WIPIP Panel 6: Design and Brand; Protectable Subject Matter; Copyright Theory and Doctrine II

A Pantone Prerogative: Defining the Privilege to Standardize Color (Felicia Caponigri)

Color standards have been around for a long time. Pantone developed standards and uses its system to promote the colors; registration for the matching system and the color chip. Does it have ©? Some © in its booklets—pre 76 Act case, pre Feist, where Pantone successfully won a PI against a competing seller of booklets. © in taxonomy?

Pantone does a lot of licensing—the business model is based on collabs, licensing their chips, selling services to companies that then advertise that they are using a specific Pantone color, or has Pantone christen a color for them. Other companies describe their registrations in Pantone colors. Require companies not to reverse engineer; authenticity and consistency claims are also used.

Should brands that standardize avoid certain claims? Pantone doesn’t seem to be trying to litigate against competing standards but maybe that’s lack of competition. Maybe a patchwork of IP rights leaves room for a private standard, but not every brand can standardize color. Europe requires some kind of identifier for registration, whether Pantone or otherwise.

Fromer: does Pantone dominance allow businesses to chill each other with color ownership claims? Or does that come from the companies no matter what?

When Procedure Becomes Policy: The Hidden Substantive Effects of the Design Law Treaty (Christine Farley)

Int’l design law becoming a thing as we speak. New WIPO treaties: Treaties on IP, Genetic Resources, and Associated Traditional Knowledge, and Riyadh Design Law Treaty.

There’s no underlying harmonization with design law: thresholds, scope, etc. Once we put procedure before substance, that procedure closes the opportunity for countries that haven’t developed their own design law to debate what that law might look like.

This treaty was promoted by high-income countries: the industrial design five, which already take most advantage around the world of filing for design registrations. 75% of designs applied for around the world come from China, EU, Korea, US, and Japan. 2.9% Africa, Lat Am & Oceania; 22% rest of world. Not very important for local industry in many places.

Substantive choices hidden in procedural drafts: the idea of harmonizing application procedures—a “closed list.” Any adherent can only ask about certain things in its application. Can’t ask about whether design derived from traditional cultural expression/resources/knowledge; whether design was made from AI; whether design was made w/federal funding; any characteristics of applicant that might enable fee reduction. African group did secure disclosure that a treaty adherent may require that an application contain info, including information on TCEs and TK of which the applicant is aware, that is relevant to eligibility.  

Requires allowing for partial designs by providing for allowing matter that doesn’t form part of the claimed design if shown by visual means like dotted/broken lines; partial designs are not even contemplated by most jurisdictions.

Provision for technical assistance to implementing countries.

Room for maximalism: countries can always grant more protection.

Provision to allow maintenance of application unpublished for a minimum of six months.

Copyright & Living Organisms (Cathay Smith)

GloFish: registered trademark for glowing fish, genetically altered—but © rejected. The GloFish company owns a number of utility patents related to them; wants to look at potential design patents. Living organisms can be goods for TMs, e.g. Galactic Purple by GloFish. Could a fish be considered product design trade dress? Not sure.

Small number of decisions have rejected living matter as original works of authorship b/c they don’t owe their expression to human creativity and aren’t fixed. The GloFish, for example, was not the equivalent of using paint on a canvas. Living works of authorship can’t meet the originality requirement. Also, they just aren’t copyrightable subject matter.

But should © exclude original expression solely on the basis that the subject matter is living?

Using organism as medium of expression; canvas of expression; or work itself.

Medium: floral gardens, arrangements, Chapman-Kelly v. Chicago Parks Decision. While individual living flowers might not be ©, unique arrangement into shape of peacock could be protected.

Canvas: applying human-created art to pigs, cats via tattoos; painting cockroaches.

Work itself: the GloFish; genetically modified poinsettia plants. Modified to exhibit creative expression. The GloFish passes its genes on; the painted fish is created with injecting color and does not pass on the colors. Is that more like using the fish as a canvas?

Tree shaping can involve training living trees to have them grow naturally in design or physically trimming them to create specific designs.

Should we limit based on process of creation, or would it be better to have a straight rule about subject matter? What about dead organisms—copyrightable then? Art made with flowers, taxidermy?

Q: if allowed, why wouldn’t that allow © of dog breeds? [raises issues of visual primacy in ©]

A: can’t see getting dog breed through the © standard, but originality is possible in the future.

Q: © as a rule of evidence by Doug Lichtman: a lot of doctrines are actually evidentiary including how do you know whether there was copying. Copying in fact is going to be difficult for a living organism.

Q: patents can only cover discoveries; 102(b) says (c) doesn’t cover discoveries—seems like they’re mutually exclusive.

RT: Selection, coordination and arrangement as a principle that helps distinguish the hedge animals and trained trees from the “canvas” cases? Are these useful articles? If so: Design of/design on distinction, suggested by design patent? Program your genes to express pigment to display a tattoo, which is that?

Q: what about patents?

A: might cover different things—e.g., if GloFish is ©able then painted fish might infringe, whereas painted fish wouldn’t infringe patent on GloFish.

Copyright Theory and Doctrine II

The Snoopy Solution: Copyright Safety and Licensing Opportunities for Generative AI (Matthew Sag)

[came in late] Disney has a 1-year exclusive deal with Sora; the cost to user expression will essentially disappear. Filtering is not all bad when recognized as a licensing opportunity—social costs decline & harms of infringement reduced.

Silbey: how to think about secondary liability and photocopy machines in light of your argument—although our uses of photocopier could be licensed, the machine maker doesn’t pay.

A: AI companies aren’t just passive—they make so many choices in model design, data curation, and 1000s of steps in between, so they aren’t simply intermediaries. Ultimately the user provides the final command, but this isn’t as simple as primary and secondary actors. We have secondary liability b/c sometimes it seems appropriate to hold a noninfringer liable for infringement. But that presupposes being able to distinguish primary from secondary, which is volitional conduct. Volition is about role in selection, not just whether there’s automated behavior. Courts could say this is volitional, or that being automatic is close enough.

Rosenblatt: distributive impacts. Who’s paying for the license, and we’re asking not about the work but about the use of the work post-Warhol. Who’s negotiating the license? The big players, not independent artists. Who’s going to pay for the cost of the license? It will be transformative users.

A: yes, massive distributional consequences.

The Artist Signature as Source (Peter Karol)

Book project on TMs and art. Basic claim: larger project—artist signature or monogram is quintessential TM but long relegated to outer rim of TM practice and doctrine. Would be improved by increased acceptance of and appreciation of artist marks as historic and core TMs. And Art Law would be improved by centering TM law in regulating creation & distribution of art works—as proof, he got put on a copyright panel!

Art historical literature on history/purpose of artist signature. Western: 12^th century—not beginning in the Renaissance. Michelangelo signed one work (it says that he is making it, which was common in early signatures); one subsequent account says that he resented hearing the work attributed to another.

Modern obsession w/signature: estate stamp applied by Monet estate. Warhol had works signed for him by his mother or by an assistant who copied his mother’s version.

Dual explanations in the art historical literature: Authorial (source-based): artist has aegis or authority in having supervised and given imprimatur to final product as finished good ready for public sale or consumption; signer stands behind this thing, and different from other things w/o that signature.

Autographic/auratic: the signer personally touched or physically rendered the thing under observation such that we feel we are in the embodied presence of the worshipped figure. Spiritual, akin to role of relic or letter hand written by Abraham Lincoln.

Perhaps there’s a movement from authorial to autographic after the Renaissance.

Some early signing practices were religious—wanted credit at Judgment Day; wanted people to pray for them; pride/ego. Pragmatic business considerations esp. for workshops. Especially when we see the market rise instead of direct patronage, where signing wasn’t as important as the patron already knew the commissioned artist. Advertising/goodwill function of signature as well. Also a signal of completeness. Legal benefits/requirements: required by guild or otherwise. Market demand, especially 18^th C. on. All consistent w/ TM concept.

Derrida: signature tethers artist to work while making it repeatable/iterable. But individual artists’ signatures change a lot over time.

Criminal identity theft case from 2025: source is not identity; forging name on art was not identity theft b/c it didn’t involve transferring, possessing, or using the means of ID of another person as required by statute. Forgery was misrepresentation of origin, not identity.

Heymann’s previous work on The Birth of the Authornym is also relevant.

Silbey: what about when the author hides themselves in the work, like a participant?

A: yes, being broad about definition of signature. That’s a little different than TM, more like a selfie.

Fromer: Dastar!

RT: Real issue is that TM isn’t TM any more! The description is of classic TM function, but immediately it’s worrisome to think of treating a signature as modern TM b/c it would extend © infinitely and do a bunch of other things.

A: Yeah, one point is that understanding the signature as a core example could remind us of what TM was supposed to do.

Heymann: transferability of personal names—designers have signed away the right to use their names.

A: art scholarship connects the signature to the rise of notarial practices—a signature has legal effect.

Buccafusco: compare novels: people (subset) want signed copies of novels, allographic v. autographic.

WIPIP Panel 5: Trademark Doctrine

 The Arbitrary Myth (Dustin Marlan)

Connecting the Abercrombie critique literature w/some of the critical/cultural appropriation theory. Judge Friendly says: it need hardly be added that fanciful and arbitrary terms enjoy the protection accorded to suggestive terms. Catachresis: strained metaphor—arbitrary marks are not typically empty vessels but palimpsests. Amazon: river/warrior woman—vast, wild, overflowing abundance. Apple: fruit/Eden/knowledge—nature, simplicity, rebellion. Etc.

Empirically: arbitrary marks underperform as source indicators: 76.7% as compared to 100% for fanciful. Lowest overall recognition and recall across Abercrombie categories; worst overall liking ratings compared to descriptive, suggestive, and fanciful. Kohli & Suri, Brand Names that Work (2000).

Culturally, TM facilitates transfer from symbolic commons to corporate identity. Not so much censorship as semantic crowding out of older meanings when branded meanings are seen so commonly.

Why does TM elevate arbitrary marks? By necessity, not b/c of real conceptual strength. Descriptive & suggestive marks are depleted/overused. Competitors’ needs constrain protection. Result: Firms migrate towards protectable marks, not necessarily marks with high communicative value. Catachrestic marks require lots of advertising, burdening small businesses and startups; rewarding cultural extraction b/c they’re borrowed from outside the marketplace, meaningwise.

Conclusions? Downgrade arbitrary marks in strength hierarchy? Treat as presumptively weaker than fanciful? Not entitle them to broadest scope in likely confusion analysis? Cultural screen at registration to check for cultural appropriation? Require secondary meaning for full strength? Arbitrary fair use doctrine accommodating situational uses reflecting cultural, linguistic, or metaphorical associations?

It’s not so much that arbitrary marks are arbitrary, it’s that the Abercrombie spectrum as a whole is arbitrary. Fanciful marks echo familiar sounds; generic terms can shift meaning over time; the generic/descriptive/suggestive boundaries are porous. It’s a legal fiction rather than a natural fact.

Linford: radical interpretation would be: secondary meaning for everything. And more skeptical the closer you get to generic. Worry about PTO (and judges) as cultural interpreters. Does the addition of the cost justify the gain? If you think we’re overprotecting TMs, you could increase costs on litigants by requiring secondary meaning for everything.

Fromer: you’re conflating two things. (1) semantic connection b/t term used to signify source & a class of goods & services: apple/computers; (2) brand associations a business wants to develop to connect apple to computers—wisdom, Isaac Newton, etc. Think you’re right that arbitrary marks require more investment but can become stronger over time b/c of the arbitrariness.

RT: Tradeoff b/t initial difficulty learning and strength of association once learned: larger literature on information processing might be helpful. Attracted to the conceptual strength argument; already cases say that suggestive is weakly distinctive. But consider Jellybeans/Lollipops for roller skating rinks as an interesting example for you where the arbitrariness has the same conceptual relationship to the goods/services for both, and the confusion story is pretty plausible to me. Compare: Amazon/Mississippi. Maybe a situation where commercial strength decreases the likelihood of [some kinds of] confusion. Against conceptual strength? (Compare to Fromer’s Against Secondary Meaning.)

Truthmarks (Aman Gebru)                

Descriptively, TM owners misuse marks in ways inconsistent w/ TM’s policy goals. Analyzed truthfulness cases (72 opinions). There are 3 buckets: prohibited deception; tolerated ambiguity; incentivized dishonesty.

Misuse: masking marks; zombie marks; nonsense marks.

Masking marks: the connection b/t mark and product has changed but the consumer doesn’t know. Philip Morris became Altria to hide cigarette stink. J&J used Splenda for sweeteners but changed from natural to artificial. Intra-brand fraud (as opposed to inter-brand fraud that TM addresses).

Zombie TMs: abandoned marks resurrected by firms w/ no ties to the original producer, w/residual goodwill or notoriety. May create distrust of the system by consumers. Revived Enron using logo.

Nonsense: unpronounceable strings of letters/numbers; consumers are not the audience. But they’re easy to register.

Doctrinal gap b/t false advertising & TM law. Only descriptive or suggestive marks are presumed capable of carrying falsehoods, but you can create meaning over time w/arbitrary & fanciful marks and then change. Focus on literal deception leaves space for a license to cheat your own consumers. Reduces incentive to improve quality.

Propose truthfulness as organizing principle. Reimagining failure to function for nonsense marks; expanding abandonment doctrine where there is residual goodwill. Stronger duty of candor; expand standing to include consumers.

RT: For zombie TMs: Consumers seem pretty resistant to learning mistrust. Given realities of imperfect enforcement, how much should we worry about skepticism.

Why not just allow a false advertising claim when they switch the product characteristics? As for zombies: The plaintiff former owner has the wrong interests; maybe let consumers or current competitors claim.

Should the PTO presumption be reversed? No mark shall be refused unless …. Could be “a mark shall be registered when.”

Lemley: nonsense marks are different in kind—they are identifying source to algorithms and bots, not to humans—but there’s nothing not truthful/deceptive to humans about them.

Sari Mazzurco: deceptive as to what? Ordinarily: Falsely suggesting a quality—but zombie marks are appropriating an earlier mark’s goodwill, which seems different. Consider also white labeling as a practice—almost all cosmetics in the US are made by two companies; cosmetic companies are trademarks + customer lists. Dupes are often made by the same producer. Is the TM system obscuring actual information about source/manufacturer? Influencers who don’t control what they sponsor/endorse—a form of naked licensing.

Alex Roberts: why should we care about erosion of trust in the TM system? Specific deception is an issue, but that’s different.

Trademark Use, Failure to Function Doctrine, and Free Speech (Lisa Ramsey)         

Does JDI reject commercial use requirements/nominative fair use by rejecting any “First Amendment screen” when there’s a use as a mark? Commercial use and TM use requirements can protect speech; but also proposed a statutory defense for noncommercial use other than as a TM. Still need to figure out use as a mark. Statute says: used to identify and distinguish the goods from those of others/identify their source/manufacturer.

Is association enough for secondary meaning? 100% THAT BITCH may be associated with Lizzo, but is it distinguishing the source of goods from others in the marketplace? Association shouldn’t be enough—it should be distinctiveness for source of goods/ability to distinguish them from the goods of others. Information not related to the reputation of the TM owner should be a non-TM use: informational slogans (if you see something, say something); parody, satire, e.g., mashups; decorative uses. Consider goods/services in relation to putative mark as well as placement/likely placement. If someone seeks BLACK LIVES MATTER for T-shirts, we know they want to put that on the front and control others’ uses.

These principles can also be used in enforcement/infringement cases to assess TM use by defendants.

Q: would a ‘badge of allegiance’ for sports teams (Arsenal case in UK) count?

A: should we allow them to make additional $ by selling T-shirts—she would treat them differently—maybe give them narrow rights.

Dogan: what do you do about sponsorship or affiliation confusion?

Question mark (TM) (Lorelei Ritchie)

Core what of TM: source identification. How: consumer perception. Descriptive terms can acquire protection, but not generic terms. Blurry lines b/t categories. Booking.com even says that “ordinarily” a generic term can’t be protected. But also there are mixed uses: some people perceive it as generic while others perceive it as a mark. TMEP: examiner is told to refuse for genericness but there is actually no specific ground for generic refusals. Generic-ish.

Proposals: (1) PTO shouldn’t refuse on genericness grounds, only descriptiveness as a spectrum; (2) burden of proof; Fed Cir mostly doesn’t require clear & convincing for genericness and right now the standard is all over the place. Should be clear about whether it’s preponderance; thinks it should be clear & convincing if it’s an absolute bar b/c that’s a big deal. (3) If it’s an absolute bar, then “key aspect” genericness (generic adjective) should go away, because it’s too blurry. What’s the difference between immediately conveying information and “key aspect”?

Dogan: does competitive need play any role in your thinking? We think of genericism as: does this convey firm-specific info? But also: would TM inhibit others’ ability to tell people what they’re selling.

Ramsey: the benefit of genericism is that it protects free expression and fair competition to have a bright line rule to fight against abuse/C&Ds.

A: not that different from our common-law system.

Ramsey: burden of proof!

Linford: do we want to account for how consumers see things or do we care more about TM owners’ machinations/manipulations of evidence?

RT: if blurriness is fatal we can’t have a registration system. There is no system I know about that can make 700,000 individualized determinations/year with more consistency than the PTO does. So I’m not against clarity but not convinced that there are many clear lines to be drawn. Not sure people should be entitled to a registration unless there’s clear & convincing evidence, given the consequences for the presumption of validity—California Innovations as an example of how that thinking screws up the statute.

A: Preponderance is ok for relative refusals (descriptiveness, presumably confusion) but should think about whether all absolute refusals should be treated the same way. [I agree they should but I’d go with preponderance.]

Rachael Dickson: Examiners haven’t got the same level of knowledge for everything they’re asked to examine, which allows manipulation. “Dog walker” got registered for cigarettes even though that’s actually a well known term for a cigarette that you can smoke during the length of a dog’s walk.

Fair Use and First Amendment: The Art of Trademark Disobedience (Rachael Dickson)     

Artists release consumer products which deliberately infringe as a form of expression, serving both source identification for the new goods and commentary on the companies at issue, the values they profess, or consumer culture generally. A kind of civil disobedience: culture jamming relies on traditional artistic mediums, but her interest is in more standard products. MSCHF: “There’s no better way to start a conversation about consumer culture than by participating in consumer culture.” Stuart Semple and his Yves Klein Blue/Tiffany Blue/others.

Rogers test post-JDI doesn’t apply to use as a mark. Maybe these uses are ornamental, but they look mark-like. Still could be expressive, and the burden should be high on the TM owner to show a false statement is being made/a reasonable consumer is confused.

Ramsey: compare the Yes Men impersonating the Chamber of Commerce.

Q: if it’s civil disobedience should punishment be appropriate?

A: They’re making fun of the way the world is, not just the law, by using consumer products, so breaking the law is not exactly the point.

WIPIP Panel 4: Emerging Technologies

The European Accent of U.S. Digital Platform Speech (Brian Downing)

We are often told that self-governance by corporate platforms is better than government control, but his experience was that freedom of action wasn’t free. US gov’t defers to platforms, but they in turn defer to the EU. Thus, deregulation doesn’t promote freedom of action by platforms, who instead subordinate speech and security values. US is abdicating values it might want to inculcate into platforms.

Many things in EU regulation are good and should provide a US model—DSA rights of appeal are desperately needed. But codes of conduct etc. have no bargaining dynamic with US free speech principles. We should craft regulation to bargain with the EU vision. Our involvement in laws helps shape future regulation in ways that are better than our absence.

US approach, Moody v. Netchoice: few greater dangers to free expression than allowing gov’t to “change the speech of private actors in order to achieve its own conception of speech nirvana.” Corporate speech is protectable. Content moderation: we will have a light touch so we won’t break the internet.

EU: GDPR, DSA, DMA, AI Act—all implemented by many platforms globally. Even if you could segregate as a practical matter, you can’t build out a system like that just for Europe. You build it and implement it worldwide.

Also, technolibertarians have turned into compliance departments who just give a bottom line and they implement that globally.

Where the US stands back and doesn’t want to mess with US companies, what has actually happened is the DSA codes of conduct have removal policies that have a pseudo balance of privacy and speech, but the real way it works is that speech is subordinated to privacy or other interests. Companies are told they need to “voluntarily” agree.

If we want different rules, we have to bargain with this dynamic. We should have privacy regulation as a bargaining chip for alternatives to GDPR. You may hear “the EU is stepping back b/c they see their lack of competitiveness” but they are pretty modest; do not touch DMA or DSA. Just change some consent definitions for GDPR and timelines for AI Act, but not fundamentally changing balance of power. Changed definition of PII. Anonymization is helpful, but doesn’t cause a company that was setting its privacy standards based on the GDPR to ignore the right to be forgotten.

Q: what about economic dimension of Data Act? Applicable to internet of things, wider scope—does this affect platform economy?

A: lots of confusion about Internet of Things applying to mobile phone OSes. Platforms think that the definitions were broadened to future-proof them, but that means the rules don’t seem to match mobile OS. His guess: this will be private room meetings, nonenforcement agreements (rule says only imports of data are allowed, not exports; that will frustrate users of Android phones—do you really want that? Quiet nonenforcement agreement).

Right posture: enter regulatory game to influence it. AI: product liability approach w/safe harbors, not mandates to stifle user questions on sensitive topics.

Interoperability requirements threaten security and we need pressure on that. Maybe there should just be competition, not forced openness.

RT: in the abstract, very persuasive, but hard to agree when you see what the current US gov’t is doing: deliberately boosting right wing content outside the US. Also: bargaining requires a reliable partner, which we may not be capable of right now. Idea of passing federal legislation is a bit of a stretch.

Separately: current regime has differential effects on SMEs versus Meta, Apple and Alphabet (including differential requirements imposed by European regulators). [That is, the SMEs may not be building the worldwide systems that those big companies are.] Mismatch of understanding: The quiet nonenforcement agreement is understood as the operation of the rule of law in Europe but corruption in the US. That may make it hard to speak in the same register.

Bargaining chip implies that we’d want to continue to influence/control global rules. Compare mandating geofencing. (Blake Reid’s Jawbreaking and counterboning).

A: might be talking about a world that doesn’t exist any more. It is unsettling to confront regulators where quiet backrooms are the way things get done, and when there’s regulator turnover things can change fast. [My view is that this is correct but that Europeans would neither draft laws the way we do nor see compliance with law the way US courts (or administrators) would even if the law’s wording is the same.]

Q: what about the states? California might be able to regulate. Could be a reliable partner even! One difficulty is that there’s an attempt to stifle state regulations.

A: harder to operate on the corporate side where Illinois has one biometric law and California as another—harmonization is important. But there is a ton of action on the state side. Maybe we’d want these state actors as our representatives to the world—almost any actor negotiating would be better than the actors we have!

Venture Capital (Michael Burstein)  

VCs funded electric cars and mRNA vaccines, but recently VCs have concentrated investments in social media, crypto, and AI. Conventional wisdom is VCs pick and choose from promising pitches. It’s the ideas that drive the funding. We argue that’s exactly wrong: it’s the funding that drives ideas. VCs send signals to market about what they’ll fund, which induces entrepreneurs to found startups that will be funded.

VC preferences are shaped by social norms, need for power law returns, and short time horizons. Result: narrowing of innovation. We look at how VCs shape founder behavior—ethnographer’s dataset. Corporate law, contract law, and public policy could expand the possibilities for innovation.

2024: $215 billion from VCs, a little less than half of the pre-Trump science funding. So who makes investments in early stage companies with significant risk and when? Key features of the VC model: large equity stakes for founders, standard 10 year term of VC fund, 2/20 compensation structure. The goal is efficient allocation of capital w/in the funding realm.

But the outside perspective judges policies by innovation outcomes, not allocative efficiency. Here, the big problem of VC is clustering: $100 billion in AI, then $50 billion in healthcare—67% of VC funding, leaving 30 other industry categories like climate tech and hardware mostly unfunded. This carries through across demographic lines: female founders received 1% of funding, Black and Latinx got 1% and 1.5% of funding; 55% of funding was in California.

Innovation scholars shouldn’t treat VC as a black box: we look that entrepreneurs, the ones who decide what companies to found and what innovations to pursue. Entrepreneurs aren’t monolithic in preferences; partially motivated by finance but usually not the only or even the primary motivation for what the entrepreneurs want to do. Some entrepreneurs will trade off financial considerations for solving intellectually hard problems, or for doing good in the world, or something else. Preferences then interact w/market signals: from investors (VC sends signals about what will yield the highest returns 6-7 years post-funding, scalable with $ to increase likelihood of power law return); from product market (measure of success is positive unit economics and profitability); and from social world (divergence b/t private and social value of innovation).

Put preferences w/signals & get the marginal entrepreneur: the one who doesn’t eschew VC funding or just want money but has to decide where to invest innovative efforts.

VCs put a thumb on scale in pre- and post-funding environments. Often built around fads & bubbles; often very explicit in what they’re requesting. Repetitive & exhausting hype cycle.

Distorts investments: (1) misallocating resources, (2) distributive consequences. Wasteful duplication—similar to literature on patent racing. Pre-funding, perception of limited pool of capital induces overinvestment in these kinds of favored tech. Post-funding, VCs favor winner-take-all—you see wasteful investment in trying to capture consumers. VC returns may reflect anticompetitive behavior; unit economics diverges from ROI, and externalities are not fully internalized. This dynamic favors founders who resemble what VCs expect and can tailor their behavior to what VCs like, leaving out women, minorities, noncoastal and rural populations. Consumers are also left out—the tech is disproportionally aimed at the problems of the communities from which VC comes.

What can law do? Change content of VC signals: why is the standard term 10 years? Change the strength of the VC signals: modulate corporate law; promote countervailing signals/amplify other sources of funding.

The Innovation Paradox: How New Forms of Media Confound Copyright (Zachary Cooper)

The more innovation we have, the more © gets confused about dealing with new media. Use of Gen AI doesn’t reveal anything about creative relationship to work—it’s as helpful as saying “used software.” No means of auditing or evaluating. Authorship thresholds won’t work but that leads to problems of scale—too much content out there. We also have a problem of form: everyone can turn everything into everything else.

Copyright often does not recognize innovative new modes of creative expression, or allow innovation if built from other people’s works; innovation increasingly lowers costs of production, and innovation undermines fixedness—the notion that a work will stay itself.

New instruments since the late 70s have not been protected (synths). The sound of EDM for the next 50 years—but no one thought it was protected composition b/c it was just turning dials on a machine. We mined all the latent space in that composition—but the only thing that © protects is the melody. © is protecting the old part of Donna Summer’s I Feel Love, but not the innovative part. Meanwhile music services aren’t paying artists anything for anything they generate.

In 5 years no one will care if you used AI but it will be too late: we’ll have set up a surveillance apparatus that prevents you from creating unobserved.

"shipping protection fee" providing no extra protection was plausibly misleading drip pricing

DeMarco v. DNVB, Inc. (Thursday Boot Co.), No. 25-CV-3076 (GHW) (RFT), 2025 WL 4378637 (S.D.N.Y. Dec. 5, 2025) (R&R)

Thursday Boot sells shoes, apparel, handbags, and accessories on its website, which offers “free shipping and returns in the U. S.” according to a banner at the top of the webpage. Each product on the website is listed with an “Honest Pricing Guarantee,” promising the “Best Price offered year-round.” Upon checkout, however, a “Shipping Protection” fee of $2.98 was automatically added to the customer’s cart, with an option for the customer to deselect the Fee. Customers are told that if the Fee is not paid Thursday Boot “is not responsible for damaged, lost, or stolen items during shipping.” However, defendant ships its products via UPS, which will reimburse purchasers of lost or damaged packages. Defendant also has an Amazon storefront on which it sells its products and offers free shipping, without the Fee.

Plaintiffs alleged violations of NY’s GBL (along with common law contract/unjust enrichment claims which the magistrate recommended rejecting). Although the magistrate thought there was no standing for injunctive relief, the basic deception claim was plausible.

Whether the Honest Pricing Guarantee was a deceptive practice depends on whether the Fee was misleading, which it plausibly was. Defendant argued that there was no misleadingness because (1) the Fee was clearly disclosed on the checkout page “in the same size and font as the product price, together with an adjacent option to remove the charge”; (2) shipping protection is distinct from shipping, so that a charge for shipping protection did not negate Defendant’s promise of free shipping; and (3) the shipping protection bought by the Fee provided value to buyers by allowing them to recover from Defendant for lost or damaged packages, thereby relieving buyers “of the responsibility to pursue relief” for lost or damaged packages from the shipping companies.

But it was plausible the combination of the free shipping representation and the negative option to remove the Fee was misleading to reasonable consumers and that Defendant’s behavior was made more misleading by Defendant’s last-minute inclusion of the Fee, aka “drip pricing.” Plus, the statement that Defendant was “not responsible for damaged, lost, or stolen items during shipping” could plausibly lead “a consumer to believe that they will bear all risk of loss” if they did not pay the Fee, even though buyers were already entitled to such compensation.

Full disclosure occurs when a party “is provided with all the information necessary to understand [a] practice and its consequences.” Whether the disclosure provided plaintiffs with sufficient information to understand the significance of the Fee was a question of fact that couldn’t be assessed on a motion to dismiss. While a reasonable consumer would understand the difference between shipping and shipping protection, “the website provided insufficient information to allow reasonable consumers to understand the nature of the shipping protection secured by the Fee.” A reasonable consumer likely would be unaware that the carrier would, under ordinary contract principles, bear the risk of loss or damage during transit. The check-out statement that if a customer did not pay the Fee, defendant would not be “responsible for damaged, lost, or stolen items during shipping” was “technically accurate,” but the failure to disclose that the carrier was responsible for loss or damage during transit might “undermine [the] consumer’s ability to evaluate his or her market options and to make a free and intelligent choice.”

Also, even if a reasonable consumer would have understood that the shipping fee added defendant’s commitment to bear the risk of loss or damage, it wasn’t clear that they would know that the fee was optional.  Adding the fee to customers’ carts at the very end of the transaction “added to the confusion and could plausibly have misled reasonable consumers about whether the Fee was optional.” Articles cited by the defendant in support of its motion to dismiss, which state that offering shipping protection has become commonplace, “also opine that adding fees for shipping protection at the end of the transaction is misleading to the average consumer.”

WIPIP Panel 3: Deepfakes, Celebrities, and Movies

A Digital Right of Publicity for the AI World (Emma Perot)

Prehistory: ROP covers lookalikes, soundalikes, video game avatars (at least for realism).

Persona as training data. Theories of personality: users informed about use; many social media companies do not allow opt-in or opt-out; performers can be subject to exploitative terms. Unjust enrichment: in absence of compensation for training and licensing to third parties. Incentives undermined, though this won’t apply to the average social media user. We tend to favor art we think is made by humans. W/o proper protection we’ll undermine incentives.

Input stage: is consent obtained? Maybe, sort of, via terms of service, contracts with publishers, agreements made pre-AI.

Output stage: could be identifiable or unidentifiable. The latter isn’t really a problem for ROP. But the ability to create unidentifiable persona makes input approach important—persona has been used for the training. Risk of nefarious uses already addressed in many situations; but expressive uses could be covered which could interfere with realistic depictions, e.g. in biopics. If you’re conveying information about the person perhaps we want to allow that (as opposed to casting them in a role).

No FAKES: positives—exception for satire/parody, disclaimers not permitted. Negatives: doesn’t address training, uses to create composite figures, licenses last too long (10 years). SAG-AFTRA agreement: more positive b/c TV/theatrical uses they say: each capture and use of digital replica should be consented to and compensated.

Need clarity on how consent for input is sought and how outputs will be treated in expressive works. Avoid labor displacement.

Betsy Rosenblatt: Different interests from people who make a living from their persona v. someone who is more concerned w/privacy.

Lisa Ramsey: theories of persona is one framing, but what are the goals of the law is another. What are you trying to protect? Right to make $ from performing? Right to stay out of database?

[Persona is a bad fit for a consent-to-train framework because the details of a person’s life etc. are facts. You may be thinking about songs and movies, but the NYT wants to be able to license its news stories w/o being overridden by the subjectss. Moreover, persona is constructed with others. When I tell my life story, my husband’s life story is inherently implicated.

Incentives: if you are relying on the preference for human-made work, what you want is a disclosure regime; licensing by the person will lead to lots of deception.]

Transformative Celebrity (Rebecca Curtin)  

ROP claims might be implicated by methods users use—Zarya of the Dawn looks a lot like Zendaya, and that’s b/c the prompter used her name to produce a character who resembles Zendaya. Use of names in prompts alone, w/o reference to whether an infringing result is produced, has been raised by artists who alleged that allowing users to request art in the style of X was a violation of the ROP.

Transformative use was imported into ROP from ©, but © has recently devalued new meaning and message. Should ROP follow ©? Should © return to focus on new meaning, especially for use of persona? Does it make sense for © and ROP defenses to differ?

Transformativeness is not the worst approach of the possibilities in ROP.

Warhol’s commerciality test sounds a lot like the predominant use test in ROP cases (yuck).

Thinks Griner v. King was wrongly decided by 8^th Cir.—use of “success kid” meme was not fair use even used in political speech. Inherently expressive way of using image as cultural reference, but court reasons that controlling the commercial use of the template was the point of seeking © and thus not transformative—devalues what the politician was trying to say. Warhol is undervaluing new message & meaning, and expanding that approach to ROP would be devastating to the transformative power of celebrity itself.

Charles Duan: the speech is out there; it’s just a question of who gets paid/the rents.

A: chills speech by future potential speakers.

RT: experience w/state dilution law suggests courts are neither willing to use nor capable of using two different tests with the same name. Return to productive use, but this time for the ROP?

Trademark Law's Trouble with Titles (Stacey Dogan)         

What would have happened if Barbie, the movie, was made by a truly subversive entity instead of by Mattel? TM handles titles very badly in ways that are becoming more problematic after JDI. Alone in the Dark lawsuit—based on video game suing over title of movie Alone in the Dark, one of many films under the same name.  Several courts in the wake of JDI have concluded that titles may be source indicating, meaning that Ds have to go through the regular LOC standard, which is much less speech-protective. But these courts have gotten it wrong.

Titles and TMs do have some things in common. But differences in purpose function and impact on audiences versus impact on consumers; differences in consequences of extending legal rights to titles (speech impacts)—which should mean different legal rules. Reference to titology, literary theory of what titles mean.

Looks at different contexts: titles as TMs, recognized by early 20^th-c courts as basis for unfair competition claims, but rightly with a high standard requiring explicit misleadingness; Rogers and titles as alleged infringement; Dastar and its conception of TM’s relationship to expressive works (TMs identify source of physical object; titles are not TMs in this view, but indicate a relationship b/t author & expression); and then JDI and Kagan’s understanding of “use as an indication of source.” This should be understood narrowly to preclude the treatment of titles as TMs.

Goal: easy resolution of most cases. Presume titles are not source-indicating uses, which means that Rogers-like speech protection is appropriate. But Rogers needs an update: can’t later claim TM rights based on expressive uses. Some kind of estoppel, though implementation is tricky.

How to draw the line b/t mere use in title and other uses? Advertising of title/work should clearly be allowed, but what about merchandise? Advertising in connection w/merch?

Ramsey: would only apply rules against people who asserted TM rights by applying for registration, claiming in a pleading, or maybe using TM symbol—treat as omission. But what about Harry Potter and the ___? If there’s no inherent meaning before adopted, maybe allow TM, but something like Alone in the Dark already had meaning and thus shouldn’t ever be protectable.

A: two different forms of expressive use: one set of terms involves common meaning like Alone in the Dark; also important to be able to engage in nominative fair use-like titles like Barbie Girl.

Rosenblatt: how much do we need title exceptionalism to get to this place? Dastar: relationship b/t title and content is not a source relationship. We can understand that some titles are descriptive, generic, arbitrary and approach them that way. (I don’t think arbitrary titles are marks! Use as a mark is a separate requirement from placement on Abercrombie.) But she’d limit that to rights claims; whereas when titles are the source of alleged infringement we should treat that differently.

A: we have title exceptionalism on the protection side and should retain it b/c of the expressive cost of granting rights. Titles are creating more problems than characters—most of the Rogers character cases are easily resolved in favor of the defendant b/c courts have found that use w/in a work is more purely expressive.

FIRST: Archival Encounters That Set History in Motion (Claudy Op den Kamp)

Videographic presentation of history of first film © registration in US.

WIPIP Panel 2: Copyright and Culture

  Copyright’s Invisible Hand: Subsidizing America’s Cultural Institutions (Guy Rub)

© sometimes requires payment from more intensive users, sometimes not. Exclusive rights: unbundling—buy a book to read v. buy a book to adapt to movie. Fair use is sometimes bundling: buy a book to parody it, treated together w/ordinary readers; buy a book to extract facts for own work, fact/expression distinction bundles that user with other just-readers.

First sale: also bundling—museums and libraries pay the same as private purchasers. Subsidizes cultural institutions. Legislative process: ensure that libraries won’t be harmed by Copyright Act; 109(2) does not apply to libraries. Congress spent a lot of effort over time to treat libraries separately and promised to revisit the law if libraries started to suffer.

Why does this matter? Digital distribution is the elephant in the room, and the Internet Archive case with CDL.

Lemley: are we balkanizing fair use?

A: that ship may have sailed.

Theory, Technology, and Culture in the Development of the Legal Musical Work (Lauren Wilson)                    

Gap between legal and musical understandings of what a musical work is. Structure: Before the 1909 Act; 1909 hearings; before the 76 Act; 76 Act hearings.

Before 1909: the musical work was lines on a page, thus writings. But most major American cities developed an orchestra in the second half of the 1900s, exposing them to more music. Phonograph invention: originally for preservation; 1890: gramophone introduced. Sound recordings quickly recognized as a teaching tool for rhythm, tempo, accent, etc. Also as brutally honest records.

1909 Act hearings: Music publishers brought figures it hoped Congress would find sympathetic, like John Philip Sousa who hated records. Recording industry didn’t have household names; appealed to egalitarianism/access to music even w/o resources to invest in intensive musical training. Publishers won: Congress recognized records as ©able for the musical work authors, but not as works of their own.

Claim made by industry: Sound recordings were neutral records of sounds as they happened. But Victor published ads “Both are Caruso”—the singer and the record. Authenticity was a non-issue until record companies needed to convince the public that recordings were authentic.

By the mid-20^th century, recordings are standard way to experience music. Music publishers adopt similar strategy of putting composers on the stand, but they aren’t household names as they were before. Claimed that © protection for recordings would boost revenue allowing them to support “good” music, “serious” music that members of Congress would enjoy. Received some protection, though that protection is still limited compared to that for the musical work. Fictions about musical technology and taste led to a failure of imagination. Publishers could have brought the Beatles or the Beach Boys, Janis Joplin or Jimi Hendrix—the industry was buzzing with innovation. Congress squeezed concepts of creativity into existing legal boxes.

Q: quoting from a sound recording is almost always infringement so there’s more rights there.

A: yes, but no general public performance right. “Literal” copying is very strictly prohibited, but imitations are fine.

Matt Sag: Class, race and gender seem likely to have been important.

A: 76 hearings particularly—they chose only Western art music composers so excluded Black artists.

Caponigri: Comparative insights? Enrico Caruso—artists traveling from different places to different audiences.

Lemley: interesting to think about how those structures differ as b/t music and e.g., movies which we don’t pull apart. Plays also preexisted movies, just like the musical work.

Buccafusco: we weren’t worried about record piracy until the 1960s [side note that I think that “we” is doing a ton of work here; there were big “pirate” operations but not much home taping before that], but want to make sure it doesn’t screw up the mechanical reproduction right for musical works, so we have to limit the sound recording reproduction right in new ways.

Reproduction v. Reference (Benjamin Sobel)

Copyright cases are treating references as reproductions. Example from Salinger v. Colting: do you deny that he is Holden Caulfield? A: No. That is a key example of the mistake made in certain derivative works cases: treating a reference as sufficient to create an infringing derivative work. Inexplicable cases where substantial similarity of expression isn’t there: character names, sequels, and other noncopying derivatives. Maybe answer keys. Referring to expression in some other work, evoking it in reader’s mind—that’s not the same as reproduction.

What is the law they’re actually applying? Apparently they’re measuring referential specificity: it’s about the strength of a referential relationship, not presence of original expression: how tightly the character name corresponds to the characteristics we associate with the character. Towle (Batmobile) case—nothing in the analysis there turns on expressive qualities.

There’s no reason we should care about characters’ names, but they play a central role in some courts’ vision of copyrightability: Posner in Gaiman v. McFarlane—it’s harder if the character has no name. Names aren’t expressive, they’re too short.

Sequels: the law of character copyright suggests that if the character changes significantly across works then I don’t have a copyrightable character at all. But I should have the number of copyrightable works I have written.

Persistent conflation of identity with similarity. Is the character Mr. C Holden Caulfield? It’s irrelevant!

Anderson v. Stallone: does it reproduce copyrightable expression in a short treatment? Or does it just use Rocky’s name. The court says it doesn’t matter b/c the characters “are” the same. But identity is not substantial similarity. Anakin Skywalker from The Phantom Menace “is” Darth Vader but it’s ridiculous to say they’re similar. A child who is not covered in burns who races a pod racer is not similar to the character of Darth Vader.

The reproduction right isn’t a reproduction right—it covers much more than what you would colloquially describe as a “copy.” It has a principle, similarity, but the philosophical concept is exemplification: possession plus reference. A tailor’s swatch refers to the identified fabric & color by possessing the qualities to which it refers. Reference inquiry is copying in fact; possession inquiry: has to possess the relevant aesthetic features.

The problem for these cases is that a name doesn’t “exemplify.” It designates, but does not describe.

What role does the derivative work right play here? Can it be meaningfully distinguished from the reproduction right as expanded?

He believes: the reproduction right in a character can never be infringed by using its name. Assume you replace all instances of Sherlock Holmes’ name in a PD story with “Harry Potter,” that doesn’t appropriate copyrightable expression from JKR. Likewise: Calling something a sequel doesn’t make it a substantially similar copy.

In a suit alleging improper appropriation, a character’s name in both works should be excluded from the substantial similarity analysis (even if relevant to copying in fact). Prejudicial effect far outweighs its probative value.

Maybe the derivative work right would be another story. Reserving judgment. Either the derivative works right could be about something other than similarity, thus substantial similarity is not required for derivative works, or maybe this is a formal argument for why these cases are illegitimate b/c similarity is and should be the bedrock of ©.

Matt Sag: Ordinary observer standard: when the ordinary observer is presented with the name of a character, they remember a whole narrative backstory; isn’t that driving those cases?

A: descriptively accurate, but not reproduction! Maybe that’s what the derivative work right is.

Caponigri: could Dastar help? Content of work/originator of work isn’t supposed to be source indicator. The reference here is sort of like passing off/evoking associations in mind. [Maybe these are just TM cases]

Buccafusco: Barbie Girl is an example where reference doesn’t seem to infringe ©.

Shani Shisha: Courts are saying “I know it when I see it” and applying a but-for causation standard.

Occult Copyrights (Ari Lipsitz)

Rider-Waite-Smith tarot: a © story. The 1909 public domain deck has slightly different colors from the 1971 © claim. The publisher has acted as a steward and exploiter of the legacy of the RWS deck. New matter claimed: lithographic reproduction of designs & text.

Attributes of an occult ©: public domain core, derivative shell, and © owner uses mechanics of system—registration, notice, licenses—to yield a perception of protection & supracompetitive benefits. Evergreening: routinely republishing minor variations to reinforce the “aura” of ©. Litigation avoidance: often no enforcement at all, or only C&Ds, leading to market power: popularity of asset replaces monopoly right. No one else will compete even if they could.

Doctrinal rejoinder: anyone should be able to reproduce the work, and their contributions shouldn’t govern the original, but that’s not the reality. You’re not buying the work for the derivative contributions but for the PD asset.

Lemley: shouldn’t AI & other tech make market entry easy if not for the false © claims?

A: yes, they used to assert exclusive right to use this deck for digital readings, but don’t seem to try to enforce any more. [Presumably they’ve found another path to profit.]

WIPIP, BU Panel 1: Trademark Theory and Practice

Trademarks, Functionality, and Competition (Glynn Lunney)         

Came in late; 3d Circuit is not a good circuit for trade dress (11.8% success for claimants, almost always on functionality (71% of wins)). 5^th Circuit at the other end—50% success, functionality only successful as a defense 20% of the time.      

Functionality is a trump card, not a balancing test. Problem: Inwood test is dicta; the real problem the Court saw was failure to defer to dct on factual finding, but the dct applied the standard “is the feature an important ingredient in the commercial success of the product?” and that’s the Pagliero standard. And dct should only get deference if it didn’t make an error of law. Functionality is for non-branding purposes. Morton-Norwich isn’t beneficial to consumers; we need more attention to whether there is competition and less to whether it is “fair” by avoiding copying of attractive features/role of incentive to create design should be irrelevant.

Err on the side of functionality; just b/c some trade dress may be nonfunctional doesn’t mean we should analogize from Coca Cola bottle to trade dress generally. 5^th Circuit wrongly reverses the hierarchy of the Lanham Act.

Beebe: why not go further and adopt Easterbrook’s approach: if it does anything other than indicate source then no protection?

Lunney: if there’s only one consumer who wants it for its shape alone, that’s a little troubling—average/reasonable/ordinary consumer is a standard construct.

Tertiary Meaning (Sari Mazzurco)                

Concept: Distinctiveness that is cultural and especially indigenous that should trump TM distinctiveness. Genericness/secondary meaning both ask about what the primary meaning is: the producer or the product. Failure to function doesn’t have a uniform test but PTO does ask whether something serves only as an expression of a concept/sentiment and is widely used by third parties so it wouldn’t be perceived as a source indicator for the goods concerned.

Each test applies awkwardly to symbols that are significant to cultural groups. Imagine that Hermes began using a traditional pattern from kente cloth on its bags. Kente cloth is used in rituals, has spiritual/cosmological significance. Hermes could use the coercive power of the state to try to bar those uses even if the third parties are using the pattern in a manner consistent with its cultural purpose. Relevant public for genericness and secondary meaning is likely consumers; F2F looks for wide use by third parties. West Africans likely wouldn’t represent a big enough percentage of those groups.

Meaning-making is a social practice, always emergent and conceptual, rarely universal, never subject to exclusive control—always negotiated and contested, with power dynamics at play. Source distinctive meaning can vary across time and contexts. But people might not silo meaning across groups. And people might fight over meaning in TM context: Matal v. Tam. Groups have asymmetric power—dominant groups have more ways to establish their preferred meaning. Ability to leverage coercive power of state helps. If Hermes wants to establish secondary meaning for a kente pattern, it has many tools to do that, including TM’s privileging of source-identifying meaning.

Conclusions: include cultural groups in relevant public for genericness/secondary meaning; consider cultural meaning in F2F determinations; cultural groups should receive priority even when a third party is first to “use” the mark in concept; recognize that noncommercial uses by cultural groups are outside the scope of trademark law.

Felicia Caponigri: how does the cultural meaning of Hermes bear on this?

RT: (1) Adapt doctrine of foreign equivalents analog: can use for 240,000 people in the US!

(2) Cost-benefit analysis underlies the DFE and other TM doctrines: you consider the interests of the smaller group more significant if they’d lose something significant like a coherent existing meaning and the rest of the public has no particular need for the symbol. Fire cider genericness case; otokoyama for sake; bond-OST for cheese.

(3) Noncommerciality mess: selling kente cloth for cultural uses would not be noncommercial; Hermes would not target the wearers in the US, but the sellers/importers.

21st Century Trademark Surveys (Rebecca Tushnet)

Surveys are a mess; routinely criticized as missing the point and also dispositive in some key cases especially involving free speech issues. Budweiser Oily, JDI.

Repetition of questions: source, business affiliation, again and again—prompting respondents to answer positively.

One survey asked three times what people thought of aluminum as an antacid ingredient until the third question yielded 45% of people who thought that aluminum was bad for them. The court gave the survey little weight. Johnson & Johnson-Merck Consumer Pharms. Co. v. SmithKline Beecham Corp., 960 F.2d 294 (2d Cir. 1992).

Compare L & F Prods. v. Procter & Gamble Co., 845 F. Supp. 984, 996 (S.D.N.Y.1994) (repeating questions “also serves the purpose of clarifying otherwise-ambiguous first responses by probing the implications of previous answers”), aff’d, 45 F.3d 709 (2d Cir.1995), with Am. Home Prods. Corp. v. Procter & Gamble Co., 871 F. Supp. 739, 748 (D.N.J.1994) (excessive probing undermined credibility of survey evaluating arguably implicit messages).

Lack of definition: asking why do you say that is not the same thing as what do you think affiliation means

Lack of clarity about what the statute means: statute uses affiliation to mean two different things in the same section
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association: here, association is something that can be either true or false, thus confusing or nonconfusing

(c) association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark—here, association refers to mental processes and the association is not false; the consumer really does think about Nike when seeing Nikepal 

Ideas: training module; don’t repeat but have choose as many as apply; include an option “this is about the trademark owner” –other thoughts?

Jake Linford: pilot study on tarnishment: we did for a screener try to define tarnishment—lost 1/3 of respondents. We had tried to define it on our own terms—why not use the statute? Part of the work is defining the term.

Lisa Ramsey: Informational uses of TMs/comparative advertising. Expressive: parody, satire. Decorative: colors, shapes. Does this use provide information? [not sure that’s as helpful b/c courts don’t care, they just care about the confused subset]

Laura Heymann: should the survey question think about the harm at the heart of this: when we ask these questions are we trying to figure out solely what consumers think or what they do? [again, minimum change principle, though I appreciate the larger project of course—but consumers are really bad at telling you what affects their behavior so materiality might not be best assessed in a confusion survey]

Lunney: how much do you think controls help? [not much b/c of tendency to elaborate]

Is Teflon really any good?

Caponigri: context of surveys—Instagram might differ.

Stacey Dogan: depends on what affiliation confusion is.

RT: I think this is much easier than you might think. Affiliation specifically is a term of art across many statutes. I don’t love Chief Justice Webster, but we’re in a period where he’s very influential.

Education, Wealth, and Weird Trademark Surveys (Jake Linford with Justin Sevier)             

In the US, and perhaps systematically among scholarly studies, our studies are WEIRD (Western, Educated, Industrialized, Rich, and Democratic). We are undersampling low-education and low-income consumers and not sufficiently correcting for the undersampling. Most surveys don’t even report education or wealth.

Hypothesis: lower education consumers are more likely to be confused. But it might matter either way. In our study of tarnishment, there is directionally a burnishment effect but the sample size is so small as to create a lot of noise.

A null effect is also potentially interesting.

Is wealth as important as education? May be easier to measure one thing than two. Eventually will look at litigated surveys.

[RT: WEIRD usually describes the population: this is implicit in your not challenging whether we’re oversampling Westerners, industrialized, democratic (though political orientation might be increasingly important). Linford: yes, but we are undersampling education/wealth.

Compare surveys among educated consumers: doctors/pharmacists? Luxury goods]

Caponigri: we need the relevant population

Roberts: correcting for those things might be wrong depending on the product

Q: Does dilution have a corollary with considering sophisticated consumers? Or is a dilution survey different in who it should target?

Trade dress protection study: Higher education: the more likely you are to prioritize competition; lower education: more likely to prioritize protecting status.

Heymann: is that a function of the survey format v. actual behavior in the market—the survey context/this is a test that I have to get right/this is like an educational experience? Less experienced with the environment the survey is creating.

A: a fair question, but don’t want to presume.

Lunney: how much do surveys really matter? Judges like them if they agree w/judges’ preconceived outcomes.

A: sure. We have been making claims as we run surveys that they might tell us something about how TM law is or isn’t working; if none of us are asking the right people, then we have to change our claims.

Deadly automatic litterbox might be falsely advertised as "safe"

Gomez v. PetPivot, Inc., 2026 WL 507708, No. 25-cv-5622 (LJL) (S.D.N.Y. Feb. 24, 2026)

“Safe” is the kind of word that is general enough that it might be puffery, but courts think that safety is important enough that they sometimes consider it falsifiable. Here, defendant’s self-cleaning litterbox product gruesomely killed plaintiffs’ cat after they received the litterbox as a Christmas gift. (I will not give you the details but they were awful, and it was difficult to remove the cat’s body.) It was “advertised as remaining partially open at all times, with no complete enclosure that could entrap a pet.” On the PetPivot website, Amazon.com, and promotional materials, PetPivot marketed the Autoscooper as “smart,” “safe,” and “fully automated” and equipped with multiple “safety protection devices,” including that the system would automatically stop operating when a cat was inside the chamber. “The Amazon listing for the PetPivot assured consumers that the device can operate safely without supervision.”

Although individual defendants from PetPivot were dismissed for lack of personal jurisdiction, the court allowed NY GBL false advertising claims to proceed. GBL Sections 349 and 350 require proof of causation but not “proof of justifiable reliance.” “Reliance is the causal link between an alleged deceptive practice and a consumer’s decision to transact business with the defendant, whereas causation refers to the link between an alleged deceptive practice and an actual injury sustained by a consumer as a result of such practice.” Thus, causation can be shown by evidence either that the plaintiff would not have entered into the transaction or would have taken precautionary measures with the product had they known the truth.

Here, plaintiffs didn’t claim they bought the product in reliance on defendants’ representations, but rather that they relied on those representations when accepting and using the product in the home. That sufficed: they alleged a “connection between the misrepresentation and ... harm from, or failure, of, the product.” Also, applying Rule 8, they adequately identified the misrepresentations at issue.

Can the death of a cat qualify for negligent infliction of emotional distress where neither plaintiff was threatened with physical harm? “Bystander” claims for NIED in New York are limited to “immediate family,” but the courts have declined to define the outer boundaries of that phrase.  New York courts have allowed a grandmother to pursue a claim for bystander recovery following the tragic death of her grandchild, relying on the “legislative recognition of the changing nature of society’s understanding of family and the special relationship between grandparents and grandchildren.” By contrast, the relationship between aunts and uncles and their nieces and nephews didn’t qualify. “[T]he inquiry is objective; it asks not whether the grandmother and her grandchild had an exceptionally close bond, but whether New York law has evolved to recognize grandparents as a ‘discrete, limited class of persons that enjoys a special status under modern New York family law.’” 

A lower NY court also found that a pet dog could be classified as “immediate family.” New York Domestic Relations Law (“DRL”) requires a “best interest” framework for determining the custody of pets, similar to the framework for children, in recognition “that ‘for many families, pets are the equivalent of children and must be granted more consideration by courts to ensure that they will be properly cared for after a divorce.’ ” The court also considered societal norms regarding pets in hotel rooms and on planes, and concluded that “considering the various accommodations made for companion animals in general, along with the deep and affectionate bond Plaintiffs shared with their dog, it stands to reason that companion animals ... could also be recognized, as a matter of common sense, as immediate family.” However, it limited the rule to situations in which “the pet was leashed to the plaintiff at the time the negligent act occurred and the plaintiff herself was exposed to danger.” Thus, this case did not support extending NIED to the death of a cat outside the presence of, and danger to, her person. Her exposure to danger “did not go beyond witnessing the mechanical movement of the machine and unplugging it from the wall.”

For the remaining claims, “New York courts treat pets as personal property and consequently do not permit damages for emotional distress or loss of companionship.” But punitive damages might be available for strict products liability and GBL violations under appropriate circumstances.  

Amicus in support of cert in Lanham Act intent/damages case

 Truth in Advertising, Barton Beebe, Mark Lemley, Alexandra Roberts and I just filed a brief arguing that the Supreme Court should clarify the role of intent in Lanham Act cases.

Does "Dead Weeds in 1 Day" mean the entire weed will die, or just the visible part?

Scotts Co. v. Procter & Gamble Co., 2026 WL 482655, No. 2:24-cv-4199 (S.D. Ohio Feb. 20, 2026)

Previously, the court rejected Scotts’ request for a preliminary injunction of the trade dress of P&G’s Spruce brand of weed killer products, finding that it was not likely to be confused with Scotts’ Miracle-Gro. Scotts also makes Roundup and Ortho, relevant to the false advertising claims addressed here. The court dismissed one part of the claim but allowed the rest to survive.

Scotts challenged four different P&G statements (combined with certain visuals).

Dead weeds in 1 day

First, “Dead Weeds in 1 Day” and its accompanying visuals.  Scotts alleged that this was “literally false” because Spruce weed killer will not kill the entire weed within one day. Spruce is a “minimum risk product” as defined by the Environmental Protection Agency, and “[t]o date, all minimum risk products work by making contact only with the exposed portions of the plant and none directly affects the roots of the plant.” Thus, while “[w]ith regular application at certain dosages over time, a minimum risk product may eventually exhaust the roots’ storage of nutrients by repeatedly removing its leaves,” it will not kill the entire weed within one day.

Statement 2 uses the same visuals and has the same alleged problem: “Spruce works differently by dehydrating the weed down to the roots for dead weeds in just 1 day.”

visible results in 1 hour

Statement 3 promises “FAST Visible Results Within 1 Hour” or “visible results in 1 hour,” accompanied by before and after visual depictions. Scotts alleged that these “after-application images do not accurately portray typical results” of Spruce weed killer’s effects after only one hour.

Spruce works differently image

Statement 4 is titled “Spruce Works DIFFERENTLY.” It also says “WEEDS DEHYDRATE TO DEATH,” “1 HR,” and that “Without water, weeds dehydrate and die fast, showing visible results in 1 hour,” and was allegedly misleading for the same reasons.

P&G argued that Rule 9(b) should apply because false advertising “sounds in fraud.” Although this argument routinely works in consumer protection cases (because courts don’t like them), it fails here, as it sometimes does in Lanham Act false advertising cases. (Never in regular trademark cases, as far as I can recall.)

As P&G conceded, “[n]o Circuit has yet ruled on whether Rule 9(b)’s pleading standard generally applies to Lanham Act false advertising claims.” P&G’s theory of the law is that “if an element of any claim ‘requires an allegation of duplicity,’ it ‘implicates Rule 9(b)’s purpose’ and, therefore, Rule 9(b)’s heightened pleading standard applies.” And, because Scotts alleged intentional deception, the claim sounded in fraud.

But, as the court noted, “Lanham Act false advertising claims do not have a scienter element, so it is hard to see how they would require an allegation of duplicity.” The Sixth Circuit has applied the Rule 9(b) pleading requirements to some causes of action missing an intent requirement on par with the intent required for fraud—for example, to innocent misrepresentation. “But typically, courts do so when a ‘unified course of fraudulent content’ forms the basis of those non-fraud claims—especially if pleaded alongside fraud.” This is designed to prevent evasion of Rule 9(b).

Here, though, Scotts’ false advertising claim was based on the allegedly false and misleading nature of the statements themselves, not on the allegation that P&G is “willfully ... intending to deceive consumers.” “That is, if the statements are false, liability could attach even absent intent. So there is no indication that Scotts’ actual claim is fraud, with the false advertising claim only pled to circumvent Rule 9(b)’s strictures.”

More generally, “Lanham Act false advertising claims, while also based on ‘false’ statements, seem different in kind than traditional fraud claims.” Rule 9(b) is designed to ensure defendants have sufficient notice to respond. “But allegedly false or misleading advertisements typically run over an extended period of time, making it ‘unreasonable and contrary to the Sixth Circuit’s liberal construction of Rule 9(b) to require Plaintiff[s] to identify the exact day, hour or place of every advertisement’ that caused them harm.” Scotts clearly identified the statements it challenged, providing P&G all of the notice needed for it to respond. (It would also be possible to decide that this satisfied 9(b), as some cases have done.)

In addition, Lanham Act claims differ because Scotts was not alleging that it itself was defrauded, but that its customers are. “[G]iven that Scotts itself was not the defrauded entity, some of the who, what, when, where, and why questions that form the typical grist for Rule 9(b) may turn on information that Scotts itself does not have—information that instead rests only with the allegedly defrauded customers.”

Turning to the merits, Scotts plausibly alleged that statements 2-4 were false or misleading, but not the literal falsity of statement 1.

Recall that, on Scotts’ theory, Spruce weed killer does not directly affect the weed’s roots, so it does not (indeed cannot) kill the entire weed within one day (as the roots are still alive). P&G pointed out that the visuals do not depict the subterranean portion of the plant, and argued that “a ‘dead weed’ refers to a plant evidencing visible necrosis as featured in the accompanying image.” A statement “cannot be literally false if it reasonably conveys multiple meanings,” and that was the case here. “While consumers might plausibly take ‘dead weed’ to mean that the entire plant is dead, and will not grow back, consumers could also plausibly consider a weed evidencing visible necrosis (i.e., the visible green part is now brown and dead) to be a ‘dead weed.’”

Scotts did plausibly plead that Statement 1 was misleading. Statement 2 could also cross the line to literal falsity by claiming to dehydrate the weed “down to the roots for dead weeds in just 1 day.”

This is not ambiguous. The obvious meaning of this statement is that Spruce works—apparently in contrast to other weed killers—by dehydrating the whole plant, including the roots. It is not plausible that reasonable consumers would take the phrase “down to the roots” to mean just the above-ground portion of the weed. “Down to the [whatever thing]” conveys finality and the exhaustion of that thing. If coffee is good “down to the last drop,” one expects that the last drop will be good, as well. And if an event is planned “down to the last detail,” that means that the last detail is accounted for, too. True, sometimes phrases using this structure can mean something like “everything is gone except the thing.” For example, if a house is burned “down to the ground,” that does not suggest that the ground itself has burned. But even then, “down to [something]” means that the entirety of the thing is exhausted. The house burning “down to the ground” means that everything that can burn has; no part remains. Either way, weeds dehydrated “down to the roots” conveys that the roots, too, are dehydrated. Accordingly, there are not multiple reasonable interpretations of Statement 2 and Scotts has sufficiently alleged that it is literally false and misleading.

Statements 3 & 4 were also both plausibly false and misleading. “Scotts is alleging that weeds treated with Spruce weed killer will not have the visible results in one hour that the images depict. Or in other words, if you spray weeds with Spruce and wait one hour, the weeds do not in fact look like the pictures. Whether these images are actually inaccurate, and if the images and statements together are actually misleading consumers, are issues the Court will address later.”

(c) licensor's claims about competitor's allegedly worse licenses were opinion, not falsifiable fact

Tresóna Multimedia, LLC v. Pre-Cleared Ltd. D/B/A ClicknClear, 2026 WL 480858, No. 25-cv-6202 (GBD) (S.D.N.Y. Feb. 19, 2026)

Tresóna, a music copyright licensing entity, sued competitor ClicknClear for NY state and federal false advertising. The court dismissed the claim.

Since 2009, Tresóna has allegedly been issuing music licenses, on behalf of music rightsholders, to a “niche market” of “scholastic, community, and professional organizations.” Its main clients “include vocal ensembles, marching bands, color guards, show choirs, and other similar performing arts groups.” Its licenses cover certain musical works and sound recordings, including for “print, synchronization, dramatic performance, and remixing.”

ClicknClear entered the U.S. market in or about 2016 and later attempted to move into the “niche market” that Tresóna operates in – issuing licenses for musical works and sound recordings to scholastic, community, and professional organizations. It offers “licenses to various performance sports in which teams perform alongside recorded music, including artistic swimming, cheerleading, color guard, dance, dressage, figure skating, fitness, gymnastics, indoor skydiving, jump rope, and band/vocal ensembles.”

ClicknClear’s website informs consumers that “[t]here is often misleading information about what rights are required for ensembles to make an arrangement of music to accompany your routine.” ClicknClear states that “the rights that are needed to use a song in your performance” include the right to 1) “[p]ractise alone;” 2) “[s]et choreography to the song(s);” 3) “make copies of the arrangement for personal (practise) use; and 4) “[p]erform the routine in public with music: practise and competition.” ClicknClear states that “ClicknClear offer[s] all of these rights with our standard license.”

ClicknClear further purports to offer “legal services,” on its website, including “legal advice for owners and users of intellectual property rights, copyright and related rights.” And it offers a “License Verification System” (“LVS”) feature on their website that purports to evaluate and verify third party licenses, including Tresóna’s licenses. Users select the events at which the user is performing or competing, upload a sound recording of the sound, and upload proof of licensing documentation. The LVS returns one of three possible outcomes for the user; “green” for licensed, “yellow” for unverified, and “red” for unlicensed. The LVS only returns an automatic “green” result if the license is from ClicknClear, while any license issued by third parties will return a “yellow” result. ClicknClear has stated that when consumers receive an “unlicensed” or “unverified” result via the LVS, it causes them to “panic.”

In a prominent Facebook group for marching band arrangers, an individual defendant suggested (and then retracted after Tresóna’s C&D) that ClicknClear is able to offer better licenses at a lower price than Tresóna because Tresóna does not use a “pre-cleared model.” In a presentation given to potential consumers, ClicknClear suggested that its licenses are “stronger” than those offered by Tresóna as they cover “all” of the rights necessary, while suggesting that “Tresóna does not offer a full license but rather only a certificate.”

First, the challenge to ClicknClear’s statements about what rights are necessary: Tresóna argues that the statements were both literally and impliedly false because these are “illusory” rights that consumers do not need in all situations. The court found that these were non-actionable opinions about the law. “As both sides agree, the necessity of these rights involve unclear and contested areas of copyright law. Indeed, ClicknClear and Tresóna devote most of their briefing to arguing whether or not each subset of the necessary rights (to set a choreographed routine, to publicly perform, and to practice alone) are actually needed by consumers.” Given this dispute, ClicknClear is “expressing an opinion on an inconclusive question of law” and “not making representations of verifiable or ‘hard definable facts.’ ”

Even if these weren’t opinions, they were ambiguous: ClicknClear mentions on its website, quite ambiguously, which rights are “required for ensembles to make an arrangement of music to accompany your routine.” “In order for these statements to be literally false, Tresóna would have to plausibly allege that there is no instance in which these rights are required.” But whether or not these rights are needed in a given case depends on the outcome of a “fact-specific and [ ] individualized inquiry” in this “unsettled area of copyright law.”

That didn’t prevent misleadingness, but for that, Tresóna needed to “allege that consumers or retailers were misled or confused by the challenged advertisement and offer facts to support that claim” or allege deliberate, egregious deception. It didn’t. It alleged that “[c]ustomers have told Tresóna that they are facing pressure from their federations and governing bodies to use ClicknClear instead of Tresóna,” and “the pressure is driven at least in part because of ClicknClear’s false and misleading statements as well as the LVS.” But it was not enough to “identify[ ] a broad swath of people [that were] allegedly deceived.” (Now do trademark complaints.) “Tresóna fails to identify any ‘federations’ or ‘governing bodies’ that pressured consumers, nor does Tresona allege how this pressure has caused customers to buy ClicknClear’s licenses as opposed to Tresóna’s. And even if Tresóna did allege that customers were buying ClicknClear licenses as opposed to Tresóna’s, Tresóna does not allege how these decisions were because of ClicknClear’s necessary rights statements as opposed to other reasons for purchasing ClicknClear’s licenses.” [I dunno, ‘take this license and not that one to protect yourself against expensive lawsuits’ seems pretty clear in its pressure effect.]

Merely stating that there have been “LAWSUITS for copyright infringement” was literally true and thus not actionable. It also didn’t relate to an “inherent quality or characteristic of the product [at issue].”

License verification system: Was it misleading that all other licenses issued by third parties, including Tresóna’s, will return a “yellow” result, meaning the license’s legality is “unverified,” or red for “unlicensed”? No: “The LVS, ultimately, is an inherently subjective rating system that evaluates the quality of third-party licenses. Indeed, the outcome of the LVS is dependent on which factors ClicknClear believes to be important in evaluating a license. ‘A reasonable consumer would view [LVS’s] rating as just that – the defendant’s evaluation.’”

And even assuming the statements were impliedly false or misleading, Tresóna similarly failed to allege sufficient indications of consumer confusion. “The unauthorized practice of law is not a basis for a Lanham Act claim.”

Anti-Tresóna statements: ClicknClear’s statements about Tresóna’s “very bad reputation,” its representations that ClicknClear licenses are “better” or “stronger” than Tresóna’s, and its assertions that ClicknClear was in a “strong position” to harm Tresóna were nonactionable puffery.

By contrast, ClicknClear’s statements in 2021, 2024, and 2025, that Tresóna does not use a “pre-cleared model,” or that Tresóna does not offer a full legally compliant license but instead offers a “certificate,” were statements of facts that could be proven true or false. Still, Tresóna didn’t offer facts as to how these statements actually misled the public or affected their purchases, or that the statements were commercial speech: “part of an organized campaign to penetrate the relevant market.” “The statements alleged here, one in a Facebook post that has now been deleted, and two upon information and belief, do not suggest ‘widespread dissemination within the relevant industry,’ and more aptly resemble ‘isolated disparaging statements’ that ‘do not have redress under the Lanham Act.’”

The court didn’t have to reach the state claims, but it commented that Tresóna also failed to allege how ClicknClear’s statement constituted harm to the public interest, as opposed to another business.