Showing posts with label patent. Show all posts
Showing posts with label patent. Show all posts

Wednesday, July 02, 2014

AU Gender/IP call for papers

The Women and the Law Program
and the Program on Information Justice & Intellectual Property
 American University Washington College of Law 

Call for Papers: Eleventh Annual IP/Gender Symposium
Save the Date: Friday February 27, 2015

This year, we will engage in a broad discussion of “Reimagining IP/Gender: The Next Ten Years of Feminist Engagement with Intellectual Property Law.” The symposium will take place in Washington, DC on Friday, February 27, 2015.

Rather than focus discussion on particular cultural practice, such as the creation and dissemination of fan fiction or the stewardship of traditional knowledge, this year, we seek papers and projects that address the full spectrum of feminist/queer theory and all aspects of intellectual property and information law. We encourage submissions from scholars, creators and activists who have not yet engaged with intellectual property law to explore how this legal space might open up new insights regarding the production of knowledge, commodification, definition and valuation of women’s work, and other areas of feminist and queer inquiry. We also hope to spur intellectual property scholars to explore how the tools of deliberately intersectional feminist and queer theory can shed new light on the challenge of creating intellectual property law that fosters social justice. 

Accepted papers will be considered for publication in the American University Journal of Gender, Social Policy, and the Law in a special symposium volume. 

Additional information, including some possible topics, can be found at: 

We are interested in projects that relate to specific case studies, as well as more synthetic studies of these topics. We also welcome projects that include performance and demonstrations in connection with specific projects or overall themes. Please visit for a complete list of past presentations. Proposals from all disciplines, including law, women’s studies, queer studies, education, communication, cultural anthropology, development, medicine, sociology, and the arts are not only welcome, but encouraged. 

If you are interested in taking part, please submit a 250-500 word prĂ©cis of your project, with some indication of where your work on it stands, as well as a current C.V., by Sunday, July 27, 2014, using this submission form. We will notify you of whether we will include your proposal in the program no later than Friday, August 8, 2014.

Wednesday, March 12, 2014

unjust enrichment claim preempted once patent claim fails

Medisim Ltd. v. BestMed LLC, 959 F. Supp. 2d 396 (S.D.N.Y. 2013)

Previous opinions in this case between thermometer competitors, mostly addressing trademark issues now out of the case (I skipped the patent parts).  After a jury trial, the jury awarded Medisim $1.2 million for willful patent infringement, $2.29 million for unjust enrichment, and found that BestMed infringed the copyright in Medisim’s instructions for use. The court invalidated the patent for anticipation, and also reversed the unjust enrichment award, but granted equitable relief on the copyright claim.

Unjust enrichment: this claim survived originally because the Lanham Act didn’t preempt state law claims of unjust enrichment, but the claim was “vaguely pleaded, and fell in the interstices of its claims for patent infringement, copyright infringement, unfair competition (state and federal), false advertising (state and federal), and Deceptive Acts and Practices.”  Most of these other claims were dismissed on summary judgment, and the claim for copyright damages was dismissed before the case was submitted to the jury.  The jury was charged with deciding whether “BestMed has been unjustly enriched by obtaining profits from the sale of its thermometers”; it found against Medisim on the state unfair competition claim, which overlapped significantly with the unjust enrichment claim.

Given all this, there wasn’t record evidence to support the award of damages, especially since some of BestMed’s sales occurred during an agreement between the parties, waiving a claim for unjust enrichment.  In light of the patent’s invalidity and the verdict of no unfair competition, an unjust enrichment claim couldn’t arise out of sales of the accused products after the parties’ agreement expired. “Now that Medisim’s attempt to gain a monopoly through the patent law has proved unavailing, it cannot argue that it should nevertheless receive the same protection through the state law of unjust enrichment. A quasi-contract granting Medisim patent-like protection over its invalidated patent would usurp the federal patent law, and for this reason, the jury’s verdict on unjust enrichment must be overturned.”

Plus, even if the patent were valid, the damages would have to go, “because there was no evidence to support a finding that BestMed received an incremental benefit over that compensable by the patent laws.”  Medisim didn’t present evidence of a difference, but argued that BestMed obtained an incremental benefit by misappropriating goodwill and confidential knowhow, but it didn’t have any evidence of that post-agreement.

However, Medisim was entitled to an injunction for disposal of BestMed’s copyright-infringing indstructions.  Under 17 USC § 503(b), a court may order destruction or disposition of infringing copies. Since Medisim lacked a legal remedy for its copyright claim, equitable relief was its sole remedy; BestMed didn’t contest Medisim’s right to equitable relief. 

Tuesday, March 11, 2014

IP in the UK

Sir Robin Jacob, Daniel Alexander QC, and Matthew Fisher, Guidebook to Intellectual Property (6th ed.): With dry humor, this book surveys British IP law for nonlawyers/business student types.  I’m not in a position to comment too much on substance.  In any event, the book repeatedly takes the position that when IP rights are at issue it’s often better to settle/go away than to fight even if the claimed right is of dubious validity, which is a position to which I am constitutionally opposed although I understand its practicalities (until you find out that there are no names left available for your business, anyway …).  According to the authors, limits on damages in UK law somewhat mitigate this risk, but this conclusion on patents is typical: “The great majority of patents go through their lives in peace, with nobody really convinced they are valid, but nobody prepared to take the risk of infringing them. Commercially they are just as useful as if they had been valid. Thus, even an invalid patent is often valuable enough to make it worthwhile keeping on bluffing until the bitter end. And there is a lot of truth in the old adage ‘a weak patent in strong hands is worth more than a strong patent in weak hands.’”  Gotta love a good chiasmus.

I appreciated the grace notes of the writing.  “Almost unbelievably, there are now two sorts of unregistered design right …. Unbelievably (again!) there are two sorts of registered design ….”  As for the moral right of paternity, “it may be thought that this is a physiologically and psychologically implausible term, as well as being sexist. Indeed, this is so.”  The following trenchant observations aren’t specific to UK/EU law: “as is coming to be more usual in IP legislation, the draftsman has been careful not to use words that mean anything very definite, either to a lawyer or to anyone else.”  And as for private drafters, “[i]t should in particular be assumed that any agreement drawn up by business people will prove difficult for lawyers (including judges) to sort out; for lawyers and business people have quite different ideas both as to the way they use language and as to the sort of things that agreements ought to provide for.”  Truer words indeed.

Saturday, February 08, 2014

WIPIP: IP theory

Session 4: IP Theory, Parlor B

Annemarie Bridy, Internet Payment Blockades

Wikileaks: State Department publicly accused Wikileaks of violating US law; payment systems were suspended—PayPal, Visa, Mastercard.  Wikileaks ran through cash reserves in less than a year and suspended publication.  Cost Wikileaks 95% of expected revenue stream. 

Targets of multilateral payment blockades show power of intermediaries—Assange evaded the US, but Wikileaks wasn’t so lucky, within reach of corporate actors eager to appease the US.  Online payment blockades as means of regulating illicit conduct: also copyright infringement/counterfeit goods.

Payment intermediaries, search engines and ad networks are second-degree intermediaries, without direct knowledge of or control over what sellers sell or users share, unlike lockers. Has insulated them from secondary liability under © and TM law—Perfect 10 v. Visa.  No direct connection to primary infringement, so no contributory infringement; no ability to control, so no vicarious infringement. Kozinski’s sharp dissent: payment is necessary or pirates won’t deliver booty.

UIGEA: gambling law established precedent for regulating online conduct through payment intermediaries.  COICA of 2010 died quietly, but SOPA died a noisier death; both had provisions requiring payment intermediaries to dump sites/ISPs to block sites dedicated to theft of US property.  Result: industry code of best practices, one for payment processors and one for rights owners.  Self-regulation under threat.  Dedicated to © infringement and sales of counterfeit goods.  Right owner requests investigation of website; triggers payment processor investigation; burden on website to show it’s an authorized seller/distributor; if no proof, processor demands C&D; if not, suspends or terminates payments to merchants by US account holders; merchant can seek “prompt review” but processor is path of appeal. Rightsholders agree to operate in good faith on accuracy/completeness; respond promptly to processors’ requests for more information; use standard form, “RogueBlock” portal; use standard codes for unauthorized downloads, streaming, distribution of circumvention devices, counterfeits; concurrent notification to all processors; baseline training on how to detect counterfeit/infringing goods.

Normative concerns: the usual ones in privately ordered enforcement: is there fair process? Are lawful speech and conduct adequately protected? Should we be concerned about lack of oversight and public accountability?  (No, no, yes.) Given these shortcomings, do they at least work?  (No, because Bitcoin.)

Q: Seems like the more these methods are used, the less they’ll work.  Unblockable methods will develop.  (Though not superefficient.)  If only used against Wikileaks, circumvention won’t develop. But lots of people want to gamble online, that incentivizes development of easy evasion. Economies of scale.

A: agrees.  Whack-a-mole.  Route around obstacles. Cryptocurrency is an example.

Q: would some of these mechanisms exist without gov’t pressure?

A: yes, but there’s a spectrum of governance, from command and control to self-regulation; interested in this form of hybrid, where the gov’t doesn’t direct an industry to adopt practices that will then become law, which is coregulation; at least there’s more transparency in that situation. With this coerced self-regulation, it has the effect of public law without any of the transparency/protection/accountability. Gov’t pressure makes it particularly nefarious, though it would be concerning anyway.

Sapna Kumar: gov’t surveillance and ISPs—the rise of ISPs that post statements that they haven’t been compromised, or noisily closing up shop. Why haven’t we seen those types of operators in the transaction space?

A: you see it in search, where Google discloses DMCA blocks. Maybe not here because it doesn’t affect users directly. We don’t know how many transactions are being blocked.

Andrew Gilden, Stanford Law School (fellow)

Raw Materials in Intellectual Property

Concept of raw materials in recent © and RoP cases, where courts increasingly find fair use/1A protection depending on whether D uses P’s likeness/work as “raw material” for future authorship. What does that actually mean?  Is this a useful means of drawing lines? Real problems.

Rhetoric is trying to capture a certain creative/artistic/expressive process working with materials at hand, but as a decisionmaking tool it inevitably introduces hierarchies and preconceptions about what’s legitimate and illegitimate.

Free culture speaks about creative works as raw material for cultural participation.  Lockean scholars warn of dangers of overpropertizing raw materials, interfering with others’ ability to benefit. Increasingly doing doctrinal work—Campbell, then Blanch v. Koons—Supreme Court didn’t quote Leval’s use of “raw materials,” but subsequent courts, esp. in 2d Circuit, did.  Cariou v. Prince.  Seltzer v. Green Day.  By contrast, cases like Morris v. Young, court finds not raw material because D’s use involves marginal artistic innovation for putting Sex Pistols image in red; likewise not in Morris v. Guetta.

In RoP cases, raw material rhetoric is even more pronounced.  Comedy III: raw material v. very sum and substance of the work in question. 

Winners seem to be big names; young/established artists seem to lose, or when they’re pulling from established artists like Salinger or Jerry Seinfeld—not considered raw material.

Thinks this inheres in the metaphor itself, which tries to get at individualistic artistic process. Raw is a relational concept that’s produced at the same time as “cooked.”  Higher, better state—as applied to human beings, raises serious questions, which also are raised here.

Maybe with innovation this makes more sense—iron ore is raw material for steel.  IP policy/free speech shouldn’t be making these distinctions.  We’re increasingly mandating this raw/cooked distinction, formalistic.  Winter RoP case says it’s straightforward, but it’s not, without background views on what constitutes legit art.

What to do?  Nip this in the bud. Speak about cultural resources, inspiration without importing concepts of good/bad art.

Jake Linford: doesn’t think raw material is about judging value of P’s work, but rather about going back to productive use/dissent in Sony.  Seems to be doing the same work. 

A: trying to get at productive use, but in the raw materials framework you need to be able to see these works in a raw v. cooked framework, you need to see the first work as raw materials.  Move away from intent to formal relationship, but raw/cooked doesn’t do that right.

McKenna: is your real complaint about transformativeness/evaluation of legitimacy of D’s work by asking what it’s done to existing work.  Raw materials is byproduct of transformativeness system. Does raw materials do something independent?

A: gets at real problem with transformativeness as principled way of deciding fair use.

RT: (1) Ironically perhaps, purpose transformativeness (Perfect 10, Google Books, iParadigms, etc.) doesn’t seem to have this problem!  (2) be explicit about race/gender!  Not accidental which depictions get deemed raw v. cooked, though not entirely determinative.  Can do an almost perfect sort on your examples, sorting them into P win/D win categories, based whether they depict a female or black body.

A: what does it mean to think about someone as raw, not a fully cooked human being—may eliminate some amount of empathy (a particular problem in RoP cases).  Even if it doesn’t matter in end result, it matters in rhetoric. On purpose transformativeness, may be protecting them for different reasons—innovation v. expression, with different problems of aesthetic judgment.

Ochoa: these cases do have result oriented problems.  Can we do better if we get rid of the raw materials label?

A: he thinks a change in perspective may help given that he doesn’t think courts are doing this intentionally.

Joe Miller, University of Georgia Law School

Error Costs & Functionality Exclusions

Different kinds of IP have different functionality exclusions.  Some have posited: Should be making them more like one another.

Should spend more on avoiding errors as cost of error grows.  What’s the error/the primary principle to be protected? Utility patent law supremacy: one and only one way in our economy to get a right against a use as a use in the world, regardless of independent creation. That’s utility patent, and it has certain screens and is time-limited.  Without it, that use is available to the public. The error to be feared: giving utility patent rights in disguise.  That can occur if (1) protection is on a par with, though not identical to, utility patent protection; and (2) that form of protection can be received without rigors and limits of utility patents—without utility, nonobviousness, time limit.

If that’s the error, can we look at functionality exclusions and see if we get more spending when cost gets bigger? Design patent = lowest cost, and is the functionality test with the lightest touch: if utility dictates design, design patent not available. Copyright is in the middle, more searching: useful article doctrine.  If utility materially influences the design, not ©-eligible, per Brandir.  Product design trade dress: the worst error by far, and has the most searching functionality test: if it affects performance/consumer demand for feature, not eligible for TM.  These are protections on a par with utility patent protection.

Error cost analysis helps us think more clearly about other parts of IP law, such as why there isn’t a functionality exclusion for trade secret? Because it’s not worth it, given the weakness of the right, per Kewanee Oil. Plant patents have no functionality exclusion, but again it’s not worth the cost; independent creation is a complete defense.  VHDPA: in © statute, but has design patent rule for functionality, because it’s more like a design patent (nonobviousness, novelty screens, short term).

Design patent is threat level 1; © is threat level 2, even though protection is not as close to par with utilitarian patent as design patent is.  In useful articles, © liability approaches utility patent liability.  TM is threat level 3: lasts forever, no novelty screen, acquired distinctiveness can easily be shown if successful, and confusion will also be easy to show with same product/same consumers.  Courts should not borrow, and should spend more on precaution when the error is the worst.

McKenna: threat level seriousness doesn’t mean they aren’t all threat level 3: they could all be level 3 with TM the worst. Doesn’t necessarily tell us how searching we want inquiry to be at any given level. Maybe design patent should be where TM is now and TM should be absolute.  If you differentiate and rank order, you need really strong sense that getting into one system kicks you out of the other. If you can use design patent to get secondary meaning, then get TM protection for that, you should have a hard edge on the channel into that path.

A: He’s just doing an ordinal ranking.  If the problem is a collapse of meaning, then disaggregating is an important step. Right level of each takes more work.

Separating these 3 types of exclusion makes design patent more attractive for someone in doubt about using TM/©.  Should lead to free for all after design patent expires.

Buccafusco: how do we account for false positives here?

A: easiest in trade dress.  If you’re excluding something as functional that isn’t, it creates consumer confusion, but happily in trade dress there are other source identifying mechanisms available to producers, such as word marks.  Copyright is harder—not as clear what person should do.

Rosenblatt: doesn’t speak to ease of getting protection—design patent is slow to get.  What do we tell people who don’t want to go through onerous exam procedure (ok, not onerous, but they think it is).

A: design patents shoot out of the office like greased pigs. If you can’t get one, you need to find another line of work.

Rosenblatt: but still, shouldn’t we be talking not just about not borrowing doctrines but also about optimizing examination doctrines?

A: yes, because it emphasizes that design patent can have the lightest touch.

Calboli: UK abandoned channeling (more than 50 copies of article applied industrially, you couldn’t have copyright); some common law countries still distinguish between registered design and copyright (you have to pick), though they don’t channel passing off. 

A: inspiration was a class in comparative IP. Second project: go back and look at EU.

Andres Sawicki, University of Miami School of Law

Risky IP

Risk takers are thought to benefit us all—Jack Kerouac, Wright Brothers—so why do we assume risk aversion in IP law?  Why should we care about artists’/innovators’ responses to risk? 

IP rights operate on the assumption that creative people will be rewarded, but you only find out later what the reward is—a risky reward mechanism. Could have prizes, grants, subsidies, salaries.  So we should understand how people respond to that.  Also want to know whether various limiting doctrines are too risky to work in practice: fair use, equivalents in patent law. Those arguments depend on an assumption that artists/innovators are risk averse.

What do we know about the creative personality?  Studies measure creative ability and other personality characteristics.  Message that comes through: people with high creativity tend to be more comfortable than general population in risky situations.  But the literature does struggle with defining creativity, and the measuring instruments are imprecise.  We see some correlations with risk taking on subscales of creativity, but some other subscales show an inverse relationship with risk taking/tolerance.

Economic literature: risk aversion comes from there. What do economists have to say? Evidence is mixed—the Innovation Lottery.

One issue: creativity isn’t the only determinant of the stuff we get.  Creativity is part of ability to invent, but so is persistence, hard work, cooperation, maybe empathy, intelligence.  Law might want to respond to all of those.

Most challenging part is definitional.  What is risk? There’s risk associated with a defined chance, uncertainty where the outcomes aren’t defined, then the creativity literature with a looser definition, then an economic/legal question.  Law may have more uncertainty (difficulty assigning probabilities) than risk.

Buccafusco: risks aren’t equal—gain isn’t loss. So how do you decide whether some behavior that might infringe but might make money is framed as a gain or a loss? Need to choose a decision rather than trying to characterize all decisions.  Also, it’s not just risk preferences, but risk perception—we tell people the odds of winning in our experiments, and they still think they’re going to win. They’re not risk seeking, they just think they’ll win.  (Could one characterize overconfidence as an underlying preference for risk, if the person has experience that should’ve disabused her of her overconfidence?)

A: framing is super important. Has to deal with prospect theory at some point.  Optimism bias is prevalent in highly creative people. One response: take advantage of that!  Another: feel bad for them!

Said: what about the intermediaries?

A: yes, our IP system is really designed for distributors, financiers, etc. One implication is: our system is nominally supposed to motivate creators. Insofar as their risk preferences diverge from those of their backers, and the system supports the financiers, that could be a problem.  You can’t conflate them.

Victoria Schwartz: are artistic risks correlated with financial risks?  Do we want artistic risks? Do we want to distinguish between successful creative people and unsuccessful ones, as we do in the corporate literature?

A: May find that people take artistic risks and not risks with their bank accounts—some of the creativity literature tests this.  People who chose financial risks were more creative (with small financial risk, anyway).  Risk preference might not be linear—optimal level of risk—some evidence for this too—creative people like 1/3 risk, which gives them sense of control, responsibility, agency.  Too much risk turns into roll of dice.

Q: often find that institutional actors are the most risk-averse, though they often face the least risk. Lemley on ignoring patents: Silicon Valley people who don’t care unless/until they get sued, treat it as cost of doing business.

A: that’s a big motive for his project—the cost of doing business people.

WIPIP: First Amendment

Session 2: First Amendment

T.J. Chiang, George Mason University

Patents and the First Amendment

Patents on methods of communication: why isn’t this a 1A problem?  Similar to ©: can prevent other people from saying what they want to say, how they want to say it.  Eldred solution doesn’t seem persuasive: patent at the Founders’ time was nothing like this.

Printed matter: point of novelty can’t lie in printed matter, but that doesn’t really apply to the situation here (where the patent is on method of sending an advocacy message).  This isn’t content neutral because it’s a patent on a method of sending an advocacy message, not just anything.

Strict scrutiny doesn’t fit well with patents.  Would ideas of fair use, more robust printed matter doctrine, more robust abstract idea doctrine help? SCt after Bilski says it’s no longer in common law mode of making things up, but a theory with a foundation in existing doctrines might help.

Betsy Rosenblatt: different points in system to address this.  The advocacy patent: enforcement will necessarily impinge on core speech. That might best be addressed at patentability stage. What if you took the word “advocacy” out of that claim, this would be less disturbing, but maybe more abstract.  May need to address at the infringement level.

Chiang: content restrictions only end up in patents because the patentee puts them there but doesn’t really need them.  If the facial restriction allows you to enforce just against people you don’t like, that creates 1A problems. 

Q: many speech technologies are patentable—the printing press when invented, for example. The telephone. What distinguishes them?

A: not much.  Bell’s telephone claims didn’t discriminate based on content, but covered useful speech.

Edward Lee, IIT Chicago-Kent College of Law

The Freedom of the Internet

A form of popular constitutionalism: people defending/defining the internet freedoms they believe in.

Some core concepts of free speech map easily onto core 1A—no government censorship.  But questions of privacy don’t.  Also, internet governance. SOPA/PIPA protests were able to use core expectation to defend decentralized governance.  Privacy/NSA: seen much slower reaction because US doesn’t have coherent constitutional history for privacy compared to EU.

Movement’s claims aren’t all legal: political, technological. Might have to go to sui generis principles, or statutory reform to protect internet interests. 

Reasons for optimism about getting principles into positive law, but also barriers.  Obstacles include: public attention span/keeping people involved; defense is easier to mobilize than offense; rights sought are greater than classic free speech leading to mapping difficulties; different cultures/laws mean piecemeal progress; IP intersections create difficulties—once we hit balancing of interests, that’s difficult to get a determinate answer from (also true with privacy, nat’l security). Even strong pro-freedom organization proposed that copyright shouldn’t “disproportionately” interfere with freedom. 

RT: US does have history of intellectual privacy in constitutional law—NAACP, membership privacy, professors, etc.

A: yes, but it’s not as coherent.

Q: are these all equal priorities?  Equality, open architecture/internet governance, free speech, personal data, and due process are all under his sketch of “free and open internet,” but people might endorse one more than others (and related subconcepts).

A: his sense is that activists often have all these on their wishlists.

Rosenblatt: the diversity of views as a barrier to consensus.  SOPA/PIPA protests centered around the idea of fighting centralized governance, but others called it decentralized governance in that the law would give ISPs the power to control so much—delegating governance to the ISPs, even if the ISPs didn’t want it. (May depend on what you mean by governance.)

Glynn Lunney, Tulane University Law School

The Right of Publicity and the First Amendment: A Fundamental Re-Examination

1A seems like a convenient savior from overbroad IP. Turning to 1A may further expand the IP rights we seek to contract, though.

The 1A isn’t appropriate here—doesn’t get the right outcomes, draws weird lines. Means we don’t think enough about what the appropriate boundaries of the right of publicity ought to be in the first place.  Also has the effect of drawing a line in the sand; but the RoP then crowds up to the line, expands until it hits that line.

Not clear why courts are better at identifying the sorts of speech that are more fulfilling to us as individuals.  Could live with that.  But then there’s Comedy III.  Transformativeness is not a 1A value at all: there’s no 1A value in saying “hell no, we won’t go” in a different way than the protester next to me.  The line makes no sense, can’t be sensibly applied, idiosyncratic, involves lots of aesthetic choices; thought that Saderup was transformative and Tiger Woods wasn’t.  Then there’s the Electronic Arts cases, 2-1 votes finding nontransformativeness.  Then CBC case: running a fantasy baseball league is a core 1A value?  Is that really persuasive?

Zacchini: Justice White’s opinion is a straightforward definition of the right: televising the entire act would destroy its value (though he includes a footnote saying that it might not; but the only remedy that Z would have under state law was damages, and if he can’t prove them he gets nothing, so that’s a case for the RoP).  Compared to EA with realistic avatars—here’s a market, where injunctive relief is an issue, and where you need permission from 1000s of athletes or you can’t create the product you’re trying to create.  For CBC, better to argue that there should be competition in provisioning fantasy baseball instead of allowing MLB to control monopoly.  1A is a diversion from whether it makes sense to have the RoP cover certain uses.

Finally, drawing a line leads to expanding the RoP.  Copyright: Baker v. Selden—risk of saying that ideas are free is that all expression becomes property; market failures are fair use flips to no fair use where market exists.

Mark McKenna: Transformativeness makes some sense in © because you can think coherently about what it means to transform the subject of the work. But that doesn’t make sense with an identity.  If an identity is transformed, there’s no violation of the right, since the right is in the identity. 

A: agrees.

McKenna: how would courts make the decision about whether a use should be monopolized? The RoP confers a monopoly by definition.

A: fair q, but we haven’t developed that vocabulary.

Fromer: how much does this depend on RoP remaining mostly court made?  Legislatures may embrace robust definitions.

A: well, that’s Lochner.  So we tolerate when they get it wrong. 

Welkowitz: that gets sticky when you have forum-shopping (e.g., Indiana with its wide jurisdiction and 100 years, Tennessee with its perpetual protection).  This may explain why the 1A is attractive: it’s a national standard.

A: does the 1A give you uniformity?  9th Circuit deferred to the Cal. appellate courts on scope of transformativeness.  Of course it’s right that legislatures are predictably wrong in certain areas, even economic regulation, but RoP is not unique in that regard.  Maybe choice of law matters.

RT: NB: my husband agrees that the Saderup Three Stooges are transformative: heroic presentation. Almost all 1st A Ps will look petty; that hasn’t been much of a barrier. 

Generally: I am a fan of this argument about risks of going to the 1A/the value of pure copying.  But I think the RoP absolutely unconstitutional as applied to noncommercial speech, and unconstitutional applied to nondeceptive advertising.  So I would say that done right the 1A gives the right answers; somehow the California Supreme Court has gotten to say what the boundaries of the federal 1A are, and that’s the problem.

A: relying on the 1A distracts us from developing the doctrine within itself. (RT: but I think that’s like saying that we should be focusing on the internal limits of seditious libel—we don’t need to do that if the 1A bars enough.)

Amanda Reid, Florida Coastal School of Law

Copyright Capture: The Power of Music and the First Amendment to Set it Free

Incumbent forces have captured copyright doctrine, so the courts are the bulwark to protect us. Music is “making other people’s speeches.”  Music is a compelling case for using expression, not just ideas.  Benefits to individual: literature on value of music to help with pain management, healing, autistic children, drug abuse relapse prevention.  Music triggers the pleasure centers of the brain. Encourages empathy, creativity, nonviolence, cross-cultural education.  Protests, political change.  Music is core political and social speech.

But music today is locked up by conglomerates.  Congress is captured. The copyright ratchet is in full force.  Though the public interest is hard to define, we can at least identify sick processes/policies.  Court defers too much.  In light of capture, and in light of the value of music, the Court should engage in more searching review.  A checking function.

Unconstitutional limits: the sound recording performance complement, and the other regulations on what internet broadcasters can play. 

Definitional balancing: whether value of music outweighs gov’t interest in regulating speech.  Companies are paid royalties; broadcasters want to use actual expression; the traditional contours of copyright have been altered.

Q: is music that special?  With internet broadcasting, the argument becomes more clear, but why isn’t this argument more general?

A: because the rules are special for internet broadcasters.

Andrew Gilden: why doesn’t fair use cover the political uses and special cases?

A: the webcasting limits are additional to that, and the webcasters are paying for their uses.

Kristellia Garcia: concerned about harm.  But would this speech that you’re talking about be behind the walls? Protest songs etc. are more open.

A: but now is locked up.

Q: but many folk songs are on smaller labels.  Rhetorically: the categorization of special interests is difficult. One person’s special interest is another’s livelihood.  There are diverse viewpoints, as exemplified by this group.  (And our large corporate donations.)

Q: why isn’t antitrust a better way to go?

A: that would be a good idea/different paper.

Chien: why focus on the SCt?

A: more opportunity to move 6 people.

Rosenblatt: Is all music the same?  Music industry has captured some of the music distribution process, but copyright forbearance may end up being a big part of the way music gets used as core speech.

Rebecca Tushnet, Georgetown University Law Center

Stolen Valor and Stolen Luxury: Free Speech and Exclusivity

Warning: it’s now 3 pm to me and I still haven’t had any Diet Coke.  Started with

Breyer: “Those [other] prohibitions, however, tend to be narrower than the statute before us, in that they limit the scope of their application, sometimes by requiring proof of specific harm to identifiable victims; sometimes by specifying that the lies be made in contexts in which a tangible harm to others is especially likely to occur; and sometimes by limiting the prohibited lies to those that are particularly likely to produce harm.” Fraud statutes are an example of the first category, requiring proof of materiality, reliance, and injury. But all the interesting work happens in the second and third, where legislators decide that categories of misrepresentations, or specific contexts, make harm particularly likely.

In a footnote, the dissent made a very important point: there is a potentially big difference, for First Amendment purposes, between “each case must show individualized harm” and “the legislature can reasonably decide that a situation poses so much risk of harm that it may be banned or criminalized.”  The Court’s skepticism of blanket legislative determinations of risk ultimately produced the “clear and present danger” standard for antigovernment speech, rather than the earlier “bad tendency” test that allowed the state to punish all antigovernment speech.  But most courts still presume harm in dilution and post-sale confusion cases without any showing of actual, present harm—indeed, the standard is explicitly only that confusion or dilution must be “likely.”  The presumption that any kind of confusion or mental association is likely to cause a trademark owner harm drives many decisions.  Other speech regulations require more.  An individualized proof requirement can substantially constrain the scope of a law, and even deter unmeritorious and speech-chilling suits. 

My argument about TM law, including dilution, has two parts: (1) certain kinds of harm are not constitutionally cognizable.  Harm to reputation caused by nonfactual, nonfalsifiable speech shouldn’t be actionable—that’s the lesson of NYT v. Sullivan and Falwell v. Hustler.  (2) Even if we believe that dilution and post sale confusion can cause economic harm and that should be actionable, such harm, along with harm caused by deception is too easily presumed in TM cases.

The black-letter doctrine has long been that actual harm from confusion is so hard to show that it can simply be presumed for purposes of granting injunctive relief.   Courts rarely explore the alternative hypothesis: maybe harm is often hard to show in noncounterfeiting cases because harm is uncommon. 

As Laura Heymann noted, decisionmakers who think of reputation as something with commercial value can easily translate that belief into findings of likely harm, even without a sound factual basis.   Decisionmakers may worry that other people are more easily swayed by negative, nonfactual messages than they themselves would be, increasing a bias towards finding harm.   These problems fit into a larger literature about cognitive bias: people who dislike something are likely to consider it harmful. This poses a significant challenge for First Amendment doctrines that allow regulation when speech causes tangible harm, but disallow it when speech only causes offense.  Unpopular speech, including copying that smacks of free riding, will readily be deemed harmful.

Trademark’s property rhetoric helps insulate it from the otherwise antiregulatory thrust of modern Supreme Court jurisprudence.  To the hierarchical individualists who dominate there, free riding for profit will appear more harmful than buying politicians for profit: one is use of legitimately obtained power (hierarchy) and one is illegitimate use of another’s reputation (defying hierarchy).  In the case treated as completely sensible by every opinion in Alvarez, the Court found the Amateur Sports Act’s prohibitions on unauthorized uses of the Olympic marks to be a reasonable way to protect the USOC’s “legitimate property right.”   The Court held that Congress could reasonably have determined that an explicit likelihood of confusion requirement is unnecessary because most commercial uses of the Olympic marks are likely to be confusing or at least to harm the distinctiveness of the marks (that is, to dilute them).   It did not examine the evidence Congress had used to conclude that these were real problems. 

When the supposed property rights of a respected institution are not implicated by a government regulation, by contrast, the Court is likely to scrutinize the evidentiary record with greater care.  Alvarez is but one example.  In Brown v. Entertainment Merchants Association, the Court was much more skeptical about the link between violent video games and increased aggression in minors, despite dozens of studies supporting a link.   Likewise, the Court demanded much more in the way of proof of a connection between speech and harm when striking down a ban on “virtual” child pornography.   The common-sense claim that sexual images of unreal children will lead viewers to act against real children seems no more tenuous than the claim that a local business’s use of “Victor’s Little Secret” could someday lead to fewer purchases from Victoria’s Secret, especially since the latter is explicitly framed as a mere likelihood of dilution and dilution’s harm is always posited to occur sometime in the future.

Judges’ preconceptions about harm are likely to present great barriers to change, unless and until advocates can retell the stories of infringement and dilution and show how they are more like claims to avoid offense than they are like claims to avoid injury from defamation.

Recent developments after eBay hold out some hope for more serious interrogation of trademark’s harm stories.  In 2013, the Ninth Circuit held that “cursory and conclusory” invocations of irreparable harm, not based in any specific evidence before a court, would be insufficient to justify an injunction.  Further, “citation to a different case with a different record does not meet the standard of showing ‘likely’ irreparable harm.”   Applying this case, a district court then rejected the argument that confusion about plaintiffs’ responsibility for the defendant’s product could harm the plaintiffs’ reputations when defendant delivered a shoddy product.  Although this “lost control over reputation” theory has long been accepted by courts as a reason that consumer confusion is always harmful, the district court pointed out a logical and factual gap: plaintiffs didn’t provide any evidence of shoddy manufacturing, making their theory of irreparable harm “purely speculative.”   While presented as a matter of equitable principles, this demand for an individualized, evidence-based showing of harm can also be speech-protective.

The challenge is now to go beyond that inquiry, which is limited to the injunctive relief aspect of a case, and look at TM harm more generally.

Gilden: eBay insulates harm from the doctrine itself.  Is the proposal to have a more robust 1A defense?

Lunney: do we need to push back given difficulty of getting damages? If we have eBay working.

Ochoa: how much attributable to likelihood language in statute?

Calboli: harm to legit interest of proprietor is the int’l standard.

Said: actual malice as a limiting standard?

RT: difficulty is actual malice about what?  The Rolling Stone tobacco case shows the difficulty if the actual malice isn’t malice about whether some fact is true, which is a comparator in the world we have.  Actual malice about whether something’s an ad or is free riding different?

McKenna: either Congress can decide wholesale on one extreme or you have to do it retail. Likelihood language is challenging.  Middle: congress doesn’t get to decide it’s harmful generally, but a court has to find that this kind of confusion, if happening, is likely to cause harm.

Chiang: how does Alvarez fit into this? What if Alvarez is wrong, and dilution is also ok?

Rosenblatt: Many times Congress decides something is harmful when it might not be. Patent infringement too.  (eBay is not a constitutional standard.)  We don’t want TM to be one of those situations.

RT: and now we’re back to Lochner & footnote 4.

Q: how do you think of dilution’s history? Cts were skeptical at first.

Wednesday, January 22, 2014

Innovation and inequality

Matt Yglesias in Slate suggests that, if only the top 1% has disposable income, innovation will be very different from innovation in a more egalitarian state, and the only way for a mass market product to succeed will be for it to be free/ad-supported.  (He also discusses the emphasis on branding/exclusivity of the expensive products made for the 1%.)  A useful reminder that IP's standard monetary incentives story requires someone to pay; rights in themselves have no economic value.

Monday, December 16, 2013

plaintiff not enough of a competitor to win false marking claim

Sukumar v. Nautilus, Inc., No. 7:11–cv–00218, 2013 WL 6408351 (W.D. Va. Dec. 6, 2013)

Previous discussion.  The court goes through a lot of facts and effort here to confirm that the AIA made false marking claims essentially impossible to win, and I’m not so sure about that adverb.  Sukumar sued Nautilus for false marking of certain exercise machines, and, even despite the court’s ruling that some false marking occurred, the court found that he hadn’t shown enough evidence of “competitive injury,” as required under the AIA.  Coordinate state law claims also failed for lack of evidence of proximate causation.

Sukumar founded plaintiff Southern California Stroke Rehabilitation Associates (SCSRA) with the intention of opening stroke rehabilitation centers.  Based on his experience with his elderly father’s illnesses, he made strength training equipment a central part of his plan. He believed Nautilus machines would need to be modified to serve the senior fitness and rehab market, and developed concepts for such machines.  As part of his research, he bought a number of different exercise machines from Nautilus and others.  In the course of his investigations, he was told several times by Nautilus employees or representatives that Nautilus machines were patented and that Nautilus vigorously protects the machines from patent infringement.  The Nautilus machines also contained patent labels.  “[A]t least some of the patent labels on the machines were false, in that they listed patents that did not apply to that particular machine.”

Sukumar also ordered a number of customized Nautilus machines, but was dissatisfied with the delivered machines and sued the distributor for breach of contract and Nautilus for inducing breach.  He lost those claims.

He testified that he wanted to enter direct competition with Nautilus, but because of the patent statements, he thought he needed a license.  He twice sought a license from Nautilus to modify the machines, at least once in the context of a settlement discussion.  He argued that, had he known those machines were not patented, he would have built his own machines for sale and thus competed directly with Nautilus. However, his testimony was contradicted by terms in the settlement letter, in which he claimed he wanted to license Nautilus technology solely for use in SCSRA centers; at his deposition, he testified that he only formed the intent to make and sell customized machines in early 2012.

Although Sukumar claimed to have been working on his designs since the late 1990s, he and SCRSA are not presently Nautilus competitors.  SCSRA has no other employees; they haven’t created or opened any senior spa centers or stroke rehabilitation centers; they haven’t sold any modified Nautilus equipment or machines of his own design; they hold no patents on fitness equipment; SCRSA has yet to show a profit in any year; and Sukumar’s patient protocol isn’t written, but kept in his mind.  In rebuttal, plaintiffs emphasized their efforts since the early 2012 decision that the machines were falsely marked.  They retained an expert on the senior fitness market and worked to develop a business plan and retain other industry professionals; they were working with a design house and manufacturers to develop prototypes; and they were working to buy land for a manufacturing facility. Thus, they argued, were it not for the false patent labels, they could and would have engaged in such efforts previously.

Plaintiffs’ injuries, they argued, were delay in entry into the fitness equipment market; unnecessary expenses in attempting to license or purchase Nautilus patents/assets and those of another manufacturer; unnecessary expenses in analyzing the validity and enforceability of the falsely marked patents; and unnecessary expenses in storing machines they acquired.

None of this was sufficient.  The AIA requires “competitive injury,” in order to eliminate abusive qui tam actions.  Although plaintiffs relied on the idea that they were competitively injured when they were impeded in their efforts to enter the market and incurred unnecessary costs, citing Forest Group. Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), that case has been superseded by the AIA, and in any event involved parties who were concededly competitors.

“Indeed, some of the precise harms that Plaintiffs claim here, e.g ., unnecessary investment in design around costs, or costs incurred to analyze the validity or enforceability of patents, are described in [another case] as hurting ‘a member of the public [who] desir[es] to participate in the market for the marked article.’ Those harms would not be competitive injuries, therefore, but instead harms suffered by the general public.”  Forest Group didn’t identify the harm of dissuading potential competitors as competitive injury.  The case law to date was ambiguous about potential competitors; analogies to the Lanham Act were also not dispositive.  The court declined to make a blanket ruling on potential competitors. Instead, it held that no reasonable jury could conclude that these plaintiffs suffered a competitive injury.

Assuming that prevention of entry into the market is actionable, “it must mean that the entity was capable or able to compete (or actively trying to do so), but that the false marking impeded those efforts in some concrete way. A competitor must do more than show it had a desire to compete, and that it did not attempt to compete out of a fear of infringing another’s patent.” But that’s all that plaintiffs here could show. “It simply defies common sense to conclude that, for more than ten years, Plaintiffs have not entered the market to compete with Nautilus and that the sole item holding them back was their fear of infringing patents that were falsely listed on the accused machines’ patent labels.”  Plus, a subjective fear of infringing was insufficient to establish competitive injury, because that standard would allow lots of plaintiffs to sue.  Notably, the Federal Circuit has rejected subjective fear of infringement as sufficient injury to convey standing to challenge a patent. 

Sukumar might well have great ideas, and since 2012 he might have begun in earnest trying to make them reality. “But concerted efforts after a lawsuit is filed or a partial decision rendered is not proof a jury can rely on to determine that the reason those efforts were not taken sooner was because of false patent labels.” This was especially true because he repeatedly blamed other, non-false marking actions by Nautilus for years of delay in his business objectives.  His sincere belief didn’t substitute for evidence that “if not for Nautilus’s false marking of its machines, the road to Plaintiffs’ development of competing machines and rehabilitation or spa centers would have been swift and easy and that SCSRA would be competing with Nautilus today.”

In addition, there was insufficient evidence that plaintiffs ever intended to compete with Nautilus in the relevant market—making and selling exercise equipment—before the lawsuit, as opposed to using machines in his own facilities.  In fact, plaintiffs’ changing plans further showed that they weren’t sufficiently established as a business to suffer competitive injury.

The other claimed damages were also insufficient.  Any claimed overpayment for machines based on the false marking, even if it occurred, was injury as a consumer, not competitive injury.  As for the unnecessary expenses in analyzing/attempting to license the patents, etc., they weren’t competitive injuries for the same reasons: “Plaintiffs are neither competitors nor sufficiently close to competing to state a valid claim for ‘competitive injury.’”  Plus, the licensing attempts were part of an effort to settle pending litigation, unrelated to false marking.  There was also no evidence that storage fees and legal fees incurred in analyzing the patents’ validity were caused by the false marking; Sukumar had previously blamed other causes, such as Nautilus’s breach of contract or warranty, on the claimed storage fees.  

Nor is work performed to determine the validity of Nautilus patents inherently a competitive injury, but rather a “generic” type of harm.  Also, the fees weren’t unnecessary because they were the basis for the lawsuit, but attorneys’ fees aren’t recoverable in a California consumer protection claim, so to allow them to count under the AIA would be an unacceptable end-run.  (Comment: what?  That makes no sense to me; the AIA is not a coordinate federal law to the general California consumer protection law, and anyway the feds are entitled to decide what counts as injury to a federal right.)

In any event, the harms alleged were simply too speculative for a jury to find them to have been caused by the false labels.

The state law claims under California and Washington law also failed, even though they didn’t require competitive injury: they required damages caused by the mismarking, and evidence of causation was absent.

Friday, November 08, 2013

Law in an Age of Disruptive Technology, Georgetown Law Journal Symposium

3D Printing 

Moderated by Rebecca Tushnet • Georgetown University Law Center

Deven R. Desai & Gerard N. Magliocca, Patents, Meet Napster:  3D Printing and the Digitization of Things

Deven Desai is a law professor at the Thomas Jefferson School of Law and just completed serving as the first Academic Research Counsel at Google, Inc. Gerard N. Magliocca, Professor of Law & Associate Dean for Research  at Indiana University School of Law.

Desai: Digitization: business and legal change together = disruption.  Already happened with copyright—moving into other areas.  Different possible futures: working with change or replaying the copyright wars.  Three levels of manufacturing: home, start-up, large factory.  Freedom to make anything you want at all those levels—at home, already using 3D printing to play with toys. But Mattel may not be thrilled when people reconfigure Barbie.  Rapid prototyping for startups: excess talent/crowdsourcing used to make/improve a car design. At the high end, GE Aviation bought a 3D printing company to make precision parts for jet engines.

Current setup is for tinkerers—open source, user friendly (for certain values of “users”) and prices are coming down fast.  Revolutionary products have a growth phase: if this is like early computers/early web, it’s tipping to where ordinary people can use it. $3500 printers; Staples has an intro one for $1200.  There was a moment when you’d run to Kinkos to print—UPS has a pilot program for 3D printers on the same model.

Lego spoon designed to connect with real Legos; auto parts; etc.  But there are plenty of hiccups both practical and legal. Designs copied may be covered by copyright or patent; designs could eventually be made at full scale.  Could even print food!  Or guns, as others have noted.  Guns are regulated in various ways—including by patent.  Current printed gun doesn’t last very long.  But it will keep improving.  That’s the challenge.

Magliocca: Patents: there will be a lot more infringement, particularly by homes/small businesses, when 3D printing rises. What should Congress do? Go down the copyright road, trying to shore up patent protection by increasing penalties for infringement/new causes of action/new remedies. This is probably what many in patent industries will lobby for. It was futile then and futile now, which doesn’t mean it won’t happen.  Congress could also do nothing, which would be better but still leaves luckless individuals sued for patent infringement, made examples of.  Chilling effect/unfair in light of overall nonenforcement.  Congress could also create an exemption for things that are printed by 3D printers for personal use.  An exemption could be substantive, or procedural (bar remedies against individuals).

DMCA notice and takedown: defense to intermediaries that take certain actions in response to complaints.  That would help address the home infringer as well. Also possibly an experimental use exception, though it’s construed too narrowly to help almost anyone now: Fed. Cir. could revise its interpretation (or be instructed to do so).

That’s patent, but copyright is also implicated: you can make your own Harry Potter figurine. That’s not as dramatic given what we’ve already seen with copyright, mp3s and such.  But software copyrights used to make 3D printed objects are a potential issue.  Originality as an issue?   Is there merger between the idea of making an Easter Island head and what the program does (making an Easter Island head)?  People have very strong reactions to this question of merger.  Copyright doctrines may need to change.

Also, briefly, trade dress will also increase in infringement as people can make Coke bottles at home: implications for value of trade dress as marketing tool.  If people see bad-looking versions, do they attribute that to the brand (post-sale confusion)?  In a world of 3D printing, seeing something in someone’s house may not trigger any thought that it is attributable to the original TM owner.

Comments: Michael A. Carrier, Distinguished Professor, Rutgers School of Law

Innovation needs attention, not just “piracy.”  What does the law do facing new technology? His empirical survey of CEOs/VPs in music industry provides lessons for innovation in 3D.

Innovator’s dilemma: large well established companies are likely to pursue sustaining innovation—incremental improvements, tweaking the status quo and appealing to existing customers with short-term payoffs. Not interested in destructive innovation, radical breakthroughs that upset existing business models. Upstarts do that.  Music labels were victim of innovator’s dilemma—considered digital to be a passing fancy; focused on short term—executives worried about bonuses; 5 years from retirement and didn’t want to rock the boat.  Similar concerns: established companies have the most to lose from 3D.

Sky is falling: every time we see a new tech, it’s the end of the world as we know it.  Sheet music publishers hated player pianos. John Philip Sousa feared deterioration in American music from player piano; Jack Valenti of MPAA said the VCR was the Boston Strangler.  These were mistakes.  But new tech taking direct aim at existing business model provokes fear.  Maybe some fears are legit with guns, but expect the sky is falling narrative no matter what.

Napster as service: litigation empirically stifled innovation, caused venture capital to dry up. Napster allowed trading individual songs, which we now take for granted. That was no sure thing in 1998.  Executives: admitted they padded albums; Napster brought about a new way of consuming music that broke open the record label model, forcing them to embrace a new type of presentation to the public.  There are new possibilities 3D printing can bring about that could revolutionize consumption.

User innovation: Eric von Hippel has emphasized that users innovate in ways that contrast with manufacturers—users customize to their needs/desires; many manufacturer innovations fail, so coming from the users can be very valuable/exciting.  Rich literature there on which to draw.

Amateurs: last 15 years have shown that amateurs can do a lot they couldn’t do before at every stage of the creative process. Creation: GarageBand and iMovie.  Selection: no longer limited to music label’s A&R.  Still a role for that, but also for bottom-up.  Production and dissemination, likewise.

Why does innovation get lost by the wayside?  Innovation asymmetry: infringing uses are definable/threatening, take direct aim at copyright owners. Noninfringing uses are less tangible, not advanced by army of advocates, less obvious at onset of technology.  History of inventors who didn’t know how their products would be used: Alex. Graham Bell thought the phone would be used to broadcast news; Edison thought phonographs would record deathbed thoughts; railroads were supposed to serve canals; IBM thought there was a market for 10-15 computers. 

Lesson: Congress should stay out of the way; courts should err on side of allowing uses rather than trying to stamp out every instance of infringement, which won’t work anyway.

Michael Weinberg, Vice President, Public Knowledge,

3D printing takes people away from computer screens and back into the real world. Internet has trained a lot of people in how to think about IP. 20-30 years ago most people didn’t think about IP at all; then computers/internet happened and IP became more salient. The thing that will be striking in the physical world is that the world is full of things that have no owner, aren’t protected by IP.  Many things are, but the ratio is different.  For a lot of people, that takes a major readjustment of your worldview.  There are things that are freely copiable/integrable into another project.

When people realize that, many things happen. The free universal construction kit: designed to interconnect many toys, from Legos to Lincoln Logs.  Patented at one point, but patents expire.  Make 7/8 boxes of toys into one big box.  Why not?

Old sculptures in the public domain: they may feel more new/relevant than old books in the public domain—sculptures from 500 years ago do not date in the way that paintings and songs have.  The public domain of physical things feels different.  Metro. Museum of Art is scanning its collection, and people can mash it up: put your face on a sculpture. Slow process of realizing, not in a super activist way, that we can re/create culture. Innovation will be unanticipated.

Internet copyright conversation largely started from the assumption that the things at issue were protected by copyright.  Went to fair use, etc., but fundamental protectability was basically assumed from the start. 3D printing is different: we need to back up a step and ask about protectability.

Tushnet: I was struck by the paper’s descriptive claims: “Today, if you buy a doll, a Lego set, or a car, the ability to alter, tinker, or improve your purchase is low. 3D printing, however, opens the door to personal improvement. You still buy the doll or dollhouse; but once a child is bored, 3D printing allows you to design and create new heads, limbs, or furniture.”  I’d suggest more focus on affordances and how technology changes the salience and visibility of options: resculpting Barbie was always possible; you could always chop the doll’s hair off, make her new clothes, or even melt her limbs in the toaster; you could always build dollhouse furniture; we (lawyers) just didn’t notice it or think it was important for the law to grapple with the possibility. Same as fan fiction, fan art, Batman in the backyard.  (Mike Carrier: some amateurs made remix video throughout much of the 20th century. We just didn’t know about it until the internet hit.)

Authors and commenters suggest that there’s a lot of untapped desire for customization:  the paper uses the example of sales of soda mixers.  Suggested explanation: people have different flavor preferences, and thus customization is of value to them.  My suggestion: this account may be enriched by a more social explanation—consider the history of cake mixes, where mixes without eggs sold well not just because they produced better cakes but also because they satisfied a need in some bakers to participate in the process.  Laura Shapiro, Something from the Oven: Reinventing Dinner in 1950s America.  What box cake makers did was convince women that the key participatory moment came with decorating the cake, customizing it, personalizing it.  3D printers, to the extent they catch on, may succeed not just by satisfying preferences but by creating and shaping preferences for how one’s possessions are configured.

Related: the descriptive claim is that consumer can now decide what Lego looks like: the related question will be what kind of licenses will be available.  Rather than just licensing their own files, I expect copyright and trademark owners will wish to get control of files created by others, using their claimed rights as leverage to do so.  Compare Amazon Kindle Worlds: an attempt to move noncommercial production into the commercial world through licensing—no consistently and overtly asserted oversight of the actual production, but attempts to collect money at the point of distribution (which could be, here, the distribution of designs). 

Also, authors note that consumers may seek more assurance that they’re getting the “real” thing, whatever that means, and not something printed out at home by the seller.  Consider then the potential of ID numbers and objects that phone home not (solely) to control the purchaser in the seller-purchaser dyad, but to authenticate the purchaser to third parties.  We are status-seeking animals; people may be willing to surrender personal information if it means that their friends can verify that their Gucci is real by scanning the QR code.

As for proposed DMCA analogue for 3D printing patent/TM claims: Not so sure that authors are right that the DMCA notice and takedown scheme is agreed to be working “reasonably well”; there are plenty of howls about it, which is part of how we got SOPA/PIPA and the content industries are not done yet.

Desai: DMCA is problematic, but what are the alternatives?

Carrier: notice and takedown is a lot better than the possible alternatives.  It at least is geared to the specific copyrighted work at issue, with a process available for dispute. Going beyond to places like SOPA/PIPA and TPP where we’re willing to punish any tech that enables/facilitates infringements or aids and abets liability (TPP). That can take down just about everything without much notice.

Weinberg: is printing practicing the patent?  Even if so, it’s not infringement to host the description of practicing the patent.  Liability should not necessarily be assumed.

Carrier: music file is instantaneous, but here there is more work involved in actual printing. Extra friction slows things down compared to music files.

Magliocca: at what point does the scale become so great that action is reqiured. You could make your own gun at home now with the know-how, but not that many people do.  (Weinberg: more people do it with lathes & milling than you think.  One feature of these debates is that you discover many many communities of practice doing stuff already—the ATF even has a regulatory framework; it was a solved policy problem in many ways.)  Ok, not enough people do to trigger a general regulatory response.

You can make a Coke label with a color copier.  It’s not a difference in kind, but a difference in degree.

RT: this gets to licensing as a solution: if you make universal licensing possible, then the content owner can say that no legal reform is necessary; if you don’t have a license, your website should shut down.

Desai: note that even streaming is a possibility: licensors could stream files to printers and contractually bar copying/alteration.

Weinberg: music licensing people react to the idea that people won’t need licenses for 3D printing by saying “look, we’ll license everything—we’ll put a package together.”

Desai: we are trying to create spaces where individuals are protected.  Thingiverse and Makerbot have weird notice and takedown policies—trying to act in good faith but not get crushed. Clearer statement/legal recognition.  If the VCR has substantial noninfringing uses, so do these.

Audience Q: shift in copyright from possession to use. People don’t care as much about owning tracks if they can always listen to it.  Is that transferable to 3D printing, which is at its core is about possession?

Carrier: Music is different because of the repeated play.

Weinberg: Ownership and control of physical object in way you don’t have with iTunes track. Reverse engineering is becoming increasingly simple. So even if you can’t hack the stream, you could copy the object. How effective is the license then?

RT: People rent cars and houses.  Why not watches?

Weinberg: why would the owner ever come after you at the end?

RT: well, enforcement ability changes—could bar you from selling on eBay.  Sometimes the claims made—we’ll protect individuals but discipline institutions—seem to work against the alleged transformative potential of the technology itself.

Q: what about a private use exception?  If yard sales won’t ever be covered, is there extra value?

Magliocca: it could be mostly symbolic: showing that this is okay.  Copyright litigation against individuals didn’t seem to do much in the end, though innovation was inhibited in terms of investment/risk averse entities.  Could be fighting some chilling effect. For those unlucky few who are found out, could change things.  The remedies are pretty severe here.

Carrier: the remedy is a central part. Copyright’s statutory damages are a really big deal. 

Weinberg: legitimizing the market: selling to individuals becomes possible. 

RT: notice that one of the paper’s proposals wouldn’t do that by barring individual liability but still allowing them to infringe.

Q: what about protecting creators? The panel seems in agreement, but many people aren’t interested in innovating, they just want to copy.

Weinberg: creators do already have rights in the present system. They can be enforced now. The lesson of the last two decades is that you can sue particularly bad actors, but your best solution is to make access to legitimate works really simple.  There is a role for infringement lawsuits, but economically the better way to use your resources to police your rights and maximize your revenue is to think about distributing as easily as possible.

Carrier: scale.  If your sculpture is copied by one person at home, that’s a very different effect than someone copying it to sell on the market.  Innovation is the best way to deal with infringement; if you made a better product, people wouldn’t be interested in the pirate copy.  People want relationships with artists.

Magliocca: 3D printers are not replicators. They have limits on size, materials, and skill. They will continue to improve, but there’s a way to go. There’s always a war within consumers between desire for customization/free stuff and their laziness. Download from the company’s website is simpler than having to find it somewhere else and risk the file being wonky.  Authenticity (whatever that means) means something to many people.

Q: people printing toys that aren’t safe for children/could have hazardous parts or materials. Innovation may be wonderful, but what do we do with that kind of shifting of risk/liability?

Magliocca: product liability for homemade/manufactured goods—at one level, there ought to be no difference if a defectively designed product injures someone. But should homemade toys come with warnings? We expect more of commercial manufacturers.  Exposing more people, including children, to risk.  There may be visible examples where things go wrong—need to look both at designs and materials.

Desai: Etsy—people have come to understand that handcrafts are different than mass-produced items.  Laziness factor—where brands/TMs come into it. Mattel might change its business, so it can supply materials as well as designs, and provide security in that way.

Carrier: deal with it ex post rather than possibility of harm. Find the market failure and deal with it then, otherwise we’ll never know what we’re missing.

Weinberg: Nora Engstrom of Stanford wrote a great paper on these issues.