Copyright and Freedom of Expression at Columbia

Not quite God and Man at Yale, but you do what you can.

Moderated by Clarisa Long.

Rob Kasunic, AU: He reads Eldred to say that (1) the internal copyright safeguards of idea/expression and fair use prevent First Amendment conflicts, but (2) this could change – the traditional contours of copyright could be altered. What should courts do under such circumsntances?

What are the key characteristics of traditional contours? We know that duration isn’t one, nor subject matter, nor formalities. Congress would have to limit the internal safegaurds to create a constitutional conflict. Why are idea/expression and fair use so important? Because they’re judicially created and developed creatures of the common law. Limiting judicial discretion/breathing space through legislation that eliminates idea/expression and fair use but doesn’t create a comparable safeguard would be constitutionally shaky.

Section 1201 has the capacity to change the traditional contours. Most First Amendment attacks to date have been weak or meritless, but one can imagine factual situations that would present real problems, e.g., a corporate whistleblower who can’t provide the encrypted smoking gun without circumvention.

(1) The court in such a case could consider whether Congress satisfied the First Amendment within the statute, but no relevant exemptions help here. (2) The court could interpret the statute to avoid liability, as in Skylink and Storage Tech. The structure of 1201 distinguishes access from rights controls to maintain the traditional contours of copyright law, but when copyright owners don’t respect that theoretical distinction and merge access with rights controls, as Tony Reese has ably written, problems develop. Attempted distinctions, however, would result in rewriting the statute with negative effects on future cases. (3) The court could apply heightened First Amendment scrutiny, but that might result in invalidating the entire statute, which is too blunt a remedy. (Query: Why? This isn’t a new problem for First Amendment doctrine, which has standards for facial and as-applied challenges.) But if the statute changes the traditional contours of copyright, that might be the necessary result. (4) Courts have equitable authority to preserve First Amendment rights by limiting copyright. This is the optimal approach, and Congress has deferred to judicial doctrines and codified them before.

Some have suggested “anticircumvention misuse” as a limiting doctrine. This has many benefits, but carries its own baggage from antitrust. It looks at the problem from the plaintiff’s perspective – is the plaintiff overreaching? – when we should instead create a user’s perspective doctrine of “fair circumvention.”

Joe Liu, BC: As a copyright lawyer, he’s prone to copyright exceptionalism. The First Amendment may deal with other, similar issues routinely. (Comment: Amen!) He proposes that copyright is not different from other areas. Breathing space plays a key role in other areas, but virtually no role in copyright. This is a mistake.

Assume Eldred is right, idea/expression and fair use are all we need. What follows? Serious modifications to copyright law! These critical safety valves are uncertain and ill-defined. This can be expected to and does chill speech. Defamation, intentional infliction of emotional distress, etc. all consider the chilling effects of liability when formulating doctrine, even though they also have internal safety valves. In defamation, the Court recognized the need to modify doctrine to avoid chilling effects by changing the burden of proof and standard of liability.

This has a cost – unredressed harm to plaintiffs’ reputations – but we are not indifferent to the burden of uncertainty on speech.

How to create breathing space in copyright? Substantively, more sympathetic application of fair use in cases raising speech interests, as in Campbell. Procedurally, the burden of proof should be on plaintiffs when defendants establish a speech interest. (Comment: Say what? If copyright is nothing new, then treat it like defamation: the burden is on the plaintiff for everyone; the defendant needs to jump no hurdle to enter First Amendment-land. Maybe most copyright plaintiffs will easily meet that burden, but what’s wrong with that?) The burden should especially be on the plaintiff for market harm. Remedies could also be limited to damages.

These proposals require defining the set of cases raising speech interests. Why not downloaders? This shouldn’t be too difficult – courts distinguish between public and private figures, speech and nonspeech. Some categories – parody, satire, even some literal copying – fulfil speech interests. It would be easy to reject pretextual claims, like the 2000-song downloader.

The big objection to his proposal: copyright law is just different. Liu is not persuaded; his paper takes up the argument.

Paul Bender, Arizona State: Has the opposite caveat, in that he knows First Amendment law, not copyright. Everyone agrees that Eldred didn’t clarify the relationship between copyright and the First Amendment. The First Amendment bears “less heavily” on copyright – less heavily than what? Even worse is “traditional contours.”

The one fact everyone agrees on: the copyright clause and the First Amendment were adopted close in time; a limited monopoly is therefore compatible with free speech. But why did the Framers think so? Today, people say idea/expression and fair use, but did the Framers think about that? We don’t know what that means. (Comment: Consider, for example, that the newspapers Jefferson so loved weren’t copyrightable at the time of the Founding. Past compatibility is no guarantee of future performance.)

Does the idea that copyright promotes expression help? Usually, that doesn’t justify laws restricting speech. If copyright law violated a specific infringer’s First Amendment rights, it wouldn’t help that it promoted someone else’s speech.

So what were they thinking? 95% of infringements will involve no exercise of First Amendment rights because the First Amendment is about the freedom to make one’s own speech. Plagiarism isn’t a First Amendment activity. (Comment: Nor is plagiarism copyright infringement. Well, I wrote a whole piece about this – I will try not to interrupt too much.) Selling books is First Amendment activity, but stealing books to sell them isn’t.

It’s a mistake to take the 80% of infringement that’s just copying as First Amendment problems. We ought to look at those involving expression by the infringer. Is the copyist making his/her own point, and is copying expression important to that? The Zapruder case is an example of where copying is so important to the argument it must be allowed – incidentally, maybe the Zapruder film isn’t copyrightable at all because it’s accidental, not an intellectual production. Alan Cranston’s translation of Mein Kampf, showing the ugly parts left out of the official translation, is another example (Bender wasn’t aware of how this case came out – not fair use).

The best analogy: a sculptor wants to use a unique tree on my property for his sculpture. Normally he’d be liable for taking the tree even if the result is creative. People say that scarcity makes a difference, but assume I have a large marble quarry that isn’t exhaustible; the sculptor still has no right to take the marble. (Comment: So we’re asked to assume counterfactually that tangible property lacks one of its defining characteristics … and then simply expected to apply the tangible property rule to this imaginary situation? I am unpersuaded.)

My comments: I couldn’t resist saying a bit about Bender’s presentation. Bender provides us no reason to distinguish the Zapruder/Mein Kampf cases from the rock quarry. If property is property and that’s the end of the question, I don’t have any right to use either type no matter how helpful it would be to my message. But what that reveals is the deeper flaw in the claim: the label “property” cannot be dispositive; otherwise it would be trivial to legislate away First Amendment protections in any area (defamation as property in personhood – as the right of publicity threatens to do now; anti-flagburning laws as property in the flag; blasphemy laws as protecting religious property; etc.). The reasons for calling something property are relevant to whether the First Amendment permits particular unconsented “uses,” but Bender’s analogy is unhelpful because it doesn’t address whether the reasons for excluding people from rock quarries are the same as the reasons for excluding people from copying – or sampling – music. When pundits suggest that this is the first “YouTube election,” it’s hard to say that copying is serving no speech-promoting function.

The other big point is that, if you start to say that a copyist’s “mixing labor” with a creative work is what triggers at least a First Amendment inquiry, you are conceding far more ground to free speech concerns than most people think. Selection, coordination, and arrangement – the mix tape – are recognized types of creative labor in copyright law. Performances also involve the addition of creative labor to the underlying work. And of course any infringement of the derivative works right would trigger a First Amendment analysis under this theory. That’s a reasonable position to take, but let’s not pretend it largely preserves the stability of copyright law except in a few unusual cases.

The rest of my presentation was an attempt to draw some lessons for copyright by comparing concepts of the public domain to public forum doctrine. I’m still working on this; there is definitely meat there, but I haven’t quite figured out all the moving parts. At the very least, the difficulties of public forum doctrine promise a rough road ahead for useful theories of the public domain.

Jane Ginsburg: How do we know safety valves work, in the sense of protecting and promoting speech?

Liu: His proposal presumes they do, as the Court does in other areas. His concern is not so much about the baseline of defamation but for problems in copyright.

Bender: The way you know is to test them – get sued, create litigation.

Me: There is some empirical comparative evidence on defamation suggesting that the legal regimes here and the UK don’t have much differential effect on the practice of journalism. Of course, journalistic ethics – the desire to report truthfully – may be more important than defamation standards. What we do know is that the current copyright regime chills speech; publishers refuse to rely on fair use.

Kasunic: We need to create a record on this in other ways besides litigation. Best practices, along with records of how filmmakers are being silenced, are helpful. DMCA rulemaking can also acknowledge the effects of the law on particular uses.

Sprigman: His thought – how do we know that First Amendment safeguards are generally effective? Because we have a baseline, and when Congress departs from it we no longer know whether those limits are effective. But Sprigman’s preferred baseline is 1790; when copyright gets bigger than that, we should apply First Amendment scrutiny.

Liu: Liu is puzzled by what “traditional contours” could mean, and what the baseline is. The Court almost suggests that today’s copyright is the baseline, but why would that be true? Also, it’s hard to understand what would be sufficiently outside the contours to trigger constitutional scrutiny. And it’s hard to understand where “traditional contours” comes from – why does tradition matter (when it didn’t in defamation, blasphemy, obscenity, etc., etc.)? This is why he doesn’t want to tie “traditional contours” to his argument about breathing space for idea/expression and fair use.

Bender: It should be First Amendment values, not tradition, that guide us.

Graeme Austin: What about the reverse Mein Kampf situation – the Family Movie Act. Does the FMA support or harm First Amendment values?

Kasunic: Parents can make a choice not to hear speech, which means it supports their speech.

Bender: It violates kids’ rights!

Me: There are First Amendment values on both sides – the editors are asserting their right to make someone else’s speech but use different words, which makes it easier for them to speak but can interfere with the original speaker’s message.

Alternatives to the Copyright Power

The Relationship of the Copyright Clause to the Commerce Clause and the Treaty Power

Moderated by Tim Wu.

Tom Nachbar, Virginia: Jefferson made today’s argument: intellectual products are not like tangible property because they are nonrivalrous. Some have suggested that this is a reason why Congress can’t use non-IP powers to regulate; it can only regulate through the IP clause. Nachbar disagrees. Every Article I power has limits, but that doesn’t mean those limits apply to each clause – we have to take the constitutional whole into account. His research fails to reveal norms that would justify applying copyright’s limits across all the other clauses. Rent-seeking, for example, is a practice with a long and noble history in US law, so you can’t say copyright’s limits implement a generally applicable anti-rent-seeking norm.

IP rights aren’t so special from the modern point of view, either. Can nonrivalry serve as a justification for limiting Congress’s power to grant, say, perpetual rights or rights in facts using the commerce clause or the treaty power? Rivalry is a continuum – my pen is much more rivalrous than my yard, given the way I use them. Even with a public park, there is rivalry between lovers of parks and lovers of strip malls. The rivalry is not for possession but for control. IP assumes the existence of rivalry over the income stream generated by a work.

Is rivalry encoded in the patent and copyright clause? It’s hard to see in any of the words of the clause. The durational limit could be equally applied to tangible property – we do that with property taxes, which make sure that a piece of property is being used in a way that’s economically productive. The subject matter doesn’t seem particularly tied to rivalry – compare expression, ideas, and facts; rivalry doesn’t seem to be a factor distinguishing between them. Even if we assume that “promoting progress” is a limit, that again has little to do with rivalry.

Markets are not subject to rivalry. Buyers & sellers are consumers of markets, but additions of buyers and sellers to markets only increase the value of the market. We do favor public control over private control of markets – the government specifies how markets are run, as for example with the Sherman Act. But there’s no constitutional requirement of or limits on such regulation of nonrivalrous goods. Congress can shut down markets pretty much at will; nonrivalry doesn’t play a role in constitutional constraints generally.

What lessons? His hope is to further erode arguments that IP is somehow constitutionally privileged. Rational basis is the way to go (First Amendment claims aside).

My comment: I’m not sure why the copyright clause only controls other clauses if it expresses a generalizable value. The requirement that the President be at least 35 when elected expresses no generalizable value, yet I find it difficult to imagine that Congress could circumvent it with a treaty.

Dotan Oliar, Virginia: Courts should develop a concept of covered subject matter, and not let Congress circumvent it through reference to other clauses. So, with the antibootlegging statutes, the arguments are that both the writing/fixation and limited times requirements have been violated. The government argued that the commerce clause nonetheless justified the statute.

The scope of the commerce clause used to be much narrower; the federal trademark laws were originally (and unsuccessfully) defended under the IP clause because they went beyond the then-current understanding of the commerce power. Now, though, the commerce clause power has expanded so that all IP regulation could be seen as regulating interstate commerce. Still, the Court hasn’t abandoned its commitment to the existence of some limits on congressional power.

The closest Supreme Court precedent is the one striking down a nonuniform bankruptcy law that Congress attempted to enact under the commerce clause. This is equivalent to an attempt to enact perpetual copyright for all works, but it’s not clear how the precedent applies in cases of less obvious conflict. Given that bankruptcy and IP are both economic regulations, they will both always be regulations of interstate commerce under current definitions – and yet the Court does not allow limitations on one power to be avoided by use of the commerce power. What’s driving is the canon that the specific controls the general. Dastar is a related case – a conflict between copyright and trademark, the latter of which is justified by the commerce power. Scalia says that the specific rules of copyright trump the regulation of attribution in general commerce.

Conclusion: the bootlegging cases are borderline – what is the essence of this regulation? If it’s essentially copyright, then the law is unconstitutional. If it’s essentially a regulation of commerce, it’s fine. One implication: we should only worry about the antibootlegging law if we think that copyright law affirmatively bars this kind of law.

Graeme Dinwoodie, Chicago-Kent: Dinwoodie wants to look at the treaty clause, which has been raised in defense of the antibootlegging statute. Almost every single provision of the Copyright Act that’s been challenged of late has an international dimension. Arguably, there’s broader support for viewing the treaty clause as offering autonomous legal authority, that is, Missouri v. Holland’s endorsement of using treaties to do what couldn’t be done under the commerce power. Possible views:

(1) Subservience: the treaty power is limited by the copyright clause. If the clause’s limits mean anything, they can’t just be circumvented by a convenient treaty. The embarrassing case is Holland. Are the limits on the copyright clause fundamental to the structure of American law? If so, the treaty power can’t justify abrogating the copyright clause any more than it could justify abrogating Sixth Amendment rights, as in Reed v. Covert. Dinwoodie thinks this overstates the case, since copyright’s limits aren’t fundamental to the structure of American governance. Treaty-making involves different institutions and constraints than domestic lawmaking. Anyway, if one clause controls the other, which is on top? Arguably the treaty power is more specific than the copyright clause as to matters within its scope, and should thus control. And, if other countries do copyright differently, securing American copyright values might require more leeway in treatymaking.

(2) Expansiveness: the treaty power is unconstrained by anything but explicit limits like the First Amendment. This gives too much latitude to the treaty power. Proponents haven’t explored the line between affirmative prohibitions (which can’t be abrogated in their theory) and failures of power (which can be). For example, many theorists think “limited times” means “and not forever,” so why isn’t that an affirmative prohibition? And many effects of international law on domestic copyright are implemented not through the treaty power but through ordinary domestic lawmaking. TRIPs is not a treaty, for example. Using the treaty power may be a simple end run around the copyright clause rather than an independent exercise of foreign negotiating powers.

(3) Limited expansiveness: the treaty power is unconstrained by other powers but subject to internal limits, such as subject matter.

We need to acknowledge the integration of the domestic and international lawmaking processes. A provision of copyright law that exceeds the copyright clause isn’t constitutionally immune from challenge because it’s done under a treaty, but the US can enter the international environment to achieve copyright goals even with nontraditional means. Consider: (1) the important role of the treaty clause in giving domestic effect to US international obligations, (2) the strength of the international obligation – is the US directly committed to it, or is it a permissive move to improve the US negotiating position, and (3) the extent to which the treaty process incorporated real political checks.

Some limits in the copyright clause are arguably more effective than others. “Limited times” is hard to assess, as is “promoting progress,” but limited times has some justiciable content, as the antibootlegging statute shows.

Wu: Imagine that Congress wanted to create perpetual copyright for Peter Pan, using the commerce power and also pursuant to a treaty with England. What should the courts do?

Nachbar: There’s no particularly helpful limit from the copyright clause – this is an easy question, since it’s a regulation of foreign commerce. If there’s a rational basis, no problem. He agrees with Dinwoodie that there is a middle ground – the treaty power gives extra but not infinite power. Perpetual copyright for Peter Pan would be within that middle ground.

Oliar: Nope, unconstitutional. In the bankruptcy case, Congress pretended it was passing a commerce regulation, but the Court identified it as really a bankruptcy law. Same here. As for the treaty power, it would be a pretextual enactment and also invalid. Wu calls this a “jurisprudence of end runs.”

Dinwoodie: Actually, England can’t make treaties, only the UK can. But it’s a good hypo. The hardest limit in the copyright clause is “limited times,” because it’s got to mean something. It doesn’t require a great deal of second-guessing to identify a perpetual copyright as violating “limited times.” So it would fail under the commerce clause. The treaty clause is harder. Assume that it’s a fully committed international obligation – the strongest possible – and a treaty with full 2/3 Senate consent, it’s really hard and he doesn’t want to allow perpetual copyright to survive, but he squirms. Given the strength of the limited times obligations, he wouldn’t honor something like an executive agreement or a bicameral treaty-lite. Pretext should also matter – if this is really an end-run around copyright, that’s a reason to strike down the law.

Nachbar: Limited times is the hardest limit for him, too. There’s no particular connection to a theory of why times should be limited. It creates a public domain of old and largely valueless works, but without a coherent theory of what that does for us. There’s no generally applicable value that comes out of it.

Jane Ginsburg: What if Congress rewrites the bootlegging act with a term of years, but no fixation requirement?

Oliar: This is why students don’t like hypotheticals. The older understanding of “writings” is that it deals with originality, not with fixation – so maybe that’s the answer. The TRIPs agreements, the reason for the antibootlegging statute, require a minimum term of years, not perpetuity. If the competing value is the need to conform to international standards, Congress could easily have done so.

Ginsburg: Then you think that the rule that the specific controls the general does not mandate a result here.

Oliar: Yes, he doesn’t yet have an answer about whether the writings requirement is necessarily limiting. The necessary & proper clause might also play in here, so that anti-bootlegging is a way to protect the actual writings of authors.

Congressional Power and Limitations Inherent in the Copyright Clause

Moderated by Jane Ginsburg.

Chris Sprigman, Virginia: One point to make – the limitations the Constitution places on Congress are systematically underenforced, and we should do something about it. What does “limited times” mean? Not “unchanging,” according to the Court, but “not forever.” Make policy arguments about what’s too long to Congress. With a term of nearly a hundred years, what’s in the public domain, then? A few timeless works aside, it’s mostly useless husks, whose cultural value/relevance is used up. The text doesn’t readily admit of judicial enforcement, but the result of going to Congress is unlikely to vindicate a robust public domain because of rent-seeking by wealthy, motivated, organized IP producers.

What is to be done? We can’t directly enforce “limited times” in the courts. We can work on protecting the integrity of the public domain. Releasing unpublished works when their terms expire is an important part of that. Dastar’s analysis of the interaction between copyright and other rights is another key example of protecting the public domain. We also need to interpret anticircumvention rules so that they don’t cover circumvention when a TPM guards access to a work in the public domain.

As a lawyer in Golan, his perspective is somewhat different than Marybeth Peters’s. Golan is a challenge to URAA restoration of copyright in works in the public domain. How can we use Golan to vindicate indirectly the otherwise underenforced limited times provision? You can say that the public domain is a one-way street, or a roach motel: things go in but they don’t go out. The government has examples of past restorations, but the plaintiffs find them inapt since they weren’t wholescale. When you have a fight over history, you should pick the view of history that vindicates the public domain.

Kahle: Didn’t challenge the 1909 Act, but happy to add it in if Peters explains how. You used to have to act to get a copyright, and act again to keep it. This again allows courts to lean in favor of the public domain when evaluating what the “traditional contours” of copyright are.

Tony Reese, Texas (visiting NYU): Eldred is consistent with a tradition of deference to Congress, but goes beyond the previous rulings on subject matter and standards. Eldred indicates a broad approach to congressional power in evaluating how Congress acts when protecting copyrightable subject matter – what kinds of protections are available, not just what is eligible for protection.

What might happen with respect to the unpublished public domain, a field that’s new in US copyright law? Potential publishers of unpublished PD works may claim that the threat of competition deters them from publishing such works, and ask for protection from Congress for a period of exclusivity. This call could appeal to law in the EU, which for some time has required a 25-year exclusive economic right for the first person to publish a previously unpublished work in the public domain. Such calls for harmonization are not unknown to the US.

Could Congress grant a 25-year exclusive right of first publication? Reese is only considering copyright powers, not First Amendment problems or commerce clause powers. Objections: (1) Limited times; (2) Congress can’t remove material from the public domain; (3) Congress can’t grant rights to non-authors.

There’s no textual reason to think that the “limited time” has to be one continuous period – it could be a limited time interrupted by a period of nonprotection. Historically the protection for unpublished works was perpetual until publication. Between 1790 and 1909 Congress offered protection to unpublished manuscripts as long as the manuscript remained unpublished, with no time limit and no formalities.

Removing material from the public domain: There’s nothing textually express in the copyright clause itself barring removal from the public domain. Does it promote the progress of science and useful arts? It’s plausible to think that publication promotes progress, and Congress could plausibly believe that granting new protection promotes publication. Past restorations were about giving works the full term they would have enjoyed if they hadn’t fallen into the public domain. Protection for unpublished works in the PD would be different, extending past the maximum term of copyright. But all past restorations have involved published works, works that were not only legally in the public domain but that were factually accessible to the public. A publication right would typically cover works with only one or two copies held privately; as a practical matter, the public wouldn’t be able to engage in much copying, so removing them from the public domain may have a different impact. There is room for debate here.

Authors: Congress has a long history of granting copyright directly to people who aren’t authors. Until 1978, copyright was acquired by publication with notice, and the party who published could be the “proprietor” rather than the author; the grant of copyright was directly to the proprietor. Similarly, renewal rights could go to non-authors who could trace a chain of title.

As a predictive matter, a court might well find a publication right to be within Congress’s power, even though there are lots of reasons it would be a bad idea.

Lessons: Even a novel right like this might fit in a broad reading of Eldred. We might learn from Eldred’s use of history. Congress had in the past done the same thing, term extension, a number of times. But we’re likely to get more ambiguous cases, where Congress has not done the exact same thing before. How far do we push the historical analogies? Finally, it’s worth asking the normative question of whether it would be a good idea to grant new rights, congressional power notwithstanding. If Congress would restore full common-law protection if it couldn’t grant a publication right, the publication right might be the lesser evil. But it’s probably not worth it.

Graeme Austin, Arizona: Federal courts don’t want to scrutinize copyright law for constitutionality, despite the threat suggested by Feist. Some federal courts have connected constitutionality with international copyright relations – legislation facilitating access to foreign markets can be a constitutionally relevant part of copyright’s quid pro quo. This only goes to demonstrate the incoherence of the quid pro quo argument as a constitutional constraint. The quid pro quo idea provides a reason for Congress to enact copyright laws, but it shouldn’t be a limit on congressional action.

Foreign authors’ access to US markets – is it relevant to the copyright bargain? If ex post benefits to foreign authors count, copyright is becoming fully internationalized. This is most fully realized in the court of appeals opinion in Luck’s Music: the knowledge that Congress may pass laws like the URAA in the future does affect creators’ expected benefits – if Congress can remedy loss of protection for works that have fallen accidentally in the public domain, the incentives to create increase. Foreign authors, in this view, are party to the US copyright bargain. The court acknowledged that this was a meager incentive, but found it sufficient. This makes the quid pro quo theory look pretty bizarre: the quid pro quo includes not only extant incentives but the prospect of remedial legislation adding rights. This causal chain is pretty attenuated and unlikely to affect authors’ calculations.

In the past, improving protections for US origin works might have improved foreign markets, and vice versa, when reciprocity was needed for protection. If a US audience is exposed to foreign works motivated by US rights, that contributes to the progress of knowledge within the US. But more generally, analyzing the copyright bargain in terms of a single society makes little sense; all nations with viable markets need to be taken into account.

Use of the quid pro quo concept has thus, perhaps ironically, led to the acknowledgement that American law needs to be more outward-looking than it has been in the past. This also implies that the foreign commerce clause provides further support to congressional power in copyright – but maybe that’s just adding foreign insult to domestic injury. If it’s bad policy here, it’s bad policy abroad. There are no appreciable limits on what might help US negotiators encourage others to enact similar laws – so this basis for establishing the rationality of US copyright laws has the potential to render all others moot. So we need some standards to prevent diplomatic agendas from governing domestic law.

Some limits may be divined from Eldred, those “traditional contours.” Nonetheless, the Constitution may not require the US’s original isolationism with respect to foreign authors, even though the Framers didn’t care about those authors. Like the political branches, the judiciary now recognizes the need for a workable international system. Engaging with the international system doesn’t violate the traditional contours of copyright even if it rewrites the formalities of copyright. We need a jurisprudence of humility that comes from being part of the world.

Michael Landau to Sprigman: Any concern about the expansion of subject matter? Whole fields of works weren’t traditionally within copyright and became covered by it, and why isn’t that a constitutional concern? Also, Dastar wasn’t about public domain works, but whether §43(a) covered creative origins at all.

Sprigman: Sure, but Dastar was motivated by concern for the public domain, even though its implications are much broader. As for subject matter, it’s a product of the growth of new technologies – photography, computers, etc. It seems like a natural accretion, and he doesn’t object to accretion, only to blindness to the fact that there is change over time. For example, Eldred’s claim that copyright is compatible with the First Amendment because the Framers enacted both is laugable, given how tiny copyright was then and how tiny the First Amendment was then. They fit in the 18^th century – when Justices enforced the Alien & Sedition Acts – but don’t fit now.

Ginsburg: What history tells you about what’s permissible may be probative about permissibility, but not about what’s mandated. Kahle tries to elide the distinction by claiming that, because formalities existed in the past, they’re mandatory.

Tim Wu: What are the potential changes in scope Congress might try? What are the theoretical limits?

Sprigman: Feist suggests some limits in “writings” of “authors,” distinguished from facts. And different media may require different rules – it’s hard to talk about the “idea” of a symphony without playing some of the music.

Reese: Fashion is one obvious possibility for changing scope. Protection for smells is another. Do you need expression to be given “visible” form, as said in Burrow-Giles? Expansion of protection to sound recordings switches that to “tangible” form.

Austin: Region coding might be an example of a question of copyright’s permissible scope – does copyright law have anything to say about where people enjoy a work?

Ginsburg: We might distinguish rights from subjects covered – the display right is new in 1978; is that a transgression of traditional contours, even though it only covers traditionally protected works? What about architecture, which is an expansion of subject matter?

Peters: The same question of rights comes with the DMCA anticircumvention rules: is an access right an expansion of copyright? The anticircumvention problems turn out to be more about use of copyrighted works as tiny components of larger products, and so companies add software locks to things like cellphones. What is the work that’s being protected? A tiny piece of code that drives the device. Is this really what copyright is for?

Ginsburg: The problem is that the copyrightable work is being used as a pretext – a garage is not “a work protected under this title,” and neither is a cellphone service. When the work is a smokescreen for something else, a court can sensibly interpret 1201 as not extending to protecting that something else.

Reese: Maybe an “exclusive rights” approach is better – is access part of exclusive rights? That’s a tough argument under Eldred, though.

Emory Simon, software lawyer: He is much more interested in rights than subject matter. When a reproduction of a physical copy is much less meaningful, and the question is more about use, the importance of the DMCA is that it starts to create a use right. Would a use right, a right to prevent others from enjoying or deriving economic value from a work without permission, be constitutional?

Sprigman: If it would prevent reviews, there’d be a constitutional problem.

Simon: There’s a lot of software in cellphones, much copyrightable (music, programs, etc.) – the copyright owner wants to say you can only use the software as long as you keep paying.

Peters: Can’t see anything unconstitutional in it, but it’s a question of public policy. Performing and reproducing are all “use,” but should we go beyond that to add an amorphous right.

Reese: This would be a right that would cover, e.g., private performances. We don’t have much guidance on whether that would pose a constitutional problem, because the Court hasn’t addressed rights problems at all.

Austin: The Australian high court saw a clear distinction between economic enjoyment involving reproduction and enjoyment involving access, though it perhaps didn’t give sufficient weight to the fact that consumers don’t care any more whether they own a copy. Can the commerce clause step in?

Ginsburg: The text says “exclusive rights” but doesn’t tell us what they are. So maybe access/use can be added if needed to make the right meaningful. May involve a distinction between constitutional rules and values – the court might not stop you from adding such a right, but it might be harmful to copyright’s values.

Question: The public domain isn’t in the constitution – isn’t this a mountain out of a molehill?

Sprigman: Limited times is in the constitution, and that creates a public domain. Congress in 1790 terminated common-law state rights that conflicted with federal copyright in published works.

My question: Are compulsory licenses constitutional? They don’t seem like “exclusive rights.”

Sprigman: A compulsory right is still an exclusive right, it’s just a liability right and not a property right.

Ginsburg: But historically, “exclusive” meant property rights.

Sprigman: We are all opportunistic originalists. If we let copyright be different from 1790 copyright in some ways, why not others?

Austin: The question proves too much – if we see copyright as a constitutional matter, then all sorts of arguments against the present regime come up, and may end up amplifying author’s rights in unfortunate ways.

Ginsburg: We could say the clause authorizes only exclusive rights, or we could say Congress can do everything up to and including exclusive rights; the clause gives Congress leeway in selecting the amplitude of rights. That said, what if we only had compulsory licenses – would that be consistent with copyright values? Is there an authorial control value in the Constitution?

Q: Given that the Constitution only authorizes but does not require a copyright law, can we say that it creates a public domain? Congress didn’t have to preempt state law.

Sprigman: But when Congress acts, it has to act in a way that generates a public domain – protection for limited times. State laws were patchy and there’s debate over what they covered, but there is a federal public domain.

Marybeth Peters on Constitutional Challenges to Copyright

Peters, U.S. Register of Copyrights, gave the keynote at today's Constitutional Challenges to Copyright conference at Columbia Law School:

Constitutional attacks on copyright are a relatively recent development. Insitutionally, Peters’s office is not inclined to support such attacks; Peters is a named defendant in a number of challenges. Her office defends laws even when it didn’t want to see those laws enacted, arguing for deference to Congress.

In the past, courts looked to the Constitution mainly to analyze substantive copyright law related to copyrightability (e.g., what are “writings”?). Term extension spurred the development of constitutional challenges. Larry Lessig saw the opportunity to use the courts to overturn Congress’s poor judgment. So far such challenges are unsuccessful; the single success may be overturned any day (the anti-bootlegging statute).

On Eldred: There was very little opposition to the CTEA at the time, though Peter Jaszi and Dennis Karjala tried. Once it got passed, there was a lot more attention – the attacks seemed out of the blue. Lessig was nowhere during the legislative process. (Comment: I’m not really sure what I’m supposed to glean from this. It may have been bad politics to stay out and to not monitor proposed legislation for mischief, but am I supposed to think he and Eric Eldred forfeited their rights to complain?)

The bottom line on Eldred: courts should defer to Congress on how best to pursue the copyright clause’s objectives. What about the First Amendment challenge? First Amendment rights are accommodated through the idea/expression distinction and the vibrant fair use doctrine. Restricting my ability to copy your expression isn’t an undue burden on my speech; First Amendment concerns are weightiest when I want to make my own speeches. (So, you know, I’m not engaging in any particularly valuable activity now, reporting on Peters’s speech.)

Lessig snatched victory from the jaws of defeat by using the Court’s language on “traditional contours” of copyright protection. Brewster Kahle has now sued based on provisions of the renewal act of 1992, the Berne Convention Implementation Act, and the 1976 Act, harping on the idea that these laws removing formalities altered the traditional contours of law. Traditional copyright protection required affirmative steps to claim it, and most works didn’t, but now we have automatic/unconditional rights – this is, they argue, a radical departure justifying application of First Amendment standards.

Peters agrees that only 15% of works registered were renewed, but they all had that initial term of protection. The district court dismissed Kahle, rejecting the argument that these laws changed traditional contours, which it defined as the scope of copyright protection rather than formalities. Argument in the court of appeals is next month.

The remaining challenges are to the anti-bootlegging provisions of the law. The criminal statute provides no limited time – the recording industry argued that, if what you do is wrong at the beginning, it can never be right. (I guess they never heard of adverse possession.) The 11^th Circuit upheld the criminal provision, even though it didn’t fit within the copyright clause (live performances aren’t “writings”), because it was okay under the commerce clause. In Martignon, a SDNY judge came to the opposite conclusion, focusing on the “limited times” issue. Congress can’t use the commerce clause to circumvent the limits on the copyright clause. That argument was in July 2005, so a decision may come soon.

The related civil anti-bootlegging provision was challenged in Kiss Catalog, but the Justice Department wasn’t informed of the constitutional challenge as it should have been. A new judge decided that the commerce clause allowed the law, but the litigation continues.

There is a very heavy burden on challenges to copyright. The government usually wins, and should. This is not about good policy, but about power. (Kind of like Season 7 on Buffy.) If you don’t like a law, go to Congress and argue.

Institutional Review Boards and the First Amendment

I have a post up on the topic at the Georgetown Law Faculty Blog.

Casket case

The York Group, Inc. v. Horizon Casket Group, Inc., 2006 WL 2934258 (S.D. Tex.)

A somewhat confusing complaint leads to an equivocal result in this case about the implications of leaving off the label “Made in China” when the default legal regime, set out by the Tariff Act of 1930, requires all foreign-made goods to be labeled. The importer of unlabeled goods has violated the law, but does a competitor have a Lanham Act claim? It would be reasonable for consumers to infer that unlabeled goods are domestically produced, given the background rule to which they are constantly exposed. Other cases have held that failure to label imported goods is a violation of the Lanham Act – a sort of falsity by necessary implication. But the court here, after extensive discussion of the precedents, was not convinced.

Plaintiff York makes caskets. Delta Casket used to have a distributorship agreement with York, but it was terminated at the end of 2001. In 2002, Delta decided to import caskets from China, allegedly sending sample Delta caskets to the Wuxi Tractor Co. for copying. Delta’s distributors for these imported caskets shortly thereafter incorporated as defendant Horizon. The Chinese caskets were not individually labeled “Made in China,” though the Tariff Act requires that such a label be affixed so that the ultimate purchaser can see the country of origin. By 2004, Delta was competing with York.

York sued Delta for violating the Lanham Act, including trademark-type claims (based on copying casket designs and names) and false advertising/false designation of origin claims (based on the mislabeling). York argued that the failure to label was a per se violation of the Lanham Act. But the district court found that likelihood of confusion must still be shown. The Fifth Circuit has held that a violation of a different labeling statute, the Federal Hazardous Substances Act, does not constitute a per se violation of the Lanham Act. The FHSA has no private cause of action, and the court in that case ruled that it would not anticipate an administrative agency’s response to a particular set of factual circumstances.

The court pointed out that York could still proceed on a theory of likely deception, and the fact that Delta violated the Tariff Act might be relevant to assessing that claim. I am not sure what nonleading survey methodology could be found to show likely deception – asking consumers to inspect a Delta casket could easily lead to plenty of guessing and “I don’t know” responses. I’d be more attracted to a survey asking them to look at multiple caskets – even though the absence of labels on Delta caskets would stand out, that’s the point: where labeling of imported goods is pervasive, it’s reasonable for consumers to make the leap that unlabeled goods are domestic.

Some of York’s trouble here may have come from failure to make use of the large body of law on falsity by necessary implication. Under that doctrine, one could readily maintain that failure to comply with a pervasive labeling requirement is inherently false.

Further comment: Some state unfair practices statutes, like California’s, explicitly make “unlawful” conduct a violation of state law, allowing plaintiffs to enforce laws that themselves have no private right of action. In California, the violation of the Tariff Act would be enough to sustain the state-law claim.

Allegations of patent infringement aren't disparaging (or advertising)

Conditioned Ocular Enhancement, Inc. v. Bonaventura, 2006 WL 2982140 (N.D. Ill.)

Plaintiff sued defendants for infringing a patent on a method of vision training. Defendant Davidson counterclaimed, alleging Lanham Act violations based on cease and desist letters plaintiff’s law firm sent to current and prospective customers. The court relied on the cases holding that false advertising Lanham Act claims, as well as coordinate Illinois state law claims, are governed by Rule 9(b)’s heightened pleading requirement. In the 7^th Circuit, however, cease and desist letters sent to customers are not “commercial advertising or promotion,” ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 316 F.3d 731, 733 (7th Cir.2003), and thus there’s no Lanham Act claim regardless of pleading details.

State-law disparagement claims remained. The court reasoned that Illinois’s Uniform Deceptive Trade Practices Act codified the common-law tort of commercial disparagement. The letters said that Davidson was an unlicensed and unauthorized user of the patented system, and that a patent infringement suit is pending. But, the court ruled that this did not disparage the quality of Davidson’s business. Thus, again regardless of pleading, there’s no state-law claim.

Comment: this is an extremely, I think unsupportably, narrow view of what counts as “disparaging.” Given the concerns of the patent system, it might be a good idea to have higher fault requirements in such cases than in ordinary false advertising cases, but the potential harm such letters pose to a business cannot be denied.

Davidson also counterclaimed under the Illinois Consumer Fraud and Deceptive Business Practices Act, which requires (1) a deceptive act or practice and (2) an intent that the recipient rely on the deception (3) in the course of trade or commerce. Competitors may use this consumer protection law to redress competitive injury when they allege that the conduct involves trade practices directed to the market generally or otherwise implicates consumer protection concerns. Here, Davidson failed to plead the required consumer protection nexus. Sending out only seven letters, and only to Davidson’s customers, failed to implicate the required consumer protection concerns.

Davidson’s counterclaim for tortious interference with prospective economic advantage, however, survived the motion to dismiss.

Weird Al festschrift

Slate has an article on 25 years of Weird Al, with many links to YouTube videos of his oeuvre. Inevitably in discussions of transformative fair use or the parody/satire distinction, someone will bring up Weird Al (and the fact that he always gets permission). Here's Slate's argument that all Weird Al songs are parodies, not satires:

Even at their silliest ("I Want a New Duck," "Addicted to Spuds"), his parodies do important cultural work: They defuse whatever seriousness clings to the ubiquitous megahit, whatever tiny sliver of it colonizes our lives and makes us dream of a pop Xanadu where everyone has perfect abs and dances synchronously for our never-ending pleasure. He has singlehandedly tutored the MTV generation in critical thinking.

Recent reading on trademark genericity

Deven Desai & Sandra Rierson, The Genericism Conundrum, forthcoming in the Cardozo Law Review: This interesting paper argues that only uses in a selling/purchasing context ought to count in the determination of whether a mark is generic: that is, only when competitors actually use the term to advertise their products, or when consumers actually ask sellers for “a coke” and mean any type of soda. Uses in newspapers like “google that question” or noncommercial conversation like “can I have a kleenex?” would simply not count as evidence of genericity, since they can equally evidence hybrid meaning: a commercial, brand-specific meaning used to make purchases and a noncommercial, conversational meaning used to communicate with others.

Though the paper doesn’t say so, given the types of evidence used to show genericity now, marks would rarely be found generic (Chocolate Fudge Soda-type marks would be the exception; in essence, the proposal restores the idea that some marks are so descriptive that they are the “common descriptive name,” but the slide of fanciful marks into genericity would be less likely). The benefit from the low-protectionist perspective is that trademark owners might stop harassing newspapers and ordinary users, and could abandon their “education” campaigns that try to restrict language by telling people never to use marks as nouns. This also ties into the “trademark use/use as a mark” debate: The authors argue that newspaper uses of trademarks as shorthand for a product class or an action associated with a product is not “use as a mark” because it is not a sales context, and therefore trademark owners have no legal grounds for their threatening letters anyway. As they point out, it is a dubious practice to consider newspaper and dictionary definitions in the genericity determination, say that trademark owners are responsible for policing such uses, and then give them no cause of action against newspaper/dictionary misuse. Since, however, such a cause of action would be a bad idea, the obvious solution is to no longer use such uses as evidence of genericity.

Among other points worthy of discussion: The paper makes several empirical claims in support of its proposals, but cites no evidence for them. For example, the authors state that, when trademark owners invest a lot of money to create secondary meaning, they usually succeed; therefore, a finding of genericity if the manufacturer guessed wrong about the status of the name can lead to a lot of actual (“de facto”) confusion and inefficiency. Given that most product launches fail, I’d love to see the evidence that spending money is enough to create secondary meaning.

Burger King franchisee appeals McDonald's victory in class action

Several months ago, I blogged about a really bad dismissal of a complaint by Burger King franchisees based on false claims of the likelihood of winning McDonald's contests. The putative class plaintiff has now appealed, arguing that prudential standing tests are only appropriate when considering whether to expand Lanham Act standing beyond direct competitors; since Burger King is a direct competitor of McDonald's, standing to bring a false advertising claim is appropriate.

Plaintiff's appeal brief refers to that very post, among other (ahem) authorities. The brief is available here, courtesy of the plaintiff-appellant's lawyers. Among the interesting points raised, plaintiff argues that the existence of potential consumer plaintiffs ought not be part of the prudential standing inquiry, since consumers lack Lanham Act standing even if they can sue for other torts. In other words, the Lanham Act exists to give businesses a remedy for business harm, and only potential Lanham Act plaintiffs ought to count. I like this argument, and it fits well with another point in the brief, which is that the harm to the consumer (the difference in value between what a consumer paid for and what s/he received, or perhaps what s/he would otherwise have bought) is different from the harm to the competitor, who loses the full value of a sale. Full restitution to the consumer still leaves the competitor worse off than it would have been absent the false advertising.

Slight correction: the brief occasionally refers to me as Rachel. Rachel is a classic Jewish name beginning with R, but it's not my classic Jewish name beginning with R.

Swatch watches claims come close to success

Swatch S.A. v. New City Inc., -- F. Supp. 2d --, 2006 WL 2854400 (S.D. Fla.)

Swatch has an exclusive US distributor for its watches. Defendant is not that distributor, but still sells (or sold; see website) Swatches imported from abroad. The packages are altered (missing product reference numbers, stock keeping units, bar codes and batch codes) and the warranties are invalid, though Swatch has, as a business practice designed to maintain customer goodwill, routinely honored warranties on such imported watches.

The court found that Swatch had not shown that the package alterations made the goods “materially different” in consumer perception from genuine Swatches, which would take them outside the first sale doctrine, for purposes of summary judgment. The warranty was a slightly different matter: A warranty Swatch is bound to honor is distinct from a warranty that Swatch honors only as a matter of business practice. However, Swatch submitted no evidence that this intangible difference is material to a consumer’s purchasing decision. Thus, summary judgment was denied on the trademark claims.

Swatch’s copyright claims fared better – because the goods were not reimported but imported, they were not covered by first sale, and unauthorized sale in the US counted as infringement.

So, too, did one of Swatch’s false advertising claims get close to success: Defendant’s website FAQ included the question “Do the watches have a warranty?” The answer was, “Yes, [t]he warranty is handled directly by the manufacturer.” Because an invalid warranty isn’t a warranty, the court found this claim false. Materiality is determined by whether defendants misrepresented an inherent quality or characteristic of the product. Whether a warranty is in fact material was a disputed factual issue. Swatch provided statements from company representatives that warranties provide additional value to consumers, and pointed out that defendants thought it important enough to put in the FAQ; the court found this argument compelling but insufficient to entitle Swatch to judgment as a matter of law.

Some courts hold, with the FTC, that making a claim explicitly in advertising is evidence that the advertiser considered the claim material, and advertisers can be presumed to know their customers’ preferences. Whether that doctrine still applies in an age where a website can answer any question, from the serious to the trivial, has yet to be addressed. I’ve seen some pretty trivial FAQs. That said, my instinct lies with Swatch on this one.

Madness and credit

Clauson v. Eslinger, -- F.Supp.2d --, 2006 WL 2848118 (S.D.N.Y.)

Eslinger wrote the script for the film Madness and Genius when he was 13. He began pre-production in 2001; the completed film has garnered positive reviews. In the interim, after dismissing two producers from the project, Eslinger met Clouson at an NYU gym and asked if he wanted to help out with the film. The parties never discussed how plaintiff would be credited. Clouson performed a large number of complex administrative tasks in pre-production and production. Though on small budget films the role of producer and line producer are hard to distinguish, industry texts and guides indicate that “budgeting, fundraising, scheduling, crew assembly, location procural and other like tasks” of the sort Clouson performed are the line producer’s job.

Documents prepared by Clouson listed him as producer. “A contract between the two also listed plaintiff [Clouson] as producer of the film, although defendant contends that he was coerced into signing it.” Clauson, however, forged Eslinger’s signature on a Screen Actors Guild ("SAG") contract, indicating that Eslinger was the film's producer, which apparently makes Eslinger liable to SAG (and has negative effects on Clauson’s credibility).

Clouson’s involvement in post-production was less extensive than his earlier involvement, and the parties agreed that post-production work is fundamental to the producer’s job. After Clouson’s work on the film, he posted a resume on an industry website advertising himself as a line producer, but also referring to himself as a producer. When the film appeared in the Toronto Film Festival and in other submissions to film festivals, Clouson received no credit at all. Both parties have contacted the Internet Movie Database (IMDb), “a database used in the film industry to check resume accuracy,” and currently lists Clouson as line producer and coproducer and Eslinger as producer.

Clouson wanted an injunction against any use or performance of the film until he was listed as producer in the credits and all promotional material, and remedial measures requiring Eslinger to reach out to reviewers, etc., giving him credit, including taking out an ad in Variety for three weeks in a row.

The record evidence on the identity of the actual producer was mixed, so Clouson wasn’t likely to succeed on the merits and wasn’t entitled to injunctive relief.

Clouson’s contract claim, however, survived dismissal because he adequately alleged a contract between the parties requiring him to get credit as producer. In addition, the court refused to dismiss Clouson’s false advertising Lanham Act claim, because he alleged that the film’s credits and promotional materials “wrongly credit” Eslinger as producer. The court failed to discuss whether the misrepresentation could be material. There’s also a question of standing, though perhaps easily met if the parties compete in the market for producer services. But if Eslinger only produces his own movies, then we may be in a situation like that of the designer previously discussed, where a court found that a firm that only designs and licenses creative works doesn’t compete with a firm that uses those creative works to produce products – even though, for all we know, the firm does some of its own creative work in-house. In other words, in an industry where some firms are vertically integrated and some aren't, competition may be more difficult to determine.

Design piracy case survives Dastar motion to dismiss

Gail Green Licensing & Design Ltd. v. Accord, Inc., 2006 WL 2873202 (N.D. Ill.)

The relevant facts: plaintiffs allege defendants copied its unpublished, copyrighted designs for pet clothing/costumes. The court dismissed the false advertising claim because plaintiffs didn’t compete with defendants. In Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999), the Seventh Circuit concluded that a plaintiff that was in the business of creating and marketing cartoon characters lacked standing against a football team, and that rationale applied here.

But the court refused to dismiss the passing off claim. Plaintiffs allege “unauthorized and unlawful uses of pirated copies of Plaintiffs’ original Works on various goods” that omit to state that defendants’ “counterfeits” are unauthorized, which constitutes false and misleading representations that defendants’ goods bear plaintiffs’ authorized designs. This is a clean kill under Dastar, which the court somehow didn’t recognize. The court may have gone off the rails by applying an intervening Seventh Circuit decision discussing the fact that physical products like Ford cars often incorporate the products of other manufacturers, and applying Dastar to hold that there’s no deception if the consumer can tell that the overall finished product comes from the seller. The court thus read the complaint broadly and said plaintiffs didn’t fall within Dastar.

But the Seventh Circuit gloss addresses a different facet of “origin” than the precise issue in Dastar, and in this case: the complaint clearly alleges that defendants produced “copies” of plaintiffs’ designs. As such, those copies have their origins with defendants, because "origin" in the Lanham Act refers to physical provenance, and the complaint cannot fairly be read to say that defendants took plaintiffs’ physical products and incorporated them into new products. Defendants’ argument did not correct this error, perhaps because they argued (correctly but distractingly) that retail products of this sort are the product of many designers’ decisions, not a single creative force. It’s true that selling a t-shirt without naming every designer who contributed isn’t a false statement of origin – but that, under Dastar, is because the designer didn’t physically produce the product.

So this claim that should have been knocked out at the motion stage will have to proceed to summary judgment.

Higher litigation

I previously reported on CollegeNet v. XAP, in which two college-application services, who received their revenues from two different sources, were in litigation. Eric Goldman pointed me to this story from the Chronicle of Higher Education reporting that a jury awarded $4.5 million to CollegeNet on its Lanham Act claims, as well as $4 million on unrelated patent claims. Both parties will appeal, since some of CollegeNet's patent claims failed.

The Chronicle has another story about a false profile created by a marketer on Facebook. (See also the Washington Post story.) In this case, the marketer made off with 300,000 email addresses before its false identity was discovered, and its "friends" soon received spam touting the marketer's wares, though the marketer denies involvement in that. College students aren't that litigious, but I've got to believe that there's a class action in there somewhere.

Why we buy -- or don't

MapInfo Corp. v. Spatial Re-Engineering Consultants, 2006 WL 2811816 (N.D.N.Y.)

The parties, who make computer software, are former partners whose relationship deteriorated into a six-count complaint and fourteen counterclaims. They initially agreed to develop a version of SRC’s proprietary software integrated with MapInfo’s proprietary data, creating a joint product marketed under MapInfo’s trademark. Eventually they agreed to terminate the partnership, and then MapInfo sued.

This opinion caught my eye because of a dispute about expert witness testimony on disparagement claims. The court precluded expert witness testimony on damages stemming from defendant’s false advertising/disparagement counterclaim, because plaintiff produced affidavits from many of the relevant customers that plaintiff’s negative statements didn’t affect their purchasing decisions. The court found that (apparently brief) expert testimony about the subconscious way that negative advertising and disparagement work was insufficient to create a material issue in the face of these affidavits. Because defendant couldn’t show any harm, therefore, its damages claims – Lanham Act as well as state law-based – were dismissed.

This turns out to be yet another subtle way in which the Lanham Act relaxes the standards of liability from the common law. In a Lanham Act case seeking injunctive relief, even when the plaintiff is required to show that consumers perceived a false message (implicit falsity), the plaintiff is not required to show that consumers believed the message. If it’s a material claim, consumers are presumed to have been deceived. This is consistent with a lot of consumer research that shows that people are terrible at giving the actual reasons for their decisions. Sure, they give reasons, and the reasons sound plausible, but they’re often quite wrong, as researchers have shown experimentally by manipulating the very factors consumers say are decisive and finding no differences in consumer choices. That said, it’s entirely understandable that courts would credit specific purchasers’ testimony about why they chose a particular competitor. If they didn’t, the entire truth-finding enterprise could be at risk. More generally, false advertising and trademark cases are at heart probabalistic – likely confusion, likely deception – and evidence of actual confusion/deception is not only hard to come by, but potentially irrelevant.

Now leaving Sunnyvale: Second try's the charm

FreecycleSunnyvale v. The Freecycle Network, Inc., 2006 WL 2827916 (N.D. Cal.)

Plaintiff sought to dismiss defendant-counterclaimants’ counterclaims. Plaintiff originally sought a declaratory judgment of noninfringement and non-tortious interference with business relations. Defendant claims to own the inherently distinctive and famous trademarks FREECYCLE, THE FREECYCLE NETWORK, and the Freecycle Network logo.

Defendant’s § 32 infringement counterclaims were dismissed earlier because defendant has pending federal trademark applications, not registrations. (Discussion here.) Defendant filed amended counterclaims attempting to address other deficiencies the court found in its first try.

This time, defendant’s infringement counterclaim adequately specified its allegation that its marks were inherently distinctive; it need not go further and specify whether it claims the marks to be suggestive, arbitrary, or fanciful. And it adequately alleged contributory infringement by stating that plaintiff “has willfully and intentionally induced third parties to infringe the Marks by encouraging others to misuse the Marks in the form of verbs, adjectives, gerunds, and participles ... so that this misuse will result in the Marks being rendered generic ... [and] for the specific purpose of rendering them unregistrable.” I’m still not sure there’s a cause of action for this – that’s not contributory infringement, which requires an underlying infringer to be using the mark as an identifier for its own goods and services. If plaintiff is assisting other parties to use “freecycle” as a term for their own free exchange services, that could do the trick, but that’s only a subset of encouraging general “others” to use the term generically. However, the court rejected the idea that plaintiff’s status as a moderator for a website that encourages others to use the “Freecycle” marks without permission is sufficient to satisfy contributory infringement’s “supplies a product” test; defendant can’t proceed on that theory.

Further, defendant adequately alleged direct infringement by plaintiff’s own use of the term and logo.

Defendant has now specifically alleged that the parties compete, allowing it to proceed on its false advertising counterclaim. I’m not sure what the false advertising here is other than trademark infringement, because the court doesn’t set forth the alleged falsehoods. If the falsehood is that “my competitor’s trademark is invalid,” that’s an interesting variant on “my competitor is infringing IP rights,” a claim that usually but not always survives motions to dismiss. Materiality seems questionable here, even more questionable than “my competitor is infringing,” which at least suggests some risk that the competitor won’t be able to continue supplying the relevant product.

Plaintiff renewed its SLAPP objections to defendant’s state-law unfair competition counterclaims. Defendant argues that plaintiff’s conduct with respect to the “Freecycle” marks is illegal, unfair, and fraudulent. The court found that the facts alleged, if true, would substantiate the claims.

Works in progress: Jasmine Abdel-khalik

Jasmine C. Abdel-khalik, Timing is Everything: Of Trademark Applications and Post Registration Limitations to Scandalous and Disparaging Trademarks: A scandalous mark can serve as an excellent source identifier, as the owner of the Pink Taco restaurant can testify.

This paper: Once a mark has been registered, what happens if it becomes scandalous after registration or is scandalous in a foreign country?

Justifications for the prohibition on registering scandalous marks: avoiding a government imprimatur; avoiding a waste of government resources; chilling commercial speech. That last is really what it’s about, regulating morality. One thing not on this list: protection of competition. That’s what makes it stand out in the statute, which means it should be treated uniquely to effectuate its purpose to channel commercial speech. We could debate its normative appropriateness, but it is the statute that we have and we need to apply it consistently.

The current system, as explicated in Harjo, doesn’t look to subsequent changes in the meaning of the mark, which means you can hang on to your newly scandalous mark. This is insufficient, because terms can change meaning. One example is when speakers of another language move here in great enough numbers that the doctrine of foreign equivalents applies and the mark is scandalous to them – like the American “OK” sign. But meaning also changes within a language. Not unrelatedly, power structures can change: people who previously would not have been able to make a claim of disparagement or oppression get the ability to do so. Groups assert offensiveness as a means of showing their existence and power. Change in social norms is a third related component – the groups’ claims to reflect public opinion can become more plausible.

The treatment of scandalousness should be like that for genericide. Even your investment in your mark won’t protect you if public perception changes to make your mark generic; the same should apply if public perception changes to make your mark scandalous.

Example: “Osama” Hair Salon – now has a really negative meaning that it didn’t create. But because it’s about public perception, this might be an invalid mark because scandalous. But that doesn’t further any unfair competition goals – so should we really import genericide, which is about unfair competition? Abdel-khalik says we should for consistency purposes.

Q: Why not let the market take care of it? The hair salon will probably change its name. (Does it matter whether there’s a core of Osama-supporters who like the name?) Questioner thinks the problem is trying to dig up evidence of what the mark meant at the time of registration; we should instead look at present evidence just because it’s more fair and easier to get right.

A: KKK has recently applied for registrations. We should be able to recognize their awfulness then and now.

David Welkowitz: A generic-risking mark owner has some control over public perception – Xerox took out a series of ads aimed at lawyers & journalists designed to fend of genericity. Johnson & Johnson changed its ads to “Band-aid brand” bandages. That’s not total control, but it’s more control than that available to the Osama Salon or the Pink Taco restaurant (or at least a hypothetical Pink Taco restaurant that’s been around for 40 years, though not the one that’s generating all the commentary).

A: Maybe this is more protectionist than we’d like, but what the prohibition is for is to allow you to avoid hearing your 6-year-old daughter say, “Let’s go to Pink Taco!”

Q: Do you care about knowledge or intent?

A: No. Harjo: REDSKINS was supposedly chosen “in honor of” a Native American on the team. At least some marks are per se scandalous; if we look at contextual evidence, maybe we can consider intent, but not when it’s something like a profanity.

Works in progress: Sean Pager

Sean Pager, Creeping Genericide: The Dilemma of Geographical/Process Certification Marks: I was late coming in because of panel transitions. Processes can move even when geographies don’t. Pager is interested in dual meaning – allowing California wine growers to identify method champagnoise but not to call their product Champagne.

Scott Boone: What’s the problem with tequila?

A: Consumers may not know the significance – tequila is made from a particular succulent cactus, the blue agave. Other agave liquors are not tequila.

Boone: Isn’t that analogous to not knowing who the source is but knowing that there is a source? So it’s not generic even if consumers don’t know production specifics, just know it’s special?

A: Begs the question of what consumers have to know. They know tequila isn’t bread, but if they don’t know that it’s limited to certain types of agave they might think that all agave liquor can be tequila.

David Welkowitz: If you don’t know what constitutes the status of being generic (given that the existence a group of products of different sources with the same certification mark makes it hard to tell what the unifying characteristic is other than the mark) it makes it hard to explain why you’d want to protect the identifier. Are you protecting the standard, or are you protecting the consumer’s understanding of whether there is a standard? The European system as described is about protecting the standard itself and thus the producers, not about protecting the consumer. That’s divorced from the common understanding of genericity, which depends on consumer protection.

A: Protecting the standard still has a consumer protection function, even if consumers don’t understand what they’re getting – they get the tequila to which they’re accustomed. Processes should presumptively matter – ingredients matter – more than geography matters. Processes and ingredients don’t survive and thrive at random. (Though arguably geographic reputation doesn’t either.)

Q: Can you really separate geography from process that way? The process and the grapes and the location all combine into champagne.

A: Wine is a special case because of the mystification of terroir; alcohol is also more generally regulated separately and more controlled than, for example, Roquefort cheese.

Q: Isn’t the real question for the consumer whether the tequila is good? As a factual matter, which actually changes the taste of the tequila, the place or the ingredient?

A: In general, he thinks process is more likely to affect quality than geography, though he agrees that it will vary by product. If tequila became generic, Mexican producers could still advertise “Made in Mexico” in huge letters – one question is whether a genericity finding would make it harder for producers of the original to convey origin information.

Q: We’ve all had good tequila and bad tequila – quality control is not necessarily the issue. Are we looking for some essence of tequila that makes it “really” tequila? If the process can be duplicated in another way, it’s hard to see the value of the certification mark.

A: If you can duplicate the process, he agrees you should be able to advertise your ability to produce tequila.

Q: European view: If I figure out the formula for Coca-Cola, can I market it as Coca-Cola? No, of course not. It’s easy to take products that are already generic in the US, but think about products that aren’t yet generic in the US – the reason for the European system is a different way of looking at the value of regions that produce high-quality products. Famous mark holders existed, but couldn’t be protected under TM because they were a group, not a single source. This is a different way of protecting against free riding on reputation – the logic is the same as TM but the mechanism is different. If you assume tequila is already generic, protection seems bizarre, but if you look at the people who made it famous, created something of value, and still make it now, exclusive rights make more sense. (Note: this European perspective seems plausible, until you get to the ban on “-style,” “-like,” “method,” etc., which is anticompetitive from an American point of view.)

A: It’s like dilution – you protect the mystique of Coca-Cola and the mystique of the traditional region.

Works in progress: Laura Heymann

Laura Heymann, The Trademark/Copyright Divide: Courts are starting to police the copyright/trademark boundary. Maybe we can move some things from the broad remedies of copyright law to trademark, where appropriate relief would be a disclaimer rather than an injunction.

Rogers v. Koons was brought as a copyright case, but what was motivating Rogers weren’t copyright interests in the market for the work, but for association and attribution rights. Another example: Jackson v. Warner Bros. where an Afrocentric artist sued over use of his paintings in the Whoopi Goldberg movie Made in America; he received letters expressing surprise that he authorized the use of his paintings in a movie of that caliber. His interest was more in reputation. Many copyright cases can be seen this way. (A problem I see is that TM law does acknowledge reputation as a reason to shut something up, not just apply a disclaimer – dilution. Also, I’m not sure you can fairly describe copyright as just interested in market harm.)

Creators in these cases aren’t concerned about losing a market they might otherwise want to exploit, but an integrity claim. At least they’re motived by an interest within the realm of TM rather than copyright. (Ah, but then we have to relax “use in commerce” to cover use in a film. As Goldman’s presentation points out, that might be a mistake.)

Courts should pay more attention when content owners try to use copyright to assert reputational or associational interests and should in fact use the doctrine of copyright misuse to force those claims into a TM regime. The second half of the proposal: that TM right should apply even after the copyright term ends. Source identification is important both to creators and to audience members. (Audience members? Did they really care in Made in America?) There’s no reason we need to abandon that importance when we move into the public domain.

Heymann is not proposing that any of these cases will result in a valid TM-based claim. The goal is to end up with fewer claims, and if the result is fewer claims overall that’s fine. But we need to render unto copyright what is copyright’s and unto trademark what is trademark’s. This is a more honest way of letting content owners make claims for what they really care about.

(What do we do with works that have no market, like unpublished letters? Do infringement claims have to be brought as TM claims for unpublished works? Or are privacy interests legitimate non-market interests within copyright under Heymann's scheme? If so, why not admit other non-market interests?)

Second-generation creators end up with what they want, which is the ability to reuse this material, as long as they have disclaimers. When we talk about copyright, we don’t focus enough on the economic interests at the heart of copyright law. (I just think this is wrong descriptively. There’s movement towards attribution in orphan works, as well as attribution requirements in educational fair use, and lots of popular conceptions of fair use refer to attribution – see also Creative Commons licenses, which require attribution.) There are two economic interests: the use of the work itself and the way it’s used, the packaging/the message it sends. But we conflate those two interests when we approach the copyright/TM divide. In other regime intersections, we’ve handled the overlap better – patent/TM, copyright/patent. In Sears, Kellogg, etc. we’ve been able to distinguish expired patents from unexpired TM rights.

As long as TM isn’t trying to do what patent does, create use rights in the article itself, it’s okay to use both, even though TM can be perpetual. Same thing with the patent/copyright interface in Mazer: the availability of patent has nothing to do with the availability of copyright. Yet we have a very different result in Dastar, where the Court cites the patent line of cases for the proposition that the right to copy passes to the public after the patent expires, then just adds in “the right to copy without attribution.”

The main issue that Dastar cared about was applying its rule to the public domain. Right now creators can use copyright as long as they can to achieve control, but Heymann’s proposal would preclude them from doing so.

Just because Romeo & Juliet is in the public domain doesn’t mean you can take a copy from Barnes & Noble without paying or perform it in traffic during rush hour; other legal regimes still apply. (Neither can you hit me with a copy of it, but what does that have to do with anything? Those are about the physical copy/performance, not the expressive work.)

Example: upstart airline starts using Rhapsody in Blue to identify itself, once the song goes into the public domain – it would cause confusion with United. But Dastar doesn’t recognize this. (I would distinguish using a work as a TM for something else as opposed to using a song as a TM for itself, which is what the bulk of Heymann’s proposal is about. Disclaimer remedies, as Heymann proposes, wouldn’t solve the problem with the Rhapsody in Blue example – and that’s because she’s proposing to solve a different problem.)

Eric Goldman: Could United really block another from using that song? Notice that you’ve shifted parties – it’s not Gershwin estate claiming TM rights that overlap with copyright, but someone who never had copyright rights in the work.

A: That matters only if you assume that the copyright owner gives up both copyright and TM at the end of the term – otherwise we treat the copyright + TM owner worse than the TM owner. (But as Goldman pointed out, the Gershwin estate isn’t a trademark owner as we conventionally understand TM ownership. Treating the estate as a copyright-but-not-trademark owner is perfectly rational and nondiscriminatory.) Music may also pose special disclaimer problems. (Does that mean that the estates of composers can get injunctive relief, or no relief at all? Either way, problematic.) Disney can’t preclude all use after Mickey Mouse copyright expires, but it can stop someone from putting a big statue of Mickey in front of an amusement park.

Lemley: TM law can fit in the United case because of competition between the parties. If you believe in the “use as a mark” requirement, most cases won’t end up as TM cases because Jackson, for example, doesn’t involve a TM use. (1) Does that mean you want to broaden TM law to reach that, or (2) whether state law doctrines might come into play, the right of publicity/false light/invasion of privacy tort.

A: Right of publicity is an issue. She’s not looking to expand trademark law. The result may be that claims drop out together. There may be a cognizable TM claim in the Jackson case because people believed he gave permission for the display of the paintings in the movie, though he might lose.

Lemley: Aha, you’re back to expanding “use.” (Like “if value, then right,” perhaps we need to start talking about the “if confusion, then use” presumption in TM law. Or if that concedes too much, “if recognition, then use.”)

A: There could be enough of a use of a communicative product that would be enough – if you used it as a title (Lemley’s example). These claims become successful now because they’re allowed to be couched as copyright claims.

Here are my rather extensive notes on the article, which in many ways replicate my response to the talk: Patent and TM can accommodate one another because most of the time copying an unpatented article won’t be copying a distinctive and nonfunctional trade dress (e.g., Traffix, Wal-Mart). By contrast we can expect courts to routinely treat an author’s name as an indicator of source, even though it isn’t an indicator in the TM sense, especially if we call it a trademark interest.

Did Shakespeare authorize this edition of his plays? That’s a bizarre question from the perspective of authorship in the way that “Did Shakespeare write this play?” is not. In order to avoid massive liability for publishing public domain works, we’d need a bunch of new presumptions, probably drawn from nominative fair use, about the effects of labeling a work as being by a particular author. As with nominative fair use and “de facto confusion” v. “de jure confusion” in functionality, the presence of a particular form – perhaps “by Willa Cather, but this edition isn’t authorized by her estate” – would have to be treated as nonconfusing, without any submission of evidence by either side. But in that case, we aren’t really asking about consumer confusion at all, which is further reason that the game isn’t worth the candle.

Heymann suggests that disclaimers are the appropriate remedy rather than injunctive relief, but that’s not the TM law we have now. She’s really proposing a separate attribution regime. And I wouldn’t mind as much if she did do so, ensuring that disclaimers were the only available remedy. Even so, she acknowledges but does not address the empirical work on disclaimers suggesting they don’t work very well – consumers don’t read them, and don’t comprehend them when they do read them. If a disclaimer is legally sufficient nonetheless, that’s because it’s serving some function other than consumer protection and we’re back to moral right, which does fit within copyright.

Another way to state the problem: TM lacks a materiality requirement. It presumes, because of the connection to a producer’s rights, that authorization makes a difference to consumers, but that is not how the world of publishing works. Authenticity, on the other hand, makes a difference. (There's room, in other words, for both a pirate edition of The Hunt for Red October and an authorized, ghostwritten novel bearing the name Tom Clancy to be "Tom Clancy novels" -- but you will never convince me that the former is not a "Tom Clancy novel.") False advertising can take account of these concerns, much more sensitively than TM.

Heymann’s analogies, responding to objections that her scheme is too complex: orphan works also involve difficulties of attribution, where sometimes it will be hard to figure out who to credit. (1) That’s an attempt to make things better versus a baseline of non-use, with (2) limited remedies. Relatedly, (3) the practical reality is that no one’s going to sue over orphan works because there’s not enough money at stake, whereas there will often be enough reason to sue, or at least threaten suit, when a competing publisher of Beatrix Potter or other public domain work is trying to enter the market. The fact that rights thickets already exist is no reason to make them thicker and pricklier.

A response to some of my questions: Heymann suggests we just have a fundamental disagreement about what people care about when they look at communicative products, whether they care about identity of producers.

I totally agree they care about identity of the author, but they don’t connect that to whether the author authorized the particular copy at issue. What it means to be “by Charles Dickens” is not the same as what it means to be “made by the Coca-Cola Company.” This is what Dastar got right, especially when it left open the possibility of false advertising claims when authorial-origin claims were material and false.

Clearly there's a lot of great work right now about attribution and what it means for copyrighted works. I doubt Heymann and I will ever agree, but it's a good debate to have.

Works in progress: Eric Goldman

Frank Pasquale kindly summarized my presentation here.

Eric Goldman: Online Word of Mouth and Its Implications for Trademark Law: This comes from a synthesis of previous work asking what’s new about online trademark law. Exceptionalism: what’s unique, special or different about the internet? A single answer: The rise of online word of mouth. The universe of products, consumer opinions, and competitor claims is all available for you to see.

The internet enables consumer perspectives to reach beyond traditional physical limits. I’m happy to give opinions to anyone who’ll listen. Offline that’s limited by my social network. Online it’s not. Here is where intermediaries come in, mediating the development and dissemination of word of mouth, such as epinions.com, which had the business model of soliciting and packaging opinions. eBay feedback forums, bizrate/shopzilla’s merchant ratings, etc. These businesses propagate information throughout the network.

The effect has changed the paradigm for TM owners, who used to have a significant degree of control over the content shaping consumer brand perceptions, but online they’re losing that control. There’s increased competition for consumer attention online. The main way people find information is the first 20 spots on a search results page – that’s the ultimate channel for brand information in the marketplace – 10 results of editorial content (algorithmically generated) and 10 paid ads; almost no one goes beyond the first page. Even within this, the top result gets much more traffic than the 10^th. TM owners now have to compete with traditional players, like competitors, but also new people like their own affiliates, consumer opinions, resellers. It’s a zero-sum game, and one that a consumer could win. Consumer opinions now follow the TM owner in a much more direct fashion. (My search for “coca cola” pulled up killercoke.org as the fourth result, discussing Coke’s practices in Colombia.)

So now TM owners have to compete even to have their own say. Goldman thinks this is a good thing. Consumers derive value from peer opinions and value it more than other influences. TM owners should also be accountable for their actions; reputation following them is a good thing because it means accountability. That’s what we need for the market to work!

Problem: TM law can be used to excise online word of mouth – which is another difference from the offline world. If they can, TM owners will get rid of the bad stuff and leave the praise, creating a lopsided information economy. This doesn’t work as a practical matter, since uniformly positive reviews aren’t credible – we reduce the cognitive authority assigned to it. (My reading of the literature suggests people don’t reduce the influence sufficiently to make it worthless – and they certainly don’t backlash – so it’s still worth it for TM owners to try.)

Normatively: We should ensure TM law fosters online word of mouth.

Implications for TM law: Trademark “use in commerce” should not be just a jurisdictional requirement but should have substantive bite. The statutory definition is not particularly logical but none of the interpretations he’s seen are either. Once we acknowledge there’s this thing “use in commerce” we’re not really sure what it means, because it’s hard to divide the world between commercial and noncommercial. In this case, online word of mouth – consumers talking to each other – doesn’t fit neatly, because (1) it can have commercial effect and is part of the marketplace mechanism; (2) word of mouth producers may legitimately seek compensation for what they do, like having a server and hosting a site, just as journalists get compensated for their labor even if they’re talking about brands; (3) intermediaries make commercial referential uses, talking about the brand for their own profit.

Proposed solution: “Use in commerce” should mean that the commercial vendor is using the trademark as their own source identifier, as distinguished from others in the marketplace. If they’re doing anything else, it’s not a use in commerce.

Likely confusion: Initial interest confusion, a sledgehammer against things that include online word of mouth; hugely misguided. The problem is that courts are still struggling with difference between confusion about the product source and confusion about the content source. Usually IIC online is about content source, not product source. IIC has led us astray; we need to go back to product source confusion. Presumption: there should be no likelihood of product source confusion from online word of mouth.

Fair use: Goldman sees it as fairly narrow. When people use fair use to exculpate online word of mouth, it’s a bailout for something that wasn’t a use in commerce in the first place –nominative fair use is too narrow, and not recognized in some places.

Lemley: Beebe’s study is that empirically, only the court’s determination of intent matters. In the context of new uses, that’s enormously manipulable based on the court’s perception of free riding. Lemley worries about the ability of the confusion test to deal with this because we lack a normative baseline.

A: Agree: that’s why definition of use in commerce is our savior, because it takes care of this without fighting over intent.

Mark McKenna: Under current law, we define use as a TM as any use that indicate source, which includes sponsorship or affiliation, which means there’s really no requirement – the question is whether consumers think the entity talking about your product is licensed to do so. If TM owners can convince consumers this is true, you’re screwed.

A: Sure, but use in commerce can fix this.

McKenna: But if “use as a mark” includes “use to identify yourself” and consumers think that talking about a brand indicates that you are affiliated with the TM owner, then we’re back to the problem.

A: Nah, use in commerce can cut this off. (I think this is not entirely responsive. What does affiliation, sponsorship, etc. mean under this definition? Isn’t it gone or subsumed into source and therefore meaningless?)

Works in progress: Jacqueline Lipton

Jacqueline Lipton, Gripe Sites and Parodies in Cyberspace: Framing a Domain Name Policy to Facilitate Free Speech: This paper is part of a larger project on domain name policy. We ended up with the UDRP protecting TM owners and no one else. There are multiple kinds of domain name disputes, from celebrities to geographical indications to political fraud. ACPA does a really good job of what it was intended to do for the most part, as does the UDRP, but many disputes that arise don’t really fall within that sphere, and we need new ways to approach them.

Today’s topic: Parody sites and gripe sites, whether the registrant uses a TM as the domain name or in the domain name. Margareth Barrett has a similar paper; both take a more extreme view than many in the field would. Where the papers differ is Barrett’s belief that the courts can balance the TM factors; Lipton likes legislation and guidelines, even if that’s not all that realistic in the US.

Lipton uses a hypothetical, set forth fully in the paper, about law students who start a gripe site about a local restaurant after a bad meal there. Various tweaks – someone leaves a comment on the site recommending a rival steak house; the student rejects an offer of $500 but says “It would take a lot more than that”; etc. – raise interesting questions of commercial use, the applicability of ACPA, the UDRP, infringement, and dilution causes of action.

Courts and commentators have struggled with First Amendment implications. Lipton points out that the only real First Amendment protection in dilution is the “commercial speech” limitation – but many courts have found commercial speech more broadly than Kozinski did in Mattel. There’s nothing specific in the UDRP about protecting values other than TM values. Some arbitrators think free speech must be a legitimate use, but limit that to anything other than “trademark.com” – with no real explanation of why that should be. Is there something special about trademark.com as opposed to trademark.net or trademarksucks.com? Should we presume that’s reserved to a legitimate TM owner? Denicola thinks that’s right, Lipton is not so sure.

We should have a series of presumptions – if they have to be judicially constructed, that’s okay – that would be a sort of free speech zone. If someone other than the TM owner uses trademarksucks.com or a new critical TLD like .sux, we should presume they have the right to do so. Current law evolved without sufficient thought given to the critical and parodic sites.

Bruce Boyden: How significant is the problem? Since PETA, the gripe site people have been doing pretty well. Am I wrong about the trend?

A: There is a trend, but there are still cases, and arbitrations in particular are still finding against gripe and parody sites.

Q: Under recent UDRP decisions, is there more of a tendency to favor the TM owner against the gripe site compared to in recent federal cases, and if so why?

A: Her concern about the UDRP is that it has effectively global reach, and arbitrators defer to traditional TM law. Arbitrations are more deferential to TM owners, and the reasoning is murkier. There is more of a mess in the cheap, inexpensive system, which is probably only to be expected.

Mike Madison: Other areas outside of domain names where law has come up with a good guidelines or standards based way of accounting for First Amendment interests. We end up using case-by-case balancing in copyright, defamation, media regulation, and similar cases.

A: What we need is a TM-protective zone and anything outside it will be presumptively not TM infringement.

Eddan Katz: What about multilingual domain name issues? Coca Cola in Arabic or Chinese characters – should the TM owner have that right? Where are the boundaries?

A: That’s a great addition to the project. There’s a new .eu domain that needs policies worked out for it. The boundary has to exist to have clear rules and guidelines. The alternative is to have courts do it case by case, which has costs of its own. .com was intended to be a commercial space, but it became a default and now lots of people have .com who aren’t businesses (comment: like me), so Denicola’s proposed rule takes .com back to its foundations.

Q: What about political candidates doing strategic registration of opponents’ names?

A: They’re generally not TM cases, which is why TM doesn’t work. Has a piece on this in Wake Forest. She likes the California cyberfraud statute about misleading in an election campaign context.

Works in progress: Frank Pasquale

Frank Pasquale, Egalitarian Principles for Copyright: Economic analyses that are underrecognized in current IP scholarship. There may be implications for patent, though he focuses here on TM and copyright.

His project borrows insights from environmental economics: models of the commons, of scarcity, and of consumption. How IP can be used as a tool in a competition for position or for scarce resources.

Not all information is created equal. We should give good information, like categorization information (Google) special privileges in the copyright system. Some patents are bad, spam is bad, primarily position-enhancing information. Classic example of positional good: People in the front row at a football game who stand up to get a better view, forcing everyone behind them to stand up. Social harms: if you need a great suit to get a relative advantage, you spend money on a suit, but then everyone else needs to do so too and you end up with a social loss and no one better off. (The Star-Bellied Sneetches and the Plain-Bellied Sneetches.) Information can be this way, as with proprietary databases that help lawyers do forum-shopping, producing advantages against underfinanced opponents.

Second concern is not economic but philosophical: this amounts to an unfair commodification of advantage. No social good X should be distributed merely on the basis of characteristic Y – you shouldn’t be able to buy your way into the best college.

Replies to the economic critique: no quantification of positional effects. But there’s very little law resting on direct quantification of costs and benefits. We seek heuristics, rules of thumb, considerations.

There’s an inevitable mixture of intrinsic and positional goods. Parents will always buy tutoring for their kids if they can. But we can discourage this behavior.

How to disaggregate positional value and intrinsic value? Leveling up strategies – we want to make the good accessible to everyone. Leveling down – to no one, when we just want to render valueless the primarily position-enhancing information. The two bad things to avoid are wasteful competition (where lots of people are using the PPEI) and unfair competition of advantage (where inequality is persistent).

Poster child for PPEI: Ivywise Application Packaging, which produced Opal Mehta and got the author of same into Harvard.

The value of a positional advantage is inversely correlated to its pervasiveness, which is directly correlated to its equity. As the advantage becomes more widespread, it becomes less valuable, but may still incur the same cost/effort. So why not short-circuit the process? South Korea tried to ban private test prep, but it was overturned by the supreme court. This is an example of where you want more leveling up.

Leveling down: Mandatory disclosure of use and cost of services – for college applications, court filings, and the like.

Level ing up: Increasing access by decreasing copyright protections. Test prep questions and material shouldn’t be copyrightable. There will still be incentives to pay for the teaching, but spreading the questions will make help more accessible.

Another option: Encouraging price discrimination to help people who couldn’t otherwise afford it – but a very aggressive regulatory posture to make sure the price discrimination is reaching people. Encourage the socially valuable, education aspects of services like realistic college counseling, but share the competitive benefits.

At least with PPEI, the “more innovation” that we’d lose from decreasing protection isn’t that valuable.

Josh Sarnoff: John Adams has relevant discussion about leveling up (universal public education) and leveling down (prohibiting ownership of knowledge, though not copyright itself, and relying on reputational interests).

A: British Parliament once introduced a bill making it a crime for a book not to have an index!

Mark Lemley: Relatively paternalistic view of how people should be allowed to spend their money. This makes me nervous. At a minimum, you need to think about administrability of government involvement. Which trademarks and copyrights are to be extirpated?

Michael Carroll: It’s hard, but at least we can think about parts of the system where IP rights aren’t functioning as they’re supposed to.

A: Expanded fair use for test prep is interesting – some great legislative proposals about truth in testing, but copyright owners claimed that tests were trade secrets.

Carroll: Having represented ETS, we did use copyright to go after the test prep industry for copying tests.

Michael Madison: You could distinguish based on how concretely the good itself is defined. How do people use and value particular information?

Q: The law & econ question is whether we should encourage production of information that will divide us instead of unite us – this question comes up in contract law, whether information is something that will just allow one party to extract rent from the other. Do we let people keep information private, so they’re encouraged to invest? At what point does that become socially harmful?

Glynn Lunney: Obvious applications in trade secret law of how much you have to invest in protecting the secret. In terms of social value, luxury TM goods can be a form of negative externality: you buy the expensive car so you can show others what they don’t have. But we as a society seem to value that ability. We have manmade diamonds that are better quality than natural, but the natural diamonds command more in the market. If owning a diamond is just a signal of how much money someone has, why not just tax 75% of the price, since who cares whether the seller or the government has that money?

A: Why not just have people put a sign on themselves saying “I’m rich”? It only works because it’s indirect.

Sarnoff: Adams says the aristocracy is necessary to the government and the people, so he was not in favor of leveling property though he was in favor of leveling pure information.

A: Status signalling is an important topic and there’s good historical work on it.

Works in progress: Peter Winn

Peter Winn, Unauthorized Access, Computer Trespass and Privacy: Really interesting, though beyond my core field.

Winn is examining the CFAA and Stored Communications Act (federal), plus state and foreign unauthorized access statutes. What is the meaning of “unauthorized access”? The problem is one of overbreadth, as also occurs with concepts of trespass to chattels in cyberspace.

Two approaches: One way is to say that the legislatures were trying to address hackers, outsiders breaking into a computer, like burglary. The other way is to say that the statutes are intended to protect information in the computer system (which means that insiders can violate the law too, like a houseguest who pockets the silver). Many courts have interpreted the statutes the second way.

Very first case in which hacking was addressed, U.S. v. Morris: Morris was a grad student who created one of the first internet worms in the late 1980s. Morris was prosecuted under the 1986 version of the CFAA; Morris’s defense was that as a grad student at Cornell he had privileges to access the internet, and he designed his program to access the other computers in that system just as they were designed to be accessed – just as the code allowed him to do.

It’s a stupid argument at some level: that wasn’t the way they were designed to be accessed, because the programmers didn’t anticipate what he was doing. But from the machine’s viewpoint, there wasn’t any difference. The Second Circuit rejects Morris’s argument. You have to reference something other than the way that the code was designed. The Second Circuit was referencing norms – if Morris had called up the owners of the hardware and said what he planned to do, they probably would have told him “no.”

If we’re working with unwritten norms in the core cases, we get the expansionist cases – mostly civil cases – now companies sue former employees for taking customer lists with them. We’re no longer in the world of hacking, but courts are still applying intent standards and finding unauthorized access. Also with scraping a competitor’s website. Most interesting case: A law firm that issues an overbroad subpoena of an ISP where the opposing party has its email server, and gets the ISP to give them all the email without notice to the opposing party. After the firm was sanctioned, the employees whose emails were obtained filed suit against the person who issued the subpoena, and the 9^th Circuit rules they have a cause of action under the CFAA and under the Stored Communications Act.

When courts go beyond hacking, they’re using the idea of trespass in the internet context. Using it against employees subverting confidentiality, hacking, competitors all fits this model. But the employees whose email was searched have no possessory interest in the email stored at the ISP, nor do they have a leasehold, since the lease is their employers’. This is a case about rights in pure information. There’s a long line of 4^th Amendment cases recognizing standing for a constitutional trespass based on a purely privacy/information-based interest in not being surveilled, and the 9^th Circuit borrows from that line.

Why don’t we have a nightmare of overprotection in the digital world? Indeed, a lot of people who’ve written about this suggest that we’re shutting down the free flow of information. The solution: (1) We’re applying common law trespass to this idea of unauthorized access; let’s look at the common law, not trespass to chattels but trespass to real property and the time when trespass was a general cause of action for what we now call tort. The trespass to real property cases do not allow owners to dictate all terms. Particularly with property like inns that is private but open to the public, it is really very hard to bring a trespass case – a person who goes into the inn intending not to pay for supper is not a trespasser. A federal agent who goes on to private land where the owner is illegally selling liquor out the back is not a trespasser. If there’s a community practice of presumptive consent, then people can come hunt and fish on private land. Courts try to balance property and reasonable, appropriate uses of the property by the public. The common law wants to have it both ways. Posner decides a case about ABC, which promised not to do ambush journalism or hidden cameras and does just that to an opthalmologist who sues for trespass. Even in the face of fraud, there’s no trespass because fraud doesn’t go to the basic interest trespass was designed to protect.

(2) The need to reference something else: if you bring a trespass case, you’re referencing the system of property rights. Courts in expansionist cases are not simply allowing the business owner or the email senders to sue because they don’t like the defendant, but rather because they can find specific common-law torts and trespass is used to translate those into internet law. The proposal to shut down common-law rulemaking is to restrict the meaning of unauthorized access to code-based circumvention: regulation by nerds. Winn thinks instead that we should let the courts work it out. New Zealand has a very tight definition that doesn’t allow common-law rulemaking. But other Commonwealth/US courts are doing a good job of balancing the interests. If you ratchet it down to code-based circumvention, you’re just transferring the decision about what’s authorized to the nerds from the judges. And it means you can’t protect the privacy of third parties as with the email case, because only the owner has the incentives to create a code-based protection. (I’m not sure I buy this, since the owner has incentives to create code-based protections in order to make its hosting more attractive to consumers. And I’m far from certain that it’s a good idea to make competitors liable for scraping a site when it’s not trespass for them to acquire a printed catalog with the same information, even if they acquire that catalog by subterfuge. In other words, “balancing the interests” gives courts another way to go after what they think is unjustified free riding, which they are all too willing to do.)

Winn points out that there are alternate privacy protection regimes: you can put duties on information collectors to manage information responsibly. So we don’t need to do it this way. Right now, he says, third parties don’t have a cause of action against the privacy-violator along with the info-collector who allowed privacy to be violated, but I would find that a much better solution to the problem he cares about than relying on the flexibility of the trespass doctrine, which as he acknowledges is not traditionally about protecting third parties’ interests.

Works in progress: Scott Boone

Scott Boone, On Virtual Property and Copyright: His followup project to this, incidentally, is called “Han Shot First!” Which is great.

As we move from physical copies to digital copies, the personal property part of the balance between copyrights and rights in the copy has dropped out of the equation, as if all there is is the copyright: there aren’t copies any more. Boone is seeking a return of the property balance. Can the idea of “virtual property” bring personal property back into the equation?

By virtual property, he means property rights in virtual objects. There has been some previous work on virtual property, and more work on property concepts like trespass applied online.

Fairfield’s formulation of virtual property: it is rivalous, persistent over time, and interconnected (including across servers). Examples: email addresses/accounts, URLs, websites, chat rooms, virtual world objects.

How does this relate to copyright? Look at virtual world objects, in MMOGs where people interact in a persistent, 3D environment. World of Warcraft has 7 million subscribers, maybe 3-4 million unique players. The objects in these games, like weapons or houses, may or may not be subject to personal property rights. There’s a huge real-money market for transfers of these objects. But who really owns the rights? Game producers sometimes attempt to shut down outside markets. Korea and China have granted some sort of rights to players even in the presence of contractual agreements.

That transfer of a virtual object from one player to another doesn’t violate any copyright rights. There’s no copy made. (I really wonder about this. If RAM copies count, why doesn’t this?) It’s not a distribution – it’s either first sale or not a distribution in the first place.

There’s no inherent conflict between virtual property and copyright, at least no more conflict between personal property rights in a traditional copy and the copyright. There’s no experiential difference between virtual world objects and digital copies. Thus, if virtual world objects are rivalrous, why not treat them the same as physical property? Rivalrousness, or the lack thereof, exists at the level of code and code can create rivalrous virtual world objects – even if it is not likely with the current state of code. (So, technological measures inherent in a game can prevent the duplication that made copyright owners so leery of “digital first sale.” But I imagine that copyright owners would fear circumvention – not to mention the real objection, which is of course that they don’t like first sale in the first place, and if they can avoid injecting it in a new world order they will do so.)

Questions for discussion: At what point is a digital copy sufficiently rivalrous to merit property rights? Is a publicly ordered property system preferable to a privately ordered system of contracts and technology?

Q: Is there really no copy made in a transfer from one to another?

A: When Cartman sells a hammer to Stan, there’s no additional copy made, because Cartman ceases to have that hammer and Stan now does. The code that manifests the hammer exists on every player’s computer. The ability to use the hammer is the authorization that’s passed, which exists on the game company’s server. Unlike sending an mp3, no additional copy exists as the result of a transfer. Rather, just rights to use and control and exclude are transferred – built in at the code level.

Eric Goldman: What about the contract?

A: That’s the public ordering/private ordering choice. Contracts do cover all these instances, so the virtual property issue may never come up.

Eric: Authorization to create a derivative work – that’s a contract that shapes the scope of rights in a derivative work. We have a foundation that’s contract based and assets are created on that foundation. But the contract is still king.

A: It’s true that many game corporations have stepped in asserting their contracts. But we could say that game companies couldn’t put restraints on in-game alienation.

Eric: We already have an example of a legal system where the contract trumps (or channels) the rights in copyright – derivative works. What’s so special about virtual property?

A: The default rule is different, §109A. Digital property has the potential to be the same as physical, which makes the default rule of who has control that of first sale. That’s the difference – the non-contractual allocation is different than that for the right to control derivative works.

Beth Winston: Dan Burk has some articles on comparing seed and genetic use restrictions and the incorporation of the contract into the tech as compared to DRM.

A: The terminator gene is another place where we see the same questions arising.

Bruce Boyden: Within the game, the game designer has created some property-like aspects to objects within the game. But the game designer could change that.

A: And Second Life has!

Bruce: So it’s completely within the game designer’s choice – the question is who do you have property rights against. It seems unlikely that you have rights you can enforce against the game designer – and if you did, as the result of your participation, then Jack Balkin’s article on virtual liberty suggests there are free speech implications. (Boone and Boyden dispute whether the speech interest supports player property or not – Boyden says that player ownership would harm the game designer’s ability to speak, whereas Boone points out that player ownership would improve the player’s ability to speak. There is a tradeoff, but my reading of Balkin leans more toward Boone’s, since the player corresponds here to the citizen and the game designer to the state, whose “free speech” interests are at best fraught and instrumental rather than foundational and inherent.)

A: Boone hasn’t answered whether property rights added to contract and tech would be a good idea. If you start to go down the property route, you may start to dictate the technology, which could be a strike against virtual property.

Brett Frischmann: What’s the basic policy payoff? Should government intervene?

A: If digital copies are rivalrous, we should look at bringing personal property rights back into the discussion.

Brett: So you’re indirectly making the case to improve the infrastructure for DRM, since rendering digital objects rivalrous would allow this change.

A: I’m not advocating this change, but I want to consider it if the technology moves in that direction – property could moderate the effects of DRM.

(Seems to me that despite copyright owners’ fetish for control, game property is already at least as rivalrous as, say, music CDs. Those are subject to first sale even though they’re easy to copy and often copied – whereas game property, as far as I have heard, is only occasionally hacked.)

Works in Progress: Peter Yu and David Welkowitz on Human Rights and IP

Peter Yu, Reconceptualizing Intellectual Property Rights in the Human Rights Framework: Conflict or coexistence between human rights and IP? If there’s conflict, should human rights take precedence? Or are there enough safeguards in IP that there is no conflict? See, e.g., U.S. cases finding that copyright accommodates the First Amendment with built-in limits. Is IP a human right? This is connected to whether IP can be easily analogized to real property.

Lessons from basic human rights documents: (1) IP has always been controversial within international treaties. (2) There are multiple dynamics – the Cold War leads communist countries to reject protections for private property; hesitations about using UNESCO for copyright when there’s a plan to push for broader protections in a separate proceeding later (Berne). (3) Many of today’s issues have been explored in the 1950s, and we’re rejuvenating old, forgotten debates.

Moral interest: Protecting integrity or attribution. A lot of people who are pro-access to knowledge want to use human rights to preserve access, but a human rights regime would offer strong moral protection, working against their ultimate aims.

Material interest: Does right to property always mean right to private property? The treaties are not clear – property can exist as a right of a group. A lot of the communist countries wouldn’t agree to private property protections, so the treaties don’t specify. Other considerations: remuneration for scientists doing research, when many countries didn’t want to have to give them individual patent rights.

Treaties focus on “just remuneration for labor,” and also mention protection of the moral interest. They aren’t protecting full economic interests in IP. Property rules or liability rules would be acceptable under these treaties.

We could have a human-rights-based compulsory license, combined with just remuneration. But we assume that people have money to pay for a license. That might not be true. Freedom of the press belongs to those who own one? Also, when we emphasize compensation, we may overemphasize the material interest over the moral interest. Perhaps appropriate credit or appropriate disclaimers would be more appropriate.

Alternative: a “core minimum” approach. In human rights, there are resource constraints, and lots of countries can’t fulfill their obligations, but they may nonetheless not violate human rights treaties. The core minimum approach says that you have to devote the resources you have to your obligations. Drawbacks: if you focus on core and keep on expanding, no guarantee you can figure out where the boundaries are. We also don’t know what the priorities are: countries need a lot of different things, not just IP. Finally, core minimum means that we don’t look at the relationships between the various human rights. If you can apply core minimum to IP, why not to the right to health, education, or food? Why not use that to expand IP given that a core minimum protection for education etc. exists?

Progressive utilization approach: Need to keep expanding protection based on available resources. Yu proposes seeing it as a sustainable development regime: use IP to empower people and progressively expand rights. Three-step balancing: look within an IP provision first, then at general IP provisions, then at overall human rights obligations.

Challenges: (1) Human rights ratchet. Dangerous ideas about property will be imported into IP. You’re elevating the importance of IP to that of human rights, and that is dangerous. Yu responds: There’s always limited protection, and countries need not protect to the limit. Also, when we talk about protecting moral and material interests in IP, we are not talking about importing the whole US apparatus. Things like work for hire and rights to employee inventions are not human rights because they apply to corporations.

(2) Institutional capture. IP rights owners are more likely to have resources to manipulate the human rights community. But those corporations are already part of the discussion, using NGOs to influence process. Also, Yu thinks the human rights regime is robust and could fight against capture. And if we can get big players to think about food, access, and development, that’s a good thing. Language used in a human rights forum can spill over into IP, as after Doha when people are talking about rights to health and about access to knowledge.

(3) Cultural relativism. Are human rights just western imperialism? Yu doesn’t think so – others participated in forming treaties. Human rights aren’t fixed. Protection for indigenous groups and women has expanded. Also, the US is opposed to putting IP with human rights, as are other western countries. Is the US stupid? If not, maybe developing countries should persist in pushing for linkage.

Don Chisum: The French Revolution treated authors’ rights as basic rights, so there’s a history in the west as well.

David Welkowitz, Privatizing of Human Rights? The Application of the European Convention on Human Rights to Intellectual Property: A lot of attention given to human rights in the IP context has been about conflict – how can we limit IP by using human rights terms? Using public law to limit private law. From an outsider perspective, we may be entering a situation in which private actors with IP interests, including nontraditional IP holders, may be seeking human rights as a means to create and enforce IP rights.

Why the European Convention? It’s a good starting point because it’s fairly widely adhered to, 46 countries strong. It also has an accessible jurisprudence: judicial interpretations, cases, all the things US lawyers find familiar. Ironic, because most countries involved in the Convention are civil law countries. But case law is infiltrating into their system.

Article 8, privacy.
Article 10, freedom of expression: often invoked as counterweight to IP
Article 1 of the first protocol: Protection of property – every natural or legal person is entitled to the peaceful enjoyment of his possessions

Could argue that article 14’s antidiscrimination provisions also apply to IP, if for example trademark law discriminates against celebrities.

Von Hanover v. Germany, ECHR 2004 and Anheuser-Busch v. Portugal, 2006.

Von Hanover is the ruling family of Monaco. Princess Caroline is the object of a great deal of attention, frequently photographed in public and in private. This case involved a series of photos published primarily in Germany. Technically she sued under French law, but she sued in Germany. Germany’s Basic Law has a right to privacy. After not much success below, she reached the federal constitutional court. The German court found that she was a public figure and has to tolerate a certain amount of interference with privacy. There is a recognizable public interest in receiving information about her as a celebrity, even if she’s not a ruler and even if the public is mainly interested in entertainment. The court enjoined publication in France under France’s far more protective laws, but under German law she was entitled to have some pictures suppressed (pictures with her children, and pictures of her in a “secluded” place like a restaurant) but not pictures of her in public – even when a telephoto lens had been used to get the pictures. In the balancing the court did, it specifically said the German press was entitled to freedom to maneuver, exercise of editorial judgment.

In the ECHR, Caroline succeeded. The court balanced article 8 against 10. Court didn’t agree with the emphasis the German court placed on her status as public figure. She has no authority and is basically ceremonial, and the pictures weren’t taken as she carried out official duties. And the public has a minimal interest in entertainment value.

In awarding Caroline a victory, the ECHR said Germany has an affirmative obligation to provide her with a civil tort action to protect this right. Implications for IP: we’re used to a private enforcement regime, but this implies the state needs to back it.

Anheuser-Busch v. Portugal: Dispute over the rights to use Budweiser all over the world. The Czech company claims a protectable GI, and A-B claims trademark rights. A-B applied to register in Portugal in 1981, and the Czech company opposed. Negotiations ensued. After 8 years, A-B moves to cancel the Czech company’s GI rights, and succeeds. The TM office of Portugal is then directed to grant A-B a registration. By now it’s in the 1990s. The Czech company appeals based on a 1986 treaty between Portugal and Czechoslovakia protecting GIs; the appeal succeeds.

The ECHR didn’t uphold A-B’s claim, but the case is still of interest. The court agreed that IP rights are “possessions” under Article 1 of the first protocol. The rejection of the claim was narrow: since A-B had applied in 1981 and was immediately opposed, it was really one long application process, in which A-B had merely an expectancy that wasn’t sufficient for a possession. There was a dissent that would have allowed A-B’s claim even though the state has leeway to regulate under article 1 – a proportionality requirement. The dissent thought that invalidating the registration was disproportionate, given that the treaty came after the application was filed.

Welkowitz saw a lack of deference on the ECHR for the decisions of member states. In the IP context, lack of deference allows the court to create a common-law regime, ignoring a country’s own attempts to reach a balance.

Possibilities: A robust right of publicity? Based in dignity interests, perhaps. The alternative is to say that people have property rights in their images. Unauthorized use might be considered interference with possession, creating a private right to prevent such use. There is a contrary decision in the ECHR, in which a beer bottler used a portrait of someone’s grandfather on the beer and the court refused to recognize a right – based largely on the fact that the portrait had been given to a museum and displayed publicly. The court also said that there was no indignity, because the grandfather had been connected with the brewery. He’d been dead for 80 years, which creates further products for the claimant.

TM dilution: It’s possible to see TM dilution as a right under article 1, particularly uses that might make a mark generic – even in a movie or book.

On the other side: Rights of indigenous peoples. If traditional folklore is a property right, that might be a source of an article 1 right against letting outsiders get copyrights or patents on traditional material – individuals can have standing under the law.

Who’s likely to be advantaged? Celebrities are advantaged by being celebrities, famous for being famous rather than famous for a function. Complications for the EU: If the ECJ doesn’t agree with the ECHR, there’s no obvious mechanism for resolving the problem. Also could complicate international IP negotiations, if the rules are enforceable in court decisions and the US has to pay attention to the ECHR.

Will it end up cheapening human rights by injecting too much commercial value into the human rights discourse?

Works in progress: Michael Meurer

Michael Meurer, If You Can’t Tell the Boundaries It Ain’t Property: The project comes from a book by Meurer and James Bessen, Do Patents Work? The chapter is available at the conference website, and is worth reading if you’re interested in the subject.

There is a huge notice problem in patents, varying across types of technology. Claims can be submerged for long periods, amended during the application process without publication, and otherwise hidden. Even when the claims are public, it’s hard to figure out what’s covered, and most businesses don’t bother to try. As opposed to title insurance and E&O insurance for copyright infringement, both of which indicate the existence of mature and predictable markets, patent infringement insurance is essentially unavailable because it’s so unpredictable.

Much infringement is inadvertent. Defendants tend to be large and to invest more in R&D than plaintiffs – in fact, the hazard of patent litigation increases with more R&D. Pirates would do better by increasing R&D and hiding their tracks; this is further evidence that independent invention drives most patent lawsuits, as with the Blackberry. Parties are often in different industries and patent in different technology classes.

The harm of notice failures is greater than the harm of low-quality patents.

Structural features of the relevant industry to some extent drive patent prosecution. Maybe with more valuable technologies drive investment in patenting, but he thinks the causation flows the other way – the cost of defining clear rights changes the property people try to stake out.

Mark McKenna: What about protection by other means? Trade secret, copyright (for software), trademark.

A: That may affect the differences between industries. We may be giving more rights where they’re least needed.

Josh Sarnoff: Blackstone saw the difference between protecting real property, where possession helped give notice, and protecting ideas with embodiments. Abstract claims are used to control presently unanticipated potentials, and that’s just wrong.

A: Software is interesting as a general-purpose technology – along with business methods. There’s an abstractness to the invention which generates more abstract claim language.

Jay Kesan: Your analysis suggests that the only good patentee is one who invests a lot in R&D. You privilege technologies that require a lot of investment instead of the tiny inventor.

A: Independent inventors, nonpublic firms, and universities: We can estimate the patent premium for those different groups; for some of them (university profs) there is essentially no risk. The patent premium for small guys is smaller than the patent premiums for big firms, but the costs are also lower – there’s a net benefit for small guys, whereas there’s a net tax for big companies. Small guys will make most of their money by licensing. Still, improving notice quality would be good for small guys (by enabling licensing?).

Mark Lemley: What is to be done?

A: A rigorous indefiniteness doctrine. If we can’t make the notice function work and if patent isn’t really property, then we shouldn’t have strong injunctive remedies – and this could be industry-specific, depending on how easy to define technologies it is per industry. Even in pharma, the value of patents has declined over time, perhaps because of new problems with biotech.

My comment: I'm a little disturbed by the idea that the licensing thicket that exists in movies is a model for a well-functioning system. Right now, until insurers start accepting the documentary filmmakers' fair use principles, you can get insurance against copyright infringement if and only if you rigorously license or cleanse your film of obvious references to identifiable copyrighted works. This is hardly an ideal system.

The orphan works problem is a separate indication that notice is not exactly working perfectly in copyright. Moreover, the insurance system that works so well for Paramount works not at all for individual/amateur film productions, which now risk discovery by copyright owners if they're posted on YouTube.

What the E&O market shows is that the large-scale commercial film industry can produce works by editing and distorting their products more easily than a big tech firm can avoid patent infringement. But that's hardly a recommendation.

Works in progress: Mark Lemley

Note: I'm not a patent type. The shorthand flew fast in this discussion, and I couldn't necessarily unpack it. Lemley's paper is available at the conference website.

Mark Lemley, The (Unnoticed) Death of the Doctrine of Equivalents: Unrelated story: The CEO of Research in Motion, the company that just paid $612 million on a patent troll, just bought the Pittsburgh Penguins for less than a third of that.

Perceived abuse of the doctrine of equivalents was the troll phenomenon of the 1990s. All patent owners were asserting doctrine of equivalents, swallowing the rule of literal infringement. Courts then created a variety of rules to restrict the doctrine. Most significant and highest profile, prosecution history estoppel limits the doctrine of equivalents. The Supreme Court applies a “foreseeable bar” of surrender of rights under the doctrine.

Great test of how patent world reacts to exogenous legal shocks – 3 different rules for the doctrine of equivalents. Thus Lemley & colleague collected data for the 18 months before and after the 3 relevant opinions, which created a set of over 400 cases. Of course there are limits on using only written cases, but he doesn’t think they’re systematic problems in this data set.

(1) The changes in the rule in Festo had no statistically significant effect on virtually any set of outcomes, even in cases of prosecution history estoppel based on amendments and not arguments. (2) The reason is that by 1998 the doctrine of equivalents was already dead. Patent owners almost never win on equivalents.

Total win rate on doctrine of equivalents is 24%, small compared to theory of efficient litigation and small compared to results in patent cases, where patentees win more than half the time. Somewhat more likely to win in district court (31%), 17% in the Federal Circuit, but that’s an artifact of pre-Festo district courts – they learned from the Federal Circuit. Two-thirds of these wins are surviving summary judgment. Defendants win summary judgment 79% of the time. Less than 10% of cases actually involve final patentee wins.

Subset of cases involving prosecution history estoppel: plaintiffs win 14% pre-Festo, 31% mid-Festo, 33% after Festo. Not statistically significant, and radically counterintuitive. Couldn’t more people be raising bad prosecution history estoppel defenses because Festo encouraged them? No change in absolute number of cases filed. Also, most of these cases had been pending for a while when these cases happened. Finally, the share of cases talking about amendment prosecution history estoppel actually dropped.

Industry-specific differences show up very strongly in the number of cases. Mechanical inventions: 33% overall universe, 62% of the cases using the doctrine. Software: 8% overall, 22% equivalents. Electronics, 8%, 20%. Chemical and biological areas are underrepresented. The doctrine may simply work better in sets of claims that are harder to map to products. But there is no effect of industry on outcomes.

Also tested doctrinal formulations – it turns out accused infringers are happy with the “all elements” rule – patentees win 18% of the time when courts use that formulation, but more often with “function, way, result” tests.

Means plus function won’t help. The patentee won 5% of means plus function cases.

Why did the doctrine of equivalents die? Hypothesis: Markman. Once the Court decided that claim construction was a question of law, trial courts devoted a lot of time and energy to analyzing the literal language, and were usually in a position to grant sj one way or another on literal infringement. If they didn’t reject the doctrine of equivalents, they’d then have to hand the whole thing over to the jury to undo their hard work. Thus they were inclined to rule against the patentee. Unintended consequences of one area of law for another separate area.

Don Chisum: The doctrine may be limping, but it’s not dead. Patent owners and their contingent-fee lawyers look at a Blackberry case and think a 5% chance of winning looks pretty good.

A: Absolutely – it’s hyperbole. “Serious injury” would place at a lesser law review, but perhaps we should change the title now.

Michael Meurer: Empirical work on courts claimed that the doctrine was important to patentee-friendliness in the 1980s.

A: We don’t have the data, but we’re looking at the early 1990s. What we can definitely reject is the idea that the doctrine continues in strength through the late 1990s.

Jay Kesan: In claim construction, you’ve already interpreted the file wrapper and the rest of the history. So you’ve already decided the estoppel question, in a way.

A: But we see that patentees lose cases not just about estoppel, but about any issue of equivalents, including “all elements.” Your theory may be at work, but it can’t be the only reason.

Q: Did you look at argument-based estoppel cases?

A: Yes. The results are the same.

Q: Fed. Circuit developed the “clear and unmistakable” doctrine for limiting claims through prosecution history when assessing literal infringement – making literal infringement easier to find, so why do you need equivalents?

A: That’s true, you’re often not going to get to equivalents if you’ve found literal infringement. Some district courts will do both to insulate themselves from appeal, but they’re usually inclined to make the literal infringement result go in the same direction as the equivalents result.

Q: If patentees are doing so well on literal infringement, maybe only the really weak plaintiffs need to try equivalents.

A: That’s possible – if claim construction is really broad already, then equivalents is only invoked by losers. Our data gathering may be able to help resolve this.

Eric Goldman: What about the claims that did win under the doctrine? Were they a stretch, or a good use?

A: Hard to do that in a statistically rigorous way. The quality of the decisions is all over the map, from one sentence to extremely detailed – a plurality of the cases apply more than one test for equivalents. Without a baseline, it’s very hard to tell whether the cases are “good” or “bad.”

Dennis Crouch: The DOE is a settlement tool, providing fuzziness and allowing for compromise. Does that create a problem with the litigation dataset?

A: How would it systematically bias the dataset? Lemley has problems with the Priest-Klein hypothesis in patent law, but to the extent it applies it should push the win rate to 50%, making the results here interesting.

Works in progress: Dan Cahoy

Dan Cahoy, Confronting Myths and Myopia on the Road from Doha: His interest in the topic grew out of discussions about a potential bird flu pandemic, which could have created a massive need for Tamiflu, a patented product. If the patent had been overridden for public health reasons, which countries should have been allowed to do so and what should they have had to pay for it?

What is the purpose of compulsory licensing? Views have changed over the years. Traditionally it was considered a way to promote home industries, as with the requirement that patents be worked in the country. That’s disappeared as a rationale. The primary rationale now is to increase access to public health. Secondary category: remedial licensing to remedy antitrust violations.

Once access is our goal, the mechanism becomes of interest. Most research and commentary concerns what will trigger compulsory licenses, presuming that the compensation will be low. But compensation is an independent variable from what triggers the license, and looking at it might offer some solutions not otherwise apparent.

Myths of remuneration: (1) license must always be something less than market value; (2) a submarket rate is adequate or reasonable (there are problems determining what reasonable compensation is because a drug is usually just part of a company’s portfolio; what perspective are you going to take, the value of what the drug does for the user or the value of the investment to the shareholders?); (3) remedial antitrust licenses offer a model (punishment for badness isn’t the same thing as licensing for greater social good, and antitrust-imposed licenses are artificially low, often zero, because they’re designed to deter bad behavior rather than to affect levels of involvement in the industry).

His proposal: Move toward default regimes preserving innovation incentives but also access where necessary. Suggests default of market compensation, including in LDCs. Compulsory licensing is not a way to lower prices, but to solve emergencies and permit a relief valve. The model would not be that different from infringement. Under most cases, compulsory licenses wouldn’t be favored – only when a patent owner is charging a supercompetitive price.

If there were an industrial development rationale for licensing, that would change things.

How do we maximize access under these conditions? Under TRIPs, any country can do a compulsory license, and adequate remuneration isn’t defined, so it’s relatively arbitrary. We should try a hybrid: In a pandemic that impacts countries across the spectrum, industrialized countries should pay market rates, developing countries should pay development-indexed royalties, while LDCs should pay no royalty. If we really care about access, LDCs are the ones with no real ability to pay (and thus no potential gain to the patent holder). This would at least allow drug companies to do better predictions.

Works in progress: Mark McKenna

Mark McKenna, Trademarks and Contextual Meaning. Past project: consumers historically weren’t at the center of TM law, and we need a new way of attacking TM law other than saying that it’s gone way beyond consumer protection. It has always been producer-centered, with a thin candy coating of consumer protection to make it more palatable. There has been a substantial change in TM law’s focus, but not the one we’ve been thinking about.

Rather, the concept of the interest to be protected has changed. Trade diversion was the core of the old system; the new system is about protecting brand value. Traditionally, the mark’s purpose was matching, mediating a relationship between consumers and producers. It had no value in itself, only in preserving a flow of consumers finding the products they wanted. Schecter comes along and says that TMs have value in themselves, for reasons related to changing marketplaces. “Buick” means cars and related concepts, rather than simply linking car buyers to GM. Thus its ability to mean deserved protection from TM law.

The mark is now the center of a set of associations, with products receding to the background (if not gone). The mark has many meanings, but none necessarily has anything to do with the product. Thus it can attach to anything and can be harmed by distant uses.

Potential harm to the brand seems to be conceived in two ways, beyond trade diversion: (1) use by a third party not under the control of the mark owner that might create new negative associations that would impact the brand in its own markets – (a) could affect ability to recall the mark unaided, (b) could create new substantive associations; (2) use by a third party limits the scope of possible expansion of the brand, which these days is infinite.

In this new conception, all harm is dilution. Even if we’re saying consumers are confused about association in a distant market, the reason we care is that it might change the nature of what the mark means, which is dilution.

This conception ignores contextual elements, which the marketing literature recognizes. In marketing, context is everything. Most TMs have non-TM meaning. Apple isn’t just a computer (it’s a dessert topping and a floor wax!). Non-trademark meanigns compete if we are exposed to a term in a vacuum. At least Schecter was trying to focus on made-up words. Of course we’re not exposed to marks in a vacuum, which is why it’s not that hard to make the right associations and avoid the wrong ones.

When you start looking at context, whether an association will transfer from one product to another depends on fit between the products, the appropriateness of the association in the second context, whether cues are present to activate an association, and the dominance of the brand in its category (the effect of which is somewhat ambiguous). Dominance is a function of what brands you remember when cued with the category. Marketers want category dominance, but there’s some evidence that, regardless of dominance, use of the mark in other markets actually helps recall of the parent by activating its associations.

The tools of TM law map poorly onto these concepts. Strength measures exposure, not relative dominance. Distinctiveness has nothing to do with dominance; there are many dominant TMs that aren’t particularly distinctive in a TM sense – that’s because marketing is about brands, not about marks. Fame in the new statute isn’t defined with regard to market segment. We need some new tools.

Q: Marketing factors look like likelihood of confusion factors – “fit,” cues, etc. – are consumers going to make the association?

A: Except that in a lot of cases the legal analysis would find confusion where the marketing analysis would find no effect on the preexisting brand. Even if consumers think there’s a relation, they just don’t care – but the likelihood of confusion factors say that the plaintiff wins in that case.

Q: Migrating associations over time: brand managers think of brands as elastic and changeable. How does that affect the analysis? There are a wide range of brands – “Betty Crocker” doesn’t need much context to be identified.

A: Yes, there are a wide range, and a bunch of the dominant ones need context!

Q: Note that online, you may just get a contextless search using a TM term. That may affect the analysis.

A: Maybe. (But as questioner Eric Goldman has so persuasively written, lacking context for the mark doesn’t mean that we should infer confusion or dilution – other explanations are a lot more plausible when the term is used in guiding search.

Q: Is this about confusion or dilution?

A: Once you get to sponsorship/affiliation confusion, it’s only a baby step to dilution, so we should be concerned about those kinds too.

Lemley: Once you take the consumer protection out of the equation, why is it that we want to protect brands? There must be some subset of legitimate interests in brand value?

A: There’s a way to write consumer-centric TM law. But descriptively consumers haven’t been and aren’t central. McKenna doesn’t have a great answer yet – part of this is looking at the harm on its own terms. He’s not sure there’s something real left over.

Lemley: Yeah, but without the consumer, all we’ve got is “If value, then right.” (Which we know is bad.)

Q: What about free riding?

A: It’s not a harm to the market. It’s a potential harm to an individual market participant, but not a legitimate basis for law

My question: This objection to dilution makes a lot of sense. But it doesn’t deal with a separate big dilution problem: Insinkerator, Caterpillar, others who huff and puff when there are negative or humorous references to them. That relates to the fact that this presentation didn’t once use the word “tarnishment.” If you buy the associational analysis, are you committed to tarnishment?

A: Hoping no one would ask that. Harm to a brand can occur from acts that change the associations connected with the brand, so tarnishment is a potentially legitimate harm. There are reasons not to provide a legal remedy, such as the First Amendment, but at least it exists.

Q: That goes back to the question of why we care. Even if the brand owner is harmed, what justifies a cause of action? Maybe the answer in blurring is search costs.

A: He’s trying to call the search costs justification into question. The marketing literature says Buick for shoes won’t interfere with search for Buick for cars.

Irene Caboli: What other reason to protect TMs is there other than consumers? Property rights justification – people will make more of whatever they have rights to.

A: Sure, TM is industrial policy and we should speak in those terms.

Q: Is that compatible with the constitution?

A: Commerce clause these days allows a lot of breadth.

Gerard Magliocca: The standard being applied in many cases is not a reasonable consumer standard, but a dumb consumer (15% dumb) standard. You may have to deal with that to get where you want to go.

A: The marketing literature imagines consumers to be pretty dumb.

Q: Even if associations are nonharmful or beneficial, it involves risk. Why should mark owners have to bear the risk? Especially when noncommercial contexts increase risks to marks more these days, TM owners need some help from the commercial side.

A: Good question – relates to Mark Goldman’s point about mark elasticity over time. We may want to allow mark owners to control (to the extent possible).

My question: I can’t make the property rights justification work for brand value, which isn’t about maximizing the number of TMs created (the usual, not-very-good property justification) but about maximizing the associations in a person’s brain. What does it even mean to maximize brand value? How do we compare that to a situation in which there are a lot of brands, each with some value? It seems incoherent to me.

A: He’s trying to take the harms seriously and to talk about whether they’re real. Maybe they won’t justify legal protection, but we need to define them first, with less speculation.

Works in progress: Bruce Boyden

Bruce Boyden, Copyright’s Middle Ground: The Role of the Player in Creating Video Game Audiovisual Displays. Players control what they look at, what they do (sequence of events), and the like. If the game developer wants to fight knockoff games which don’t reproduce the underlying code but do reproduce sight and sound, can it claim copyright ownership of the display?

Arguably, the display wasn’t fixed by the developer because it changes with play. Also, it isn’t original to the developer because of the player’s contribution. The relevant law was developed in the early 1980s for arcade games, and it was totally favorable to the game developer. There were enough constants and constraints determined by the developer that were the same in any play that the player didn’t have much affect on the display. The court treated them as essentially cartoons with minor player-controlled features. Judge Newman noted that future games might be different, but refused to draw any lines.

We have arrived at Newman’s future. Most games aren’t simple repeating sequences any more. Now players control camera angles and can change the display at any time.

Twenty years ago, Pam Samuelson went through the possibilities: (1) Player ownership of the display (weird result, because the player is more of a performer/athlete attempting to achieve some sort of goal, not an author). (2) Developer ownership of the display, despite conceptual problems. Samuelson argues that ownership of all the possibilities, even possibilities the designer hasn’t imagined – Red v. Blue, anyone? – overcompensates the developer. (3) Joint ownership – fails for the same reason (1) fails, since mostly the player doesn’t intend to act as an author. (4) No one owns the AV display. Samuelson criticized that result as underincentivizing distribution of works resulting from playing the game. Boyden thinks this is the most promising answer. It reveals something about what it means to play a game. Games are different from ordinary copyrighted work because players’ actions form an integral part of the work. Play is functionally equivalent to real-time perceptual experience of a book or film.

Games are meant to be played in the same way that books are meant to be read and films meant to be watched. Such activities are all outside copyright’s scope. Boyden analogizes gameplay and the thought that occurs when a person watches or reads a different type of work. His resolution explains the puzzle noted by some that imagination seems to allow people to infringe the derivative works right just by holding story variants in their own brains. Either copyright law is ridiculous, or there’s some sort of implied exception here – Boyden thinks it’s the latter. An ad hoc exception for brains. The user’s experience, which is outside the scope of copyright, is taking place in the brain for films and books; with games, there’s a feedback loop and the user’s experience is manifested outside as well.

Q: To what does the initial property right attach? What can the game developer claim as works of authorship?

A: Boyden got into the question by playing Counterstrike and recording demos. He wondered whether he owned the recordings. The answer he came to was that the game developers’ rights are not rights in an AV work. The only solution: they are some unclassified work under §102. They’re interactive works. The developer has a right in the setting, the scenario, like a set for a play or for an improvisational performance. Music, any scripted sequences, props, etc. – that’s what gives them a right to go after knockoffs. But they don’t have a right in the AV display per se. They may still have rights in the appropriation of the materials that appear in the background.

Q: So if someone makes a greatest hits CD of Halo and sells it, can Microsoft sue?

A: Microstar v. Formgen, with mod files, which are different – they’re add-on code. The hypo is different. Maybe it’s like a form of fan fiction. Cases involving movies might apply here (e.g., the 12 Monkeys case, where putting a chair in one scene leads to an injunction). Boyden finds those cases highly troubling.

Q: Is playing the game the same as playing the work? Aren’t you playing “with” the game, which conceptually separates you from the work? The developer is mixing the expression with functional features that allow it to work as a game. That might help us think about allocating rights and who’s generating the value.

A: He agrees there’s an accidental overlap between uses of the word “play” for DVD movies versus games. You can’t infer from the fact that games are being played that they’re being performed. Developer gives an implied license to play by sending the game out, and perhaps to play it publicly if it’s an arcade game. This was missed by an earlier court decision which found that playing a game was an infringing public performance.

Comment: Julie Cohen’s work on degrees of freedom and freedom to play and how they’re outside of the uses copyright owners should control is relevant here.

Works in progress: Jane Winn

Works in Progress IP Colloquium at Pitt. Program with abstracts and papers here (papers will come down some time after the conference, so that authors can revise). As usual, I focused on trademark and copyright papers to the neglect of patents, and had to make some tough choices. These are notes, not a transcript.

I was interested in the dean’s suggestion in her intro that works in progress conferences are part of the internet-pushed transformation of legal education, involving more outreach to new audiences. I hadn’t thought of it that way (and I also haven’t been teaching long enough to see a change), but I imagine that it can make a difference. People do show up at conferences with works in progress regardless, but perhaps we’re willing to take more risks with “WIP” conferences.

Jane Winn, Legitimate Authority in the FOSS [Free and Open Source Software] Community:

FOSS matters because certain FOSS products have significant market share (Firefox, Apache, Linux servers) – modest player in some big markets, major player in some niche markets. It’s also spreading as a model, to things like Creative Commons.

How she got into this project: Did a project for the Shidler Center for Law, Commerce & Technology (originally funded by Microsoft, but now abandoned by it) – lots of hostility from FOSS community because they were presumed to be Microsoft shills. At one level, that’s not true; at another, a conference on the commercialization of FOSS may have inevitable normative implications. They got three federal circuit court judges to do a moot court on the scope of the GPL, about which practitioners are desperate to have some precedent. If only they could actually have ruled! To get participants, they had to write a phony, pseudo-GPL to debate instead, and even then it was hard.

Why such anxiety? Practitioners didn’t want to support the Free Software Foundation because they think it’s wrong, but they didn’t want to say so in public because they were afraid of enforcement actions.

In the light of harsh questioning, the FSF’s more expansive claims for the license (pseudo-license) broke down. That’s why they don’t want a public debate.

GPL: Creates a huge problem of noise, because it’s a manifesto and not a license if you read it as a lawyer.

The reason the FSF fights so hard to suppress discussion about the scope of the GPL is that their claims are fragile. (Discussion of this on the U. Wash. Website, she says. The big problem relates to derivative works – if you have a commercial open source business model, how close can you get to the GPL product and make your program functionally integrated before you get too close? Many people want to leverage the market share of Linux for their own commercial products, relatively conventional proprietary software models. The FSF has taken different positions over time, but they suggest that proprietary software would often have to be made open source. The property contract/license dispute exists, but it’s not as important.) The FSF claims to speak for a large movement but the loyalties of the participants are tenuous. There’s a political constituency (people who want to challenge capitalism), a professional constituency (problem-solvers), and a commercial constituency (IBM).

Allegiance of tinkerers to Stallman’s agenda was initially quite weak. Now, the demographics are different – the political constituency is weaker, and the professional also weaker because the commercial constituency has jumped to ¾ of the community. Here the community is defined as including people who go to work and use Linux servers, who didn’t do anything to choose Linux.

Question: Why assume that the masses have any influence if they’re just foot soldiers? Answer: Because the FSF is so terrified of them. Commercial companies support FOSS because it gives them leverage against Microsoft, but they think the FSF is nuts – there’s a huge amount of hypocrisy. (Still not seeing influence from the 75% of the community that are mouse potatoes working on the servers. Maybe this analysis needs a fourth class, managerial or administrative.)

Theory of legitimate authority in the FOSS system, tracking Durkheim: Early hacker culture had norms though they weren’t formalized. It was tribal. Charismatic leadership emerged for FSF. Leaders have a calling to lead, and followers also believe. They’re strong as long as followers have personal ties. It’s very hard to routinize. This is Stallman!

Legal-bureaucratic authority: Linus Torvalds personalizes the shift to administrative organs with specified spheres of competence, hierarchical organization administered by officials. Big commercial groups can live with this type of organization. Torvalds is happy with commercial groups that interpenetrate with Linux.

Legitimate authority in the professional class involves work that can’t be fully commodified because it is specialized or requires discernment; neither market nor bureaucracy provide the right incentives.

Anglo-Americans are particularly deferential to professionals. Today, historical status professions like lawyer and doctor are being eclipsed by occupational professions (hairdresser, engineer, now separated by a difference of degree and not category because they both have control over specialized knowledge). Software engineering lacks many of the professional standards that other engineering has. Innovation professionals are therefore reinventing the historical moral mandate of professionals to protect the public interest into a mandate to maximize accountability to outside review.

Winn loves the Apache way: a culture of mutual respect for contributions. Aphorism in the Apache community: “Let Darwin Decide”: put your proposals out and remain sensitive to the responses you get. Apache might be able to survive and grow, but it might also be limited to the people who are very committed to it now – their model is psychologically intense.

The GPL isn’t incompatible with outside accountability, though the FSF isn't accountable. The new GPL revisions expose the fragility of the FSF’s sweeping claims, which are going to split the community. Corporations can live under modified reciprocal licenses if they’re not on the receiving end of FSF enforcement actions. Right now, they have to act as if they’re complying fully with the FSF's interpretation, which raises the cost of doing business – it creates uncertainty about the implact on of FOSS on the value of other IPR, and uncertainty about their rights to integrate proprietary products with GPL products.

Basically, early governance structures are ill-suited to present commercial reality. Can a new model of innovation professionalism replace the combination of charismatic leadership and commercial acquiescence that exists now? Winn doesn’t know, but she hopes it can.

Unkindest Cuts?

Cuts promises "You bring the video, we bring the edits." Users can condense video, mash it up with other video, create popup commentary, even recast movies with different actors. By separating the edits from the underlying movie, Cuts believes it's complying with copyright law. Cuts promises to work with multiple formats, including protected WMV files and files downloaded from the iTunes Store. You can share your "cuts" with anyone else who owns the same file. But the original content is never shared or altered, which is why Cuts thinks it's complying with copyright law: its editing software is even called a "virtual remote control." (Separate query: does using Cuts violate the iTunes contract? If so, is Cuts therefore tortiously inducing breach? The current contract doesn't seem to prohibit this conduct -- but give it time.)

We never did get an answer to the question "Does a ClearPlay program create a derivative work?" Because what Cuts does goes beyond that authorized in recent amendments to the Copyright Act, perhaps that question must be asked now. Some discussion from Cuts here. Video demo here.

I am particularly interested in the attribution aspects of this. Cuts contends that, by separating edits and original content, integrity and proper attribution are assured. No one could mistake one for the other. That's surely true of the parents using this to edit out the scary scenes of Finding Nemo. But I can't reconcile the attribution-safety claim with the simultaneous boast that, because there will be more viewers than editors, people will be able to download others' edits rather than redoing the work for themselves. If they're not familiar with the underlying content, they won't be able to distinguish the original from the edited version -- and certainly their kids won't.

A shot across the bow for notice pleading

Evco Technology & Development Co., LLC v. Buck Knives, Inc., 2006 WL 2773421 (E.D.Pa.)

A patent owner who doesn’t manufacture or sell the patented product itself still has Lanham Act standing to challenge a defendant’s false claims about its version of the patented product. In this case involving bows for archery, the court refused to dismiss the plaintiff-patentee’s claims that defendant made false or misleading statements about “the nature, characteristics, qualities, or geographic origin of the Infringing Bows”; the identity of the company selling and providing the lifetime warranty on the bows; and “[defendant’s] authorization to manufacture and sell Infringing Bows in the United States.” As with many such cases of false statements about IP rights, materiality seems to me a serious issue, though not one that can be decided on a motion to dismiss.

The court found that the patentee had standing even without allegations that it sold or made the patented product, because defendant’s activity “directly affects [plaintiff’s] reputation and goodwill arising out of its ownership of the [patent].” The ultimate result makes sense to me, but courts ought to be careful not to take this rationale too far, or the result will be an easy evasion of Dastar by claims that a defendant’s copying affects a plaintiff’s goodwill.

The court also ruled that Lanham Act false advertising claims need not meet the heightened pleading requirements of FRCP 9(b), but needed to offer more particularity than traditional notice pleading under Rule 8. The 9(b)/8 question has divided courts considering Lanham Act claims. I understand the appeal of a sort of “Rule 8.5” solution in giving defendants a little more notice of the claim without requiring plaintiffs to plead all that 9(b) requires – since many elements required by 9(b) aren’t really suited to claims dealing with a traditional advertising campaign. But calling it a “Rule 8.5” solution highlights the problem: Notice pleading is the federal rule in the absence of special circumstances. If those circumstances aren’t present, as they aren’t with Lanham Act claims – which don’t require fraud – then a median solution isn’t justified, because for the purposes of the federal rules there is no problem in need of a solution.

Here, the court found that the complaint’s allegations were sufficient to satisfy this “notice-plus” standard, because it referenced and incorporated defendants’ promotional brochure containing the allegedly false/misleading statements. Obviously, plaintiffs are well advised to incorporate the advertising they’re attacking into their complaints. But since no one knows what the “notice-plus” standard really requires, it just introduces more complexity and uncertainty into the process.

Let them eat trademarks (and copyrights)

Jane Fisk makes cakes. There's Vuitton cake, Harrods cake, Guinness cake, Encarta cake, Smaug cake, Testarossa cake, Superman cake, architectural cake, a truly impressive Discworld cake for her daughter's wedding, and my personal favorite, a DRD cake. If you know what that is, you're my kind of geek. If not, Netflix can help.

Does turning a Vuitton bag into something that gets sliced up and eaten constitute dilution?