Copyright and Freedom of Expression at Columbia

Not quite God and Man at Yale, but you do what you can.

Moderated by Clarisa Long.

Rob Kasunic, AU: He reads Eldred to say that (1) the internal copyright safeguards of idea/expression and fair use prevent First Amendment conflicts, but (2) this could change – the traditional contours of copyright could be altered. What should courts do under such circumsntances?

What are the key characteristics of traditional contours? We know that duration isn’t one, nor subject matter, nor formalities. Congress would have to limit the internal safegaurds to create a constitutional conflict. Why are idea/expression and fair use so important? Because they’re judicially created and developed creatures of the common law. Limiting judicial discretion/breathing space through legislation that eliminates idea/expression and fair use but doesn’t create a comparable safeguard would be constitutionally shaky.

Section 1201 has the capacity to change the traditional contours. Most First Amendment attacks to date have been weak or meritless, but one can imagine factual situations that would present real problems, e.g., a corporate whistleblower who can’t provide the encrypted smoking gun without circumvention.

(1) The court in such a case could consider whether Congress satisfied the First Amendment within the statute, but no relevant exemptions help here. (2) The court could interpret the statute to avoid liability, as in Skylink and Storage Tech. The structure of 1201 distinguishes access from rights controls to maintain the traditional contours of copyright law, but when copyright owners don’t respect that theoretical distinction and merge access with rights controls, as Tony Reese has ably written, problems develop. Attempted distinctions, however, would result in rewriting the statute with negative effects on future cases. (3) The court could apply heightened First Amendment scrutiny, but that might result in invalidating the entire statute, which is too blunt a remedy. (Query: Why? This isn’t a new problem for First Amendment doctrine, which has standards for facial and as-applied challenges.) But if the statute changes the traditional contours of copyright, that might be the necessary result. (4) Courts have equitable authority to preserve First Amendment rights by limiting copyright. This is the optimal approach, and Congress has deferred to judicial doctrines and codified them before.

Some have suggested “anticircumvention misuse” as a limiting doctrine. This has many benefits, but carries its own baggage from antitrust. It looks at the problem from the plaintiff’s perspective – is the plaintiff overreaching? – when we should instead create a user’s perspective doctrine of “fair circumvention.”

Joe Liu, BC: As a copyright lawyer, he’s prone to copyright exceptionalism. The First Amendment may deal with other, similar issues routinely. (Comment: Amen!) He proposes that copyright is not different from other areas. Breathing space plays a key role in other areas, but virtually no role in copyright. This is a mistake.

Assume Eldred is right, idea/expression and fair use are all we need. What follows? Serious modifications to copyright law! These critical safety valves are uncertain and ill-defined. This can be expected to and does chill speech. Defamation, intentional infliction of emotional distress, etc. all consider the chilling effects of liability when formulating doctrine, even though they also have internal safety valves. In defamation, the Court recognized the need to modify doctrine to avoid chilling effects by changing the burden of proof and standard of liability.

This has a cost – unredressed harm to plaintiffs’ reputations – but we are not indifferent to the burden of uncertainty on speech.

How to create breathing space in copyright? Substantively, more sympathetic application of fair use in cases raising speech interests, as in Campbell. Procedurally, the burden of proof should be on plaintiffs when defendants establish a speech interest. (Comment: Say what? If copyright is nothing new, then treat it like defamation: the burden is on the plaintiff for everyone; the defendant needs to jump no hurdle to enter First Amendment-land. Maybe most copyright plaintiffs will easily meet that burden, but what’s wrong with that?) The burden should especially be on the plaintiff for market harm. Remedies could also be limited to damages.

These proposals require defining the set of cases raising speech interests. Why not downloaders? This shouldn’t be too difficult – courts distinguish between public and private figures, speech and nonspeech. Some categories – parody, satire, even some literal copying – fulfil speech interests. It would be easy to reject pretextual claims, like the 2000-song downloader.

The big objection to his proposal: copyright law is just different. Liu is not persuaded; his paper takes up the argument.

Paul Bender, Arizona State: Has the opposite caveat, in that he knows First Amendment law, not copyright. Everyone agrees that Eldred didn’t clarify the relationship between copyright and the First Amendment. The First Amendment bears “less heavily” on copyright – less heavily than what? Even worse is “traditional contours.”

The one fact everyone agrees on: the copyright clause and the First Amendment were adopted close in time; a limited monopoly is therefore compatible with free speech. But why did the Framers think so? Today, people say idea/expression and fair use, but did the Framers think about that? We don’t know what that means. (Comment: Consider, for example, that the newspapers Jefferson so loved weren’t copyrightable at the time of the Founding. Past compatibility is no guarantee of future performance.)

Does the idea that copyright promotes expression help? Usually, that doesn’t justify laws restricting speech. If copyright law violated a specific infringer’s First Amendment rights, it wouldn’t help that it promoted someone else’s speech.

So what were they thinking? 95% of infringements will involve no exercise of First Amendment rights because the First Amendment is about the freedom to make one’s own speech. Plagiarism isn’t a First Amendment activity. (Comment: Nor is plagiarism copyright infringement. Well, I wrote a whole piece about this – I will try not to interrupt too much.) Selling books is First Amendment activity, but stealing books to sell them isn’t.

It’s a mistake to take the 80% of infringement that’s just copying as First Amendment problems. We ought to look at those involving expression by the infringer. Is the copyist making his/her own point, and is copying expression important to that? The Zapruder case is an example of where copying is so important to the argument it must be allowed – incidentally, maybe the Zapruder film isn’t copyrightable at all because it’s accidental, not an intellectual production. Alan Cranston’s translation of Mein Kampf, showing the ugly parts left out of the official translation, is another example (Bender wasn’t aware of how this case came out – not fair use).

The best analogy: a sculptor wants to use a unique tree on my property for his sculpture. Normally he’d be liable for taking the tree even if the result is creative. People say that scarcity makes a difference, but assume I have a large marble quarry that isn’t exhaustible; the sculptor still has no right to take the marble. (Comment: So we’re asked to assume counterfactually that tangible property lacks one of its defining characteristics … and then simply expected to apply the tangible property rule to this imaginary situation? I am unpersuaded.)

My comments: I couldn’t resist saying a bit about Bender’s presentation. Bender provides us no reason to distinguish the Zapruder/Mein Kampf cases from the rock quarry. If property is property and that’s the end of the question, I don’t have any right to use either type no matter how helpful it would be to my message. But what that reveals is the deeper flaw in the claim: the label “property” cannot be dispositive; otherwise it would be trivial to legislate away First Amendment protections in any area (defamation as property in personhood – as the right of publicity threatens to do now; anti-flagburning laws as property in the flag; blasphemy laws as protecting religious property; etc.). The reasons for calling something property are relevant to whether the First Amendment permits particular unconsented “uses,” but Bender’s analogy is unhelpful because it doesn’t address whether the reasons for excluding people from rock quarries are the same as the reasons for excluding people from copying – or sampling – music. When pundits suggest that this is the first “YouTube election,” it’s hard to say that copying is serving no speech-promoting function.

The other big point is that, if you start to say that a copyist’s “mixing labor” with a creative work is what triggers at least a First Amendment inquiry, you are conceding far more ground to free speech concerns than most people think. Selection, coordination, and arrangement – the mix tape – are recognized types of creative labor in copyright law. Performances also involve the addition of creative labor to the underlying work. And of course any infringement of the derivative works right would trigger a First Amendment analysis under this theory. That’s a reasonable position to take, but let’s not pretend it largely preserves the stability of copyright law except in a few unusual cases.

The rest of my presentation was an attempt to draw some lessons for copyright by comparing concepts of the public domain to public forum doctrine. I’m still working on this; there is definitely meat there, but I haven’t quite figured out all the moving parts. At the very least, the difficulties of public forum doctrine promise a rough road ahead for useful theories of the public domain.

Jane Ginsburg: How do we know safety valves work, in the sense of protecting and promoting speech?

Liu: His proposal presumes they do, as the Court does in other areas. His concern is not so much about the baseline of defamation but for problems in copyright.

Bender: The way you know is to test them – get sued, create litigation.

Me: There is some empirical comparative evidence on defamation suggesting that the legal regimes here and the UK don’t have much differential effect on the practice of journalism. Of course, journalistic ethics – the desire to report truthfully – may be more important than defamation standards. What we do know is that the current copyright regime chills speech; publishers refuse to rely on fair use.

Kasunic: We need to create a record on this in other ways besides litigation. Best practices, along with records of how filmmakers are being silenced, are helpful. DMCA rulemaking can also acknowledge the effects of the law on particular uses.

Sprigman: His thought – how do we know that First Amendment safeguards are generally effective? Because we have a baseline, and when Congress departs from it we no longer know whether those limits are effective. But Sprigman’s preferred baseline is 1790; when copyright gets bigger than that, we should apply First Amendment scrutiny.

Liu: Liu is puzzled by what “traditional contours” could mean, and what the baseline is. The Court almost suggests that today’s copyright is the baseline, but why would that be true? Also, it’s hard to understand what would be sufficiently outside the contours to trigger constitutional scrutiny. And it’s hard to understand where “traditional contours” comes from – why does tradition matter (when it didn’t in defamation, blasphemy, obscenity, etc., etc.)? This is why he doesn’t want to tie “traditional contours” to his argument about breathing space for idea/expression and fair use.

Bender: It should be First Amendment values, not tradition, that guide us.

Graeme Austin: What about the reverse Mein Kampf situation – the Family Movie Act. Does the FMA support or harm First Amendment values?

Kasunic: Parents can make a choice not to hear speech, which means it supports their speech.

Bender: It violates kids’ rights!

Me: There are First Amendment values on both sides – the editors are asserting their right to make someone else’s speech but use different words, which makes it easier for them to speak but can interfere with the original speaker’s message.

Alternatives to the Copyright Power

The Relationship of the Copyright Clause to the Commerce Clause and the Treaty Power

Moderated by Tim Wu.

Tom Nachbar, Virginia: Jefferson made today’s argument: intellectual products are not like tangible property because they are nonrivalrous. Some have suggested that this is a reason why Congress can’t use non-IP powers to regulate; it can only regulate through the IP clause. Nachbar disagrees. Every Article I power has limits, but that doesn’t mean those limits apply to each clause – we have to take the constitutional whole into account. His research fails to reveal norms that would justify applying copyright’s limits across all the other clauses. Rent-seeking, for example, is a practice with a long and noble history in US law, so you can’t say copyright’s limits implement a generally applicable anti-rent-seeking norm.

IP rights aren’t so special from the modern point of view, either. Can nonrivalry serve as a justification for limiting Congress’s power to grant, say, perpetual rights or rights in facts using the commerce clause or the treaty power? Rivalry is a continuum – my pen is much more rivalrous than my yard, given the way I use them. Even with a public park, there is rivalry between lovers of parks and lovers of strip malls. The rivalry is not for possession but for control. IP assumes the existence of rivalry over the income stream generated by a work.

Is rivalry encoded in the patent and copyright clause? It’s hard to see in any of the words of the clause. The durational limit could be equally applied to tangible property – we do that with property taxes, which make sure that a piece of property is being used in a way that’s economically productive. The subject matter doesn’t seem particularly tied to rivalry – compare expression, ideas, and facts; rivalry doesn’t seem to be a factor distinguishing between them. Even if we assume that “promoting progress” is a limit, that again has little to do with rivalry.

Markets are not subject to rivalry. Buyers & sellers are consumers of markets, but additions of buyers and sellers to markets only increase the value of the market. We do favor public control over private control of markets – the government specifies how markets are run, as for example with the Sherman Act. But there’s no constitutional requirement of or limits on such regulation of nonrivalrous goods. Congress can shut down markets pretty much at will; nonrivalry doesn’t play a role in constitutional constraints generally.

What lessons? His hope is to further erode arguments that IP is somehow constitutionally privileged. Rational basis is the way to go (First Amendment claims aside).

My comment: I’m not sure why the copyright clause only controls other clauses if it expresses a generalizable value. The requirement that the President be at least 35 when elected expresses no generalizable value, yet I find it difficult to imagine that Congress could circumvent it with a treaty.

Dotan Oliar, Virginia: Courts should develop a concept of covered subject matter, and not let Congress circumvent it through reference to other clauses. So, with the antibootlegging statutes, the arguments are that both the writing/fixation and limited times requirements have been violated. The government argued that the commerce clause nonetheless justified the statute.

The scope of the commerce clause used to be much narrower; the federal trademark laws were originally (and unsuccessfully) defended under the IP clause because they went beyond the then-current understanding of the commerce power. Now, though, the commerce clause power has expanded so that all IP regulation could be seen as regulating interstate commerce. Still, the Court hasn’t abandoned its commitment to the existence of some limits on congressional power.

The closest Supreme Court precedent is the one striking down a nonuniform bankruptcy law that Congress attempted to enact under the commerce clause. This is equivalent to an attempt to enact perpetual copyright for all works, but it’s not clear how the precedent applies in cases of less obvious conflict. Given that bankruptcy and IP are both economic regulations, they will both always be regulations of interstate commerce under current definitions – and yet the Court does not allow limitations on one power to be avoided by use of the commerce power. What’s driving is the canon that the specific controls the general. Dastar is a related case – a conflict between copyright and trademark, the latter of which is justified by the commerce power. Scalia says that the specific rules of copyright trump the regulation of attribution in general commerce.

Conclusion: the bootlegging cases are borderline – what is the essence of this regulation? If it’s essentially copyright, then the law is unconstitutional. If it’s essentially a regulation of commerce, it’s fine. One implication: we should only worry about the antibootlegging law if we think that copyright law affirmatively bars this kind of law.

Graeme Dinwoodie, Chicago-Kent: Dinwoodie wants to look at the treaty clause, which has been raised in defense of the antibootlegging statute. Almost every single provision of the Copyright Act that’s been challenged of late has an international dimension. Arguably, there’s broader support for viewing the treaty clause as offering autonomous legal authority, that is, Missouri v. Holland’s endorsement of using treaties to do what couldn’t be done under the commerce power. Possible views:

(1) Subservience: the treaty power is limited by the copyright clause. If the clause’s limits mean anything, they can’t just be circumvented by a convenient treaty. The embarrassing case is Holland. Are the limits on the copyright clause fundamental to the structure of American law? If so, the treaty power can’t justify abrogating the copyright clause any more than it could justify abrogating Sixth Amendment rights, as in Reed v. Covert. Dinwoodie thinks this overstates the case, since copyright’s limits aren’t fundamental to the structure of American governance. Treaty-making involves different institutions and constraints than domestic lawmaking. Anyway, if one clause controls the other, which is on top? Arguably the treaty power is more specific than the copyright clause as to matters within its scope, and should thus control. And, if other countries do copyright differently, securing American copyright values might require more leeway in treatymaking.

(2) Expansiveness: the treaty power is unconstrained by anything but explicit limits like the First Amendment. This gives too much latitude to the treaty power. Proponents haven’t explored the line between affirmative prohibitions (which can’t be abrogated in their theory) and failures of power (which can be). For example, many theorists think “limited times” means “and not forever,” so why isn’t that an affirmative prohibition? And many effects of international law on domestic copyright are implemented not through the treaty power but through ordinary domestic lawmaking. TRIPs is not a treaty, for example. Using the treaty power may be a simple end run around the copyright clause rather than an independent exercise of foreign negotiating powers.

(3) Limited expansiveness: the treaty power is unconstrained by other powers but subject to internal limits, such as subject matter.

We need to acknowledge the integration of the domestic and international lawmaking processes. A provision of copyright law that exceeds the copyright clause isn’t constitutionally immune from challenge because it’s done under a treaty, but the US can enter the international environment to achieve copyright goals even with nontraditional means. Consider: (1) the important role of the treaty clause in giving domestic effect to US international obligations, (2) the strength of the international obligation – is the US directly committed to it, or is it a permissive move to improve the US negotiating position, and (3) the extent to which the treaty process incorporated real political checks.

Some limits in the copyright clause are arguably more effective than others. “Limited times” is hard to assess, as is “promoting progress,” but limited times has some justiciable content, as the antibootlegging statute shows.

Wu: Imagine that Congress wanted to create perpetual copyright for Peter Pan, using the commerce power and also pursuant to a treaty with England. What should the courts do?

Nachbar: There’s no particularly helpful limit from the copyright clause – this is an easy question, since it’s a regulation of foreign commerce. If there’s a rational basis, no problem. He agrees with Dinwoodie that there is a middle ground – the treaty power gives extra but not infinite power. Perpetual copyright for Peter Pan would be within that middle ground.

Oliar: Nope, unconstitutional. In the bankruptcy case, Congress pretended it was passing a commerce regulation, but the Court identified it as really a bankruptcy law. Same here. As for the treaty power, it would be a pretextual enactment and also invalid. Wu calls this a “jurisprudence of end runs.”

Dinwoodie: Actually, England can’t make treaties, only the UK can. But it’s a good hypo. The hardest limit in the copyright clause is “limited times,” because it’s got to mean something. It doesn’t require a great deal of second-guessing to identify a perpetual copyright as violating “limited times.” So it would fail under the commerce clause. The treaty clause is harder. Assume that it’s a fully committed international obligation – the strongest possible – and a treaty with full 2/3 Senate consent, it’s really hard and he doesn’t want to allow perpetual copyright to survive, but he squirms. Given the strength of the limited times obligations, he wouldn’t honor something like an executive agreement or a bicameral treaty-lite. Pretext should also matter – if this is really an end-run around copyright, that’s a reason to strike down the law.

Nachbar: Limited times is the hardest limit for him, too. There’s no particular connection to a theory of why times should be limited. It creates a public domain of old and largely valueless works, but without a coherent theory of what that does for us. There’s no generally applicable value that comes out of it.

Jane Ginsburg: What if Congress rewrites the bootlegging act with a term of years, but no fixation requirement?

Oliar: This is why students don’t like hypotheticals. The older understanding of “writings” is that it deals with originality, not with fixation – so maybe that’s the answer. The TRIPs agreements, the reason for the antibootlegging statute, require a minimum term of years, not perpetuity. If the competing value is the need to conform to international standards, Congress could easily have done so.

Ginsburg: Then you think that the rule that the specific controls the general does not mandate a result here.

Oliar: Yes, he doesn’t yet have an answer about whether the writings requirement is necessarily limiting. The necessary & proper clause might also play in here, so that anti-bootlegging is a way to protect the actual writings of authors.

Congressional Power and Limitations Inherent in the Copyright Clause

Moderated by Jane Ginsburg.

Chris Sprigman, Virginia: One point to make – the limitations the Constitution places on Congress are systematically underenforced, and we should do something about it. What does “limited times” mean? Not “unchanging,” according to the Court, but “not forever.” Make policy arguments about what’s too long to Congress. With a term of nearly a hundred years, what’s in the public domain, then? A few timeless works aside, it’s mostly useless husks, whose cultural value/relevance is used up. The text doesn’t readily admit of judicial enforcement, but the result of going to Congress is unlikely to vindicate a robust public domain because of rent-seeking by wealthy, motivated, organized IP producers.

What is to be done? We can’t directly enforce “limited times” in the courts. We can work on protecting the integrity of the public domain. Releasing unpublished works when their terms expire is an important part of that. Dastar’s analysis of the interaction between copyright and other rights is another key example of protecting the public domain. We also need to interpret anticircumvention rules so that they don’t cover circumvention when a TPM guards access to a work in the public domain.

As a lawyer in Golan, his perspective is somewhat different than Marybeth Peters’s. Golan is a challenge to URAA restoration of copyright in works in the public domain. How can we use Golan to vindicate indirectly the otherwise underenforced limited times provision? You can say that the public domain is a one-way street, or a roach motel: things go in but they don’t go out. The government has examples of past restorations, but the plaintiffs find them inapt since they weren’t wholescale. When you have a fight over history, you should pick the view of history that vindicates the public domain.

Kahle: Didn’t challenge the 1909 Act, but happy to add it in if Peters explains how. You used to have to act to get a copyright, and act again to keep it. This again allows courts to lean in favor of the public domain when evaluating what the “traditional contours” of copyright are.

Tony Reese, Texas (visiting NYU): Eldred is consistent with a tradition of deference to Congress, but goes beyond the previous rulings on subject matter and standards. Eldred indicates a broad approach to congressional power in evaluating how Congress acts when protecting copyrightable subject matter – what kinds of protections are available, not just what is eligible for protection.

What might happen with respect to the unpublished public domain, a field that’s new in US copyright law? Potential publishers of unpublished PD works may claim that the threat of competition deters them from publishing such works, and ask for protection from Congress for a period of exclusivity. This call could appeal to law in the EU, which for some time has required a 25-year exclusive economic right for the first person to publish a previously unpublished work in the public domain. Such calls for harmonization are not unknown to the US.

Could Congress grant a 25-year exclusive right of first publication? Reese is only considering copyright powers, not First Amendment problems or commerce clause powers. Objections: (1) Limited times; (2) Congress can’t remove material from the public domain; (3) Congress can’t grant rights to non-authors.

There’s no textual reason to think that the “limited time” has to be one continuous period – it could be a limited time interrupted by a period of nonprotection. Historically the protection for unpublished works was perpetual until publication. Between 1790 and 1909 Congress offered protection to unpublished manuscripts as long as the manuscript remained unpublished, with no time limit and no formalities.

Removing material from the public domain: There’s nothing textually express in the copyright clause itself barring removal from the public domain. Does it promote the progress of science and useful arts? It’s plausible to think that publication promotes progress, and Congress could plausibly believe that granting new protection promotes publication. Past restorations were about giving works the full term they would have enjoyed if they hadn’t fallen into the public domain. Protection for unpublished works in the PD would be different, extending past the maximum term of copyright. But all past restorations have involved published works, works that were not only legally in the public domain but that were factually accessible to the public. A publication right would typically cover works with only one or two copies held privately; as a practical matter, the public wouldn’t be able to engage in much copying, so removing them from the public domain may have a different impact. There is room for debate here.

Authors: Congress has a long history of granting copyright directly to people who aren’t authors. Until 1978, copyright was acquired by publication with notice, and the party who published could be the “proprietor” rather than the author; the grant of copyright was directly to the proprietor. Similarly, renewal rights could go to non-authors who could trace a chain of title.

As a predictive matter, a court might well find a publication right to be within Congress’s power, even though there are lots of reasons it would be a bad idea.

Lessons: Even a novel right like this might fit in a broad reading of Eldred. We might learn from Eldred’s use of history. Congress had in the past done the same thing, term extension, a number of times. But we’re likely to get more ambiguous cases, where Congress has not done the exact same thing before. How far do we push the historical analogies? Finally, it’s worth asking the normative question of whether it would be a good idea to grant new rights, congressional power notwithstanding. If Congress would restore full common-law protection if it couldn’t grant a publication right, the publication right might be the lesser evil. But it’s probably not worth it.

Graeme Austin, Arizona: Federal courts don’t want to scrutinize copyright law for constitutionality, despite the threat suggested by Feist. Some federal courts have connected constitutionality with international copyright relations – legislation facilitating access to foreign markets can be a constitutionally relevant part of copyright’s quid pro quo. This only goes to demonstrate the incoherence of the quid pro quo argument as a constitutional constraint. The quid pro quo idea provides a reason for Congress to enact copyright laws, but it shouldn’t be a limit on congressional action.

Foreign authors’ access to US markets – is it relevant to the copyright bargain? If ex post benefits to foreign authors count, copyright is becoming fully internationalized. This is most fully realized in the court of appeals opinion in Luck’s Music: the knowledge that Congress may pass laws like the URAA in the future does affect creators’ expected benefits – if Congress can remedy loss of protection for works that have fallen accidentally in the public domain, the incentives to create increase. Foreign authors, in this view, are party to the US copyright bargain. The court acknowledged that this was a meager incentive, but found it sufficient. This makes the quid pro quo theory look pretty bizarre: the quid pro quo includes not only extant incentives but the prospect of remedial legislation adding rights. This causal chain is pretty attenuated and unlikely to affect authors’ calculations.

In the past, improving protections for US origin works might have improved foreign markets, and vice versa, when reciprocity was needed for protection. If a US audience is exposed to foreign works motivated by US rights, that contributes to the progress of knowledge within the US. But more generally, analyzing the copyright bargain in terms of a single society makes little sense; all nations with viable markets need to be taken into account.

Use of the quid pro quo concept has thus, perhaps ironically, led to the acknowledgement that American law needs to be more outward-looking than it has been in the past. This also implies that the foreign commerce clause provides further support to congressional power in copyright – but maybe that’s just adding foreign insult to domestic injury. If it’s bad policy here, it’s bad policy abroad. There are no appreciable limits on what might help US negotiators encourage others to enact similar laws – so this basis for establishing the rationality of US copyright laws has the potential to render all others moot. So we need some standards to prevent diplomatic agendas from governing domestic law.

Some limits may be divined from Eldred, those “traditional contours.” Nonetheless, the Constitution may not require the US’s original isolationism with respect to foreign authors, even though the Framers didn’t care about those authors. Like the political branches, the judiciary now recognizes the need for a workable international system. Engaging with the international system doesn’t violate the traditional contours of copyright even if it rewrites the formalities of copyright. We need a jurisprudence of humility that comes from being part of the world.

Michael Landau to Sprigman: Any concern about the expansion of subject matter? Whole fields of works weren’t traditionally within copyright and became covered by it, and why isn’t that a constitutional concern? Also, Dastar wasn’t about public domain works, but whether §43(a) covered creative origins at all.

Sprigman: Sure, but Dastar was motivated by concern for the public domain, even though its implications are much broader. As for subject matter, it’s a product of the growth of new technologies – photography, computers, etc. It seems like a natural accretion, and he doesn’t object to accretion, only to blindness to the fact that there is change over time. For example, Eldred’s claim that copyright is compatible with the First Amendment because the Framers enacted both is laugable, given how tiny copyright was then and how tiny the First Amendment was then. They fit in the 18^th century – when Justices enforced the Alien & Sedition Acts – but don’t fit now.

Ginsburg: What history tells you about what’s permissible may be probative about permissibility, but not about what’s mandated. Kahle tries to elide the distinction by claiming that, because formalities existed in the past, they’re mandatory.

Tim Wu: What are the potential changes in scope Congress might try? What are the theoretical limits?

Sprigman: Feist suggests some limits in “writings” of “authors,” distinguished from facts. And different media may require different rules – it’s hard to talk about the “idea” of a symphony without playing some of the music.

Reese: Fashion is one obvious possibility for changing scope. Protection for smells is another. Do you need expression to be given “visible” form, as said in Burrow-Giles? Expansion of protection to sound recordings switches that to “tangible” form.

Austin: Region coding might be an example of a question of copyright’s permissible scope – does copyright law have anything to say about where people enjoy a work?

Ginsburg: We might distinguish rights from subjects covered – the display right is new in 1978; is that a transgression of traditional contours, even though it only covers traditionally protected works? What about architecture, which is an expansion of subject matter?

Peters: The same question of rights comes with the DMCA anticircumvention rules: is an access right an expansion of copyright? The anticircumvention problems turn out to be more about use of copyrighted works as tiny components of larger products, and so companies add software locks to things like cellphones. What is the work that’s being protected? A tiny piece of code that drives the device. Is this really what copyright is for?

Ginsburg: The problem is that the copyrightable work is being used as a pretext – a garage is not “a work protected under this title,” and neither is a cellphone service. When the work is a smokescreen for something else, a court can sensibly interpret 1201 as not extending to protecting that something else.

Reese: Maybe an “exclusive rights” approach is better – is access part of exclusive rights? That’s a tough argument under Eldred, though.

Emory Simon, software lawyer: He is much more interested in rights than subject matter. When a reproduction of a physical copy is much less meaningful, and the question is more about use, the importance of the DMCA is that it starts to create a use right. Would a use right, a right to prevent others from enjoying or deriving economic value from a work without permission, be constitutional?

Sprigman: If it would prevent reviews, there’d be a constitutional problem.

Simon: There’s a lot of software in cellphones, much copyrightable (music, programs, etc.) – the copyright owner wants to say you can only use the software as long as you keep paying.

Peters: Can’t see anything unconstitutional in it, but it’s a question of public policy. Performing and reproducing are all “use,” but should we go beyond that to add an amorphous right.

Reese: This would be a right that would cover, e.g., private performances. We don’t have much guidance on whether that would pose a constitutional problem, because the Court hasn’t addressed rights problems at all.

Austin: The Australian high court saw a clear distinction between economic enjoyment involving reproduction and enjoyment involving access, though it perhaps didn’t give sufficient weight to the fact that consumers don’t care any more whether they own a copy. Can the commerce clause step in?

Ginsburg: The text says “exclusive rights” but doesn’t tell us what they are. So maybe access/use can be added if needed to make the right meaningful. May involve a distinction between constitutional rules and values – the court might not stop you from adding such a right, but it might be harmful to copyright’s values.

Question: The public domain isn’t in the constitution – isn’t this a mountain out of a molehill?

Sprigman: Limited times is in the constitution, and that creates a public domain. Congress in 1790 terminated common-law state rights that conflicted with federal copyright in published works.

My question: Are compulsory licenses constitutional? They don’t seem like “exclusive rights.”

Sprigman: A compulsory right is still an exclusive right, it’s just a liability right and not a property right.

Ginsburg: But historically, “exclusive” meant property rights.

Sprigman: We are all opportunistic originalists. If we let copyright be different from 1790 copyright in some ways, why not others?

Austin: The question proves too much – if we see copyright as a constitutional matter, then all sorts of arguments against the present regime come up, and may end up amplifying author’s rights in unfortunate ways.

Ginsburg: We could say the clause authorizes only exclusive rights, or we could say Congress can do everything up to and including exclusive rights; the clause gives Congress leeway in selecting the amplitude of rights. That said, what if we only had compulsory licenses – would that be consistent with copyright values? Is there an authorial control value in the Constitution?

Q: Given that the Constitution only authorizes but does not require a copyright law, can we say that it creates a public domain? Congress didn’t have to preempt state law.

Sprigman: But when Congress acts, it has to act in a way that generates a public domain – protection for limited times. State laws were patchy and there’s debate over what they covered, but there is a federal public domain.

Marybeth Peters on Constitutional Challenges to Copyright

Peters, U.S. Register of Copyrights, gave the keynote at today's Constitutional Challenges to Copyright conference at Columbia Law School:

Constitutional attacks on copyright are a relatively recent development. Insitutionally, Peters’s office is not inclined to support such attacks; Peters is a named defendant in a number of challenges. Her office defends laws even when it didn’t want to see those laws enacted, arguing for deference to Congress.

In the past, courts looked to the Constitution mainly to analyze substantive copyright law related to copyrightability (e.g., what are “writings”?). Term extension spurred the development of constitutional challenges. Larry Lessig saw the opportunity to use the courts to overturn Congress’s poor judgment. So far such challenges are unsuccessful; the single success may be overturned any day (the anti-bootlegging statute).

On Eldred: There was very little opposition to the CTEA at the time, though Peter Jaszi and Dennis Karjala tried. Once it got passed, there was a lot more attention – the attacks seemed out of the blue. Lessig was nowhere during the legislative process. (Comment: I’m not really sure what I’m supposed to glean from this. It may have been bad politics to stay out and to not monitor proposed legislation for mischief, but am I supposed to think he and Eric Eldred forfeited their rights to complain?)

The bottom line on Eldred: courts should defer to Congress on how best to pursue the copyright clause’s objectives. What about the First Amendment challenge? First Amendment rights are accommodated through the idea/expression distinction and the vibrant fair use doctrine. Restricting my ability to copy your expression isn’t an undue burden on my speech; First Amendment concerns are weightiest when I want to make my own speeches. (So, you know, I’m not engaging in any particularly valuable activity now, reporting on Peters’s speech.)

Lessig snatched victory from the jaws of defeat by using the Court’s language on “traditional contours” of copyright protection. Brewster Kahle has now sued based on provisions of the renewal act of 1992, the Berne Convention Implementation Act, and the 1976 Act, harping on the idea that these laws removing formalities altered the traditional contours of law. Traditional copyright protection required affirmative steps to claim it, and most works didn’t, but now we have automatic/unconditional rights – this is, they argue, a radical departure justifying application of First Amendment standards.

Peters agrees that only 15% of works registered were renewed, but they all had that initial term of protection. The district court dismissed Kahle, rejecting the argument that these laws changed traditional contours, which it defined as the scope of copyright protection rather than formalities. Argument in the court of appeals is next month.

The remaining challenges are to the anti-bootlegging provisions of the law. The criminal statute provides no limited time – the recording industry argued that, if what you do is wrong at the beginning, it can never be right. (I guess they never heard of adverse possession.) The 11^th Circuit upheld the criminal provision, even though it didn’t fit within the copyright clause (live performances aren’t “writings”), because it was okay under the commerce clause. In Martignon, a SDNY judge came to the opposite conclusion, focusing on the “limited times” issue. Congress can’t use the commerce clause to circumvent the limits on the copyright clause. That argument was in July 2005, so a decision may come soon.

The related civil anti-bootlegging provision was challenged in Kiss Catalog, but the Justice Department wasn’t informed of the constitutional challenge as it should have been. A new judge decided that the commerce clause allowed the law, but the litigation continues.

There is a very heavy burden on challenges to copyright. The government usually wins, and should. This is not about good policy, but about power. (Kind of like Season 7 on Buffy.) If you don’t like a law, go to Congress and argue.

Institutional Review Boards and the First Amendment

I have a post up on the topic at the Georgetown Law Faculty Blog.

Casket case

The York Group, Inc. v. Horizon Casket Group, Inc., 2006 WL 2934258 (S.D. Tex.)

A somewhat confusing complaint leads to an equivocal result in this case about the implications of leaving off the label “Made in China” when the default legal regime, set out by the Tariff Act of 1930, requires all foreign-made goods to be labeled. The importer of unlabeled goods has violated the law, but does a competitor have a Lanham Act claim? It would be reasonable for consumers to infer that unlabeled goods are domestically produced, given the background rule to which they are constantly exposed. Other cases have held that failure to label imported goods is a violation of the Lanham Act – a sort of falsity by necessary implication. But the court here, after extensive discussion of the precedents, was not convinced.

Plaintiff York makes caskets. Delta Casket used to have a distributorship agreement with York, but it was terminated at the end of 2001. In 2002, Delta decided to import caskets from China, allegedly sending sample Delta caskets to the Wuxi Tractor Co. for copying. Delta’s distributors for these imported caskets shortly thereafter incorporated as defendant Horizon. The Chinese caskets were not individually labeled “Made in China,” though the Tariff Act requires that such a label be affixed so that the ultimate purchaser can see the country of origin. By 2004, Delta was competing with York.

York sued Delta for violating the Lanham Act, including trademark-type claims (based on copying casket designs and names) and false advertising/false designation of origin claims (based on the mislabeling). York argued that the failure to label was a per se violation of the Lanham Act. But the district court found that likelihood of confusion must still be shown. The Fifth Circuit has held that a violation of a different labeling statute, the Federal Hazardous Substances Act, does not constitute a per se violation of the Lanham Act. The FHSA has no private cause of action, and the court in that case ruled that it would not anticipate an administrative agency’s response to a particular set of factual circumstances.

The court pointed out that York could still proceed on a theory of likely deception, and the fact that Delta violated the Tariff Act might be relevant to assessing that claim. I am not sure what nonleading survey methodology could be found to show likely deception – asking consumers to inspect a Delta casket could easily lead to plenty of guessing and “I don’t know” responses. I’d be more attracted to a survey asking them to look at multiple caskets – even though the absence of labels on Delta caskets would stand out, that’s the point: where labeling of imported goods is pervasive, it’s reasonable for consumers to make the leap that unlabeled goods are domestic.

Some of York’s trouble here may have come from failure to make use of the large body of law on falsity by necessary implication. Under that doctrine, one could readily maintain that failure to comply with a pervasive labeling requirement is inherently false.

Further comment: Some state unfair practices statutes, like California’s, explicitly make “unlawful” conduct a violation of state law, allowing plaintiffs to enforce laws that themselves have no private right of action. In California, the violation of the Tariff Act would be enough to sustain the state-law claim.

Allegations of patent infringement aren't disparaging (or advertising)

Conditioned Ocular Enhancement, Inc. v. Bonaventura, 2006 WL 2982140 (N.D. Ill.)

Plaintiff sued defendants for infringing a patent on a method of vision training. Defendant Davidson counterclaimed, alleging Lanham Act violations based on cease and desist letters plaintiff’s law firm sent to current and prospective customers. The court relied on the cases holding that false advertising Lanham Act claims, as well as coordinate Illinois state law claims, are governed by Rule 9(b)’s heightened pleading requirement. In the 7^th Circuit, however, cease and desist letters sent to customers are not “commercial advertising or promotion,” ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 316 F.3d 731, 733 (7th Cir.2003), and thus there’s no Lanham Act claim regardless of pleading details.

State-law disparagement claims remained. The court reasoned that Illinois’s Uniform Deceptive Trade Practices Act codified the common-law tort of commercial disparagement. The letters said that Davidson was an unlicensed and unauthorized user of the patented system, and that a patent infringement suit is pending. But, the court ruled that this did not disparage the quality of Davidson’s business. Thus, again regardless of pleading, there’s no state-law claim.

Comment: this is an extremely, I think unsupportably, narrow view of what counts as “disparaging.” Given the concerns of the patent system, it might be a good idea to have higher fault requirements in such cases than in ordinary false advertising cases, but the potential harm such letters pose to a business cannot be denied.

Davidson also counterclaimed under the Illinois Consumer Fraud and Deceptive Business Practices Act, which requires (1) a deceptive act or practice and (2) an intent that the recipient rely on the deception (3) in the course of trade or commerce. Competitors may use this consumer protection law to redress competitive injury when they allege that the conduct involves trade practices directed to the market generally or otherwise implicates consumer protection concerns. Here, Davidson failed to plead the required consumer protection nexus. Sending out only seven letters, and only to Davidson’s customers, failed to implicate the required consumer protection concerns.

Davidson’s counterclaim for tortious interference with prospective economic advantage, however, survived the motion to dismiss.

Weird Al festschrift

Slate has an article on 25 years of Weird Al, with many links to YouTube videos of his oeuvre. Inevitably in discussions of transformative fair use or the parody/satire distinction, someone will bring up Weird Al (and the fact that he always gets permission). Here's Slate's argument that all Weird Al songs are parodies, not satires:

Even at their silliest ("I Want a New Duck," "Addicted to Spuds"), his parodies do important cultural work: They defuse whatever seriousness clings to the ubiquitous megahit, whatever tiny sliver of it colonizes our lives and makes us dream of a pop Xanadu where everyone has perfect abs and dances synchronously for our never-ending pleasure. He has singlehandedly tutored the MTV generation in critical thinking.

Recent reading on trademark genericity

Deven Desai & Sandra Rierson, The Genericism Conundrum, forthcoming in the Cardozo Law Review: This interesting paper argues that only uses in a selling/purchasing context ought to count in the determination of whether a mark is generic: that is, only when competitors actually use the term to advertise their products, or when consumers actually ask sellers for “a coke” and mean any type of soda. Uses in newspapers like “google that question” or noncommercial conversation like “can I have a kleenex?” would simply not count as evidence of genericity, since they can equally evidence hybrid meaning: a commercial, brand-specific meaning used to make purchases and a noncommercial, conversational meaning used to communicate with others.

Though the paper doesn’t say so, given the types of evidence used to show genericity now, marks would rarely be found generic (Chocolate Fudge Soda-type marks would be the exception; in essence, the proposal restores the idea that some marks are so descriptive that they are the “common descriptive name,” but the slide of fanciful marks into genericity would be less likely). The benefit from the low-protectionist perspective is that trademark owners might stop harassing newspapers and ordinary users, and could abandon their “education” campaigns that try to restrict language by telling people never to use marks as nouns. This also ties into the “trademark use/use as a mark” debate: The authors argue that newspaper uses of trademarks as shorthand for a product class or an action associated with a product is not “use as a mark” because it is not a sales context, and therefore trademark owners have no legal grounds for their threatening letters anyway. As they point out, it is a dubious practice to consider newspaper and dictionary definitions in the genericity determination, say that trademark owners are responsible for policing such uses, and then give them no cause of action against newspaper/dictionary misuse. Since, however, such a cause of action would be a bad idea, the obvious solution is to no longer use such uses as evidence of genericity.

Among other points worthy of discussion: The paper makes several empirical claims in support of its proposals, but cites no evidence for them. For example, the authors state that, when trademark owners invest a lot of money to create secondary meaning, they usually succeed; therefore, a finding of genericity if the manufacturer guessed wrong about the status of the name can lead to a lot of actual (“de facto”) confusion and inefficiency. Given that most product launches fail, I’d love to see the evidence that spending money is enough to create secondary meaning.

Burger King franchisee appeals McDonald's victory in class action

Several months ago, I blogged about a really bad dismissal of a complaint by Burger King franchisees based on false claims of the likelihood of winning McDonald's contests. The putative class plaintiff has now appealed, arguing that prudential standing tests are only appropriate when considering whether to expand Lanham Act standing beyond direct competitors; since Burger King is a direct competitor of McDonald's, standing to bring a false advertising claim is appropriate.

Plaintiff's appeal brief refers to that very post, among other (ahem) authorities. The brief is available here, courtesy of the plaintiff-appellant's lawyers. Among the interesting points raised, plaintiff argues that the existence of potential consumer plaintiffs ought not be part of the prudential standing inquiry, since consumers lack Lanham Act standing even if they can sue for other torts. In other words, the Lanham Act exists to give businesses a remedy for business harm, and only potential Lanham Act plaintiffs ought to count. I like this argument, and it fits well with another point in the brief, which is that the harm to the consumer (the difference in value between what a consumer paid for and what s/he received, or perhaps what s/he would otherwise have bought) is different from the harm to the competitor, who loses the full value of a sale. Full restitution to the consumer still leaves the competitor worse off than it would have been absent the false advertising.

Slight correction: the brief occasionally refers to me as Rachel. Rachel is a classic Jewish name beginning with R, but it's not my classic Jewish name beginning with R.

Swatch watches claims come close to success

Swatch S.A. v. New City Inc., -- F. Supp. 2d --, 2006 WL 2854400 (S.D. Fla.)

Swatch has an exclusive US distributor for its watches. Defendant is not that distributor, but still sells (or sold; see website) Swatches imported from abroad. The packages are altered (missing product reference numbers, stock keeping units, bar codes and batch codes) and the warranties are invalid, though Swatch has, as a business practice designed to maintain customer goodwill, routinely honored warranties on such imported watches.

The court found that Swatch had not shown that the package alterations made the goods “materially different” in consumer perception from genuine Swatches, which would take them outside the first sale doctrine, for purposes of summary judgment. The warranty was a slightly different matter: A warranty Swatch is bound to honor is distinct from a warranty that Swatch honors only as a matter of business practice. However, Swatch submitted no evidence that this intangible difference is material to a consumer’s purchasing decision. Thus, summary judgment was denied on the trademark claims.

Swatch’s copyright claims fared better – because the goods were not reimported but imported, they were not covered by first sale, and unauthorized sale in the US counted as infringement.

So, too, did one of Swatch’s false advertising claims get close to success: Defendant’s website FAQ included the question “Do the watches have a warranty?” The answer was, “Yes, [t]he warranty is handled directly by the manufacturer.” Because an invalid warranty isn’t a warranty, the court found this claim false. Materiality is determined by whether defendants misrepresented an inherent quality or characteristic of the product. Whether a warranty is in fact material was a disputed factual issue. Swatch provided statements from company representatives that warranties provide additional value to consumers, and pointed out that defendants thought it important enough to put in the FAQ; the court found this argument compelling but insufficient to entitle Swatch to judgment as a matter of law.

Some courts hold, with the FTC, that making a claim explicitly in advertising is evidence that the advertiser considered the claim material, and advertisers can be presumed to know their customers’ preferences. Whether that doctrine still applies in an age where a website can answer any question, from the serious to the trivial, has yet to be addressed. I’ve seen some pretty trivial FAQs. That said, my instinct lies with Swatch on this one.

Madness and credit

Clauson v. Eslinger, -- F.Supp.2d --, 2006 WL 2848118 (S.D.N.Y.)

Eslinger wrote the script for the film Madness and Genius when he was 13. He began pre-production in 2001; the completed film has garnered positive reviews. In the interim, after dismissing two producers from the project, Eslinger met Clouson at an NYU gym and asked if he wanted to help out with the film. The parties never discussed how plaintiff would be credited. Clouson performed a large number of complex administrative tasks in pre-production and production. Though on small budget films the role of producer and line producer are hard to distinguish, industry texts and guides indicate that “budgeting, fundraising, scheduling, crew assembly, location procural and other like tasks” of the sort Clouson performed are the line producer’s job.

Documents prepared by Clouson listed him as producer. “A contract between the two also listed plaintiff [Clouson] as producer of the film, although defendant contends that he was coerced into signing it.” Clauson, however, forged Eslinger’s signature on a Screen Actors Guild ("SAG") contract, indicating that Eslinger was the film's producer, which apparently makes Eslinger liable to SAG (and has negative effects on Clauson’s credibility).

Clouson’s involvement in post-production was less extensive than his earlier involvement, and the parties agreed that post-production work is fundamental to the producer’s job. After Clouson’s work on the film, he posted a resume on an industry website advertising himself as a line producer, but also referring to himself as a producer. When the film appeared in the Toronto Film Festival and in other submissions to film festivals, Clouson received no credit at all. Both parties have contacted the Internet Movie Database (IMDb), “a database used in the film industry to check resume accuracy,” and currently lists Clouson as line producer and coproducer and Eslinger as producer.

Clouson wanted an injunction against any use or performance of the film until he was listed as producer in the credits and all promotional material, and remedial measures requiring Eslinger to reach out to reviewers, etc., giving him credit, including taking out an ad in Variety for three weeks in a row.

The record evidence on the identity of the actual producer was mixed, so Clouson wasn’t likely to succeed on the merits and wasn’t entitled to injunctive relief.

Clouson’s contract claim, however, survived dismissal because he adequately alleged a contract between the parties requiring him to get credit as producer. In addition, the court refused to dismiss Clouson’s false advertising Lanham Act claim, because he alleged that the film’s credits and promotional materials “wrongly credit” Eslinger as producer. The court failed to discuss whether the misrepresentation could be material. There’s also a question of standing, though perhaps easily met if the parties compete in the market for producer services. But if Eslinger only produces his own movies, then we may be in a situation like that of the designer previously discussed, where a court found that a firm that only designs and licenses creative works doesn’t compete with a firm that uses those creative works to produce products – even though, for all we know, the firm does some of its own creative work in-house. In other words, in an industry where some firms are vertically integrated and some aren't, competition may be more difficult to determine.

Design piracy case survives Dastar motion to dismiss

Gail Green Licensing & Design Ltd. v. Accord, Inc., 2006 WL 2873202 (N.D. Ill.)

The relevant facts: plaintiffs allege defendants copied its unpublished, copyrighted designs for pet clothing/costumes. The court dismissed the false advertising claim because plaintiffs didn’t compete with defendants. In Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999), the Seventh Circuit concluded that a plaintiff that was in the business of creating and marketing cartoon characters lacked standing against a football team, and that rationale applied here.

But the court refused to dismiss the passing off claim. Plaintiffs allege “unauthorized and unlawful uses of pirated copies of Plaintiffs’ original Works on various goods” that omit to state that defendants’ “counterfeits” are unauthorized, which constitutes false and misleading representations that defendants’ goods bear plaintiffs’ authorized designs. This is a clean kill under Dastar, which the court somehow didn’t recognize. The court may have gone off the rails by applying an intervening Seventh Circuit decision discussing the fact that physical products like Ford cars often incorporate the products of other manufacturers, and applying Dastar to hold that there’s no deception if the consumer can tell that the overall finished product comes from the seller. The court thus read the complaint broadly and said plaintiffs didn’t fall within Dastar.

But the Seventh Circuit gloss addresses a different facet of “origin” than the precise issue in Dastar, and in this case: the complaint clearly alleges that defendants produced “copies” of plaintiffs’ designs. As such, those copies have their origins with defendants, because "origin" in the Lanham Act refers to physical provenance, and the complaint cannot fairly be read to say that defendants took plaintiffs’ physical products and incorporated them into new products. Defendants’ argument did not correct this error, perhaps because they argued (correctly but distractingly) that retail products of this sort are the product of many designers’ decisions, not a single creative force. It’s true that selling a t-shirt without naming every designer who contributed isn’t a false statement of origin – but that, under Dastar, is because the designer didn’t physically produce the product.

So this claim that should have been knocked out at the motion stage will have to proceed to summary judgment.

Higher litigation

I previously reported on CollegeNet v. XAP, in which two college-application services, who received their revenues from two different sources, were in litigation. Eric Goldman pointed me to this story from the Chronicle of Higher Education reporting that a jury awarded $4.5 million to CollegeNet on its Lanham Act claims, as well as $4 million on unrelated patent claims. Both parties will appeal, since some of CollegeNet's patent claims failed.

The Chronicle has another story about a false profile created by a marketer on Facebook. (See also the Washington Post story.) In this case, the marketer made off with 300,000 email addresses before its false identity was discovered, and its "friends" soon received spam touting the marketer's wares, though the marketer denies involvement in that. College students aren't that litigious, but I've got to believe that there's a class action in there somewhere.

Why we buy -- or don't

MapInfo Corp. v. Spatial Re-Engineering Consultants, 2006 WL 2811816 (N.D.N.Y.)

The parties, who make computer software, are former partners whose relationship deteriorated into a six-count complaint and fourteen counterclaims. They initially agreed to develop a version of SRC’s proprietary software integrated with MapInfo’s proprietary data, creating a joint product marketed under MapInfo’s trademark. Eventually they agreed to terminate the partnership, and then MapInfo sued.

This opinion caught my eye because of a dispute about expert witness testimony on disparagement claims. The court precluded expert witness testimony on damages stemming from defendant’s false advertising/disparagement counterclaim, because plaintiff produced affidavits from many of the relevant customers that plaintiff’s negative statements didn’t affect their purchasing decisions. The court found that (apparently brief) expert testimony about the subconscious way that negative advertising and disparagement work was insufficient to create a material issue in the face of these affidavits. Because defendant couldn’t show any harm, therefore, its damages claims – Lanham Act as well as state law-based – were dismissed.

This turns out to be yet another subtle way in which the Lanham Act relaxes the standards of liability from the common law. In a Lanham Act case seeking injunctive relief, even when the plaintiff is required to show that consumers perceived a false message (implicit falsity), the plaintiff is not required to show that consumers believed the message. If it’s a material claim, consumers are presumed to have been deceived. This is consistent with a lot of consumer research that shows that people are terrible at giving the actual reasons for their decisions. Sure, they give reasons, and the reasons sound plausible, but they’re often quite wrong, as researchers have shown experimentally by manipulating the very factors consumers say are decisive and finding no differences in consumer choices. That said, it’s entirely understandable that courts would credit specific purchasers’ testimony about why they chose a particular competitor. If they didn’t, the entire truth-finding enterprise could be at risk. More generally, false advertising and trademark cases are at heart probabalistic – likely confusion, likely deception – and evidence of actual confusion/deception is not only hard to come by, but potentially irrelevant.

Now leaving Sunnyvale: Second try's the charm

FreecycleSunnyvale v. The Freecycle Network, Inc., 2006 WL 2827916 (N.D. Cal.)

Plaintiff sought to dismiss defendant-counterclaimants’ counterclaims. Plaintiff originally sought a declaratory judgment of noninfringement and non-tortious interference with business relations. Defendant claims to own the inherently distinctive and famous trademarks FREECYCLE, THE FREECYCLE NETWORK, and the Freecycle Network logo.

Defendant’s § 32 infringement counterclaims were dismissed earlier because defendant has pending federal trademark applications, not registrations. (Discussion here.) Defendant filed amended counterclaims attempting to address other deficiencies the court found in its first try.

This time, defendant’s infringement counterclaim adequately specified its allegation that its marks were inherently distinctive; it need not go further and specify whether it claims the marks to be suggestive, arbitrary, or fanciful. And it adequately alleged contributory infringement by stating that plaintiff “has willfully and intentionally induced third parties to infringe the Marks by encouraging others to misuse the Marks in the form of verbs, adjectives, gerunds, and participles ... so that this misuse will result in the Marks being rendered generic ... [and] for the specific purpose of rendering them unregistrable.” I’m still not sure there’s a cause of action for this – that’s not contributory infringement, which requires an underlying infringer to be using the mark as an identifier for its own goods and services. If plaintiff is assisting other parties to use “freecycle” as a term for their own free exchange services, that could do the trick, but that’s only a subset of encouraging general “others” to use the term generically. However, the court rejected the idea that plaintiff’s status as a moderator for a website that encourages others to use the “Freecycle” marks without permission is sufficient to satisfy contributory infringement’s “supplies a product” test; defendant can’t proceed on that theory.

Further, defendant adequately alleged direct infringement by plaintiff’s own use of the term and logo.

Defendant has now specifically alleged that the parties compete, allowing it to proceed on its false advertising counterclaim. I’m not sure what the false advertising here is other than trademark infringement, because the court doesn’t set forth the alleged falsehoods. If the falsehood is that “my competitor’s trademark is invalid,” that’s an interesting variant on “my competitor is infringing IP rights,” a claim that usually but not always survives motions to dismiss. Materiality seems questionable here, even more questionable than “my competitor is infringing,” which at least suggests some risk that the competitor won’t be able to continue supplying the relevant product.

Plaintiff renewed its SLAPP objections to defendant’s state-law unfair competition counterclaims. Defendant argues that plaintiff’s conduct with respect to the “Freecycle” marks is illegal, unfair, and fraudulent. The court found that the facts alleged, if true, would substantiate the claims.

Works in progress: Jasmine Abdel-khalik

Jasmine C. Abdel-khalik, Timing is Everything: Of Trademark Applications and Post Registration Limitations to Scandalous and Disparaging Trademarks: A scandalous mark can serve as an excellent source identifier, as the owner of the Pink Taco restaurant can testify.

This paper: Once a mark has been registered, what happens if it becomes scandalous after registration or is scandalous in a foreign country?

Justifications for the prohibition on registering scandalous marks: avoiding a government imprimatur; avoiding a waste of government resources; chilling commercial speech. That last is really what it’s about, regulating morality. One thing not on this list: protection of competition. That’s what makes it stand out in the statute, which means it should be treated uniquely to effectuate its purpose to channel commercial speech. We could debate its normative appropriateness, but it is the statute that we have and we need to apply it consistently.

The current system, as explicated in Harjo, doesn’t look to subsequent changes in the meaning of the mark, which means you can hang on to your newly scandalous mark. This is insufficient, because terms can change meaning. One example is when speakers of another language move here in great enough numbers that the doctrine of foreign equivalents applies and the mark is scandalous to them – like the American “OK” sign. But meaning also changes within a language. Not unrelatedly, power structures can change: people who previously would not have been able to make a claim of disparagement or oppression get the ability to do so. Groups assert offensiveness as a means of showing their existence and power. Change in social norms is a third related component – the groups’ claims to reflect public opinion can become more plausible.

The treatment of scandalousness should be like that for genericide. Even your investment in your mark won’t protect you if public perception changes to make your mark generic; the same should apply if public perception changes to make your mark scandalous.

Example: “Osama” Hair Salon – now has a really negative meaning that it didn’t create. But because it’s about public perception, this might be an invalid mark because scandalous. But that doesn’t further any unfair competition goals – so should we really import genericide, which is about unfair competition? Abdel-khalik says we should for consistency purposes.

Q: Why not let the market take care of it? The hair salon will probably change its name. (Does it matter whether there’s a core of Osama-supporters who like the name?) Questioner thinks the problem is trying to dig up evidence of what the mark meant at the time of registration; we should instead look at present evidence just because it’s more fair and easier to get right.

A: KKK has recently applied for registrations. We should be able to recognize their awfulness then and now.

David Welkowitz: A generic-risking mark owner has some control over public perception – Xerox took out a series of ads aimed at lawyers & journalists designed to fend of genericity. Johnson & Johnson changed its ads to “Band-aid brand” bandages. That’s not total control, but it’s more control than that available to the Osama Salon or the Pink Taco restaurant (or at least a hypothetical Pink Taco restaurant that’s been around for 40 years, though not the one that’s generating all the commentary).

A: Maybe this is more protectionist than we’d like, but what the prohibition is for is to allow you to avoid hearing your 6-year-old daughter say, “Let’s go to Pink Taco!”

Q: Do you care about knowledge or intent?

A: No. Harjo: REDSKINS was supposedly chosen “in honor of” a Native American on the team. At least some marks are per se scandalous; if we look at contextual evidence, maybe we can consider intent, but not when it’s something like a profanity.