IPSC Breakout Session 5, IP, Politics & Identity

Intellectual Property and Political Identity, Barbara Lauriat

IP features some strange bedfellows, going back as early as we can find about patent & ©. Project: a book on Intellectual Property & Victorian Inquiry, examining Royal Commissions on Patent & Copyright. Reform and even abolition were debated. Both Whigs and Tories struggled to fit IP into their political identities—not just ideologies but how they saw themselves.

Communism/socialism: Focus on the role of public interest and underlying communitarian principles. Limiting © to lifetime of author was communitarian. Also focused on personal nature of the labor—so socialists could say that the work of the mind was different. But Herbert Spencer made the same argument from completely opposite political beliefs.

John Stuart Mill changed his views over time a bit. Started out very pro-patent as an exception to anti-monopoly, but in his discussion of communism he carved out invention as a potential area where invention would still happen b/c it’s a naturally agreeable thing to do. Cut from the next edition of Principles of Political Economy, though.

Suffrage was also connected to property ownership. Largely uneducated mechanic could become a voter through invention. So wide availability of patents could be seen as democratizing, and Dickens distinguished support for patenting from support for Chartism.

IP and free trade was also part of the discussion.

Lessons: don’t assume the audience agrees on the fundamentals. Adapt arguments for different audiences. People did change their minds when arguments appealed to their political identities (forget about political theory). Free traders who opposed patents suggested rewards/prizes; this seemed to involve more gov’t regulation and so practical arguments pushed that faction into further & further extreme positions that eventually failed.

Christian Nationalism and IP, Lucas Osborn

Definition: a political ideology that seeks to entangle Christianity with political life. Heavy version: Being a Christian is very important to being truly American; it is very important that the US president be Christian; the Bible should have at least some influence over US law; and when the Bible conflicts with the will of the people, the Bible should have more influence. Only about 3% of Pew respondents endorsed all 4 propositions. Lighter version: about ½ of Americans say laws should be influenced by Christian morals.

What would this mean for IP? Depends on the kind of Xianity. Looked at Biblical principles important in theories of property.

Imago Dei: Genesis—“let us make man in our image, after our likeness.” G-d is a creator, so that’s an area of overlap. Dominion mandate: humans have dominion over all the earth. Caretakers/stewards of creation in ways different from other animals.

Private property: Exodus: thou shalt not steal. Dominion mandate is consonant w/private ownership. Property rights viewed as necessary for human flourishing and social stability—humans are bad and selfish, so private property provides a structure to control our worst natures. The Bible supports giving people the fruits of their labor, whether wages or property rights.

Examples: start from that foundation and yet come to pretty different conclusions. Ruth Okediji: Is the Public Domain Just? v. James Edwards: To Invent Is Divine.

Okediji: private property is in tension w/, though not irreconcilable with, stewardship. Need conception of what it means to be human to shape sustainable conditions for flourishing life. Edwards: mass flourishing coincides w/private property rights.

IP Rights: Okediji says that optimal production of knowledge goods is important, but so is optimal consumption. Stewardship includes private rights and service to others. Edwards: private ownership is what you need—leaves service to others outside bounds of legal duties.

Okediji: need ongoing assessment of IP law, including traditional knowledge. Edwards: Founders were right, should broaden patentable subject matter, make injunctions easier to grant, affirm that patents are private property, not government grants.

Takeaway: Xianity doesn’t get you to a 20-year patent term or automatic injunctions, so be careful. What would Xian IP look like? You can imagine limiting © protections for obscene, pornographic, and potentially blasphemous content, though they also profess respect for the First Amendment. False witness: you could imagine strengthening attribution rights.

Patents: reintroduce/strengthen moral limits on patents.

Fred Yen: creators/inventors have unpaid debts to inventors/creators before them. What does that mean for their rights going forward?

Rosenblatt: were our laws written by Xian nationalists to start? [Or deists?] Tam & Brunetti seem to move away from this. In modern rhetoric, Xian nationalism isn’t just the Xian part but also the nationalist part/white nationalist. National treatment seems vulnerable; internationalism does seem vulnerable too. [which would also have implications for traditional knowledge] Do you care about theology or Xian nationalism?

RT: I don’t see why these are Xian instead of moral views w/Xian characteristics and I say that advisedly b/c China does all these things (limits patents on moral grounds, bars obscenity/sexual material, etc.). We can plug in lots of moral frameworks to these propositions. Compare Pope’s recent pronouncements which do seem to make claims about what Xianity requires in substantive output.

Zahr Said: how much work is G-d doing in this project? Versus self-regarding system imposing majority’s views. Musk’s tech libertarianism is another possible comparator.

Q: human chimeras/patents on parts of humans—what perspective?

Q: could argue that injunctions should not be allowed b/c you’re not an owner but a vessel for G-d’s creation and thus shouldn’t control.

Trans Patents, Andrew Gilden (with Sarah R. Wasserman Rajec)

Inventions that cover gender-affirming care or other inventions with potential for trans people. Patent texts can be archival—how tech is viewed then; as speculative visions for culture; as strategic parts of sales/FDA approval pitches; and as political—vehicles for shifting social norms around taboo topics, such as patents for recreational cannabis granted long before many states legalized.

Political backlash against trans people has often focused on denying them technology, so patents are relevant. Patents using terms that expressly recognize trans people and sex/gender reassignment: 372 granted patents, 3 in 1980s, 4, in 1990s, 7, in 2000s, 112 in 2010s, and 246 since then. Even though trans people and trans-affirming care have been around for a while. Primary focus on trans population: 21; intended users 196; remainder otherwise incidental/cited. Topics: Hormone therapy, phalloplasty, vaginoplasty, breast augmentation, breast concealment, genital concealment, clothing, sexual devices, other health/pharma, AI, and data processing.

Trans people often presented as one of many populations who benefit from claimed invention—methods for treating excess androgen skin changes can help w/PCOS, etc. Or “there are many reasons that people bind their breasts.”

Patentees rely on studies focused on trans people/bodies. Even if trans people aren’t disclosed as target population, trans/cis medicine are inextricable from each other.

Some patentees emphasize uniqueness/unique needs of trans people, whether anatomical or social. Sets up claims limited to trans people as point of novelty. Also nods to consumerism—an underserved marketplace (e.g., genital concealing underwear for trans women; shopping recommendation system that imagines trans women looking for shoes).

So far, no noticeable drop in grants under Trump 2.0. But: FDA warning letters to chest binder retailers, distributors, and manufacturers. Some recipients of the letters had granted patents.

State and marketplace are vying for control over transgender existences. Control over gender expression: property rights can be tied to gender identity; infringement could require jury to find that user is a “trans male.” Disconnect b/t patenting and commercialization—patentees who offer various treatments to cisgender population but have patents for trans populations.

Patent activity maps poorly onto history of innovation in transgender medicine, but may reflect perceived social change or help measure cultural anxiety—patenting activity closely matches rise in mainstream awareness & fear/backlash. Rhetoric mirrors that in other areas of law & politics: opponents fear experimental/off label gender-affirming care; equal protection arguments about state denying trans people access to care available to everyone else; due process arguments about need for access to gender affirming care.

Said: what about coded references? E.g. medical codes can be changed by sympathetic doctors; there might not be explicit acknowledgement.

A: yes, we are tracking a bubbling to the surface.

Rothman: look for patents in the same spaces that don’t use the magic words.

A: Scandinavia would be a place to look there.

Rosenblatt: can this tell us anything about trans self-help and user innovation? Medicalization is partially good but also has big downsides.  

The Value and Values of Patent Ideology, Tejas Narechania

One view: there’s a perfect number of patents that’s just right. His view: there’s no pure vision of patent law. There are multitudes that are incommensurable, irreducible to utils; these are necessary and desirable outgrowth of living in a free & plural society.

Founders: innovation, national security, morality (or even natural rights), distributional concerns—all the policy considerations were there at the beginning.

The State Law of Federal Patent Enforcement, Paul R. Gugliuzza

State bad-faith statutes: motivated by mass demand letter campaigns by bottom feeder trolls against end users. Effect: reduce cost asymmetry b/t accused infringers and NPEs. Permit finding bad faith based on inadequate info, lack of investigation, false/misleading statements/ unreasonable deadlines/settlement demands; some laws apply only to suits against end users or by NPEs.

Key issues that have repeatedly arisen: who can sue and where? Personal jurisdiction via demand letters; federal subject matter jurisdiction over state-created claim? One of these cases has finally reached the Fed Cir. Should courts imply a private right of action where the state laws aren’t explicit? Otherwise it’s left to state AGs with resource & collective action constraints.

What conduct is regulated? Core version is bad faith assertion—but courts have disagreed over what constitutes an assertion or demand letter—analogy to declaratory judgment standing.

Courts also differ on what will ultimately establish bad faith—is including a claim chart evidence of good faith or should the court examine the claim chart for misleadingness/correctiness?

The preemption overlay: objective baselessness as a prerequisite, according to the Fed Cir. Bad faith is not enough if it’s just subjective and the underlying infringement theory was not objectively baseless. Resembles the Fed Cir’s tests for willful infringement and attorneys’ fees overturned by the Supreme Court, so should this test survive?

Remedies: actual damages from assertion, statutory damages, attorneys’ fees for the bad faith litigation (against anyone involved in the assertion), and bonds.

What about anti-abuse measures for assertion of the statutes used abusively? Reverse fee shifting. Doesn’t like categorical exemptions based on patent asserter identity. Geographic gaps—California and other states don’t have these.

IPSC Breakout Session 4, Design, Trademark & IP Boundaries

Backdoor Trade Dress, Rachael Dickson

Strange things are afoot at the PTO. Applications for line drawings of specific products. They are not configuration marks for the product design. They’re just design marks. In addition to the usual TM registration requirements, configuration marks raise two concerns—functionality and what level of distinctiveness is required. Product design requires acquired distinctiveness, and PTO usually requires significant evidence to allow a registration for product design, not relying on 5 years of exclusive use.

Some have received failure to function refusals: a drawing of ear loops: mark drawing is filed in form & style customary for configuration marks; consumers not used to it; also refused on 2(d) grounds b/c Loop has a registration for the configuration (as well as a design patent).

Backdoor trade dress risks skating past PTO w/o showing acquired distinctiveness or nonfunctionality; description doesn’t include limitations.

RA easily found 100 examples; estimate of 100s more. Common issues: descriptiveness, failure to function, 2(d) if the maker has a configuration mark. But also: regularly approved for publication/registration; found 39 already registered.

Overall, PTO doesn’t have a clear reason to refuse these types of applications. There’s no “we suspect you’re going to do sketchy things w/this” refusal.

Backdoor trade dress application types: (1) designs identical to at least 1 goods listed, (2) related to goods listed, (3) designs unrelated to goods listed. (1) should get a descriptiveness refusal. Lots of marks clearly taken from images online: app for projection screens taken from an Amazon product listing. Another with a toy caterpillar for children’s toys.

(2), e.g, a drawing of a nonstick pan for oven mitts. Lavalier mike for guitars.

(3) Water fountain for toys.

Why? Possibly takedowns. Reg (now cancelled) used to file infringement notice on Amazon against magnetic hooks sold by another party, Smukmagnet. Smukmagnet has a design patent though and so it filed a cancellation.

Manufacturers do think this is what’s happening: TTAB opposition on a soccer ball shaped light; another example of a design for a child’s tablet. Almost all the applications are from China. Amazon doesn’t do any scrutiny.

Can design marks be legitimate? Maybe, for identical/related designs. But is this a TM function instead of ornamentation or indicating what the product is?

Of course there are product design marks that sort of resemble other objects, the Taco Bell bell etc but those aren’t line drawings.

Problems: obtain trade dress style protections on online platforms w/o having to meet trade dress requirements; allows monopolization over functional elements or nonfunctional elements owned by others.

What next?

Mark McKenna: Is this an actual competitive problem? This depends on whether they’re being used to assert rights. What we know so far suggests this might be the tip of an iceberg. Also the gameability of the PTO process. Configuration mark-based 2(d) refusals is implicitly suggesting that design marks are enforceable against configuration marks and vice versa, which might be the wrong message: the drawing of the product shouldn’t cover the configuration of the product—but also vice versa! [Though the necessity of secondary meaning for the product configuration might provide an important constraint there.]

Sarah Burstein: can we make them disclose that they’re not configuration marks?

A: already a lot of boxes to check; some of the apps already say this is not a configuration mark. PTO doesn’t do much unless there’s 1000s of applications.

Jennifer Rothman: Is this a trade dress problem or a PTO registration problem? PTO registers many things that shouldn’t be registered. Why? B/c they have time constraints and an orientation to help applicants succeed (except for 2(d)). If there’s no opposition, it’s probably going to get registered even if it shouldn’t. That’s the bigger problem. AI may make it worse.

What do we mean by design marks? It’s always challenging b/c logos are design marks and trade dress is also design marks. So we need clearer definitions. [Design of versus design on?]

A: they’re trying but there are new schemes every couple of years or so. [This is what I plan to write about—the general implications of that cycling/whack-a-mole.]

Ramsey: this could be an opportunity to develop failure to function doctrine—there are expressive uses, decorative uses, and possibly puzzling uses like this!

Backdoor Copyright, Sarah Fackrell

SCt has worried about backdoor patents through © or TM. We should also be concerned about design patents used to get backdoor ©. The conventional wisdom is that copyright is stronger than design patent. © is instantaneous (design patent not); cheap (free/low v. five figures); term; broader. But the creativity threshold for design patent is lower, and there’s no separability doctrine. We’re seeing this especially in the area of graphical user interface designs. Many of these would be below-Feist designs.

USPTO has also engaged in expansion of subject matter. In 1996s PTO started accepting GUIs; 2006 started accepting animated GUIs; 2026 disembodied designs including projections, holograms, and virtual/augmented reality. Statutory text, what text?

Statutory text: “new, original, and ornamental design for an article of manufacture.” Not just a design: a design for an article of manufacture. The PTO doesn’t care. A projected keyboard, the PTO says, is a design for a computer b/c it is produced by a computer. Does not compute! Side note: it’s not clear that machines are articles of manufacture.

What’s going on? (1) avoiding limits on © and TM. Lawyers are very clear about this. Avoid fair use (though Egyptian Goddess constrains scope). (2) structural story: a small group of attorneys with interests. (3) harmonization claims—e.g., Singapore protecting designs for non-physical products. Those lawyers are lobbying lots of offices—once they got Singapore to act, they used it as a beachhead. (4) financial incentives—design patents make money for PTO/lawyers and securing © does not.

Who cares? Institutional issues! Hard to challenge this. First PI decision was 2024 even though 1996 introduced GUIs; competitors like Samsung won’t challenge b/c they want their own GUI design patents.

Constitutional issues: First Amendment; progress clause. Why isn’t a movie design patentable subject matter?

Doctrinal: simultaneous move to destroy Egyptian Goddess test which has kept the scope of design patents narrow. Patent owners arguing for substantial similarity instead.

There’s a history here—projected designs have existed for a long time.

RT: (1) You weren’t worried about avoiding fair use. But: Why isn’t your presentation infringing since it comes from a computer? (2) literature on this international phenomenon—arbitrage—w/© e.g. term extension. (3) Larger literature on tech bro fantasies of dematerialization of value?

A: there was an assertion of rights by the KKK in a design patent that shows the potential risks.

McKenna: claims of people being “left out” by the system—what’s the story they’re telling about the gap?

A: mostly they leave that out. She’s a thorn in their side b/c she keeps saying “why not assert ©?” The stories have changed b/c the early claims were “this is new and unprotected.” But it’s more now: these are designs, we should get design patents.

Ramsey: textualist moment bolsters your statutory argument.

A: in Samsung, the Court says “article of manufacture is anything made by hand or machine,” and that might be read to encompass projections.

Q: if designs are sub-Feist, how are they novel?

A: a whole paper on that!

Quantum Trademarking, Sayoko Blodgett-Ford

Uncertainty principle: it’s impossible to simultaneously know precisely both the legal boundaries of a TM and how such boundaries are changing. Entanglement: TMs that share at least one boundary area are connected/entangled. Doesn’t mean that they infringe. Axes include mark, goods, fonts, logo design, etc.

Superposition: TM boundaries occupy all and no available locations simultaneously and probabilistically. Collapse: TM boundaries are forced into a location in a specific legal context, at a particular time, by a particular observer. E.g., which designs were actually used in commerce by Apple computers? Apple Corps (Beatles music label) share boundaries, not just word mark but multicolor apple logo, and video laser discs featuring music share boundaries w/computers.

Fred Yen: is this an insight from quantum physics or a more general insight that measurement involves displacing an object in general? If we don’t carefully define the metaphor it may not be helpful. Related: when we use the word “measure”—the position of the TM does not exist prior to a declaration from a court—this measure can’t be taken w/o litigation. Entanglement—the problem of what happens as marks move towards each other “geographically.”

Jennifer Rothman: Do decisions actually fix position? Not sure there’s any location in most cases. There’s a dispute and there may be decisions that make it more likely the mark is “in” a particular location, but they don’t pinpoint the boundaries of the mark.

A: due to the uncertainty principle.

RT: consider the effects of registration v. litigation. Registration has different features that try to avoid some of these uncertainties, e.g. the word mark in standard character form that doesn’t care about font etc., the list of goods & services that don’t care about channels of trade, nationwide scope that doesn’t care about actual business.

Cumulative Marks, Jim Gibson (with Chris Cotropia)

Problematic marks often are not the first mark on the product/service; authorities aren’t often careful about the secondary meaning evidence. Timberland case is an example of doing it right in the US: these claimed features are not shown to have secondary meaning b/c they always travel with a better-known mark even if the evidence would otherwise suggest secondary meaning.

“Limping” marks in the US. But wants a doctrinal hook for looking at “cumulative” marks differently. Example: Hershey’s—able to enjoin Art Van, where the cumulative marks do all the work in stopping the use b/c there’s no use of Hershey’s. Many examples are product packaging/product design.

David Barnes in 2009 advocated 1 trademark per source. That’s pretty radical, but Dannon at one point had registered marks for Dannon, “live & active cultures,” “light & fit,” and “7 benefits” all on the same yogurt container, which is probably a bad idea. If there are already existing well-known marks for these brands, then the benefits to consumers are less weighty; just as we think you need evidence to show secondary meaning for descriptiveness but we presume it for arbitrary marks you might consider requiring more for secondary marks.

Most problematic: low marginal benefit, high cost to competitors: the configuration of the Hershey bar. Least problematic: high marginal benefit, low cost to competitors: Tapestry Collection by Hilton (helps you place the instance on the spectrum of Hilton quality). Tertium quid: some marginal benefit, some cost—the Nike swoosh versus the word mark Nike.

Could ratchet up renewal fees for overlapping claims. We could also adjust protection & enforcement side.

Ramsey: recent JDI decision in 9th Circuit shows potential: careful attention to what about the JDI trade dress was famous and only allowing dilution protection for that, not for “old No. 7” on its own.

IPSC Breakout Session 3 Trademark Confusion & Consumer Perception

Trademark Confusion as a Matter of Law, Andrew Michaels

Is infringement a proposition about the world, or about the law? Fact: an empirical predictive question about the world. Law: a normative judgment about whether there should be legal responsibility—is the confusion likely enough that we should find infringement? 2d/Minority view: Q of law based on underlying facts. 9th and majority view: Q of fact reviewed for clear error. 9th said that LOC decisions have “limited precedential value” b/c they stand on their own facts, reducing the need for de novo review. But that might be a reason to treat it as a Q of law to get more consistency and predictability. Issue of law would make it easier to decide on SJ/without trial, compared to claims that SJ should usually be avoided.

Judges and juries are thought to be good at different things. Jury: community; judge: compare with other cases/predictability allowing businesses to order their affairs more easily. Easier to decide on SJ: might help prevent bullying of parodists, other users.

Appellate v. trial court: underlying factors of intent, actual confusion might be better assessed by trial court; balancing/weighing of factors and legal comparison might be more suited for appellate court. Some factors may be more factual: evidence of actual confusion; intent (witness testimony/credibility). Similarity of marks should be legal because the jury has to ask “compared to what?” whereas the court can look at other cases. Same with products. Strength of mark conceptually should be Q of law; commercial strength is a matter of fact for witness testimony.

Lisa Ramsey: Matal v. Tam—constitutional issue exists, and LOC is a speech protective doctrine, implicating Bose. JDI even says that MTD can be ok because of contextual considerations. If it can be resolved on a MTD, it can be a Q of law.

RT: Bose v. Consumers Union on de novo review when the facts have constitutional significance. On the “compared to what” for similarity of marks/similarity of products? the theory is “similar enough that consumers are likely to confuse them.”

James Dabney: time was that likely confusion would be enough for an injunction, not damages or disgorgement; now things are different.

Google v. Oracle—is this legal or factual? Similar issue of mixed question of law & fact.

Q: right to jury trial?

A: could ask them questions about the factors; could ask for an advisory jury verdict, which they do a lot for patent obviousness/did with GvO. Multifactor=often an issue of law.

McKenna: LOC factors were made up; makes it feel more fact bound b/c courts think they have to walk through the factors even when they are ill-fitting. The legal standard is supposed to be: substantial number of reasonable consumers. Look at negligence where courts are more willing to grant SJ because they are more willing to consider what reasonableness is.

Factors and Fictions: The Empirical Collapse of the Likelihood-of-Confusion Test Across the Federal Courts, Thomas Reichert

Every circuit makes the same 4 commitments: (1) the test is flexible; bright lines misfire; (2) no factor is dispositive; (3) the set is open so you can bring in other considerations/add factors; (4) provides structure and allows appellate review. But: How often is this true?

Used an LLM to read every confusion opinion 1970-2025, temperature set low to inject less randomness, and ask whether the court considered a factor and how strongly it favored/disfavored confusion. The model is not trying to judge factor weight itself, just trying to identify what the court said about how the factor weighed. Around 11,000 opinions analyzed. Courts analyze 6.35 factors/case; only 40% consider them all.

Hand audited 1002 codings; 97% agreement on weight and 100% on direction.

The key factors: similarity of marks and proximity of goods/services. If both favor confusion, predict confusion; if both don’t, predict lack of confusion. Can predict 93.5% of every federal TM case. Consistent across circuits and time, though less in 8th circuit where the case count is small, and there’s a dip in the 90s (his hypothesis is domain names). The other factors operate as “structured overrides.” Defeaters are where both factors favor confusion but the court finds none. A lot of cases: no actual confusion, high buyer sophistication, good faith adoption, and weak mark strength. Substitutes: a predicate factor was weak/divided, but confusion found anyway: strong/famous mark; bad faith intent.

The test is already hierarchical. Courts should say so. Appellate practice wrongly rewards factor by factor mark. Could right size discovery/do less initial discovery. Tell juries the machinery: model jury instructions in 9th Circuit already tell juries what weighs more and we could do more.

Could apply the same questions to © fair use; sentencing.

Betsy Rosenblatt: has been done for © fair use—you may not want to reinvent the wheel. But one interesting thing about © fair use that might or might not match w/TM infringement is that how one comes out on transformativeness tends to predict how the case comes out. It doesn’t mean that transformativeness is the whole game; but it influences how the other factors work rather than rendering them unimportant. In general we may want those other factors to be doing more work than they’re doing, not less. You may have identified a problem rather than a solution. Should juries perhaps pay more attention to sophistication? Right now they don’t have a good definition.

Should parody be a special case b/c the factors work differently?

Q: Fed Cir has criticized TTAB for relying too much on similarity, so that result is pretty funny (the Fed Cir was most likely to rely on the 2).

McKenna: it’s not that the other factors just come out—the question of how much similarity there is b/t marks and goods are not found in nature. It’s not a © comparison. All the other information is just influencing the judgment about similarity. It’s context for which you understand levels of similarity, informed by all the other information. So sequencing discovery would be difficult b/c you’d be ruling out the contextual information you need to make judgments about similarity of marks and similarity of products.

A: we’re measuring the opinions, not the reasoning process.

McKenna: sure, but your prescriptions make assumptions about how the reasoning works.

A: Crowding in the market can definitely change similarity assessments.

Q: if courts were honest and said it’s a 2 element test, with a determination made through a bunch of subfactors, would that work better?

A: that’s the next paper. You can create a flowchart of how to do the analysis with substitutes/defeaters. You could do a burden shift! [Burden of production I assume, not burden of proof.]

Ramsey: dilution doesn’t consider relatedness of goods—does that matter?

A: didn’t look for any correlation w/dilution.

Ramsey: some courts say strength increases likely confusion, but academics and parody cases say that strength can decrease likely confusion b/c people know what the real thing looks like.

A: strength moves w/the verdict generally, but can substitute for proximity if the mark is very strong.

Ramsey: should separate out commercial & conceptual strength & see what happens.

Q: the other factors were originally not relevant to competing goods situations; practitioners got into the habit of applying Polaroid/etc. in all circumstances when it wasn’t needed in the direct competition cases. That would support the empirical observation that competition and similarity, the two pre-Polaroid metrics, were actually always the most important.  

21st Century Trademark Surveys, Rebecca Tushnet (with Chris Sprigman & Stephan Tontrup)

A statutory interpretation component: what do the terms in the statute like affiliation and connection actually mean? Weird that we don’t have much of an answer after 80 years, isn’t it? So we believe the definitions we are using are grounded in the proper legal meaning of affiliation et cetera.

The empirical part: we currently don’t tell survey respondents (or jurors) what “affiliation” etc. means and we also don’t have any good reason to think that they know what it means for legal purposes, which doesn’t include references—if you think of Sprite when you see Poppi Lemon-Lime, there can’t be deception about affiliation or connection because you really did think that, but a layperson could say “yes, there’s a connection”—the survey may not even be revealing mistakes of law, as Sotomayor et al have discussed with parodies, but mistakes about the meaning of the words used in the survey! So let’s try to fix that with a training module as in genericness surveys and see what happens. Including allowing a response “this is about the trademark/trademark owner.”

And implications for jury instructions: survey respondents and jurors are in the same position.

Larger questions: there are lots of areas where we want to know how some audience perceives communication: 1A compelled speech/will you be associated w/the statement; labor law: how employees perceive employer speech—we don’t ask the workers! True threats—hypothetical reasonable person.  But only in the Lanham Act do we actually use surveys! [Probabalistic—less than half can still be a large number of people for economically, socially, or politically significant messages. Why is probabilistic thinking persuasive in TM & not other areas? Plaintiffs’ bar? Courts willing to credit that “substantial numbers” matter even if not majority b/c they can imagine the harm to the substantial consumer mass/the consumer mass may not be imagined to share any other minoritarian identities (or may be imagined to need special protection—cite Ann Bartow on gender)? Possible lesser importance of public interest lets courts defer to surveys in TM and rely on policy preferences in 1A—though that lack of interest in reality on the ground is not necessarily good for 1A jurisprudence.

Rosenblatt: affiliation and approval are easy to get wrong; even experts get them wrong. Pattern jury instruction?

Q: we’re in the post literate era: disconnect b/t regular people and lawyers. If literacy rates are going down, we need to define terms for them.

Ramsey: courts focusing on text of statute: approval language concerns me. We don’t want people to be confused about permission. Don’t ask compound questions. “goes along with” is a bad definition too.

RT: approval and permission aren’t the same thing but this is where mistake of law comes in. There is an issue with repeating questions too—that’s more likely to get a “yes” somewhere in there.

Rothman: Working on project w/Joel Steckel—one of the things we worked w/was mini survey about meaning of these terms and people were using lay definitions. How should they be defined?

An Axe to Grind? The Legal History and Trademark Challenges of Guitars, Mark Blankenship

When does a guitar shape identify a type of guitar v. manufacturer? Sears Roebuck catalog is the precursor to Amazon and Temu, making gear affordable to players who didn’t live near a music store. Different claims over time—Japanese “knockoffs” that eventually resolved into new body shapes as well as some generic ones. Other issues: German court allowed © claim in guitar body shapes; separability would be an issue in the US unless the guitar also includes features like shark fins.

IPSC Breakout Session 2 Copyright Fixation & Subject Matter

Culture Isn’t Transitory: The Disappearance of Music and Film Under the Copyright Regime Amanda M. Whorton & David S. Levine

How could © improve cultural heritage preservation? Modestly change fixation to help archivists. We have only one video recording of jazz great Clifford Brown playing the trumpet b/c of serendipity—Soupy Sales decided to record the broadcast. An estimated 75% of silent era films are lost; 1927-1950 an estimated 50% are lost; many early news broadcasts, the first 10 years of the Tonight Show, first televised presidential address have been lost. Some of the losses are technological challenges/storage media degrading/format incompatibility. But some are attributed to taking fixation as a given. Cartoon Network said that 1.2 seconds wasn’t enough for fixation, but the boundary is unclear.

Proposal: Raise the standard to archival- or preservation-level fixation, closer to permanence, as far as is reasonable. A work must be able to survive past author’s wish to exploit it. Should require author to certify they’ve done so. Would not retroactively restore already-lost works. Better align fixation with Constitution: not just protecting market value, but collective cultural memory and heritage.

Q: why tie to fixation and not just require preservation as separate element?

A: theoretical link.

Q: the tech didn’t used to be valuable; why force people to preserve things that aren’t worth preserving? Why not force archiving of emails in case they’re useful someday?

A: yes, we’re making authors care about something they otherwise wouldn’t care about. There’s nothing new under the sun, though, and if they’re availing themselves of the © system they need to deposit more than a penny’s worth. Bar for protection is low.

Peter Yu: Is this a Berne-noncompliant formality?

Q: is this still a problem v. 70 years ago? Does deposit do enough work?

A: obsolescence will still happen. Certainly deposit can solve some of this but that requires LOC to house all these.

RT: wouldn’t you have to separate the standards for protectability & infringement? Cartoon Network is an infringement case.

A: yes.

Q: example—Nintendo didn’t have to deposit anything, except for the Pokemon movie reels as having cultural significance (they only wanted reels). Valancourt Books case about mandatory deposit as a taking—if yours is tied to seeking © that might escape the problem.

Ambient Copyright Fixation, Brian Downing

Fixation requires the author’s authority over the fixation; occurs more and more w/o author’s knowledge, let alone authority, by ambient recording devices. Creators can’t assert federal © interest over unknown fixation; uncreative device operators reap the rewards from others’ creative works. Operators own the work if they show minimal creativity in fixation.

He proposes notice and adoption as the rule instead of fixation with authority. Authors will use platforms to automatically become aware their work is online: YT and Meta have likeness protection for deepfakes; authors could also manually discover their work is online. Adoption: authors would adopt or reject the fixation. For the fixer, safe harbor, fair use, and news exceptions. Uploader would have to say who is in the video, if they know.

RT: Interesting project. Next problem: What’s the work? You’re assuming that human action creates works. But what about playing with a dog? Under your theory, who is the author of the Zapruder film? What if 2 people are in conversation? What if you are recording a dozen couples on the dancefloor? What is the uploader supposed to do if they believe that the underlying conduct is not copyrightable?

Also: why doesn’t common-law © solve your problem?

Also: Facial recognition mandates are a bad idea regardless of whether they’re supposedly in service of IP rights. The current mechanisms you describe are not used to mandate identification of everyone in a video, nor does Content ID etc perform a fair use or newsworthiness analysis, nor does anyone think that it can do so.

Q: you can make bad © claims on YT today; there’s always ambiguity about the defaults. Most things like a scuffle between people should be left up; a speech is clearer about the underlying work being recorded—notice and counternotice are the right solutions there; right now all the value goes to the wrong person. Failure mode is claim made by person who got in a fight and was recorded. That’s shifting value to a different person who abused the © system, but the value wasn’t created by the recorder and the money is being made. Our fixation rule should address how to reward the participants.

Also common-law copyright is underdeveloped in most states. [That’s what plaintiff’s lawyers are for!]

Maggie Chon: who’s the author? With photos we have doctrine. Operator may be able to claim that their filming meets some kind of test of copyrightability.

A: if there’s no master mind then revenue should be shared.

Peter Yu: 1101?

A: it’s at least ambiguous whether the Writings requirement requires a fixation. UK does allow adoption of unauthorized fixations. But 1101 is good for infringement; it’s not so good where the bootlegger is an automated camera.

The Copyrightability of Living Organisms Cathay Smith

The GloFish: glows under fluorescent light: proteins from jellyfish, sea coral integrated into fish genomes. Living organisms are patentable subject matter, though products of nature aren’t. Patents exist on method of making fish as well as the transgenic ornamental fish themselves. TM also allows for living organisms to be considered goods, so GloFish has a number of registrations like GALACTIC PURPLE and STARFIRE RED.

Copyright Review Board has found lack of copyrightability b/c didn’t owe origin to human authorship or don’t meet fixation requirements. GloFish © was denied despite argument that injecting non-native DNA into GloFish was like a painter using paint on a canvas. CRB found no authorship and no copyrightable subject matter.

Considers doctrinal limits on © protection for living organisms, and policy considerations.

Humans also use living organisms as the medium—plants and flowers; microbial art; Chapman Kelly’s garden. Living organisms can also be used as canvas: tattoos/painting on pigs, hairless cats, cockroaches. Seems like easy PGS separability cases, but are they useful articles? What makes them art is that they’re tattooed on living organisms.

Work itself is the living organism: the GloFish, where the work can’t be separated from the organism. Is there a difference b/t injecting dye into a fish to change its color versus modifying its genes to do so?

Fuzzy categories: trees trained to grow with specific trunk patterns; topiary sculptures that are trimmed—are they the same? Should the process matter to ©ability? Do we want to look at design of/design on concepts or seperability?

Policy considerations: fish have offspring; if their offspring exhibit the same expression as they do, how do we consider right to reproduce under those circumstances? If the work is self-replicating, what then? Taxidermied mice—if the policy considerations push us to avoiding living organisms as © subject matter, what about when they’re dead?

Jacob Noti-Victor: there are multiple doctrines at play: idea/expression; authorship; functionality—disentangle different doctrinal pieces. AI authorship is also relevant here.

RT: Extreme plastic surgery on humans?

Is Copyright a Noun or a Verb? Jacob Noti-Victor (with Jeanne Fromer)

Allen v. Perlmutter, D. Colo.—cited Star Athletica to argue that CO wrongly considered the process instead of the output. Copyright focuses on the verb in certain contexts—tort or agency contexts—copy/copying in fact, perform/performance/transmission, cause/volition, induce/inducement/secondary liability, employ/WFH. But protectability is all about the noun—things are supposed to be legible in the work itself, rather than the process by which the work is made. This falls apart in different places, but the work is supposed to be a coherent thing (even if scope is in flux).

Why insist on the noun? Property: in rem rights generally need a defined thing. Lower information costs when transacting and suing. Normative policing: focusing on work rather than process allows commodification and marketing, reinforcing market-incentives theory; Feist in particular is about avoiding normative contagion from labor as an independent justification for ©. Relatedly: evidentiary—a work is more easily assessable by courts, juries, and the CO. Process narratives are expensive and easily contested.

This is unstable because © is primarily about creating. Our justifications are about the verb: incentives, labor, personality. But the law focuses on the work as coherent object. The verb side leaks back in to the analysis. A lot of verb but a suspect noun: Meshwerks; some photography cases where work went into producing the thing—that’s when process leaks back in. A coherent noun but a suspect verb—the monkey selfie where a human didn’t do it. Maybe fixation/intent to fix as well.

Doctrinal disciplining as a pattern: courts can’t use only noun language, so verb language starts to seep in, and then courts get uncomfortable and announce a rule expelling process from the doctrinal area. Thin works: Burrow-Giles to Rentmeester.

Useful articles: Brandir talks about artistic judgment; Star Athletica says no, it’s about how the article and feature are perceived, not how or why they were designed. Fair use seems like it’s about verbs—what the fair user did—but there’s a similar pattern in cases like Blanch v. Koons and then Warhol v. Goldsmith. Blanch asks for a “genuine creative rationale,” whereas Warhol says subjective intent doesn’t matter, though meaning as reasonably can be perceived should be considered to the extent necessary to determine purpose.

Can authorship ever be separated from verbs? How can you ID author from the work? Well, you can’t! Naruto, Kelly (goes back and forth b/t authorship and fixation); Urantia (divine authorship, kind of about estoppel); AI authorship as additional destabilizing factor.

Possibilities: hold the line: noun is shaky but necessary. Process is an evidentiary and notice nightmare. (2) embrace the verb; stop pretending process isn’t important even if it means simple photos/random creations are unprotectable; (3) no choice—with AI the work can’t perform evidentiary/notice functions; we need to know how it was made so process inquiry is coming whether we like it or not.

RT: Process can also expand rights: selection of a particularly attractive pepper at the garden; the price cases like CCC/Kapes. Consider also public domain works/talk about the Uncle Sam case.

A: for useful articles process might yield less protectability; for software it might lead to more protectability.

Grimmelmann: a paper about the appeal and limits of formalism—everything you need is included within the thing itself! Literary and artistic theory could offer useful comparator—formalism, reader response, etc.

Maggie Chon: joint works and WFH?

A: there’s no way to avoid process inquiries there—you have to ask who superintended the work?

Samuelson: in Sedlik, the testimony about process was really important to the jury’s verdict (though not to the court of appeals).

Identification! Or, How Do You Litigate Against 3,000 Squishmallows? Ari Lipsitz

What is the work? Squishmallows sued Build-a-Bear claiming trade dress in kawaii squishy characters. BAB response: they were mixing and matching 17 different descriptions and tried to claim Squishmallow Godzilla and Squishmallow Warren Buffett made for Berkshire Hathaway. But dct denied motion to dismiss. Clarifying which of the 3000+ Squishmallows falls within the definition was a permissible aim of discovery. P defines rights in ambiguous way and then plans to slice & dice claims in discovery to target whatever D did. But IP rights are supposed to be defined in the abstract—a problem for trade dress and trade secret as well.

Why identify? (1) notice to D; (2) gating discovery—California requires trade secret to be ID’d before discovery; (3) it straddles the line b/t procedure and substance—in trade secret, P should describe subject matter w/sufficient particularity, to separate it from matters of general knowledge.

Alsup said: it’s easy to allege theft of trade secrets w/vagueness, take discovery, and then specify whatever happens to be there as having been trade secrets stolen from P. Allowing everyone to survive MTD; risk of forcing D to reveal its own trade secrets.

Other forms of IP also lend themselves to strong identification requirements: trade dress can be hard to pin down; © also has identifiability issues if it’s unregistered or in a billion different pieces as in Thomson Reuters. Patents shouldn’t be hard to pin down.

Open question: identification and scope. The more diffuse the right, the stronger the identification should be—with trade secret, claimant may not have concrete idea of secret until there’s litigation, so identification is important; patent: you have it or you don’t, so need to identify. Unregistered trade dress and copyrights seem closer to the diffuse side.

IPSC Breakout Session 1 Copyright Secondary Liability

Copyright’s Intent, Mark McKenna (with Laura A. Heymann & Alfred C. Yen)

Cox: Contributory infringement for service providers can be shown only with intent, or with a service tailored to infringement. What happened to Gershwin? Will courts really accept that? Will they expand vicarious liability more to capture intuitions they have about fault?

Common-law tort origin is the claim, but ©’s rules are misaligned from tort. Is this all © exceptionalism? Many of us feel that courts are searching to attribute fault but don’t have the right anchoring in tort law fault principles.

First, ©’s insistence on hard line b/t direct infringement and secondary liability. Tort law more flexibly assigns first-party liability to those whose conduct causes the injury—co-tortfeasors when contributions are deemed sufficient, even when another party’s participation is required for harm and even when co-tortfeasor’s conduct is not the proximate cause. Joint liability—tort doesn’t regard that liability as secondary. They’re not derivatively liable for wrongful conduct of another, but liable b/c of their own wrongful contributions to harm. If party most proximate to harm is batterer, the co-tortfeasor is also a batterer. Tort only very rarely imposes truly secondary liability (wrongs committed by others). Vicarious liability is the standard, but it’s not specific to the particular conduct but rather exists because of the broader relationship (employment) to the tortfeasor. Enterprise liability too.

Basically true even for strict liability like blasting/harboring a wild animal. Even when D’s own conduct is also sufficient to subject them to liability—when landlord engages w/wild animal in ways that could be called a harborer—that’s not derivative liability. Otherwise landlord might be negligent in their own conduct (renting to a known harborer). So © being strict liability doesn’t demand a different approach.

Framing of whole Q of secondary liability is thus already off on the wrong foot from tort perspective.

© ignores wrongful contribution to an injury: party’s own negligent conduct exposes the P to third-party wrongdoing, like landlord who exposes tenants to assault, or train leaving passenger in dangerous area. Liability there is not co-tortfeasor; this category doesn’t put D in same category as other tortfeasor: negligence liability, not battery, for negligently exposing P to third-party battery. Doctrines like causation, act/omission, etc. come into it. The remedies are negligence remedies—no punitive damages even if third party engages in intentional tort.

How does © get misaligned? Courts initially concerned with co-infringers—people who performed part of the act that led to infringement. Drawing on patent cases where infringement requires assembly of lots of parts. A common enterprise, either directly or indirectly where one party makes a component to be combined with another. When co-infringers weren’t amenable to suit, Ps tried to bring in more upstream participants to say they were also co-infringers. Courts started using the term “contributory infringement.” But they weren’t really developing it as a theory of derivative liability, but rather describing why the contributions of Ds made them co-infringers. These were common enterprises—common purpose to cause the infringement.

Part of the confusion in © is emphasis on secondariness of liability, unplugged from fault principles. If we tried to do more faithful mapping to tort law: we should be very reluctant to impose true secondary liability other than vicarious liability, which we would define much more narrowly—a relationship like employer/employee or joint enterprise—relationships not specific to the infringing conduct, with much higher levels of control. Thus, we’d reorient to (1) co-infringers—liable b/c their own conduct makes them fairly labeled an infringer, subject to © remedies, including inducement and providing products w/no substantial noninfringing use; could also include, per Sotomayor, other cases of aiding and abetting where there’s knowledge plus material contribution as in tort law where tort law demands significant contribution at a time when it can be said to reflect a meeting of the minds in furtherance of tortious conduct, not just any time/knowledge of past infringement. (2) negligent exposure to third-party infringement; implication of duty, breach, causation and damages. Not really © infringement but negligence, so the damages are different.

Lea Bishop: so is © not really a strict liability offense?

A: these doctrines aren’t limited to intentional torts, but the way the courts talk about the other party’s contribution is about intent to interact w/other D—so it’s not intent in the “intended to infringe” way but “intended to work with.” Underlying tort doesn’t require proof of intent. Cox’s categories of intent map pretty well if they mean “intent to work together” rather than “intent to carry out infringement.”

The New Law of Vicarious Liability in Copyright, Michael Carroll

Cox tells courts to change their vocabulary. Does that matter? If so how? Restatement (Second) of Agency conceives of two types of principal/agent employment relationships. Master/servant where there’s agency v. independent contractor who may or may not be an agent. It was against that tort law background that the 2d Circuit decided Shapiro, Bernstein about whether a department store owner/operator was liable for sales of infringing recordings by concessionaire. Court rejects independent contractor defense: right and ability to supervise plus obvious and direct financial interest in exploitation of copyrighted materials—looking to © policy and says policy is best served by imposing liability in these circumstances. Courts repeat those terms, not with full consistency.

Sony came along: The use of the term vicarious liability was imprecise in the opinion, but Justice Stevens used the term for any kind of indirect liability. 9th Circuit kept treating Grokster as simply ratifying Shapiro, Bernstein. But Grokster’s formulation is different! Ignored Justice Souter’s restatement; Cox says that the Court is the boss. You’ve got to start using the magic words. If one infringes by profiting from direct infringement, financial interest isn’t enough: profit is revenue minus cost. But maybe it’s not a big deal. Declining to exercise a right to stop or limit direct infringement: to decline to take action implies both knowledge and intent. But as an outgrowth of respondeat superior, vicarious liability has been treated as strict. How can that be reconciled?

Cox’s treatment of Grokster suggests that the Court will rely on its own restatement of vicarious liability when it reaches a relevant case. Courts will need to develop a standard for declining to exercise right/ability. A relationship akin to employment will impute knowledge to hold that supervising party declined to act; but a service provider for an internet user would require more evidence than a contract that said you could be cut off w/o some specific notice.

Example: tape machine manufacturer & its retailers: 8th circuit said they were liable b/c of contracts w/retailers for how machines were used; machines were distributed free; some tape sales were to infringers & manufacturer profited from tape sales. Not sure that could suffice.

Question: where did Souter get his words? Not in the briefs in Grokster.

Eric Goldman: thought that Grokster was p-favorable; what’s the empirics?

RT: wouldn’t it be stronger to start from the point that the real name of/justification for vicarious liability is agency liability? Service user is obviously not agent of service provider, so that would help realign with larger agency/vicarious liability law.

Also: read the SCOTUS sexual harassment cases from 1998 & Ginsburg’s characterization of the liability standard, where she makes similar moves about vicarious liability.

Grimmelmann: as with shadow docket, SCOTUS is telling lower courts to read their tea leaves and comply.

Copyright Exceptionalism in the Supreme Court’s Secondary Liability Cases, Pamela Samuelson

© industries seek broad liability rules for tech companies; industry turned to Gershwin definition from 2d Circuit in Sony, Grokster, & Cox, claiming that Gershwin was the bedrock foundation for their claims. © exceptionalist arguments derived neither from statute nor common law, but claims about massive uncontrolled infringement. But Ct even in Sony didn’t cite to Gershwin except as vicarious case.

Grokster: MGM no longer relying on Gershwin alone, but emphasized that Gershwin’s definition of contributory liability included inducement. Court looked to Gershwin for inducement as well as to patent law. Cox is a lazy opinion; Sotomayor is making more sense. Asks: why not aiding & abetting? Some options: there’s nothing in the statute; the statute says “to authorize” which didn’t happen; no inducement b/c Cox didn’t encourage infringement; no special tailoring, no direct financial benefit; no a&abetting b/c there’s no intent to aid infringers. Material contribution w/knowledge was Sony’s only chance, but broadband service wasn’t proximate cause and Cox’s after the fact knowledge/lack of way to know which user actually infringed was too limited to justify liability.

Pressure on vicarious infringement & volitional conduct will exist, but probably not on inducement b/c Hikma reinforced the requirement of active inducement in patent context.

Did SCt really intend to overturn Netcom such that failure to take something down after notice is no longer material contribution sufficient to justify liability? DMCA is not a dead letter b/c many incentives to comply still exist. [Including incentives to comply for other countries’ regimes.]

Jim Gibson: Even Sotomayor wants to use a&a for a heightened mens rea—intent of helping other person succeed in committing wrongful conduct, not just intent to perform the act that enables infringement. So the common focus on intent seems like the most limiting factor going forward, not whether a&a can also be included.

A: Taamneh was important to Cox despite few mentions—the required intent (to aid terrorists) was something the Court thought about in that context. She expects intent to get watered down.

Fearing (and Loathing) the Common Law of Copyright, Shyam Balganesh

Why the reluctance of the Court to engage with © as a common law system? Thomas says: we’ve recognized specific forms of secondary © liability that predate the Act, but we’re loath to expand liability beyond that. Sotomayor says: why?

Legislative-judicial dynamic around parts of the statute has been essential to the 1976 Act. Typology: Legislative modality: novation; judicial task: interpretation (Congress invented this and didn’t draw from prior case law); example: joint works

L: Codification; J: preservation/interpretation; E: first sale

L: Silence (decided not to speak; mess already existed by 1960s & 1970s); J: unconstrained law-making; E: substantial similarity

L: Delegation; J: constrained law-making; E: fair use.

Sony has the right result but made a methodological error: Stevens says that Act doesn’t expressly render anyone liable for infringement committed by another & talks about absence of express language requiring courts to jump in. This is only partially true b/c of “to authorize” in 106, which Sony & Cox don’t mention—it has clear instantiated meaning and long history. Thomas has a theory of congressional primacy; the legitimacy of court-made law is always tested against backdrop of congressional action or inaction; seemingly a majority of the Court has accepted/acquiesced to this view. Clear patterns in his opinions in Star Athletica, dissents in Public.resource.org and Oracle: you’re using fair use to annul the statutory treatment of software. Even in Fogerty v. Fantasy: text of statute is clear; interpretation ends.

Thomas’s disdain for common law; three views. If there’s a backdrop of rules against which Congress legislates, appealing to those rules is legit but frozen in time. For delegated lawmaking—ongoing elaboration required for open-ended terms with express or implicit recognition that judge-made law will follow—he thinks it’s legitimate if the text constrains it with guardrails; securities law is an example of his objection b/c there’s not enough guardrails. Finally, independent lawmaking is wholly illegitimate (no gov’t edicts doctrine).

Maybe this was a category error: failing to discuss “to authorize.” Doesn’t think so, though, b/c briefs raised it. But he wasn’t convinced that there was a textualist hook. Raises Q: what does this do to other parts of © law if this vision of interpretive structure has a majority? Fair use implications: only if it is compatible w/the rest of the statute. Originality: same plane. Infringement analysis: implications for legislative reform. Beware of textualists when advocating for reform: how a court would handle that.

RT: Textualism masks that placement in categories is contestable: Glynn Lunney: reproduction/derivative works could have replaced substantial similarity; codification could have been read as novation in interpreting first sale versus exhaustion.

NO FAKES and similar ROP proposals often have language like “to the extent protected by the 1A” in their exclusions—how could this form of textualism handle that? Would Thomas’s approach ignore those exclusions just like he ignored the open ended language about useful articles in Star Athletic.

A: irony of Thomas’s MO: claiming that there’s plain meaning while refusing to look at legislative intent—he ignores “to authorize” b/c explaining what its plain meaning was would require a citation to the legislative history.

Our Byzantine Secondary Infringement System, James Grimmelmann

Conventional view: in US, there’s vicarious infringement and then intent-based contributory liability. He wants to do a thorough survey of all the secondary liability doctrines in US law, describe & critique it as a system, and then possibly suggest fixes.

True secondary liability doctrines: liability for someone else’s completed act of direct infringement.

What about infringement by authorization? Issuing a purported license w/o the right to do so—seems literalist but probably killed by Subafims.

Agency law: respondeat superior is used all the time where companies are held liable for employee’s actions. Agent’s actions and knowledge are imputed to their principal, often invisibly, even when not actuated by purpose to serve employer [not sure this last is true—looking forward to cites]. Especially in PRO licensing cases where employees at a bar are used to hold owners liable even when corporate law wouldn’t do it.

Volitional conduct/the server test: these often cut in opposite directions and interact weirdly with licenses granted to platforms by users.

Quasi-secondary liability: for conduct that could facilitate infringement regardless of whether there is actually infringement.

Scaffolding doctrines: direct infringement has no mental state requirement; makes stakes much higher for direct/secondary. Willful & innocent infringement also matter to statutory damages.

Criminal liability for willful infringement; brings in general criminal doctrines of aiding & abetting; there’s also a “causing” criminality but no federal attempts criminal liability. There’s also conspiracy liability: it’s a crime to conspire to criminally infringe; Pinkerton: conspiracy to commit any crime subjects conspirator to liability for any criminal infringement that’s reasonably foreseeable and in furtherance of criminal conspiracy. RICO: © infringement is a predicate crime.

512: Does it displace common law? Volitional conduct? Apply beyond enumerated services? Courts generally say no to all. Tony Reese has given good reasons to think it’s a bit more complicated. The exceptions it carves out all sound in secondary liability (quasi-contributory; quasi-vicarious—presumed that direct liability wasn’t possible so how could it be the same as common law liability?); what about the repeat infringer suspension—what is a reasonable policy? Recreated a lot of secondary infringement doctrine under the head of 512.

TPMs also matter: Serial copy management systems—you must implement them and you’re liable for distributing tech w/o them—that’s a kind  of quasi secondary liability.

1201 is too, arguably mapping onto Cox intent prongs—distributing tech “primarily designd for,” knowingly marketed for use in circumvention, or have limited commercial use except for circumvention.

1202 is too: knowingly language but not in any coherent/organized fashion.

This is far too complicated. There are way too many minor variations and overlaps. What happens to 512’s quasi contributory liability exception now that Cox has repudiated knowledge plus material contribution? Overlapping but inconsistent tests. Confused relationship of statutory codification to common-law elaboration: volitional conduct, server test, and 512 all seem to do similar work. Loopholes and traps for the unwary—Aereo was $100 million waste.

Jim Gibson: distribution liability can be thought of as secondary liability for the underlying reproduction, though the statute doesn’t say that.

IPSC Opening Plenary Session: IP Openness, Secrecy, and Enclosure

Selective Exploitation, Kristelia García

Justifications for deference to rightsholders in enforcement context are less persuasive than justifications for deference to rightsholders in exploitation decisions. These aren’t infringers—outside of ©’s standard infringement/remedies scope. Conduct at issue: shifting content from Peacock to Hulu, pulling shows from streaming services once they’re cancelled, making them impossible to access. Denying a platform access to a work that a platform has decided is not worth continuing. Batgirl pulled for tax reasons. Disappearance clusters around mergers and quarterly reporting where they want writeoffs; independent of consumer demand. Subsidizes content removal in a bad way. Accounting-driven disappearances.

Reputational concerns also lead content to disappear—race-changing makeup in 30 rock; Dr. Seuss edited to remove what are now understood as racist caricatures.

Consequences: for access; for competition/raising cost of competition; for creators—lose residuals when removed from popular platforms like Netflix.

Conventional tools aren’t helpful: fair use; antitrust—pacing and breadth problems; statutory licenses siloed by medium & tech and don’t speak to suppression or streaming; misuse is closest but that’s a defense targeting license term rather than refusals to license.

Proposed interventions: nonuse reversion rights; reducing write-off incentives/introducing a public access credit; broader conception of consumer harm; open-access analog—currently FCC or FTC lack jurisdiction over streaming but we could impose some preservation mandate.

Trademarks as Gatekeepers in Open Culture, Aman Gebru

Open platforms invite community investment but retain a less visible, restrictive layer of control—descriptively, use TM on the back end. Welcome your investment until the platform is mature, then strategy of being more restrictive. Case studies.

Reliance-based information asymmetry: encourage people to contribute resources for free, then take ownership of the value thus created. Case study: WordPress: widely used nonprofit open-source content management system. Automattic v. WP Engine: competitors in for profit services built on WordPress—TM claims made against competitor; blocked access to wordpress.org. Divided community—some say that for-profit entities should have to donate/help out; others say that a single person shouldn’t control open access resources.

Dungeons & Dragons: open game license in 2000; updated in 2023 with an even more permissive and irrevocable public © license. Independent publishers invested resources developing compatible products, but leaked documents indicated Wizards of the Coast intended to substantially limit those permissions and demand royalties for projects making over $750,000.

SSRN: acquired by for-profit Elsevier in 2016. Widespread concerns about restrictive commercial practices, but concerning & unclear changes to permissions.

Musk v. OpenAI—unjust enrichment b/c OpenAI was founded in 2015 as a nonprofit research lab. No ruling on the merits, but does demonstrate reliance concerns for investment early on that is then exploited.

Reasonableness of reliance: public is not unreasonable to expect continued access to a platform. Cultivation of openness goes beyond terms & conditions, even if they preserve the power to restrict.

Q for Gebru: in past, this happened with cable retransmission of broadcast—a new business model for profiting from what was freely distributed. What’s the history?

[RT for Gebru: distinguish impersonation? AO3, which is nonprofit & open source, deals with commercial exploitation that puts user privacy and security at risk, e.g. if users input their passwords through an unofficial app; confusion is a real risk for some unauthorized uses. Maybe the answer is that most use of AO3 is to post stories and that’s the core promise of the platform, but more details would help.]

Know-How, Dan Traficonte

Know-how is a legal concept used to mean many different things. Methods and techniques: The trade secret equivalent of a method/process patent. Trade secrets are a subset of confidential information; general knowledge, skill, and experience overlap with confidential information but not trade secret. Know-how cross-cuts all three: trade secrets, confidential info, and skill/experience.

Matters to doctrine that trade secret has to be described with reasonable particularity. Uncodifiable know-how can’t be a trade secret; hard-to-codify know-how might be a trade secret if codifiable during litigation; hard to figure out how to do that or identify how much codification is enough.

Employee Privacy and (Un)Reasonable Secrecy Efforts, Deepa Varadarajan

Apple allegedly spies on workers’ personal devices while NY limited access to personal social media accounts. Problem: trade secret law doesn’t pay attention to employee privacy, which is problematic given the field’s concerns with (1) commercial morality and (2) employee ability to move. Reasonable efforts to maintain secrecy should not require privacy invasion, but are often used to justify invasions. No court has held RSE unsatisfied due to excessive secrecy.

Unclean hands might be a viable doctrinal alternative.

Strategic Openness in Innovation: When Firms Reveal to Block or Build, Bernhard Ganglmair (with Alexander Kann)

Invention disclosures: in-house journals like IBM’s; commercial outlets like Research Disclosure and IP.com; new platforms like TDCommons (Google, 2015) and proofbox.co. These disclosures are seen and cited in patents. Longer disclosures carry more enabling information and are cited more often. Placement: distance to a firm’s tech core—how central are these disclosures?

Results: mapped length & distance from firm’s core of disclosures. Firms w/longer disclosures place disclosures closer to their own core. Not necessarily industry-specific. Pattern holds even after excluding IBM and other manipulations, over time. Enormous firm heterogeneity.

Reading list: Do Louis Vuitton's Registered Trademarks in China Appropriate Traditional Chinese Culture?

 Do Louis Vuitton's Registered Trademarks in China Appropriate Traditional Chinese Culture?

Ohio State Legal Studies Research Paper No. 980

20 Pages Posted: 4 Aug 2026

Daniel C. K. Chow

Michael E. Moritz College of Law

Date Written: August 03, 2026

Abstract

The recent June 29, 2026 court decision in China finding that Molly Tea, a local Chinese company, infringed Louis Vuitton’s (LV) registered trademarks for a four-petal flower design has ignited a firestorm of public anger and indignation. Critics charge that LV was able to obtain a trademark for a flora symbol for its luxury handbags that has been part of traditional Chinese culture for centuries. This criticism invokes painful memories of western bullying of China during the “century of humiliation” when European imperial powers viciously subjugated and dominated China. The Communist Party, China’s leaders, deliberately promotes the “century of humiliation” narrative for political purposes.

This Article argues that portrayal of the dispute as an external clash between China and a western bully is misleading and obfuscates the true conflict. The actual clash is a purely internal one between the policies of modernization and economic development and the policies of preserving China’s traditional culture. In this clash, China’s leaders have consistently and unequivocally chosen to prioritize the policies of economic development, which directly compel the result in favor of LV.

Comment from RT: The title is a bit misleading because the paper doesn't go into the actual origin of the LV flower or what counts as cultural appropriation, instead arguing that China's leadership has made a strategic decision not to care.

10th Circuit finds that disparagement by pet food company was commercial speech though affiliated vets'/nonprofits' speech wasn't

KetoNatural Pet Foods, Inc. v. Hill’s Pet Nutrition, Inc., No. 24-3185 (10th Cir. Jul. 14, 2026)

The court of appeals affirms in part and reverses in part the district court opinion dismissing Lanham Act claims against Hill’s and other defendants. Some of Hill’s challenged statements disparaging grain-free pet food (like KetoNatural’s) were plausibly literally false commercial speech subject to the Lanham Act, though not the statements from vets and nonprofits affiliated with Hill’s.

KetoNatural alleged that Hill’s and its partner veterinarians and non-profit organizations made false statements that grain-free pet food is linked to a higher risk of canine heart disease.

“Hill’s and two other pet food companies dominate the market for ‘traditional’ grain-containing complete-diet pet food in the United States.” But Hill’s’ sales declined by more than 20% because of “the non-traditional pet food boom,” in which startup KetoNatural participates. When Hill’s’ sales began to fall, it allegedly conspired with several veterinarians and two ostensibly independent non-profits to publicize the connection between grain-free diets and dilated cardiomyopathy, a deadly canine heart disease.

The court explains Hills’s’ links to vets and nonprofits:

To ensure veterinary patronage, Hill’s offers free continuing-education courses and literature to veterinarians and has partnered with veterinarian researchers to support its marketing. In return, Hill’s provides partner veterinarians with financial support and promotes their work through its website. Hill’s also funds research at various veterinary schools where partner veterinarians are located.

In addition to directly funding veterinarians, Hill’s maintains connections to the larger veterinary world by funding two non-profits that promote animal welfare. Morris Animal Foundation funds veterinary research projects and institutions, including the projects and institutions of the alleged co-conspirator veterinarians. And the Mark Morris Institute contributes to veterinary education by producing textbooks, continuing education courses, and course materials. Hill’s’ employees and directors have served on the boards of both organizations.

Allegedly because of Hill’s’ targeted marketing campaign, its revenues grew by more than 50% from 2018 to 2022, while sales in the boutique/exotic/grain-free (BEG) category reversed and began to decrease by nearly 6% per year. KetoNatural was not spared.

KetoNatural identified multiple sources of the allegedly deceptive claims: Hill’s claimed on its website that BEG diets were connected to canine heart disease and linked to veterinarians’ blog posts stating the same; Hill’s offered similar educational materials and continuing education courses to veterinarians on its website; vets’ public statements, including publicizing an FDA investigation that ultimately failed to establish a correlation between BEG diets and an increased risk of canine heart disease; vets’ scientific publications; vets’ blogs; a Facebook page and associated website promoting traditional pet food moderated/controlled by Hill’s and its vets, which published statements affirming the link between BEG diets and canine heart disease and deleted all comments contradicting the correlation; statements by the non-profits; and statements by independent vets “[i]ndoctrinated by the conspiracy’s educational efforts.”

The court recited the initial four-prong Gordon & Breach test for commercial advertising or promotion (the fact that Lexmark altered/removed (2) isn’t significant here): “(1) commercial speech; (2) by a defendant who is in commercial competition with plaintiff; (3) for the purpose of influencing consumers to buy defendant’s goods or services; (4) … disseminated sufficiently to the relevant purchasing public to constitute advertising or promotion within that industry.” Promotion, per past cases, means “a systematic communicative endeavor to persuade possible customers to buy the seller’s product,” even if not through publishing or broadcasting.

Starting with Hill’s’ website, including links to alleged co-conspirator vets’ articles, claiming that BEG diets were dangerous: Although this wasn’t a “classic advertising campaign,” the speech had an economic motivation and plausibly promoted Hill’s grain-based pet food as safer for dogs, even without naming Hill’s explicitly. Given Hill’s size—one of three dominant traditional pet food sellers— “its disparagement of non-traditional, BEG pet food is a tacit promotion of its own pet food.” And promoting a brand rather than a specific problem is still commercial. The same analysis applied to the links on Hill’s’ website, even if the speech on the linked webpages was not on its own commercial speech: “Because of the hyperlinks’ location and the fact that the linked pages disparage BEG dog foods, the linked webpages can plausibly be understood to promote Hill’s’ products.”

KetoNatural also plausibly alleged literal falsity under an establishment claim theory: it plausibly alleged that scientific studies did not establish the assertion for which they were cited. For example, the statement “[w]hat seems to be consistent is that [DCM] does appear to be more likely to occur in dogs eating boutique, grain-free, or exotic-ingredient diets” was an establishment claim “because it establishes a correlation between the diet and the disease by implicitly relying on some independent, objectively verifiable study showing consistent and higher rates of canine heart disease in BEG-eating dogs. And it is plausibly literally false because KetoNatural alleges that no study supports the correlation.” Note that in this example, the establishment claim is apparently a necessary implication—it’s the kind of claim that experts like vets wouldn’t make if it weren’t backed up by scientific evidence.

A similar analysis applied to at least some of the veterinary education materials on Hill’s’ website that said things like, “[b]y now, most veterinary professionals understand that there’s a link between BEG diets and atypical dog breeds developing DCM.” “[E]ducational or informational speech can become commercial when disseminated to promote the purchase of goods, as was alleged here.”

Other challenged sources were not actionable. KetoNatural alleged that Hill’s was vicariously liable for the Lanham Act violations by the alleged co-conspirator veterinarians. But these statements weren’t ads and didn’t reference a specific product, and thus weren’t commercial speech but First-Amendment-protected statements on matters of public concern. “[U]nlike Hill’s’ statements, the veterinarians’ statements are too attenuated from Hill’s” to have the necessary economic motivation or promote Hill’s specifically. “The speaker matters. The speaker provides context to the consumer that the speech may be commercial.” And unlike Hill’s, the vets didn’t have a big chunk of the market. [FWIW, the court’s attention to Hill’s market share seems wrong. If a new entrant said a bunch of blatant falsehoods about ingredients in its product, we’d want to call that commercial speech even if was careful to focus on ingredients also available from other sources.] Also, “KetoNatural does not plausibly allege that the veterinarians made these statements with economic motivation. Even granting that the named veterinarians conspired with Hill’s to disparage BEG dog food, KetoNatural does not plead sufficient factual allegations that the veterinarians made these statements in direct expectation of pecuniary gain from Hill’s.”

Receiving research funding from Hill’s, either directly or indirectly through their universities wasn’t enough; there was no allegation that research funding was contingent on the statements made in these blogs and social media appearances, or that the research funding depended on the topic or result of the research itself. “For a court to infer that the veterinarians’ speech was economically motivated, KetoNatural must at least plead facts that the veterinarians were compensated or otherwise received a quid pro quo from Hill’s for their speaking and writing.”

Similar analysis protected vets’ academic articles; the Facebook page and associated website; and non-affiliated vets’ statements. Along with their affirmative statements, the moderators deleted comments that disagreed with them, and the court said, “[t]he act of deleting posts is editorializing, which is speech, and thus arguably commercial speech,” citing Moody.  [We have totally lost the plot on “editorializing,” but I don’t think it matters here.] Along with the distance from Hill’s, the court commented, “we do not know who the Facebook moderators are, and most importantly, how they participated in and were economically motivated by the alleged conspiracy. KetoNatural admitted as much. It alleged only that the moderators ‘work[ed] closely’ with a veterinarian—but did not otherwise allege involvement in the conspiracy.”

Likewise, the complaint didn’t plausibly allege that the nonprofits engaged in commercial speech. They didn’t run ads or reference a specific product or brand, nor were there allegations that they were motivated by direct economic gain from Hill’s. “Allegations that Hill’s funds the Foundation and influences its executive decisions cannot satisfy the quid pro quo necessary to successfully allege that Hill’s’ gains economically motivated the Foundation to make such statements.”

safety claims aren't vague in context of child car seats

Ricardo Moncada v. Nuna Baby Essentials, Inc., --- F.Supp.3d ----, 2026 WL 866852, No. 25-cv-2592 (PKC) (S.D.N.Y. Mar. 30, 2026)

Nuna allegedly marketed its Rava-brand children’s car-seat product by emphasizing its safety features and a product-testing regimen that exceeded American standards. But then Nuna announced that the Rava’s adjustable harness had a design defect that increased the risk of child injury. Its voluntary recall required consumers to cure the defect using a self-repair kit that was allegedly both difficult to follow and results in a car seat that does not function as originally promised. Ricardo Moncada sued under sections 349 and 350 of the New York General Business Law, alleging a price premium theory. An affirmative falsity claim survived, though not an omission claim, and the implied warranty of merchantability claim failed because the plaintiff didn’t provide Nuna with pre-suit notice of her claim, which New York law requires as a condition precedent.

Nuna advertised the Rava as a “[f]an favorite for security, longevity and sleek design,” featuring a “[q]uick-release” harness that “makes it easy to fasten [children] in.” It advertised that the product was “extensively tested” using “advanced” methods that went “above and beyond what’s required” through testing at “accredited, independent labs.” Nuna repeatedly touted that the Rava’s “advanced safety technology” exceeded “American safety standards.” Rava car seats sell for $450 to $550, allegedly a “premium price.”  

But the Rava’s harness-adjustment cover allegedly proved to be vulnerable to debris like crumbs and dust, which prevents the harness from clamping properly and causes the harness to loosen. NHTSA received 129 complaints about the Rava, 125 of which cited loose harnessing. Nuna thus recalled more than 600,000 Rava car seats, though it did not actually recall the entire product but instead sent affected consumers a “seat pad, head support cover and cleaning kit.” This allegedly put the onus on consumers to disassemble and reassemble “a dangerous and defective product” by using a purportedly flawed “Remedy Kit.”

Nuna argued that plaintiffs didn’t have standing because of the voluntary recall and remedy kit. “But plaintiffs have made non-conclusory factual allegations about the claimed inadequacy of the recall, and it is well established that a plaintiff has a concrete injury if she overpaid for a product that did not perform as promised.”

Plus, violations of GBL §§ 349 and 350 were plausibly not puffery. While a reasonable consumer would understand labels like “premium,” “timeless” and “expertly engineered” to be statements of opinion, Nuna’s descriptions of its compliance with safety standards and rigorous testing requirements could be factual. Nuna claimed that the Rava “exceeds American safety standards,” and that “[o]ur baby gear is extensively tested before it leaves the factory. We use advanced equipment and testing methods, going above and beyond what’s required. To ensure compliance with safety standards, we regularly have our gear tested at accredited, independent labs.”

Nuna argued that these claims lacked specifics. But its cited case was Lee v. Mikimoto (Am.) Co., 2023 WL 2711825, at *5 (S.D.N.Y. Mar. 30, 2023), where a pearl seller claimed to “only use the finest pearls that meet the strictest standards....” and other sellers advertised complying with American Gemological Society standards. This was a different context: “it is plausible that a reasonable consumer encountering Nuna’s statements would understand the company to be asserting that the Rava was subject to thorough and vigorous testing that exceeded safety standards required by law. That Nuna’s marketing statements did not cite a governing statute or regulation does not make it less plausible that a consumer would understand Nuna to be making a verifiable statement of fact about the Rava’s safety compliance and product-testing regimen.”

However, an omission-based claim that Nuna was liable for knowing about but failing to disclose “grave risks” about the Rava failed. The complaint alleged Nuna’s knowledge of consumer complaints filed with NHTSA and posted on Reddit. Section 349 allows for omission-based liability where “the business alone possesses material information that is relevant to the consumer and fails to provide this information” and considers “whether plaintiffs possessed or could reasonably have obtained the relevant information they now claim the [defendant] failed to provide.” Reddit’s message boards and NHTSA consumer complaints are available to the public. The complaint didn’t allege any information about problems with the Rava harness known to Nuna alone, so the omission wasn’t plausibly deceptive.