Friday, September 25, 2015

Notice and notice failure at BU: panel 1

Graeme Dinwoodie – Trademarks and Commercial Reality: registration systems/use systems; Industrial policy/consumer protection and registered/unregistered affect notice, but not sure how much compared to patent.  Costs of inadequate notice may not be as great.  Efforts to ensure adequate notice need to be balanced w/other objectives.
EU has first to register; US (alone in world) has first to use system.  Different historical view of registration. Pre-Lanham Act, clear that registration merely confirmed common law rights.  Conventional wisdom about current state of law is that’s still true, but that should be questioned—now confers some substantive rights. If registration is notice of anything, is it notice of legal rights or of something else?  Does it constitute rights or reflects them?  In EU, the registration defines the rights.  Primary value on public notice.  Unfair competition is national, by contrast.
Evolution means convergence in regimes, though. Unfair competition & TM have always accommodated some consumer protection goals and some industrial property/market structuring goals. 
Even if registration is only signpost, should be as accurate as possible. Registration is not the only way of providing notice: the use requirement provides notice, especially secondary meaning requirements.  Actual use may be as effective as notice as registration, depending on how the rights are structured.  It doesn’t work as well when the rights extend to dissimilar products (e.g., dilution). Actual and constructive notice can work together—the register may help you figure out what the mark actually is, particularly w/non-word marks.
Distinguish notice of existence v. notice of scope.  Beebe’s studies on applications that are abandoned—astronomically high.  Huge amount of deadwood even in the US use-based system.  EU has the problem of submarine marks.  The problem in TM is scope is determined in two ways that make it hard for register to be helpful: metric is external to the register, consumer understanding, which is also dynamic/evolving.
In Europe, graphic registration requirement does some work.  Applied to bar registration of something we could easily recognize in practice: purple as the predominant element of a package for chocolate; UK court considered “predominant” too vague. Forced Cadbury to use passing off, with higher proof requirements, causal nexus, more proof of reliance/damage.
In the US: from 20th c. and now, we’ve assimilated §32 to §43.  Should we revisit that question of whether the unregistered mark requires more proof before asserting rights.  Two areas in particular: trade dress. Defensive registration?  Australia allows you to say ‘I’m not using this mark in this area, but if someone else does, I will make a dilution claim.’
Barton Beebe: how does notice affect the dynamics of the opposing interests Dinwoodie identified, such as industrial policy/consumer protection.  This topic demands a comparative approach between registration-based and use-based.  What about Canada’s weird hybrid system?  One of the most shocking extensions granted by registration is nationwide priority, even if you are really only using the mark in NY.  US also has an examination system that considers both absolute (scandalous, descriptive) and relative (likely confusion) grounds for refusal. European system is more rubber-stamping; no relative examination. But how rigorous is the US review?  Fromer and Beebe are working on that.
Distinction between reactive and proactive functions of TM law.  Should TM be structured reactively to protect whatever consumer understanding develops, or proactively seek to structure the ways in which consumers shop/producers sell, and thus order how the economy functions?  Key question Dinwoodie has asked.  How do constraints associated w/notice affect that?  Registration is signpost, not fencepost; it must be thus if the existence/scope of TM protection informed by consumer understanding (instead of TM law operating on consumer understanding).
We have to accept that TM law is reactive in nature, Dinwoodie suggests. Notice compels us to recognize that.  In comparison to the Europeans, the US use-based system is especially reactive.  Perhaps now we can recognize that notice might be one of the main policy levers by which TM policy can inform consumer understanding.  [Would like to hear more about that.]
Can it be said that the Europeans, w/more formal approach to TM, are ultimately presenting a more proactive system?  Is this a good thing?  Reaching out into the economy a bit more.  Industrial policy orientation in EU is greater.
Little points: In TM context, to what extent is PTO’s TESS the main resource for notice, versus Google? What is the effect of massively indexed online databases? Our concept of notice was formed in the offline context.  False positives are a big deal there.
Irony Dinwoodie identifies: EU is giving European-wide rights, but political events/multilingual nature suggest this might not be totally appropriate: use in one country gives you rights all over.  Whereas in the US, use in NYC gives you rights to the nation, but that is appropriate.  Here the American use-based system is inconsistent w/ how we approach geography; European system is also.
Jessica Litman – What Notice Did
Most scholarship on © notice talks about role dividing what’s protected by © from what’s in the public domain.  Some writers think notice’s function in moving works to public domain is great, others that it’s terrible.  Also may have distorting/shaping effects on other parts of copyright law.
Existence of notice prerequisite may have allowed US to tolerate broader sphere of potentially copyrightable subject matter. 
Rule that notice had to accurately name the © owner created enormous pressure on courts to find that the person named in the © notice was actually the owner, in order to avoid forfeiture.  Since this is peculiarly w/in control of publisher, © notice tended to name publisher; led courts to figure out how author had transferred her © to the publisher, even when she hadn’t. Their innovations have stuck with us, messing up the law even now that the justification is gone.
Only tiny number of maps and charts were registered, less than 1%. In 1802, Congress sensibly required that small number of works that did claim protection to include a notice.  1820s-30s = court decisions require strict compliance w/formalities.  1850s: no court had squarely held that statutory language about assignment in presence of two witnesses required a writing, but then it came up in a case about a license to publish a medical book.  B/c author saw the notice, can be inferred that he transferred the rights.  Before a © was registered, author could part w/right w/o any written agreement—writing requirement only kicked in after registration. Seemed to be motivated by third parties’ arguments that copyright were void b/c the person named in the assignment had never secured a written assignment. The parol transfer doctrine took on a life of its own, though, and thus in Parton v. Prang, landscape painter sold painting, which was resold to lithgraph publisher who made lithographs and registered ©. Parton argued he’d never transferred the copyright, but the court said no writing was required for transferring © in an unpublished painting; transfer of painting is transfer of © in the absence of express reservation: could presume that owner of unpublished work automatically acquired right to © it in his name.  By end of century, this was “well-settled” according to Eaton’s treatise.
SCt adopted this reasoning.  In one case, defendant said that copyright in cookbook written by a woman was invalid b/c she had no right to transfer it (she was married); the SCt implied her husband’s consent/endorsement to transfer. Then courts invent work for hire doctrine out of whole cloth when there isn’t evidence even of an oral agreement.
What about making sure the publisher prints the author’s name in the notice and registers the copyright in her name?  Harriet Beecher Stowe & Oliver Wendell Holmes Sr. both had serials published in the Atlantic, registered in their name, but Atlantic included © notice in its own name in the issues in which the serials were published.  If the Atlantic owned the ©, then Stowe and Holmes forfeited their rights by putting notice in the wrong name when they published the full book; but if Stowe and Holmes owned the ©, then the Atlantic put the works in the public domain by publishing them with the wrong notice.
Ultimately, Congress responded trying to fix this; but courts didn’t change course—courts kept applying the presumptions to unpublished works, finding parole transfers on little or no evidence.
Not a matter of pro-publisher and anti-author. Instead, courts were trying to preserve © from forfeiture.  Author-unfriendliness was an accident of path dependence.
Jane Ginsburg: Author-unfriendliness is another nasty effect of the notice requirement.  Effects on recordation requirement as well—must record transfer of federal ©, but the gambit she described involved a transfer of a common-law ©, so there was nothing to be recorded. Our recordation system has many problems; Litman has identified this one in addition.
Doesn’t think we should have mandatory notice at risk of losing copyright or author’s right. But current problems exist even for voluntary notice.  We now have a system of divisible ©.  But divisibility can mean that any ambiguity should be construed against transfer and remains w/author.  That has possible unfortunate effects on notice: how do you know who owns which rights?  If the basic notice doesn’t specify which rights the notice-giver owns, can have trouble.
Imagine: A work is created but not published before 1978. There’s a transfer agreement for the rights in that work.  In 1978, unpublished works get vested w/federal ©.  Is the grant of rights in that work subject to termination under §203?  It’s not §304-terminable, which is based on the renewal term. How do you date the grant of rights?  One could argue that the relevant date is not the pre-1978 agreement, but the date federal © came into being, Jan. 1, 1978—making termination possible as of 2008.  Potentially good news for an author, but the clock is ticking—only until July 1, 2016 to serve a timely notice of termination. If there’s anyone in this situation—granted rights in unpublished work before 1978—act quickly!
Ruth Okediji – Form versus Function in The Berne Convention's Notice Regime: Reclaiming the Public's Interest in the International Copyright System
Since 1908, int’l © framework eschewed formalities.  Art. 5 of Berne: enjoyment/exercise of rights shall not be subject to any formality.  Protection in the country of origin is governed by domestic law.  Specific goal: protect works in countries other than that of the author; not inherently anti-formality.  Didn’t address how foreign authors might prove compliance/ownership/authorship.  Historically didn’t eliminate all formalities: Art. 11: it will be sufficient (in absence of proof to contrary) to put name on work in customary manner; if pseud/anon, publisher would be deemed owner (in the absence of other proof)—deemed to be notice to public of another’s claim of right. Art. 7: articles from newspapers/periodicals could be reproduced, unless there was printed notice to the contrary.  Art. 9: unpublished musical work: could indicate on title page that author rejected public performance.
So notice was a big deal until 1908.  Then the practical effect in most countries was to eliminate most formalities; maintaining them for domestic authors would have led to political backlash in many countries.  Political/pragmatic sense: formalities had fallen out of favor in many Euro. countries. But formalities served so many functions and had such a long/storied history in Europe; struck by relative ease w/which this article got rid of this significant institution.
Notice = important part of human society. Indigenous communities had forms of notice. Notice/property rights have a strong historical link.
In fact, notice is alive and well, but hidden/dispersed in different functions.  Formalities are not neutral, and neither is notice—cf. Litman’s paper. Across countries/authorial classes.
Lack of notice burdens limitations and exceptions; just as L&E do lots more work because of lack of notice.
Global enforcement regime will compel/justify a return to formalities. In the absence of int’l rule for notice, we’ll end up with costly forfeitures/greater burdens than notice itself caused.
Berne Act had formalities of its own, and current iteration allows for some formalities.  Esp. for exercise of L&E.  Original Berne Convention was directed at facilitating crossborder exchange, but allowed national reservations to tailor solutions. Of all the formalities we don’t see retained, most important to ©’s goals is notice.  A point of intimacy b/t authors and the public.  Public relies on notice; notice facilitates transactions; channeling function b/t fair and permitted etc. uses.  Notice should also be considered a fundamental right of the public. Can also facilitate rights across countries—where authors from other countries claim that American authors have lifted melodies, etc.
Not always benign.  In developing countries, elimination of formalities was particularly disruptive of authorial class formation—notice and other formalities were abolished to destroy the rights of local authors.  1934 decree forbade filming in French African colonies without prior authorization; Africans were precluded altogether from producing films, and often restricted from viewing films. French officials were to maintain strict vigilance over stray Europeans w/photographic equipment wandering to remote corners of a colony.  African authors denied opportunity to register in their own names.  In art, local authors couldn’t register works of art in the UK, France.  The first real orphan works: they didn’t exist for purposes of colonial law, thus freely available for appropriation. They also killed irrepressable authors, which didn’t help.
Also distorted the notion of ©. Infringement is rampant in developing nations not b/c of culture of theft but b/c ingrained notion of boundaries has never been built into the authorial etc. classes. 
Hidden culture: notice abounds in technical rules in the enforcement space. 
Berne: no bar on notice for domestic authors; notice from users; on making protection for TPMs contingent on notice; etc.   But we need to address differential burdens on new authors, poor authors. 

TRIPS art. 41: members shall ensure enforcement procedures available (mandatory); procedures must be fair and equitable; can’t be unnecessarily complicated or slow.  Art. 43: Have to present reasonably available evidence to support claims.  So agencies/enforcers look for some easy to process form of evidence—and that’s formalities.  Thinks you can’t comply w/TRIPs w/o some sort of formalities. But doing it through trade law is a bad way.  High-cost way for users; high-cost for finding authors.  Benefits of formalities are unavailable at the exact time they’d be most beneficial—before suit. Then resurrected at enforcement, when most costly for authors/users.
At the end of the day, shouldn’t tiptoe around Berne. If we think formalities are problematic, global enforcement makes them even more so. Need notice’s benefits w/o defects—nothing wrong w/asking authorial class to play a role in ensuring that © system serves its functions.
Jane Ginsburg: Original Berne convention cut back significantly on formalities; situation before was that, to the extent that one country would protect the author from another, it may have been necessary to first publish in that country, conform to its formalities; generally it didn’t work. Initially it was sufficient to comply w/country of origin’s formalities, but that proved too difficult in practice.
Finds reading of TRIPs problematic: incorporates and makes enforceable Berne norms apart from moral rights.  Yes, you still have to prove your claims, but that’s not a reintroduction of mandatory formalities.  As to notice being good, yes it is, but what are the consequences if one doesn’t provide it?  Berne’s art. 6bis on moral rights provides for attribution—right to claim authorship.
Ginsburg on Dinwoodie: difficulty of ascertaining scope of TM through notice comes down to the two things Dinwoodie identifies: consumer perception and the dynamism thereof. Could you make notice track scope? Maybe a strictly enforced rule of speciality: the only rights you have are the goods/services listed in the registration. That wouldn’t work b/c it would destroy dilution (so sad!) but also b/c it doesn’t map onto reality, which results in the EU situation, where you have TM rights + lots of pressure on domestic unfair competition regimes to absorb the shock to the protection of consumers that would be the consequence of a system in which the registration corresponded to the scope of the TM.
Lydia Loren: © papers have unintended consequences as their themes—unintended consequence of requiring notice, then of eliminating notice.  Given the return of the repressed formalities, © owners should want more transparency about what the formality requirements are.  Reform of int’l agreements?  Any chance of that?  [That’s why they want the mythical Copyright Hub/celestial jukebox]
Okediji: when you speak w/authors in developing countries—they are working w/out registration and judges are saying ‘how do I know you’re the author?’  They want documents.  So to avoid the requirements of Berne, they’re showing up in regulations—that you only hear about when you file a complaint.  One country formed a collective society; had to create a registry just for the purposes of the lawsuit.  Striking disparity of regimes—South Africa differs from Zambia differs from Brazil. So a US author wanting to assert a claim in these countries will face the same situation she did 100 years ago.  That’s worse than a minimal notice requirement in int’l law. We can avoid problems of overenforcement, but the notice requirement is back at the most inopportune time.
Ginsburg: Berne has an answer for foreign authors. Countries demanding registration is contrary to art. 15.  Shall, in the absence of proof to contrary, be regarded as author and entitled to institution of proceedings if name appears on work in traditional manner.
Okediji: but if your name isn’t on it, then what?  People are downloading; they circulate without info.  One case where three people each claim to be the author.  The courts are entirely focused on enforcement—they just want to make the system work.  One country asked for access to the US CO’s registry; that won’t help.
TJ Chiang: What do you mean by formality?  To have standing in court, you need to produce an instrument?  Or, to file a claim, you need to comply with FRCP?  Okediji seems to treat those as formalities, though he wouldn’t have traditionally thought of them as Berne formalities.
Okediji: To the extent that courts/admin tribunals are asking for proof of ownership, that goes too far and is clearly a formality. 
Gordon: TM is a notice regime for the physical world: consumers see identical machines, pills—only the TM tells them which of these surfaces can be relied on to come from a reputable maker. TM helps markets in physical goods work.
TM has expanded well beyond this notice function, borrowing legitimacy in areas where lawsuits bring dubious advantage.  Does this interfere w/classic function of TM to specify origin of makers.
Dinwoodie: answer may be different in Europe/US. There are different forms of dilution.  Blurring is potentially on the edges of the same justification, esp. in Europe where we have a narrower conception of confusion. Tarnishment is doing something very different.  No need for it in the US. 
RT: Beebe said notice might be one of the main policy levers by which TM policy can inform consumer understanding. Say more?
Dinwoodie: might depend how high in the hierarchy of values you think notice comes in TM.  Maybe it’s very low.
Beebe: §2 could be a place where we do a lot of our policy work.  Through the registration standards, we allow certain conduct to occur or not in the market; consumers then adjust their expectations through that. Our registration doctrine affects firm conduct which then affects consumer protection.
Dinwoodie: Maybe think of the potential issue of running that to §43(a)—do you need to preempt causes of action that rely on unregistrable marks.
Bone: Firms strategically respond to consumers; consumers in a certain sense act strategically, or at least responsively, by appropriating marks. What we miss in proactive/reactive is that we live in between those two. Commercial reality is the product of all those interactions.
For Litman: You’re saying the doctrine favors the ©/owner over the public, but © was a statutory exception to the common law.
Litman: the public’s not there. The court has the parties before it. Once courts upheld the ©, courts imposed all sorts of conditions on the publisher to exercise its rights for the benefit of the author; that then died out in the 1920s when they forgot why they were giving rights to the publisher.
Bone: strict compliance requirements had something to do with the deviation from the common law.

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