Justice Scalia’s most recent entry in the kulturkampf

From today's decision:

We doubt, to begin with, that small-town broadcasters run a heightened risk of liability for indecent utterances. In programming that they originate, their down-home local guests probably employ vulgarity less than big-city folks; and small-town stations generally cannot afford or cannot attract foul-mouthed glitteratae from Hollywood.

I can't really help but think about "real Virginians" versus, you know, me and people like me, who only live and vote here. But more broadly, who exactly does he think invented the earthier terms, if not the salty salt of the earth?

New article on filters and fair use

Michael S. Sawyer, Filters, Fair Use, and Feedback: User-Generated Content Principles and the DMCA: Focuses on the negative implications for fair use of private UGC principles providing for prescreening by video sites, including the disappearance of counternotifications, the inability of the public to know what’s been filtered out, and the “digital sharecropping” of fair uses. The upshot: “as the interests of copyright owners and service providers begin to merge (creating a shared revenue stream through the combination of the copyright owner’s content and the service provider’s user base and distribution system), no player is left to pursue the interests of individual users” (footnote omitted). The author advocates that human screening be added to automated review before UGC is removed from a site.

Wink, wink, nudge, nudge

From Richard H. Thaler & Cass R. Sunstein, Nudge: Improving Decisions About Health, Wealth, and Happiness:

[L]et’s start with a simple example inspired by a wonderful poem by Shel Silverstein (1974) entitled "Smart." The poem is fun as well as brilliant, so if you have a computer nearby, we suggest that you type "Smart" and "Shel Silverstein" into Google and read the poem now.* We will wait for you to get back before continuing.

*Silverstein had personally given Thaler permission to use the poem in an academic paper published in 1985—he said he was tickled to see his work appear in the American Economic Review—but the poem is now controlled by his estate, which, after several nudges …, has denied us permission to reprint the poem here. Since we would have been happy to pay royalties, unlike the Web sites you will find via Google, we can only guess that the managers of the estate (to paraphrase the poem) don’t know that some is more than none.

Some thoughts: (1) This is a broken system. (2) Are Thaler and Sunstein inducing infringement? (3) Thaler and Sunstein, on the next page, immediately recount the plot and structure of the poem; given that Silverstein uses pretty basic language, there’s a lot of language overlap. This is not to suggest that Thaler and Sunstein infringe—to the contrary. It goes to the question whether copying the poem in the context of an analysis of apparently irrational economic behavior should even count as infringement, or at the very least should be fair use, given that the purpose of the book is so different from the purpose of the poem.

New book on privacy

Ian Kerr sent me a copy of his new edited volume on privacy, identity, and anonymity, Lessons From the Identity Trail: Anonymity, Privacy and Identity in a Networked Society. It’s Canada-focused but ends with a bunch of country-specific pieces on the law of anonymity in various places. My favorite piece was a very interesting essay by Jane Doe on anonymity for rape victims, discussing the way anonymity is presented as protection for women, because to be a woman is apparently to be endangered. Similarly, another piece by Jane Bailey looks at the implications of webcamming for women. Available online, and also from Oxford.

IP/Gender: panel two

Panel Two: New Forms of Organizing: Women Reinterpret the Legal, the Educational and the Political

Ann Shalleck, Moderator: Political aspects of fan cultures: how does law form part of the context; what do female fan cultures have to teach us about public advocacy, scholarship, and teaching? Given that most people don’t litigate even legal issues, how do we place fan cultures within the overall cultural background?

Jordan Gilbertson, We Will Not Be Ignored - Integrating Fan Created Works Into the Traditional Copyright Classroom: The case method and the Socratic method are the main approaches in law school. Inherent inadequacies in the methods; voluntary participation supplements them, but does not fix them. Studies conclude that female students participate less than men. The Socratic method focuses on characteristics associated with men, including hostile and confrontational dialogue. Adding volunteer opportunities doesn’t help because of fear, professorial bias, lack of interest in the battle for classroom dominance, and silent protest.

Case briefing has not been subject to as much criticism. Feminist pedagogy is basically about stories: using cases is using stories.

Proposes using fanworks to teach copyright. (1) Fanworks are on the cutting edge of IP law. Non-fan students will go out and do IP law. They need to know what’s out there no matter what side they’re on. (2) Aspects of fandom are dominated by women; this allows the class to keep the interest of women.

Gilbertson took us through various issues with a Doctor Who drabble: access is clear, but is there substantial similarity? Does it matter whether you need to know the context of the fandom to recognize the characters? If infringing, is it transformative? Is it fair? She did the same with Lim’s vid “Us.” And finally: “Ralph Wiggum” by the Bloodhound Gang: quotes from 19 seasons of The Simpsons make up the entirety of the lyrics.

Karen Hellekson, Intellectual Property, Transformation, and Academic Journals

Here for Transformative Works and Cultures: Submit early and often! Hellekson’s background: STM (scientific, technical and medical) publishing. Creating a journal involved a bunch of tough decisions about distribution, copyright, and so on. OTW’s liberal take on fair use and remixing was an important foundational principle, though the editorial team is totally separate and has independence in publishing.

One goal: record the history of female-dominated fan cultures, which were getting erased in discussions of the “new” creations of largely male cultures. Another: link fans and scholars; some people are both, but if you’re just one or the other the journal wants you too. Fans write meta; academics write criticism; those are the same things. Indeed, fan fiction and other creative works are also criticism. Fans and academics are immersed in their own texts and get deep references. Example: Rachel Sabotini’s essay on fans and gift culture.

As an editor for the STM industry, she has standing instructions: cut all song lyrics. Get rid of figures published elsewhere, even if the author created that figure; the author likely signed over the copyright to a journal and would have to pay $500 to reuse his/her own figure. Someone with no background in law is generally deciding what can be published; there will not be a discussion with lawyers about marginal cases, in many cases—the thing will just be cut. The press will not pay permission fees; the author may have to pay. Publishers are extremely risk-averse. Some authors can reinstate lyrics if they go high enough up with the publisher, but that’s not normal. Legal chill is pervasive. One media studies publisher won’t permit dialogue quotes, episode titles, plot summaries, or screenshots. What kind of analysis can you do without those things?

Work is not being done because it’s unpublishable, and that’s where TWC comes in. We’ll take your screenshots, your embedded video, your color shots (which in print are so expensive that authors need grants to get it done). This is a cultural service. Moving beyond self-censorship and beyond print. Medical articles: often there’s a video extra showing how a surgery is performed; in print, it can’t be integrated with the article.

STM pioneered open access: rigid criteria for openness, not just free availability on the internet. Public Library of Science-Biology is the best-known. PLoS sustains itself by charging a page fee for publication, which is usually paid by grantors or institutions. TWC chose Creative Commons Attribution-Noncommercial licenses. PLoS-Biology doesn’t have a noncommercial restriction, but TWC chose NC in order to make the point that enough people are making money off of fan cultures and that the least someone who wants to make commercial use could do would be to ask. TWC will say yes.

Why give TWC the right to license? Because authors may disappear, and the availability of TWC as licensor helps preserve use rights. Because it’s standard practice in the industry, and familiar. There’s no moratorium on republishing elsewhere, no embargo period. Open access works are 3x more likely to be cited. Remixing has occurred: People have made PDF versions.

TWC also chose an open-source journal platform. It permits commenting on articles, which is important to the audience and the community. The conversation will be public.

Current print models stifle creativity. The alternative is freedom, enabled by open access.

Laura Murray, Boys and Their Toys? On the Gender Dynamics of Copyright Activism in Canada: Copyright reform legislation in Canada faced a public outcry. Gratifying for activists, but Murray found herself disengaged from the discussion, including the very large Facebook group that formed, Fair Copyright for Canada. She started to think about gender issues: there weren’t many women speaking out. She interviewed participants in copyright advocacy and IP professors, and analyzed a recent Canadian film, RiP: A Remix Manifesto.

IP academics: 34% women; public interest advocates, 34% women; Facebook group, 37% women. Different pattern when it comes to discussion: women represent 11% of Facebook page discussants; men make more posts, so the percentage of posts by women is lower. Women tend to make their points and then retreat. Polls showed 49% opposition to reform from men, only 29% from women. Question from public interest advocate: are women disproportionately uninformed and uninterested in copyright? Or have they formed restrictionist views, making them less likely to oppose a restrictionist copyright amendment?

Librarians have carried the torch for users’ rights for many years, and librarians are a heavily female group. Women have cellphones too and have reasons to want to unlock them.

Facebook participants are highly invested—one man talks about “cool innovative products that let you do impressive technological things,” another about interference with stuff that is his. Gendered claims to property ownership and to display. RiP: Rhetoric of “war” over ideas. Politically astute about a certain type of audience, but also politically blind to the ways in which its rhetoric is exclusive.

Why don’t women change the rhetoric? One male undergraduate says: women don’t care whether downloading/cutting clips is illegal. They don’t say “screw the rules,” they just do what they want—they’re more carefree, he says, but he doesn’t know whether that’s lack of maturity or lack of understanding. Here’s the problem with women’s silence: it’s often interpreted by men as immaturity/ignorance.

RiP: There’s a lot of fandom in this film—a boy filmmaker in love with/fanboying Larry Lessig (“the coolest lawyer in the world”). Student filmmaker: having chosen to make a particular speculative documentary about copyright law, he found that women’s perspectives didn’t fit in. They were too conceptual, too diffuse. He wanted to focus on technical questions that showed how severe the copyright bill was. He didn’t recognize that it was his choices that made their perspectives not fit.

IP professor: Women self-censor more. They aren’t willing to speak unless they’re totally sure of their expertise, while men go out on a limb.

RiP’s rhetoric is about community: a “posse” creating this movie together. Lessig uses the language of community too. Women say they feel more comfortable in community—so why not this one? Mystification about what causes community. It’s not tech. These student filmmakers were asked to create this film by their professor. That structure disappeared in the final product.

The main character in RiP is the DJ Girl Talk, which name is ironic given that there are only a few speaking girls in the whole long film. One: Marybeth Peters, the US registrar of copyrights who says she’s never seen a mashup or downloaded a song or used a computer at home. Two: a girl in bed, Girl Talk’s girlfriend (she gets a couple of lines). Also Girl Talk’s mom; a Brazilian girl. Paris Hilton also shows up, and the filmmaker expresses his fandom. Then Girl Talk makes the analogy: DRM is like a urinary tract infection. But has anyone involved in making this film ever had one?

The film asks the question: who would have an issue with Girl Talk’s music? Peters is then immediately presented, even though she doesn’t have an issue (and is presented as awed by Girl Talk’s technical acumen)—the people who might object are the largely male copyright owners of the works Girl Talk reuses. But Peters is given as the representation of the heavy, the bad girl.

Things copyright isn’t: war; urinary tract infection. Things copyright is: discussion; challenge.

Working principles: don’t equate concerned citizens/active scholars with internet visibility, or with identification with polarized opinion. Question claims about community. Multiply forms of engagement and the range of examples in play. Question the user/creator binary more fully. But a film like RiP puts Girl Talk in the place of the Romantic male author—remix discourse turns out to be original genius discourse. On the other hand, we need to recognize the validity of the distinction in some cases. There is a difference between creators trying to earn a living (implicit: with their creativity) and other kinds of creators. There’s a gender dynamic in that because of the history of the procreation metaphor as a model for creativity—quick is good, and men are quicker than women (a couple of minutes versus nine months, it would seem).

For Hellekson: Is fic acceptable for TWC?

Hellekson: Not as such, but we’re open to nontraditional expressions like games that critique games accompanied by a critical paper.

Zahr Stauffer for Gilbertson: She teaches literary reworkings, and loves that experience. When you’re in a classroom and you want students to have an equal ability to judge transformativeness, you may need to familiarize them with the source work and the fantext both. So you may need fanworks that rework very short things.

Gilbertson: Sometimes you can listen to filk, read fic, watch vids without deep ingrained knowledge. Part of what she’s proposing is a juxtaposition. Ask the students to bring in something that interests them, and the professor can choose examples to show.

Peter Jaszi: As Murray points out, RiP sets itself in part in the US, but it’s a US of the mind—a US without any system of fair use. Has this film been subjected to a critique of its own mythology except by Murray?

Murray: Not yet. The film’s political message is very limited: remix this film. It lacks practical context.

Jaszi: This is also Lessig’s public attitude: fair use is the right to hire a lawyer, a snare, a will o’ the wisp. This attitude works well for certain alpha male authority figures, but not so well for others who labor in areas where fair use is an important contributing element.

Murray: So how do we create a compelling and concise public message that is not oversimplified? RiP is lively and sexy; how do we do better and still get attention? Later, she suggested more collective blogging so that there was less pressure to provide new content every 5 minutes. That would enable women and men who feel like they need another model.

Shalleck: Cautions against essentializing in the discussion: women are more likely to do X, men to do Y. A useful concept: hegemonic masculinity. Cultural criticism has achieved subtlety in criticizing particular dominant concepts and people, as well as identifying the ways in which favored participation gets coded as masculine.

IP/Gender: Panel Three

Panel Three: Cui Bono? Economic Contexts

Peter Jaszi, Moderator: This panel is about various forms of contestation around fan cultural production and around genre itself. Arguments about authority: cultural, legal, economic, both formal and informal. Other themes: Market hierarchies; systematic devaluation of women’s work; balancing risk and safety and the romance of transgression.

Abigail De Kosnik, Women’s Work and 'Free' Fan Labor: An ongoing contest between copyright owners and individual copiers who feel poor and powerless in comparison, but are perceived by copyright owners as thieves. Fans take comfort and refuge in a rule of thumb: if we don’t sell our fanworks, we’re okay.

Free fan labor means free labor. Many fans think this is a great deal. Copyright owners don’t need to turn a blind eye to fanworks; the law is not definitive and they could harass fans if they so chose. But even if this is a settled issue, we haven’t addressed whether fan labor can or should be paid.

Free productions are key to web 2.0. And fan free productions help sustain profitability for commercial works by enhancing enthusiasm and feeding continuing appetites—they discuss, expand and advertise the productions during interim or hiatus periods. (Note that in another browser window I have open a campaign to save Chuck. Here’s to a Nerd Herd Third!)

Money already permeates fan productions. It just doesn’t go to fans. Fans are settling for too little, too soon, in the ongoing negotiations between capitalist markets and individuals. Compare to genres of male fan labor, like fan films and game mods, which are sometimes paid. In early years of fan fiction, George Lucas set the precedent that owners of the source texts had the right to determine whether fanfiction was allowed and what types were acceptable. Over the last three decades, Lucasfilm has run the gamut of responses, from establishing a bureau to approve scenes to sending cease and desist letters to barring “pornography” to offering to host fan fiction. Unpredictable paternal authority produced a chilling effect. Lucasfilm is the daddy, who can choose to ignore fans but retains the ability to step in. Lucasfilm has treated fan films made mostly by male fans very differently from fan fiction, and given them favorable treatment as they became widely circulated on the internet. Lucas himself identifies with male fan filmmakers and disidentifies with female fan writers.

So, do we benefit from establishing and guarding safe spaces in informal communities—like quilting communities—and staying out of the art market? As long as women’s creative work is not bought or sold, the argument goes, it remains free of scrutiny and control, since men control the “public” sphere and noncommercial work is private. Of course the internet throws that assumption of privacy into doubt.

Kristina Busse, Original Genius and Transformative Reptition

Most aesthetic theories of modernity have invested in the myth of originality. Creativity in an age of mechanical reproduction can be at odds with copyright, which often requires some account of originality to counter infringement arguments. Even as artistic theory values repetition and familiarity in pastiche and other ways, law is not keeping up. Law should look at genre theories and poststructuralist approaches to understand fan engagements and productions.

Difference and repetition are both required to create. Law has trouble recognizing this in accounting for transformativeness. Language can only be recognizable if it is repeated, not just on the level of the word but also on the level of narrative: tropes work because we understand them. Tropes allow readers to establish expectations and follow the narrative. Aesthetic theory describes creativity as interplay between old and new. T.S. Eliot’s important essay: “Of Tradition and the Individual Talent.” Woodsworth: Truly new and great art takes time to become popular (which is why he wanted copyright terms extended). People have to learn/be taught what it means. Adorno: argued that the “new” was created for economic purposes, and was actually the old dressed in new clothes in order to sell better.

Fanworks are postmodernist in their emphasis on retelling in different narrative styles. The repetition highlights the differences between retellings. Fan fiction also has its own tropes: amnesia stories, stories in which characters grow wings, stories in which male characters get pregnant. We’re always covering well-trodden ground, but we get something new out of it by doing so. Caught between Scylla and Charybdis of repetition and originality.

Legal defenses of fandom find themselves tempted to valorize the individual genius of the fan author. Focusing on originality is strategic in a culture that respects individual genius, but fanworks are always also embedded in repetition. One can’t exist without the other.

Zahr Said Stauffer, Taking the ‘Grrr’ out of ‘Grrrl’: Strategically Gendered Marketing in Cathy’s Book: Cathy’s Book purports to be a sort of ARG (alternative reality game) about Cathy who does sleuthing, but it’s much more fixed than a real ARG, in that plugging in the “clues” doesn’t change the outcome. The marketing is gendered, not just in conception but in performance. She posits that the gendering of the marketing ultimately stifles creativity and impoverishes the fan culture, if any, of the novel. Cathy’s drawings focus on self-presentation/portraiture/makeup. There’s an official makeup sponsor for the trilogy, with prominent Cover Girl product placements. The motto of the sponsor’s site, beinggirl.com—“for girls, by girls.” Except of course, not really. It’s for girls, by Tampax. And the trilogy comes from two male writers, who recruited a female illustrator who did the iconic drawings that defined the works and attracted the fans.

Cathy has a presence on many social media sites. “She” says a book should be something “we all do together—me and my friends, you and yours.” But this isn’t a fan inviting you in. Fans are encouraged to produce and submit fan art for an online gallery: she’ll showcase the ones she likes best in “my ‘prestigious’ gallery link.” Dangles the possibility of reproducing them in her next book, which actually happened to 3-4 of the dozen or so she posted. “Cathy” was also “solicited” to create comics about menstruation for the Tampax site. She asks her fans what they think of her comics, offering her fans the option to vote “like” or not respond at all. This is how the trilogy treats its fans: speak up, but only when spoken to and only when you say what we like.

Marketing proceeds through “fill in the blank” solicitations—offering girls different positions into which they might fit, corresponding to, for example, scents of deodorant that P&G sells. Marketing of Cathy’s Book proceeds the same way, soliciting only particular approved identifications. There are no “none of the above” options, no options to identify with Cathy’s mother.

Cathy solicits input of a particular source: fill in the blank. And she solicits compliance with Cathy’s constraints by holding out the possibility of publication—creating an incentive to produce work “Cathy” would like. Disincentivizes subversive work and solicits a compliant, good-girl identity. A false economy of scarcity makes this even more powerful: even though it would be trivial to post all submitted works, Cathy won’t; she’ll exercise control and only reward the good ones.

Poststructuralist theory: the thing cannot logically contain its own supplement, as Turk argues with respect to vids. By attempting to contain its own fanworks, Cathy’s Book destroys its fandom. Fanworks derive meaning from addressing gaps in the source, mysteries—externality is authenticity. Being brought in-house is destructive, creates good girls/collaborators. If we buy the incentive story that incentives are necessary for creation, then corporate control strategies should very much disturb us because of the way they distort incentives. Fandom should be by fans, for fans.

Jaszi: Is this attempt to create a fan community a success?

A: It doesn’t seem like the size of the fan community is that large—no fan fiction at fanfiction.net; 41 interested users on Livejournal.

Ann Shalleck: Wouldn’t fans feel ripped off/denigrated? Why wouldn’t it prompt a critical, concerted attack?

Busse: Why would we care? Lots of books are disposable; we read and forget.

Coppa: We might criticize something we love, but without an investment, that’s boring work. You don’t get my cultural criticism for free.

Stauffer: This form took a lot of work/investment—it’s an expensive product with evidence packets, unusual images, and so on. Some girls may respond to it as a place valorizing female creativity. There are positive female role models in there.

Q: Maybe this attracted fan art, rather than fan fiction. Check DeviantArt and other art forums. (Note: I found a couple, though many seemed to be copies of images from the official books.)

Busse: Maybe a protected space is appropriate for 12-year-old girls. (But a protected corporate space?)

De Kosnik: Fan fiction authors basically invented the public extension of texts. Cathy’s Book is a mild form of cooptation compared to what NBC, movie studios, etc. have done in creating official websites, character blogs, wikis allowing fans to upload/submit new material, including new characters, etc. Fan fiction created the protocols for interactivity.

Busse: Kyle XY fandom is completely commercial. They created a fan character, who turned out was an employee, and then a character with that name turned up on the show. Diegetic spaces were all mixed together. Fans didn’t mind—current teens are so accepting of commerciality that they didn’t care that he was fake.

Me: That may be a function of teens being more accepting of performance of identity, since as danah boyd says they’ve already been taught to fake their own identities to keep themselves “safe” on the internet. It can still be problematic to channel their creative labors in corporate-approved ways. At de Kosnik: I also think that it’s difficult to say we ought to get paid for our fannish labors: by whom? Supernatural is never going to pay me, and I don’t want to take money from other women, who may well be much less secure than I am.

De Kosnik: A powerful argument, but note that rap artists did commercialize copying.

Jaszi: For Busse: is the claim of transformativeness/genuis inevitable, or can we expand the category in ways to give space/recognition to the kinds of participatory practices we’ve been discussing?

Busse: We have a tendency to do one thing—enjoy particular kinds of stories with repeated tropes—and praise another—originality.

Coppa: Fans aren’t using those words the way they’re customarily used. Every story is new: the words are in a different order. Bookstores are full of genre fiction books that are very similar. A story that’s too different—everyone dies—is strange or “literary” or experimental, but most people still want a good adventure with a third-act climax or a good romance. Even movies: sequelitis is about the profitable sale of sameness.

Busse: But we don’t aesthetically reward it. “Genre” has been a derogatory term.

Coppa: Not for us! OTW doesn’t intend to protect the top 10 best fan fiction stories the way a literature professor might want to identify and teach the top 10 best.

Stauffer: TM might be the better model, instead of copyright. Genre functions like TM, transmitting reliability. (Hmm. Need to think about this.)

Jaszi: We are part of defining what transformativeness means. We can bring these insights into the legal analysis of transformation.

IP/Gender: Panel One

Panel One: Is There a Text in This Work? Transformation Beyond the Written Word

Francesca Coppa, Moderator: Fan fiction is moving out of fair use conferences to literary theory conferences, where it belongs. Other forms have existed for a while, but you’re only hearing about them now because women have been trained to fly under the radar. Guys have brought forward their RPGs, fan films, and so on more readily than women.

Casey Fiesler, Paper Dolls: Role-Playing, Gender, and Pretending Without A License:

RPGs: Beyond Dungeons & Dragons Include collaborative writing. The key features are collaboration and taking on the role of imaginary characters. On average, women prefer the storytelling aspects to the combat/dice-rolling aspects. Focus on world and characters rather than authorial intent and structure. Related to how little girls play: the socialization of play. Today, toys are more licensed and integrated into media tie-ins: even Doctor Barbie has been replaced by Hannah Montana Barbie. They have (copyrighted) storylines inherent in them. A girl may sleep on Cinderella sheets, wear a Cinderella tiara, and have a Cinderella Barbie: she is Cinderella (question: what does it mean to identify with a doll, an object that you dress up, in this way?), so the next step is to perform her character.

Fan-based RPGs are created and maintained by creators, not copyright owners. Artifacts produced are often very similar to fan fiction. Blogs are great for this: the affordances of the medium allow you to be your character. They’re interactive, so other characters comment back and forth. Virtual worlds: Second Life hosts a huge simulation of Hogwarts. This raises the issue not resolved in the City of Heroes/Marvel case. Players aren’t making money but are using commercial venues—how will we treat that? Copyright/TM owners have reacted: takedown notices to Twitterers playing the roles of Mad Men characters, though despite the DMCA notice the Twitterers are back.

Playing with dolls is legitimate; moving online with playing creates new copyright issues. Closing question: when is it fun and games, and when do you need to call the lawyer?

Melissa Tatum (work conducted with Robert Spoo), Does Gender Influence Attitude Toward Copyright in the Filk Community?: A filker and a law professor, though not an IP scholar; borrowed Bob Spoo for the legal analysis. Filk started at sf conventions, and now has its own conventions and awards. Traditional form: take existing music and use new lyrics. Filk also contains original music & lyrics, and lyrics based on characters from existing works. A separate category: filk based on other filksongs.

Tatum surveyed filkers and looked at award-nominated songs to look at copyright issues. Did not expect to find differences, but found some. Men publish more filks than women, but award nominations are basically equal. Statistical difference in type of melody: women are more likely to use original or public domain melodies, while men are more likely to use another filker’s melody or a copyrighted melody. 45% of women use melody not subject to copyright, 38% of men. Maybe originality of melody is a constraint on publishing, because most filk magazines are just sheets of lyrics marked “to the tune of…” Men slightly tended to use more original lyrics and women tended to use lyrics based on someone else’s characters/world.

Nonscientific survey of 62 respondents. 1/3 were involved in filk for more than 20 years. 62% of men worked in a technical field, while only a small percentage of women did. Males are more likely to perform songs written by another person, around 82% v. 90% (so the base rate is pretty high). Legally: 17% of men considered all legal requirements when making writing/performing/recording decisions, but 0% of women mentioned that. 34.5% of men didn’t worry because they were only performing informally, while 21% of women didn’t worry for the same reason. 63.6% v. 31% men v. women said that fair use includes not profiting from others’ work. 13.8% of men leave fair use “to the lawyers,” while 0% of men did.

Also asked about attitudes towards copyright; men had stronger opinions—men were more likely to think copyright lasts too long (51.7% v. 24.2%); women were weakly more likely to say they didn’t know enough (21.2% v. 3.4%), and weak evidence of greater participation in Creative Commons by men (around 44% v. 18%). Further work will target these issues.

Question: what do filkers think of Wizard Rock? Or Olivia Chrestomanci’s Supernatural-based album (recommended)?

Tisha Turk, Transformative Narrations: Fan-made Videos and Fair Use: English prof and vidder. She approaches copyright as a vidder. (See Sarah Trombley’s Visions and Revisions.) Ambiguously legal, but ought to be legal: nobody’s going to mistake it for an authorized work, and she’s not making any money.

Not very many vids (female-dominated artform) are parodies in the ordinary sense. Women are usually coming at the sources from a more affectionate point of view. We like this world and want to spend more time with it. We have to stretch the term parody pretty far to talk about vids as parody. Vids do function as textual/literary criticism: they are close readings of a text. This is a broader category. If a vid is a visual essay that stages an argument, to make the argument you have to quote from the source. That’s how it works.

Other cases: less clear-cut. All vids are arguments to one extent or another, even if only in the basic sense: see what I see! Read this show the way I do! Some are more obvious about this than others. Trombley: A fanvid that recapitulates a plot or a character relationship is perhaps the least transformative; they don’t seem to be fighting back or talking back. But they are still fair use, not just because of market failure but also because they are fundamentally transformative, according to narrative theory.

What exactly is transformed? What’s the difference between that and abridgement/condensation? Narrative theory offers an explanation. A vid, in one view, is visuals + music. But thinking about vids that way enables the false assumption that a vidder should just be able to swap audio. And that doesn’t work. The audio is not independent of the video.

A narrative has two parts, story and discourse. This is true for any narrative, written, oral, TV, what have you. The story is what happened; the sequence of acts and events. The discourse is how we find out what happened; the way the story gets told. Discourse can be divided into plot and narration. We tend to use plot and story interchangeably. But the story is just the events; the plot is how and when those events are conveyed to the audience. Mystery novel: the premise is that part of the story is withheld; events are not told in the order in which they happened. There are not that many stories, and yet so many books: that’s the magic of plot. Rearrange the plot, and you have new narrative.

Narrative is also a matter of choices about how to tell the story. Is the story told by a main character, a secondary character, an omniscient character? Is it in past tense or present? In TV, narration is different: you can have a voiceover, but that’s unusual and often misguided. The narration is nonverbal. What does the narration is the camera angles, duration and sequencing of shots, the music. Those elements of narration are exactly what vidders alter. We usually can’t change the camera angles, but we do make choices of what to keep. Often change duration and sequencing of shots. Always change the soundtrack that tells the viewer how to interpret the visuals. Even if the vid does not change the story, it still changes the narrative. The discourse is different.

That retelling can be a telling against the grain, but even a telling again is a transformative difference. These changes are the point, not an interesting side effect. A vid generally relies on knowledge of the existing source: it’s not a replacement. You can read literary criticism without reading the original text, but it’s not clear what you’d get or why you’d want to—vids are the same way.

Why drag narrative theory in? It helps us think through the audio elements. A song is part of a narrative strategy. It’s what makes the vid’s discourse different from the original. But the song is also part of the story of the vid. If the story is changed, the song choice is a big part of why the story is changed. The audio/video split is artificial and does not explain why vids produce the effects that they do. It’s a repurposing of the song, but is it a transformation? Yes. Some songs have stories; others are pure discourse. Listeners project onto the song—I had that relationship! When you turn the song into a piece of a larger narrative you’ve produced a structural change in the role of the song and the way in which viewers respond.

Ann Bartow, Commentator: the unifying theory of the panel is that women have a different view of the First Amendment than men. Each speaker talks about the value that women place on noncommerciality. Maybe women don’t really feel that commercial value is plausible for them.

Turk’s paper begins: Vidding ought to be legal because we’re not making any money; you’d never mistake it for the original so it doesn’t serve as a market substitute. Carol Gilligan’s A Different Voice: women’s arguments about texts may be different than men’s. Her argument is one about separating sound from pictures: copyright law is warped. Audiovisual works have one copyright, but the reason for doing that is to make the work-for-hire doctrine work, so contributors don’t have individual rights.

On Tatum: If awards are a signifier of quality, women are outperforming men. When women were a smaller percentage of law schools, they tended to be unusually talented/motivated. Once they’re half the class, they are more likely to include some of the less accomplished. Is there something deterring women from participating? Women seemed to be more copyright-compliant/overly obedient, and even when they used copyrighted works they seemed to be more invested in not hurting anyone. Also, look here how badly concepts of joint authorship work—participation is asynchronous.

On Fiesler: Communication in character raises the issue of threats: what is a threat does not necessarily depend on the explicit words; it’s a context-dependent issue.

Back to the First Amendment and copyright: Courts get into a circular loop where they say a use isn’t fair because it couldn’t have been licensed. Women more than men may be processing this as: if it’s not losing you money, I can do it. A stronger claim would be: even if it’s costing you money, I have a free speech right to do this.

Women are spoken about in certain ways; our bodies are used in advertising; our bodies are more strictly disciplined: how does this affect our relationships to free speech and the First Amendment?

Kristina Busse: Are women asserting ethical responsibilities greater than legal ones, or just different? Anime/manga translation communities that withdraw availability once a licensed version becomes available: ethical piracy.

Coppa: Women’s art still exists on someone else’s suffrance: we don’t assert the right to say what we need to. If our encounters with commercial entities, who do attack women in various ways through ads and other ways, are ones in which we’re instinctively more aware of our roles as buyers, then we are negotiating our artist roles with our consumer roles. We claim that we become better consumers as a benefit of our artistic productions: is it a specifically female argument to say that fanworks increase the value of the original? May be a Gilliganesque ethic of connection, but may also suggest that our minds are colonized: what would it mean to say—“hey, I’m an artist, I don’t so much care to consume your stuff”?

Coppa: Fiesler talks about the huge array of products sold to girls. As long as you’re purchasing these things, have you bought the right to fantasize? What if you knit your own Dalek or Harry Potter scarf—are you a bad consumer? (Is it the bare minimum of surviving in a consumer culture that we get to talk back?)

Fiesler: Music videos have been increasingly commercialized too, so there is competition or arguable competition in a place there wasn’t formerly. Relatedly, how many people are using Livejournal, or Second Life, or City of Heroes because they can play fannishly? Helps other entities make money, creating secondary liability issues.

Fan Q: What happens when the corporation appropriates the form—Twitter, the fanvid?

Turk: They’re not very good at it. Failure to understand that the fan wants to make new stuff, not sit and watch the official fanvid. (Hmm. What about the audience for fanvids? I agree that the official versions are unsatisfactory for fan audiences, but the stasis is produced in a variety of ways.)

Busse: BSG official contest was gendered in that the clips vidders were allowed to use were of big spaceships, not of the relationships in which women were more likely to be interested.

Fan: Stealing authenticity: corporations are searching for authenticity, but that’s an inherent contradiction. Our content is more valuable for its authenticity, and perhaps we’re on the cusp of ownership claims over our stuff because it’s more valuable.

Coppa: the practice of sharing among friends is now part of a business plan. Giving things away for free is part of our marketing strategy now! Fans interfere with that by existing in the world!

Stauffer: NBC now calls itself a general-purposes service company—tied to the rise of embedded ads. Question for Fiesler: stepping into the shoes of Cinderella (heh). How is playing online experienced—is there a suspension of disbelief as there is with a novel? When you’re out in the real world dressed as a princess, people constantly comment on it and point out that you’re not a real princess. You can’t be as “real” in the real world. Cinderella at the ball, freeze-framed; brushing her teeth with a toothbrush bearing a picture of herself. A hyper-real, weird version of Cinderella. You may have more privacy/intimacy in fan RPGs.

Fiesler: There is a difference, but the difference is getting smaller as more play moves online. (You find people willing to suspend disbelief with you. Ties in to Clay Shirky’s point: 90% this stuff online seems so weird to you because it’s not for you.)

Julie Cohen: You can build in that in “real” life roleplaying is socialized as childlike, which has gender implications. A separate point: Bartow’s comment on Tatum—Cohen read the statistics exactly the opposite way—the pattern of men trying to be Weird Al is copyright-compliant to the extent that it’s exploiting a known exception and following the parody model. Women were trying to be transgressive in a non-free speech way (not clear to her that claiming the First Amendment helps copyright transgressors).

Q: Struck by Fiesler’s point that no one would care if people were cutting out pictures and playing with them, but online it suddenly raises a copyright issue. How long until the computer is recognized as just like paper, instead of creating a corporate presence in your home? (I think the standard move is to go the other way: the paper dolls always did create a copyright issue, but transactions costs made it not worthwhile to do anything about it.)

Fiesler: RPGs didn’t initially produce fixed artifacts; all of a sudden they do. Like the ways in which vids used to circulate on VCR tapes.

Turk: Think of mixtape culture, where you would give someone else a mixtape based on the contents of your soul. That was unenforceable; once it’s on your blog, it’s findable, but there are also issues of privacy/friendship. The openness of our online definition of friends is changing.

Coppa: As a media educator, she’s supposed to be teaching a language. But it turns out that each “word” is owned. We don’t expect people to invent their own words in general conversation. There’s a problem with the metaphor, if she’s teaching the “language” of film and video. Educators must face this problem quickly.

Bartow: On Cohen’s point: when women’s filk production went down was about the time of Napster—maybe 2003-2007 coincided with increased tech making it easier for men to spread filk through the web, and women were more hesitant/had less tech experience.

Coppa: Female-only conventions also have filk; maybe women are moving out of the mainstream community.

I asked my question about Wizard Rock’s relation to filk.

Tatum: there’s a growing schism in community about (1) definition of filk—if you bring in Irish/Scottish/instrumental music to the circle, does that count, or is it lyric-driven? (2) Spread of new tech—who is a filker? If you record tracks in a professionalized way and perform not in a circle, are you a filker? Some valorize community over the form of the work produced.

Cohen: Where are the age distributions for vidders and role-players? We’re all talking about the same types of creative play, but maybe the different methods of expression have different distributions—relatively older in filk, and perhaps relatively younger in RPGs.

Tatum: Caveat that the survey may well have been distorted because longer-term participants may have been particularly motivated to explain themselves.

Q: Is law just too far from practice now?

Fiesler: Notice that people make ethical norms even without much fear of law: noncommerciality, attribution, anti-plagiarism are self-policed norms that roughly track law.

IP/Gender: keynote

IP/Gender: Female Fan Culture and Intellectual Property

American University Program on Information Justice and Intellectual Property

Opening remarks by me: I’ve never been a big fan of Donna Haraway’s cyborg, but I’m increasingly attracted to the image because of the ways in which it turns contradiction into complexity, always in motion. This is important because one challenge of defending women’s fanworks before the law is to protect them from charges of overinvestment (get a life!), incoherence, or unintelligibility from outside. If the standard aesthetic response of lawyers is “I know art when I see it,” then we need to add Catharine MacKinnon’s response: you need to know what I see when I see what I see.

I want to talk about the role of hybridity: First, there’s an obvious contrast between many fanworks and the prototypical fair use of biting, mocking criticism. This isn’t a reason to reject fair use claims, but a reason to endorse multiple prototypes of fair use. And the multiplicity could be founded in part on multiple literary theories refusing to settle on a particular position about the values of originality and difference versus repetition and familiarity, in Kristina Busse’s words.

Fandom is particularly suitable for producing multiple prototypes because multiplicity is at the heart of fan cultures: you can have fifty first-time romantic encounters between the same two characters, or five hundred, because fanworks are not constrained to follow a single canon. Contrast that to the rhetoric of scarcity Zahr Stauffer identifies in attempts to monetize fandom and reward the “best” fans of a particular series. Commercial culture promises an infinity of options but cannot deliver; nobody gets to go home with the entire contents of the store. Selectivity seems so natural to the commercial project that the copyright owners trying to turn fandom into marketing don’t even seem to notice the way in which their baseline assumptions about value, coherence, and scarcity contradict the assumptions of the fans they’re trying to reach.

Multiplicity of actors: Transformation often evokes the idea of one work or author performing a sort of alchemy on an inert original work, which serves as an ingredient. But transformation is more than that: transformation exists in the mind of the author, and in the minds of the audience. This type of transformation is not just dynamic, it is interactional. It is embedded in a context, and this has lessons for the law. Fanworks make particularly salient the ways in which one work’s linkages to other works—its relational and positional attributes—matter to our understanding of every one of those works.

So what does that mean for legal analysis?

Ties in to interdisciplinarity in the humanities: Tisha Turk, for example, brings in film and literary theory to understand fanworks and provide a structure for analyzing transformation in non-word-based works. In this context, it’s important to recognize that even economics has proved to require noneconomic accounts of fair use, as Wendy Gordon’s foundational work on fair use as market failure does. Gordon treats the copyright owner’s preference to avoid criticism as something a market analysis need not respect, though ordinarily private preferences are counted for purposes of efficiency analysis. It is the normative value of criticism, not economic valuation, that does the work of justifying many types of fair use even in the supposedly neutral economic calculus. It is the normative value of criticism, not economic valuation, that does the work of justifying many types of fair use even in most standard law-and-economic analysis.

Interdisciplinarity specifically draws our attention to the poverty of current legal analysis as applied to multimedia works; lawyers are very good at text and not very good at images or music, but fanworks increasingly incorporate multiple media: art and photomanipulation and video, extradiegetic music and snatches of dialogue and text, challenging law to use the insights of other disciplines to assess transformativeness, as Turk does.

Casey Fiesler investigates another hybrid form, the role playing game, which has caused rather a lot of cultural anxiety, at least when it comes in the form of a video game. Some states have tried to regulate violence in videogames in ways they concededly can’t regulate violent films, because the game medium is arguably different in its effects—aesthetic and moral—on players. Our First Amendment-loving courts have not been particularly receptive to these regulatory claims, but that may be more a symptom of lawyers’ inability to see differences in media than a positive sign. As Fiesler tells us, because videogames mix types and positions of authorship—graphics, dialogue and storyline may all have multiple sources—they challenge our existing views of creativity and control, especially when female gamers start participating.

Likewise, Melissa Tatum with Bob Spoo does fascinating work investigating the relationship between words and music in filking; both existing and new music can be used with fannish lyrics, and filkers seem to treat both forms relatively equally. And indeed, most filkers’ understanding of copyright law suggests they feel relatively unconstrained, at least in private noncommercial settings, in their choices of music. Explicit transformation or what’s conventionally called originality are coequal, as perhaps they should be in any artistic community.

Another feature of ties between works is the pervasive dialogue between works and people that might at first seem to exist in separate spheres: Fiesler looks at an inherently collaborative form, the role-playing game, which foregrounds the role of community in constituting the creation as well as the value of the creation. Stauffer and Busse likewise emphasize the web of texts. One feature of a web: Put a foot down on one strand, and everyone else on the web may tremble. Connected to the debate over commercialization: is there a spider at the center of the web? If it can now sense us more easily, will it demand to suck out our juices?

Commercial and noncommercial spaces interpenetrate. De Kosnik asks whether we should retreat from fan culture’s valorization of noncommerciality given that other people make money from us: we are only noncommercial in a particular sense. Given that I don’t think the appropriate baseline is that everything should be paid for by someone else, this is problematic precisely to the extent that it is distributionally unfair, and I think that’s a very hard question.

As de Kosnik points out, there areat least two relevant positions: fans should have to pay copyright owners to share their creative works withothers, or somebody else should pay fans for sharing. Avoiding option one has been a fan priority, even though it may position us badly to take advantage of option two, should option two become a realistic prospect.

I think this focus on noncommerciality makes sense, given that option-one problems remain quite pressing. One legal aspect of the hybridity of paid and unpaid labor, for example, is that noncommercial actors use commercial spaces; how will we deal with that mix of pecuniary and nonpecuniary interests when third parties claim that the noncommercial actors are therefore engaging in commercial use subject to compensation/control requirements?

Dreamwidth: commercial venture designed to be fan-friendly, without preexisting ties in the traditional media. Many things to say about this, but one point I want to make here: it's an open source project involving 80-90% female coders, similar to the OTW’s Archive of Our Own—possibly the largest female-dominated open source projects on the web. There are ties between the ultimate goal--protecting our fan communities—and building these new spaces. It turns out if we want a place to chat, we need to build a meeting house. So now we are carpenters because we are readers and writers and vidders. Likewise, to represent ourselves in academia, fans created a journal, which Karen Hellekson is going to talk about, and thus started to negotiate academic power, Open Access publishing, and the power of categorization, including the ISSN. Skills are connected in sometimes surprising ways. Laura Murray is going to talk about copyright activism in Canada—women may understand copyright as relevant to the extent that they negotiate the divide between underground safety versus public participation.

What can we get out of making these links? Drawing on Carol Gilligan’s concepts of moral maturity, based on studies of certain women’s moral reasoning: I would argue that maturity in copyright’s theory of creativity requires both independence (respect for dissent) and connection (respect for the community). Women in fan communities seek recognition as creators and regularly recognize the claims of other creators in the form of credit and compensation. Asserting their creative independence and their creative embeddedness at the same time—their basis in and distinctions from the commercial economy--fanworks offer a working model of hybridity in creative production, one the law would do well to recognize.

She blinded me with science

Via Eric Goldman: putative class action against eHarmony, alleging that the advertised scientific matching system is decidedly unscientific and leaves subscribers open to scammers. eHarmony denies the allegations.

Dilbert explains why rebates are misleading

In today's strip.

Turnitin still on top

A.V. v. iParadigms, LLC (4^th Cir. 2009)

The court of appeals affirmed the district court’s finding of fair use, though reversed on the counterclaim for violation of the CFAA. I only have things to say about the former.

Further evidence for Tony Reese’s explanation of transformativeness as dealing with purpose, not transformation of the content of the work: “The use of a copyrighted work need not alter or augment the work to be transformative in nature. Rather, it can be transformative in function or purpose without altering or actually adding to the original work.” This is true even if the function isn’t well served, the Fourth Circuit says, rejecting the claim that Turnitin isn’t transformative because it’s not very good as a plagiarism detector: “The question of whether a use is transformative does not rise or fall on whether the use perfectly achieves its intended purpose.”

Other bits of the fair use analysis: the second factor didn’t favor plaintiffs even though the works were creative because the use here was “unrelated” to the creative components—it was designed to find plagiarism. Same with the third factor.

On market harm: the potential market effects were “theoretical and speculative” because plaintiffs declined to participate in the market that did exist—the market for selling term papers and other student work.

Slate isn't Fox

Fox fired a reviewer for watching and writing about a leaked copy of Wolverine. Slate now runs Farhad Manjoo's piece on how he's basically given up on Netflix for Bittorrent. Hope Manjoo has a good lawyer. Also: People have said for a while that movies/TV were heading towards where music went in terms of online accessibility, but Manjoo's piece notes that movies are subject to very different contractual relationships making changes in authorized online delivery perhaps even harder to work out.

When casebooks become cases

Mark McKenna pointed me to this story about a lawsuit over a casebook supplement that bears the name of the casebook authors but didn't come from them. He asks whether Dastar is a problem. Courts have been, at a minimum, confused over the application of Dastar to explicit passing off; at the very least, this seems like a case in which the rump cause of action for false advertising should apply.

This is even more meta because the Ginsburg et al. trademark casebook contained, or at least used to contain (my memory for editions is a bit limited, and they really reshaped this section after Dastar), a hypothetical about a publisher who put out a new edition of a casebook with different authors but original names.

Advertising Law CLE

Barbara Wilson of Franklin Pierce Law School pointed me to a program on European and American advertising law run by Franklin Pierce and the University of Limerick in Ireland, July 24-25, 2009. Topics covered include green claims, embedded ads, and testimonials.

My colleague David Vladeck to the FTC

To head the Bureau of Consumer Protection. CL&P blog has details.

Public performance

President Obama read Where the Wild Things Are at the White House Easter Egg roll, followed by Michelle Obama reading If You Give a Mouse a Cookie, both great favorites at our house. The AP may go after Shepard Fairey, but will the copyright owners go after the President and C-SPAN?

Statin advertising and FDA preemption

New paper on SSRN: Theodore Eisenberg & Martin T. Wells, Statins and Adverse Cardiovascular Events in Moderate Risk Females: A Statistical and Legal Analysis with Implications for FDA Preemption Claims. Abstract:

This article presents: (1) meta analyses of studies of cardioprotection of women and men by statins, including Lipitor (atorvastatin), and (2) a legal analysis of advertising promoting Lipitor as preventing heart attacks. The meta analyses of primary prevention clinical trials show statistically significant benefits for men but not for women, and a statistically significant difference between men and women. The analyses do not support (1) statin use to reduce heart attacks in women based on extrapolation from men, or (2) approving or advertising statins as reducing heart attacks without qualification in a population that includes many women. The legal analysis raises the question whether Lipitor's advertisements, which omit that Lipitor's clinical trial found slight increased risk for women, is consistent with the Food, Drug, and Cosmetics Act and related Food and Drug Administration (FDA) regulations. The analysis suggests that FDA regulation should not preempt state law actions challenging advertising that is not supported by FDA-approved labeling. Our findings suggesting inadequate regulation of the world's best-selling drug also counsel against courts accepting the FDA's claimed preemption of state law causes of action relating to warnings and safety. Courts evaluating preemption claims should consider actual agency performance as well as theoretical institutional competence. Billions of health care dollars may be being wasted on statin use by women but the current regulatory regime does not create incentives to prevent such behavior.

Lather, rinse, repeat: horse shampoo TM case continues

Schneider Saddlery Co., Inc. v. Best Shot Pet Prods. Int’l, LLC, 2009 WL 864072 (N.D. Ohio)

Sometimes a judge just decides to opine on the state of the law, as I fondly remember Judge Edward Becker doing: often enough, a Judge Becker opinion would tour both the basics and the intricacies of the area of the law at issue in a case, whether the tour was necessary to get to the final destination or not. So it is here, in a case about two parties who both wish to use the term ULTRA on equine grooming products.

In 1984, Schneider began selling ULTRA horse grooming products. It registered its marks in 1985. In 1990, unaware of Schneider, Best Shot began selling ULTRA grooming products targeted at a variety of animals, but not horses. In 2001, Best Shot expanded to horses, using ULTRA WASH, ULTRA PLENISH, and ULTRA VITALIZING MIST.

Before registering the marks for equine care, Best Shot had a trademark search done. The search turned up Schneider’s marks and the trademark attorney expressed some concern, though the attorney noted that there were a large number of ULTRA registrations and uses, making the mark likely weak. Best Shot applied for and received a registration, though it didn’t explain to the PTO that the marks were intended for use in the field of equine care, nor did it disclose the existence of the Schneider products. (The registrations are for “animal/pet grooming products”; from what I saw online, Best Shot sells the products for cats and dogs as well.)

Schneider didn’t contest any of the applications, but the court considered this of negligible significance in this case, though noted that matters might be different if a registrant failed to contest a new mark that was subject to an “extremely public unveiling” prior to registration. (The Travatan v. Xalatan case I was involved in litigating is an example of a case where the competitor, Pharmacia, should have objected when the registration was published, because so much was at stake and Pharmacia knew so much about Travatan.)

Scheider hasn’t identified any customer confusion, though Schneider’s sales decreased in the only catalog known to carry both parties’ products.

Counterfeiting

Schneider alleged that Best Shot’s marks were counterfeit. The court granted Best Shot summary judgment on this issue. Counterfeiting requires a lot more than infringement; it requires that a mark be identical to, or substantially indistinguishable from, a registered mark.

Summary judgment is usually appropriate if word marks differ by two or more letters. Schneider argued that the marks were “identical” because they both use ULTRA, but the court thought that was in direct contravention of the statutory scheme, which reserves counterfeiting liability for the worst of the worst, not arguable cases of infringement. Reasonable consumers would not believe that the junior mark was the senior mark; there was no counterfeiting as a matter of law. The Best Shot marks include an entire word that the Schneider marks don’t, and the commercial appearance differs.

The court commented that some cases suggest that the inquiry is “not really whether the marks are substantially indistinguishable, but whether the marks are employed in such a way as to cause a consumer to believe that the product itself is counterfeit.” But the court thought that standard, whatever its practical merits given the lay meaning of “counterfeit,” clearly conflicted with the statutory language, which focuses on the mark.

Best Shot asked for attorneys’ fees on this claim; the court denied the request, even though Congress wanted to discourage plaintiffs from making frivolous allegations of counterfeiting in an average infringement case, so as not to raise the specter of treble damages where they’d be inappropriate. The court thought that interpreting “counterfeit” was a relatively new area of law involving a number of judicial glosses; Best Shot would be allowed to renew its motion at the conclusion of the case if appropriate.

Infringement

The court found material issues of fact on many of the relevant factors.

Strength: Schneider argued that its marks were strong because they were incontestable. The court took the (better) view that likelihood of confusion is a separate issue from validity. Some courts treat incontestability as creating a rebuttable presumption of strength, but the analysis should be separate: “there is no apparent reason that the incontestable status of a mark should automatically translate into a well-known mark.”

On to the evidence, then: Best Shot’s expert did a survey that allegedly proved ULTRA weak. The court found this consumer survey to be “strong and currently uncontroverted evidence” of weakness. Best Shot also argued that there was extensive third-party use of “ultra,” which may weaken the mark even if used on other goods, but Best Shot had the classic problem at this stage—it didn’t show that the “ultra” marks were actually used in the marketplace, as opposed to being registered at the PTO.

Schneider argued that its marks were strong because Schneider had used ultra for 23 years and spent considerable money on promotion. Schneider could use this evidence to persuade a jury, but a reasonable jury could consider the marks weak.

Relatedness of goods: They’re the same, which weighed heavily in favor of finding likely confusion. In a European context, or in an earlier period in American trademark law, same goods plus use of highly similar mark would be the end of the story. The court found that the “better” cases relying on a presumption of confusion in such circumstances require identical use plus a clear intention by the junior user to derive a benefit from the senior mark.

The court even went out of its way to identify a “misstatement” of law in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979), which said: “When the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus.” This was not a misstatement at the time. It may be so now. As Mark McKenna has noted elsewhere, the multifactor confusion test now so dominates that it seems to have erased even judicial memory of the simpler tests once used for directly competing goods. The court rejected any “[rigid] rules” enabling a confusion finding, even a presumption of confusion where the marks are similar and the goods are the same, noting that this is one reason summary judgment in infringement cases is rare.

Nonetheless, identical goods substantially increase the likelihood of confusion where the marks are similar.

So, similarity: First, the court concluded that standing alone, Best Shot’s addition of a word or words did not render the marks dissimilar. Given the products at issue, “plenish,” “vitalizing mist,” and “wash” were not sufficiently distinctive in themselves to render the marks dissimilar. Similarity still exists when the marks have the same overall connotation. However, the use of “Best Shot” as a house mark would allow reasonable jurors to find less likelihood of confusion (or more, if they found that consumers would think Best Shot had been licensed to use the mark). The court commented that, were it the factfinder, it would be persuaded by the licensing argument because the products serve identical functions, but a reasonable jury could disagree. (And I hope it would, with a mark as inherently weak as ULTRA.)

The court concluded that the similarity of the logos gives Best Shot “an extremely steep challenge at trial on the question of similarity,” but the house mark plus the additional words still create a genuine issue of fact.

Actual confusion: No evidence of it, which a jury would weigh in Best Shot’s favor. The court commented that, were it not bound by precedent, it would conclude that the absence of substantial confusion could often by itself answer the question of whether there’s a likelihood of confusion. “If consumers are exposed to substantial marketing efforts from both companies, yet no evidence shows that any consumers have actually been confused, there is substantially less likelihood that consumers do or will find the marks confusing.” But binding precedent is to the contrary, and anyway even this conclusion wouldn’t entitle Best Shot to summary judgment, because both parties have a fairly small market share and there’s no evidence of extensive marketing to a unified customer population.

Some evidence supported the inference of likely confusion. Schneider argued that consumers generally don’t allow unauthorized products to be used on their horses. Thus, consumers “constantly” return products because someone mistakenly bought the wrong product for them. If consumers have been confused by the marks, then, some record of confusion ought to exist.

Marketing channels: both use the internet and catalogs, and the customer base overlaps. But there was only one catalog that carried both, and no evidence that the same websites carried both. The court quoted one case holding that when both parties use the internet, confusion is more likely—which means that the likelihood of confusion, or “confusion in the air,” if you will, has simply increased over the past ten years. A reasonable jury could conclude that this factor favors Schneider, or could accord it little weight.

Degree of purchaser care: Schneider’s sworn testimony was that customers of horse grooming products exercise little care. Horses are expensive, but consumers might still just use any old shampoo on them, just as the owner of an expensive car may use the same car wash as the owner of a cheap car. (Horse lovers, don’t come after me: not my analogy.) Best Shot argued that end users, though, do exercise substantial care. The court concluded that Schneider had the better argument. Purchasers can have big effects on trademark value even if they’re not users. End users might stop requesting a particular product if purchasers keep bringing back the wrong product; or end users might decide to try the new product and switch.

Anyway, where the marks are similar, purchaser care becomes less relevant—confusingly similar marks may lead a careful purchaser to nonetheless assume affiliation or other connection. Since the marks here are quite similar, the degree of purchaser care is less significant. (I think this does exactly what the court cautions against elsewhere: risks reducing infringement to circularity. If the marks weren’t similar, you wouldn’t be doing a confusion inquiry at all. If purchaser care is to be a meaningful factor, it must affect likelihood of confusion when the marks are similar enough to create a dispute.)

Intent: Good faith is rarely relevant, but bad faith is—it allows a factfinder to assume that a party’s intent to cause confusion was successful. Schneider argued that Best Shot’s knowledge of Schneider’s marks allowed an inference of intentional infringement. But Best Shot argued that it was just expanding its own marks from other animal care markets. A jury could agree with Best Shot, creating a material issue of fact.

The court commented that the current law of intent is messed-up, though “the ship has likely long-since left the port on this point.” Within the multifactor test, intent is circular: presume bad intent because the marks are similar and presume that the marks are similar enough to confuse because of the bad intent. It might be better to consider intent only when there’s direct proof of intentional infringement.

Ultimately, “Best Shot has an unquestionably difficult task before a jury,” and the court commented that as the finder of fact it might well find infringement, but that wasn’t the court’s job.

Finally, the court held that, though the issue was a close call, Schneider might be able to get an accounting of profits or damages if it prevailed. First, the court held that—given the 1999 amendments to the Lanham Act, and despite some older precedent—willfulness is not a prerequisite to an accounting of profits, and anyway Schneider had enough evidence of willfulness to go to a jury. Schneider could also get damages even if it couldn’t prove particular diverted sales, as long as it showed some damage. (Showing infringement alone wouldn’t be enough.) But there was testimony that Schneider saw a drop in sales in the one catalog where the parties competed. Schneider had enough to survive summary judgment on both profits and damages.