Important keyword decision from SDNY

This case, decided March 30, is particularly important because of a recent case allowing a trademark infringement claim against a keyword purchaser to proceed. Eric Goldman has more on that case.

Merck & Co., Inc. v. Mediplan Health Consulting, Inc., --- F.Supp.2d ----, 2006 WL 800756 (S.D.N.Y.)

Merck brought six cases against Canadian online pharmacies targeting US consumers. The pharmacies offer generic versions of Merck’s blockbuster cholesterol drug ZOCOR. Some of the defendants use the ZOCOR mark and/or logo, identifying their products as “generic ZOCOR” or the like. Some of the defendants also bought “zocor” as a keyword from Google and Yahoo! (though Yahoo!’s new keyword policy may or may not hamper the latter practice).

ZOCOR’s active ingredient is simvastatin; since November 1986, Merck has been the only party authorized by the US patent laws and the FDA to sell simvastatin in the US. (Eagle eyes will have spotted that this exclusivity will not last much longer; here’s some discussion of the patent situation.) Exclusivity is over in Canada, where defendants operate their websites. They fill online orders, including for generic simvastatin and for Zocor manufactured by Merck’s Canadian affiliates. Although the sites are Canadian, Americans are the target; prices are in dollars, there’s substantial sales volume to the US, the sites have names like “crossborderpharmacy.com,” etc.

With the exception of one site, the defendants use the ZOCOR mark in connection with generic simvastatin; for example, searching for “zocor” on the CanadaDrugs site leads to results for “Zocor” and “Generic Zocor.” Some of the defendants also use the Zocor design mark. The CrossBorder site sells “Zocor (simvastatin)” on the same page as generic simvastatin, but doesn’t use “generic Zocor” or any phrase like that.

None of the defendants are authorized to sell prescription drugs in the US.

This led to four basic claims: (1) trademark infringement based on the use of the ZOCOR mark and design on the websites; (2) trademark infringement based on the keyword buys; (3) trademark dilution; and (4) false advertising, based on a false implicit claim that defendants are legally authorized to sell Canadian drugs in the US and that Merck sponsors or approves their products. The defendants moved to dismiss and for judgment on the pleadings.

The court had little difficulty holding that, as to most of the defendants, Merck had stated a claim for trademark infringement based on the use of the marks on the websites. Defendants might establish a valid nominative fair use or comparative advertising defense based on their argument that no reasonable patient could think that “Zocor generic” is anything but a generic alternative to Zocor, but Merck properly alleged likely and even actual confusion. The court did dismiss Merck’s claims against CrossBorder, since there was nothing improper about offering generic simvastatin on the same page as Zocor; generic versions are often placed next to branded ones in physical stores. (Is this an implicit holding that no reasonable consumer would be fooled, or a holding that, as a matter of law, this type of comparative advertising is fair use? The court doesn’t specify.)

The court rejected the claim that keyword buys constituted trademark infringement on the grounds that keyword purchases are not trademark “use.” Following the 1-800 Contacts case, the court reasoned that the mark was not placed “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto,” 15 U.S.C. § 1127(1). The court noted in a footnote the conflict this creates with the GEICO and American Blind cases against Google. Somewhat inconsistently, the court also gave significance to the fact that the defendants actually sell Canadian Zocor on their sites, concluding that “[u]nder these circumstances,” the keyword purchases were not improper. In addition, the court’s ultimate conclusion that keyword purchases are not an “independent” basis for a trademark claim leaves open the possibility that they will factor into whether defendants’ other uses of the term are confusing.

On the dilution claim, Judge Chin made the all-too-common mistake of importing federal standards into the state claims based on pre-Victoria’s Secret cases holding that the standards were the same. (Not that I like dilution or anything, but the failure to distinguish state and federal claims bugs me.) Fame was not at issue; actual dilution was, specifically blurring. Merck’s allegations of dilution were sufficient to sustain the claim except as to CrossBorder, despite defendants’ invocation of the statutory comparative advertising exception under § 43(c)(4).

Merck claimed that defendants’ use of the ZOCOR mark falsely implies to US consumers that defendants’ generic simvastatin is legally authorized by the FDA for US sale or that Merck approves the sales because patients understand that only Merck’s ZOCOR brand simvastatin can be lawfully sold in the US (… for now). Though the latter part of the claim sounds like false designation of origin, the court characterized both parts as false advertising. (Is lack of FDA approval material to consumers in this specific case? I strongly believe that FDA approval matters with respect to beliefs about safety and efficacy of a given drug, but the very phenomenon of the Canadian internet pharmacy suggests that consumers don’t care about FDA/patent-related marketing exclusivity, or even inspection of manufacturing conditions, that the FDA carries out.)

Anyway, the case law rejects false advertising claims based on implied governmental approval. To my knowledge, no one’s ever tested this with a consumer survey showing that consumers really do believe the government approved a particular product; I’d love to see the outcome of that case. In trademark we sometimes accept de facto consumer confusion to further other goals, usually competition goals. Would we do so in false advertising?

Here, the defendants don’t explicitly misrepresent FDA approval for their generic simvastatin; at least two make statements to the contrary, giving the FDA's position that importing drugs from Canadian pharmacies violates the law. Scroll down for an example -- though I've got to say I find this tiny disclosure at the bottom of a long page unlikely to be effective at informing consumers. Because there was no explicit falsity, Merck’s FDA claims – including claims based on the sale of Zocor manufactured by Merck’s Canadian affiliate – were dismissed.

However, the false designation-type claim that defendants’ activities are likely to cause confusion as to the affiliation of defendants’ generic simvastatin with Merck was actionable. (As to CrossBorder? If CrossBorder’s use of the ZOCOR mark can’t violate trademark law, recharacterizing the issue as one of false advertising shouldn’t avail Merck. I suspect CrossBorder’s attorneys might seek clarification on this portion of the ruling.)

For Pete (Ross)'s sake

I've seen several posts like this one defending DC & Marvel's shared trademark on SUPERHERO for comic books and related goods. The primary defense involves secondary meaning: when people think "superhero," they think Marvel and DC. (Query whether Marvel & DC really exercise joint control over the mark, or whether each independently decides which caped crusader to introduce next; but set that aside.)

But secondary meaning is irrelevant to protection of a generic term: a monopolist (or here, oligopolist) may be identified with a generic term because it's the sole or biggest seller, but that doesn't prohibit others from using the term in commerce to identify their goods to the public. When I say "soda," you think "Coke and Pepsi" because their products come most readily to mind, but that doesn't mean the two of them could assert trademark rights to the generic term soda.

One popular formation of the generic/brand divide is that a generic term answers the question "What am I?" while a brand answers the question "Who am I?" Do any Image Comics feature superheroes? If you think so, then you have your answer to Marvel and DC's claims.

(Pete Ross.)

Harry and the Potters

"The idea is that the Harry Potter from Year 7 and the Harry Potter from Year 4 started a rock band. And now, no one can stop the wizard rock."

I find myself eager to hear The Wrath of Hermione.

The best thing about this is that I found them through a story called Library will close at 6 p.m. Thursday: "Harry and the Potters is a band made up of two brothers who dress like Harry Potter and play indie rock/punk songs about the book series."

Those pesky California class actions

Janda v. T-Mobile, USA, Inc., 2006 WL 708936 (N.D .Cal.)

Another California case denying a cell phone company’s argument that a putative class action under the Consumer Legal Remedies Act and Business and Professions Code must be arbitrated rather than litigated. Fairly standard California law at this point. I noted the court’s pointed statement that, while it will not “speculate as to the exact size of the font” of T-Mobile’s customer agreement submitted to the court, the font size is significantly smaller than that employed by the court (and the parties). I'm not sure font size matters; it's not as if anyone would read 50 pages of small print if it were 100 pages of regular print.

The California test for substantive unconscionability requires an allegation of a scheme “to deliberately cheat large numbers of consumers out of individually small sums of money.” Here, the plaintiffs satisfied that requirement by alleging that they were systematically overcharged in a variety of ways in violation of California’s unfair competition, consumer protection, and false advertising laws (as well as in breach of their contracts). But, since California law doesn’t require intent for a violation of consumer protection laws, it seems they can get in court by alleging deliberate acts even if they don’t establish deliberation.

There was a severability issue as to one plaintiff (the other’s contract expressly provided that if a class waiver was unenforceable the arbitration agreement wouldn’t apply). If the class waiver was unconscionable, could the arbitration agreement still be enforced otherwise, allowing class arbitration? The court determined that the arbitration clause was permeated with an unlawful purpose and would not be enforced at all.

IP and Gender: The Unmapped Connections: Boatema Boateng and comments

Boatema Boateng spoke about the art and trade of cloth in Ghana.

Artisanal productions are treated as folklore under Ghanaian copyright law; fabric designs were protected from 1985 until recently, through state ownership of the rights. This was the result of panic in third world countries about commodification and appropriation of indigenous culture. Fabric design doesn’t fit tidily into copyright, since it also has elements of industrial property. Indeed, cheap imitations of the artisanal adinkra and kente cloth were protected under industrial property law until 2004. (The way owners did that was by registering their designs but disclaiming the traditional elements, so they get to claim property rights despite the folklore law.) Boateng prefers to call it indigenous cultural production rather than folklore or traditional knowledge – I think because those terms are static and past-looking even though cultural production is alive and ongoing.

Indigenous cultural production is usually gendered female in opposition to male mass production, but that’s not how it works in Ghana, where kente and adinkra clotha re made by men. The origin stories for the cloth go back to the Asanti royal house, whose property they became through conquest and invention; some designs are still produced exclusively for the royal house. Now, the owner is in effect the Ghanaian state, on the theory that we don’t know who created the traditional design, so the state will take control; the state doesn’t share with the local community.

Women control the trade in retail markets, including the sale of cloth, except in strongly Islamic areas. Most women operate at marginal levels, but there are some “market queens” who are wholesalers. They commission cloth from the mechanized textile industry. In the 80s and 90s adrinka cloth began to be copied, commissioned by women competing with traditional male producers. Women’s registrations of traditional designs (tradition disclaimed) under the industrial property law showed their agility in operating as legal subjects within the law’s space, while male designers didn’t.

Class and economic power enable women to do this; at the same time, the law calls certain kinds of citizenship into being. For now, men are feminized in problematic ways by this setup. However, men remain powerful in their own sphere (connected with Asanti royal power), so Boateng doesn’t want to be making claims for these poor oppressed men; they negotiate their relations in contexts of varying power.

(To see some commercialization of adinkra outside Ghana, try here or here or here.)

Comments: Ann Shalleck drew on the morning’s discussion of dualisms, mind/body and original/copy playing out here in specific cases. There are related processes – objectification, in which an idea becomes a thing; alienation, which is not necessarily the same process; and commodification, which can also be distinct. To what extent does commodification deprive artisans of meaning or give them control as authors? Boateng’s paper shows women beginning with commodification, then registering designs and gaining social power. Scafidi highlights the tension between creativity and copying, and the use of other mechanisms of social power besides IP to regulate relationships.

Scafidi commented that she wanted to reject the tyranny of the prescriptive. We aren’t just rational economic actors, and we should map the realm of IP before we start making prescriptions.

Comment (I missed the attribution): In some circumstances, imitations can be more valuable than originals – this comes from Baudrillard, but we can also see it in street styles appropriated by high fashion designers, and the women of Gee’s Bend whose quilts are imitated by expensive rugmakers. Boateng pointed out that imitations may not supersede originals; they can both exist in markets targeted at different groups, for example natives versus tourists.

IP and Gender: The Unmapped Connections: Vicki Phillips

Vicki Phillips: How to Commodify an American Quilt: The Women of Gee’s Bend

Kathy Ireland now sells designs based on quilts from a remote rural community in Southwest Alabama, Gee’s Bend, where former slaves stayed on as sharecroppers. FDR declared it the poorest community in the poorest county in the country. His administration granted loans to many people there, who bought the land they’d been working. The women of Gee’s Bend quilted together – though the top was pieced together alone, reflecting a woman’s individual creativity, and then the rest was assembled communally.

Quilting was the only thing controllable in these women’s lives. Their techniques developed in isolation as a mix of African and American traditions, along with the crossword puzzles and comic strips tacked on to their homes as insulation. A civil rights activist came and bought many in the 60s, then sent an assistant to work with the women on improving the consistency of the quilts and on changing the designs to more recognizable “craft” patterns. This increased regional income 25%, and the women quilted according to contractual specifications. But they continued to make their own designs at night.

Cheap machine-made quilts made this quilting bee’s profits wane. The civil rights workers went home and the rural isolation returned. In 1998, an art scholar and collector came across a photo of a Gee’s Bend quilter and quilt. He went to Gee’s Bend and bought 700, from $100-$125 each. He also contracted for the IP rights to pre-1984 quilts (though it’s unclear what the contracts actually are).

In cooperation with the Houston Fine Arts Museum and the nonprofit to which he transferred the rights, he created an exhibition of quilts that traveled around the country. The NYT hailed them as miracles of modern art, like Matisse and Klee. A number of spinoff corporations sell books, CDs of the quilters singing spirituals, and documentaries. And there’s a marketing arm with an aggressive licensing program, including the deal with Kathy Ireland (which includes not just linens and rugs but candles). You can also buy replica quilts, along with rulers, scarves, ties, cards, and rugs. Ireland is committed to exploiting the designs both tastefully and recognizably. In the ultimate sign of commodification, The Quilts of Gee’s Bend also offers a Visa gift card with a quilt design.

The nonprofit pays a royalty on pre-1984 designs even though the collector allegedly purchased the IP rights, and also licenses post-1984 designs from the quilters. The collector is modeling his actions after the French droit de suite, so the quilters continue to benefit after alienating their rights.

So is it all good? In the novel How to Make an American Quilt, one character says that anyone who’d buy a quilt is immoral; quilts are the anti-commodity, made individually within the family and bound up in the women’s personhood. The quilters of Gee’s Bend never intended their products to reach the marketplace (though surely after the 60s they knew it was possible). Incentives came and went, but love created those quilts, a love that stayed invisible (at least to outsiders).

What do we want to be marketable/in the market? Phillips rejects the false dichotomy that something is either commodified or not. (Here I thought of Viviana Zelizer’s excellent work, particularly the recent The Purchase of Intimacy.) Does commodification come at too great a cost? Arguably the women of Gee’s Bend are alienating themselves, stripping away the personhood, meaning, and context of the quilts. Salman Rushdie says that those who lack the power to retell the story of their lives are the truly powerless – though it seems to me that the women of Gee’s Bend are doing a lot of retelling, especially to Kathy Ireland’s customers. It’s just a retelling that involves packaged nostalgia. Phillips suggests that incomplete commodification can be worthwhile, if it happens with appropriate restrictions; we have to look at the alternatives for Gee’s Bend, and there aren’t that many.

IP and Gender: The Unmapped Connections: Susan Scafidi

Panel 3 was about, in various ways, cloth and clothing.

Susan Scafidi began. I’ve seen pieces of her work on fashion before. Here she focused on the important contribution of gender to fashion’s outsider status in IP. In debates over IP rights for fashion, gender is often explicitly invoked. This is important now because the fashion industry is looking for boat-hull type protection, though only for 3 years. There’s not much public reporting on this, but Slate did an article called Copycatfight, proving the point about gender’s centrality. (Other similar uses of the witticism.)

Though men used to be the peacocks of Western culture, high-status women became linked to fashion (and economic superfluity) after the 17^th century. (I’m skipping a lot of stuff, which will doubtless be in Scafidi’s next book, making the book well worth reading.) There’s a history of debate over IP protection for fashion; popular opinion often seemed to favor protection against copying in the early to mid-20^th century. For example, Superman went after design pirates (follow this link, really), though Lois Lane was the one driving the investigation, since Clark Kent protested he felt out of place in a dress store.

Sixties feminism had plenty to say about fashion and its requirements, and shopping as a woman’s only legitimate way of being in public.

In the debates over IP, there’s a mistaken sense that fashion only trickles down; an idea that women are irrationally chasing newness; and an assumption that women are objects whose dress signals their status and that of their men. The recent association between gay men and fashion adds a wrinkle. Heterosexual men in fashion insist they’re cutting edge and that they don’t know anything about trends, but women out shopping have been joined by gay men with superior fashion sense.

The big point: IP protection is culturally determined; it isn’t self-evident what ought to qualify. Ideas about gender have helped keep fashion outside the IP system.

Originality of Vision

The New York Times has a story today, This Shamus Goes to High School. It won a Sundance prize for "originality of vision," based on its "genuinely inspired conceit — the notion of setting an old-fashioned noirish detective story in a contemporary Southern California high school, a world as bleak and mysterious and as filled with stock characters (jocks, goths, stoners, theater kids) as anything Chandler or Hammett ever dreamed of."

Yeah, inspired all right.

It's not that I have anything against the filmmaker or the film, which sounds interesting and which I'll rent (I don't get to theaters much anymore). But this obsession with originality leads us to ignore context and predecessors; why not just say he's told a cracking good story? I assumed from the story's title and its placement in the Arts section that it would be about Veronica Mars, and I have to wonder whether the story didn't even mention VM because it's (a) a TV show (and thus less artistic than a movie) (b) about a girl. Clearly there are differences -- the dialogue quoted in the story is less naturalistic than VM's, which at its best has that Buffyesque feel of "this is what we'd say if we were always at our wittiest." But of course there are differences; there are also a lot of similarities, and part of the fun of watching for me, and I suspect for others, will be to compare and contrast.

What set me off, I suspect, is that the story is full of discussion about how this movie fits into its genre and thus calls on our preexisting knowledge. "Contemporary Southern California" is, indeed, the setting of the classic noirs, though they're not our contemporaries any more -- but the idea of corruption out in the beautiful bright light is a defining feature of the genre. So why not recognize the current generic context?

IP and Gender: The Unmapped Connections: Panel 2 comments

Peter Jaszi: In Wisconsin in 2005, Ronald Reagan got part of a highway named after him, and Harriet Tubman got a whole highway. But it turns out that his part was over ten times longer than her whole, and his highway is a major artery and hers is part of an abandoned system that goes essentially from nowhere to nowhere. The appearance of fairness breaks down when you look at the details. In general, we might assume that practices are neutral though examination reveals an absence of neutrality, as to gender and to other characteristics.

The panel papers all address this by dealing with embodiment, which legal scholarship doesn’t talk enough about. In criminal law, for example, we talk about abstract rights and not about the bodies under constraint. Bartow’s paper examines how the social and legal process of embodying human reputation in the built landscape marginalizes women and other subaltern groups and contributes to the literal rewriting of history. Kane’s paper shows how conflicts over access to drugs, and the outcomes of the IP system, are written on human bodies. Tushnet’s paper is about the disruptive effect of the body on legal doctrine, which is privileged in transformative use analysis. Market analysis elevates the significance of stereotypically male modes of economic participation over those that are stereotypically female. Admirable and useful aspects of IP law may be built on disembodied discrimination.

Jaszi read from Jeff Koons’ affidavit in yet another infringement case, Blanch v. Koons (the relevant portions are included in the opinion at that link). Koons copied a model’s legs from a photograph to use in a painting, Niagara. Calling the legs “anonymous,” Koons insisted that the legs were “a fact in the world.” “[T]hey are not anyone’s legs in particular.” Koons was speaking about fair use, but he found it necessary to talk about the alienation of the model’s body parts from the model. As I understood Jaszi’s point, Koons was, in some deep sense, quite wrong: those legs were the model’s legs. That doesn’t make his use of a fashion photo unfair, but it is telling that he explained himself as a reuser of materials (women’s images) that were just out there in the world, free for him to use, with no humans involved.

Kane asked me if I thought plaintiffs’ motives in fair use cases were ever misogynistic. I didn’t want to characterize plaintiffs or defendants that way necessarily (though it’s awfully easy for 2 Live Crew and nearly as easy for Naked Gun 33 1/3). It’s just that fair use of Barbie turns out to be about tearing her down, not building her up – she’s already run for president under Mattel’s auspices.

Josh Sarnoff: Marxist critiques may be the next step. What do we do when biopharmaceutical patents expire and we don’t have a process for determining generic equivalency? We could regulate prices or compel production, though there’s a bad precedent developing that federal patent law preempts state attempts to regulate prices because Hatch-Waxman reflected a federal balance about what companies were supposed to be able to earn from their drugs.

Kane: I’m interested in feminist advocacy rather than a feminist theory of patents. There’s no way to guarantee a generic market develops, though the women’s health movement can weigh in on IP, as it did in class actions over taxol and tamoxifen, and in comments to the PTO on gene patenting. Only a subset of women benefit from Herceptin; you can get your tumor tested to see if you’re one, and then there’s a big challenge: if you would benefit, can you be sure you’ll get access?

Ann Shalleck: The three papers seem to be animated by different parts of feminist theory. Tushnet suggests MacKinnon’s dominance theory; Bartow invokes the public/private distinction, noting that even when physical space is privatized, women don’t inhabit the public world – they aren’t visible; Kane uses the women’s health movement’s concern for the invisibility of women in science and medicine, which hides a deeply gendered reality.

I responded that I definitely draw on MacKinnon by way of John Stuart Mill; not enough people recognize MacKinnon’s insistence on the radical undecidability of what a women’s culture would look like absent oppression, which is very Millian. Moreover, though Shalleck didn’t use “visibility” in describing my project and did with the two others, I’m also talking about visibility, in that a woman’s image in public becomes so public that the natural critical response seems to be to rip her clothes off.

Bartow noted that the issues are about privilege and power. The Darla Moore School of Business, so named because of a major gift, faced a backlash so severe that they took the “Darla” off.

Kane added that she wasn’t necessarily showing the disparate impact of IP on women – there’s no comparative study of prostate cancer – but her project was spurred by the possibility that increased attention to women’s health issues would be accompanied by IP disputes that would frustrate access to new drugs.

A person I didn’t know asked about intersectionality – the racial and heteronormative politics that also support these structures of power and law. Kane agreed, pointing out that African-American women have trouble getting access to nonsurgical, nonradiation treatment for breast cancer.

Julie Cohen suggested that I should talk about Google and the Perfect 10 case, given that there the pornographer is in the market. Likewise, there’s a case in SDNY about ads for Kate Spade showing a model in a bathroom stall, with only her legs, shoes, handbag, and panties visible. The company rejected the photographer’s work, but hired another photographer to create similar works, and the question was whether this sort of transgressive image was idea or expression. My thought about Google: pornography is definitely crucial to the story I want to tell about markets; the pornographer’s offer is always “I’ll sell you anything” – any body, any sex act – so of course porn is at the forefront of licensing any reuse, or trying to do so (see also the Sandy Kane case).

Cohen also asked Kane: the theme here seems to be the ways in which women are (or are seen) in public, and that way is often sexualized. For patents and women’s health, why is the canonical example breasts? HPV or heart disease could be women’s issues. Kane agreed there is a question about why breast cancer is central – and why stories about it are always illustrated with a mammograph, regardless of relevance – but breast cancer does raise lots of interesting issues. HPV, by contrast, so immediately implicates sex that sexual activity takes center stage.

Laura Heymann: Bartow points out that street names generate associations with the people who live there. What about attempts to impose meanings on new developments, so developers signal who’s supposed to live there? Bartow replied that developers often build and name streets for their kids, but then the streets are dedicated to the town and then it’s an issue of public policy about whether to rename them.

Christine Haight Farley: Looking at the cases, it seems obvious: women’s bodies are meant to be commented on. The presence of a woman’s body in the original is fair game. Roy Orbison was commenting on a woman’s body, so 2 Live Crew gets to offer its own 2 cents. Likewise, Liebovitz is a case about two women “asking for it.” By contrast, Jeff Koons lost another case about the Pink Panther when he inserted a woman’s naked body; there was no woman present in the original, so that didn’t count as commentary.

I really liked the way Farley phrased the point, and intend to use it (with attribution) in the final version of my paper.

IP and Gender: The Unmapped Connections: Ann Bartow

Ann Bartow on the physical public domain and naming rights, which she calls “trademarks of privilege”: The men who control this country will at every opportunity name things after themselves. Why do we allow this and what are the alternatives?

Trademark is about the power of words – one’s opinions of the product and the mark are understood to affect each other, so if you like the beverage Coca-Cola you get positive associations with the brand Coca-Cola and if you like the brand you’re more likely to buy Coca-Cola beverages. In the physical public domain, however, we pretend this trademark relationship doesn’t exist.

Suppose there were a horrible Key Bridge accident. That might also harm the culture’s view of Francis Scott Key, which would affect Key’s descendants and our view of his historical importance.

Corporate naming rights are a huge deal. The new South Carolina stadium is named the Colonial Center – it doesn’t use the University’s name though it’s a university building. Colonial’s naming rights are important advertising for it, but, in contravention of trademark principles, Colonial gets goodwill without owning, running, or playing at the stadium. In other words, it’s intentionally blurring its trademark to get public goodwill.

Who chose Colonial? Was it the highest bidder? Carolina probably wouldn’t let Preparation H or a beer company name a stadium no matter what the bid. Who makes the decision? How much did Colonial pay and where did the money go? None of this is publicly disclosed even though the university is a public institution. How uch money goes for what naming honor? There are millions of opportunities at each school, and at a public institution, there should be some transparency and standardization. Otherwise people will get deals frome their buddies.

Who wouldn’t be accepted? Enron was un-named from a stadium in Texas. At the Florida Law School, adding Fred Levin’s name stirred up controversy. It’s a quasi-privatization of the law school, which seems to be endorsing his (very active plaintiff’s-side) law firm. How does that affect students, and the other firms that decide whether to hire them? John Motley almost gave a naming gift to Carolina’s law school, which would have created the Motley School of Law. (Aside: I have wanted to be the Yahoo! Professor of Law ever since I found out that there was a Yahoo! Professor of Computer Science. I covet that exclamation point.)

There are other situations with perhaps deeper social implications, where no private money is coughed up but the public’s money is spent on public buildings. Big example: the Thurmondization of South Carolina. As it turns out, 25-year-old (Wikipedia says 22-year-old) teacher Strom Thurmond got a 15-year-old pregnant, though he didn’t acknowledge the child for years. So they named the school after him. There are many Thurmond buildings, streets, lakes, etc. Is Thurmond a trademark? Do you impute your feelings about the man to the monuments, or vice versa? Aren’t students supposed to understand that Thurmond was a good guy? This isn’t just partisan: You can say the exact same thing about the Byrdization of West Virginia.

Thurmond didn’t wait for people to honor him; he asked to have a lake named for him for his 85^th birthday, and Fritz Hollings et al. complied. The only problem is that the people around the lake, previously Clark Hill Lake, liked the old name (it was named for the guy who gave the land).

Another set of controversies swirls around naming places for Martin Luther King Jr., Cesar Chavez, etc. Chris Rock has a routine about how, if you go to a new city, you already know to stay away from MLK Street because it will be scary and dangerous. Is the name really an honor? On the other hand, naming a ritzy, white street for MLK would also be strange. When communities try to name upscale streets after MLK, people oppose it. And sure, people have reliance interests in the name of their street, but maybe if they’re so desperate to avoid association with MLK they’re precisely the people who need it.

Bartow called for more democratic, transparent processes of naming. Very few women make it into the physical public domain. Street names become part of residents’ identity – compelled speech, in a way. Naming creates visibility, endorsement, validation. Though there are infinite possibilities in theory, we like Maple and Main in practice, just as we like Jennifer and Jason for kids. (The “we” here is whiter than America as a whole.)

What’s needed are best practices. Maybe naming rights should go to the highest bidder, or be allocated by direct democracy. There are (sometimes controversial) Robert E. Lee high schools throught the South, as well as places named for the slaveowners Washington and Jefferson. Yet there are no Hitler high schools in Germany; why do we enshrine Lee?

Sandy Levinson wrote a book, Written in Stone, about monuments and how we need to think hard about who we honor. Historical and cultural signifcance isn’t the same thing as worthy of being honored on a stamp or a statue. Jefferson Davis and Hugh Hefner merit scholarly attention, but not stamps, just as Lee Harvey Oswald and Al Capone don’t. To commemmorate, he argues, is to take a stand about value. But Bartow thinks he’s marginalized the women’s issues, with his odd reference to how Catharine MacKinnon would oppose a Hugh Hefner stamp while Levinson deals with weightier issues of value.

IP and Gender: The Unmapped Connections: Eileen Kane

Kane's topic was one women’s health issue, breast cancer, and how the IP landscape affects it. An examination of four important molecules might help us see when patents are a help or a hindrance.

There’s been lots of activism on breast cancer over the past 10-15 years, partly inspired by the successes of the AIDS community in lobbying, activism, and recruitment of high profile public figures. Forty-five thousand women a year die of breast cancer, though heart disease is still the leading killer of women.

First, Taxol: Back in the 1960s-70s, people observed in the lab, under the auspices of the National Cancer Institute that taxol caused cells to stop dividing. Though it was a promising compound, the feds aren’t in the business of getting drugs to market. Using a series of laws about tech transfer, NIH signed a deal with Bristol Myers Squibb; BMS got exclusive rights to use NIH’s clinical trial data. The FDA approved taxol in 1992. The compound wasn’t patentable, but BMS got five years of market exclusivity as the first to file on the drug. It generated $1 billion per year in sales; as the end of exclusivity approached, a nervous BMS got a series of patents on methods of treating with taxol. BMS was also able to use the Hatch-Waxman act, which was designed to accelerate generic entry into the market, to slow down competition: by law, BMS got an automatic 30-month stay of any generic application merely by filing suit. BMS’s patents were weak and ultimately invalidated. Then BMS entered into an agreement with a generic company that had a patent of its own and tried to do the same thing. This caught the FTC’s attention, and in 2002 the FTC brought an enforcement action.

Courts have started to look with disfavor on attempts to game the marketplace with patents. Taxol also illustrates issues with drugs developed by the federal government, for which the government ends up paying private entities through Medicare and Medicaid – is that sensible?

Second, Tamoxifen: Breast cancer is accelerated by female hormones, and tamoxifen is an antiestrogen. There was a 1985 patent; a generic company succeeded in invalidating it in 1992, but the brand name company struck a deal with the generic company and paid the generic to stay out of the market. Consumer groups started to pay attention to what looked like a conspiracy to restrain trade. The Second Circuit, though, recently endorsed the idea that nothing was wrong with such agreements. The Supreme Court may well reach the issue.

Third, Herceptin: This drug comes from molecular biology, targeting a protein found on the surface of breast cancer cells. Genentech had patents, and there’s a huge issue about how to get generic biotech drugs to market, since all our experience with this deals with classic chemicals. There’s no regulatory apparatus for approving generic biotech drugs – and branded Herceptin costs $48,000 a year.

Fourth, BRCA1 and BRCA2, genes associated with a high risk of breast cancer. Companies have gotten many patents on pieces of DNA, including these, which were discovered in the mid-90s by academics and licensed to a private company, Myriad, which refuses to license other labs to test women for the presence of the genes. Testing is important so women know whether they’re at high risk and can take various prophylactic measures. This testing exclusivity leads to concerns over pricing and quality: a big study in JAMA showed definitively that Myriad’s test has technical limits and misses a number of high-risk cases. Europe has allowed somewhat successful oppositions to Myriad’s exclusivity, but here no other test is possible because of the patents.

Overall, for legitimate developments by commercial companies, patents helped. But BMS’s weak patents on something it didn’t develop hurt patients. Likewise, with BRCA1 and 2, there were no big clinical trials, so patent monopoly returns weren’t necessary to recoup development costs.

IP and Gender: The Unmapped Connections: Panel 1 comments

Christine Haight Farley commented on Burk and Craig. Both presenters suggest that gendered ideas about authorship and inventorship cause us to inaccurately distribute rights, devalue certain kinds of work, devalue certain works and discoveries themselves, and may not incentivize the way we want.

What would be the effect of deconstructing the mind/body and other dualisms? Would there be more ownership, for example of traditional works like Native American dances, or less?

I found Farley’s comments fascinating, in part because I didn’t hear the “may not incentivize the way we want” in the presentations or the papers. That is, one reason women’s work has been devalued and invisible is that everyone has assumed – correctly – that a lot of it will still get done even if the market doesn’t recognize it. If you don’t pay a woman to raise her child, she’ll still do it (though she may face many more obstacles). Love works pretty well as an incentive. Likewise with cultural productions like songs, folklore, sewing, cooking, fan fiction, etc.

So one standard economic response, embodied – if I may use such a loaded term – by Mark Lemley, is: We don’t need legal incentives in these fields, so the law doesn’t provide them, but we do need legal incentives to get Hollywood movies. That’s neutrality, from the economic perspective. (Though notice I didn’t mention software, where it turns out that maybe economic incentives aren’t as necessary as the folks in power thought. Our natural-seeming guesses about what needs to be incentivized can be plenty gendered, as Susan Scafidi took up in detail later in the day.)

Farley wasn’t endorsing the economic theory of copyright; she was emphasizing that, if the system is built on economic theory, it doesn’t match the image of the high romantic author – much less is required to get copyright protection. If we want to incentivize all other kinds of production, copyright doesn’t serve that interest all that well. I’m not sure why, except perhaps in the area of clothing design: tiny variations of traditional crafts can also be copyrighted, though the scope of protection will be limited, so there is some economic incentive operating.

Copyright also covers lots of stuff that didn’t need an economic incentive to get produced, but there is an economic rationale: to avoid the nastiness of formalities that individual authors are always going to screw up. So the feminist critique of copyrighting everything and the feminist critique of romantic authorship, it seems to me, are related but distinct – and one important aspect of the latter is that the romantic image obscures the irrelevance of individual genius to actual doctrine and practice.

After some back-and-forth, we agreed that we don’t know what kinds and levels of creation might emerge in a world that valued feminized work. Burk pointed out that copyright and patent might distort investment choices. Certainly there’s debate over whether the scientific grant and patent systems encourage specific sectoral investments instead of, for example, subpatentable innovations. After a little more thought, I believe we’d also have to factor in ways in which market solutions can crowd out nonmarket creativity, which is something the psychological literature on creativity has started to explore. But “valuing” feminized work isn’t necessarily the same as awarding it IP rights, so that might not be a problem.

Burk: The great thing about Craig’s paper is that it takes critical work and gives it a positive agenda. Models of proprietorship and stewardship for cultural objects exist – you have control to maintain, embellish, and improve the work, but it’s not yours; you have to pass it on. Unfortunately, these are being wiped out by dominant Western models.

In response to my question about the work/performance dualism, Craig pointed out that, if authorship is an interpretive process, the divide between copyright and neighboring rights (outside the US) could collapse. Performance rights are devalued internationally because the assumption is that only economic and not personality rights are at stake.

Ann Bartow: Why isn’t there an IP right for the subject of art? Women (and fruit, Burk pointed out) get objectified in painting, photography, movies, any audiovisual work – we’re focused on what women look like, but not on rights women might have.

Burk: Economists would say the answer is contract.

Craig: Treating artists like copyright owners means not giving rights to subjects. She gave an example from proposed Canadian legislation to let the subjects of portrait, wedding, baby, etc. photography make private uses, but the photographers insisted that the subjects’ rights must not be allowed to interfere with their rights to do whatever else they wanted with the pictures.

Farley: Early photographers made their names as celebrity photographers, and celebrities increased their own fame by allowing photos. There was a dispute with a woman celebrity over who had the rights; the photographer won because rights were located in the individual who was seen as creating what was in front of the camera. It was the “woman as still life” idea, as if the subjects had no role in creating the settings, costumes, and facial expressions – though as actors these tended to be from their famous roles. There was one famous early female photographer, who tended to photograph non-famous women and their children.

Peter Jaszi: As I understood what he said, he knows of a case where mothers claimed joint authorship with a school photographer because they carefully dressed and combed their kids in preparation for the picture. They argued their invisible work should be visible, but the court rejected their claim and it was submerged again.

Craig: Joint authorship is a very troubling field. Canada blindly endorsed Childress v. Taylor in a case involving Sarah McLachlan and a singer-songwriter. His contribution was discounted because, though there was an intent for their work to merge and he contributed copyrightable expression, McLachlan never thought he was an author, so there was no joint authorship. England, which dismisses the relevance of intent, might do it better.

Burk: Congress is increasingly aware of problems with patent law arising from the fact that much invention occurs in groups. There are problems with novelty and nonobviousness because Group A and Group B may have overlapping members, and an inventor may discover that she’s anticipated herself if she’s a member of both. Congress is trying to amend the law, but only to help corporate ownership; the need for change is not well theorized.

Josh Sarnoff: Student lab workers’ contributions are devalued, not counted as part of the inventive process, but what’s the political result? Even if they got formal rights, labs would just make them sign those rights away.

Laura Heymann: Here’s a possible metaphor: Perhaps work for hire status is about who gets to claim paternity, not who gave birth to the work. But patent retains a more maternal concept: the requirement that the inventor be named is a requirement that we see the invention come out of that inventor’s being, like physical birth. (But do we ever, with patent or copyright? One can always be “creating” something that already existed, either in copyright with unconscious copying or patent with independent creation of an already-existing invention. Works and inventions aren’t children.)

Burk: You might expect the gender values to be going in a different direction, with patent being masculine compared to copyright. It’s worth investigating – there is literature on the historical development of publishing in the UK and parallels between copyright and family law. Men were allowed to make money from wives’ and children’s labor, as owners of right, just as with copyright; we don’t know as much about patent history.

Craig: In Canada, it’s the other way around. Canada is a first-to-file jurisdiction for patent, whereas in copyright authors always retain moral rights.

Heymann: Is there an original text that begins a dialogue and thus occupies a special place of authority?

Craig: No. Even if people identify one text as special, it always exists in a context and a network of meanings.

IP and Gender: The Unmapped Connections: Carys Craig

Carys Craig on dialogic authorship: Rather than seeing copyright as a body of law about individual, private property and natural rights, we should see it as about cultural policy and communications regulation. The dominant economic rationale’s biggest weakness is its failure to understand authorship and the creative process it’s supposed to encourage. Only a focus on the meaning of creative production – for creators themselves and for society – can give us that.

Copyright law skipped the 20^th century in creative production: the rhetoric of authorship does so much work that it allows us to ignore the absence of individual genius in most works protected by copyright. The law makes a moral divide: author/copier, owner/infringer. If creativity is the result of accretion, these are mischaracterizations, silencing authorship that lands on the wrong side of these binary oppositions.

The project: how to acknowledge that culture grows by accretion while still using the author as a necessary concept? Relational feminism offers an answer in the situated but still autonomous, rights-bearing self. Copyright, unlike literary theory, can’t give up on the author, and anyway we’re not willing to discard the author even after deconstruction.

So we should begin by collapsing liberalism’s false dichotomies. People are socially constituted and autonomous agents. Jennifer Nedelsky offers the concept of the relational self, in dialogue with others. The truly autonomous self isn’t isolated from others but interdependent; rights are relational, in that they structure and represent relationships. Rights are affirmations of the values and relationships to which we aspire.

The relational author is one who creates out of her surroundings. The materials are given but her authorship consists of reinterpretation and re-presentation in a process that’s simultaneously creation and evolution. Copyright, in this view, creates rights and structures relationships between citizens, enabling communications and exchanges between authors and the public. Copyright is an affirmation of the social value attached to the expression and exchange of ideas. (Here I think Julie Cohen might have said something that she said at the Cultural Environmentalism conference: People structured by a rigid economic-focused copyright regime are also people; we need to add some concept of flourishing to say that the structure should work differently.)

Dialogic authorship emphasizes participation and voice. Feminist literary theory has evolved dialogue as a central concept as a result of a similar challenge – how to reject the solitary male genius idea without totally fragmenting the author and denying the agency and subjectivity of every speaker. It does matter who’s speaking precisely because some people – especially women – have been denied speech and denied the right to be called authors. The attempt is to reclaim women’s voices and authenticity while still rejecting the patriarchal author-figure.

We resolve the dilemma with dialogue. Expression is an interplay and struggle of meaning. No utterance is independent or original but it still matters who’s speaking, since speech constitutes identities and social relations. (I’m still wondering how you decide what’s authentic, but that’s such a big deal in feminist theory that no one could give you the answer – in the best tradition Craig describes, it will only come out of dialogue.) Dialogic authorship allows us to see the author as a citizen and a participant in social dialogue. (Which reminds me of Marjorie Garber on academics – we almost always see ourselves that way, which leaves us open to misinterpretations when non-academics enounter a piece of that dialogue in isolation. I didn’t think of it at the time, but I’d love to see what Craig thinks of the possibility of misinterpretation and misreading within, or without, dialogue. If context is key, what does it mean to be taken out of context?)

What legal and doctrinal implications? It would be a big step to see copyright as a tool of cultural policy and speech regulation, not just a tool to protect individual property owners. Originality as a structuring concept would survive because it must survive, but it could be defined around the kinds of engagement with the world we want to encourage. The derivative works right would be sharply limited, and fair use would be broad. (And here’s my hobby-horse: I want to know how this theory will deal with pure copying as a means of participating in dialogue, like my quoting John Stuart Mill or Catharine MacKinnon in a discussion about copyright -- or, for that matter, in a discussion about pornography, where the recontextualization is far from obvious.)

IP and Gender: The Unmapped Connections: Dan Burk

Dan Burk on IP and dualism: I came in a few minutes late, so I missed the intro.

Burk spoke about the dualisms in copyright and patent law, dualisms which are common in Western culture and tend to map on to masculine/feminine, with the former valued and the latter devalued. So copyright has the work and the physical instantiation of the work; as with the first sale doctrine, the two can be split. (I recently read a couple of very interesting pieces in Social and Legal Studies about copyright in musical works and how the work was reified into a thing distinct from any performance, which fits nicely into this.) Fixation is the trigger for protecting a work in US law, but the mental conception rather than the physical is really what’s protected, as with the broader mind/body dualism. Uniqueness versus commonality (my terms) also plays a role: expression has to be original, not coming from outside the author, in order to be protected; joint authorship requires an independently copyrightable contribution, so you can’t simply execute someone else’s expression. Cinematographers and performers aren’t authors even if they’re vital to the existence of the work – this again goes to the mind/body dualism, since these are bodies performing work.

Similar dynamics operate in patent, which is organized around the trope of the isolated genius in his garage, with extraordinary skill in the art, even though most research doesn’t happen that way.

Western culture has a tendency towards dualism; physical work is feminized and subordinated, and patent reflects that. There’s a lot of invisible work – work that makes society run but that is unrecognized, associated with the body, corporeality, physical labor. This connects to what we as a society encourage and reward, and what we assume will just get done somehow. (My comment: this also reflects conflicts between men over what work is “really” manly – men who do physical labor can claim a certain priority of masculinity. In patent, pointy-headed intellectuals who had more influence on law got themselves declared the true creators, even though their work depends on the physical labor of others. Because so much of this work is invisible, Burk pointed out, people who study creativity don’t know enough about who does it; in publishing, the work of editing and polishing is often done by women – but what about the work of physically printing and distributing?) Technicians and artisans are not honored as authors and inventors despite their roles as but-for causes of creativity.

Other areas of inquiry: the products of nature doctrine. Patent covers “anything under the sun made by man,” including living organisms. The only real holdout in the US is products of nature, such as mathematical equations and natural laws, which are not the product of human intervention. Yet they are the products of human imaginings; the ways Newton and Einstein saw the universe were different and creative. This raises the question of what is natural. Everything humans do is drawn from nature. Taken to the extreme, that means that either nothing is patentable or everything is. The nature/culture dualism denies this, but we should challenge that dualism.

Similarly, copyright treats facts as outside people, embedded in the fabric of reality. Even so, most “facts” are value-laden and interpretive, such as photographic images and maps. Though facts are constructed, we continue to divide nature from culture. Nature is feminine, open to appropriation. (My thought: facts and nonfacts are both open to appropriation, but only the latter is exclusive; nature is a whore, not a bride.)

The basic concept of the author depends on dualism – an author can’t exist except in opposition to something (audience?). Maybe this is all a necessary predicate of the romantic author concept.

As I said in comments, I’d add the work/performance dualism, where the work is an abstract and perfect form of itself, and every performance is at best parasitically creative, not complete in itself and therefore, in copyright law, not as worthy of protection for the authorship it presents (see, e.g., sound recordings, performances of plays).

The birth of a right of publicity claim

So, Monument to Pro-Life: The Birth of Sean Preston comes with a press release suggesting the sculpture honors Britney Spears for breeding at such a young age. Read carefully, the release doesn't say that Manhattan Right to Life endorses the sculpture, but it sure sounds like it at first. So there are potential right of publicity, trademark/false endorsement, and copyright claims (depending on what it means for the dedication to "incorporate" Right to Life materials).

How come artists never engage in patent infringement or expose trade secrets as a means of expression?

IP and Gender: The Unmapped Connections: My presentation

Today I was on a panel at AU's Washington College of Law, part of a day-long program on IP and gender. Notes on other panels to follow; there should be a webcast soon at the WCL site.

My notes for what I said:

Wednesday morning, as I was putting off preparing for this talk, Professor Patry posted an entry on his blog – “Fair Use and the Women of the University of Chicago.” He was discussing CollegeCuteness.com, which sampled the Facebook for 10 colleges, posted pictures of 35 women from each college on HotOrNot.com, and analyzed the results to discover that yes, the women at the University of Chicago were less attractive than women at the other colleges.

He labeled the copying of the Facebook pictures a “classic fair use” – and I agree, though probably not for the reasons he thinks. As far as I can tell, a classic fair use is one that comments on a woman’s body. Nor could Professor Patry resist his own dig at the women whose pictures had been appropriated:

“Presumably, there is also a lack of economic harm: what third parties would, according at least to the study, want to buy the pictures?”

So I want to point out one thing beyond the obvious: As a commenter quickly pointed out, Professor Patry’s joke has distracted him from actual analysis of the fourth fair use factor. Maybe no one would want to buy pictures of women at the University of Chicago, but they weren’t the only ones whose pictures had been copied: the women at the winning college were voted substantially more attractive and, by his own logic, suffered marketplace harm.

This is what women’s bodies do in the law – they distract, they take center stage, they disrupt logic.

That’s what makes it easy to associate parody and transformative use with the use and reuse of a woman’s body – parody is also disruptive, chaotic, carnivalesque.

Some examples: Campbell v. Acuff-Rose, where Roy Orbison's pretty woman gets reworked as a big hairy woman. Leibovitz v. Paramount, where Annie Leibovitz's photo of Demi Moore gets mocked by an ad for Naked Gun 33 1/3. One particularly interesting element of this case is the court's treatment of the model Paramount used -- a pregnant woman whose picture was altered so as to appear with Leslie Nielsen's face. Although she's naked and central to the poster, she's invisible in the case; the court goes so far as to say that Paramount superimposed "a photograph of Nielsen's face" on "her body" (emphasis added). It's a photograph of a man's face, but somehow it's on an actual body; the woman and the representation of the woman merge. Anyway, the court says that the poster is a parodic fair use because it criticizes Leibovitz (or possibly Moore; the opinion is not entirely clear which woman is the target) for taking herself too seriously, for asserting that a pregnant body is beautiful. The original is pretentious, and the poster asks, "Who does she think she is?"

Other cases of note: the Food Chain and Dungeon Barbies, where it turns out that you make a transformative fair use of Barbie by sexing her up, ripping off her clothes to show the real doll underneath, the problems that were there all along in her always-already sexualized representation. Transformation, it turns out, isn't so much about adding sex as revealing the sex that was already there. By comparison, adding violence or subtler commentary, say about commercialism, isn't as readily recognized as transformative, as the Cat NOT in the Hat and Michael Moore's Big One (with its ads mimicking the ads for Men in Black) cases rejecting fair use defenses reveal.

I want to be clear: I'm not saying that mocking women shouldn't be transformative use. Rather, I want to call attention to a pattern in the case law.

t’s not surprising that copyright law is subject to biases that pervade culture; it would only be surprising if copyright escaped them.

The lesson for copyright law in particular, though, is that the gendered meaning of parody is one reason among many that we should reject the parody/satire divide and allow fair use to a broader range of reuses.

Other ways in which sex and gender have influence fair use doctrine include the definition of the market for the fourth factor. The Wind Done Gone case emphasized that Alice Randall's novel contained homosexuality and miscegenation, which the Mitchell estate would never allow in authorized sequels. But I doubt the estate has any interest in licensing a science fiction version of either, yet that would clearly be in its legitimate derivative market. One version is within the copyright owner's rights, one isn't, but why? The question becomes even more puzzling when we realize that there are plenty of copyright owners in the market for gay and lesbian works (and for sexually explicit works, which is an overlapping but nonidentical category). Not only that, but there are even companies with presences in the sexually explicit and family-friendly markets at the same time, from (generally) works whose copyrights are owned by conglomerates to (specifically) movies that are cut to be family-friendly for TV broadcast and also released with unrated extras on DVD. There's clearly a market for Brokeback Mountain, so what makes Brokeback Top Gun such an obvious fair use, presumptively outside the copyright owner's control?

Fair use doctrine has tried to finesse the is/ought of the fourth factor by presuming that copyright owners wouldn't license transformative critical uses and thus lose nothing from allowing such uses to proceed without payment. And the sexual/nonsexual distinction helps with that, since courts simply assert that no "legitimate" copyright owner would have works on both sides of that divide. But it's not true (see Kane v. Comedy Productions, which involved a stripper/singer who wanted to license parodic uses, including the Daily Show's mockery of her act; see also the recent New York Times story about celebrities licensing their sex tapes). The law should recognize that a determination of what markets copyright owners can reasonably expect to have is normative rather than empirical.

Likewise, the relevance of commerciality for the first factor has strongly gendered components. Campbell quotes Johnson that "No man but a blockhead ever wrote except for money." So noncommercial production -- which women have done for centuries, and continue to do in large numbers online, for example in fan fiction -- is blockheaded, stupid. Campbell's goal was noble, to free a transformative use even though it was being sold in the market, but it achieved that aim by denigrating forms of production not motivated by monetary reward, which just happens to be how a lot of women's works are produced.

Finally, the public/private distinction of the second factor deserves further exploration from a feminist viewpoint. Increasingly, fair use cases finding for the defendant use the published nature of a work as a sword for the defendant. But this idea of publicity, being public property and open to anyone's use because you're publicly visible, has uncomfortable resonances for feminists. (Note also that Salinger and Gerald Ford's publisher win their cases because their words are private and thus their own, while women's images are public.)

There were a number of interesting comments, which I'll write about later, with the rest of the panels.

Eric Goldman on allegedly false dating profiles

A plaintiff's lawsuit over Yahoo!'s allegedly false and misleading activities regarding dating profiles survived a section 230 defense, as Eric Goldman notes.

Teaching poetry (and inducing infringement?) with Billy Joel

A teacher encourages students to find poetry all around them -- and to copy song lyrics. Standing on the shoulders of giants, and Jersey boys.

Recoding and audience interests in stability

I’m particularly interested in the claim that audiences (and copyright owners) have an interest in preserving the singular meaning of a work or, usually, a character. Broad fair use rights to “recode,” some argue, threaten that interest in stability. I disagree that works have stable meanings across time and audiences in the first place, though there are meanings that are relatively consistent within interpretive communities. Moreover, as I’ve said, I don’t think instability is really a problem, since canonical versions tend to survive recoding quite well, without losing their status as canon – Dracula, Santa, Hamlet, etc. But, of course, the plural of anecdote is not data. So I propose a theoretical justification for my stance: the prototype.

As George Lakoff explained in his wonderful and wonderfully-titled book, Women, Fire, and Dangerous Things, humans tend to think in categories. And one important feature of a category is that it has a prototype. A prototype is the thing-iest thing in the category; even if other category members fit the formal definitions, they aren’t as readily called to mind – and things can be members of the category even if they lack one or more aspects of the prototype, which is what makes categories fuzzy yet bounded. For Americans, apples and bananas are prototypical fruits; kiwis aren’t, even though they readily qualify.

The canonical version of a character or situation, I propose, is the prototype. Just as kiwis don’t make it any harder to recognize apples as “fruit,” reworkings of canon don’t make it any harder to recognize canon. They may change preferences – how are you going to keep the kid on the apple farm once he’s tasted kiwis? – but that’s different. As I said at the Cultural Environmentalism conference, forking a story isn’t the same as forking code; humans can run multiple versions.

It is possible for a sufficiently powerful reworking to seize the position of prototype – Shakespeare’s Hamlet comes to mind. Or the prototype could be a distillation of attributes of multiple versions; what are the defining features of your Dracula? Your Batman? But the existence of prototypes in multi-member categories, as a consistent part of cognition, helps explain why reworkings are not destructive of what stable meaning exists in a canonical version.

Comments?

Snowball effect of pharmaceutical snow job

Solvay Pharmaceuticals, Inc. v. Global Pharmaceuticals, 2006 WL 626079 (D. Minn.)

Defendant Global markets a (purported) generic alternative to Solvay’s pancreatic enzyme supplements, which are used to treat cystic fibrosis patients and others who don’t produce the proper enzymes to digest food. An enteric coating is supposed to ensure that stomach acid doesn’t entirely use up the enzyme activity of the supplement before it reaches the duodenum, which is where the enzymes are important. Solvay argues that manufacturing differences in formulation, blending, and coating of supplements can lead to different enzyme activity and release rates, even if they are truthfully labeled as containing the same enzyme content.

Global’s Lipram CR5, CR10, and CR20 compete with Solvay’s Creon 5, 10, and 20, respectively. Global worked to have major drug information databases characterize Lipram-CR as a generic substitute for Creon. Global also told pharmacists that Lipram is “equivalent” to, a "pharmaceutical alternative" to, a "true alternative to," and "the generic form" of Creon. (Although an NDA is pending for Creon, the products remain on the market; the FDA banned OTC sales of pancreatic enzyme supplements in 1995, while allowing prescription products to remain on the market until 2008, pending FDA approval.)

Global argued that it never advertised Lipram as an FDA-approved generic, bioequivalent, "therapeutically equivalent," or "pharmaceutically equivalent" to Creon. However, Global representatives testified that people in the business understand the terms "pharmaceutical alternative" and "generic alternative" to mean the same thing, and its pharmacy expert also stated that generic substitution required therapeutic equivalence. Moreover, Solvay’s surveys of retail pharmacists indicated that 89% of pharmacists agreed that a generic substitute must be therapeutically equivalent to the name-brand product and 93% agreed that the generic must be bioequivalent to the name-brand product. The court denied Global’s motion for summary judgment on literal falsity.

As is common in generic substitute cases, the court found evidence that the relevant consumers – here, pharmacists – understand "pharmaceutical alternative," "alternative," "generic alternative" and the like to mean equivalence. (The court’s acceptance of evidence of meaning to consumers is just another example of the fundamental unsupportability of the analysis in Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7^th Cir. 2000), which rejected consumer surveys about the meanings of particular words. For false advertising cases, a word means what consumers think it means.)

There was undisputed evidence throwing equivalence into doubt: Although Global markets Lipram as an "alternative" to “name-brand supplements (namely, Creon, Pancrease, and Ultrase), and the labeling specifies that these supplements are specially formulated to match each name-brand drug, the supplements all contain exactly the same active ingredients, but each wears a different name and label.” The court continued, in a vein that seems unpromising for Global: “Considering that fact questions exist as to whether Lipram even contains the same ingredients as Creon, the Court finds that genuine issues of fact exist as to whether Lipram could be as safe and effective as Creon or an alternative, substitute, equivalent, generic alternative, or comparable to Creon.” Likewise, there were factual issues as to whether Lipram had caused therapeutic failures and was an unsafe substitute.

As to damages, Global contended that Solvay’s surveys did not show that pharmacists had engaged in automatic substitution (substitution without consulting a physician, which some states allow pharmacists to do based on their own judgments about drug equivalence) because of Global’s advertising. Instead, doctors are proactively substituting Lipram for Creon. Certainly, Global argued, there wasn’t enough evidence to support Solvay’s claim for $60 million in damages. Solvay disagreed, pointing to its surveys showing many prescribing physicians claimed never to have heard of Lipram, indicating that substantial automatic substitution was going on.

Solvay also argued that Global’s false advertising was transmitted to physicians via pharmacists, who convinced the physicians to authorize substitution, so that even “non-automatic” substitution could be blamed on Global. The court adopted Solvay’s view of this “snowball effect”: sales of Lipram caused in fact by Global’s false representations could be counted as part of Solvay’s damages, even if the prescribing physicians had the false claims retransmitted by pharmacists.

Questions about the snowball theory: were the pharmacists engaging in commercial speech independently regulable under the Lanham Act or consumer protection laws? (Does it matter that the pharmacies make more profit from generics than name brands?) The court pointed to evidence that using pharmacists as de facto detailers for physicians was part of Global’s business plan – but suppose this was an expected but not specifically intended effect of Global’s marketing; would Global still be responsible for physicians’ prescriptions? Suppose, as seems likely, there’s a bit of a telephone effect when pharmacists promote Lipram to physicians; is Global responsible for the distortions added by pharmacists? It seems that their distortions could constitute false advertising – even if Global’s claims are strictly true, if they become misleading when transmitted through pharmacists, then all the harms of false advertising are present. If this bothers you, what’s the proper role of intent in false advertising cases generally? Alternatively, does the fact that the court uses the snowball theory to support a damages claim, but not as part of the basic false advertising case, provide a proper limiting principle?

There was some good news for Global: the court also denied summary judgment on its counterclaim for tortious interference with business opportunity. Global claimed that Solvay interfered with Global's relationship with the Cystic Fibrosis Foundation ("CFF"). Although Global had been working with the CFF “to determine whether Lipram would be stocked and listed on the formulary of its for-profit pharmacy subsidiary, Solvay hijacked its efforts by falsely notifying the CFF that generic pancrelipase products were illegal and subject to regulatory action.” Solvay was involved in drafting a memo sent to CF care centers and physicians nationwide that called generic pancrelipase products “illegal,” even though it knew that the FDA did not believe the marketing was illegal. Moreover, Solvay donated money to the CFF to ensure it would drop Lipram from its pharmacy. Though Solvay disputed these facts and added context of its own, the court found that a jury could decide in Global’s favor (presumably only if it rejected Solvay’s claims).

No remedy for expired gift cards in Ohio

Dawson v. Blockbuster, Inc., 2005 WL 3869181 (Ohio App. 8 Dist.)

Appellant Dawson sued Blockbuster based on 3 expired gift cards Blockbuster refused to honor. He argued that the expiration dates – which mean that Blockbuster can just keep money without rendering any goods or services – violate Ohio’s Consumer Sales Practices Act and Deceptive Trade Practices Act, constitute fraudulent concealment and unjust enrichment, and breach the implied convenant of good faith and fair dealing.

The court of appeals upheld the trial court’s rejection of his claims. Essentially, Dawson isn’t a consumer because he received the cards as gifts, and anyway he should have read the terms on the cards. The only really notable thing about the case is that the opinion says that, since the interpretation of Ohio’s DTPA is supposed to track that of the Lanham Act and the Lanham Act doesn’t give consumers standing, neither does Ohio’s DTPA. It’s not clear that the CSPA and the DTPA prohibit different things with respect to false advertising, so it may not make a substantive difference.

The dissenter reasoned persuasively that, while gifts generally may not make the recipient a covered “consumer” under the CSPA, a gift card does, because it requires a further interaction with the seller. While concluding that the practice of having balances on gift cards expire quickly is unconscionable, the dissenter felt bound to hold that Dawson had no remedy in the absence of a specific state law.

More on what those specific state laws might be here, here and here. Apparently Blockbuster should have sent at least some of that money on to the state's unclaimed property fund, unless it's okay for Blockbuster to charge a fee for every month the card is unused and drain it that way. I had no idea.