Works in progress: Laura Heymann

Laura Heymann, The Trademark/Copyright Divide: Courts are starting to police the copyright/trademark boundary. Maybe we can move some things from the broad remedies of copyright law to trademark, where appropriate relief would be a disclaimer rather than an injunction.

Rogers v. Koons was brought as a copyright case, but what was motivating Rogers weren’t copyright interests in the market for the work, but for association and attribution rights. Another example: Jackson v. Warner Bros. where an Afrocentric artist sued over use of his paintings in the Whoopi Goldberg movie Made in America; he received letters expressing surprise that he authorized the use of his paintings in a movie of that caliber. His interest was more in reputation. Many copyright cases can be seen this way. (A problem I see is that TM law does acknowledge reputation as a reason to shut something up, not just apply a disclaimer – dilution. Also, I’m not sure you can fairly describe copyright as just interested in market harm.)

Creators in these cases aren’t concerned about losing a market they might otherwise want to exploit, but an integrity claim. At least they’re motived by an interest within the realm of TM rather than copyright. (Ah, but then we have to relax “use in commerce” to cover use in a film. As Goldman’s presentation points out, that might be a mistake.)

Courts should pay more attention when content owners try to use copyright to assert reputational or associational interests and should in fact use the doctrine of copyright misuse to force those claims into a TM regime. The second half of the proposal: that TM right should apply even after the copyright term ends. Source identification is important both to creators and to audience members. (Audience members? Did they really care in Made in America?) There’s no reason we need to abandon that importance when we move into the public domain.

Heymann is not proposing that any of these cases will result in a valid TM-based claim. The goal is to end up with fewer claims, and if the result is fewer claims overall that’s fine. But we need to render unto copyright what is copyright’s and unto trademark what is trademark’s. This is a more honest way of letting content owners make claims for what they really care about.

(What do we do with works that have no market, like unpublished letters? Do infringement claims have to be brought as TM claims for unpublished works? Or are privacy interests legitimate non-market interests within copyright under Heymann's scheme? If so, why not admit other non-market interests?)

Second-generation creators end up with what they want, which is the ability to reuse this material, as long as they have disclaimers. When we talk about copyright, we don’t focus enough on the economic interests at the heart of copyright law. (I just think this is wrong descriptively. There’s movement towards attribution in orphan works, as well as attribution requirements in educational fair use, and lots of popular conceptions of fair use refer to attribution – see also Creative Commons licenses, which require attribution.) There are two economic interests: the use of the work itself and the way it’s used, the packaging/the message it sends. But we conflate those two interests when we approach the copyright/TM divide. In other regime intersections, we’ve handled the overlap better – patent/TM, copyright/patent. In Sears, Kellogg, etc. we’ve been able to distinguish expired patents from unexpired TM rights.

As long as TM isn’t trying to do what patent does, create use rights in the article itself, it’s okay to use both, even though TM can be perpetual. Same thing with the patent/copyright interface in Mazer: the availability of patent has nothing to do with the availability of copyright. Yet we have a very different result in Dastar, where the Court cites the patent line of cases for the proposition that the right to copy passes to the public after the patent expires, then just adds in “the right to copy without attribution.”

The main issue that Dastar cared about was applying its rule to the public domain. Right now creators can use copyright as long as they can to achieve control, but Heymann’s proposal would preclude them from doing so.

Just because Romeo & Juliet is in the public domain doesn’t mean you can take a copy from Barnes & Noble without paying or perform it in traffic during rush hour; other legal regimes still apply. (Neither can you hit me with a copy of it, but what does that have to do with anything? Those are about the physical copy/performance, not the expressive work.)

Example: upstart airline starts using Rhapsody in Blue to identify itself, once the song goes into the public domain – it would cause confusion with United. But Dastar doesn’t recognize this. (I would distinguish using a work as a TM for something else as opposed to using a song as a TM for itself, which is what the bulk of Heymann’s proposal is about. Disclaimer remedies, as Heymann proposes, wouldn’t solve the problem with the Rhapsody in Blue example – and that’s because she’s proposing to solve a different problem.)

Eric Goldman: Could United really block another from using that song? Notice that you’ve shifted parties – it’s not Gershwin estate claiming TM rights that overlap with copyright, but someone who never had copyright rights in the work.

A: That matters only if you assume that the copyright owner gives up both copyright and TM at the end of the term – otherwise we treat the copyright + TM owner worse than the TM owner. (But as Goldman pointed out, the Gershwin estate isn’t a trademark owner as we conventionally understand TM ownership. Treating the estate as a copyright-but-not-trademark owner is perfectly rational and nondiscriminatory.) Music may also pose special disclaimer problems. (Does that mean that the estates of composers can get injunctive relief, or no relief at all? Either way, problematic.) Disney can’t preclude all use after Mickey Mouse copyright expires, but it can stop someone from putting a big statue of Mickey in front of an amusement park.

Lemley: TM law can fit in the United case because of competition between the parties. If you believe in the “use as a mark” requirement, most cases won’t end up as TM cases because Jackson, for example, doesn’t involve a TM use. (1) Does that mean you want to broaden TM law to reach that, or (2) whether state law doctrines might come into play, the right of publicity/false light/invasion of privacy tort.

A: Right of publicity is an issue. She’s not looking to expand trademark law. The result may be that claims drop out together. There may be a cognizable TM claim in the Jackson case because people believed he gave permission for the display of the paintings in the movie, though he might lose.

Lemley: Aha, you’re back to expanding “use.” (Like “if value, then right,” perhaps we need to start talking about the “if confusion, then use” presumption in TM law. Or if that concedes too much, “if recognition, then use.”)

A: There could be enough of a use of a communicative product that would be enough – if you used it as a title (Lemley’s example). These claims become successful now because they’re allowed to be couched as copyright claims.

Here are my rather extensive notes on the article, which in many ways replicate my response to the talk: Patent and TM can accommodate one another because most of the time copying an unpatented article won’t be copying a distinctive and nonfunctional trade dress (e.g., Traffix, Wal-Mart). By contrast we can expect courts to routinely treat an author’s name as an indicator of source, even though it isn’t an indicator in the TM sense, especially if we call it a trademark interest.

Did Shakespeare authorize this edition of his plays? That’s a bizarre question from the perspective of authorship in the way that “Did Shakespeare write this play?” is not. In order to avoid massive liability for publishing public domain works, we’d need a bunch of new presumptions, probably drawn from nominative fair use, about the effects of labeling a work as being by a particular author. As with nominative fair use and “de facto confusion” v. “de jure confusion” in functionality, the presence of a particular form – perhaps “by Willa Cather, but this edition isn’t authorized by her estate” – would have to be treated as nonconfusing, without any submission of evidence by either side. But in that case, we aren’t really asking about consumer confusion at all, which is further reason that the game isn’t worth the candle.

Heymann suggests that disclaimers are the appropriate remedy rather than injunctive relief, but that’s not the TM law we have now. She’s really proposing a separate attribution regime. And I wouldn’t mind as much if she did do so, ensuring that disclaimers were the only available remedy. Even so, she acknowledges but does not address the empirical work on disclaimers suggesting they don’t work very well – consumers don’t read them, and don’t comprehend them when they do read them. If a disclaimer is legally sufficient nonetheless, that’s because it’s serving some function other than consumer protection and we’re back to moral right, which does fit within copyright.

Another way to state the problem: TM lacks a materiality requirement. It presumes, because of the connection to a producer’s rights, that authorization makes a difference to consumers, but that is not how the world of publishing works. Authenticity, on the other hand, makes a difference. (There's room, in other words, for both a pirate edition of The Hunt for Red October and an authorized, ghostwritten novel bearing the name Tom Clancy to be "Tom Clancy novels" -- but you will never convince me that the former is not a "Tom Clancy novel.") False advertising can take account of these concerns, much more sensitively than TM.

Heymann’s analogies, responding to objections that her scheme is too complex: orphan works also involve difficulties of attribution, where sometimes it will be hard to figure out who to credit. (1) That’s an attempt to make things better versus a baseline of non-use, with (2) limited remedies. Relatedly, (3) the practical reality is that no one’s going to sue over orphan works because there’s not enough money at stake, whereas there will often be enough reason to sue, or at least threaten suit, when a competing publisher of Beatrix Potter or other public domain work is trying to enter the market. The fact that rights thickets already exist is no reason to make them thicker and pricklier.

A response to some of my questions: Heymann suggests we just have a fundamental disagreement about what people care about when they look at communicative products, whether they care about identity of producers.

I totally agree they care about identity of the author, but they don’t connect that to whether the author authorized the particular copy at issue. What it means to be “by Charles Dickens” is not the same as what it means to be “made by the Coca-Cola Company.” This is what Dastar got right, especially when it left open the possibility of false advertising claims when authorial-origin claims were material and false.

Clearly there's a lot of great work right now about attribution and what it means for copyrighted works. I doubt Heymann and I will ever agree, but it's a good debate to have.