Monday, April 12, 2021

Recent reading: on brands and sumptuary codes

Inspired by Kali Murray’s great comments at this past week’s Race and IP conference, some notes from recent reading:

Virginia DeJohn Anderson, Creatures of Empire: How Domestic Animals Transformed Early America

Relevant to TM and sumptuary laws (addressed in Barton Beebe's excellent work), Anderson recounts how in some places Native people were barred from marking their own livestock, but punished if they killed a marked animal. In other places/times, both Indians and colonists were required to use their own brands to identify animals, but who got away with violating the rules was unsurprisingly racialized.

Relevant quotes (footnotes omitted):

In the Chesapeake, as in England, livestock owners could protect their rights to mobile property by marking their animals. A few seventeenth-century planters branded cattle on the horn, but most colonists preferred to clip animals’ ears. Virtually every family had its own earmark, involving some combination of slits, holes, half-circles, forks, “fleur-de-lis,” or cropping. They registered their marks at the county court, where the information was recorded to help in identifying strays. Colonists regarded earmarks as a form of personal property to be handed down through the generations. In 1658 when Thomas Gerard neglected to register his earmark and William Evans then used it himself, an angry Gerard took the case to Maryland’s Provincial Court. Gerard protested that his mark was “of a long standing, although not heretofore recorded” and had been “injuriously taken” from him. Since Evans had not yet used it, Gerard argued, the earmark ought to be restored to its rightful, if negligent, owner. Far from finding this a frivolous proceeding, Maryland’s governor not only heard the case but, in an unusual move, polled the councillors for their individual opinions. Four of the five officials sided with Evans, noting his compliance with the law. The governor, however, found merit in Gerard’s emotional plea and asked Evans to relinquish his claim. Evans did so, and a chastened Gerard promptly recorded the mark in his own name….

The Bay Colony legislature tried to minimize contention with a 1634 measure stipulating that trespassing swine would be dealt with according to the rules of the town in which the animals had been found, but this did not help aggrieved parties discover where the beasts actually belonged. Thus in 1647 the General Court required owners to paint a symbol with pitch on the flanks of livestock designating the town where they lived. Just as earmarks labeled livestock as private property, these town marks, or in some cases brands, identified them as animal members of a community. Yet town marks also symbolized the attenuated control of each community over its animals’ whereabouts….

Natick’s herds had grown sufficiently numerous by 1670 that its inhabitants [“praying Indians”] petitioned the Massachusetts General Court to assign them a town brand to distinguish their animals from those belonging to neighboring settlements. Although some form of the initial letter of a town’s name customarily served as a brand mark for English communities, magistrates designated a bow and arrow for Natick—an ambiguous symbol at best, suggesting that no amount of acculturation would fully erase from English minds the sense that Indians remained fundamentally different from colonists….

Indians knew that colonists identified their animals by earmarks; whether native owners would be allowed to do the same remained an open question for several decades. A story that probably originated in Virginia and later circulated in England suggested that by the 1650s earmarks had at least become a topic of conversation between Indians and colonists. Informed by irate Englishmen that his followers had been stealing hogs, a sachem reportedly countered that colonists had been just as busy killing the Indians’ deer. The English reminded him that earmarks identified the hogs as private property but deer displayed no comparable sign of ownership. “Tis true indeed, none of my deer are marked,” the Indian coolly replied, “and by that [you] may know them to be mine: and when you meet with any that are marked, you may do with them what you please; for they are none of mine.” Possibly apocryphal, the anecdote nevertheless fairly represented Indian wit and addressed a topic of current interest to both parties….

Once Chesapeake-area Indians owned swine, the virtues of marking them became self-evident. Unmarked hogs offered tempting targets for colonial thieves, who needed only to clip the ears of such creatures to claim them as their own. Given the propensity of colonists to steal livestock from one another, this was no idle threat. Earmarks also distinguished Indian hogs from feral swine. Native owners could have marked their beasts at any time, but these marks would not provide genuine protection until colonial authorities recognized them as legitimate symbols of private property. Virginia’s legislature did not make such a concession until 1674 when, in a measure aimed at curbing Indian theft of English animals, it ordered county courts to designate “a perticuler marke” for inhabitants of each native town to use on their swine. Assigning a mark to towns instead of individuals may have indicated that Indians regarded swine as common property, or simply that the burgesses failed to make distinctions among native owners. Whether earmarks actually enabled Indians to defend their animal property is unclear.

Oddly enough, when faced with the same circumstances, New England magistrates adopted precisely the opposite tactic. Although there is evidence to suggest that some Indians in Rhode Island took the initiative to begin marking their swine, one by one New England legislatures moved to prohibit the practice. Between 1666 and 1672, Rhode Island, Plymouth, and Massachusetts all ordered that “noe Indian shall give any eare marke to his swine upon the penalty of the forfeiture of such swine.” Indian hogs brought to market had to have uncut ears; native sellers of pork likewise had to produce intact ears to prove ownership. The ostensible reason for this policy was to prevent Indians from profiting from stolen English swine, but its more obvious effects were to complicate Indians’ market activity and to render Indian animals vulnerable to unscrupulous colonists who merely had to mark the creatures’ uncut ears and claim possession. There was also no way for Indians to distinguish their swine from feral beasts that, if less numerous in New England than in the Chesapeake, still roamed the woods and were regarded by colonists as fair game. If Christian Indians in Natick, allowed to have a town brand for their animals, were exempted from the earmark prohibition in recognition of their efforts at acculturation, they would have been the exception that proved the rule. New England magistrates otherwise denied Indians use of the acknowledged symbol of legitimate ownership, as if it ought to signify their progress toward civility rather than their hogs’ status as private property.

Friday, April 09, 2021

Harvard Journal of Sports & Entertainment law seeking submissions

 The Harvard Journal of Sports and Entertainment Law (JSEL) is accepting submissions for Volume 13, set to publish during AY21-22. Submissions for Issue 1 will be reviewed and accepted through August 2021. JSEL is looking for articles on topics related to sports and entertainment law, and especially encourages law professors to send in articles. We want to err on the side of encouraging submissions, so if you have a nearly completed draft that just needs to be fleshed out a bit more, we would prefer to be able to review it.

Submissions should not exceed 25,000 words, including footnotes. All manuscripts should be submitted in English with both text and footnotes typed and double-spaced. Footnotes must conform with The Bluebook: A Uniform System of Citation (21st ed.), and authors should be prepared to supply any cited sources upon request. All manuscripts submitted become the property of the JSEL and will not be returned to the author. In addition to the manuscript, authors must include an abstract of not more than 250 words, as well as a cover letter and resume or CV. Authors also must ensure that their submissions include a direct email address and phone number at which they can be reached throughout the review period. The journal strongly prefers electronic submissions through the Scholastica online submission system (or ExpressO if available). Submissions may also be sent via email to jselsubmissions@gmail.com.

Thursday, April 08, 2021

Reading list: native ad disclosures that work?

Eyal Peer & Dalia Shilian, Improving Consumers’ Ability To Detect Native AdvertisingUsing Identified Disclosure:

Native advertising of online content, such as articles embedded within news websites, is a covert attempt by marketers to affect consumer attitudes and behavior. Because such marketing can have detrimental consequences for consumers, regulators worldwide have begun mandating that disclosures accompany marketing content. Despite these mandated disclosures, studies repeatedly find that consumers still fail to detect native ads even when they include various disclosure labels. We argue that the failure of these and other such disclosures, (e.g., software licensing), results from consumers becoming so habituated to these notices that they fail to recognize or use them effectively. We propose an improved form of disclosure for native ads requiring explicit identification of the name of the company or marketing agent paying for the non-original content. Identified disclosure can be more effective because it is more salient and can vary between ads and platforms. In two studies, we show how adding identified disclosures to native advertising increases detection rates significantly and consistently. We also discuss important implications arising from using smart disclosures for consumer protection.

Payoff: at the end of the article, the authors note that Israel’s consumer protection authority has adopted its recommendations as a native advertising disclosure standard.

Wednesday, April 07, 2021

a handful of Google v. Oracle thoughts: categories, microworks, and market circularity

A couple of small Google v. Oracle thoughts: The majority clearly says that, as with other categories of protected works, distinctions can be made within the categories, drawing lines “among” computer programs, books, and films. Not all literary works are the same; Infinite Jest gets a different kind of copyright protection than my emails do. Likewise, while the recent Warhol case at times seems to imply that the derivative works right overrides fair use, the same GvO passage says that copyright provides both reproduction and derivative works rights, but also subjects all works to fair use. 

One of my minor obsessions is “courts that reproduce the entire works in suit in the opinion”—whether they find for the plaintiff or the defendant, and whether they rule on substantial similarity or fair use, they never even consider whether it’s ok to do so. It’s obviously a good idea for purposes of understanding what the law is—a description of a song or picture will never allow a subsequent reader to understand what the protectable expression in the song or picture was—and I think obviously fair, but it’s amusing to me that it happens without anyone pointing out that this must be in reliance on fair use. 

Anyway, in GvO, Justice Breyer instead reproduces an entire short story, which was just minding its own business and had nothing to do with the case, in two different languages no less. And he does so in the course of suggesting that the scope of fair use would be more limited with respect to that short story than to a sentence of the same length in a longer novel. I think that’s a troubling conclusion—Justin Hughes has written very well about the problem of “microworks” and the right result would probably be to say that the book of stories from which that story comes should be the proper unit of analysis for factor three. Update: based on the statutory language, any claim against the US could not be brought under the CASE Act but would have to proceed in the Court of Claims. But now I ask: Can casebook authors use this portion of the case without fear? 

On factor four, it was nice to see acknowledgement that (1) the licensing package Oracle offered was very different from what Google ultimately copied, and thus didn’t show market harm from what Google actually copied and (2) this was a circularity problem, which should be avoided. Also, relevant to the “mixed question of law and fact” issue, the majority says: “the jury’s fair use determination means that neither Sun’s effort to obtain a license nor Oracle’s conflicting evidence can overcome evidence indicating that, at a minimum, it would have been difficult for Sun to enter the smartphone market, even had Google not used portions of the Sun Java API.” I think that means that the jury verdict must be interpreted to have favored Google on factor four, resolving the factual part of factor four in its favor. I am not sure what that means for summary judgment in future cases, especially if factor one remains more of a legal question.

Wednesday, March 10, 2021

Fanciful Failures: Keeping Nonsense Marks off the Trademark Register

 I'm excited to announce the publication of this Note by my former student Grace McLaughlin, which addresses the fascinating topic of marks optimized to get into Amazon's system rather than to function as indications of source for humans. Highly recommended!

Wednesday, February 24, 2021

Global Advertising Lawyers Alliance (GALA) Webinar – “Hot Topics in Advertising Law in North America”

I always enjoy these and recommend the free GALA webinars to those interested in advertising law; I joined in progress due to some technical difficulties on my end.

Joseph Lewczak: FTC v. Teami ($15 million settlement, all but $1 million suspended), where there were other bad things like fighting cancer claims and also nondisclosure by influencers like Cardi B. FTC does not want disclosure below the “more” expansion link, if any; it has to be above so anyone will see it even if they don’t seek out more info.

Kelly Harris: In Canada, Competition Bureau brought enforcement action against FB for misleading privacy representations even though it’s a free service. New bill: regulating online programmers like Netflix, though UGC will be excluded (but might be included if commissioned for or developed by the service). Regulator will impose “conditions of service,” though not quite traditional broadcaster licensing.

Jose Antonio Arochi: Mexico doesn’t have specific regulations. Twitter reviews for Sephora where consumers were demanding money for allegedly expired products and saying they couldn’t get refunds from Sephora. Apparently Consumer protection agency called Sephora to clarify the situation—there was no litigation.

Melissa Steinman: Shop Safe Act introduced trying to stop fakes in ecommerce; didn’t go through (attempt to create contributory liability for platforms) but will be reintroduced, so keep an eye out. Theme for this year: platform liability.

Reviews: Vitamins Online v. Heartwise: Manipulation of reviews actionable under Lanham Act, including manipulating “helpful” votes and giving people free stuff for positive reviews.

Maryland: First ever digital advertising tax, on gross receipts. Vetoed by governor but overridden; lawsuit brought by platforms like FB and Google—wait and see. NY, DC, WA are considering similar taxes so it’s a trend to watch.

Harris: In Canada, the provinces regulate consumer agreements online. Certain procedural requirements: must be able to see & save a copy of the disclosures/contract w/in 15 days, via email receipt for example. Certain practices are limited: unilateral changes of material elements like price. Failure to comply: right to rescind; damages, including on class basis and class actions in Canada are rising, especially Quebec and B.C. Competition Bureau is very interested in digital economy. Drip pricing (adding fees after initial disclosure) is an area of significant interest: StubHub, TicketMaster, car rental companies that charge “environmental” fees. Substantiation of “regular” price claims is also a big issue.

Arochi: Again, Mexico has nothing specific to online shopping, just consumer protection and COFEPRIS (Mexican FDA), which does regulate advertising. Suspended 34,000 webpages during pandemic of people trying to publicize products that are health-related or make health claims. Permits for certain products are required in advance: health related, supplements, food/beverage, pesticides, alcohol/tobacco. Also new disclosures for high-fat etc. foods with big labels on the front of the package.

Jeff Greenbaum: Don’t assume that online disclosures are clear and conspicuous, even if “everyone is using them.”

Harris: Canada: disclosures can clarify but can’t correct a misleading main claim or contradict the main claim. One click away is likely low risk of regulatory enforcement, but ensure disclosures travel across platforms and ensure consistency in disclosures in multiple places and/or media: that was at issue in recent self-regulatory competitor challenges. This is an issue of coordinating teams that might be in charge of different media.

Arochi: Mexico enforcement is more likely to target different products that become a problem. There aren’t as many cases day by day and that lack of emphasis from the authorities affects behavior.

Lewczak: consider that disclosures need to be fit to medium and consumer’s consumption thereof: disclosure in YT video description may not be enough. Not a lot of US action on sweepstakes. Covid concerns: don’t be tone deaf; giving away cruises, event tickets, and other in person prizes can be risky and generate bad PR. Don’t require physical presence for entry or award of prizes. Do your rules have a force majeure type limit that allows covid-related flexibility? Avoid unintended sweepstakes with attempted charitable giveaways to doctors, restaurant workers, etc.; may require disclosures and charitable registration: Draper James teachers giveaway. Loot boxes are on the horizon.

Harris: Winner of contest must complete test of skill; cases vary on what’s enough, but 4-part, multi function math question with a time limit. You can do it on entry or just for the winner; depends on structure of promotion. Also: no forcing purchase to enter, but can say, “submit an original essay.” Quebec: registration requirements (doesn’t apply below a certain monetary threshold, and to non-advertising promotions like a contest for employees) + French language availability. A minimum disclosure is required in all advertising, adequate and fair disclosure: number and value of prizes and other material facts—entry dates, eligibility requirements, geog. distribution of prizes if any. Can be difficult depending on how contest structured.

Arochi: Interior Ministry and Consumer Protection Agency require permits for some sweepstakes/contests. TV contest for example requires a specific agency permit. Chance-based contests may not need a permit. Division of authority may not be clear so may have to ask both agencies and then pick one to apply to.

Steinman: Lots of US action on country of origin. NPRM, July 2020 on Made in USA claims, codifying current enforcement policy and adding ability to seek civil penalties: need all or virtually all of manufacture, or component parts/ingredients, to make Made in USA and related claims. This can include use of flags, eagles. But can use qualifiers like “made in USA of domestic and foreign components.” “Designed in US” can also work. California has a 5% foreign content requirement. FTC also challenged “Danish cookies” that weren’t made in Denmark.

FTC v. Williams-Sonoma: $1 million penalty and prohibition on unqualified US origin claims without being able to substantiate them. FTC v. Chemence, Feb. 2021: $1.2 million for violation of existing order, highest monetary judgment ever for Made in USA case. Made in US: final assembly/processing and all significant processing in the US, and all or virtually all ingredients/components are made/sourced in the US. Assembled in US: product is last substantially transformed in the US, its principal assembly takes place in the US, and US assembly operations are substantial.

Harris: Made in Canada standards are similar: last substantial transformation in Canada; at least 51% of total direct costs of producing/manufacturing occurred in Canada, and accompanied with appropriate qualifying statement (e.g. made in Canada with imported parts). Moose Knuckles parka, 2016, lacked qualifying statement (made with Canadian and imported components); settled for $750,000 donation. Product of Canada: like made in Canada, but all or virtually all of the total direct costs (98%) must be Canadian.

Arochi: Mexico has one of the highest numbers of Appellations of Origin; more than 8 processes for obtaining certification for GIs. Hecho in Mexico is a certification; must be (majority) produced in Mexico, not precisely corresponding to AOs or GIs, but permit coming from Mexican government.

Greenbaum: Environmental marketing: Little FTC enforcement but some states have enacted more stringent requirements or made Green Guides into enforceable rules. Mattero v. Costco: class action over Costco’s “environmentally responsible” claims for detergent: were claims sufficiently qualified/were other benefits communicated: court denied motion to dismiss. New administration and revision of Green Guides may be an opportunity for FTC to change its approach.

Harris: Canada is similar; no specific green marketing laws, just Competition Act/provincial statutes. Federal guidance on green claims like recyclable exists, and self-regulatory code/guidance specific to environmental claims. Ongoing consumer class actions regarding pesticide in supposedly “organic” medical cannabis. All 2020 self-regulatory consumer complaints were upheld, including against a joke about benefits of saving water, because water scarcity is a serious issue and implication that product could help was found misleading—humor, puffery defenses rejected. Also home fragrance claimed to have “natural” ingredients—some ingredients were natural, but no evidence that all scent components were. Exaggeration of environmental benefits also were challenged. Grain Farmers of Ontario: depicted farms and farmers under stress, food supply shortages, empty grocery stores: condemned as inappropriate fearmongering.

Arochi: Also enforced by consumer protection agency (PROFECO) and COFEPRIS. CONAR is the self-regulatory body.

Taste and cultural concerns:

Lewczak: BLM and #MeToo—but not clear that any regulator or self-regulator will do anything. Major TV networks have their own guidelines against violence, antisocial behavior, oversexualization, stereotyping. Third party organizations also complain: PETA for animals, MADD for alcohol, other rights groups. Frida Mom’s ads showing reality of postpartum recovery rejected from 2020 Oscars for being too graphic—at least get some PR benefit from that.

Harris: significant Canadian regional differences. Claims likely understood more literally by regulators. Supreme Court of Canada uses the “credulous, hurried and inexperienced” standard. Can’t demean, denigrate, disparage: one complaint can bring you before Ad Standards. Canadianisms to watch out for: mostly metric except for height and weight of people; Celsius for weather. French exists outside Quebec. Spelling is different: colour, behaviour, honour, centre, etc.

Arochi: Spanish is the official language. Regional differences are significant; a federation with 31 states and Mexico City. 10th most populated country in world, most Spanish speakers. Measurements are always metric/Celsius for weather. Can start claims before consumer protection agency without disclosing identity, which allows competitors to bring claims strategically.

Covid enforcement

Steinman: FTC recorded more than 130,000 complaints in first half of 2020; issued more than 300 warning letters with 95% compliance rate; has brought some cases against covid treatments. Even Purell received a warning letter. Also price gouging cases. Quality King raised prices for Clorox etc several times and was forced to disgorge profits + penalty; 3M has also been active against mask resellers (or counterfeiters). Privacy is also a hot topic: CCPA in California is now effective [or as Eric Goldman might say, it’s in effect]. First class action under this has been filed, against Ring (plaintiffs include people who were hacked which they found out when someone talked to their daughter).

Harris: Canada is seeing new rights, Consumer Privacy Protection Act—against automated decisionmaking, deidentified data; data portability/erasure; Quebec is also updating his regime.

Arochi: New food labeling law in Mexico, against use of cartoons on foods with excess fat etc. Black stamps on products that qualify; also new guidelines on medical marijuana.

Monday, February 22, 2021

WIPIP SESSION 9.B. — Copyrights

Peter Lee, UC Davis School of Law

Autonomy, Copyright, and the Structure of Creative Production

Theory of the firm would suggest more consolidation within the firm in creative industries than exists. But creative autonomy is one reason that people would prefer not to be employees. © also has a role by allowing credible transfers. Big caveat: © facilitates contractually mediated vertical disintegration, but it does not guarantee creative autonomy; bargaining power of artists matters a lot. As digital distribution increases, © will still play an important role in promoting creative autonomy not by facilitating vertical disintegration but by facilitating top-down vertical integration, bypassing traditional intermediaries. But power disparities will continue to matter for creative autonomy.

Derek Miller: Historically, where does © affect the firm? How do you show the causal story? Not all works are vertically disintegrated—the Marvel Universe is horizontally structured, controlled by WFH. Actors are disintegrated from the Hollywood system they used to live under but have basically no © power—so how do they fit in?

A: don’t have much historical lens. Some other work suggests © leads to greater autonomy. Composers may have broadened composition styles in response to ©/market participation. [In chat, Derek Miller finds those studies unconvincing; © control by composers was difficult/complex, and they built other forms of patronage, often by subscription.] Disney is an outlier. Did acquire Marvel, which started independently. Actors: Justin Hughes has a really nice piece on actors’ ©able contributions, but they don’t often leverage them to enhance autonomy. There are other factors to autonomy, including powerful guilds that can serve that function.

Eric Goldman: consider the entire distribution chain and what’s going on in terms of vertical/horizontal integration in each element. YouTubers: distributor/author relationship is entirely different than old model, and not clear © is the driver.

Jessica Silbey: Consider whether Tasini expansion of author rights led to more or less dis-integration. Different ideas of how private ordering works in © may affect the story.

Betsy Rosenblatt: consider, e.g., how over the top TV services are affecting industry structure. Relationship to social justice? Has a piece on Nipsy Hustle and ©--creative autonomy piece would fit well into that, particularly for musicians in the age of the 360 deal.

Lisa Macklem: Consider foreign distribution as well, and Lemley’s piece on how Disney is creating new scarcity for the first time in a while.

Giovanni Maria Riccio, University of Salerno (with Federica Pezza)

Conservation and Restoration of Street Art: Striking the Line Between Protectable Common Goods and Inadmissible Musealization of Urban Spaces

Art in public spaces: Not “public art” a la totalitarian regimes, but works in public spaces that are freely accessible to the public regardless of the form of expression. Site specific, connected to local communities, with political or social meaning. Questions: who owns ©? Who owns the work? (Options: owner of the support, e.g. the building; the commissioning party; the municipality; the people who “live” the work?) What are options for conservation, restoration, and preservation? Should consider public space art, in some circumstances, as a common good, with ownership interests at least in part in people who live in the area. Focus on the work and its meaning more than on the subjects and their rights.

Pezza: Civil law legal systems don’t require fixation; UK CDPA requires works to be “recorded”; US requires fixation. Edge cases: makeup, assemblages (Oasis cover photo shoot case), carved ice. UK has a closed list of subject matter; you can’t protect something that isn’t on the list. The assemblage of objects in Oasis—difficult to ID what the subject matter was.

Unclean hands? European theory: Commission of unlawful act [like placing art w/o permission] may not result in loss of patrimonial benefits deriving from exploitation of the work. Failure to grant © would sanction the author 2x, in addition to the typical penalty for the crime committed. US may apply unclean hands: Villa v. Pearson Education (N.D. Ill. 2003). But practical differences may be narrow.

Riccio: Consider Convention Concerning Protection of World Cultural Heritage, UNESCO. Intangible cultural heritage includes artefacts and cultural spaces associated therewith that communities, groups, and in some cases individuals recognize as part of their cultural heritage—should not be excluded from access. Is VARA the only possible solution? Time consuming for owner, transaction costs are moved on owner though they didn’t commission the work; often not easy to find author; all choices in authors’ hands. Proposal: before proceeding with destruction or alteration of work, owner should communicate to public authority which should have a period of time to decide whether the work should be protected or not. Silence should be consent. Decisions should be made by experts, art curators, artists, local residents. Public calls for street art made by public entities should include information about conservation/restoration.

Zvi Rosen: reminded him of riparian rights—not at all what you propose, but might be interesting comparison.

Justin Koo, University of the West Indies, St Augustine

Protecting Works of Mas – Contemplating the Protection of Carnival Costumes

Are Carnival costumes w/in scope of ©? “King” costumes are the most elaborate and fanciful. More typical, esp. for women: a swimsuit with decorations attached; can get more elaborate with feathers and design elements. Crosses the originality threshold in many cases. But is it the right type of subject matter for ©? © attaches without registration and endures for much longer than design rights. Star Athletica: can it be conceived of as something other than a costume?

Tyler Ochoa: Thinks that these were probably easily registrable even pre-Star Athletica because of nonfunctionality. [But is there separability?] But what is the problem we’re trying to solve here—what harm will happen if we don’t protect these costumes with ©? Not sure he sees a huge problem.

A: He’s interested in whether it meets the standard, and also whether it would create a problem with future costumes/a licensing culture.

Rosenblatt: worth asking who © would benefit, which might not be anyone in Trinidad—the risks you discuss seem greater than benefits. Enforcement becomes a problem when it contradicts a history/culture. Would also be interested in what the cultural norms are: are there anti-copying/divergence expectations? Are most of the producers doing individual hand made works or are there big commercial producers?

A: it’s all decentralized, independent designers and creators. Every year there are disputes, but never any litigation.

Rosenblatt: shaming based? Yes.

A: also note that with the Stormtrooper Lucasfilm decision in the UK, the US approach is not guaranteed.

Derek Miller, Harvard University Faculty of Arts and Science

On Typographical Copyright, with Examples from Modern Drama

Typography includes layout, spacing, font; format is physical like book, ebook. Typographical variation: headings, italics, small caps, even the numbering of a page. Experimental scripts have even more variation. Plays that are expansive in typography often involve author specified layouts, that are reproducible in other formats. A “spell” by Suzan-Lori Parks; is “elongated and heightened (rest) … has a sort of architectural feel.” The spell involves headers with character names and no dialogue, repeated, e.g. Lincoln/Booth/Lincoln/Booth/Lincoln/Booth with each name on a different line—but if reproduced incorrectly they can give the wrong impression. Plays often circulate in different editions—reading editions, acting editions, etc. Very few publishers print in all these formats. By defining layouts, publisher can affect reception of a play. Modern ereaders can strip away typography/allow individual readers to configure for their preferences. What should a typographically conscious playwright do? Can we reinvent IP norms to support their artistic intentions. Should permit some typographical fluidity as texts change meaning but also allow authors to specify. HTML/CSS can be a model—adaptable but typographically conscious. CSS allows reintepretation of values such as distance b/t elements while retaining the relationships among different parts. © currently focuses on html only, text of the work. But we can protect a work as CSS too if it’s describable in an abstract, reproducible form like CSS.

Eric Goldman: personal passion, emojis, might play into this. Does PDF solve this by allowing publisher to control display? It does take things away from the reader. Goes to some of the underlying Qs about who gets to decide how they consume the content. It’s ePub format that allows users to customize, so maybe there are some works that shouldn’t ever be in ePub.

Rosenblatt: selection coordination and arrangement is already ©able—maybe no change is needed.

A: has no examples of assertion. But typography can be entire content of expression—imagine a script that is just five versions of the Gettysburg address with different emphases each time. [I wonder whether that’s actually about the typography; I would consider the typography the fixation of the decisions about which words to emphasize. But maybe my definition of typography is too constrained!]

Annemarie Bridy, Google & Yale Information Society Project

Testing the Server Test: Embedded Images and the Changing Scope of Online Public Display

Troubling developments in case law. Server test was adopted in 9th Circuit in 2007. The analytic challenge: what the user sees and what’s going on under the hood are very different things. Internal v. external perspective: how should the law see it? Server test is internal perspective.

The Leader’s Institute v. Jackson, Texas 2017: departing employee, messy case; © counterclaim alleging that TLI “framed” Jackson’s company’s whole website, making it appear that content at Jackson’s site originated with and belonged to TLI. TLI sought sj in reliance on server test. Court disagreed: on the facts, Google just provided links, and the user was “essentially navigating to an infringing website”; court was troubled by the framing being intentionally misleading, as opposed to being clear that the content didn’t belong to Google. This is weird b/c the conduct under the hood was the same. On the law, the court thought that causing someone else’s content to be visible “on” a website could be public display even when the transmission originates from somehwere else.

Higher profile: SDNY, Goldman v. Breitbart, involving an embedded tweet containing a photo copied w/o permission from Snapchat. Subsequent SDNY cases involve Instagram embeds: Sinlair v. Ziff Davis (now settled), McGucken v. Newsweek, Boesen v. United Sports Pub’ns. Either followed Goldman or didn’t reject it (e.g. Ds didn’t even rely on server test in the first two and in Boesen they won on fair use). Instagram has now said that its terms don’t provide sublicense for embedding.

Free Speech Sys. v. Menzel: InfoWars (run by FSS) ran a post about Hungry Planet, featuring nine images from p Menzel’s book. Embedded from a website that was hosting and diplaying them with Menzel’s authorization. FSS filed a declaratory judgment action seeking a declaration of noninfringement—in the 9th Circuit, but the court found both factual and legal problems w/ FSS’s reliance on the server test. Even if the server test applied, wasn’t clear InfoWars wasn’t actually hosting the images. Legally, there are cases from other circuits refusing to apply the test outside the context of search, and FSS cited no 9th Cir. authority applying it beyond search. Not good! Similar issues in Europe, with neighboring right for publishers now putting pressure on ability to link to content on 3d party websites.

Wu: so you want to do only secondary liability? How would you deal with the Jackson situation?

A: that would be non actionable under ©. There might be other theories, but not ©.

Wu: and these other scenarios? Normally putting a copy online with permission doesn’t make it freely copiable.

A: But the Ds here aren’t copying! The Q is about in line linking, not copying. EU says it’s “communication to the public,” and there are Qs about what constitutes the intended public. So they ask whether it’s a different or new public. We used to assume that something on the non paywalled internet was for the public as a whole. But these cases have a different flavor. Consumptive uses do feel different.

Sean Pager: Another potential distinction: the link embedded in a way that the photo pops open immediately, no secondary click required. Not like an email link that you have to click on to load a photo (though different email providers do this differently).

A: but that’s the same thing as search.

Pager: but the user does the search and then clicks on the thumbnail to load the inline image. In Goldman, the user doesn’t direct anything; something just comes into their Twitter feed.

A: That’s the same as in Aereo. [The user chose who to follow]

Peter Mezei in chat: In VG Bild-Kunst, the AG focused on “automated” access, no click required, for embedded content and opined that such uses needed authorization. Awaiting eagerly ECJ judgment.

WIPIP SESSION 8.A. — IP Theory (partial)

Ester van Zimmeren, University of Antwerp

Exploring Trust Building Mechanisms for Specialized Intellectual Property Courts

CJEU patent court hasn’t entered into force, but there are local and regional bodies. Question: will users trust a new court? Trust in the court and trust in the judges are both important. Trust implies uncertainty about future behavior. Trust means accepting vulnerability based on positive expectations of intentions or behavior of another. Relational and dynamic: A trusts B to do Y. So we need to know who has to trust to think about building trust. (Quote: will a business trust its crown jewels when it doesn’t know the court/the judges?) A leap of faith; distrust is not necessarily bad. Boundary-spanners: persons who interact on behalf of the organization with the outside world: the judges? Reputation based on case-law national level—including education, expertise/experience with patent cases, career path (career judges v. recognition judges, generalized v. specialized judge, etc.), management of litigation process, shared values.

Andrew Michaels: Everyone likes to complain about the Fed Cir, but they are doing their best and he thinks that’s doing ok. Maybe should invite more judges from other countries to sit in and give new ideas.

A: Japan model: rotate in and out of specialized courts. District judges can also temporarily sit in on IP high court. Rotations are usually pretty fast but they can stay longer in the IP courts (rotation is throughout the system)—interesting balance. JPO also participates—interesting but are there rule of law issues?

RT: Consider comparison with Facebook Oversight Board (creepily called the Oversight Board)—because it’s not a governmental organization it has an extreme relationship to building trust as an adjudicator. Current controversy over judges talking to journalists.

Glynn Lunney: when Fed Cir was constituted they took the judges from CCPA and immediately adopted the old precedent as a way of transitioning.

Margaret Chon: who are the stakeholders? Some of the quotes suggest that businesses are the ones who need to trust, but if the key were the public interest, then the question of what the relevant trusting community was would be different.

Lunney: Why is trust important? Trust or not, you had no choice but to litigate in front of Fed Cir.

A: because in the EU you do have choices. If you choose unitary patent, you have to go through the unitary court but you can also use the traditional European patent systems—and then choose the unitary patent court, if it ever comes, or choose the traditional parallel litigation opportunities.

Lunney: will there be a race to the top/race to the bottom? Compete for patent litigation?

A: that’s a big Q in the debates!

Michael Carroll, American University Washington College of Law

The Right to Research in US Intellectual Property Law

Context: reframing exceptions and limitations, including subject matter and scope limits, as user’s rights. Connected to AU’s work on user’s rights in int’l and comparative law. Focus on basic and applied research in all fields of inquiry, including humanities—research intended to promote progress of science and useful arts, commercial and noncommercial.

Right to research is not a single reified legal right, not a single rightsholder. Drawn from a variety of legal sources—int’l (not in this paper’s scope), constitutional, statutory, private ordering/open licenses. Normatively: variety of limiting doctrines loosely cohere into a whole greater than its parts: user’s rights are enabling provisions and positive goods in IP. Persuade courts to keep larger whole in view when interpreting and applying these doctrines; reform doctrines that have been interpreted too narrowly like experimental use in patent. There are other policy concerns about research such as privacy, human subjects rules.

Not just a right of researchers, but libraries, archives, and other intermediaries need to rely on it to collect materials and organize them as research inputs and distribute them as research outputs. Likewise, open access is part of the greater whole.

Copyright: incomplete list: ideas/facts/other §102(b) limits when applicable; fair use (reverse engineering, text and data mining, other forms of copying); §1201 (too-narrow security research exemption; possible First Amendment limits).

Patent: incomplete list: subject matter limits (abstract ideas, products of nature, natural phenomena); other eligibility limits (enablement, written description as limits on patenting early stage research); non obviousness and novelty; disclosure function; experimental use; revisit need for fair use in patent.

Trade secret: incomplete list: subject matter limits—readily ascertainable/collectively known; scrutinize whether NDAs in widely distributed research-relevant info are sufficient to maintain secrecy.

Margaret Chon: research for self-fulfillment? Minaj v. Chapman, which RT suggested in chat was “experimental use comes to ©,” might be about creative self-fulfillment as well as ultimately commercial. [Lunney responds, fairly enough, that this characterization might limit © fair use to the overly limited patent definition.]

A: He definitely doesn’t want a commercial/noncommercial divide categorically. He wants to tell a users’ rights counterstory focused on increasing knowledge. [But doesn’t that require you to take a stand on what counts as knowledge? Is only using big data to create a new historical interpretation within scope? If you (or the library on your behalf—v important during Covid) make copies of a set of individual works and you analyze them and create a new historical interpretation, I assume that counts. So is it fiction/nonfiction that’s the divide?]

Betsy Rosenblatt: Carys Craig has written about the pitfalls of calling anything a user’s right—may want to engage with that. This project seems useful in discussing §1201. Justification for infringement nexus; many proposed exceptions are also for research. Does my big library of TV shows make me a researcher?

A: It could—he sees Minaj as definitely within scope b/c it’s not substitutional copying. That’s the flexibility of fair use: copying for the purpose of research is fair use, but copying for the purpose of just watching the stuff and enjoying it is not. Artists and critics, both getting ready to do something new, are also engaged in research.

Eric Johnson, University of Oklahoma College of Law

An Intellectual Property Fix for Platformer Sales-jacking

Platforms like Amazon and Apple create a marketplace for independent retailers, but also compete on their own platforms. They cherry pick the best and copy them, crushing the independent sellers. What to call this? Information appropriation (Lina Khan) doesn’t seem illuminating. Platform information appropriation? Sales-jacking, like hijacking. [In comments, Brian Frye suggests calling it “competition.”]

Antitrust has been suggested as a solution, but this isn’t anti-competitive; it is anti-innovative. [Isn’t one of the recognized harms of monopoly that it harms innovation?] It’s worth considering this as an IP challenge. The harm is to soft innovation—market insights, product ideas, etc.—things not patentable or ©able. Soft innovation used to be protected by friction, first mover advantage. Frictionless commerce leads to appropriability, so incentives decrease. This soft innovation is important for econ growth and worth worrying about.

Retail data right: prevent market participant side of platform from using data from market provider side: for some period of time?, unless paying a royalty? Sounds like an antitrust enforcement issue, but could be a general retail data right. [using data to do what? Can you recruit other sellers for Etsy by showing that macrame is selling well?]

Contracting/bargains: we don’t want the platform firm to require contracting out from all participants, but maybe collective bargaining/performing rights organization model, PRO model is largely shaped by antitrust [this sure sounds like reinventing antitrust]

Requirements separating market provider decisionmaking and participant decisionmaking, which he acknowledges also sounds like antitrust.

RT: [bracketed comments above] I think this is INS v. AP for Amazon: a quasi property right. Look at the challenges of providing a right only against platforms by looking at the example of India, where Amazon had a variety of relations with big sellers (and appears to have violated Indian rules about vertical separation). The issue of barring only platforms from doing this copying would reduce to an antitrust issue of ensuring vertical separation.

A: Agree that antitrust is also about innovation.

Tyler Ochoa: Thinks this is an antitrust problem; why doesn’t divesting vertically solve the problem? US v. Paramount Pictures: studios were forced to divest theaters: supplier should not own channels of distribution.

Rosenblatt: Not convinced this is a problem. This is competing: how does it differ from ordinary competitive behavior that we think is good for consumers? The reason is the platform has info about sales and pricing that’s harder for other third parties to find. Isn’t this only a regular trade dress/design patent issue; otherwise product-jacking means “the market working the way we want it to”?

A: not necessarily a problem, but risks. No way to appropriate returns from doing the research for, e.g., going to India and discovering just the right jam to import.

Lunney (chat): Can streaming music services make their own content in your regime?

Chon: This is an inequality problem, not (just) an antitrust problem: wealth accumulates in one direction. That’s not an IP problem as such, but Jeff Bezos needs no more money. It’s the small business that needs more structural support.

Lunney: Amazon reaching equilibrium—it is in their interest to have small sellers to make these discoveries, so they have an incentive to refrain from swooping in too quickly. Consider that? May not be persuasive. [Especially given the different incentives within the firm; eating one’s seed corn is unfortunately standard.]

Rosenblatt: Agree with Chon: we should acknowledge that we think this is a broken market where small businesses are being crowded out and frame it not as harm to innovation but harm to development of small businesses.

A: Antitrust today doesn’t care about inequality [though I take the Khan et al position to be that it should] but it at least purports to care about innovation. There are good reasons to believe that inequality hurts overall innovation/growth.

Rosenblatt: It’s also just bad.

Chon: Amazon needs different incentives.

A: historically they bought Zappos and Diapers.com but now they don’t have to do that b/c everyone starts selling from Amazon in the first place and can just take over the products w/o having to buy them out.

Carroll: This isn’t problematic until you hit a certain level of scale—antitrust historically comes in as a circuit breaker—this is the issue w/ Etsy.

Friday, February 19, 2021

WIPIP SESSION 7.A. — Trademarks

Jeanne Fromer & Barton Beebe, NYU School of Law

The Future of Trademark Depletion in a Global, Multilingual Economy: Evidence and Lessons from the European Union

TMs transcend boundaries b/c brands transcend boundaries; even small businesses are often looking beyond borders to other countries. EU is good for study b/c it has a system made of 27 countries with 24 language, 15% of global economy, 450 million consumers. Can help us understand how rights assertion is working in a global, multilingual system.

Spoiler: things are bad. EU TM runs in parallel w/national system. All or nothing: you need to show entitlement throughout EU; if a term is generic in one country, then no EU TM is allowed. EUIPO doesn’t engage in relative grounds review: doesn’t look for confusing similarity; 3d party oppositions are the only check. When assessing confusing similarity in an opposition, one pronounced difference is doctrine of translational similarity (known in US as doctrine of foreign equivalents): mark can be confusingly similar if it translates; it’s common in the EU for people to speak 2 different languages.

Registration can occur w/o use; no examination for use; 5 year grace period for use. TM clutter is widespread.

Registration rate is really high, not surprising given lack of relative examination.

Selection: not more of a pool to choose from in a global market, but less of one, because if a mark means something bad in one place it won’t work for a global branding strategy. Irish Mist ran into this in Germany, where “mist” means manure. Also, mark may be taken in a jurisdiction, which happened to TJ Maxx in the UK, which then had to switch to TK Maxx/Milky Ways varying by jurisdiction. And there’s a limited set of words that are very same/similar across multiple languages b/c of cognates, loan words, onomotopoeia. English is the dominant language in registrations; it’s the language of business.

Studied EU using a bunch of databases; found incredible levels of depletion, worse than in the US despite fewer marks being registered in EU. Most common words are claimed unless they mean something negative, and when we translated registrations into the 5 major EU languages the level of depletion got worse. Likewise, for close similarity, the congestion is worse than in the US. Similar results for pronounceable syllables. Marks are getting longer over time b/c more is taken.

German: it’s only 40% depleted in common terms, but when you account for translational similarity it goes up to 80%. Most multilanguage terms are taken (REPUBLICAN is the one that’s intelligible in all 5 languages that’s not taken; strong meaning makes it unattractive).

Crowding has increased over time across classes. Oppositions are going down over time. Very few companies do most of the oppositions. Compared to 2(d) refusals, just really low. Oppositions that do proceed tend to succeed b/c there is so much crowding. As opposers increase, chance of success increases, until inflection point where crowding is so great that confusion w/any given mark becomes unlikely.

What to do? (1) More enforcement of use requirements to get marks off the register, whether up front or examination after a grace period. (2) Ex officio review. EU does a bad job of putting existing registrants on notice; there are a lot of unrecorded settlements so you can’t tell what’s really going on. (3) Translational similarity should be revisited. We can train consumers; consumers would eventually learn to distinguish translations. (4) Fee structure: should charge more for more valuable words.

Lisa Ramsey: Do EU lawyers care about clutter? In INTA they don’t seem to.

Barton Beebe: There’s no interest at all in increasing use requirements/shrinking use to 3 years by major EU lawyers b/c they tend to represent the big brands. But maybe they don’t realize how bad things have gotten for SMEs especially.

Fromer: more recognition academically; EU classes are broader/cover more things than US registrations.

RT: But can you really train consumers?

Fromer: not convinced that the consumers are translating now—need evidence on that in order to defend the doctrine.

Beebe: consumers could probably be taught about clearly different languages. Translational similarity may be a special case where consumers react differently [v. my example of the UNC and University of Wisconsin cases in the US where the PTO said that consumers had stubbornly continued to perceive the marks as indicating a single source despite over 100 years, in the former case, of uncontrolled use].

Irine Calboli: Single market: freedom of goods means that there’s no way to stop confusingly labeled goods at the border if you’re giving a European market. So the consideration goes beyond TM law/translational similarity.

Barton: Spain gave a national registration to Matratzen for mattresses, even though it’s generic in Germany.

Alex Roberts: Say more about charging more for more valuable marks. How do we do that/does that discriminate against smaller entities?

Fromer: any changes can’t be prospective only or new entrants will be harmed. We have to recognize we’re not starting from scratch. One possibility: whether at initial stage or at renewal, charge more based on some metrics of value such as being multilingual.

Irene Calboli: Interaction with failure to function?

Beebe: The future of the TM system is crowding. The registering agency/system overall in EU has given up on the problem of crowding. So what? They’ve heard the argument: Maybe it’s good to have barriers to entry b/c TMs are just artificial product differentiation. This argument failed in the US/law and econ and might fail in the EU too.

Jake Linford, Florida State University College of Law

An Information Theory of Bad Faith Trademark Use

Intent is crucial to many P wins, but many scholars criticize this as irrelevant to consumers who can’t see the bad faith adoption. Sheff says: maybe both infringement and dilution are proxies for when we think sellers are manipulating consumers’ bounded rationality. Intent may be irrelevant still, he suggests, but Linford says that may not be right. Intent could help us rightsize info to make sure sellers aren’t overly opportunistic. We should care about bad faith. Second entrant should have to account for why it ended up with a mark that is highly similar to an existing mark. Information theory: noise or interference that makes it harder for info to be received as intended.

What counts as bad faith? In some circuits, failure to do a search; becoming closer to P’s packaging over time; intentionally dragging out litigation. Although good faith doesn’t preclude a confusion finding, it should probably work for the D like evidence of bad faith works for P to negate the ratcheting effect. More leeway for good faith behaviors may make the market more efficient for consumers. Conducting a search/seeking advice of counsel should be counted in favor.

Mark Lemley: to do this we need a very clear definition that is significantly narrower than existing definitions. Right now intentional reference to the TM is often considered bad faith. Also: should ask same Qs of P’s good faith: was there evidence of confusion or were you suing from fear of competition?

Betsy Rosenblatt: Model jury instructions are terrible, as are standard proposals. Bad faith is bad, but even lack of bad faith might also be bad; says nothing about good faith! Why do we want balance? The argument is: people who are trying to confuse might be better at it, but she doesn’t think there’s any evidence that’s true.

Carys Craig: Intent may be discounted in the legal articulation, but bad faith may be driving more of the results than we think, neglecting actual confusion considerations. Good faith parties may end up winning anyway for doctrinal reasons.

Roberts: doctrinal narrative that producer is really powerful. Thus if trying to fool, likely to be successful. Thus even if we’re punishing bad faith it coincides with this narrative of producers being likely to succeed at what they do.

A: Henry Smith’s idea of equity as an overarching attempt to police against opportunism.

RT: was going to talk about Smith’s idea of equity but I think it might be why your idea struggles against the multifactor test. In Smith’s idea, bad faith/fraudlike behavior is a precondition to entering into the equitable realm, not part of a multifactor test. If we had double identity + unfair competition, and opportunism of some sort was a precondition for entering the unfair competition realm, then that could work, but Smith thinks that multifactor tests like the one in TM are evidence of an unproductive collapse of law and equity that just creates a big muddle.  

Beebe: bad faith seems to overwhelm a multifactor test cognitively; it’s a bludgeon. Circularity is an issue too, but its presence seems to blow out any other factors.

Calboli: Bad faith internationally/in the history?

Lisa Ramsey: if the underlying subject matter is itself attractive (inherently valuable speech), then the TM owner/claimant is the one who’s free riding.

Brad Biddle, Arizona State University College of Law (with Jorge Contreras & Vigdis Bronder)

Certification (and) Marks – Understanding Usage and Practices Among Standards Organizations

Some mismatch in definition of “certification” marks—some organizations deliberately avoid that term. TM registration much more common than certification mark registration in this space. Many SSOs don’t apply for TMs at all. Conventional wisdom doesn’t match real world practice. For reformers: focusing on certification mark rules won’t matter if most certification happens in TMs. Lawyer-driven? Feeling of greater freedom under TM rules?

Jessica Kiser, Gonzaga University School of Law

The Reasonably Prudent Consumer of Alcohol

Sees a trend of more refusals in alcohol/wine/beer. Some dumb ones; even as PTO recites rule that there’s no per se overlap between beer and wine. A couple of theories: is PTO more likely to find confusion between beer and wine than between two similar wine marks b/c it thinks wine consumers are more sophisticated? One possibility: this is a problem here b/c it is a really crowded space—a beer company might release ten new names a year, even if they aren’t in use two years later. Alcohol has been found related to cigars because people consume them together; Harlequin romance has a wine line so now publishing may be related? Does wine, in fact, go with everything?

Alexandra Roberts, University of New Hampshire Franklin Pierce School of Law

Mark Talk: Making Secondary Meaning

McCarthy: Trier of fact, like lexicographer of modern slang, must attempt to find out the meaning to the consuming public. Yet almost all the evidence they consider is indirect, proxies for understanding.  The assumption is that if the producer puts in the work, it will happen. These principles have been around since even before the Lanham Act—length of use, advertising spend. Yet a lot has changed in those 75 years—internet destabilized active producer/passive consumer binary. Can look in spaces like Reddit to see how consumers are actually using a term: “boy brow” turns out to refer almost always to Glossier makeup product, while “no-poo” refers to general practices of not using shampoo/products that people do use instead and not to the registered mark for a particular non-foaming cleanser. Celine used mark talk on the internet to show secondary meaning for its robot face bag.

Is this a one way ratchet? 6th Circuit, in case about DJ Logic, said that FB fans, likes, followers, celebrity followers could have substituted for sales evidence (but it wasn’t). Astroturfing is a risk. Thinking about how to formalize this.

Eric Goldman: relatedly, weaponization is a risk: get people to talk about a competitor’s mark as generic. Google results may be harder to game than the direct evidence.

Lisa Ramsey: Might also shed light on failure to function!

Linford: project to identify fame: large corpora and data analysis? That’s what you’re trying to do too. WIPO often considers internet results to be sufficient evidence in domain name disputes; maybe that could be a model.

Lemley: this will be more complicated for genericness b/c a number of uses are likely to be ambiguous. Knows of existing ML project: build a context engine to parse the use of terms that are possibly being used as a mark v. generically.

Calboli: maybe many of these shouldn’t be registered anyway—generating new rights that might not be worth protecting. Especially with trade dress.

A: maybe should focus more on word marks. [Hmm, I think it might actually be more useful for trade dress, but that might depend on your priors about how likely it is that people really recognize various supposed trade dresses.] But wants to make space for niche uses: can be a well-known mark among consumers of particular product.

RT: preservation through transformation: if we do this because it gives us more direct evidence than we could easily acquire before, secondary meaning will become a different thing than it is now. That is neither good nor bad in itself. Will also accelerate quantification (isn’t it kind of wild that 75 years after the Lanham Act we have no idea whether secondary meaning has to be the dominant or most common meaning because we so rarely have direct evidence?). Compare to what happened with rise of control arms in surveys and effect on what percentage is sufficient to infringe—unrecognized by courts, they increased the standard by looking at confusion net of control; also what happened in 1-800 v. Lens.com where clickthrough rates substituted for a survey.

A: Ideally it gets closer to what we have said it is all along, tied to the goals of TM law.

Thursday, February 18, 2021

WIPIP SESSION 6.A. Competition and Antitrust

BJ Ard, University of Wisconsin Law School

Competition With and Without IP in the Video Game Industry

Negative space; a number of lessons. Character protection is meaningful: Pac-Man/combination of elements. Patents can cover some elements/game rules, but most gameplay won’t satisfy novelty. Trademark, right of publicity. Trade secret is also one way of going after clones when the clones are produced by former employees. There aren’t so many other ways to prevent copying; there is only limited protection for games/rules under ©. Thus, a game called Threes was overshone by 2048 which had the same mechanics but a little easier, cleaner interface, marketed better: no litigation b/c Three’s developers could see there was no case. Similarities in golf games came from life, not copying one. Menus, point bars, selection screens are scenes a faire, as is “save the princess” trope.

Hard to copy when a game costs millions to make: graphics, marketing, network effects are hard to copy; feedback loop where the next Call of Duty will sell well.

Independent developers like Three are vulnerable; Zynga became notorious for this kind of copying.

Strategies: (1) Themes that aren’t widely popular—depression, winning by not fighting; horror is a niche. (2) Alternative funding mechanisms like Kickstarter or tip strategies.

Zvi Rosen: DRM seems to keep this from being a negative space. Steam, other platforms use DRM extensively including to sell hardware.

Victoria Schwartz: Some video game copying issues do get resolved before litigation—so there is enforcement that doesn’t show up in public.

Giuseppe Colangelo, University of Basilicata & Stanford Law School

Enforcing Copyright through Antitrust? The Strange Case of News Publishers Against Digital Platforms

Digital platforms seem to expand the market at least as much as they substitute for news. But concern is that Google/Facebook’s bargaining power means they take too much advertising/lack transparency in advertising.

European way: Twisting © through article 15 of the SDM: additional layer of © to encourage cooperation b/t press publishers & online services. From an economic perspective, critics say there’s no empirical evidence in support of free riding narrative and no proof of a causal relationship b/t introduction of neighboring right and increase in revenues for press (German and Spanish experience). Legal perspective: critics say overbroad (any digital use of insubstantial parts that don’t meet the originality requirement) and contentious definitions (“press publication” and “very short extracts”). French competition authority and Google are fighting about title/headlines: do those count as extracts?

French antitrust case: French law required remuneration for reproduction and communication to public of press publications in digital format. Google said it wouldn’t display extracts unless publishers set a zero price. French Competition authority said Google had to negotiate because it has a dominant position in general search. But both the domestic law and EU Directive create a right to prohibit use of protected content, but do not establish a right to obtain remunderation or to require the conclusion of license agreements for use of the protected content. Even antitrust law cannot transform a wish into a duty. Paris Court of Appel nonetheless affirmed the order to negotiate in good faith with press publishers, and Jan. 2021 announced agreement w/French publishers.

Outside the © box: US: hot news doctrine, fair use, antitrust suit against Google for digital advertising. UK: ex ante code of conduct + investigation into G proposals to disable third party cookies. Australia: mandatory bargaining code with binding final offer arbitration process as backstop. In Europe, hyperlinks aren’t covered, but in Australia, even hyperlinks are covered. Canada: rumors of rules to force digital platforms to pay news outlets.

Conclusions: ongoing debate about role of competition policy. EU © approach has limited effectiveness; French approach forces negotiation in shadow of competition law. Regulation as a more coherent way, but potential unintended consequences. Other ways to support journalism might be better, not through IP/competition policy.

RT: Contradiction with monitoring/anti-abuse initiatives: what happens if FB concludes that a publication is an arm of the Russian government? What happens if this turns into ad fraud? Interested that you mentioned the digital advertising antitrust suit b/c that claims that ad prices are too high—press might make less money if it succeeds. Factual questions: If G were broken up, would there be any argument for the publishers under French competition law?  Does Bing or DuckDuckGo have any of these agreements? Or are the French publishers now interested in maintaining G’s monopoly because that’s the only reason agreement is required?

A: Lemley’s recent paper on conflicting goals of regulation says same things. The regulators are pursuing conflicting goals! Google in France will accept the deal forced by the French competition authority; this will create trouble for Facebook. Probably FB’s reaction in Australia is a way to anticipate reaction in Europe, b/c there’s discussion there about a mandatory code of conduct in the digital sector, which would be another proof that the ancillary right itself has no effect. Some Europeans are trying to add the Australian “solution.”

Nikolas Guggenberger, Yale Information Society Project, Yale University

Essential Platforms

For transportation, we have regulated modes that are the only way to reach customers (bridges, railroads). The app store is the new version of that. Certain digital platforms have become gatekeepers for commerce, and this strangles innovation. They extract monopoly rents and destroy competitors. They can behave in that manner b/c network effects shield them from effective competition.

Learn from the past: essential facilities doctrine, establishing access rights for competitors.

First, we should revive this doctrine as applied to platforms, granting downstream competitors access where the market doesn’t have reasonable alternatives; bar discrimination and self-preferencing; guaranteeing horizontal interoperability. Second, expand the doctrine and upend the platform monopolies entirely by ensuring horizontal interoperability—competing platforms can reach customers on Amazon, competing app stores can reach customers on Apple or Google Play, competing social media can reach customers on FB. Like the telephone network works today, where AT&T customers can reach T-Mobile customers. Analogy to optimal design of IP rights: we create monopolies to incentivize innovation, but those exclusive rights are limited in time and scope. This allows follow-on innovation which is existential for economic progress.

RT: still have questions for abuse; isn’t this pro-counterfeiting, especially when many market participants are overseas and not otherwise subject to regulation—we want the sites to screen those out. You want bridges with guards.

A: Wouldn’t require platforms to sell whatever they’re offered. Business justifications for denying dealing would still exist. Safety concerns or other legal violations would be relevant. But you can’t discriminate to safeguard monopoly profits/position.

RT: But does essential facilities doctrine really teach us anything about how to resolve conflicts about who should get to sell?

A: would not be that interested in federal rules of platform procedure, but the decision Amazon makes should be reviewed judicially. Whether it allowed due process wouldn’t necessarily help. [One of things Amazon gets criticized for is giving its partners more deference in defining/policing unauthorized uses, so I don’t think we can completely separate “anticompetitive behavior” from “kicking people off for bad content”—indeed that’s the issue with the recent 9th Circuit case saying 230 doesn’t apply to allegations of anticompetitive conduct. And the massive House report complains that Amazon fails to police against counterfeits, and immediately thereafter complains that Amazon kicks too many small sellers off for selling unauthorized products.  It’s possible that both are true, but solving both problems is harder than solving one of them.  It may well be that the sorting costs are worth it, but I think more needs to be said about how that would work.]

BJ Ard: How do you make it more concrete? Delisting apps due to conflict between Apple and Epic is easy. But FB interoperability sounds hard. [Do you really want it interoperating with Parler?]

A: various possibilities do exist for transferable information, e.g. services building on existence of bank account without coordination w/bank.

One of the challenges is that a small company might not be able to do anything with the raw data—this is why they need access to Amazon’s tools.

[In chat I asked about whether we want FB to interoperate w/Parler; his answer was yes, but FB can apply its own content moderation standards exactly as they apply to content originating with FB.]

Liza Vertinsky, Emory University School of Law

Artificial Intelligence, Patents and Competition

Thesis: ML along with control over large data sets will end up increasing concentration of and control over innovation processes in ways our current regulatory system is not equipped to deal with. (Sorry, not good with patents.) To those who have, more will be granted—the predictions will get better with more data, increasing the advantage of business.

Joy Xiang, Peking University, School of Transnational Law

IP Licensing, Antitrust Law, and Access to Essential Technologies

What are essential technologies? Pharma tech (Doha Declaration), cleantech, digital platform technologies. Global South is a net importer of such tech and this allegedly contributes to exploitation. Available mechanisms in antitrust and IP: abuse of dominant position (refusal to license, essential facilities doctrine, excessive/abusive pricing); IP misuse doctrine; int’l or regional exhaustion/parallel imports.

Refusal to license: US makes actionable under exceptional circumstances; usually no obligation to license from IP owner. EU is similar. China says there’s no obligation to license, with valid justifications. Essential facilities: US hasn’t recognized IP as essential facilities, but EU and China are open to using the doctrine and to considering IP as essential facility. South can learn from EU/China on abuse of dominant position.

Christine Haight Farley: this requires a very well functioning administrative state to provide access.

WIPIP: PLENARY SESSION 3 — Why American WIP’ers Should Care About International Law

Jerome H. Reichman, Duke Law School, Duke University

Until 1994, there weren’t many options when a nation didn’t comply with IP treaties: complaints and retaliation against that country’s nationals. Then came TRIPS. Arbitration, including damages, became available; winner can also collect damages via tariffs. Hasn’t functioned recently because minimum # of judges lacking due to Trump but Biden should fix that. New change: compulsory patent license for export to meet the needs of a country that needs the product (vaccine) but can’t make it. Threat of compulsory license for export can often be enough. Regional pooling as a possibility using TRIPS flexibility.

Jane Ginsburg, Columbia Law School, Columbia University

One can’t separate out questions of local import from questions with international dimensions: was true before internet, even more true now.

There’s a caricature of US v. French approaches to ©. But going back to the sources, it’s much more complicated in motivations for ©--a lot of utilitarian motivation in France and a lot of natural rights/ “you create it, it’s yours” sentiment in America. That played out in case law as well.

Common wisdom was that printing privileges were about publishers and incentives, not creativity. But Roman (Vatican) privileges were more granted to authors than printers, and motivations expressed in requesting and granting them were a mixture of incentive arguments, effort arguments/anti-free riding arguments, and sentiments like “creativity should be rewarded.”

US termination system and EU contract regulations both try to deal with authors’ vulnerability/failure to anticipate future forms of exploiting work.

Rochelle Dreyfuss, New York University School of Law

Current regime started developing when nations were convinced that interconnection would lead to wealth and peace, but Global South has not become more wealthy; strong IP has contributed to inequality; we do not have peace; Brexit and US rejection of TPP/implosion of WTO dispute resolution, which actually began under Obama. Why move into a field that’s unraveling? Pandemic has highlighted unique opportunities in this field. Current regime encourages countries to engage in parallel play—rights in one’s own country—but it’s a very territorial system. Covid shows territoriality makes little sense. Need cooperative play/research/development; also should not ratchet up protection but should focus on access and equity. IT/interoperability; cybersecurity; other issues also require international treatment.

Scholarship wise, international comparisons provide important insights, and can be very useful in teaching students as well. Also: IP owners tend to take one win and try to export it, so you see what is going to come next.

Jorge Contreras, S. J. Quinney College of Law, University of Utah

Students often treat the results of court cases as the only possible way the doctrine could have developed, and outside-US cases show that’s not true. Lots of patent examples, from working requirements to different competition law interface. Knowing the alternatives helps you argue more broadly both for policy and for individual case outcomes.

Scholarship wise, you can become “the” expert even on a small area—your views are important outside the US because you are often the only US lawyer who comes to Shanghai, Bogota, etc., which magnifies your views and enables you to disseminate your ideas. Outside US conferences: submissions can be harder because their requirements are often more rigorous for methodology, quality of abstract, etc. but it is worth it. Teaching LLMs is also a way to reach out to foreign lawyers. LLMs can be high ranking officials in their own countries; they have careers. International IP blogs like IPKat and SpicyIP are read around the world: read it, write for it. There’s an appetite abroad for those interested in sharing their knowledge; surprising how few US academics do it.

Moderator: Irene Calboli, Texas A&M University School of Law

Love and hate for US requires navigating some sensitive issues. Open access is one way of reaching people we would otherwise never reach.

Reichman: important to address problems w/US approaches.

Discussion of use of foreign precedents, much more common in other countries than in US. Contreras suggests it’s legislators and agencies that are the real laggards.

Ginsburg: Especially good for US students to learn that (1) we aren’t completely on our own; we do have rules (even if US often doesn’t care to follow them) and (2) there are often other ways of doing things.

Contreras: our students need to know that their practices will have international issues; among other things, with eBay the US is a huge outlier in patent remedies, which is why all these cases are going to be brought in Germany!

Ginsburg: clients who have websites have to think about non-US law.

Reichman: Harmonization got a bad name because it was ever upwards; we have to think about compromise to protect the public interest.

WIPIP SESSION 5.A. — Copyrights

Ned Snow, University of South Carolina School of Law

The Tension Between Science and Creativity in the Copyright Clause

Fabrications: clearly creative, but contrary to the meaning of “science.” Deceitful expression might provide knowledge about deception. CSAM/revenge porn: no benefit to the public (evidence of crime is not purpose of creation). If private originality suggests granting protection but public knowledge doesn’t, which should prevail?

Jake Linford: Defining falsity is the challenge: is LoTR false?

Sean Flynn: relevance of “arts”?

Snow: that’s for patents; though colonial statutes clearly cover the liberal arts, the use of “useful” distinguishes the Constitution from other formulations. Tam & Brunetti create issues for “discrimination” among types of content, but if Congress wanted to come in and distinguish expression that necessitated a violent crime that could work.

Stefania Fusco, University of Notre Dame Law School

The Enduring Value of the International Copyright Harmonization: A Response to Professor Asay

Asay sees Europe as redistributing/attacking mostly US tech cos. CDSM is super-Berne, driving regulatory lock-in. Argument: given the pushback CDSM has received in Europe, this might be an opportunity to harmonize down. Compare to Trump rollback of environmental rules.

Are overall US interests harmed? It’s rent distribution to © owners, including US © owners. However, the new link tax could be subject to national treatment and Art. 17 is. Of course US companies could move to the EU to take advantage. Royalties may offset US losses, hedging US against risk of competition in EU market. [Not sure who the competition is going to be from—some previously unknown source of tech innovation?] The US has benefited a lot from harmonization of IP; reversing the process would cause the US to lose credibility internationally [that ship may have sailed]. Not clear ISPs need help from © to stay innovative. But serious concerns over freedom of speech from Art. 17: those are the best argument for the need to harmonize down.

Glynn Lunney: should be honest about net loss to US b/c of ISP dominance. Also note we’ve had more patent harmonization, to compare.

Sean Flynn, American University Washington College of Law

The Right to Research in Copyright: A Global Comparison of Statutory Limitations and Exceptions

How open are © exceptions around uses of whole works for facilitating research? We distinguish limitations and exceptions: defining use as not w/in scope v. exceptions to scope; focus is latter. Most expansive: open exceptions, as well as specific research exceptions that have the reproduction and dissemination right in them, like Germany; next tier: countries that only offer reproduction exceptions, not sharing, but for broad research purposes. Other: authorize institution and not person or right version; limit types of works (Hungary only allows books to be copied in full by hand or w/typewriter). Red: no exceptions for whole works at all; just a quotation right, and text/data mining is essentially prohibited. Created a map of the world, which doesn’t break down on common law/civil law lines. Essentially everyone has a research exemption, suggesting it’s part of the basic fabric of ©. Oceania: most open region (though N Am, dominated by Canada/US, also); Europe: most diverse; Latin America: most restrictive.

Akshat Agrawal: Paywalls affect how these exceptions work in practice.

A: The research was looking only at the statutes, and not even at interpretation—just took the words literally, so it’s possible that interpretations are less liberal (when a statute authorized use they presumed that meant all uses). See some noncommercial use restrictions—Asian countries have been moving in that direction, maybe based in autonomy justifications. There are patterns but nothing complete.

Lunney: are these recent v. historical?

A: Many of the most open countries have laws that are old. Not all! The new laws are all over the map in breadth. France has a new and tiny exception; Germany has a new and bigger one; the US has fair use. Many Asian exceptions are newer—Thailand recently said that anything that complies with the three-step test is lawful. Singapore is changing every five or six years. It’s hard to have one story about time, whether that’s newer is better or that colonial powers determined path evolution. Speculation: more amendments in the last 30 years = more open, but hasn’t checked that against data. Another project: the more open regimes are, the more published research a country produces, even controlling for other variables.

Peter Mezei: Note that Hungary just announced new amendments, including for libraries to reproduce/disseminate w/in closed environments like universities.

Akshat Agrawal, judicial law clerk, Delhi High Court

Access to Culture Dialogues: Remodelling Copyright for “Substantive" Equality in Cultural Discourse

Dominant narratives/coercion to participate in them. Individuals should be able to use culture to foster self-determination, which requires exposure to diversity/variety. Media conglomoration leads to undemocratic bubbles. In India, this means skew towards urban, upper-class, upper-caste depictions: Bollywood focuses on the elite, foreign locations, English language. A Dalit character whose name in English means “garbage.” 65% of directors in Bollywood are upper caste. Indian Performing Rights Society has a database: 73% of the society are upper class, upper caste.

© incentivizes difference, but not necessarily diversity. It incentivizes distribution, favoring aesthetic judgments of those who have the distributive edge. Recommendation: disintermediation so that dissemination isn’t dominated by urban profit-seekers. More chances for people whose motivations for creation are not economic.

Victoria Schwartz: How to disintermediate? Not obvious to her that © is driving these things.

A: Ban transfers of ©. Termination of transfer in the US is unusual and doesn’t work well; should just ban transfers. This would prevent vertical integration, decrease incentive to lobby for restrictive rules.

Lunney: how would that work for films/computer software?

A: would make that harder, but that’s ok; only big budget films really need that.

Zvi Rosen, Southern Illinois University School of Law

Examining Copyright

There’s been substantive examination through US history, though the meaning has varied. 20th ©, it was more about copyrightability; 19th c./pre 1909 was mostly about subject matter. C Office started making rules before rulemaking. PGS works were rejected at a much higher rate than other works.

The first examination? Conn., 1784, incomplete entry for pamphlet/sermon: he believes it was a refusal.

1989-1904: lots of rejections for blank books, blank forms. Stopped recording rejections in 1905, presumably distracted with drafting new law. 1930s: courts reject Office authority to reject applications except on statutory grounds. 1946: reorganized, began producing more internal reports including of examinations. 10-12% required additional correspondence, 2% rejected. But visual arts were the problem—rejected 10% of the time, everything else 2% or less. Technical drawings were rejected at very high, patent like rates. In 1960, ©Office found that notice problems accounted for 34% (mostly text); no ©able matter, 27%; manuscript/outline, 17%; blank forms, 5%. Average 557 rejections/month. Bi data 1978-1985. Number requiring correspondence hasn’t gone down, which helps account for backlog. Percentage that registers varies: between 90-98% with an outlier when they shifted to electronic application.

2000-2015: Most rejections are VA (visual art); there are noticeable numbers of text (including computer programs) rejections but the numbers of text applications are so large it’s not as significant.

Originality, common shapes, logos are big reasons for rejections. We should consider reserving examination for PGS works, where it would be required; other works would require only an affidavit that the category was unproblematic.

Eric Goldman: are you seeing changes in registrants? are we seeing gaming/trolling on the side of registrants?

A: do see substantial rise in per capita registrations of graphical works.

Q: since many of these were category based were they fast?

A: yes, about two weeks.

RT: When asking if registration is necessary you can’t just look at rejection rates. Liebowitz problem: the defendants can’t tell what is actually at issue if he’s obscuring the matter sued over, and registration provides at least some assistance.

A: Is Liebowitz a problem of registration system or litigation system? He’s a symptom of a problem that it’s hard for a small owner to get relief.