Straight Dope takes on deceptively misdescriptive trademarks

Or Grape-Nuts, anyway.

Noncelebrity false endorsement claim proceeds

Arnold v. Treadwell, 2009 WL 2222928 (E.D. Mich.)

When do you not need to show secondary meaning to gain protection for a personal name under the Lanham Act? When you allege a violation of §1125(a), apparently. Plaintiff is an aspiring fashion model. Defendants run a business specializing in digital photography and run associated websites.

Plaintiff alleged that she agreed to have non-sexually-explicit photos taken by defendants to build her portfolio and advance her career. She alleged that their agreement allowed her full control and approval over any use or distribution of the photos, and that defendants violated that agreement by posting pictures on a pay site it owned and by licensing a magazine of ill repute to run her picture. Don Diva Magazine published the picture in its “Sticky Pages” section, and included the words “Try to Concentrate,” along with plaintiff’s real first name. The photo also showed up inat least one ad for the magazine. (Defendants claim to have a written release, but were unable to produce it for purposes of the summary judgment motion.)

Plaintiff’s aspirations aside, she’s been working as an exotic dancer at a place called Trumps, and “her attempts at modeling have met with little success. She has had no identifiable modeling jobs apart from a single job passing out flyers at an unidentified event.” Still, she’s made efforts to launch a modeling career and made attempts to control her image, including using a false name as an exotic dancer.

Plaintiff moved to strike defendants’ summary judgment motion to the extent that it was based on the First Amendment, on the ground that it was an affirmative defense and had not been included in the answer. The court agreed, based on dicta from other Lanham Act cases, that the First Amendment is an affirmative defense that should be raised in an answer. “The issue of whether the various publications and media that published the plaintiff’s image constitute expressive content so that the heightened standard applied by the Sixth Circuit in Parks should apply require the development of facts that are not generally relevant to a plaintiff’s prima facie case under the Lanham Act.” Here, the plaintiff would be prejudiced by waiving the requirement of Rule 8, “because the plaintiff has been deprived of the opportunity to develop facts that would tend to show that the defendants’ websites were not the type of expressive content contemplated by the Sixth Circuit in Parks that would require Parks’ level of heightened scrutiny.” Query: what facts would tend to show that a magazine isn’t protected by the First Amendment? Is there any credible argument that the magazine is commercial speech, or some other un- or less-protected type of speech? (More on this in a moment.)

The key remaining question was whether the plaintiff had to show that she was a celebrity before she could claim false association or false endorsement under the Lanham Act. Courts have required a plaintiff to show that his/her persona had commercial value, but in most of the cases the court discussed, the plaintiff’s celebrity status was undisputed. Other cases in which celebrity was in play were complicated because the “likeness” at issue was not a photo but some other indicator of identity, and celebrity was key to recognizability.

The court followed Condit v. Star Editorial, Inc., 259 F.Supp.2d 1046 (E.D.Cal.2003), which required a §43(a) plaintiff to have a commercial interest in her name—meaning at least a present intent to commercialize her name--because of the commercial purpose of the Lanham Act. Here, the plaintiff had such a present intent, and thus stated a claim.

Because there was a dispute over the scope of her consent to be associated with defendants—she says she agreed only to allow pictures to be shown on one of their websites, and the pictures were the least risque of the bunch--summary judgment was inappropriate on the issue of false association.

Then the court specifically addressed defendants’ First Amendment arguments, arguing that under the Parks v. LaFace rule, the photos were actionable only if they had no artistic relevance or if they explicitly misled as to endorsement. However, the court held that the defendants hadn’t met their burden of showing that the defense applied: the evidence about whether the allegedly unauthorized website involved “commercial transactions” was disputed. That is, the evidence seemed to show that the website had subscribers who paid fees for access to additional photos, and that defendants held themselves out as a modeling agency.

Okay, but why does that make Parks inapplicable? Does the court think that Outkast did not require people to pay to get copies of its songs? What about the magazine—shouldn’t the analysis have asked whether it was commercial speech? And, oh yeah: commercial transactions are not the same thing as commercial speech, under First Amendment jurisprudence. The only invitation to engage in a commercial transaction at issue seems to be the ad for the magazine (and for obvious reasons, ads for First Amendment-protected speech tend to get treated like the speech itself, as compared to ads for products). Summary judgment denied.

A little leeway here, a little leeway there: this is how the Lanham Act swallows up free speech. I don’t find the defendants’ conduct attractive, assuming the facts are as alleged, but using the Lanham Act instead of contract law to remedy the problem has serious implications for anyone who takes, sells, or publishes photos.

AALL: Unfair Publishing Practice? Who’s to Stop Them?

Superlawlibrarian! (and the Attorney General)

Lucy Ann Rieger, Library Update Inc.: Past experience with Thompson—dealing with a law library that had only clerks, not a librarian; the clerks got invoices and sent them to accounting, which paid. The invoices were confusing—there were multiple subscriptions for the same publication, and invoices were sent for renewals in the same month a new subscription began. Thompson, when called, wouldn’t tell the library its account information, wouldn’t tell it what duplicates it had. The subscription periods were sometimes over 5 years because Thompson would send invoices and credit it to future subscriptions. She asked them for a refund and cancellation of duplicates; initial answer was no until she went to the AALL. This was not just a mistake.

Betsy Stupski, Florida AG’s office and Superlawlibrarian: In 2006, one of her ADAs came to her for a looseleaf on ADA Compliance, from Thompson (no relation to Thomson)—assured her the book would be extremely valuable. Since her office does handle such issues, she agreed to a purchase. Problem arose with renewal: apparently signed up for a renewal plan that included many other titles. Received “HR Question and Answer book” and $163 invoice; sure she hadn’t ordered it. Complained to supervisor, eventually got agreement that she wouldn’t have to ship the book back, they’d UPS it. She was worried about going through the same process in a few weeks; consulted an attorney in the economic crimes division, Tina Furlow.

Problems with publishers: unordered merchandise; order forms made to look like invoices or renewal notices. She was interested in solving the problem on a structural level, rather than one unordered shipment at a time.

Lessons: make waves. Keep fighting. Multiple complaints are more likely to get the AG to act. Formalize your complaints in writing. Be wary when dealing with an unfamiliar publisher—pay close attention to documentation. Use your contacts. Her advantage: she was in the AG’s office! (Strikes me as an example of picking the wrong target; but then, if you have an abusive standard contract, you might forget to modify it for the AG.) Might take some time—received unordered merchandise in 2007, and settlement only happened a year later. Don’t throw out the baby with the bathwater—they did like the ADA Compliance Manual and wanted to continue the relationship with the publisher, but they didn’t want to take everything the publisher wanted to sell.

Tina Furlow, Florida AG’s office: Settlement agreements with major legal publishers. Unordered merchandise is a familiar consumer complaint. Prior investigations of things like “free ringtones” that came with charges to the cellphone bill. Began with one complaint, but many consumers were receiving recurring charges on their bills—an emerging marketing method. Result: agreement with cellphone company not to partner with other companies that advertised free ringtones. Ringtone “subscriptions” were a new twist on an old problem.

Useful for investigation: Betsy and others still had their notes and emails of contacts with the company. Retention is important! Assistant librarian had investigated publisher via website and ordered via phone; didn’t remember anything about additional publications. Renewal was where the problem began. The document says it’s the ADA renewal invoice. HR Question & Answer invoice appears to be a typical invoice as well. The issue was resolved in one sense: the office hadn’t paid. But there was still time and aggravation, and the fear that additional books would show up. Preliminary question: did we reasonably believe that other law libraries, agencies and firms that ordered this publication may have received further publications under the same circumstances? If there was a pattern, was that a problem?

One reason to act: the company was a Florida company. They opened an investigation and issued a subpoena.

Florida law: To send unordered merchandise, there must be a clear and conspicuous notice that it’s a gift with no additional obligation. The invoice had tiny print indicating that future merchandise would be sent on a 30-day trial basis, disclosing the practice of “automatic updating.” So the disclosure was there in reasonably easy-to-understand language, but it was in mouseprint on a place on the invoice the library was unlikely to read. Is this “unordered merchandise”? The FTC calls this a “negative option” plan, which is common in library purchases—consumers have the obligation to reject goods/services; failure to reject is treated as acceptance of offer. The first negative option plans were book and record clubs. 1970s saw so many abuses that the FTC considered an absolute ban, but concluded that there was enough benefit to allow them with strict regulation. (Turns out the FTC is currently seeking public comment on the negative option rule.) Now libraries use subscription services/supplementation plans/continuity plans/automatic renewals/free-to-pay conversion or trial offers.

We know that prenotification negative option is lawful because of the FTC rule, but what about other types of plans? The FTC said in 1998 that continuity plans and others are lawful if, prior to sending goods or service, the vendor clearly and conspicuously discloses all the important terms, including that the consumer agrees that failure to reject goods/services may be treated as acceptance. Consumers must agree to the terms and conditions.

Clear and conspicuous: are the terms readily noticeable and reasonably understandable? Told a funny war story about opposing counsel asking consumer to read the contract in a different case; consumer says ‘I can see the words, but I can’t read them,’ and counsel asks ‘Do you have a magnifying glass?’ Hint: that’s not clear and conspicuous. FTC guidelines: placement, proximity, presentation (including being free of distractions) and prominence. Prechecked box with hyperlink to terms & conditions is probably not meaningful acceptance. 1976-2000: FTC had specific guides for legal publishers; rescinded because FTC concluded that general principles of unfair practices should apply, and there was no reason to single out legal publishing.

Brief checklist: was an order placed for this specific publication/service? Is it part of a negative option plan? Is it a gift? If the publisher says it’s negative option, did you agree? Were the terms and conditions disclosed, clearly and conspicuously? If yes, it’s lawful, but if not, it could well be unordered merchandise.

Thompson claimed to comply with all applicable laws, but said it wanted to be clearer and serve customers better, so worked together to improve the negative option.

After this, the AG looked at other legal publishing agreements, like Matthew Bender’s. They also needed disclosure improvements. Agreed to put modifications in place nationwide, including monitoring and compliance reporting requirements. Thompson agreed to offer refunds nationwide. Matthew Bender & Lexis-Nexis limited their refunds to Florida consumers. The companies also paid attorneys’ fees and costs to the AG.

New ads: much more prominent disclosures, and clear option to enroll in automatic shipment if you affirmatively check a box.

If you’re concerned, talk to people in the company—not the sales reps, who may not be the right people. Publishers are often eager to improve customer relationships. You can also file complaints with the FTC online and with state AGs.

Rieger: when you get something, don’t just send it back. Keep a record, tell others, talk to AALL, give AALL’s guide to fair practices in legal publishing to staff, especially staff who open the mail/pay the invoices. Complain to your state AG. We are drafting comments to the FTC as part of its request for comments on negative option.

Q: What about foreign vendors? One of our vendors sends multiple books, and the cost of returning it is so large it’s cheaper just to pay; we say don’t send these but they keep doing it.

Furlow: If these practices are violations of law, they violate the law in your state. Might want to get legal advice about whether you can just keep the publications. Practically, may be hard to enforce, but maybe the AG can help.

Q: If an organization takes a stance against a particular vendor, is there a risk of an illegal boycott?

Furlow: that’s not her area—counsel needs to answer that.

Stupski: There’s nothing stopping us from using informal channels, asking each other about our experiences.

Rieger: Right now we have a great opportunity to contact the FTC in the course of its review of the negative option rule, and the AALL is behind that.

Comment from someone working on comments to the FTC: We do think the rule should be extended to programs related to negative option programs. Question: do we want to put a deadline on these programs? If your predecessor agreed to a plan ten years ago, you may no longer have a record of the agreement—so does there need to be an expiration date after which at least the terms have to be clearly and conspicuously agreed to by the consumer? We also need to investigate what constitutes agreement by the consumer.

AALL: We Don’t Need Copyright to Put an Article on Our Network, Do We?

Steven Melamut, UNC-Chapel Hill Law Library: 1960s, libraries began to acquire photocopiers: brought out a great change in reserve policies. Professors would get back their photocopies at the end of a term; nobody kept records or checked to make sure it was the same photocopy (as opposed to what a student had made). There were guidelines that circulated, but they were very restrictive and not well known or followed.

Fair use: §107 specifically mentions “multiple copies for classroom use,” but it’s not clear whether that applies to reserves—students use them for classroom use. Fair use factors: it’s important to start with a copy you own, not an ILL copy. Market effect is also important: how difficult would it be to get a license? OTOH, if the material is out of print/the owner is difficult to find, you’re reasonably safe. Spontaneous one-time use is also reasonably safe. Commercial use/entertainment is not as easy to defend.

Course pack cases: clearly need permissions. But the Kinko’s and Princeton v. Michigan Document Servs. case were both against for-profit institutions. At the same time, Princeton presumed that there was an entitlement to fees.

E-reserves: began as homegrown system; people didn’t bother to password-protect, and if Google had existed they would have been out in the clear. Publishers feared that no one would ever buy the paper materials again. But for libraries, it was great: get out of the painful photocopy and file folder business. Remote access: students didn’t have to physically come to the library. Clear that we now need to restrict access, but unclear to what degree: limits to university sufficient, or does it have to be limited to class? Can you do it by class number, or do you have to limit it to individual student IDs?

One example: first-year med students are all required to take the same class, rotating through in five sections. If you buy permissions, are you buying it for the whole class, or do you have to buy it five times? Are you responsible if one student decides to download the material and put it up on his own website?

CONFU guidelines, 1996, tried to come up with e-reserves guidelines; came to a stalemate. Probably a good statement: they’re probably fairer than most others, but not official. ALA has a statement on e-reserves: says you should maintain fair use. Important caveat: most online materials are governed by licenses, not copyright, and licenses always trump copyright. If we are diligent about negotiating, we can write in a statement allowing use in e-reserves through content management systems. In the sciences, some licenses are coming out with that written in, but you have to look at the licenses. And keep in mind: some materials are governed by different laws: photographs/slides; music—go to the music library associations for guidelines; video—you are dealing with the DMCA and face DRM issues.

Ass’n of American Publishers has threatened litigation against Cornell, others. Came back with joint guidelines. Equated e-reserves and content management systems with coursepacks, so required permissions, but acknowledged the existence of fair use. Hofstra, Marquette, Syracuse also adopted policies under litigation threat—all private schools, not public.

Georgia State: sued in 2008 regarding electronic coursepacks, course management systems, electronic reserves. Feb. 2009: Georgia State changed policy.

CCC: claim to be a convenient means of getting permission. But extremely expensive, and didn’t cover all materials UNC uses. Even counting the person whose job it is to get permissions, it was cheaper for UNC to continue getting permission itself. Also CCC charges for things that are fair use, at least the first time they’re used.

Publishers want to protect permission income, and want permission for electronic use; libraries want to protect rights under copyright—if you don’t use fair use rights, they’ll disappear, and our budgets don’t allow us to be cavalier about paying for permission; and then faculty want to distribute the materials and feel that any educational use is fair use. You don’t know for sure what fair use is until after you’ve used the material, been sued, and gone to court. Fair use policies are determined by risk aversion.

Advice: when you’re already paying for access, putting links to Westlaw etc. is a good idea. But also use fair use so you don’t lose fair use. Tell students not to repost materials. Keep password restrictions. Remember e-reserves and fair use when negotiating contracts. At the end of the semester, terminate access.

Publishers think there’s no difference between e-reserves and course management software; the difference is library v. faculty control. He hears that faculty are not sending e-reserves in, but using course management software to post.

Kevin Smith, Scholarly Communications Office, Duke: he deals with copyright in relation to faculty and graduate students at Duke.

CMS allow faculty to create links or to upload readings and other content directly. Many readings are now offered through CMS, as well as video, music, and slides. Potential for many copyright issues due to lack of awareness, or self-help—faculty may not be happy with library’s rules. This can create liability for individual faculty members and the institution. It’s an issue of attitude.

Four responses: (1) all educational uses are fair use; (2) reserve policies are too restrictive; (3) I wrote it--it’s mine; (4) the perfectly logical one: if I can show it in class, I can show it on Blackboard. There is a sense in which the rules for transmissions were meant to mirror the classroom experience, but it’s not as simple as that would have you believe. Different rules regarding the amount of audiovisual material.

Georga State: Duke was also threatened in 2007. Three publishers challenged the use of e-reserves and course management systems. Publishers are asking for injunction, not damages. Georgia State argued that its new policy made prior acts irrelevant and sought a protective order from the court. They got the protective order: the amount of material already revealed in discovery regarding older practices was already sufficient to make the argument that the new policy isn’t all that different from the old. The new policy is quite assertive about fair use. A policy that was 100 pages long is now about 8. Partly because they now recognize that in the current situation their faculty have to understand at least the basics of fair use. In the past the library has taken care of this stuff, but CMS has changed the landscape.

So, institutional decisions: how much do you try to explain the four factors? How much do you apply it to specific uses or tech? Do you give a checklist (fair use checklist making the rounds)? Do you specifically mention spontaneity/single-time use? What kind of assistance do you offer? Recommend linking to licensed databases; offer help. These are decisions about how aggressive an institution wants to be about fair use.

Fair use checklist: He thinks it’s a bad document, creating the impression that fair use is mechanical. But fair use isn’t that way, and the checklist also very easy to manipulate. Note that a version appears on the CCC website. And he also thinks it’s virtually a required document, because decisions about what goes into a CMS is being made by RAs or administrative staff—nonattorneys, nonexperts. They have to make quick decisions about a huge pile of stuff. They desperately need help, and the checklist, for all its faults, helps them make a reasoned decision. And the value of a reasoned decision for a nonprofit higher education decision is that it provides a real benefit in a fair use analysis--§504(c)(2), which limits remedies, remitting statutory damages, for a wrong but good-faith fair use decision. Real reduction of risk!

How can the library help?

First, offer assistance creating links to licensing content: not necessarily obvious to faculty, who may not know about journal availability, URL persistence, and authentication for offcampus logins. Remind faculty that they may not own their own materials, and that they shouldn’t sign such agreements in the future! Provide a central service for CMS evaluation—let the library help even when CMS is used. We can make folks aware that we can help with decisions. At Duke, we try to encourage use of e-reserves because we have mechanisms in place to make a fair use decision and buy permissions when necessary.

CCC: First possibility, individual licenses. Not clear whether faculty will do this work. Second, Annual Campus License: covers e-reserves, coursepacks, faculty CMS, but not ILL. Not all publishers using CCC participate in the annual campus license, meaning that transactional permissions are still needed.

Music and video: implicates fair use, the TEACH Act, and the DMCA. Faculty ask to stream video through a course site and save class time. TEACH Act applies to distance education and to hybrid courses. Transmissions have to be an integral part of a class that is a regular part of systematic, mediated instruction. Less flexible than face-to-face exception, but most classes meet that requirement.

Big issue: portions. Can transmit all of a non-dramatic musical or literal performance. (All of a symphony, but not all of an opera.) Reasonable and limited portions of films or dramatic musical/literary performances. Real stumbling block (note interaction with DMCA: how is one to get that portion to show a relevant film clip?) Displays comparable to face-to-face teaching—which is probably anything you’d really want to do.

Other TEACH Act requirements (no litigation yet): restricted access; notice to users, copyright policy and educational efforts; reasonable TPMs to prevent student retention or downstream copying—his suggestions: streaming music or video; possibly thumbnail or low-resolution images; possibly disabled right-click to make it harder for students to download—might strengthen the fair use argument regarding e-reserves.

Fair use is more flexible than the TEACH Act, but the TEACH Act probably allows larger portions; fair use probably doesn’t allow you to use a whole film in most cases. Note that anti-circumvention still applies. Analog can be converted to digital for TEACH purposes. Permission can be difficult to obtain, though SWANK is beginning to license streaming films through CMS (it’s rather expensive).

Is there a point at which we need to stop thinking of film as “extra” to classes and start thinking of it as central? If the faculty member thinks the film is central to the class, sometimes the answer might be that the students should buy the film just like they buy the book.

Linda Gray, Nellson Mullins Riley & Scarborough, LLP

Fair use in the private law library. Attorneys want information so fast, coming out of law school where materials have been immediately available; they do not think about copyright issues. A partner is not going to spend time downloading an ANSI standard onto his desktop for use; it’s not practical. If the librarian got a digital copy, the attorney wants the digital copy sent to him/her, regardless of whether the purchase authorized presence on multiple computers. Observation: librarians have gotten more concerned about copyright compliance over the course of her career.

Special issues for private law librarians: Their use will likely be considered commercial, even if it’s only intermediate, following the Texaco case. Puts us in a bad situation, as the AALL guidelines warn.

Gray said, wrongly, that printing out a purchased digital copy licensed for one hard drive only and scanning it for an attorney’s use was circumvention. (I think she may have meant that it was an infringement, which is a much better argument, but she was talking about the DMCA.)

Very dangerous to sent out tables of contents and solicit attorneys to ask for copies of what they want, unless you have an agreement with the publisher—you can send out the tables of contents, just don’t do more than that.

To keep ourselves safe, we need to make sure we’re making only a legitimate number of copies and retaining copyright notice. She also copies the copyright agreement that comes with an article and sends that along with the article itself to the attorney who requested it.

CCC: Is expensive, and not comprehensive. Has heard that one publisher tries to write its licensing agreement with clients such that they can’t use the CCC, even though that publisher gets royalties from the CCC; that’s wrong.

Very few private firms have staff to get permissions. Not an option for most of us.

NYT on Muscle Milk and others

This story is chock full of great advertising and trademark law puzzles: when is milk not milk? If "soy milk" isn't deceptive, can "muscle milk" be? If Muscle Milk is a legitimate trademark, can the company oppose other trademarks using "Milk"?

Notably, Nestle brought a complaint against Muscle Milk using NAD and is petitioning to cancel the trademark, but didn't file a Lanham Act suit. My best guess: worried about standing, even though Muscle Milk is now available in the refrigerated section near the chocolate milk.

Weirdest paragraph:

CytoSport countered that it had never “marketed Muscle Milk products as flavored dairy milk,” adding that, rather, it is modeled after another milk entirely. “CytoSport’s marketing and advertising materials have made it clear — over the more than 10 years that Muscle Milk has been sold — that Muscle Milk products are high-protein nutrition products designed after one of nature’s most balanced foods: human mother’s milk.”

I understand the differences between human and cow milk--in this culture, discussion of same is very hard for mothers to avoid--and yet "another milk entirely" seems off to me.

So, what do reasonable consumers think "milk" is in this context? What's the relevance of the FDA-required label that the product contains ingredients derived from milk, even though it's not considered dairy because it's only got whey in it?

Google Books: Equal access to knowledge

The Institute of Intellectual Property and Social Justice at Howard University School of Law and Google

Equalizing Access to Knowledge

Keynote Address: David Drummond, Senior Vice President, Corporate Development and Chief Legal Officer, Google Inc.

Many underserved communities exist in America: minority groups, people with visual impairments, smaller educational institutions—historically black colleges have endowments 1/3 average. Education spending and outcomes are disproportionate for black and Hispanic students; visually impaired don’t have access to the same textbooks as other students. We are an unprecedented opportunity to increase access for everybody. Remove physical obstacles to acquiring knowledge; level the playing field.

Google’s founders worked on a digital library project at Stanford; always wanted to bring libraries into the digital world. When he showed up to work at Google, they told him they wanted to digitize the world’s books; he was a bit daunted. They figured out the logistical/technical challenges, and they felt they could navigate the fair use challenges.

Google Book Search: search across books like you search across the internet. We’ve scanned 10 million books and are just getting started. We have books in most of the languages Google is in; work directly with publishers. 1.5 million are public domain books. Old but valuable. The Library Project: a couple partner libraries include in-copyright books: scanned and indexed, but only show snippet. About 20% of books in these libraries are public domain, 75% out of print, and 5% in-copyright and in-print.

Settlement (for a big collection of settlement-related documents, check out James Grimmelmann’s Public Index): Allows collective license from rightsholders. Better than snippet view, plus free access for US libraries, plus new revenue stream reviving the commercial market for rightsholders. This settlement will also unlock millions of titles for the visually impaired, allowing text-to-speech and other techniques by libraries.

Panel Discussion:

Lateef Mtima, Howard Law: IP and social justice issues intertwine. Constitution starts with a social utility purpose: promoting progress. This is accomplished with rights to authors and rights to the public. Tech has pushed us to focus on the social utility of the exclusive rights, given the potential of new uses. Recall that the spread of player pianos and then record players increased access to music past those who’d been able to afford actual pianos and trained piano players before. So we need to link the digital divide with the purposes of the copyright law.

Wade Henderson, Leadership Conference on Civil Rights (LCCR: Voting rights and education were at the core of the civil rights movement. The last frontier: access to quality education and elimination of poverty. Education is the great equalizer. Thus he celebrates the Google settlement. People mired in poverty don’t have access to information, and we won’t get constitutional change targeting public education in his lifetime. Until we restructure education, we won’t succeed; this project is part of democratizing knowledge to create equality for people where they live today.

Civil rights 2.0: take this information and put it into a broader regime of support—this is a tool, not an answer. Incredibly valuable tool, though.

Charles Brown, Esq., Advisor to the President of the National Federation of the Blind: Incredibly excited by the settlement: the promise of approaching a level of equal access to information that has only been dreamed of a generation ago. Equality of opportunity has been a key theme among the blind. Settlement will change the playing field forever for blind people and others with print disabilities; much of the structure is embodied in the settlement. We hope it gets approved.

As with any revolution, this doesn’t occur in a vacuum. By using screen readers and other access tech, the blind can largely get our hands on digitized text material, but we’re too often artificially blocked from doing so. Incredibly frustrating to encounter an ebook seller that will allow us to buy a digitized book and then block digital speech. We recognize and support IP rights. They must be allowed to profit from creativity. As blind citizens, we must also be allowed to enjoy our property rights. Too often, tech features are available only visually, such as through only poorly constructed websites and visual touchscreens. The law requires equal access, but the concept is lacking in actual practice, forcing us into costly litigation—and institutions, including universities, into costly retrofitting. It’s cheaper to build accessibility into the design than to squeeze it in later. Blind citizens will not allow themselves to be thought of as a squeezed-in afterthought. Google and cooperating libraries are taking the right approach.

Brent Wilkes, League of United Latin American Citizens: LULAC has historically been involved in education—created the predecessor to Head Start. Google Book Search will provide equal access to all Americans who have internet access to books that only elite universities used to have. Especially important to underserved communities who have had difficulty getting access to relevant content, content in other languages, etc. Community colleges: about half of all Latino college students go to community college. Forecast: increasing numbers of Latino students; we can’t sustain high high school dropout rates. The Google project provides some equalization of the educational experience. Scanning UT-Austin’s Benson Latin American collection: most students can’t do that, but that content is very relevant to the Latin experience in the US, which isn’t very well documented elsewhere. Eva Longoria can trace her family back 10 generations; lived on the same land grant under 5 different flags; but her history was never readily accessible—Google may help this. Also scanning Spanish works in Spanish universities, in the US and Latin America. Those books aren’t in B. Dalton or even major libraries. A great equalizer for students learning English who need inspiration in their native language.

LULAC has created 53 tech centers across the US for students—students can do their homework. We value any tool helping students with research projects, homework, college application—but LULAC is not a library, doesn’t have a book collection. Google Book Search will help students a lot, making the community tech center more useful as a model.

We are also privacy advocates, and believe it’s important that Google pay attention to privacy issues. We don’t want to see tracking based on reading habits.

Rhea Ballard-Thrower, Howard Law Library: Some believe that Book Search is the death of the book and the end of the world. She believes that the project makes the book better. The laws of library science: books should be used, every reader should have a book, every book should have a reader, it should be easy to access books, and libraries are changing and dynamic. These principles still apply here. We used to be trained to protect books from people.

Now we can protect the originals, but still give access to the content. Scanning satisfies the “books should be used” principle. Historically only the rich had access to the most books; the idea that a student can read the same book whether in an expensive private school or an underfunded public school is amazing. What about “every book should have a reader”? There are some books out there only appreciated by the author and his mother. But search means if you’re that third person, you can find it. Ease of access: libraries now IM people and do everything they can to enable access—ease increases knowledge.

As for change: this is where librarians are sensitive. People sit at home instead of going to the library, and librarians get nervous: will anyone come see us? But there are three essential parts to the library: the collection, the users, and the staff. And they are all always changing. The collection has changed a bunch. Our users have totally changed—general literacy is a change, historically; users now come in with their own abilities to locate information. What made libraries important was not being repositories—a warehouse is not a library. The people who provide the service are key, regardless of whether it’s face-to-face or via IM. Especially with snippets, people will be directed to the library via Worldcat.

Q from Steve Jamar: there is a privacy issue. Also, how much access will there really be given the dedicated terminal issue? Are people really going to leave their homes/offices to use this?

Henderson: Access can’t adequately be achieved through a library system, no matter how good it is. Digital divide is one problem that needs to be addressed; won’t come through Book Search per se, but this will increase pressure to improve access. Google will have to address the issue, going beyond the initial concept.

Drummond: Access is more than terminals. Remember, 20% of the book is a lot; we also expect to have purchase models, including purchase of parts of a book. There’s also an institutional subscription piece: we can license the entirety of works to institutions. And our pricing provision requires us to take into account interests in getting market return along with interests in broad access, allowing our library partners to hold our feet to the fire. We haven’t built the product yet; trying to get the settlement approved—we’re listening to lots of folks.

Wilkes: Most minority communities have only 30-40% broadband access; more relevant content should spur more demand for access. We are also concerned about privacy—going to a library or tech center can wipe out your trackability. And we encourage Google and others to anonymize information.

Brown: Aside from terminals, we want to get computers into everyone’s hands. Schools and classrooms need to be wired. This is a public policy choice: government needs to do it. Then the school has to provide speech/screen enlargement software. But Google isn’t on the hook for doing that. Internet accessibility should be seen as a public utility.

Let’s not go so crazy regulating Google that they can’t make money. The blind would like to have this product, and we are willing to pay in situations where we are getting value—with Google, we know we’ll be able to use the thing.

Q re orphan works.

Drummond: There are some things being missed in the discussion. Orphan works are usually defined as works that might be in copyright but whose authors can’t be found. Those are not the same as the out-of-print works. In the settlement, for the first time in history, there’s going to be a concerted effort to go find the rightsholders of these materials—a financial incentive for people to come forward. With this new incentive, we think we’ll find that a lot of works aren’t really orphaned. There are some, say pictures, where there’s no attribution and you don’t know where to start; books have an author, a publisher, usually a city—a lot of places to start. We believe the vast majority of books will be claimed over time. Many are likely to be in the public domain as well because of the renewal requirement, and we know that many owners didn’t renew, up to the early 60s. We’re spending a lot of money on a comprehensive family reunification program for books. The Book Rights Registry can license out all claimed books on any terms.

Q from someone working on a digital library of congressional black history for the Congressional Black Caucus: Say more about the terminal v. subscription.

Drummond: there will be both—we think most university and research libraries, and even public libraries, will want to subscribe. On top of that, we’ll provide a free terminal for walk-ins. 20,000 libraries will have the right to do this. (Free access to the product, but not free computer and not free internet access.) Drummond was on a NYPL panel yesterday and there was a lot of talk about how one terminal isn’t enough for a big library, but he cautions that the terminal is free. If they find that there’s way too much demand, or if libraries can’t afford the computers, we can rethink solutions.

Q: There are communities where libraries have closed; they don’t have access at all.

Drummond: we can think about expanding the program to community organizations. We can’t have a free terminal everywhere or else there’s no money in it.

Mtima: Other scholars make the same point: what are we going to do about the digital divide? Some of this should have been addressed earlier, and in different (non-Google) fora. Who is responsible for providing terminals? It would be great if Google rushed in. But others have social activist responsibility to make sure that other sectors of society don’t get off the hook.

Q: Library of Congress has 130 million items. Does Google have a goal to put that amount online?

Drummond: We’d like to digitize them all, and not just in the US. It will take a long time, and we won’t be the only ones doing it.

Q re subscription: will price be set by institution size?

Drummond: based on ways other electronic databases are priced: the number members of university community, etc.

Q: How are non-author, non-publisher interests represented in the settlement (libraries, nonprofits)?

Drummond: library partners have been very important in structuring the settlement. Libraries provide the books; had to revise existing agreements with libraries to settle.

Brown: We were represented!

Q re pricing: for nonsubscription users, will there be a set price range? Will it depend on popularity?

Drummond: Rightsholder has option to set price. Some don’t want to charge anything; some want to charge a premium. Or Google can set the price algorithmically, based on popularity, length, genre, etc. Bands of pricing--$3 up to $29 are the ranges, with median likely to be $6-7.

Victoria Espinel: A lot of concerns about access to IP content, but also concerns about access to IP ownership, particularly for minority communities which are vastly underrepresented. Look at patents: less than 3% owned by minorities. Federal research funding: under 2% goes to historically black colleges/universities with high Hispanic enrollment. Disadvantage to minority communities and to the US as a whole. If access is driver of next generation of creativity, the settlement can be a big step forward, but that’s only one part of a bigger issue of ensuring that all communities have the opportunity to participate equally in the economy.

Wilkes: Google may help minority authors get published; don’t need a physical publisher if you can sell on Google Books. We plan to create lists of recommended books, and link to places to buy or find the books.

Marc Rotenberg: Very interested in privacy as a means of social justice. NAACP v. Alabama protected privacy of membership records in order to protect political association. Many Muslims today are very concerned about access to their library records.

My Q: So are institutions third-party beneficiaries of the settlement, given that the settlement requires attention to access in setting prices?

Drummond: No, but we expect our library partners to be really good advocates for access; they’re passionate about it. (For the record, I find this answer persuasive.)

My other Q (this is not how I asked it, but how I’m trying to think about it): Prodded by my earlier misunderstanding of Google’s plans, I’m really curious about the effect of removing images from big chunks of the corpus. We’re moving to a more visual society, and the stuff that people will be getting from Book Search will be in a significant way much less useful, much less alive, than the physical copies. (Which is not to say that the physical copies are accessible, but that the project may not fully do what it claims. The work you get from Google is not the book.) So how level is that playing field?

Drummond: When you claim a book, you get to say whether or not you own the illustrations. (I must have overlooked this part when I was claiming rights for my grandfather’s books; the interface is not up to Google’s usability standards at present.) If you don’t, they’re not going to be searchable, which is the way Google Books works already now. We are interested in making images more available. For certain books, like children’s books, illustrations are so important that we have special provisions for them.

Brown: Our tech people are working on ways to deal with charts and graphs; we have a library we’d like to preserve, too, so the issue of images is salient to us.

Ballard-Thrower: It’s far from perfect. We have a large archive of African-American works, and right now if you don’t come here you’ll never see it—pictures of black lawyers from the 1860s. The beauty of this project is the partnership. There may be difficulties, but the bigger picture is the wealth of information that right now you need an airplane to see.

Mtima: Legally, Google can only get permission from copyright owners; if the publisher doesn’t own the photo, there’s nothing Google can do. (Yeah, except that that’s exactly what Google does do with respect to, say, image search on the web—it defaults to copying and relies on fair use and opt-out. So for Google to say that it is still defending fair use because it has to rely on fair use to scan the photos, as Macgillivray did in his talk, and then to exclude images from the corpus available to users, is a little disingenuous. And it contributes to the rhetoric of a permission society, as Mtima’s statement illustrates. There is something Google can do; it’s called asserting fair use rights, and everyone is aware that the problems of finding rightsholders/the orphan works problems are greater with respect to visuals, making the fair use argument more compelling even given the settlement with authors & publishers.) Don’t let other IP owners off the hook—Congressional activism is important. (Here we agree.)

There was some further discussion of the need for copyright owners to get paid and the relative uncertainty in the relevant communities about the scope of copyright law.

My other thought: I was struck by the power of the point, made by Siva Vaidhyanathan and others before, that Google is essentially being asked/volunteering to take on the role that should be played by government provision of services. In a privatized age, Google offers too many goodies to ignore. But shouldn’t that trouble us?

Women in open source

Kirrily Roberts gave a great keynote presentation at OSCON, singling out the OTW and a separate project, Dreamwidth, as models for open source done inclusively. Since I'm about as technologically competent as a two-year-old chimp (and less so than a two-year-old human), I'm humbled to be associated with a group doing such great work. The presentation is short and compelling; I recommend it highly.

Inspired brand extension?

Alleged uncanny similarities between Starbucks' new "local" brand extension, 15th Street Coffee & Tea, have gotten some play in TM-land. The story has associated weirdnesses--protesters so odd I can't tell whether they're faux or serious--but I'm much more interested in the sign on the front door: "15th Ave Coffee & Tea--inspired by Starbucks."

Isn't "inspired by" usually used to indicate a different source? Are reasonable consumers likely to think this is or isn't a Starbucks company? If they think it is, does that mean that makers of knockoff perfumes and other fashion items are in trouble--is Starbucks pushing the language in a trademark-expansive direction? If consumers think it isn't Starbucks, are they suffering any harm?

Below: a picture I took of "inspired by" perfumes. Click to see what you think.

Revising ads to avoid sudden falsity

Microsoft alters price comparison ad after Apple drops prices. The article is (1) a reminder that comparative ads have to be up-to-date, (2) a pronouncement of victory for price advertising as a way to decrease prices, and (3) a reminder that altering an ad to avoid falsity often doesn’t take much—here, the ad was simply edited to eliminate the specific price comparison, as it remains true that Apple laptops are pricier than Microsoft laptops. (Insert “you get what you pay for” here.) This also ties into a debate over false advertising regulation in general: now that the specific price information has been removed, what information do consumers get from the ad? If they are likely to infer a much bigger, or much smaller, price difference than actually exists, the welfare effects of removing the untrue comparison are unclear. Except that’s also arguably an unfair framing of the issue: if Microsoft edited the ad to update it with the true price differential, consumers would clearly benefit. In a perfect world, that’s what Microsoft would do. But, since the law doesn’t require it, we should probably compare the information provided by the vague ad with the information provided by the specific-but-wrong ad. How does that come out?

AALL: my panel

I too spoke at the AALL, though to a much smaller audience, in a program called Beyond Copyright? How License Agreeements and Digital Rights Management Pose Challenges to Fair Use and the Provision of Electronic or Media Services

Ryan Overdorf, U Toledo law library: manages media services unit.

A couple of case studies: One vendor agreement said the product couldn’t be used on any open computers (computers that didn’t require a login/password). He wanted to scatter research machines through the library. The vendor OK’d it, but only with a written description of how he was going to monitor product use. Years pass; vendor wants to sell a more expensive purchase. Library agreed, on the condition that use was allowed on all campus computers. Done by oral modification.

Notes: tried to analyze actual use of the database; little or no evidence of use. Not only is the vendor limited by ability to pay, but also by client need. The risk of a database is that if you run out of money, every part is gone forever, not like cancelling a subscription. If the database went away tomorrow, who would care? If the answer is “not many,” you have leverage.

Streaming video: it doesn’t always stream. Faculty ask Media Services to record for them to ensure usability in class. Streaming is used for various reasons—quicker download is one—but copyright owners also consider it a protection measure, involving DRM/DMCA, as well as terms of service. The YouTube ToS, for example, bars copying or download other than expressly permitted by the YT site.

His choice: don’t record streaming video for faculty; try to get it some other way. Not much faculty protest. But, media services doesn’t seek to police copyright generally. Faculty can do anything they want. Media services will contact rightsholders on behalf of faculty.

Balancing risks: Media services doesn’t worry about downloading free browser plugins even if a strict reading of the user agreement could preclude doing it institutionally (for multiple faculty members)—when the vendor doesn’t provide a mechanism for getting site licenses, if the vendors don’t care, then he doesn’t either. Likewise, if there are last-minute discoveries of policy violations, they don’t disrupt events, but do follow up with the relevant faculty member. Takeaway: in his experience, there exists reason to be concerned about copyright threats, but there are also practical constraints on what copyright owners can do.

My talk: I love my librarians, who are excellent at helping me add to the Georgetown IP Teaching Resources database even when I ask them to get me porn.

Fair use is now the background, almost completely obscured by the foreground of licensing and DRM unless libraries insist otherwise. I’ll talk about three things: saving streaming video, lending via the Kindle, and losing books from Google. Copyright, DRM, and licensing interact with all of them.

DRM interacts with licensing—content owners claim that the tech plus the terms of the contract constitute a “technological measure” so that if you, for example, give the password to a database to someone who isn’t entitled to have it, you’re circumventing a technological measure.

So far, courts have been sympathetic to this argument that the contract defines the scope of the technological measure—except, oddly enough, in that precise example: the valid but contractually misused password. There, they see it as not circumvention but ordinary use. It doesn’t circumvent a lock to open it using an actual key. Except of course that analogy is worthless in the digital environment: by definition a key that decrypts an encrypted file is the actual key. You can’t pick a digital lock, you can’t smash it. One of the big difficulties of the DMCA is that tech policy was made and is being interpreted by analogy.

I want to call your attention to the recent DMCA hearings on exemptions to the prohibition on individual or institutional circumvention of access controls. Of relevance to librarians who want to provide faculty and students with video that is reliable, that can be saved and potentially edited.

The Copyright Office really wanted to push screen capture software as a solution—the argument is that screen capture software works by saving screen output, after the technological measures to protect the content have been decrypted and the content has been legitimately accessed. Thus, the Office suggested, if you use screen capture software, there’s no circumvention at all in the situation Ryan discussed, where a faculty member wants to save streaming video.

A couple of things to note about that:

The content owners refused to concede that screen capture wasn’t circumvention.

One potential argument: terms of use say you can’t capture the content, and the terms of use plus the streaming together constitute a technological measure controlling access. When you violate the terms of use, you no longer have legitimate access to the work, so you’re engaging in circumvention. I think this is wrong, the Copyright Office seems to think this is wrong, but risk aversion is a factor in actual decisions.

Separately: what about those terms of service? What are the risks with respect to the contract?

Finally, worth noting that screen capture has significant technological weaknesses—though for streaming video where the image quality is already limited, may not be an insuperable barrier.

Next stage in DRM: taking the work back at the election of the service provider.

The Orwell problem: Relevance to libraries: experimental Kindle lending programs—a way to get more books to more users? When I wrote about this last, it was iPods—buy iPods, load books on them. No limit on number of devices you could have, though libraries tend to be conservative and “fair” about that.

Brigham Young suspended its trial program because it was unclear whether the terms of service allowed library uses of the Kindle—Amazon Customer Service has given vague but generally encouraging answers to library queries. Does customer service have authority to bind Amazon? Terms of service suggest that Kindle content shouldn’t be lent. What would happen if Amazon objected? Suddenly a big investment might become worthless.

Secret of contract law: there is no such thing as a well-written contract. And this uncertainty among libraries about lending Kindles has its echo in the Orwell problem.

Amazon’s terms of service provide that Kindle users get a permanent physical copy. But: even if the contract remains unchanged, as an implementation of Amazon’s promise not to do the same thing again in similar circumstances, it’s hard to see what remedy there is for consumers, who got a refund—the damage they suffered was not economic.

The damage is much more conceptual and much more worrisome: damage to the concept of a book as an artifact distinct from the abstract concept of a “work.” Google’s deputy general counsel claims that the Google settlement has “no Amazon Orwell problem”: you will never lose access to a book you bought or remove a book during the subscription period because of the license granted by the settlement. (That videocast is pretty interesting; Macgillivray is a very good advocate, especially nice on framing the “most favored nations” clause of the Google Books settlement.)

The claim that the Google settlement isn’t subject to the Orwell problem strikes me, however, as wrong in important ways.

First, there is a question about what would happen, either with Amazon or Google, after a successful copyright infringement suit. Historically, recall has been a rare remedy. But a large component of that is difficulty. The other components, which might be considered a vague agglomeration of privacy, property in individual copies, and speech interests in preserving existing books, are not well articulated in the case law and might seem less important once a court has concluded that a particular work is infringing.

So now we have a situation where it is possible for the technology to recall a work out of purchasers’ hands. Or hard drives. Every successful plaintiff will ask for this as a part of the remedy. Should it be granted? Well, the promises of an infringer to third parties—the contract—probably wouldn’t stand as much of a barrier; like an indemnification provision, the contract is the infringer’s problem, and the infringer could refund the money while taking back the book as Amazon has done.

Further favoring a recall, there may be ongoing infringement by individual book owners because of the technicalities of copyright law: merely possessing a physical book, even an infringing book, violates no right of the copyright owner. But if your book is digital, then you may be making new infringing copies—when you add a new device to your account, when you back up your hard drive, and so on.

One court has already required automatic updating of software on users’ computers in response to a finding of infringement. Playmedia v. AOL, 171 F.Supp.2d 1094 (CD Cal 2001). Playmedia sued AOL for including a version of the company's MP3 player in its software. The district court ordered AOL to remove Playmedia's software from its customers' computers through a "live update."

So, if someone were to win an infringement case against Google, the corpus might change overnight, in every library.

But, you may well be thinking, the Google settlement means that even authors who don’t know they have rights are covered, so Google won’t be infringing anyone’s rights.

Not so: Unregistered books, though probably a small and ignorable class. Not that easy to ignore: Photographs and other illustrations. Mostly publishers don’t have the authority to grant Google the right to use photos whose copyright is owned by someone else, even as part of a reproduction of the entire book.

[Important update: Alexander Macgillivray of Google informs me that I have misunderstood the plans for the access model: photos and other "noncovered material" will be scanned, but will not be provided to subscribers. So there's no chance of losing that material, because subscribers will never get it in the first place. So my injunctive relief hypothetical is extremely unlikely to materialize. However, it seems to me that the absence of images is a big deal for the value of the corpus. My guess is Google will have to do this image exclusion wholesale, unless publishers somehow--unlikely, especially with the orphan works--distinguish between images to which they have full rights and images to which they don't. And there are a lot of instance where they don't have full rights, or at least aren't confident enough to license them. Just look at how many Kindle books show up without pictures and, often enough without cover art--and these are relatively recent books! Anyway, I think the absence of images from the settlement is definitely worth talking about.]

Individual components of books like photos are not included in the settlement, and Google can still be sued—this is its argument for why the settlement doesn’t give it any reason to stop being a huge supporter of fair use; its argument in case the photographers sue is still going to be that it’s making a fair use.

The photographers did sue the CCC for licensing other people to copy articles that contained photos to which nobody in the licensing system had the copyright—a court in Massachusetts, improperly in my opinion, dismissed that claim on the ground that the photographers couldn’t prove their photos had been copied under a CCC license. I’m no fan of the CCC: I don’t think you can claim to create a market for licensing rights, promise to give people the rights they need to avoid infringing, and then instead of giving them rights just take their money because you don’t actually have all the rights.

But anyway: the photographers have reason to sue Google. It’s possible that at least some books could be found infringing, and out of the corpus they would go, [here's where I'm wrong] regardless of what the settlement says about the rights of publishers and authors.

This is a risk of the Google settlement that has, I think, been underdiscussed—of course there’s plenty of other aspects to talk about. But I think it’s useful to think about Google and the Kindle together—when the information is out there in the cloud, instead of copies controlled by individual libraries, the book becomes hostage to the work, that abstract concept.

The lesson of the case studies: we are increasingly asking people who know how stuff works to apply external frameworks of contract and law to the obvious capabilities of the tech; the limits we’re supposed to follow don’t correlate with the capabilities. Tech shouldn’t be its own justification, but the balance here has been skewed; we need further application of public policy and library principles.

Q: Why not tell faculty that if there’s any amount of money potentially at stake, tell them to get permission?

Overdorf: It comes down to conscience.

Me: I think that’s a really bad way to think about it. You’d never tell anyone to get permission for a book review or scholarly work, even if they’re quoting extensively. Asking for permission was a huge drag on the documentary filmmakers—expensive and often impossible. So they generated best practices, and now they can get insurance and rely on fair use. The CCC rose because of too much deference (aided by the courts) to the idea that if there could conceivably be money involved, then licensing was the right solution.

Q: What can we do as activists?

A: Discuss best practices openly; libraries seem to be unwilling to make public statements about fair use, even when they’re exercising it, which contributes to a climate of fear. And use the power of the purse: it’s obvious that cuts must be made, and one factor in which products have to go should be which are user-unfriendly. CC licenses explicitly preserve fair use rights; push towards that type of usability in negotiations.

American Association of Law Libraries Annual Meeting, Keynote

Jonathan Zittrain, Harvard

The future of the library (and how to stop it?). His image of the library: a fortress, protecting books against people who might mess them up. Today: a fallout shelter, a place you go to protect stuff against disaster—like emergency rations. Collections become archives. What percentage of a collection sees action over the course of a year? 5% says an audience member. 95% is just in case—you could have a Long Tail room.

But books may not remain the primary medium, though we still have to care for them. More and more reading rooms look like computer clusters, and in many libraries (not necessarily law), they’re redefining themselves as a place to go to get on the internet, which resonates with access to information. People are more online naturally anyway—students have their own laptops. He worries that the library is becoming a piggy bank: a source of income for publishers who previously had to tolerate the first sale doctrine. The AALL site has a wonderful little monograph about first sale.

A PC is a generative device: you can put programs of your choice on it. That’s not as true in the tech environment we’re moving towards. First, move to cloud computing: this practice actually has an early roost in the library, as more and more publishers make their content available in a client/server relationship and the library does not have its own copies. Google Book Search: doesn’t allow you to copy the text of a snippet—capacity defined by the vendor, not by you.

Second, a configuration as good as the cloud: the Kindle. In wireless contact with the Mothership Amazon at nearly all times. (I just discovered, incidentally, that if you only have Kindle for the iPhone, you can’t download the files to your computer for backup as you can when you have a physical Kindle. Curses!) Thus, the recent Orwell incident where Amazon withdrew paid-for books from customers’ Kindles (best post title on this: Amazon deletes your books, has always been at war with Eastasia). You haven’t infringed copyright by possessing this copy—it’s not independently infringing to have an infringing copy, though the vendor has infringed the distribution right. Assume the vendor asked you to destroy this infringing book—very few people, especially librarians, would do so. Because the Kindle is tethered, though, it can get rid of the book.

This is only the beginning of the story: defamation, obscenity/porn—there are many ways that a text can become contraband. What if government data is retroactively decreed sensitive? What if the government wants records of who’s looked at it? The protections for libraries are enshrined in law only in teeny tiny ways. DMCA §1201’s anticircumvention provisions say you can be sued for lockbreaking, except for a incredibly narrow exception applicable to libraries. Nobody in the audience, of course, had ever used this exception; this is an exception matched only in its ridiculousness by the performance rights exception in §110 for playing music at an annual horticultural fair.

So how do we value these items which are rarely used, kept for preservation, but are now being slipped into digital containers where library control is slipping? Turn to “library” as a verb. Library and librarians as sources of knowledge for other people: ask a librarian. But why ask a human when you can Ask Jeeves?

Huge progress in the past ten years: natural-language searching from Westlaw. But a little knowledge is a dangerous thing. People skip the Westlaw training and just put in their question. Creates a weird tension with patrons who walk in and start searching, without knowing anything about search strategy. This tension is only going to get more acute. So much work can be done by disembodied distributed human minds, whether highly compensated, like Innocentive, a company that looks for scientific solutions, or not. Zittrain discussed a distributed “call center” company that has people answer calls from home; Amazon’s Mechanical Turk—tiny rewards, but seductive. Reference can be disaggregated into little atoms. You’re solving a larger problem, but will you know the context or be just a cog in the machine? Spinbox: takes voicemail and turns it into text. Turns out that they simply had humans in an overseas call center transcribe the message.

What about library as adjective? Something that makes a thing more or less a library. “Core purpose”: the essence of an institution. What’s the core purpose of .edu? Protecting IP? Some universities think so. U Texas general counsel in 2001 suggested language for a professor to use at the outset of a class to control students’ use of notes and information learned in the class: “My lectures are protected by state common law and federal copyright law …” Efforts to influence kids in middle school to be favorable to IP protection—one recommendation is to have kids use © on their own coursework. Harvard says: students who sell lecture notes may be required to withdraw from the school. Is this what we want our educational instutions to be?

So, what is the core purpose of libraries? AALL has a mission/vision statement. Key terms: “central to society, fair and equitable, authentic, educate.” How well can these values stand in a new technological zone? What can we farm out to the world at large, to Yahoo! Answers etc.? Maybe not so much! When these are commercialized, there are obvious problems: people on Amazon’s Mechanical Turk are paid to write highly positive reviews for products on Amazon—not authentic and not fair. Spammers reward people for solving CAPTCHAs with porn. If there were a Nobel prize for evil, this would be a strong runner-up in the genius category.

The internet was built on noncommercial principles—sharing at its most basic. Every packet is its own adventure! It finds its way by sharing information. But that makes it vulnerable: one Pakistani ISP shut down YouTube by trying to censor it in Pakistan but doing it badly. This hijacking was corrected by voluntary organizations who gave instructions about reconfiguring the necessary routers. Bad news: your house is on fire and there’s no fire department. Good news: people will appear from nowhere, put out the fire, and disappear without payment or praise. This is a weird configuration that keeps the internet running. The Batsignal goes up and a nonofficial source comes and fixes your problem.

Wikipedia: an idea so profoundly inconceivable that even Jimmy Wales never had it—he wanted to write checks to smart people who’d write reference articles. Wiki: designed to be a place for editing, suggestions, preparation of articles for later expert review. But the wiki was the thing that worked. Now, wikis have their problems—but there are more people who visit the problem page and deal with reported problems than there are more reported problems. Wikipedia is 30 minutes away from disaster, but there are people always on duty against that. But what if there were a particularly compelling Star Trek convention one weekend? Do they leave someone behind to revert vandalism?

What this means: Wikipedia editors are responsible for things like protecting the real name of the Star Wars Kid, based on the consensus that his real name shouldn’t be in the article. Here’s a question: assume you received a link to the Star Wars Kid video, and thought it was funny enough to forward it to your friends. But then you get an authenticated message from the Star Wars Kid asking you to avoid further distribution because the video humiliates him. If your anonymity is protected, will you honor this request? Zittrain thinks that most people will limit distribution. What if Dick Cheney asked you not to disseminate a document because it threatens national security? You make an ethical decision on the merits, not based simply on the fact of the request.

Distributed monitoring of things like censorship: there is an untapped desire to be helpful, to be part of something. Hitchhiking may be dead, but the Craigslist rideshare board is thriving. Is the theory “killers don’t plan ahead”? Unlikely. “Hitchhiker” has unpleasant connotations, but now we have a new context. We’ll try to develop systems to make it keep working even if people try to manipulate it. Couchsurfing.org: one guy’s idea of pairing up people going far away who’d like to sleep on a stranger’s couch for free with people far away who’d like strangers to sleep on their couches for free. Over a million happy couchsurfers so far. A system of volunteer ambassadors.

The Wayback Machine: who hired Brewster Kahle to do this? Nobody! He hired himself, based on an idea: the internet is changing all the time, and someone ought to be taking snapshots. Suppose a library had wanted to do this. It would have gone to the General Counsel, who most likely would have flipped out over the copyright implications. This is a directly accessible corpus, opt-out instead of opt-in. Survives by virtue of how compelling a resource it is. Plus there is opt-out instantly; Zittrain believes that the archive doesn’t delete data but does make it inaccessible at request. Project Guttenberg: guy just starts organizing volunteers to type in public books.

The PACER petition: reasonable request for increased accessibility, produced by online organization. People should go sign this petition! If we don’t do it, dot-com will. Definitive information about a book shouldn’t be run by one single company. There is power of pooling research ability, and even in monopsony: the power of consumers to say that they are organizing and have agreed not to buy products with too much price discrimination or too many limits on what patrons can do.

Google Books: $100 million to scan. That’s not that much, compared to the bailout, right? What uses can be made of the “gold copies” that go back to contributing libraries? The settlement might shake out to allow libraries to make a public resource out of the library copies to counterbalance Google’s power.

Social component: most important help he’s gotten from a library has been face-to-face, someone who knows him and can call him out when he’s gotten something wrong. That relationship is most at risk when we turn our libraries into pneumatic tubes—queries go in, answers come out.

Problems: resource constraints. Risk aversion: worsened by the sense of stewardship—don’t want to risk preservation goals. The perfect should not be the enemy of the good. People are carefully working on perfecting metadata while some teenager invents a thing called del.icio.us and everyone else starts using it.

Q: In China, other values are being pushed in providing services. How do we think about that?

A: Wolfram Alpha: a positivist theory of knowledge; only wants data from curated sources. But what happens when someone asks “what’s the name of that island?” and the answer China wants is X Province while the answer everyone else gives is Taiwan? Are there two answers the search engine should provide, one in China and one elsewhere?

Q: Zittrain has said that the best stuff happens without profit or praise. Are those bad things?

A: No. Profit finds its own energy; we don’t have to worry about that other than to keep it in balance so it doesn’t crowd out or get rid of fairness and other values. He’s also interested in ways of giving praise/attribution wars. There may be plenty who don’t care about recognition, but he doesn’t consider recognition toxic. (Hmm, stated like that I’m now worried about recognition!)

The Future of Today’s Legal Scholarship, Part 3

Panel 2: Blogs and Reliability

Tom Goldstein, Akin Gump: Startup costs matter: you don’t need to find a publisher to get your words out. Incentive system: blogs are widely linked to and content behind walls is not, which means this form is here to stay for people concerned with distribution.

Goldstein is committed to blogging, and thinks you should regard them as utterly unreliable, and not a reasonable, permanent source for tracking information and materials. He spends $100,000 a year on SCOTUSblog, whose staff includes a 40-year veteran Supreme Court reporter. Our reputations and livelihood depend on the accuracy of the blog. Yet he has very little interest in determining the underlying accuracy of the facts in the documents he puts up, and it’s in the nature of blogging to write quickly.

Blogging is valuable. If you were to take away blogs associated with news organizations, like the blog of the Legal Times, there isn’t a better blog than ours journalistically—we have journalistic independence and other editorial measures. And yet if we don’t verify that a document really is “the opinion” in a case or “the record” in the case, that should strike fear in the heart of anyone concerned with long-term historical accuracy—he finds these on Google or Wikipedia. If he doesn’t verify the document, he promises you that no one else does either.

A blogger is not pursuing library goals. A blogger is pursuing the (utterly misguided) impression that other people care about what s/he has to say—that’s why s/he gets up and writes day after day. Many blogs are abandoned: people think they will have a lot to say but run out of energy. The mindset that gets past that is an egomaniacal belief that you have something to contribute, or the equally misguided view that there are positive business implications. (SCOTUSblog has brought in possibly 2 cases over 6 years.) The motivations behind blogging don’t generally correspond with the value set of having a permanent, accurate archive in which the accuracy of the underlying materials cited is also of concern. Whether or not that’s Barak Obama’s birth certificate is beside the point; some bloggers are convinced it isn’t.

Comment: Is this a library concern? It’s a scholarly concern, but how many librarians routinely investigate whether the books they buy verify the accuracy of the underlying materials? Well, we take scholarly publishers as filters for that sort of thing, though of course they aren’t because they don’t cite check the way law reviews do—rant about what law reviews think is cite checking excluded—and it’s fair to say that libraries treat books as independent objects without worrying too much about the sources unless a specific controversy develops. (And of course this is tied to linking culture: we wouldn’t expect a book on law to contain entire copies of the underlying legal cases the way we expect links to the full text of court decisions online.) On the other hand, there is something to be said for relying on publishers and academics to internalize their own norms of verifiability, so I agree that verifiability is implicit in book culture; Goldstein is pointing to something that may be a more salient concern now (though I’m not sure how often anybody fakes a district court opinion, or even fakes a document that appears on TMZ) given the collapse of gatekeeping.

SCOTUSWiki: unlike the blog, doesn’t expire in 12 hours—the mentality of a blog post is that in a week the post is less valuable even if it is about a case that won’t be argued until 6 months from now. A sense of permanent value comes from a law review, or possibly from a non-blog internet source. The scroll function denigrates the longterm value of a blog post.

“Permanent” in internet terms means “it will probably be there tomorrow.” He hosts the briefs and other documents in upcoming cases, but he has no idea where those bits really are or what would happen if the server crashed. Somebody representing themselves as being from the Library of Congress asked to save a copy of his site, so you can find the early days of SCOTUSblog at archive.org and the LoC. But he doesn’t know anything about archive.org; he cares about the blog and about accuracy, but he’s still pathologically clueless about preservation.

Toby McIntosh, Director of Editorial Quality Review, BNA

He’s a traditional media guy, used to responding to criticisms of traditional media. (Did you know there was a Furniture Law Blog?) Reliability of documents: most blogs don’t bother to link to documents at all. We almost never take documents from blogs, but do quote from blogs. Different courts correct opinions different ways, which means we have to verify links—don’t want to link to an opinion that was subsequently amended. We may have to write a new story about a new deadline for comments in an administrative proceeding: trying to be a publisher of record, doing stories on technical correction amendments to laws.

Draft bills: when they get draft bills, they have to make sure that the source is reliable and up-to-date.

Blogs don’t tend to have corrections policies. SCOTUSblog does; it’s a sign of integrity that you acknowledge mistakes.

Unlike blogs, we have a mission to be comprehensive. And neutral. We’re trying to get into the area of shorter-than-law-review articles. Have trouble dealing with things like anonymous commenters (among which he includes pseudonymous, which I would not—if someone consistently posts under a particular pseudonym, that person has an identity; could you pick me out of a lineup just because I post under a particular name).

The democratization of legal analysis: at what point do we say that a person’s viewpoint isn’t worth reporting because of lack of credibility/credentials? Editors troll for quotes, ideas and concepts, trying to find useful/relevant materials. University of Montana law students did hour-by-hour coverage of an important environmental case: no for-profit publisher could ever do that. We try to verify blog facts—many editors don’t want to quote blogs but want to call the blogger and talk. Some BNA publications are trying columns about what’s going on in the blogs, but that hasn’t been very successful yet (we read so you don’t have to model). We’re looking for experts, whether they’re blogging or not, and plenty of experts wouldn’t touch a blog.

Mike Wash, CIO, US GPO

The challenges of blogs have been present from the beginning of the internet. Authenticity (including proper versioning), permanency, public access and availability for printing/copying are key principles. The same principles can be applied to blogs, as well as audio and video.

FDsys: a content management system, controling digital content throughout its lifecycle. They do know where their bits are, unlike Goldstein. It’s a preservation repository, following archival standards—preserves signature blocks on legislation, creating a trail for each actual document. It’s also an advanced search engine using extensive metadata. Increased preservation and search capacity planned for the future.

Given the rate of change of tech, many concepts of preservation used for federal documents weren’t even being considered 15 years ago—blogs may be in that state today. Maybe there could be signatures that could travel with a blog post, providing a chain of custody.

Goldstein: Bloggers, as distinct from other publishers, have less time/willingness to invest time, less money/willingness to invest money, and are interested in boldface instead of subtle. Wash’s work is timeconsuming, expensive, and subtle. The importance of a permanent archive is transcendant for the nation as a whole, but not immediately apparent to the ordinary blogger. Sounds great to librarians, but not of much concern to average nonacademic bloggers.

McIntosh: Ordinary people won’t care until someone distorts a document to scam them.

Goldstein: Importance of reaching out to blogging culture and transmitting these values.

Q: are blogs considered federal documents that need permanence?

Wash: blogs are not government documents under our current rules.

Goldstein: A different reliability question: bloggers blog about things they’re interested in; we don’t tend to be comprehensive (though SCOTUSblog is now)—they might stop and take a break. Collectively the group is likely to be more comprehensive than more permanent journalistic institutions, but individually they are much less reliable. An accurate, well-vetted historical repository is a scary prospect, just because of the finances. Is not sure institutions that care about integrity are going to be able to survive (thinks law reviews are ultimately unsustainable).

Q: A CC license would help preservation.

Goldstein: He’s never asserted copyright over SCOTUSblog—the idea that someone feels a need to license it is one of those things he’s never thought about.

Q: As the person responsible for a preservation effort, being advised by Stanford lawyers she trusts, she doesn’t collect material for preservation without explicit permission, which is their interpretation of the DMCA. If you wanted to do something really simple to allow people who do care about preservation to do so, a CC license would be the thing. (This exchange reminds me of Niva Elkin-Koren’s criticisms of the CC license as feeding into a permission culture.)

Goldstein: His point in being hyperbolic about the unreliability of blogs is to emphasize that many bloggers don’t think about these things, even though SCOTUSblog values its reputation.

The Future of Today's Legal Scholarship part 2

Panel 1: The Future Research Value of Blogs

Chris Borgen, St. John’s University School of Law (Opinio Juris): he wasn’t thinking about creating an authoritative site. He was thinking: I’ve been working on this article for 5 months and if I have to read one more case on the subject I’m going to drill a hole in my skull, so I want to write about something else. A blog sounded like fun. “Let’s put on a show!” Now we have document retention issues, contracts with third parties, guest bloggers from the State Department, management issues (platform, reliability, etc.). Keep in mind: blogs have already evolved very quickly.

At the outset, blogs were basically journals, like Facebook now. Less-networked social networks. Some blogs are like newspapers, reporting on a particular area. Blogs can also be like law reviews, posting longer analysis, ideally somewhat neutral. This is an area of convergence with blogs & law reviews, like the Yale Pocket Part. Opinio Juris has agreements with Virginia and Yale international law journals—the blog does symposia on each issue of the journals as they come out. Blogs can also be bully pulpits. They can be like TV.

Blogs are good at news, and at issue-spotting: pointing out interesting stuff within a particular field. Also good at publicizing: Larry Solum does a great job of getting info out about articles of note on SSRN. And good at community-building, which is drastically different from law reviews—he knows his commenters quite well. Feedback and discussion.

Blogs are not so great at deep writing and deep reading—readers generally assume that they won’t be reading for a long time. The outside length: 7 paragraphs. (Whoops.) Average reader time on site for a post: 3 minutes. Larry Solum’s blog is an outlier.

Where blogs, including legal blogs, made a difference: Guantanamo, torture, Abu Ghraib, and related issues. Did a better job than mainstream media and law reviews because of blog-specific advantages: blogs were able to get to the issues very quickly; without editorial boards there was less need to worry about political contentiousness; these were legal academics with deep expertise—didn’t have to educate a reporter about what the Geneva Conventions were, so people could write quickly and with a great deal of precision; multiple bloggers and commenters allowed access to the wisdom of many minds.

Lee Peoples, Oklahoma City U. School of Law: Scholars may want to use blogs to influence courts: instead of writing a law review article that may take a while and may be missed by a court, you can wait for an issue to come along and then write about it at just the right time. We know that courts are reading and citing blogs. Attorneys blog about their cases: potential ethical issues.

Kennedy v. Louisiana: both majority and dissent said there was no federal death penalty for raping a child, but a blogger pointed out that there was a military law authorizing that penalty. Linda Greenhouse broke the story the next day in the NYT; the state petitioned for rehearing, and the Court ultimately amended the opinions.

July 2007-May 2009, 29 opinions cite blogs, mainly to support the court’s reasoning or analysis. 17: citing to support facts. Doug Berman’s Sentencing Law & Policy retains its predominance. Goal of citation: give the future researcher/lawyer/judge enough information to view the post as it was when the court looked at it. Bluebook rule has room for improvement; hangs its hat on date/time stamp. If everyone followed this, and assuming that the blog wasn’t changed or deleted, it could work, but courts aren’t following the Bluebook rule. Only 1 of 29 opinions followed the rule. 23 out of 29 included direct links—better approach than alternative generic link.

How do links get put into Lexis or Westlaw? Westlaw adds in spaces so the link doesn’t work. That’s a problem.

1 of 29 citations: blog deleted. Some bloggers change posts, not always signalled: 3 out of 29 had been changed in his survey. Best practice for courts (11 out of 29): include a direct quotation. That still leaves you looking for context/surrounding posts.

Need a federal/state rule about citation, not just Bluebook.

Unanswered legal questions: ethics, including ethics of blogging a pending case you’re involved in. What about judges using blogs as independent legal research? Not different from reading a law review article/treatise; if it’s by a true expert, it will have up-to-date information. But what about judges doing independent factual research? Citing blogs for facts seems to violate the prohibition on judges doing factual research on their own. Reversible error found in citing Wikipedia for facts.

What about judicial notice? No one’s asked a court to do this yet, though it’s come up with Wikipedia and courts are split. Also creates extra information for experts to look at: is it okay for experts to rely on blogs? Should courts look at experts’ blogs in evaluating what they say?

Margaret Schilt, Chicago Law: People don’t agree whether blogging is scholarship, teaching, or service, but it fits in there somewhere. Blogging is a medium; content determines whether it’s scholarship, and that’s judged by readers. If it meets normal standards for legal scholarship, then it is, and the question is whether it’s good or not. Howard Wasserman got tenure including his blog in his scholarship: as a complement and alternative to core legal scholarship.

Functions: testing ground for new ideas. Collaboration; commentary on recent events. Discussions that could have taken place in symposia or in letters columns. Related perhaps to the move towards the shorter form of legal scholarship—50 pages instead of 120. And law reviews have moved to occupy a niche between the law review and the blog: response pieces that are solicited/submitted, edited, and cited as part of the law review, but is more informal in tone. New collaboration of 7 journals, including Georgetown’s: “legal workshop” for a general audience that is screened and edited.

Cite checking is easier, because the blog is probably there shortly after the article is written. But what about 20 years later? Law reviews haven’t taken responsibility for archiving—“unpublished paper” is probably on file with the author, or thrown out because of lack of space. This may need to change.

Do libraries have an obligation to archive blogs? If they’re legal scholarship, and our mission is to archive legal scholarship, then syllogistically we do. But one could argue that what is scholarly about blogs eventually makes its way into published articles. Blogs test ideas/get feedback in the writing process. If that’s how blogs are being used, then what is good will end up in traditional scholarship and will be preserved. Is this good enough? There’s historical precedent: workshops and symposia were held for the same purpose.

Problems: sometimes the ideas never make it to publication, simply because of the pace of scholarly discussions. Also: variety of types of posting within blogs. Few blogs are 100% legal scholarship. Volokh Conspiracy/Balnkinization—do we want to put our resources into Ilya Somin’s Monday Sloth Bear blogging? Deleted blogs—the material won’t be available to other scholars if the writer decides to “stop clogging up the blogosphere.” How will the historians of the 2050s talk about public policy debates in the 2000s? We have newspaper records from 1900s; someone has to take charge of preservation issues.

Borgen: when he started, it was play; now there’s a big payoff if you do it right and a big risk if you do it wrong. His message: try out blogging in pretenure years, but don’t spend a lot of time on it. Doug Berman argued that pretenure profs should blog more, and a third person on a recent panel argued tht pretenure profs shouldn’t blog at all. Blogging is a medium, not one single thing. Many different styles. Blogs are like print media: there are journals, newsletters, etc.

Social networking will be a big change: Facebook has taken over what used to be part of the blogosphere. Twitter: Opinio Juris is talking about using Twitter. (Note: I automatically crosspost to Twitter, thence to Facebook.) People who approach blogs like law reviews tend to write bad blog posts. As we start to use new things like embedded video, we’ll have to learn new skills: being good on camera is completely different from writing a good essay.

Peoples: He is particularly concerned when courts cite blogs—the justification for preservation is much stronger.

Schilt: Blogs filled a niche that was previously unfilled: that demand is not going to go away, whatever the ultimate structure.

New note on puffery and images

Owen Weaver, Everything You Will Ever Want To Know About Puffery and How the Second Circuit Wrongly Applied It in Time Warner Cable, Inc. v. DIRECTV, Inc., 43 New Eng. L. Rev. 357 (2009)

Abstract:

In Time Warner Cable, Inc. v. DIRECTV, Time Warner Cable alleged that DIRECTV's “Source Matters” advertising campaign, which consisted of television commercials and Internet banner advertisements, constituted false advertising under the Lanham Act. DIRECTV argued in defense that both forms of advertisements constituted puffery and therefore were not false advertising. The United States Court of Appeals for the Second Circuit agreed in part, finding that only the Internet banner advertisements constituted puffery. But in order to come to this conclusion the Second Circuit adopted a definition of puffery, with respect to image advertisements, that it had never applied before. This Comment analyzes the Second Circuit's ad hoc use of the Puffery Doctrine and ultimately concludes that the Second Circuit's application was wrong for two reasons. First, the court's formalistic approach created a legal dichotomy between images and words that fosters inconsistent application of the Puffery Doctrine. Second, the court's reliance on the English common law understanding of puffery caused it to ignore the modern understanding that false advertising greatly affects consumer behavior. Consequently, Time Warner Cable, Inc. v. DIRECTV illustrates the need for reform and in particular the need for a uniform definition of puffery. As a solution, this Comment proposes an amendment to the Lanham Act codifying the definition of puffery.

The Future of Today's Legal Scholarship

The Future of Today’s Legal Scholarship, a symposium at Georgetown Law in honor of Robert L. Oakley

Opening Remarks: Bob Berring, Berkeley Law

Students speak a different information language. They are no longer speaking the language of books, indexes, double lookups—an entire structure of authority/trust is no longer part of their world. They don’t look at authority in the same way—they use what is available to them. (As we did in the world of books and indexes.)

“I shepardized it” used to be a way to invoke authority and security: if you did that, you were secure, you’d done what you were supposed to do, even if you missed something. Certain periodicals represented intellectual power. Enormous thought given to library classification (the difference between Scientific American and Mad Magazine), to what books were in the reference room: what books were easiest to use. The most valuable books were there, but also tightly controlled so that they couldn’t be monopolized by particular users.

That authority system is gone. Encyclopedia Britannica doesn’t have the same power, much less success. Some of those sources are disappearing—no published catalogs of baseball statistics, for example. Instead, we get unfiltered information--Wikipedia isn’t completely unfiltered—banned Scientology edits on Scientology, for example—but it’s user-produced. Even if you take it with a grain of salt, it’s undeniable that Wikipedia is a great place to start.

Recommended: David Post’s In Search of Jefferson’s Moose: the most important question about an information source is not “is it accurate” but “does it work?” (Aside: Rachel Maines has the best anecdote ever about this question, highlighting an important truth about technology and culture that is actually relevant to Berring’s talk. See below.) Still, we haven’t replaced the old standards: the university press, peer review, the editorial process, names you can rely on without thinking—those names exist, but they aren’t settled. (Query: Did everybody rely on Walter Cronkite thirty years ago? Or did we actually consider the opinions of everybody, or only everybody who counted? I don’t have of an answer for that, but—and I don’t think Berring is doing this—I distrust invocations of an idealized information past of quality and trustworthiness. That’s also the past where James Tiptree was well advised to use a man’s name to publish, and so on.)

Treatise writers used to promise to read every case and condense them, holding it all in their own minds. This used to be possible, but is not any more—the end of the treatise tradition. But we still need someplace to go. The shift went to academic law reviews. (In IP, treatises are still pretty powerful. It’s at least possible for a small group of people or maybe even one person to monitor most of the decided cases, and decide whether or not to include them.)

So, when will someone get tenure for legal blogging? The top universities haven’t been able to look beyond academic law reviews. Yet judges aren’t reading law reviews; with Lexis and Westlaw you can tear articles apart looking for their footnotes, which is often what you’re more interested in anyway. What will replace it? Auxiliary blogs like the Yale Pocket Part? Institutional problem: law review staff turns over too fast.

Blogs form a new kind of discussion. Samuel Johnson published his own newspaper every couple of weeks, every word his own—I.F. Stone did the same thing. Information ripple effect: small number of readers, but the right readers, who pass it on if it’s of larger interest. This used to be true of a select number of authority sources, like The New England Journal of Medicine, which could filter into the NYT, which could filter into the TV news, which could become general knowledge. Now SCOTUSblog can do the same thing.

Blogs are good for hot documents, but will those documents remain available? Library orientation towards preservation creates a conflict: blogs have authority without the archival function (both physical and the cognitive effort of holding things together in the mind) that used to go along with authority when authority was collected in physical objects.

There are access issues in the new world as well. Oceans of information can be exclusionary: who can understand a thousand-page health care bill? Nobody reads the budget.

Libraries remain the place where information can be preserved. Blogs are immediate, replicating the feeling of being in a room with Samuel Johnson, talking to the most brilliant people. But blogs are going to be outrun in the end, too.

Here’s the Rachel Maines anecdote:

The curator and I were down in collection storage examining the vibrator collection …. The curator … was taking the opportunity … to expand and update the information on his catalog cards. Since I had museum training, I was permitted to write (in pencil, of course) on the cards the new information, such as weight, measurements, number of vibratodes (attachments), and so on. We came to … an early twentieth-century medical vibrator with a selection of about half a dozen vibratodes. I asked the curator if the device was still operational. Looking into the box, Al unerringly selected the most appropriate of the attachments, plugged the cord into a wall outlet, and flipped the switch. No response. Unplugging the device, he pulled a small screwdriver from his pocket, made several mysterious adjustments, and again plugged in the instrument, which then buzzed vigorously when turned on…. Thanking Al, who began putting away the artifact, I wrote “runs” in the “remarks” suggestion of the catalog card…. About half an hour later the museum’s director came down and asked how we were getting along. I told him we had just plugged in one of the vibrators and tried it out. “And did it work?” he asked. “We don’t know if it works,” Al replied solemnly. “We only know that it runs.”

(I highly recommend the book, The Technology of Orgasm—see Zach Schrag’s layperson’s reading list in American history, which points out that “Americans are people who believe that if something is worth doing, it’s worth doing with power tools.” Which also draws a connective line between Johnson’s newspaper and Tom Goldstein’s blog, now that I think about it.)

Geocities Rescue Project

Slightly off-topic, but I know there are fans reading this, so:

When I was a semi-wee fan, Geocities was where the action was, so here's an announcement: Do you or anyone you know have fic or other fandom resources on Geocities? Geocities is shutting down in October, and the OTW/Archive of Our Own has created a Geocities Rescue Project to save our stories.

The short version: if your fanfiction page is on GeoCities, which is going down for good on October 26, they'll give you an AO3 account (beta!); if you have other kinds of fannish pages there, they'll help you document those pages in Fanlore. Contact the Geocities Rescue Project! And pass on the news if you know people who might be interested.

Joining the Pom squad

Pom Wonderful LLC v. Ocean Spray Cranberries, Inc., 2009 WL 2151355 (C.D. Cal.)

Pom Wonderful, that punning advertiser and occasional false advertising plaintiff, sued Ocean Spray for false advertising of its pomegranate and cranberry juice blend. Cran-Pomegranate is allegedly comprised almost entirely of apple and grape juice, with cranberry the third-ranking juice and pomegranate fifth. Further, Ocean Spray allegedly falsely markets its product as high in antioxidants, like pomegranate juice, and made other similar misrepresentations. As a result, Pom Wonderful alleged, Ocean Spray can compete at lower prices, tricking consumers into switching.

Ocean Spray argued FDA preclusion. The court distinguished between private causes of action attempting to determine preemptively how the FDA will interpret and enforce its own regulations and falsity claims that merely touch on an area dealt with by the FDA. The key is whether truth can be “easily verified” without an FDA determination. In a sister case against Coca-Cola, the district court granted in part Coca-Cola’s motion to dismiss, but stated that it was largely unpersuaded by FDA preclusion arguments because the Lanham Act claims extended beyond name and packaging to advertising and marketing, where the FDA doesn’t regulate. The court here, however, found that the essential claim—that Ocean Spray’s label misrepresents its primary ingredients—didn’t rely on an interpretation of FDA regulations or on FDA determinations.

Determining the primary ingredients, and whether Ocean Spray’s representations are misleading, would not be contingent on FDA factfinding or enforcing FDA regulations. Indeed, the FDA regulations don’t define “misleading.” It’s possible for a product to be both mislabeled and falsely advertised, as for example when a party misrepresents FDA approval where there is none. Moreover, an FDA-compliant label may be subverted, and the Lanham Act violated, through advertising.

The FDA has a bunch of requirements for multi-juice beverages; where the named juice isn’t predominant, the common/usual name for the product has to say that the named juice is a flavor or flavoring. And if the juice’s “organoleptic properties” aren’t recognizable, or its “nutrient profile” is diminished below the normal range, the source fruits can’t be depicted on the label pictorially. But the complaint doesn’t try to enforce those requirements. Instead, the argument is that the name and the pictures of the fruit constitute false advertising. It’s theoretically possible that a court decision might conflict with FDA regulations, but on its face the complaint doesn’t. Ocean Spray can bring up any conflict with FDA regulations or the FDCA that develops later.

Likewise, the state law claims were not preempted by the FDCA’s express preemption provision as long as they didn’t attempt to establish requirements for labeling that weren’t identical to federal regulations. Nor was field preemption applicable. There was no indication that the FDCA and the FDA regulations intend to occupy the field of beverage labeling. Consumer protection, after all, is historically a state power.

Next, the court rejected Ocean Spray’s primary jurisdiction argument that the FDA should handle the problem in the first instance. This case didn’t require technical expertise in food product labeling or implicate uniformity in administration. And there was no evidence the FDA has taken any interest in investigating the claims or issues presented.

And finally, Ocean Spray argued that Pom Wonderful hadn’t satisfied Rule 9(b)’s heightened pleading standards. The 9^th Circuit hasn’t applied 9(b) to Lanham Act claims, though some district courts have done so, and the court agreed that false advertising claims are “grounded in fraud” (even though the Lanham Act imposes strict liability). “All of Plaintiff’s allegations deal with the same underlying issue, which is Defendant’s intent to mislead consumers by mischaracterizing the primary ingredients of the Beverage.” Interestingly, the portions of the complaint quoted don’t go to intent: Ocean Spray “has confused and misled consumers” and the ads are “false and misleading,” which is a description of result and not intent—a claim can be false without being intentionally false. But anyway, the court required pleading with particularity, and found the 9(b) standard satisfied.

Update to Barton Beebe's empirical study of TM

Kevin Blum, Ariel Fox, Christina J. Hayes, & James (Hanjun) Xu, Empirical Analysis of Multifactor Tests for Trademark Infringement

Interesting data from 15 years of SDNY trademark cases, coded and written up by four Harvard Law students. Singling out the bit on survey evidence:

Plaintiffs presented survey evidence in 24 of 139 preliminary injunction and bench trial opinions (17.3%), but this evidence was favorably credited by the court in only one-quarter, or six of these opinions. When the survey was credited, however, the court always found that the actual confusion factor favored the plaintiff and always ultimately found a likelihood of confusion (a plaintiff win rate of 100%). In the 18 opinions where the survey was not credited, none of the plaintiffs were able to win the actual confusion factor and only three were nevertheless able to obtain a finding of likelihood of confusion (a plaintiff win rate of 16.7%).

Despite the overall infrequency of opinions in which plaintiffs actually presented survey evidence, the court drew an adverse inference against the plaintiff for failure to submit survey evidence showing actual confusion in 13 opinions of our set of 139 preliminary injunction and bench trial opinions.. . . These data are particularly remarkable given that five of these 13 opinions were preliminary injunction opinions, when one would be less likely to expect the parties to be able to have had the time to prepare credible survey evidence.

Of the 13 cases in which the adverse inference was drawn, only one resulted in a finding that this factor favored a likelihood of confusion (7.7%), and only two opinions resulted in an overall finding of likelihood of confusion (a plaintiff win rate of 15.4%).

Defendants presented survey evidence in 13 of 139 preliminary injunction and bench trial opinions (9.4%), and the court favorably credited this evidence in six of the 13 opinions (46.2%). Defendants who presented credited survey evidence enjoyed a much higher likelihood of a finding of no likelihood of confusion, with only one of the six facing a finding of likelihood of confusion (a defendant win rate of 83%). Of the seven opinions that did not credit the defendants’ survey evidence, four resulted in a finding of likelihood of confusion (a defendant win rate of 57.1%).

My take: clients who can afford a survey are probably well advised to have one; though the risk of disregard is high, the payoff is substantial.

Recent reading: Trade Marks and Brands: An Interdisciplinary Critique

Editors: Lionel Bently, Jennifer Davis, and Jane C. Ginsburg. This 2008 European-tilting collection makes a good complement to Graeme Dinwoodie & Mark Janis's Trademark Law and Theory: A Handbook of Contemporary Research (in which I have a chapter). It features some helpful UK history as well as debates over the role of linguistics, marketing, sociology, law & economics, philosophy, and anthropology in trademark law, and a final bit on GIs. As you'd expect, dilution is a heavy hitter here; while almost every contributor in the theory sections takes trademark confusion as a fairly easy concept to justify (Mark McKenna would have something to say about that as to noncompeting goods), almost every one also feels that it's important to take a position on whether, or how, dilution is to be justified, either with theories of branding or theories of protection from forced expression.

The Daily Show covers trademark!

Or at least the dispute between the Pull My Finger iPhone app and the iFart iPhone app:

The Daily Show With Jon Stewart	Mon - Thurs 11p / 10c
iFeud
www.thedailyshow.com
Daily Show Full Episodes Political Humor Joke of the Day

Due to the good offices of the plaintiff's counsel and eBay, I myself possess both a Pull My Finger Fred and a Fartman, subjects of a different fart-based IP case--that one copyright. Here, the apparently unrelated Pull My Finger app creator complains that the iFart relied on ads with "pull my finger" as the link text. If that's a protectable trademark, then that's dangerous behavior. Assume the term is descriptive but has secondary meaning: can using the term as link text be a descriptive fair use? If not, what would suffice? "A pull my finger app"? If that won't do it, what's left for descriptive fair use in short ads?

Products liability question of the day

From the NYT story on distraction by electronic devices as a cause of driving accidents: "A recent ad from Audible.com, which sells audio books, says, 'you just might miss your exit on the turnpike.'” So, in the resulting lawsuit by someone injured by a book-listening driver, does this establish Audible's knowledge and intent? What if we treated products liability like copyright infringement: inducement?

Family Guy pratfall

Arthur Metrano sued Fox over a Family Guy episode that had Jesus imitating his comedy act. David Fagundes posts on Prawfsblog about the dubious analysis in the recent opinion rejecting a 12(b)(6) motion to dismiss based on fair use. David nails it:

the Family Guy clip in Burnett actually depicted Carol Burnett, while the clip in Metrano showed someone else (Jesus) performing Metrano’s act. This probably made the reference to Burnett more obvious, and one can certainly imagine that many viewers did not understand or know about Art Metrano’s act when they saw the Jesus scene in Stewie. Nevertheless, this strikes me as a distinction without a difference. The district court concludes that the only mockery at issue in the scene was the creators’ poking fun at Jesus’ ability to work miracles. But the scene could not have effectively communicated the message that Jesus was "overrated" unless what He was doing was lame and unimpressive (hence the vacant expressions of the audience members who watch Jesus perform the act), and that means that the scene also had to communicate that Metrano’s act was subpar.

The real problem here, of course, is that some courts misread Campbell to elevate parody over all other forms of transformativeness. (It's invited error: sorry, Justice Souter, but that satire/parody distinction is way more trouble than it's worth.) The Second Circuit, in Blanch v. Koons and Dorling Kindersley, went a long way towards fixing that problem, but unfortunately not everyone has caught up. The Ninth Circuit cases that should establish the same principle in the Hollywood Circuit are search engine-based, finding transformativeness in large-scale copying, and thus courts assessing individual reuses can overlook their importance.

Thanks to David for the heads-up.

Pearls of Wisdom: Tampax claims allowed to continue

Playtex Products, Inc. v. Procter & Gamble Co., 2009 WL 2043897 (S.D.N.Y.)

The court styled this “the latest skirmish in the tampon advertising wars,” concerning Playtex’s allegations that P&G’s claims of superior protection for Tampax Pearl were false.

Tampax Pearl is the leader in the plastic applicator tampon market, followed by Playtex’s Gentle Glide. Playtex sued P&G in 2002 over ads claiming better leakage protection and comfort than Gentle Glide, and won a jury verdict. The resulting injunction barred P&G from: “communicating or stating that (a) Tampax Pearl tampons are superior in wearing comfort or protection to Playtex Gentle Glide tampons; and (b) Tampax Pearl tampons are superior in absorbency to or have an absorbent braid for better protection than Playtex Gentle Glide tampons, either explicitly or implicitly by reference to ‘the leading plastic’ applicator tampon, and without limitation of reference to the use of comparative words such as ‘super,’ ‘better,’ or ‘more’....”

P&G developed a new version of Tampax Pearl and moved in 2007 to vacate or modify the injnction. The court did so, allowing a superior protection/absorbency claim, based on evidence that P&G had made a number of changes to its manufacturing process that improved Tampax Pearl’s performance. Playtex had developed a new version of Gentle Glide and was ready to market it, but no evidence about it was presented at the hearing. Playtex told P&G that, because of the new version, any claims of superiority would be false, and Playtex would sue.

P&G sued for declaratory relief to preclude any such lawsuit on res judicata grounds, and began running ads in which it asserted that Tampax Pearl protected “even better than the next leading brand.” The court denied P&G’s motion, because the current dispute concerned two products that didn’t exist in 2002. Playtex then sued for false advertising, alleging that claims of (1) superior leakage protection, (2) “more leak-free periods,” and (3) a leak-stopping braid were false. P&G subsequently abandoned claim (2). It’s now advertising that “Tampax Pearl stops leaks better than the next leading brand.”

Playtex ran an in vivo study comparing the tampons in each available absorbency (regular, super, and super-plus). Its study concluded that there was no difference in leakage rates across all absorbencies of both brands. However, the study was flawed in that half of the participants used all the test tampons, but less than half reported using that number, and the number used would match or exceed the average number used per period, except that most women use multiple absorbencies during their periods, so there was something unusual going on with the test uses—it seems that many women didn’t follow the instruction to use the test tampons only when they’d normally use that absorbency. (I’m not sure this last makes reported leaks unreliable, but it does seem that it was difficult to get accurate reporting from users.) Because the used tampons weren’t collected, there was no way to cross-check accuracy, and consumers have varying definitions of “leakage.”

Playtex and P&G also had competing in vitro tests of the braid.

Given the flaws in the Playtex in vivo study, Playtex didn’t meet its burden to show falsity, and the competing results from the in vitro studies likewise prevented Playtex from showing likely success on the merits.

NYT on Indian "knockoffs"

The article (with pictures) is interesting, but doesn't mention the background principle of territoriality (it does nod at the well-known marks doctrine, which India follows), and it takes a fairly protectionist stance by basically equating pure copying with similarity. I'm not saying I'd advise a shoemaker to use the name Woodland with a tree mark, but to call out Cocoberry as an example of Indian borrowing of popular brands from elsewhere is a bit misleading, as Pinkberry faces plenty of US competitors who have also adopted tradenames and dresses with some obvious similarities to Pinkberry. And, returning to territoriality, if there's been a Financial Times in India since 1984, I'm not sure why it's so obvious that the London FT deserves to be able to enter the Indian market under that (descriptive) name.

What standards govern the FTC in the courts?

Federal Trade Commission v. National Urological Group, --- F.Supp.2d ----, 2008 WL 2414317 (N.D. Ga.)

Westlaw just coughed up this case, and since I’ve been thinking a lot about commercial speech doctrine and false advertising law, I thought it worth an entry. The FTC sued the defendants for marketing weight loss and erectile performance dietary supplements under the names Thermalean, Lipodrene (which I could have sworn was a drug from the Colbert Report’s Prescott Pharmaceuticals), and Spontane-ES.

The defendants argued that the FTC’s standards for deceptiveness were unconstitutional under Central Hudson and unconstitutionally vague. The Central Hudson test allows regulation of truthful commercial speech concerning lawful activity if there’s a substantial government interest directly advanced by the regulation, and the regulation isn’t more extensive than necessary (though this isn’t a least restrictive means test). As you may have noticed, it appears that false and misleading commercial speech is outside this test from the beginning, and therefore may simply be banned; nonetheless, the defendants argued that the FTC violated these standards by (1) not considering intent to deceive or allowing a good faith defense; (2) relying on its own analysis of an ad, rather than extrinsic evidence of consumer perception; (3) not promulgating rules specifying what product claims or descriptions are misleading, particularly for ads with specific ingredients for which substantiation exists; and (4) requiring all supplement ad claims relating to health benefits to be substantiated by “competent and reliable scientific evidence,” but not defining that term.

The court concluded that the defendants “misapplied” Central Hudson, which was designed to determine whether a regulation that limits protected commercial speech is constitutional. Here, the FTC’s guidelines concern whether speech is protected at all. It would be circular to use Central Hudson to determine whether or not speech is protected. The court found this “confusing and illogical.”

Interlude: It is plainly a mistake to say that Central Hudson of its own terms has anything to say about FTC standards. However, the reasons for protecting truthful commercial speech definitely have relevance to the questions of who should be entitled to determine truth and what standards they should use, for the same general reasons that we scrutinize fact-finding and apply certain procedural protections in defamation cases. I don’t think defamation standards should apply to advertising law—far from it, I’m a supporter of strict liability and think an intent requirement would be a disaster for American consumers—but the basic argument is sound: if you have a sharp distinction in the standards applied to suppressing untruthful speech versus suppressing truthful speech, then it is also quite important to assess how “untruthful” is defined.

Anyway, the court held that whether ads are deceptive and thus unprotected is in “the sound discretion of the court.” Bottom line: The Constitution no more enacts the FJC’s manual on surveys than it does Mr. Herbert Spencer’s Social Statics.

The vagueness and overbreadth challenges also failed. Precedent squarely holds that overbreadth doctrine doesn’t apply to commercial speech regulation. On vagueness, defendants argued that the FTC’s criteria for scientific support were insufficient and didn’t define the necessary size, duration, or protocols of supporting studies. But the criteria neither failed to provide people of ordinary intelligence a reasonable opportunity to understand what conduct was prohibited nor authorized arbitrary and discriminatory enforcement, the two keystones of unconstitutional vagueness. “Competent and reliable scientific evidence” was sufficiently well-defined, and was also appropriately context-specific depending on what the relevant professionals would require for a particular claim. Difficult factual questions don’t make a statute void for vagueness.

On to the FTC’s side: the FTC asserted three categories of violation of the FTC Act: (1) false claims about the supplements, (2) unsubstantiated claims about the supplements, and (3) false claims about research and medical facilities. It also argued that one defendant, Dr. Wright, made false and unsubstantiated claims as an expert endorser.

Where claims are explicit or clearly and conspicuously implied, there’s no need for extrinsic evidence. If an ad only “faintly implies” a claim, however, a court “may” decline to find the claim made without extrinsic evidence of consumer perception. Only at the far end of the continuum from express to implicit, where claims are “barely discernable,” is extrinsic evidence “necessary.” The FTC didn’t present extrinsic evidence, so the court required that any actionable claims must be clear and conspicuous from the face of the ads. (Note that this description of the standard is at best confusing: “may” suggests that a court is authorized to find deception/defer to the FTC at the far end of the spectrum in the absence of extrinsic evidence. But more significantly, the spectrum surely has space in between “clear and conspicuous” and “faint implication”/“barely discernable”—what’s the role of extrinsic evidence in such cases? The court’s statement of the law suggests such evidence is helpful but unnecessary, but see below).

Claims that are likely to mislead can either be false or lack a reasonable basis (substantiation). Materiality, the final requirement, is readily found where claims are express or where they involve health and safety. Indeed, the court found it “hard to imagine” that any reasonable consumer would find health or safety claims immaterial, and particularly presumed that any nutritional supplement claims about health benefits and safety were material.

Applying the standards, the court found that the ads clearly implied that Thermalean was an effective treatment for obesity, but did not “clearly and conspicuously” imply that Thermalean was “clinically proven” to treat obesity, but only “heavily impl[ied]” that it was clinically proven to cause weight loss. The defendants presented evidence that obseity is a disease, different from weight loss, so the court refused to presume that a consumer would infer that Thermalean is clinically proven to treat obesity. Thus, the FTC’s obesity claims failed. I think the court got lost and sliced the salami a bit too fine in terms of what the FTC had to show.

The court then found that the ads represented, among other things, that Thermalean caused rapid and substantial weight loss, including as much as 30 pounds in 2 months; that it was clinically proven to do so; that it was safe; and that it was superior to several named prescription weight-loss drugs. Defendants argued that their substantiation was based on evidence about their “proprietary ingredients,” and yet the claims were made about the Thermalean product.

Defendants made similar claims about Lipodrene, including that it was clinically proven to be safe and effective. And they claimed clinically proven safety and efficacy (of a different sort) for Spontan-ES, their erectile dysfunction supplement.

The FTC alleged that these claims for clinical support lacked a reasonable basis. The FTC’s expert testified about the characteristics of well-designed, randomized, double-blind, etc. studies that would be needed for substantiation of claims of this type; among other things, one would need to test the product itself, not its ingredients, especially not if the dosages in the studies varied from the dose in the final product. Because defendants had no studies at all on the products themselves, the claims were unsubstantiated and likely to mislead.

Likewise, the (clearly and conspicuously implied) ad claims that the products had been clinically tested were false, because the products hadn’t been clinically tested, only the individual ingredients. In addition, the specific claims that Thermalean and Lipodrene could cause substantial weight loss (30 pounds in 2 months/up to 125 pounds) were false because the only evidence was that the active ingredients could generate 2 pounds per month weight loss.

The defendants were left trying to contest materiality. Courts generally presume materiality in these types of cases, but are rarely confronted with any evidence purporting to rebut the presumption. (Indeed, I don’t offhand recall another court indicating that the presumption is rebuttable, since it just doesn’t come up.) Here, the defendants submitted two surveys on the Thermalean and Lipodrene ads. The surveys concluded that the ads as a whole were ineffective in promoting the products, and that most of the claims wouldn’t significantly impact a purchasing decision.

The court found this evidence insufficient to create an issue of fact. The ads at issue in this case generated over $10 million in sales between 2001 and 2004. Clearly, the ads worked on enough people. Moreover, the survey didn’t test the ad claims at issue in the case; it tested small portions, misstatements, or irrelevant claims. Example: participants mildly agreed with the following statements: (1) “I am able to think systematically about information that is given to me about a product, and make my own judgments about the effectiveness of a product”; and (2) “I believe that information about the components of a product is useful to me when deciding whether or not to purchase the product.”

Finally, the FTC alleged that defendants falsely represented that its facilities, “Warner Laboratories” and “National Institute for Clinical Weight Loss,” were bona fide research/medical facilities that engaged in scientific medical research and product testing at on-site facilities. Not only did the names imply this, but the ads used phrases such as “At the National Institute for Clinical Weight Loss, [o]ur research and development team has developed a non-prescription formulation .…”; “With five years worth of research and development in each component going into Spontane-ES by the pharmacological staff at WARNER LABORATORIES we have not experienced any harmful side effects to date”; and “the professional staff and Medical Board at WARNER Laboratories aligned with one of the nation's largest manufacturing facilities to begin Phase I testing of Lipodrene ….” Even without the implications of the names, the court found, the ads represented that NICWL and Warner were research facilities. And, the court further concluded, these claims are false; they didn’t perform any clinical tests themselves or conduct independent research. Because these claims “convey[ed]” that the products were safe, the court also presumed materiality.

The defendants argued that most of the claims were puffery. The court noted that the ads at issue were “indisputably riddled with puffery,” but the proper focus was on the claims derived from the ads as a whole. All the claims the FTC challenged were phrased as verifiable factual statements; even puffing language supporting those claims did not take away their factual nature.

Dr. Wright was held individually liable both for his participation in the marketing and for false expert endorsement. FTC guidelines require that an expert endorsement must be supported by actual exercise of the relevant expertise, including examination or testing at least as extensive as someone with the same degree of expertise would normally require. The FTC presented evidence that a physician would require scientific evidence regarding a product itself, not its individual components, before making the claims Dr. Wright made; he admitted that he didn’t rely on scientific studies of Thermalean when making his endorsement.

The court found injunctive relief and consumer redress appropriate. Defendants made $15 million in sales. Defendants argued, among other things, that they should get to reduce this amount by sales to customers who reordered the product, who were obviously motivated by actual experience with the product. The court disagreed. There was no evidence of what motivated reordering decisions, and the fact that experience may have played some role doesn’t mean that the ads weren’t also material.

Finally, defendants proposed to pay redress directly to purchasers, contacting customers and providing or offering a complete refund. The FTC wanted redress to be deposited into a fund in its name; after consumers were redressed, the FTC would use remaining funds for further equitable relief or pay them into the Treasury as disgorgement. The court had “ample discretion” to go the FTC’s way, and saw no reason to charge “the purveyors of the deception” with competently and honestly reimbursing consumers.

Trek to Madworld

Portland actors perform Amok Time in the park, apparently unworried by the public performance right--but extremely concerned that they not be mistaken for unwashed, basement-living "Trekkies." I'd love this story more if the actors didn't feel the need to make the Geek Hierarchy move of assuring everyone that they aren't the kind of fan you ought to make fun of, who knows trivia and collects action figures and can make accurate costumes (that was one's mother's job); this is real acting! I really wish more fans would realize that, culturally, we're in this together: you won't get highbrow respect by throwing the fan next to you under the bus. You won't get it at all, most likely, but looking for it that way is a sucker's game.

Anyway, the copyright hook is obvious, but I doubt Paramount has any interest in suppressing free theater in the park.

"New and improved" claim leads to old result

Robert Bosch LLC v. Pylon Manufacturing Corp., -- F.Supp.2d --, 2009 WL 2001030 (D. Del.)

Bosch sued Pylon for patent infringement and false advertising. Pylon makes and sells windshield wiper blades under the Michelin brand name. Bosch alleged that two statements from Pylon’s website were false: “Michelin’s expertise ... has inspired the development of a high performance, frameless all-weather wiper blade with many innovative features and benefits, including ... Advanced Frameless Design ... and Integrated High-Downforce Spoiler” and “[t]he latest Michelin wiper blades on the market are all new and improved ... adding functional features such as spoilers for improved wiper performance.”

The court read the complaint to allege that the statements “new and improved,” “innovative,” and “development” were false advertising because Bosch developed the technology, which therefore could not be “new and improved” or “innovative.” Building on post-Dastar precedent, the court held that “false attribution of authorship” (or inventorship) isn’t actionable under §43(a)(1)(B) (and I register my usual note that this is an extension, probably an unwarranted one, of Dastar itself, which construed §43(a)(1)(A)). Thus the “development” claim failed.

That left the new/improved/innovative claims. In context, this was not false advertising, merely puffing—it didn’t list specific features of the wiper blades. “Improved” and “innovative” “are opinions and cannot be proved to be false.” (Comment: Really? Certainly there are cases in which such claims could be proved to be false. Suppose all defendant did was relabel existing wipers, in production for ten years, “new and improved.”) Even “new,” which includes a time component, was “classic puffery” (citing Laitram Machinery, Inc. v. Carnitech A/S, 884 F.Supp. 1074, 1083 (E.D.La.1995) (statement that machines are “new and improved” is puffery) and Outdoor Technologies, Inc. v. Vinyl Visions, LLC, 83 U.S.P.Q.2d 1418, 2006 WL 2849782, at *4 (S.D.Ohio 2006) (“phrases such as ‘best,’ ‘new and improved,’ or ‘redesigned and improved’” have all been held to be puffery)).

Result: motion to dismiss granted.

Pass, fail, epic fail

I must admit: I hate the use of "fail" that's become so common. However, even I will concede that Failblog has identified trademark fail in response to Guinness World Record's complaint that Failblog used a screenshot containing Guinness trademarks to show an embarrassing entry from the Guinness website. So, who holds the world record in "worst trademark claims on the internet"?

Slate on NAD

Slate runs a very favorable piece on NAD, with lots of eye-catching quotes from Andrea Levine.

Nothing but blue skies: beverage case reinstated

Chavez v. Blue Sky Natural Beverage Co., 2009 WL 1956225 (9th Cir.)

A little over two years after I wrote about the district court decision, I bring you the appeal, reversing the dismissal of Chavez’s false advertising complaint. Defendant sells lots of beverages; in 2000, it bought the Blue Sky product line from a company that had been based in and operated from Santa Fe since 1980. Until 2006, Blue Sky containers allegedly contained the terms “SANTA FE, NEW MEXICO” or “SANTA FE, NM” and also “CANNED FOR THE BLUE SKY NATURAL BEVERAGE COMPANY SANTA FE, NM 87501” or “CANNED UNDER THE AUTHORITY OF BLUE SKY NATURAL BEVERAGE CO., SANTA FE, NM USA.” The trade dress also presented a “Southwestern look and feel,” including pictures of what appear to be the Sangre de Cristo mountains that border Santa Fe. The website also used the notation “Santa Fe, New Mexico, U.S.A.” and a phone number with a Santa Fe area code (forwarded to company headquarters in California).

Chavez brought a purported class action on behalf of consumers allegedly deceived by the geographic misrepresentations thus entailed. The district court dismissed the complaint on the ground that Chavez failed to adequately allege an injury-in-fact. The court of appeals concluded that Chavez had alleged some injury, albeit perhaps slight, in fact. First, he allegedly chose Blue Sky over other brands because he believed that it was New Mexican in origin. He allegedly lost money because he didn’t receive what he paid for. He alleged that he is a native New Mexican who bought Blue Sky to support a New Mexico company and to associate himself with a New Mexican product. Though this perhaps limites the extent of the putative class, it also supports his claim that he wouldn’t have paid the full price for Blue Sky, or wouldn’t have bought it at all, if not for the alleged misrepresentation.

The court refused to rule on Blue Sky’s alternate ground for affirmance, preemption by the FDCA, on the ground that the district court should be the first to address this important issue of apparent first impression.

Yellow Pages wars, in Spanish this time

Momento, Inc. v. Seccion Amarilla USA, 2009 WL 1974798 (N.D. Cal.)

Momento sued defendant SAUSA for copying Momento’s Spanish-language ads for use in its own Spanish directories. Momento owned both the individual ads and the design and layout of its directories. (As set forth in another order, Momento created advertisements for its Yellow Pages by “preparing text, taking photographs of client advertisers, translating text from English to Spanish, and designing the layout of advertisements, including selection of fonts and colors.”) SAUSA argued that it got nonexclusive licenses directly from the advertisers as part of its form contract with them, and that the Momento ads were works of joint authorship because they resulted from collaboration between SAUSA and the advertisers and incorporated preexisting elements. (Interesting business model: allegedly, SAUSA solicits customers by sending an “ad proof” that’s a scanned copy of a Momento ad, sometimes with font/color changes; customers are asked for permission to print the ad “as is” for free, or with corrections for a fee.)

Under the 9^th Circuit’s test for joint authorship, the court found, Momento is the sole owner of the ads. Momento’s contracts with its clients say that Momento’s artwork is its sole property; one client expressly sought permission to use a photo taken by Momento on its web page; and several clients submitted declarations that they never gave SAUSA permission to copy the Momento ads (not sure why this is relevant to ownership, but ok—in fact, of course, regardless of whether the ads are jointly authored, the contract could separately change the ownership).

So Momento showed likely success on the merits of the copyright infringement claim. It also alleged false advertising under California state law based on SAUSA’s sales pitch that its directories are “the first and only Spanish directory delivered to consumers in Northern California.” SAUSA argued that the parties have entirely different methods of delivering the directories, making the claim ambiguous at most. However, Momento’s was the first Spanish directory published in Northern California and thus “at least that part of the statement is false.” In the absence of evidence that consumers weren’t deceived, then, Momento therefore showed a likelihood of success on the merits. Now, in Lanham Act parlance, it probably is true that “delivered to consumers” is ambiguous—if a directory is published, but consumers need to purchase it or call to request it or pick it up at a grocery store, then it’s not “delivered to consumers” and that even seems likely to be material to potential advertisers, since a directory delivered to consumers is more likely to reach those consumers who aren’t proactively seeking a Spanish-language directory. However, California law doesn’t include the false/misleading distinction, so it was open to the court to find the statement likely to deceive consumers even without evidence of actual consumer deception.

Since this was a preliminary injunction motion, the court then turned to the issue of irreparable injury. The old 9^th Circuit rule that a presumption of irreparable harm applies in a copyright case can’t be applied automatically after eBay, however. So instead the court applied the general test: irreparable injury; remedies available at law inadequate; balance of hardships; public interest.

Momento argued that the harm to its investment and competitive position caused by SAUSA’s copying at least 30 Momento ads showed irreparable harm. SAUSA says it’s the largest publisher of Spanish Yellow Pages in the world, and Momento is a family-owned business, directly competing. The court found that the copying and false advertising had an adverse and irreparable effect on Momento. The court could fairly consider Momento’s competitive position where SAUSA “built its business” around Momento’s works.

SAUSA argued that Momento’s four-month delay before filing suit precluded a finding of irreparable harm. Momento, however, wrote to SAUSA before that and got a response from SAUSA’s counsel that it took IP rights very seriously and was investigating, and would cease any infringements found, requesting proof of Momento’s copyright registrations and Momento’s directories to investigate further. Then, several months passed. The court accepted Momento’s explanation that it didn’t sue until it had evidence that SAUSA hadn’t ceased infringing, which came only when a new directory was published; Momento sued about a month and a half after that.

The court ordered SAUSA to retrieve directories stored on pallets at distribution points, but did not require SAUSA to retrieve directories picked up by consumers, and enjoined further distribution. SAUSA had notice of the infringement contentions as of the first cease & desist letter, yet proceeded with production; the injunction created a hardship for SAUSA, but not an unreasonable one in light of its decision to keep printing.

Note: in an earlier order, Momento, Inc. v. Seccion Amarilla USA, 2009 WL 1974905 (N.D. Cal.), the court denied a TRO on the ground that the plaintiff hadn’t made the extraordinary showing required. Without notice to SAUSA, the court stated the standard for irreparable harm using the old 9^th Circuit presumption. Once there was notice and a hearing, the court had a chance to get more deeply into the law as well as the facts: a victory for the adversary process.

Hey look, a standing case I like

Diascience Corp. v. Blue Nile, Inc., 2009 WL 1938970 (S.D.N.Y.)

Plaintiff does business on the internet as Yehuda Diamond Company. It sells diamonds and diamond jewelry treated with a “proprietary clarity-enhancement process” that masks imperfections in its diamonds, and it alleges that it provides “clear and complete disclosure” of this process. Blue Nile sells colored gemstones and diamonds on the internet. Though Blue Nile’s diamonds are untreated, its colored gemstones are allegedly “enhanced” using undisclosed techniques (including oil filling, glass filling, and flux healing). Failure to disclose processes that each individual gemstone has undergone allegedly contravenes FTC regulations. This information is allegedly intentionally withheld from consumers, leading them to choose Blue Nile over Yehuda. Yehuda alleged that, because these enhancement techniques affect the value and care requirements of the gemstones, but aren’t visible to consumers, these deliberate omissions are likely to deceive consumers.

The crux of the matter: did Yehuda have standing? The court applied the Supreme Court’s most recent statement about the standard on a motion to dismiss: though a court must accept the complaint’s allegations as true, the plaintiff must state a facially plausible claim to relief, and a complaint can’t survive with only “threadbare recitals of a cause of action's elements, supported by mere conclusory statements.” Ashcroft v. Igbal, 556 U.S. ---- (2009).

In the Second Circuit, Lanham Act standing requires (1) a reasonable interest to be protected against false or misleading claims, and (2) a reasonable basis for believing that this interest is likely to be damaged by the false or misleading ads. For (1), a plaintiff must show commercial interests, direct pecuniary interests, or even a future potential for commercial or competitive injury. For (2) likely injury and a causal nexus to the false advertising is required. A presumption of harm is disfavored if there’s no comparative advertising and the parties’ products are not obviously in competition. The court agreed with Blue Nile that Yehuda was therefore required to make “a more substantial showing of injury and causation” to establish standing.

At this early stage, Yehuda’s allegations were sufficient. “Even with the requirement for a heightened showing of injury and causation, courts seldom dismiss Lanham Act claims without first permitting plaintiffs to conduct discovery and present evidence of competitive harm," in part due to the overlap between the showing necessary to establish standing and the proof required to succeed on the merits of a Lanham Act claim, i.e. a reasonable interest and a reasonable basis for believing that interest has been harmed. The court examined a few cases decided in defendants' favor on motions to dismiss, and found that they presented quite different circumstances: where, for example, there is no overlap between the parties’ consumers, making a causal nexus between false advertising and harm implausible, or where any harm would be contingent on future commercial activity a plaintiff failed to initiate.

The court couldn’t yet say that Blue Nile and Yehuda didn’t share consumers. Diamonds and colored gemstones are not necessarily substitutes, but it’s possible that the markets overlap sufficiently for Yehuda to show a commercial interest and a causal nexus between the false advertising and harm. Yehuda would thus be allowed discovery limited to the issue of standing, focusing on the causal nexus between the alleged false advertising and lost sales. The court noted in a footnote that standing could be shown by market studies.

For the same reasons, Yehuda’s state law claims survived. The court also refused to stay the case pending resolution of a case brought by Blue Nile against Yehuda in Washington state, because that case involved separate allegations of copyright infringement and false advertising against Yehuda.

Misled again, naturally

Mark McKenna pointed me to this depressing story, of which the worst is:

Adding to advocates' concerns, a new study shows wide confusion among American consumers about products aimed at the green market. Many mistakenly believe "natural" is a greener term than "organic."

"They felt organic was just a fancy way of saying expensive," said Suzanne Shelton, president and CEO of the Shelton Group, which conducted the survey and specializes in marketing sustainability to mainstream consumers. "They think 'natural' is regulated by the government but that organic isn't, and of course it's just the opposite."

The Shelton Group, interestingly enough, positions itself as a PR firm for "natural products manufacturers."

Dark & Stormy trademark claims

NYT story about a registered trademark for a cocktail made with a particular brand of rum (HT: Jeremy Sheff). As a review question, check the article for conformity with actual trademark law. Or wonder whether the registrant is engaged in naked licensing by giving everyone the recipe for Dark & Stormy cocktails, to be assembled by the bartender.

Franklin College v. Franklin University

Indiana's Franklin College sues Ohio's Franklin University now that Franklin U plans to open a campus in Indianapolis. A good case to teach about expanding into new territory with, perhaps. Also note the clocktower logos, one fairly traditional and the other sleek and modern. Are consumers likely to think one is an updated version of the other?

Organic labeling and its discontents

Washington Post story on the watering down of the USDA label. Money quote (quite literally):

Joe Smillie, a [National Organic Standards] board member, said he thinks that advocates for the most restrictive standards are unrealistic and are inhibiting the growth of organics.

"People are really hung up on regulations," said Smillie, who is also vice president of the certifying firm Quality Assurance International, which is involved in certifying 65 percent of organic products found on supermarket shelves. "I say, 'Let's find a way to bend that one, because it's not important.' . . . What are we selling? Are we selling health food? No. Consumers, they expect organic food to be growing in a greenhouse on Pluto. Hello? We live in a polluted world. It isn't pure. We are doing the best we can."

What consumers are likely to understand is a tough question, especially when the standards are complex. But "they think the food comes from a greenhouse on Pluto, therefore we can put plenty of synthetics in the food because they're misled anyway" has both normative and descriptive weaknesses, it seems to me.

Newspapers, user-generated content, and the cost disease

I was going to write something about Baumol's cost disease and its implications for Judge Posner's misguided proposal to ban linking/paraphrasing of newspaper stories, but then I found a good post explaining cost disease in the performing arts and applying it to newspapers, which also face greater constraints on increased productivity than other industries. (Though we can debate the extent to which tech allows more efficiency in reporting/editing/fact-checking etc., it doesn't seem as great as the extent to which tech allows Wal-Mart to decrease the price of paper clips.) If cost disease is the problem, then increased legal rights don't make much sense as a solution.

Interestingly, Wikipedia's article on cost disease points out that one of the solutions is increased provisioning of the good by volunteers or increased nonmonetary rewards. So we could see user-generated content, like cultural respect for journalism, as both cause and effect of the economic constraints under which newspapers operate.

If a book meets a book coming through the rye

A couple of thoughts about the Holden Caulfield decision:

The court’s insistence that a parody must criticize the original specifically seems inconsistent in spirit with the Second Circuit’s most recent Koons decision, which involved a finding of transformativeness when Koons copied images from fashion magazines. Koons claimed to be critiquing the genre and explicitly disclaimed interest in the particular image. (Calling the legs “anonymous,” Koons insisted that the legs were “a fact in the world.” “[T]hey are not anyone's legs in particular,” and thus he had the right to copy them to critique modern consumption-oriented culture.) Perhaps the differences in medium (image/art world/collage versus text/publishing/single work used) mattered to the court, but yesterday’s decision relies far too heavily on Justice Souter’s unfortunate use of “parody” to stand in for transformativeness. (There’s a Campbell footnote pointing out that satire can be fair use, but most subsequent cases ignore it.)

The court also rejects using The Catcher in the Rye to critique Salinger, because parody has to be targeted at the work and not at something associated with the work. Query: how would the Literal Total Eclipse of the Heart fare under this standard if the owner of the copyright in the musical work, as opposed to the owner of the copyright in the music video, brought suit? I think this question reveals the problem with limiting concepts of parody like this—works exist in context, and parody has to be able to embrace that context.

Relatedly, the court finds that the book doesn’t work as a critique because Holden’s depression and anomie were already part of the original text. This strikes me as a mistake of law –in Campbell and in Suntrust, the courts found in the originals the elements highlighted by the respective transformative uses.

Quoting myself:

In a passage quoted by the Supreme Court, Judge Nelson’s dissent from the court of appeals opinion argued that the parody

. . . reminds us that sexual congress with nameless streetwalkers is not necessarily the stuff of romance and is not necessarily without its consequences. The singers (there are several) have the same thing on their minds as did the lonely man with the nasal voice, but here there is no hint of wine and roses.

Note in particular how the opinion imputes the motivations of the narrators in the 2 Live Crew version to the narrator in the Orbison song. Because of the later song, we can recognize that Orbison's narrator has the “same thing”-- sex--on his mind as the later singers ….

And:

The Eleventh Circuit Court of Appeals held that Alice Randall's insertion of homosexuality, in the form of a gay Ashley Wilkes, into the world of Gone with the Wind was an important part of what made her book transformative. The court quoted Gone with the Wind's description of the Wilkes family as artistic and “queer,” a term already widely used to describe homosexuals when Mitchell wrote the novel, to show that a basis for Randall's changes was present in the original. … In other words, the court held that transformation consists of making clear or exaggerated what was opaque or limited in the original text.

The argument for transformativeness is that by showing Holden still whiny and useless in his dotage, the new book critiques the extent to which the original romanticized, or led readers to romanticize, his central characteristics: rather than being a sensitive youth on a significant journey, the passage of time reveals that Holden is merely a callow youth who grows into a callow man, calling into question a generation’s worship. The problem, that is, is the reader’s valuation of Holden’s characteristics – just as the problem in Gone With the Wind was the valuation of whiteness/heterosexuality/Southern nostalgia.

In fairness to the court’s opinion, the idea seems to be that Holden's immaturity was sufficiently apparent in the original already, and thus not “opaque or limited,” as I put it. But the fact that Holden became the hero for a certain segment of a generation suggests that it wasn't, in practice, apparent enough to avert all need for critique. A similar debate broke out over a fanvid based on Joss Whedon’s show Dollhouse: the fanvid presented Dollhouse as a show about rape, and half the commenters at the fansite Whedonesque thought that the fanvid didn’t say anything that the show itself hadn’t already said, because the show was clear that it’s based on rape—and the other half of the reactions were that the fanvid was unfair, because what happens in Dollhouse isn’t rape at all. There was very little recognition on either side that the fact that these two interpretations of the original existed in conflict indicated that the fanvid in fact had a critical message, intervening in a heated debate over interpretation.

Perhaps, like Marx’s history, literature always repeats itself—the first time as tragedy, the second time as farce. The question of this case is whether showing a tragic young man turned farcial in his old age, because he stayed still while the world moved around him, is sufficiently transformative to be commercialized. (Separately, I must note strong disagreement with the court’s idea, for which it gives no citation, that the ability to avoid licensing also works as an economic incentive to be taken into account in analyzing the fourth fair use factor, because the author’s knowledge that no one can add to his work—the moral right, that is—can induce him to create the work in the first place. There is simply no way to distinguish this concern for avoiding interpretation from concern for avoiding criticism/transformation, which we know is not to be taken into account in factor-four analysis.)

Privacy and risk

I’m reading Daniel Solove and Paul Schwartz’s text Privacy and the Media, which starts out with an overview of theories of privacy. I was struck by an excerpt from Fred Cate, Principles of Internet Privacy, 32 Conn. L. Rev. 877 (2000) (citations omitted):

Open information flows are not only essential to self-governance; they have also generated significant, practical benefits. The ready availability of personal information helps businesses “deliver the right products and services to the right customers, at the right time, more effectively and at lower cost,” Fred Smith, founder and President of the Competitive Enterprise Institute, has written. …

Federal Reserve Board Chairman Alan Greenspan has been perhaps the most articulate spokesperson for the extraordinary value of accessible personal information. In 1998, he wrote to Congressman Ed Markey (D-Mass.):

A critical component of our ever more finely hewn competitive market system has been the plethora of information on the characteristics of customers both businesses and individuals. Such information has enabled producers and marketers to fine tune production schedules to the ever greater demands of our consuming public for diversity and individuality of products and services. Newly devised derivative products, for example, have enabled financial institutions to unbundle risk in a manner that enables those desirous of taking on that risk (and potential reward) to do so, and those that chose otherwise, to be risk averse. It has enabled financial institutions to offer a wide variety of customized insurance and other products.

Detailed data obtained from consumers as they seek credit or make product choices help engender the whole set of sensitive price signals that are so essential to the functioning of an advanced information based economy such as ours.

The discussion of information collection and processing as a way to manage risk, and thus confer benefits that must be set off against the costs of lost privacy, raises at least two questions. First-order: does the collapse of the financial markets, which suggests that the information was not used to price risk correctly—the risks getting lost in the tranches, as it were—change the calculus of privacy? Here’s a quote from a recent NYT story:

John Kay, a leading Scottish economist, noted recently that he used to teach — along with most other economics professors — that derivatives allowed risks to be transferred to those better able to bear them.

But, he added, experience had shown that to be wrong. Now, he said, he teaches that derivatives allow risk to be shifted from those who understand it a little to those who do not understand it at all. That is not a bad description of how the risks of bad mortgage loans were transferred from those who made the loans to those who bought troubled collateralized debt obligations.

We would be much better off as a society if that particular transfer of risk had been regulated, or even prevented.

Second-order: to what extent does framing information collection as an economic benefit inherently disparage privacy, the way many have argued that framing “national security v. liberty” inherently disparages liberty, when there’s at least as good an argument that, as one of the greats said, those who trade security for freedom will end up with neither? Perhaps a certain level of information privacy actually promotes economic soundness, at a minimum to the extent that it reminds lenders to factor risk into their calculations.