Friday, August 11, 2006

IP Scholars conference, sixth parallel session

I missed the first presentation by Dan Burk.

William Gallagher, Strategic Intellectual Property Litigation: An Empirical Study of Enforcement of Intellectual Property Claims. Gallagher represented the defendant in Gov. Schwarzenegger’s suit over the bobblehead doll representing him; the case settled for the reasons such cases settle. He considered the result censorship, since the plaintiffs didn’t mind the bobblehead, only the fact that it was carrying an assault rifle. We don’t know much about plaintiffs’ decisions in IP, so he is studying patterns of private enforcement by interviewing California plaintiff-side lawyers who work on copyright, trademark, and right of publicity claims.

The lawyers say that both lawyers and clients prefer “aggressive” enforcement. They choose to enforce based on the perceived strength and sophistication of the target. They may even like a defendant who’s represented by a lawyer if the lawyer is a generalist who doesn’t know IP; the defendant’s lawyer may believe that statutory damages are available and so counsel the defendant when they’re not. Plaintiffs’ lawyers feel no ethical dilemmas in using aggressive enforcement techniques. Lawyers perceive an advantage for repeat players. They say they don’t overenforce rights, but they give examples that do seem that way. (Asserting copyright protection in cease and desist letters, so defendants won’t post them on the web ….)

Eric Goldman: What’s the definition of a plaintiff’s side lawyer in this context? Answer: Gallagher asked IP lawyers to identify other lawyers who “regularly” do plaintiff’s side work. He’s not sure it matters what the percentage is as long as the lawyers take the plaintiff’s side when they are representing plaintiffs.

Will really bad actors agree to talk to Gallagher? Answer: People like being told “So-and-so said you were a prominent practitioner,” so often they will meet or at least agree to meet. He gets over 90% who agree to meet; he’s still in the middle of interviews.

Compare these lawyers’ rhetoric to that of civil rights lawyers. Are there useful parallels? Compare to the letters available at

Sometimes lawyers say they assert claims that, when push comes to shove, they can’t sustain. If you ask them directly about ethics, they claim they’re ethical, but is there a better way to get at these issues of ethics and even Rule 11? Plaintiffs’ lawyers aren’t afraid of defendants – 99.9% of defendants don’t have resources to resist, the law’s too ambiguous, it’s not going to be dismissed on the pleadings.

Mark McKenna: What about lawyers in the UK? Local counsel were much more reluctant to make the same assertions that US lawyers would routinely put forth, in his experience. (Mine is decidedly not that – the UK lawyers I dealt with over fan fiction were perfectly willing to make unsustainable claims.)

Peter Menell, Accessibility without Piracy: Reinvigorating Copyright’s Deposit and Catalog Functions in the Digital Age. Google Book Search is the new deposit and catalog for our time, furthering copyright’s access-promoting function. The promise is pantology: a systematic view of human knowledge. (You can read an entire book on this on Google, published in the 1840s, or order a copy from a Google partner.) Menell thinks that opt-out is a bad idea. When publishers publish works, they should not be able to leave the universal library.

Also, Google shouldn’t control the universal library either. It is a public service and serves a major public interest.

Question: The contract with Michigan puts lots of limits on Michigan’s use of its own copies. Is that problematic? Answer: Sure. Still, we’re paying for Google’s acts not out of tax dollars but out of Google’s success, which includes some rights for Google.

Sharon Sandeen: What about a digital copy deposit requirement for the Library of Congress copy? Answer: The deposit requirement has been moribund for a while, and Googe is revitalizing it.

Justin Hughes, Created Facts – Copyright and the Collapse of the Fact/Value Distinction.

This section of Hughes’s project fits with his article Size Matters (or Should) in Copyright Law. Ideas aren’t protected by copyright – that’s the negative standard. Originality is the positive standard. The third key component is that the merger doctrine is a negative standard that says where idea/fact and expression merge, the negative standard trumps the positive standard.

Consider the Flinstones: Fred is married to Wilma. Is that a “fact”? Barney isn’t married to Wilma. There is some truth condition to the former statement that isn’t true of the statement “Barney is married to Wilma.” We can know literary facts much better than we know nonliterary facts: Everyone knows that Batman fights crime in Gotham City, but we don’t all know who was the 22nd president of the US (Grover Cleveland). So this gives us the Seinfeld quiz book case. There are lots of puzzles in this case, including that the author just took a tiny bit from each of 82 separate works, but she was nonetheless found liable for copying the expression of Seinfeld.

Three kinds of interesting cases where fact problems arise: (1) CDN v. Kapes, CCC v. Maclean Hunter – evaluative fact cases. In CCC, the court says the prices aren’t facts because they aren’t discovered but created, but the problem is that these numbers have a powerful effect on your life, much more than facts like how many trees grow in your back yard. So there’s a merger problem; the court solves that by saying that it’s not the sole expression of the idea of a car having value, but a particular expression. The court also says this is an opinion-infused idea rather than a building-block idea and can be protected. Even if you buy the distinction, though, this is a building-block idea when your car’s been totaled. CDN is even more disturbing.

(2) Practice Management, Delta Dental, Southco – nominative fact cases, in which creativity claimed in naming systems/taxonomies. These are not discovered but set up. This too is adopted into law as the only way to get reimbursement in Practice Management and Delta Dental. In Southco too, you can’t compete unless you can copy the numbers to identify what you’re talking about. Southco is clearly the most egregious case, because these people don’t need an incentive to give their parts separate numbers; otherwise they won’t be able to sort their parts. That’s a difference from Maclean Hunter, where the plaintiff was losing business because of defendant’s copying of the information produced at a cost.

(3) Veeck – law fact cases.

If the fact would not exist but for the incentive structure, perhaps we could protect it. Maybe the antitrust doctrine of essential facilities provides a way of resolving the problem through compulsory licensing.

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