Deborah Gerhardt, Eric Goldman, & Leah Chan Grinvald, Debunking the “Duty to Police” in Trademark Law
Presented by Eric Goldman. PTO report: no TM bullying, but if there is it’s because of the duty to police. That’s intellectually deficient: if the duty to police is a problem, then you should look at the duty to police. One hypothesis: mythical status of duty is causing problems. Second: why? Self-interested lawyers may be the root of the problem: there’s money to be made in convincing businesses that they have to do stuff. (Compare domain name defensive registrations.)
But what are we talking about when we talk about the duty to police? At least 5 other TM doctrines all bundled under an umbrella term.
(1) Genericide: if TM owner allows a term to become the common word for a thing. But we shouldn’t care about policing, we should care about what the public thinks. In theory it’s recursive—policing might have effects on what the public thinks—but courts look at what the TM owner does as if intent mattered. (2) Abandonment. But if you want to not abandon a mark, just keep using it! (3) Laches/acquiescence with respect to a particular user. That can be a concern for TM owners, but in reality that only matters with (a) a particular target who (b) you really will ultimately want to sue instead of coexisting. There is a duty to police there, but you might not ultimately want to sue them. (4) Reduced strength/scope of a TM. Hemming in in terms of product line. Possible that you may not have a superior right against these potential defendants anyway. Another possibility: descriptive TMs having difficulty achieving secondary meaning because putative owner isn’t the sole occupant of the space. Likely confusion test also considers strength of the mark: if there are a lot of similar marks in the same space you may not have a very strong mark. (5) Dilution: similarly, a lot of similar uses could undercut fame/blurring arguments. Can be a product, but most TMs won’t be famous anyway at the federal level.
What else am I forgetting about where the TM policing duty is invoked as a reason to take action? Real driver of discussion is (4), the most amorphous and the most generally applicable. Easy to see how overstated that could be because in many instances a particular use won’t really matter.
Could we change the nomenclature? Policing language doesn’t advance the discourse. Duty is also the wrong terminology. If we talked about it differently we might make progress. More like a conditional obligation than a duty. If you don’t do it, there might be consequences v. you must do it.
Need extrajudicial methods. Threats action predicated on wrongful sending of an enforcement letter.
Bartow: Naked licensing?
A: No. We put all the naked licensing/quality control stuff aside; we think that’s a contractual issue and not a duty to police issue in the sense we are discussing here.
Ariel Katz: can you track when the duty was announced?
A: historical question: Leah Chan Grinvald: seems to have appeared sometime in the 60s when there was a landslide of actions. Still trying to pinpoint.
Katz: may help the analysis: if it has no real basis, that could help. Incentives of lawyers: Why won’t lawyer competition take care of that? A guy could tell you he’d do it cheaper than your lawyer who tells you you have to do so much. (I would say: Because of classic information problems/credence good problems: you can’t judge the quality of the lawyer’s work, especially not by the billing; may appear to be a luxury good.)
A: imperfect market for legal services: there may be serious switching costs for lawyers. His impression: sophisticated TM lawyers are good at this, but interlopers/marginal TM lawyers often lead clients astray. Not sure why clients end up with these lawyers. Also, you don’t know the outcome of TM strength until the outcome of the process: serious timing issues. Lawyers in a whole industry may be conservative.
McKenna: his experience—we sent tons of letters to people we expected to roll over; not just inexperienced lawyers doing it. Two ways of thinking about it: (1) what the negative consequences of not policing are, and (2) what the benefits are. Benefits: PR, you hide behind the duty to police so you don’t look like a bully. Within the cases, even if the court doesn’t punish you for not doing it, courts often give you credit for having a giant stack of enforcement letters. Levers to get rid of it: must remove the carrots/keep courts from crediting it.
A: true, silly to gauge strength of TM based on how much money they’ve spent with lawyers.
Rosenblatt: everybody, not just interloper lawyers, does it. Not just moral hazard. Risk aversion story. Aside from the possibility of shaming, there’s almost no downside to sending one of these, and a potential upside. If we ever get challenged, we can write a long and detailed affidavit about how all these people licensed our mark/stopped, so we have secondary meaning.
A: we will talk about forfeiture risk aversion.
Q: was there ever a time when involuntary abandonment ever did happen or is it always a paper tiger?
A: can’t think of one.
Ann Bartow, Trademark Law, Branding and the Oppressive Leveraging of the Female Gender
Women are less visible in IP. As in popular culture, there are always fewer female characters than male ones (not just leads). Music too: money goes to the men. Books get skewed, but note that J.K. Rowling sold as J.K. and not Joanne. The “suits” are overwhelmingly male.
Most of the products we buy on a day to day basis could be gender-neutral. Clothing was at one point doing so. Pants/jeans. Only a few products (tampons, jock straps) are clearly gendered, but are often given a gender for TM/branding purposes, which then carve out and enforce gender binaries. Hair care products: unmarked is women: women have hair. Marked: hair care “for men.” Usually though male is the default. Golf clubs are male, then there are golf clubs for women. Same with guitars. One of the most likely ways you can tell is the color pink.
Wide consensus among TM scholars is that there is public participation in brand meaning and management. Part of the project is descriptive: how this happened with pink.
Authenticity matters. Counterfeiting is a bigger problem for consumers than many TM scholars acknowledges. $10 Rolex, yes, but it turns out counterfeiting is a lot more nuanced and complicated than that. A1 counterfeits (China)—same materials, same factory, not authorized: after-hours production. There is also “foreign trade,” and what that means is: they can be high-end shop, high-end brands. Can be very convincing. Easily exported abroad.
Her clothing (all taken into China) was seized at the border on the way back to the US. Treated as counterfeits because the expectation was that clothing was likely to be counterfeit, as American brands. “Foreign trade” people were able to bring it home cheaply and easily though.
American official: heard him suggest that women were the problem with counterfeits because we want shoes and bags. But financially men are the problem: the really high-end stuff like pens, watches, luggage and even cars are bought by men, worldwide, and particularly in China.
Branding as female: when something is pink/for women, it’s usually more expensive. Dry cleaning: they charge more because they’re more complicated or smaller or something else. Deodorant for women is smaller for the same price. Iconic examples of the price of discrimination. Boy camera and girl camera: in that case, the blue camera was more expensive because boys and girls would use it, heightening demand, while there was less demand for the girl/pink camera that only girls would use.
Pink is loaded: why do girls choose it? Because we’re supposed to? Is it self-esteem enhancing in a ‘proud to be a girl’ way? This gets manipulated: if the quality is inferior or the price is higher, that’s problematic. Can also be leveraged against men, especially if they wear pink/coding for homophobia. “Away” locker rooms painted pink as a demoralizing technique for football. Sports teams have pink days for breast cancer and men doing it talk about how much courage it takes to use a pink bat with its girl germs.
Women become luxury product for men. Pressure to conform to standards, and at the same time pressure to be “authentic.” Mocking women for visible plastic surgery: you’re supposed to have a tiny waist and big breasts without plastic surgery. This affects everyone, particularly women. Links back to counterfeiting.
Grinvald: physical differences exist in golf clubs (but they don’t have to be pink).
Bartow: why not have a size based line?
Grinvald: could also be the Japanese line; Asian line similar to US women’s line.
Jennifer Rothman: we segregate and constitute identities lots of ways in advertising: NASCAR, etc. Is gender different?
Bartow: by far the most extreme.
Rosenblatt: color is only one axis. Women’s skis have different center of gravity, different stiffness. But the skis made for women are called ‘ladies’—naming can be different.
Said: diapers have characters—is it that the marketers assume we want gendered products and give them to us? Most products are given an age and they don’t need one any more than they need a gender: deodorant too. L’Oreal and Lancome: same products, different price points.
Bartow: isn’t interested in chicken v. egg. Can’t find a baseline. Interested in stopping it.
Copyright and the First Amendment
Jake Linford, Cracks in the Edifice: a Copyright Critique of the Institutional First Amendment
Who identifies First Amendment institutions? Building on/critiquing Fred Schauer. Copyright has too much deference to Congress. Congress is more capable of factfinding, but we do worry about capture.
Rationales: self-governance; marketplace of ideas/truth/diversity/access; autonomy/negative rights (we worry about the rights of the first speaker, the rights of the listener, and in copyright the rights of the second speaker, who may also have autonomy interests); self-realization (first and second speakers as well as audiences).
Compulsory cable licenses: from a marketplace of ideas rationale, the rule as currently constructed is not completely crazy, which is surprising considering how the rule got into place through forced negotation between broadcasters and cable providers.
Archiving exception for libraries: seems like libraries should get deference as institutions. Consistent with marketplace/information rationales. Tushnet argues that libraries have self-governance/Meiklejohnian filtering mechanism as well. But the narrowness of the rules creates problems: what purposes are ok, how many copies can be made. Is that how Schauer would define institutional deference? Especially if institution is likely to be conservative. Other potential problem manifests in HathiTrust case, where Authors’ Guild argues that archiving doesn’t fit into §108 and that, because §108 is narrow, §108 and §107 are mutually exclusive. Now, that’s crazy, but as a matter of statutory construction the argument that the specific trumps the general is common. At least allows for the argument.
Other built-in preferences seem divorced from any First Amendment rationale. Problematic: §110 exemption for religious services. Maybe it’s a way to express religious beliefs, but what about exemptions for county fairs, veterans: no First Amendment rationale.
Disparate rules: covers of musical works v. everything else. Compare sampling, for example: Authors’ autonomy isn’t different; neither are the interests of the speakers or the audience. Could the concern be piracy? That doesn’t seem to work.
What is the lesson? Should specific exemptions be very broad within their institutions, e.g. immunity for libraries? Over and underinclusive but maybe discretion is cabined by institutional status.
Ramsey: see §108 and §107 as belt and suspenders.
A: that’s how most people would think about them. Authors Guild has a loser argument but it’s symptomatic of a problem.
Grimmelmann: savings clause of §108 would seem to fix this.
RT: what about using best practices? Need not be an institution in the sense of “everyone must be part,” but communities of practice like documentarians can create best practices, and we can even imagine a statute that immunizes people who are in the institutional role and follow best practices formed within the institution.
Fagundes: how about reading copyright through the lens of institutions—do you need “First Amendment” here? What about “progress clause” institutions? If you try to make sense of the actual institutions favored, there might be something weird because the practical reality is that most of the favored institutions just have good lobbyists.
A: there’s got to be a First Amendment backdrop because that’s what’s missing from the literature of the institutional structure of copyright.
Felix Wu, Copyright, First Amendment, and the Objectification of Speech
Sorrell v. IMS: The creation and dissemination of information are speech within the meaning of the First Amendment. “Are”: why? We’re trying to categorize things. Act of creating or disseminating speech is speech protected by the First Amendment. Later: Prescriber ID information is speech—just information, not doing anything with it. Again: Brown v. EMA: video games qualify for First Amendment protection, while obscenity, incitement, and fighting words aren’t; new categories may not be added. Is money speech? Is spending money speech? Are protests at military funerals speech? Is code speech? Courts have tried to grapple with this—also, are search results speech? A world in which it matters whether things are or aren’t speech.
That’s a bad way to approach these kinds of problems. Rubenfeld, The First Amendment’s Purpose: don’t adopt what he says, but his example: you’re speeding down the road, maybe because you want to protest the speeding laws or send some other message, and you put a sign on your car explaining why you speed. If the cop pulls you over, you have no First Amendment defense. Why not? If we’re in the world where certain things are or aren’t speech: I’m communicating X, especially with the sign on my car. Normally you can’t be forced to choose a different method to express your idea. (Maybe that is actually not true under the speech/conduct distinction; normally you can be forced to choose, but we just don’t notice that because of our conventions about speech.) Any activity or object is not speech by itself; speech is our way of interpreting these things or activities in the world. We can view the speeding person as speech and see the intended expression. Yet the activity is itself an activity in the world with nonexpressive results: actual speeding car, worth regulating without reference to the First Amendment.
This is the example we should think about in other areas. Not whether code, search results, etc. are or aren’t speech. Instead we should break out expressive/nonexpressive interests at stake. You can look at it either way, but it’s still both a duck and a rabbit at the same time.
Categories are just approximations of something else. Need more balancing at the end of the day.
Copyrighted works we traditionally say “are” speech, but we should consider expressive and nonexpressive interests of different parties: authors, re-users, disseminators, recipients. Act of disseminating is not devoid of speech interests: sharing has real expressive value. Disagree with Tushnet that this by itself somehow then elevates the sharing to a First Amendment problem. Or at least the problem it creates is no greater than the general problem of accommodating expressive/nonexpressive interests. Entertainment purposes: no problem that that’s simultaneous with expressive interests. (What is the definition of expressive? I asked: he means that I could decide either to sit in a jacuzzi or listen to music; his suggestion is not that the two are equivalent, but that the entertainment component is the utility that comes regardless of the expression of ideas. So really what’s at issue here is a deep theory of speech/expression that distinguishes ideas from emotions, which I’m skeptical can be done.)
Derivative works right is much more problematic than the reproduction right for expressive interests. Intermediary liability: should perhaps have one rule for substantially identical works (even a reasonable filtering requirement) and another for everything else like fan fiction (§230 immunity, so only the individual involved is at risk). That would protect expressive interests of those who alter, though not the interests of those who share.
Public domain: expressive interests there look like expressive interests in copyrighted works too. Thus not clear that laws as in Golan impinge on expressive interests any further than copyright generally, though they do lack the speech-based justifications provided by the incentive theory. But purely speech-based justifications may not be required if we have to do balancing at the end of the day anyway. I have a non-speech-based justification for infringing on your ability to drive as fast as you want.
Grimmelmann: intermediary liability—are we seeing that with Content ID? They depend on verbatim matching, starting to draw a technological line subjecting exact copying to more rigorous control.
A: may well be true.
Q: six strikes program—parties agreed that they’d notice only things that are complete/substantial copies.
Ohm: lots of things we do are partly expressive and we leave it to the judiciary to draw tough lines, and that’s difficult: litigants will concoct just-so stories. More doctrinally: chilling effects—erring on the side of calling everything speech?
A: am I worried about too much protection? Mostly no. These days, except for copyright, SCt hasn’t met a First Amendment argument it doesn’t like. Impulse is to cut back a bit. We should consider chilling effects.
Andrea Matwyshyn: is burning a draft card speech?
A: O’Brien grapples with that problem. Nothing I’ve said creates an obvious answer to that question.
Peter Yu, Copyright as an Engine of Censorship
Tushnet etc. have criticized the SCt’s statement that First Amendment interests are less when you’re making someone else’s speeches. Copyright interacts with democratic culture (Balkin) and freedom of imagination (Rubenfeld). Outside the US, how does the conflict look? Hard to find scholars thinking about this. Neil Netanel, Vand. L. Rev.; Lawrence Liang. Google released tracking of government requested takedowns: not just limited to China. ACTA: seen as a free speech issue in Europe. Three strikes—also a free speech issue: UN Human Rights Council did a report.
In countries with high information controls, people learn to read differently. When you can’t say the word SARS, you can ask “how are you doing?” and understand the answer “not well in this town” as meaning “SARS is here.” This makes research difficult unless you know how people are communicating: breaking the code.
Crab wearing watches: shows how difficult it is to do research about the internet in China for non-insiders. Mash-ups that make a critical analysis of government policy through metaphors/using clips from movies as well as gov’t movies. Message is not explicit, but understood. Normally call that creative reuse, but in a high-information control environment it’s not creative so much as liberative. Can carry encoded meaning. A photo of the mining accident in Chile: used by Chinese users = expression of frustration with mining accidents in China. Similarly with corruption scandals in New Jersey: instead of criticizing the Chinese government explicitly, they talk about this NJ scandal: verbatim copying but built-in meaning.
Pirated content as an alternative source of information. Movies are censored; DVDs and other forms are the only way to get uncensored media. Why should Hollywood allow this? It’s hard to know the purpose for which the media is being used. Star Wars: brings out themes of corruption, slavery, federalism, democracy, racial tension, American government.
Finally: pirated software as means of control: Russian raids on dissidents with pretext of copyright infringement of Microsoft software, when really they wanted to shut down dissent.
Limitations/exceptions: the typical one we talk about is fair use/parody. That’s not enough for verbatim copying used as a communication tool. Proposal: limitations/exceptions have to be broader in high-censorship countries. Must also distinguish commercial and noncommercial use.
Blanket licenses: Microsoft’s solution in Russia. Drawback: don’t want company endorsing certain types of political behavior.
Benign neglect: do nothing. Freedom improves the protection of copyright.
Robert Brauneis: in a single jurisdiction, one can hardly imagine a copyright case brought in China in which the defendant’s argument is that “this is fair use because we were criticizing the government with this facially neutral image.” Speaking to a gov’t actor in an official setting: seems difficult. How would this work?
Yu: thinking more outside the country/copyright enforcement efforts. We’re pushing countries for greater copyright protection; US companies are likely to use USTR rather than to sue themselves. Russia scenario: copyright as a pretext to go after users of the work.
Q: is the idea that authorities would use copyright as an excuse to go after the picture of NJ corruption? Should we be telling countries that we believe fair use is broad?
A: China accepts individual complaints; trade group complaints; licensees in China. On top of that there are layers of government: provincial, national, etc. Difficulty with respect to blanket license is that the license shouldn’t be too broad or too narrow (sponsoring only dissidents), which makes it tough.
Q: why look to copyright law?
A: because there’s a conflict between promoting copyright protection in high-restriction regimes and promoting freedom of speech. We get asked: you’re pushing for ACTA/TPP; why wouldn’t these restrictions on/obligations of ISPs be the same things as China is telling ISPs to do? If our response is “they’re different,” that’s not very persuasive, especially since you can use copyright to censor.
Greenberg: identifying the dark side of copyright, but wouldn’t you also create a patchwork that would make consistency almost impossible? Do we need an international treaty? That’s been a mess in terms of harmonization.
A: no, treaty is not the way to go. Focus on restraint, and get the copyright holders like the movie industry to think about how to deal with this issue. Market access/freedom helps sales; not a bad thing if there’s no ceiling on the number of foreign films allowed. But this is a long term goal, while the CEO is thinking short term. (Especially since studios can also alter the content of what they’re selling, like upcoming movies where China is portrayed more favorably so it will be allowed in China.)
Q: FB/Google blocked: lots of copyrighted works can’t get into China. American companies are providing high tech for Chinese censorship. High-tech cameras used to monitor citizens in public spaces. Talk about technology along with copyright.