If the intermediary did not take the appropriate measures that would have been expected of it on a flagrantly persistent basis, intent may also arguably be inferred.
Undoubtedly, this system alone would not give right-holders the tools to eliminate online copyright infringement. An EU regime for accessory copyright liability can only offer part of the answer. If no liability can reasonably be imposed on the intermediary, attention should then shift to the primary liability of infringing end-users.
By itself, the harmonisation of intermediary liability is not a complete solution to the problem of online infringement. As such, more novel approaches are necessary. Building on precedents with a long tradition in copyright law, such as continental European private copying schemes, one such possibility is the adoption of a system that replaces direct authorisation of certain types of online activities with a scheme for licensing such use and ensuring remuneration to right-holders. In the current ‘value gap’ debate, a number of authors and policy makers have been calling for similar solutions as a supplement to the harmonisation of certain aspects of intermediary liability (see e.g. here, here, here, and here). Our proposed ‘alternative compensation system’ goes in a similar direction.
The system we envisage involves a statutory license based on a mandatory exception for individual online users that covers the non-commercial use of works on user-generated content platforms (‘content-sharing platforms’). The exception directly covers and authorizes acts by individual natural persons who are end-users of such platforms. It would enable users that meet its conditions to freely upload and share content with legal certainty, without the risk of filtering or removal. Right-holders (and especially creators) would benefit from a clearer set of legal rules and, as explained below, an additional stream of rights revenue. The exception would also indirectly benefit certain content-sharing platforms, as it heightens the threshold required for a finding of knowledge or intent of infringement by the platform as regards uses outside the exception.
Compared to the value gap proposal, our system would also increase legal certainty for platforms by clarifying their liability for acts of their users, while preventing the extension of the exclusive right to their normal activity of encouraging/supporting online user creativity. For exempted acts of end-users, platforms would be allowed breathing space to provide their services and would not be subject to injunctions under Article 8(3) InfoSoc Directive. Finally, due to the privilege granted to users, our proposal would discourage preventive filtering of protected content by design. At the same time, there would remain ample space for reactive duties of care, such as notice-and-takedown obligations, to be imposed on platforms, upon obtaining knowledge of infringements regarding content or uses outside the exception’s scope.
In theory, the system could apply to all types of protected works and other subject matter, domestic or foreign to an EU Member State, that is susceptible to upload and use on a content-sharing platform. In practice, for reasons of compliance with the three-step test, some subject matter exclusions might be sensible, namely for computer programs, databases and videogames. These would be justified by the idiosyncratic legal nature and market logic of these categories of works, as well as by the fact that they have largely remained outside the scope of statutory licensing and collective licensing, on which our system relies.
The exception would cover non-commercial online acts of reproduction and communication to the public by users of content-sharing platforms, under Articles 2 and 3 InfoSoc Directive. It would also apply to transformative uses (e.g. certain types of remixes or mashups), including those that lie in the grey area between reproduction and adaptation.
Only non-commercial use would be covered. This concept features in different provisions in the acquis and is central to the JURI version of Article 13 (Amend. 77). We argue that it is better understood as a legal standard (as opposed to a rule) and an autonomous concept of EU law. It should apply to the use of works by individuals that is not in direct competition with use by the copyright-holders. To determine the standard, recourse could be had to criteria that are both subjective, like the profit-making purpose of the user, and objective, such as the commercial character of the use. In the context of content-sharing platforms, where most individual users do not carry out a business activity or make profit from the platform, the application of such a standard should, as a rule, be straightforward.
The distinction between commercial and non-commercial uses could be clarified through recitals supporting the exception, listing positive and negative examples (e.g. excluding uploads to peer-to-peer platforms, as proposed by Hilty and Bauer). It could be further clarified that non-commercial use focuses on online activities by users (not platforms) for consumption, enjoyment, reference, or expression, outside of the context of a market or business activity, and excludes acts with a direct profit intention or acts for which payment is received. Grey area cases will be decided by national courts, as well as ultimately by the CJEU in the interpretation of this autonomous concept.
Lastly, only works that are freely available online (being either uploaded from an authorised source or covered by an exception or limitation) should benefit from the exception. This requirement provides a clear legal basis for right-holders to notify platforms that are otherwise (prior to this knowledge-making notification) not accessorily liable, so that they may remove or disable access to the infringing copy.
Our proposal relies on an exception tied to an unwaivable right of fair compensation that vests solely in the authors and holders of related rights affected thereby, i.e. those listed in Articles 2 and 3 of the InfoSoc Directive. This right of fair compensation ensures that: a) creators receive a fair share of the amounts collected under the statutory licence system (which we propose to be at least 50% of collected rights revenue); and b) they are not forced to transfer that share to publishers and other derivative right-holders in the context of unbalanced contractual negotiations.
The amount of compensation should reflect the harm suffered by right-holders. In the absence of an actual market to determine the price for non-commercial uses, this can be calculated by measuring users’ willingness to pay for such a system through methods of contingent valuation. The calculation should also take into consideration mitigating factors already recognized in the acquis, adjusted to the context of content-sharing platforms: the de minimis nature of a use, prior payments for such use, and the application of technological protection measures. If a type of use does not cause economic harm to right-holders, it should not give rise to an obligation to pay fair compensation.
The obligation to pay compensation would lie with content-sharing platform providers whose users benefit from the exception. Like with existing levy-systems, platforms would have the option of either shifting the burden of the compensation to users (e.g. as a subscription fee) or absorbing part of that cost, e.g. by financing it out of advertising revenue. The platforms payment obligation should be counterbalanced by safeguards. Importantly, the alternative compensation system should operate harmoniously with the accessory liability framework set out above. Thus, the new regime should clarify and strengthen the prohibition on the imposition of general monitoring obligations of Article 15 ECD. Platforms should only be subject to obligations to take action against infringing content where: a) it can be shown that they intend to cause infringement or b) after obtaining knowledge of a copy of a work being uploaded in contravention of the exception.
There are no perfect solutions to the challenge of online infringement. Any new proposal will have to be built on top of a fragmented and highly complex EU legal framework. Its benefits and drawbacks should therefore be measured not against an ideal system, but rather compared to the current ‘value gap’ proposal and its potential impact on the acquis. A pragmatic approach is thus appropriate. We propose the parallel implementation of two legal mechanisms: one geared at improving the EU law on intermediary copyright liability and the second directed at providing compensation to right-holders for at least some online infringement. Our solution, like most levy-based systems, undoubtedly represents a ‘rough justice’ response to a real-world problem. Nevertheless, it could contribute to achieving the ‘fair balance’ between the rights and interests of right-holders and users that the CJEU places at the heart of EU copyright law. The joint operation of the two proposed mechanisms would increase legal certainty for all stakeholders, enable the development of the information society, and provide fair compensation for right-holders for uses of their works in the online environment.
Note: This proposal builds upon the authors’ pre-existing research into the respective areas of intermediary liability and alternative compensation systems. A more detailed version will be published in an upcoming academic article (on file with the authors). For further information, see: C Angelopoulos, European Intermediary Liability in Copyright: A Tort-Based Analysis (Kluwer Law International 2016) and JP Quintais, Copyright in the Age of Online Access: Alternative Compensation Systems in EU Law (Kluwer Law International 2017).

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2013-2015 Go vs. Microsoft (Case No. CGC-05-442684). Dr. Bass was retained December 2013 to September 2015 by Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC for Go Computer, Inc. and S. Jerrold Kaplan. She prepared a report and gave deposition testimony concerning likely scenarios, but for Microsoft’s anticompetitive actions. The scenarios included spreadsheet models for PenPoint market shares and sales in the tablet, PDA and smartphone markets from 1987 through 2015. The case settled.
2013 Karim v. Hewlett-Packard Company, Case No. CV 12-05240-PJH, United States District Court, Northern District of California. Dr. Bass was retained 2013 by Gibson Dunn & Crutcher LLP representing HP. She prepared a report concerning .
2012-1014 Skold v. Intel Corp. et al. Case No. 1-05-CV-039231, Santa Clara, California. Dr. Bass was retained 2012-1014 by Munger, Tolles & Olson LLP representing Intel. She prepared a report and gave a deposition..
2012 Baba, et al. v. Hewlett-Packard Company, Case No. 5:09-05946-RS, U.S. District Count of Northern District of California, San Jose Division. Class action concerning notebook computers. Dr. Bass was retained 2012 by Morgan, Lewis & Bockius LLP, which represented Hewlett-Packard Company. She prepared a report.
2010- St. Clair v. Acer. Inc. et al.; Civil Action No. 10-282-LPS. Microsoft Corporation v. St. Clair, Civil Action No. 10-282-LPS. U.S. District Court District of Delaware. Patent infringement case concerning laptop computer power management. Dr. Bass was retained (2010-) by Perkins Coie LLP, which represents Intel. She prepared a report concerning the laptop-computer market and gave a deposition.
2009-2011 Intel Laptop Battery Litigation, Case No. 09-cv-02889-JW U.S. District Court for the Northern District of California. Class action concerning battery life and battery-life benchmarks. Plaintiffs dropped request for monetary relief and withdrew their class certification motion; the court granted Intel’s request for summary judgment. Dr. Bass was retained (2009-2011) by Perkins Coie LLP, which represented Intel. She prepared a report concerning the laptop-computer market and gave a deposition.
2009-2010 Nygren, Shifflette, & Fromkin v. Hewlett Packard Company, Case No. 07-05793-JW U.S. District Court for the Northern District of California. Class action concerning laptop wireless feature. Dr. Bass was retained (2009-2010) by Morgan, Lewis & Bockius LLP, which represented Hewlett-Packard Company. She prepared a report.
2008-2009 Kelsea Baggett v. Hewlett-Packard Company, Case No. CV-07-0667 U.S. District Court for the Central District of California. Class action concerning color LaserJet printers that allegedly stop printing (hardstop) with some toner remaining in the cartridge. September 2009 HP’s motion for summary judgment was granted and class certification denied as moot. Portia Bass was retained (2008-2009) by Morgan, Lewis & Bockius LLP, which represented Hewlett-Packard. Dr. Bass prepared a report (38 pages, 18 figures) for consideration in class certification. Her analyses described and quantified the variety of products, product features, customers, prices, distribution channels and usage patterns found in segments of the HP color LaserJet printer cartridge market.
2006-2007 Matsushita Electric Industrial Co., Ltd. v. Mediatek , U.S. District Court for the Northern District of California C05 03148 JL. Patent Infringement concerning U.S. optical disk drive LSI semiconductor chips. Settled. Portia Bass was retained (2006-2007) by Dewey Ballantine LLP (now Dewey & LeBoeuf LLP) representing Matsushita. Dr. Bass provided a report and deposition quantifying and describing the U.S. optical disk drive LSI semiconductor market including: unit sales of several types of optical-storage chips that have been sold each year as part of end-customer products such as PCs, videogames and audio/video products (e.g., DVD players, DVD recorders); unit sales of MediaTek optical-storage chips as part of end-customer products in the U.S.; unit sales of optical-storage chips from other leading suppliers as part of end-customer products in the U.S and issues relating to research and development and the patterns of competition in the various optical storage markets. Dr. Bass’s quantification of the optical-storage semiconductor market was used in the damage analysis by the economist expert.
2006-2008 Skold v. Intel Corp., Superior Court of California, County of Santa Clara. Nationwide class action alleging that Intel misrepresented and concealed information about the performance of early Pentium® 4 processors and artificially boosted benchmark scores for those processors. The trial court denied three motions for class certification, finding that individual issues would predominate. Reversed on appeal. Portia Bass was retained (2006-2008) by Skadden Arps Slate Meagher & Flom LLP, which represented Intel.
2005-2006 Terence Dunn v. Berger Kahn LLP. Legal malpractice case concerning Terence Dunn v. Gaiam Holdings, Inc., et al. Portia Bass was retained (2005-2006) by Nemecek-Cole, which represented Berger Kahn, to analyze the opposing damages testimony, which were prepared using the Bass model to forecast quarterly sales of two instructional video titles sold on both VHS and DVD. Dr. Bass prepared a report and gave arbitration testimony.
2005-2006 PostX Corporation vs. Secure Data in Motion, Inc. d/b/a Sigaba, Case No. C02-04483 SI. Patent infringement of two secure document delivery patents. Portia Bass was retained (2005-2006) by Pillsbury Winthrop Shaw Pittman LLP, which represented PostX Corporation, to analyze opposing economic damages analysis employing the Bass model of new product sales. Dr. Bass provided a report, supplemental report and trial testimony.
2003-2005 Barbara’s Sales Inc. et al. v. Intel Corp. et al., Circuit Court of Madison County (Illinois), Illinois Supreme Court. Class action concerning Intel’s alleged misrepresentation of performance capabilities of early Pentium® 4 processors. Portia Bass was retained (2003-2005) by Brown & Bain (now Perkins Coie), which represented Intel.
2003 Mobility Electronics, Inc. v. Comarco, Inc. (Comarco Wireless Technologies, Inc.) and Targus Group International, Inc., U.S. District Court for the District of Arizona Case No. CIV-01-1489 PHX MHM. Patent infringement case concerning universal power adapters for notebook computers. Case settled after Comarco’s motion for preliminary injunction was denied. Portia Bass was retained (2003) by Brown & Bain, which represented Mobility Electronics, Inc. Dr. bass prepared a 27-page report and gave deposition as well as trial testimony concerning the market for universal power adapters for portable (also called notebook and laptop) computers. Her analyses included secondary factors relevant to obviousness of the patented invention, the relationship between product success and the patented invention and the likely effect on Mobility of any injunction.
2002-2004 Shvarts, Cohen v. Sony Electronics Inc. Class action concerning notebook computer battery life. Portia Bass was retained (2002-2004) by Heller Ehrman LLP, which represented Sony. Dr. Bass prepared a report on issues related to class certification including: the characteristics of notebook computer purchasers, notebook computer usage patterns, the varying importance of battery life to notebook users, causes of variation in battery life experience and battery life tests of plaintiffs’ notebook computers and batteries.
2000-2002 Hal LaPray, Tracy D. Wilson, Jr., and Alisha Seale Owens v. Compaq Computer Corporation. Class action concerning claimed defective floppy disk controller. Portia Bass was retained (2000-2002) by Beck Redden & Secrest LLP, representing Compaq. Dr. Bass provided multiple reports and deposition testimony concerning issues related to class certification including: floppy disk usage patterns since 1975, consumer expectations about reliability of floppy drives and media; inspection of plaintiffs’ computers and testing of replica systems of plaintiffs’ computers to determine likely causes of plaintiffs’ complaints.
2000-2005 Linear Technology Corporation v. Impala Linear Corporation, Toyoda Automatic Look Works, Ltd., Analog Devices, Inc., and Maxim Integrated Products, Inc.; Linear Technology, Inc. v. Maxim Integrated Products, Inc. Maxim Integrated Products, Inc.,U.S. District Court for the Northern District of California Civil Action No. C-98-1727-VRW. Patent infringement concerning voltage regulator sleep mode and current reversal protection. Portia Bass was retained (2000-2005) by Brown & Bain, representing Maxim and Heller Ehrman, representing TI Unitrode. Dr. Bass prepared a 104-page report and deposition covering: market importance of voltage regulator patent in portable electronics (e.g., notebook computers, PDAs, wireless telephone). Notebook computer battery life technical simulation for notebook computers using regulators with and without the patented feature from late 1980s through 2001; notebook battery life testing of notebooks with and without the patented feature, market analysis to determine notebook computer usage profiles, technology and product architecture trends from late 1980s through 2001; data analysis of sales of voltage regulators with and without the patented feature to indicate whether the patented features were the reasons for any success of the patented voltage regulators.
2000 Telxon v. Robert P. Meyerson, Dan R. Wipff, Robert A. Goodman, Dr. Raj Reddy, and Norton W. Rose. Civil action. Portia Bass was retained (2000) by Rosenthal, Monhait, Gross & Goddess, which represented Telxon Corporation, to provide a deposition concerning the pen-computer market in early 1990s and the competiveness of a specific computer design and prototype.
1997 Galaxy Networks, Inc. v. Kenan Systems Corporation, U.S. District Court, Central District of California; Civil Action No. CV-95-5568 DDP. Portia Bass was retained (1997) by Irell & Manella, which represented Kenan Systems. Dr. Bass provided a report, deposition and trial testimony about business practices in relationships between computer software companies and distributors.
Applied Materials v. Novellus, Northern District of California. Patent infringement. Dr. Bass provided report and deposition about the worldwide semiconductor sales and distribution patterns.
1996 Compaq Computer Corp. v. Packard Bell Electronics, Inc., Southern District of Texas No. H-94-4034. Patent infringement concerning six personal computer patents: 574279 (PC video display system), 4980836 (reducing power consumption of battery powered PC), 5101497 (programmable interrupt controller), 5125088 (computer system speed control at continuous processor speed), 5226122/5381530 (programmable logic system for filtering commands to a microprocessor). Settled. Retained (1996) Wilson Sonsini, which represented Packard Bell. Dr. Bass provided report concerning market importance of six personal computer patents.
Intel Corp. v. Cyrix Corp. v. Texas Instruments, Inc., U.S. District Court, Eastern District of Texas. Patent infringement and antitrust counterclaim concerning 386 and 486 microprocessors. Dr. Bass provided report, deposition and trial testimony quantifying and describing the market for x86-compatible microprocessors.
TI v. Dell. Patent infringement. Report and deposition on why Dell’s success.
Intel Corp. v. Advanced Micro Devices, Inc., District Court of the Northern District of California. Copyright infringement of Intel math co-processor microcode. Provided report and deposition about math coprocessor compatibility.
1980-1982 Fairchild Camera & Instrument Corp. v. Data General Corporation., U.S. District Court for the Northern District of California. Antitrust. Provided report and depositions about damages due to Data General’s tying of its operating system software RDOS to Nova computer sales.
Just a shout-out to Portia from somebody out of her distant past.
God bless you Portia. It’s great to see the account of your exciting career.
Great to hear from you. Sorry about the delay in responding. I’ve had my head Dow learning Windows 10 development.

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Sustainability has been a core value at V. Sattui throughout all aspects of Winery and vineyard operations since it was founded in 1976. As a California Certified Sustainable winery, V. Sattui's commitment to stewardship of the land is inherent in all techniques it employs from soil and vine to the bottle.
Throughout the Winery, energy conservation is prioritized from the use of solar power to adherence to a stringent composting and glass recycling program and the selection of organic and biodegradable products to reduce the use of fossil fuels.
The viticulture team is constantly evaluating the environmental impact of its farming practices. Certified through the Fish-Friendly Farming program, V. Sattui introduces beneficial predators and organisms in the vineyards to reduce the need for use of damaging pesticides or herbicides, in line with its commitment to preserving natural wildlife habitats. This dedication extends beyond the Winery to a family of private grape growers who tend their vineyards with the same care and concern required to make the distinctive wines for which V. Sattui is known.
VITTORIO'S VINEYARD, ST. HELENA: The original Estate vineyard property of V. Sattui Winery in St. Helena, adjacent to the Winery itself. It is currently planted to seven varieties, with Cabernet Sauvignon comprising well over half of the 34 acres. As of the 2012 vintage, Vittorio's Vineyard is USDA Certified Organic, and so our Vittorio's Vineyard Cabernet Sauvignon, from that vintage, is our first estate wine that will be entitled to use the designation.
"We've always tried to take a proactive role in preserving the health of the lands we have," explains vineyard consultant Larry Bradley. "Vittorio's has actually been organic for the past five seasons, but the process of certification takes a while." What this means is that no chemicals or inorganic fertilizers are used that could leach into the groundwater. "This of course is more costly," says Larry, "but we believe we're doing the right thing and that the resulting wines will be more flavorful."
The spacing between Vittorio's vines have been planted with all organic cover crops, mostly bell beans and other legumes and grasses. "Green manures," as Larry describes them. "We want lean soils," he says, "and we supplement the weaker areas with fish emulsions and other organic composts."
BLACK-SEARS VINEYARD, HOWELL MOUNTAIN: At just over 2400 feet, it is among the highest vineyards in all of Napa Valley. The unique climate of Howell Mountain produces wines with a firm structure, intense fruit flavors, earthy spice, and round acidity. The ashy, iron-laden soils are perfectly suited for growing full-bodied, peppery Zinfandel that have inspired a dedicated following from many V. Sattui fans. The Black-Sears family is committed to caring for the land they call home, farming organically and biodynamically in the vineyard and in their orchards and gardens. Wine lovers who have enjoyed the fruit and the wines of the Black-Sears vines will testify: "there's just something special about that vineyard."
Biodynamic agriculture is a method of organic farming that treats farms as unified and individual organisms, emphasizing balancing the holistic development and interrelationship of the soil, plants, and animals as a self-nourishing system.
Regarded by many as the first modern ecological farming system, biodynamic farming has much in common with other organic approaches, such as emphasizing the use of manures and composts and excluding the use of artificial chemicals on soil and plants. Methods unique to the biodynamic approach include the use of fermented herbal and mineral preparations as compost additives and field sprays (preparations 500-508), and the use of an astronomical sowing and planting calendar.
Q: "Are you guys crazy, practicing this voodoo?"
A: "Yes. But crazy people grow the best wines."
THE PEOPLE: The value of sustainability extends beyond the ecological sense of the word, and into the ethos of employee (and guest) relations at V. Sattui, where members of the staff are valued highly and treated like family. The environment at V. Sattui provides such a healthy work/life balance that it isn't uncommon for employees to stay with the winery for decades.
V. Sattui is committed to all changes resulting in the preservation of the habitat for generations to come. We're very excited about participating in preserving our vineyard land and watershed, reinforcing the idea that we not just see the vineyards for the vines, but for all the living things that share our ecosystem.
We invite you to celebrate Earth Day every day with V. Sattui Winery!
To Salume or Not to Salume?
The V. Sattui Salumeria is a welcome addition to the winery, deli and marketplace, contributing house-made sausages and artisanal Italian meats to our already-vast repertoire of quality products.
So how did the Salumeria come about? Well, from the very beginning, Dario and Tom had wanted V. Sattui to be more than just a winery. Dario’s visits to Italy’s specialty cheese & meat shops long ago inspired him to start a winery with a marketplace back in 1976; his and Tom’s numerous trips to Italy sparked visions of V. Sattui trying their hand at artisanal Italian deli meats & charcuterie. At one point, Dario even tried making his own cheese. How did that turn out? “Not so well,” Tom says, chuckling at the memory, “the cheese maker was homesick and went back to Holland after only a month.” The idea for cured Italian meats had always been there, it was just a matter of finding the right people. Enter Stefano Masanti, Michelin-starred chef of Il Cantinone in Northern Italy, featured chef at our upcoming 30th annual Harvest Ball, and winner of the award for “Best Bresaola” in all of Italy! ALL. OF. ITALY. A country of 60 million people (20 million more than the state of California), known for its cuisine, with more Michelin-starred restaurants than the entire United States combined. So you could say that’s quite an award. Most of the recipes Stefano uses have been handed down from generation to generation by the old men in his village. And now he is handing them to us.
When I sat down to talk salumi with Gianfranco Ghiringhelli – known more commonly as Franco – he reached in his pocket to show me his business card: English on one side, Italian on the other, a mirror of the man himself. Among the usual fluff and knick-knacks found in one’s pockets, out came wadded up euros and Swiss francs; he and Tom are fresh back from their Italy trip where they were doing recon for our newly opened Salumeria, of which Franco is the Director. “We were on a fact-finding mission. We know for a fact: in Ascona, Switzerland there is no lakeside service for beer,” he jokes.
But it wasn’t all fun and games – he and Tom spent a week traveling Northern Italy, going from Salumeria to Salumeria, investigating how the masters make their salumi. In Parma, famed the world over for its melt-in-your-mouth prosciutto, they were able to tour a prosciutto factory under one condition – no cameras and no notes. And of course, they tasted again Stefano’s award-winning Bresaola. In fact, they brought over some of our own Salami and Bresaola and went head-to-head in a blind tasting with several of Stefano’s friends – all master butchers and salumi makers. Where did we rank? Number two – not bad for our initial attempts; the Salumeria has only been open for a few months. They were all very impressed with our selections.
Coming back from Italy with bellies full of artisan salumi and heads full of secret spice blends and other hush-hush recipe tips, Franco got down to business. He gets his pigs from Winkler Wooly Pigs in Windsor, a sustainably raised breed called Mangalitsa, known for its curly coat. Mangalitsa pigs are also known for having a high amount of lard – an uncommonly high amount of lard – which is great for our Crema di Lardo, a product that has caught the attention of celebrity chef and Michelin-star recipient Michael Mina, who is interested in purchasing some for his restaurants in San Francisco.
Franco breaks down the pig with great attention to detail and the sure strokes of a master butcher. First are the cheeks, which become guanciale, the back fat which becomes Crema di Lardo, the neck (coppa), and loin (lonzo). They save the leaf lard – it is highly coveted for making the best & flakiest pastry crust and is very hard to find – for some interested local bakers. Lastly, the hind leg is taken off in its entirety to become the prized prosciutto. Long, smooth cuts – no sawing is the secret he imparts to his protégé, Greg Quirici, as he directs him how to round off the guanciale. These meats then go through a process: fermentation, curing, aging, holding and then (my favorite) – eating.
The fermentation cabinet is a state-of-the-art Italian model that all the Italian Salumerias have and is the first of its kind here in the United States. It enables Franco to mimic the temperature and conditions of the regions in Italy, specific to the charcuterie produced there, at any time during the year. This means artisanal, cured Italian meats all year round. The curing cabinet is hung with our Vittorio Rosso & Classico Salamis, guanciale, pancetta (flat and rolled), lonzo, and of course, the one that started it all – Bresaola.
So what’s Franco’s favorite part of the whole thing? When people enjoy the finished product – and enjoy they will, with our house-made sausages coming hot off the grill at our weekend BBQ and our Salami and Bresaola sold slice by mouthwatering slice in our deli. We’re hoping to feature the other cuts – guanciale, lonzo, coppa – soon, though the prosciutto will be longer due to its minimum one year aging time.
Stay tuned for the next chapter in goat wrangling and all things salumi!

matches: V. V. V. V. V. V. V. V. V. V. V. V. V.


The world of mental health issues pervades both criminal and civil law. The great axiom of the day is that jails have become the de facto mental institutions. What so often causes detention in a jail facility for a Penal Code violation or in a mental health facility under a civil function is the fact that a mentally ill person has, for some reason, stopped taking her medication.
Medication for the mentally ill has advanced dramatically in the last 60 years, beginning with the first “magic bullet” medication for mental illness: Thorazine. More than 60 years ago, Time magazine called Thorazine the “wonder drug of 1954.” Its development and other early psychotic medications set the stage for the deinstitutionalization of the mentally ill. The proliferation of psychiatric medications has since exploded, with spending in the United States going from $400 million in 1987 to $40 billion today.
Pharmaceuticals as the magic bullet for mental illness is not a position everyone accepts. Personal liberty considerations always arise when there is a discussion of the government forcing medical treatment. On more than one occasion I have heard ad litem attorneys citing a book titled Anatomy of an Epidemic by Robert Whitaker, which questions why the number of people suffering from mental illness has skyrocketed in the last 50 years despite the advances in medications.1 The book suggests that the widespread use of psychiatric medications could actually be fueling the epidemic.
Once the application is filed, the patient is entitled to receive a copy of the physician’s application and notice of the hearing “immediately after the time of the hearing is set.”8 Further, the court must appoint an attorney who is knowledgeable in the subject area, and the patient is entitled to meet with the attorney “as soon as is practicable” to answer questions and prepare for the hearing.9 As with all mental health hearings, the patient has a right to be present at the hearing, but she may waive that right and allow the court to proceed on the application at the hearing.
If the court finds by clear and convincing evidence that the patient lacks capacity to make a decision regarding the proposed medication and that the proposed medication is in the patient’s best interest, the court may order that the medications be administered over the patient’s objection.10 The authorization, however, is limited to those classes of medication that the doctor requested in the application.11 The typical classes of medication, within which many individual medications fall, are antidepressants, antipsychotics, anxiolytics/sedatives/ hypnotics, and mood stabilizers.
• less intrusive treatments likely to secure the patient’s agreement to take the psychoactive medication.
This requires that any effort to administer psychiatric medication to an incompetent defendant who is refusing that medication must begin with an application to the probate court with proceedings in the Health and Safety Code. The provisions for the incompetent defendant in the probate court are slightly different from those for the civilly committed.
Like the civil proceeding, the physician providing mental health services to the incompetent defendant makes application to the probate court and, pursuant to Texas Health and Safety Code §574.106(a)(2), the probate court may issue an order to administer psychiatric medications to a person who “is in custody awaiting trial in a criminal proceeding” who has been ordered to receive mental health services as part of her competency restoration.
For the probate court to order administration of the medication, however, the court must find more than a lack of capacity and the patient’s best interest. The probate court must find by clear and convincing evidence that treatment with the proposed medication is in the defendant’s best interest and the defendant presents a danger to herself or others.15 The probate court analysis is conducted in the court’s capacity as guardian of wards of the state without regard to any specific interest of the State of Texas, which differs from what analysis comes in the later proceeding in the criminal court.
The requirement that the defendant be a danger to herself or others creates an added element of difficulty in obtaining an order to medicate. Many incompetent defendants are not actively psychotic but remain resistant to medication, which hinders their competence restoration. If the incompetent defendant is not a danger to herself or others, the probate court must deny the application.
The two-step process for incompetent defendants has its roots in the U.S. Supreme Court’s decision in Sell v. United States.19 In Sell, the Court held that the government may pursue forced medication requests but should evaluate the defendant’s dangerousness initially. If the defendant is not a danger to herself or others, then further inquiry should be made.
The focus in the criminal court proceeding is on weighing the State’s interest in bringing to trial someone accused of a “serious crime” against the defendant’s right to not be administered medication that will produce side effects that will interfere with her ability to assist in trial defense. Expert testimony from physicians on the effects of the medication, both beneficial and deleterious, is the key to success in this hearing.
Given the health and liberty issues at stake, it stands to reason that the procedures for securing an order to administer psychiatric medications over a patient or defendant’s objection are complex. Successfully securing the order, however, will result in shortened stays in inpatient mental health facilities and state hospitals, which is in everyone’s best interest.
1 Whitaker, R. (2010). Anatomy of an epidemic: Magic bullets, psychiatric drugs, and the astonishing rise of mental illness in America. New York: Crown Publishers.
2 Osterberg L, Blaschke T. Adherence to medication. New England Journal of Medicine, 2005; 353(5):487–497.
3 See Kessler RC, Berglund PA, Bruce ML, et al. The prevalence and correlates of untreated serious mental illness. Health Services Research. 2001;36(6 Pt 1):987-1007.
4 25 Tex. Admin. Code §414.410.
5 See Sell v. United States, 539 U.S. 166, 123 S.Ct. 2174, 156 L.Ed.2d 197 (2003); Tex. Health & Safety Code §574.106; Tex. Crim. Proc. Code Art. 46B.086.
6 Tex. Health & Safety Code §574.104(a).
7 Tex. Health & Safety Code §574.106(a).
8 Tex. Health & Safety Code §574.103.
10 Tex. Health & Safety Code §574.106.
11 Tex. Health & Safety Code §574.106(h).
12 Tex. Health & Safety Code §574.106.
13 Tex. Health & Safety Code §574.110(a).
14 Tex. Crim. Proc. Code Art. 46B.086(a)(4).
15 Tex. Health & Safety Code §574.106(a-1)(2)(B)(ii).
16 Tex. Crim. Proc. Code Art. 46B.086(b).
17 Tex. Crim. Proc. Code Art. 46B.086(c).
18 Tex. Crim. Proc. Code Art. 46B.086(e).
19 539 U.S. 166, 123 S.Ct. 2174, 156 L.Ed.2d 197 (2003).
20 Tex. Crim. Proc. Code Art. 46B.086(d).
22 Sell, 539 U.S. at 185, 123 S.Ct. at 2187.


Registration was opposed by Kellogg Company (hereinafter Kellogg) on the ground that New Generation's mark so resembles Kellogg's previously used and registered mark "NUTRI-GRAIN" for cereal-derived food product to be used as a breakfast food, snack food or ingredient for making food [FN2] as to be likely, when applied to New Generation's goods, to cause confusion, mistake or to deceive.
New Generation, in its amended answer to the opposition, denied the allegations therein. In addition to pleading a number of affirmative defenses, New Generation counterclaimed to cancel Kellogg's pleaded registration. As grounds for its counterclaim, it is asserted that the specimens submitted by Kellogg in support of its "NUTRI-GRAIN" application were specimens of boxes bearing the mark; that there was no indication on these boxes of the net weight of the product; that the only specification of the weight of any "NUTRI-GRAIN" product shipped by Kellogg in commerce prior to the application filing date was the gross weight indicated on the "air bills" which accompanied the shipment; that this omission of the net weight of the product on the boxes shipped by Kellogg prior to the application filing date constitutes non-compliance with the labeling requirements of the Food, Drug and Cosmetic Act; that Kellogg, although aware of its non-compliance with the labeling requirements of the Food Drug and Cosmetic Act, nevertheless continued to prosecute its application for the purpose of obtaining a registration to which it knew it was not legally entitled and that such conduct by Kellogg constitutes fraud on the Patent and Trademark Office.
Kellogg, in answering the allegations in the counterclaim, admitted knowledge of the pertinent requirements of the Food, Drug and Cosmetic Act and further admitted that the "air bills" affixed to the outside of the bulk packages for the goods stated the gross weight of the packages. Kellogg otherwise denied the allegations regarding unlawful use and fraud.
Kellogg then moved for summary judgment on the counterclaim on the grounds that there are no genuine issues of material fact regarding Kellogg's shipments of the "NUTRI-GRAIN" product prior to the application filing date; that said shipments were lawful shipments under applicable law and that there were no misrepresentations of omission or commission made to the Office which would constitute fraud.
New Generation filed a brief in opposition to the motion for summary judgment.
On November 17, 1987, the Board issued a ruling indicating that it believed no issues of material fact were in dispute. The Board noted that there was no disagreement as to the events that occurred prior to the filing date of Kellogg's "NUTRI-GRAIN" application regarding shipment of the goods in commerce and that it was clear that the shipments did not indicate the net weight of the product on the packages although there was an indication of the gross weight on the "air bills" accompanying the shipments. However, the Board held that while there were no material facts in dispute necessitating a trial on this issue, what is in dispute and what constitutes the crux of the counterclaim for cancellation and the motion for summary judgment to dismiss the counterclaim is the legal significance of these undisputed facts, that is, do the facts relating to the shipments constitute facts which warrant the conclusion that the shipments were unlawful? The Board then allowed New Generation time to file a brief on the legal issue of whether the undisputed facts relating to Kellogg's initial shipments of its "NUTRI-GRAIN" cereal in commerce was in compliance with applicable law and whether this asserted non-compliance was of such significance that any use of the "NUTRI-GRAIN" mark by Kellogg prior to the application filing date would be considered unlawful. Kellogg was allowed time to file a responsive brief. The Board indicated that if New Generation failed to demonstrate by clear and convincing evidence that the undisputed facts regarding Kellogg's first use of the "NUTRI-GRAIN" mark constituted such a material non-compliance with a regulatory statute as to render unlawful Kellogg's shipments of goods prior to the application filing date, the Board would dismiss the counterclaim by way of summary judgment. If, on the other hand, the Board was persuaded that the undisputed facts amounted to unlawful shipments, summary judgment would be entered on the counterclaim in favor of New Generation and Kellogg's registration would be cancelled.
*2 In response to the foregoing order, New Generation filed a brief together with supporting materials, urging that Kellogg's use of the "NUTRI-GRAIN" mark was not lawful and that Kellogg's registration should be cancelled. In support of its position, New Generation points to two statutes which govern the regulation of food products introduced into interstate commerce, namely the Food Drug and Cosmetic Act, 21 U.S.C. § 331 et seq. and the Fair Packaging and Labeling Act, 15 U.S.C. § 1451 et seq. New Generation also refers to the rules and regulations of the Food and Drug Administration, 21 C.F.R. § 100.120 et seq. and the rules and regulations of the Federal Trade Commission, 16 C.F.R. § 500.1 et seq., arguing that these are relevant to the shipments in question herein.
New Generation's position with respect to Kellogg's initial shipments of "NUTRI-GRAIN" cereal is that the introduction into interstate commerce of any food that is misbranded is a prohibited act (21 U.S.C. § 331(a)); that a food is deemed misbranded if it is in package form unless it bears a label containing, inter alia, an accurate statement as to the quantity of the contents in terms of weight subject to reasonable variations which shall be permitted and exemptions as to small packages which shall be established by regulations prescribed by the Secretary (21 U.S.C. § 343(e)(2)); that the reasonable variations referred to in the Food Drug and Cosmetic Act refer to specifically enumerated contingencies not applicable to packaged breakfast cereal and the exemptions referred to in the Act require regulations prescribed by the Secretary which have not been prescribed so as to make Kellogg's shipments lawful.
New Generation also points to the Fair Packaging and Labeling Act which provides that it shall be unlawful for any person engaged in the packaging or labeling of any consumer commodity for distribution in commerce to distribute such commodity in commerce if such commodity is contained in a package, or if there is affixed to that commodity a label, which does not conform with this Act (15 U.S.C. § 1452(a)). The Act further provides that no person shall distribute any such commodity in commerce unless the net weight of the contents is stated upon the principal display panel of the label (15 U.S.C. § 1453(a)(2)).
In view of the foregoing, New Generation concludes that since Kellogg's shipments indisputably were shipped in commerce without a label indicating the net weight of the contents, said shipments were not in compliance with applicable law; that they constitute a per se violation of the law and that these unlawful shipments cannot be relied on to support a federal registration.
*3 Attached to New Generation's brief are portions of the above referenced statutes.
Kellogg, on the other hand, asserts that the Fair Packaging and Labeling Act deals specifically with products moving through retail agencies to retail consumers; that Kellogg's "NUTRI-GRAIN" product was shipped to two market research laboratories and not to retail outlets; that, therefore, Kellogg's product was not a consumer commodity for purposes of the packaging and labeling requirements of the statute and that the product was not misbranded since it was not a consumer commodity. Kellogg concludes that while the law requiring labeling directed to consumers is clear on its face, it did not apply to Kellogg's "NUTRI-GRAIN" product at the time of the initial shipments.
After reviewing the biefs of the parties, together with the supporting documentary material, we conclude that New Generation has failed to demonstrate by clear and convincing evidence that Kellogg's shipments were violations of applicable law such that Kellogg's application is deemed void ab initio mandating cancellation of the resultant registration. As we stated in the case of Santinine Societa v. P.A.B. Produits, 209 USPQ 958 (TTAB 1981), the better practice in trying to determine whether use of a mark is lawful under one or more of the myriad regulatory acts is to hold a use in commerce unlawful only when the issue of compliance has previously been determined (with a finding of non-compliance) by a court or government agency having competent jurisdiction under the statute involved, or where there has been a per se violation of a statute regulating the sale of a party's goods.
In the present case, there has been no final determination of non-compliance by any competent court or agency regarding Kellogg's initial shipments of its "NUTRI-GRAIN" cereal. New Generation has not contended that such a determination has been made. Rather, New Generation has attempted to show that the initial shipments of the "NUTRI-GRAIN" cereal were per se violations of the Food, Drug and Cosmetic Act and/or the Fair Packaging and Labeling Act. We do not believe that any per se violations of the aforementioned statutes have been shown.
With respect to the Food, Drug and Cosmetic, Act this Act states in pertinent part that the introduction into interstate commerce of a food that is misbranded constitutes a prohibited act and that a food is deemed misbranded if in package form unless it bears a label containing, inter alia, the quantity of the contents in terms of weight. New Generation concludes that Kellogg shipped a quantity of cereal in interstate commerce in package form without the required label and that, therefore, the shipments were clearly unlawful. However, the regulations promulgated to enforce the provisions of the Food Drug and Cosmetic Act and the Fair Packaging and Labeling Act define a "package" as any container or wrapping in which any food is enclosed for use in the delivery or display of such commodity to retail purchasers, but does not include, inter alia, shipping containers or wrappings used solely for the transportation of any such commodity in bulk or in quantity to manufacturers, packers, processors or wholesale or retail distributors. See: 21 CFR 1.20. In this regard, the record shows that Kellogg's initial shipments were to two market research laboratories and not for retail sale to consumers. Kellogg submitted copies of its "air bills" of these shipments to the Examining Attorney during the ex parte prosecution of its application. It appears from the face of these "air bills" that the shipments were, in fact, directed to research services and were not for retail consumption. Moreover, there is nothing of record to dispute or contradict Kellogg's assertions that its shipments were anything other than shipments for testing of the product. [FN4] It appears from a reading of the pertinent provisions of the Food, Drug and Cosmetic Act and the regulations regarding labeling requirements under the Act that the underlying purpose of the labeling requirements is the protection of retail consumers. While we have been unable to find any case law on point, it does not appear that a shipment of a food product to a research laboratory would be considered misbranded if there was no indication on the package of the net weight of the contents since there does not exist in that situation the issue of consumer protection. In any event, while we readily concede some unfamiliarity with the applicability of the Food, Drug and Cosmetic Act and related regulations regarding shipments of the type involved herein, we conclude that New Generation has fallen far short of demonstrating, by clear and convincing evidence, that Kellogg's shipments were per se violations of said statute and regulations.
*4 Similarly, with respect to the asserted violation by Kellogg of the Fair Packaging and Labeling Act, this statute, which sets forth certain packaging and labeling requirements of consumer commodities, defines the term "consumer commodity", inter alia, as any food customarily produced or distributed for sale through retail sales agencies or instrumentalities for consumption by individuals. See: 15 U.S.C. § 1459. The same section of the Act defines "package," inter alia, as any container or wrapping in which a consumer commodity is enclosed for use in the delivery or display of that consumer commodity to retail purchasers. Section 1451 of the Act, declaring the policy of Congress, indicates that the purpose of the Act is to provide packages and labels that enable consumers to obtain accurate information as to the quantity of the contents and enable consumers to make value comparisons. With respect to Kellogg's shipments to product evaluation laboratories, we believe that, at the very least, these shipments arguably were not shipments of "consumer commodities" as that term is defined in the Fair Packaging and Labeling Act and that the absence of net weight labels on the packages in question did not violate said Act. Moreover, as was the case with the Food, Drug and Cosmetic Act, we find that New Generation clearly has failed to demonstrate, by clear and convincing evidence, that Kellogg's shipments of "NUTRI-GRAIN" cereal were per se violations of the Fair Packaging and Labeling Act.
Under the circumstances, since New Generation has failed to demonstrate, pursuant to the Board's November 17, 1987 ruling, that Kellogg's shipments of "NUTRI-GRAIN" cereal were unlawful, summary judgment is hereby entered against New Generation with respect to the counterclaim. The counterclaim to cancel Kellogg's pleaded registration is hereby dismissed and proceedings will go forward in the opposition.
We now turn to Kellogg's outstanding motion to quash New Generation's notice to take depositions and produce documents. The notice of deposition names, among others, William LaMothe, Kellogg's Chief Executive Officer, as a person to be deposed and Kellogg asserts that this proposed deposition is solely to harass and annoy Kellogg. The notice of deposition also identifies one W.T. Lambert who, Kellogg states, is no longer in Kellogg's employ.
New Generation has filed a brief in opposition to the motion, making no comment on the notice of deposition with respect to W.T. Lambert. In this regard, it is clear that Kellogg cannot be compelled to produce a deponent not in Kellogg's employ and W.T. Lambert's deposition may only be taken pursuant to Lambert's voluntary appearance or pursuant to a subpoena issued by the U.S. District Court having jurisdiction over Lambert.
With respect to the motion to quash the notice of deposition as it relates to Mr. LaMothe, New Generation denies that said notice of deposition is for the purpose of harassing Kellogg. Rather, New Generation asserts that it has repeatedly sought to obtain the name of any person who is authorized to discuss an amicable settlement of this dispute; that these attempts to bring together properly authorized individuals of both parties who would be in a position to discuss the disputes herein have been rejected by Kellogg; that when New Generation asked Kellogg if there was anyone in Kellogg's organization who had authority and knowledge to discuss settlement of the case, Kellogg indicated, through its counsel, that it did not know of any person who could meet with New Generation's officers to discuss an amicable resolution of this case; that it is obvious that Kellogg's Chief Executive Officer would have the knowledge and authority to discuss settlement and that New Generation is forced to depose Kellogg's Chief Executive Officer in order to obtain necessary information regarding settlement which, according to Kellogg, cannot be provided by any other individual in the Kellogg organization. New Generation further asserts that it would accept an alternative person(s) in lieu of the Chief Executive Officer if such person(s) was designated by Kellogg.
*5 As the parties are well aware, the scope of discovery in inter partes cases before the Board is governed by Rule 26(b) FRCP which provides that a party may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action. If the information sought appears reasonably calculated to lead to the discovery of admissible matter, it is not grounds for objection that the information sought will be inadmissible at trial. While the purpose of discovery in any adversary proceeding is to develop the facts prior to trial, simplify the issues and, possibly, promote an amicable settlement of the dispute once the facts are known, a party is under no requirement to settle a case and is under no requirement to negotiate settlement with its adversary.
In the present case, New Generation has cited no authority (and the Board's knows of none) for the proposition that it is entitled to utilize the device of a discovery deposition to force Kellogg to produce a deponent who has the authority to negotiate a settlement of the case. New Generation's claims that it is forced to depose Kellogg's Chief Executive Officer in order to obtain information regarding settlement is simply baseless and cannot be countenanced by the Board.
Trial dates, including the time for discovery, are reset as shown in the accompanying trial order.
FN1. Application Serial No. 521,222 filed February 8, 1985.
FN2. Registration No. 1,255,456 issued October 25, 1983.
FN3. Kellogg has moved to strike New Generation's reply brief on the ground that the Board's November 17, 1987 order made no provision for the filing of reply briefs. Kellogg alternatively requests that its response to New Generation's reply brief be considered in the event that the Board denies the motion to strike.
While it is true the Board's November 17, 1987 order made no specific reference to reply briefs, there was no prohibition against them. As always, the Board prefers that reply briefs not be filed unless necessary but the Board, in its discretion, reserves the right to consider them. In the present case, the Board elects to consider both New Generation's reply brief and Kellogg's brief in response thereto. Accordingly, the motion to strike is denied.
FN4. New Generation, in its reply brief, argues that Kellogg's representation that the initial shipments of "NUTRI-GRAIN" cereal were for market testing purposes and not for retail consumption is directly contrary to the representation made by Kellogg in its application wherein it was indicated that the mark is used by applying it to containers in which the goods are packaged and sold and specimens showing the mark "actually used" were presented. New Generation urges that this representation to the Office that the mark was being used on packages sold to the public was a deliberate misrepresentation to the Office constituting fraud and that, at the very least, the shipment was not for any legitimate commercial purpose, but, rather, was a sham transaction which would be insufficient to support registration of the "NUTRI-GRAIN" mark.
The Board disagrees with New Generation's contentions. It is clear from a review of the registration file that Kellogg, in requesting reconsideration from the Examining Attorney's final refusal, indicated to the Examining Attorney the facts regarding the shipments of the cereal to the consumer laboratories for product evaluation and clearly indicated that the shipments were not for retail sale. Accordingly, no fraud or misrepresentation occurred which resulted in allowance of Kellogg's registration. Moreover, such product evaluation shipments would be considered sham transactions only if it was demonstrated that the initial shipments were not subsequently followed up within a reasonable time by ongoing commercial activity. No such absence of subsequent activity has been suggested by New Generation and the Board, therefore, rejects New Generation's contentions regarding the character of Kellogg's initial shipments.
FN5. In the hope of avoiding further disputes regarding the taking of discovery herein, it is emphasized that New Generation is entitled to take discovery depositions pursuant to Rule 30(b)(6) regarding any and all issues involved in this proceeding. Kellogg is obligated to produce those witnesses having knowledge over the subject matter on which examination is requested. The parties are urged to cooperate in the completion of discovery and in the remainder of this proceeding so that the case may proceed expeditiously.