Tuesday, November 28, 2006

Harry Potter might have been confused

The Welsh labeling authority has ruled that Welsh Dragon sausages will have to be relabeled because they don't contain actual dragon meat.

What I don't quite get is that they now have to be called Welsh Dragon Pork sausages. How could that solve the "problem"? If you had believed that you were getting dragon meat, the name now suggests that you're getting a mix, like the turducken.

Thursday, November 23, 2006

Insurer's claim of no duty to defend fails to gel

Ohio Casualty Insurance Company v. Cloud Nine, LLC, 2006 WL 3327652 (D. Utah)

Years ago, I clerked for then-Chief Judge Edward Becker on the Third Circuit, a great man who is much missed. We had a case about insurance coverage for trademark infringement; one important question was whether trademark infringement counted as “advertising injury.” At the time, almost all precedent suggested that it didn’t, but Judge Becker concluded that, as a trademark is a type of promotional matter, trademark infringement allegations might trigger an insurer’s duty to defend. See Frog, Switch & Mfg. Co., Inc. v. Travelers Ins. Co., 193 F.3d 742, 749 (3d Cir.1999) ("A trademark can be seen as an 'advertising idea': It is a way of marking goods so that they will be identified with a particular source.... [A]llegations of trademark infringement arguably allege misappropriation of an advertising idea."). Since then, more courts have adopted the rationale in Frog, Switch, in the absence of an exclusion for trademark infringement, and this case follows that pattern (indeed, it concludes that the majority rule is that set forth in Frog, Switch).

The policy here covered “advertising injury,” which included “[t]he use of another's advertising idea in your ‘advertisement,’” which in turn was defined as “a notice that is broadcast or published to the general public or specific market segments about your goods, products or services for the purpose of attracting customers or supporters.” There was a standard exclusion for knowingly tortious acts, which isn’t that important at the duty to defend stage because even though the underlying complaint may allege intentional infringement, the plaintiff could ultimately recover without showing intent. The insurer thus can’t use the intentional acts exclusion to defeat the duty to defend against trademark infringement claims.

The underlying lawsuit involved alleged breach of a license agreement allowing the defendants to make and sell a patented elastomer gel known as “Gelastic,” “GellyComb,” and “Intelli-Gel.” The relevant claims were for federal and common-law trademark infringement, deceptive trade practices under state law, and misrepresentation and false designation of origin under federal law, all based on defendants’ use of plaintiff’s trade names in advertising, including on their websites and with their goods.

The court found that the allegations triggered the insurer’s duty to defend. An “advertising idea” is an idea for calling public attention to a product or business, including discrete images or text in an ad. The trade names GellyComb etc. “expressly describe and promote the gel-like and elastic qualities of the material, calling the public's attention to the desirable qualities of [the] products.” Thus, those trade names are advertising ideas as an average reasonable insurance customer would understand them. (The court probably doesn’t mean to suggest that only descriptive trademarks are advertising ideas; a valid suggestive, arbitrary or fanciful trademark would also convey information and attract attention.) The presence of the trade names on defendants’ websites constitutes advertising, since a business website, “except for the web pages concerning the business's contact information and history, is generally an advertisement for the business's goods, services or products” and counts as a notice broadcast or published to the public.

There must also be a causal connection between the advertising and the alleged injury in order for a claim to count as “advertising injury.” The plaintiff sought relief prohibiting defendants from using the trade names on their websites, in advertising or in any other way. This shows a causal connection between the injury and the use of plaintiff’s advertising ideas in defendants’ ads. Defendants’ advertising caused plaintiff’s injury – it didn’t just expose that injury (as, for example, advertising the availability of products that infringed a patent might).

Wednesday, November 22, 2006

Breaking DMCA news

The new DMCA rulemaking creates an exception for media studies and film professors who circumvent access controls in order to create compilations of clips for use in teaching. Past rulemaking had rejected using categories of fair users to define a “class” of works for which circumvention was allowed. This rule enabled the Copyright Office to reject many broad requests for fair use exemptions out of hand because the requests weren’t limited to classes of works. The change in the Office’s reasoning, which allows consideration of users once a class of works has been specified, came at the behest of film scholars. People who teach film have sound pedagogical reasons for using DVD clips, rather than lower-quality and perhaps distorted second- or further-generation videotape transfers. In order to accommodate such professors without creating a blanket exception for compilations of DVD clips (which, it seems to me, would hardly have been the end of the world, but the Office was concerned that there was no general justification for the practice), the Office agreed to make the class of users part of the definition of the exemption.

Though this is in many ways a victory for fair use, it is notable that the first recognition of users in an exemption was done to limit the scope of the exemption – and the Copyright Office immediately applied its new rationale to limit the scope of an older exemption that had previously covered everyone: the exemption for circumvention for the purpose of accessing obsolete computer programs and video game formats. Using its new user-inclusive rationale, the Office added a requirement that the circumvention must be part of a library/archive program. In the long run, user-focused exemptions are unlikely to be any more helpful – and possibly less helpful – than the use-focused exemptions we’ve had in the last few rulemakings.

Proton beams: out of science fiction, into advertising law

Optivus Technology, Inc. v. Ion Beam Applications S.A., --- F.3d ----, 2006 WL 3314967 (Fed. Cir.)

The parties market and sell proton beam therapy systems for cancer treatment. (There are patent claims in this case, but I ignore them.) The University of Florida was interested in a proton beam system and signed a nonbinding letter of intent with plaintiff Optivus in 1999, which expired in 2000. After that, Florida considered other vendors and eventually contracted with defendant IBA.

Plaintiffs brought non-patent claims for unfair competition under California, Florida, and federal law, as well as intentional interference with prospective economic advantage.

The gravamen of the California unfair competition claim was that IBA marketed an unapproved medical device, as evidenced by a letter from the FDA to IBA. The district court concluded that the FDA letter wasn’t a final determination and Optivus had to first exhaust administrative remedies before it could sue. Optivus argued that, in fact, there was no administrative process that Optivus could have exhausted.

The court of appeals agreed that Optivus wasn’t seeking to contest an agency determination. Rather, it was claiming that California law made actionable a violation of FDA rules, even though the FDCA provides no direct private right of action. Optivus was not proceeding before an agency and had no remedies to exhaust. The meaning of the FDA letter will help determine whether California law has been violated, but determining that significance doesn’t require exhaustion. Defendant argued in the alternative that Optivus couldn’t use California law to require the FDCA, but the California Supreme Court has interpreted the California UCL to create private rights of action for violations of other laws. Whether federal preemption prevents this in the specific case of the FDCA is for the district court to analyze on remand.

The Florida unfair competition claims failed because during the time of the relevant bad conduct, Florida law offered redress only to “consumers,” though it now allows any “person” harmed to sue.

Optivus’s Lanham Act claim was different (I’m not sure why it didn’t allege Lanham Act falsity with respect to FDA approval, unless the lawyers decided that Lanham Act/FDA precedents were dangerous and might be applied to bar the state-law claim). Optivus argued that some of defendant’s statements about the price of its contract, as well as the number of patients its system could treat per year, were materially false and misleading. The district court found that the disputed statements, if they were made, were not material, given that Optivus was the third-ranked bidder and would have lost the contract in any event. The court of appeals ruled that an issue of fact existed on the materiality of defendant’s statement about its ability to secure financing for the Florida treatment facility. Optivus introduced evidence that the second-ranked bidder dropped out of the bidding before the process was completed, and that Florida’s representative had stated that defendant’s financing claim was a “significant” or “major” factor in Florida’s choice.

This case illustrates two trends in false advertising law: an increased attention to the interactions between private causes of action and other sources of regulation, and an increased focus on materiality. Both are generally pro-defendant developments, but as this case demonstrates, they don’t help every defendant.

Tuesday, November 21, 2006

Online symposium on the new trademark dilution law

A companion to the Michigan Law Review, the symposium is available here. I look forward to reading the commentary. Unsurprisingly, only the practitioners' piece suggests much enthusiasm for this cause of action.

Monday, November 20, 2006

INTA and the new dilution law

Paul Reidl, INTA’s president and associate general counsel for E&J Gallo, gave an entertaining presentation at George Washington on the new dilution law.

Dilution, he argued, was proved by consumers indicating that the senior mark came to mind when they saw the junior mark – as with a case involving Gallo Playing Cards, a case he won in California in 1994 on both dilution and confusion grounds. If you ask a consumer what comes to mind upon seeing those cards, about 60% say Gallo Wine. (Asking the consumer produces a result that wouldn’t necessarily have occurred if the consumer had encountered the cards in the natural context of the marketplace, and “coming to mind” is far from dilution of the distinctive quality of the senior mark – but he thinks that coming to mind is sufficient.)

Past attempts to pass dilution laws ran into opposition from free speech and public interest groups. Even some trademark owners weren’t certain about dilution. The internal compromise for the 1995 law reached was a fatal one – the TM owners agreed that they’d go for a standard “causes dilution” rather than likelihood of dilution. Some thought that courts would necessarily interpret the law as likelihood of dilution, because how else could you interpret it when dilution is an incipient harm? (Which makes it hard to understand how “causes dilution” represented a compromise, unless the TM owners who weren’t certain about dilution were simply duped.)

Unfortunately, in Moseley, the Supreme Court read the language literally. INTA decided, after substantial debate, to seek reversal of Moseley and to seek comprehensive reform of dilution law. Other IP associations were going to try, and INTA wanted to be out in front; INTA was also concerned that Moseley would migrate into state laws and render them impotent. Also, lower court decisions had caused other problems with the FTDA.

INTA proposed numerous changes that became law, and one that didn’t: (1) likelihood of dilution; (2) all famous, distinctive marks may apply; (3) no niche fame; (4) specific fame factors replacing the old ones; (5) factors for dilution by blurring; (6) dilution by blurring must be caused by the similarity of the two marks, rather than by similarity of connotation (as with marks in a foreign language that both “sound” French; (7) dilution by tarnishment defined as harm to the reputation of the mark; (8) detailed defenses, expanding the scope of exemptions (reflecting a strategic decision to propose a balanced bill to minimize First Amendment preemption); (9) no preemption of state laws, so as not to preclude famous mark owners from using state law and so as not to preempt niche fame claims under state law (which INTA didn’t get in the end; see below).

Again, the opposition came from free speech and public interest groups. Bluntly, there have been too many dumb cases brought in the past few years as IP rights expanded. Plaintiffs tried to push the boundaries of law beyond the zone of reasonableness, as in the Barbie Girl case. Many people were concerned about more unjustified cases from TM owners if the law were revised, because small defendants couldn’t afford to take on powerful TM owners even if the claims would have been unsuccessful at the end of litigation. Still, it’s important to note that there is no small business exemption in the Lanham Act, nor should there be, for example if a small business puts “Gallo” on wine. Every powerful brand started out small.

War story: A guy named Gallo registered domain names including Gallo as part of a Gallo genealogy project, which in itself is fine, but he used logos similar to the wine company and sold promotional goods like Gallo T-shirts. Gallo (TM owner) had to sue, and the website was altered.

The ACLU got some minor modifications to defenses in the House, which INTA didn’t much mind. And then the bill got stuck in the Senate for a while.

Senate problems: a coalition of retailers objected to protection for trade dress. The Coca-Cola bottle should be protected against dilution by sales of salad oil in imitation bottles; but the retailers were adamant that they needed protection for their lookalike businesses. INTA compromised. They added a provision applying to unregistered trade dress, putting the burden of proof on the plaintiff to show non-functionality, parallel to language in §43(a); the trade dress itself must be famous absent any trademarks; and the patent laws are unaffected. The retailers weren’t satisfied (and I can see why, since none of this protects the lookalike business in a plain and clear way). Ultimately, however, the Senate staff accepted the compromise.

Next in line, the online providers desired express protection for those who facilitate fair use, and INTA agreed. The free speech interests took a second bite then. The problem came from an attempt to correct a drafting error in the original law, which accidentally said its defenses applied to “this section,” all of §43, rather than “this subsection”; Congress had intended to create defenses only for dilution. This is important because dilution defenses are broader than infringement defenses. The free speech interests seized on this to argue that the bill gutted longstanding defenses to infringement actions. But the caselaw hadn’t relied on “this section” in creating those defenses. “Subsection” stayed in the bill.

Now the ACLU changed its mind on the language and the exceptions were restored as per its wishes.

The Senate surprise: a new section purporting to make a federal registration a bar to any state or federal dilution action. The language doesn’t track the rest of the bill and it’s strangely worded. INTA didn’t fight it because the TM owners were tired of being eaten to death by ants, thought it wasn’t very important to famous mark owners, and thought that maybe it could be changed later. (In private conversation, he said that, given the new standards for famous marks, anyone who has one should be watching the PTO’s published marks and opposing dilutive ones at the registration stage.)

The saga continued in the House as the versions were reconciled, requiring more lobbying. But finally it passed, just like the Bill in Schoolhouse Rock.

The $64,000 question (can anyone try a case for that amount?) is what practitioners should do with the new law. (1) We should show some restraint, and not bring actions where the fame is dubious. Don’t overreach as with the first law. (2) Respect the defenses, which are in there for a reason. (3) Remember the special rules for unregistered trade dress. Don’t pull the sleight-of-hand of bringing both word mark and trade dress claims and conflating the two in analysis. (4) Educate the judge if you have a solid dilution claim. Don’t make it an afterthought. Explain the harm. Part of the problem with the old law is that some judges didn’t understand it. (5) You now need to prove blurring. It won’t be presumed. The FTDA contains specific factors that you must address. Proof of actual association, such as survey evidence, will be important.

Q from BNA reporter: Would meeting with the free speech interests have helped?

A: No. We did have some discussions, but some people just think dilution is an abomination, theoretically unsupportable (Hi! [waves hand]). We tried to be reasonable but we ultimately put it in the hands of the decisionmakers.

Saturday, November 18, 2006

Best of ... false advertising: unusual plaintiff fails to represent class

Marin v. ANG Newspapers, 2006 WL 3307154 (Cal.App. 1 Dist.)

Marin sought to represent a class of deceived consumers, but his special circumstances and individual problems of causation and reliance defeated his class certification attempts.

Marin was formerly employed by defendant as an advertising manager for the Oakland Tribune. He alleged that the Tribune manipulated its yearly “Best Of” contest, which allowed readers to recommend their favorite local businesses in a variety of categories. The Tribune published the results in a special advertising section where many winners advertised. Winners also received a certificate to be displayed on their premises. Marin contended that the Tribune broke ties and chose winners in categories with no votes based on which businesses were good advertisers or good prospects.

After Marin quit or was fired, he sued for wrongful termination, and then attempted to add the relevant false advertising allegations. His proposed class covered all readers who were misled by the newspaper’s deceptive “Best Of” practices, and all consumers of businesses holding themselves out to be “Best Of” contest winners who were misled.

The court of appeals upheld the trial court’s finding that membership in the proposed classes would be nearly impossible to ascertain because whether someone was misled was an individual inquiry; we can’t infer that all subscribers relied on “Best Of” rankings or were damaged if they did rely. “This is not a case where the alleged misrepresentation is so clearly material that it should be inferred that all class members relied on it to their detriment.”

Independently, the trial court properly concluded appellant was not a suitable class representative because of his divergent interests in this case. He might be tempted to compromise his false advertising claims for an overall favorable resolution of his wrongful termination case.

Wednesday, November 15, 2006

Mark Schultz on copynorms

Today’s GW IP colloquium featured Mark Schultz, who spoke on Copynorms: Copyright and Social Norms.

Two assumptions Schultz challenges: (1) copyright owners will inevitably exercise their rights, whatever they are, to the fullest extent possible; (2) copyright users, both ordinary consumers and subsequent creators, are incorrigible, and if they think they can get away with an unauthorized use, they will do it. Copynorms have a significant moderating, extending, and undermining effect on the effects of copyright law.

We know enough now about social norms to predict how people will behave in certain situations. We can’t easily manipulate human behavior, but we can structure business practices that make users more inclined to comply with copyright law and owners more willing to allow some uses.

The economic model: can means will on both sides; everyone will go as far as possible to get economic reward/something for nothing. But copyright owners often forgo enforcement.

Sources of injunctive copynorms: writers and scholars (attribution and plagiarism), Creative Commons, open source, librarians, hackers & warez traders. Attribution substitutes for copyright by allowing some copying as long as there’s attribution, and plagiarism goes beyond copyright by covering public domain works (and ideas). Writer’s norms are important by comparison to other domains – musical sampling or putting a picture in the background of a movie are legally risky and usually involve licensing.

Newer norms are emerging from norm entrepreneurs, whether outside of or undermining copyright law like warez traders.

Other norms are more likely to be emergent and descriptive rather than arising from intentional behavior. Once everyone does it, it becomes self-sustaining because everyone does it: search engine indexing, e-mail reply & forwarding, home copying, file sharing. (Is search engine indexing emergent and descriptive, or did AltaVista, Google, etc. push it on us as very successful norm entrepreneurs?) Indexing wasn’t challenged despite our litigious society for a long time. (But that could have been because (1) most of the copyright “owners” didn’t perceive themselves as such and weren’t traditional content owners; (2) copyright owners who were unsophisticated technologically and/or recognized they benefited from indexing; (3) copyright owners who were sophisticated technologically found it simple to opt out if that was beneficial.)

Given that these practices are so common, courts are often baffled when the issue is finally litigated and there’s no precedent despite years of experience. This is really a healthy sign that descriptive copynorms are allowing people to coordinate their activities simply.

Good news: we (who? Lawyers? Businesses?) may be able to influence copynorms. It’s never a sure thing, but we do know how to build support for some norms. Influences on norms: (1) Persuasion, including advocacy, public education campaigns, etc. (2) Perceptions regarding others’ level of compliance, such as beliefs that other people are using iTunes. When people believe most other people comply, they’re more likely to comply. Many ad campaigns that try to change norms are actually counterproductive, because they highlight people breaking the supposed norm/law and send the message that the descriptive norm is that “everyone’s doing it.” The RIAA similarly shoots itself in the foot with apocalyptic rhetoric. Why should I be the last sucker who pays for music? (3) Relevant peer groups are important. (Buzz marketing ahoy!) (4) Reciprocity. Perceptions of fairness and cooperation are likely to shape social norms. Under favorable conditions, cooperation can be sustained even with a minority of cooperators; but under other conditions, reciprocity leads to lack of cooperation when they perceive others are getting away with opportunistic behavior. Thus reciprocity can sustain either pro-copyright or file-sharing norms.

Case study of jam bands like the Grateful Dead, which have sustained copynorms that require payment for some music while allowing free sharing of other music. This is an alternative to ever-greater legal penalties and technological controls. Rules: the bands say no copying of commercial releases and no commercial exploitation of concert recordings, and they reserve the right to withdraw certain concerts from circulation. The surprising thing isn’t that the bands have these rules, but that they expect and receive compliance from fans. Fans help police one another and non-fans, and even cooperate with the bands’ lawyers.

New business models: non-copy-protected recordings sold online, because the bands trust their fans and ask them not to share widely. Can we extend this beyond a quirky group of people?

Reciprocity has been extensively studied – people will sustain cooperative equilibria given the right conditions, which mimic much of what’s going on in the jam band community. Lessons: (1) Don’t assume the worst about music fans. Some people will comply with law given the opportunity; people come in inclined to cooperate. (2) To help ensure cooperators predominate, build communities based on sustained relationships between creators and fans. The communities can be large and anonymous, but consumers need to feel a connection with the artist, and are more likely to encourage others to comply if they do. (3) Perceptions of fairness are also key: people are spiteful and will incur costs to punish those they see as unfair. Jam bands are perceived as much more fair than regular musicians. (4) Give people a chance to comply and more will. (5) Let the fans do some of the work; they will do so.

This can also apply to CC and open source scholarly publishing. We need visible opportunities to comply and promote it, through things like viral advertising and conferences that publish papers in open-source fashion.

Laura Bradford: A lot of these suggestions seemed difficult for a record company to implement – fans cooperate with the legal team of the band, not the legal team of the record company. How can intermediaries use this, when their very presence creates a distance between artist and fan?

A: Well, this does imply a different world for intermediaries. (Google is an intermediary, and Schultz pointed out that every user loves Google.) There’s still a role for aggregators, if they follow a CC model but act as facilitators for commercial uses and provide helping tools like standard contracts for bands that aren’t entrepreneurs.

Q: In college communities, norms of free flow seem rampant – how can we bring more moderate copynorms to groups of young people who are used to P2P and high-speed connections?

A: College students do pose a problem for the record industry. Some steps have been reasonable – there is some role for credible enforcement, informing people what the right thing to do is. Beyond a certain threshold for the risk-averse and the law-abiding, it is hard to convince people they’re likely to be caught, and there’s a long way to go before we’re close to that. You’re more likely to be struck by lightning than sued by the RIAA. MySpace and Facebook are places where bands are going now, and some use them intelligently to communicate with fans and create perceived connections.

Q from me: I still don’t see where Google is reciprocal; the distribution of benefits isn’t particularly fair. Yet everyone thinks it’s great.

A: It may be more perception of fairness than reality (this is a paraphrase of his answer); it is a complicated question. Google does provide coordination benefits and helps you find new and useful webpages. (But then again, so do record companies, which are seen as evil. How did Google win the PR war and the RIAA lose it?)

Q: Producing a record takes a lot of cooperation and hard work, but people don’t perceive all the support that goes into backing the artist/artists. Is there any way to get people to see that and like record companies better, or do people just want to identify with an individual genius?

A: The MPAA has tried to do that with its PR campaign about people who paint the sets and could lose their jobs from file-sharing; maybe they have an impact. The problem of file-sharing tends to divide the music world into haves or have-nots. Jessica Simpson and Britney Spears can use their rights of publicity even in the absence of copyright, but the mid-level touring artist is the one who’s hit hard by filesharing. Maybe the cult of personality has gone too far, but we need to build a support network for the non-famous individual artist.

Q: When there’s a disconnect between legal and social norms, when do we decide that the legal norm is the problem? Your presentation is focused on making the social norm conform, but why not go the other way?

A: Flip response: as hard as it is to change social norms, it may be even harder to change the law, given public choice problems. There is a huge literature on this problem, as with Prohibition in the US, where the failed law harmed respect for all laws. We don’t have a big gangland problem with copyright, but rather a lot of friction in a time of technological and institutional change. We don’t know when a norm has become intractable and the only choice is to change the law. Dan Kahan has a seminal article on “hard shoves and gentle nudges.” Drunk driving: many laws initially penalized it very harshly. Cops weren’t willing to arrest and juries and judges weren’t willing to convict and sentence, because the penalties differed so much from the norms. Only slow increases in penalties plus a public education campaign proved successful.

Q: Niva Elkin-Koren talked about CC upholding copyright law’s assumptions – do you agree?

A: CC can definitely reinforce existing structures. Some businesses see CC as a way to legitimize their businesses, allowing private noncommercial use but in fact increasing control over the work by making it very clear what people are allowed to do with it.

Q: Are copynorms easier to enforce in smaller communities than bigger?

A: Absolutely. Smaller communities offer a higher probability of retaliation; the mechanisms that sustain reciprocity in larger groups are more amorphous and slower-moving. Still, we see such norms operating all the time (you tip when you’re in a restaurant in a strange city to which you never expect to return).

Bob Brauneis: Doesn’t enforcement of law sometimes work as a way of changing norms? If the police start to give parking tickets, sometimes people stop parking in no-parking zones. Hard and irritating methods can work along with soft and friendly methods.

A: Sure. People know that so far the RIAA has just targeted large-scale sharing. Only going after simple downloaders will increase the deterrent effect. There are some people who have a zero tolerance for risk; going beyond the zero risk will have a huge effect on compliance. But after that, to get the people with above-zero tolerance, you have to increase the probability of getting caught a lot because it’s hard to persuade those people that they’re personally likely to get caught. People irrationally discount their own chances of getting caught and systematically discount the cost of future penalties. So once over the zero boundary, the huge gains from enforcement drop off.

Q: An empirical study showed that initial enforcement produced a drop in filesharing, but in a few months that dissipated because people realized that there was less likelihood of getting caught. Separately, some people who download wouldn’t pay for the music but will get it for free; others would have bought but let the free substitute; others are just interested in taking a stance against the “system.” How do you deal with different motivations to comply with or reject social norms?

A: There may be biological differences in inclination to cooperate. Peer reference groups also influence norms. We have to do what all economic models do, which is say we can affect behavior at the margins. The rational choice model that looks only at pecuniary gain is wrong – culture, ideology and norms also matter, and we can use those, even though there will still be holdouts who can’t or won’t pay.

Monday, November 13, 2006

When are genuine goods not genuine?

Until I read this story, I would have thought the answer was limited to "when they're grey-market with material variations." But apparently some car owners are buying emblems to make their genuine vehicles look like the high-end versions of the same models (or in some cases, same makes, though one suspects that's easier to detect). So we get "Mercedes eight-cylinder coupes rebadged as 12-cylinder versions, a sedan with emblems that would make it a coupe, and fake high-performance AMG or Brabus models."

This isn't the classic post-sale confusion situation, because the Mercedes is actually a Mercedes. So, does Mercedes suffer any actionable harm? If so, it can't be because of any quality concerns: Mercedes really is responsible for the quality of its 8-cylinder coupes. It can only be because of harm to the value of the exclusivity of the higher-end versions. And that's not a harm trademark has routinely taken into account independent of any other risks to the trademark owner.

Sunday, November 12, 2006

Somewhere wandering loose around Mayberry is a loaded lawsuit

Alert reader Keith Apple pointed me to this story about Andy Griffith suing a man who changed his name to Andrew Griffith as part of a failed bid for the office of sheriff in southwestern Wisconsin. The reporting describes the lawsuit as involving copyright and trademark infringement as well as privacy (probably publicity) claims. There is no copyright in names or short phrases. The copyright claim thus makes no sense unless founded – as it could be – on campaign materials that are substantially similar to something from the Andy Griffith show. It’s possible that Griffith owns the copyright to the show, though it’s much less likely that a modern star would.

Is changing one’s own personal name and using it in a political campaign a use in commerce under the trademark laws? Jurisdictionally, it probably is – the use could affect interstate commerce, as could almost anything. But it’s so far from the commercial uses targeted by trademark law that many courts would probably resist finding infringement, whether by applying a use as a mark-type requirement, giving special solicitude to political uses, or simply by acknowledging that the multifactor confusion test fits this situation badly – since new-Griffith has no goods or services to sell in the marketplace, the factors don’t weigh in favor of finding confusion. If “Where’s the beef?” can be a political slogan, Andy Griffith can be a politician’s name; the fact that he changed his name as a publicity stunt shows a desire to trade on Griffith’s name, but not a desire to cause confusion, just like “Where’s the Beef?”

Right of publicity laws have no confusion requirement. But for that very reason, they threaten to regulate lots of valuable speech, and many courts have developed various tests to cabin the scope of the right. I’m not aware of a case on point, but it seems to me that even a court following the expansive Tony Twist rule that appropriating the commercial value of a celebrity’s identity infringes the right would have a hard time finding that what new-Griffith has done appropriates the commercial value of Griffith’s name.

Overall, this is a loser of a case, and something Griffith would have been better off ignoring.

Friday, November 10, 2006

New federal dilution law applied in "dog of a case"

Beginning the opinion with a barrage of puns, a federal district court has engaged in the first interpretation of the FTDA as amended. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2006 WL 3182468 (E.D. Va. 2006). Defendant sells, inter alia, dog beds and toys with the "Chewy Vuiton" mark and colored interlocking-letters design, an obvious reference to the similar Louis Vuitton mark and trade dress.

Plaintiff's trademark infringement, dilution, and counterfeiting (!) claims failed, as did its copyright infringement claims. Notably, the district court adopted past precedent that parodies are unlikely to cause dilution, even though the new law doesn't include that in its factors for a court to consider. This is not a criticism; the idea that parody is likely to maintain the distinctive image of the parodied mark, so that the usual weight of factors like similarity doesn't apply, has a long pedigree (if I may indulge my own pun) in interpreting state dilution laws that also don't mention parody. In addition, because the parody was "gentle," it was not tarnishing.

Other tidbits: The court found a small overlap in product lines, since Louis Vuitton makes some high end pet products, but it wasn't significant, given that LV's cheapest product was still roughly twice the price of Haute Diggity Dog's most expensive. As one of HDD's customers pointed out,
"if I really thought that a $10 dog toy made out of fluff and stuff was an actual Louis Vuitton product, [then] I would be stupid."

The copyright claim reached the right result on fair use, but without any serious analysis of what it is that LV has copyrighted -- the court treated the name "Louis Vuitton" as part of LV's copyright, which it isn't.

Thursday, November 09, 2006

Unapproved malaria drugs can be hazardous to your business

Mutual Pharmaceutical Company v. Ivax Pharmaceuticals, -- F. Supp. 2d --, 2006 WL 3026246 (C.D. Cal.)

Mutual makes, among other things, quinine sulfate for treating malaria. Quinine’s been around long enough that it predates the FDA safety/approval regime. In 1998, however, FDA halted all OTC sales of quinine sulfate, requiring a prescription for it, because of evidence of injury and even death from use. Quinine sulfate has a very narrow range between therapeutic levels and toxic levels, so the FDA considers a doctor’s supervision key to its safe dosage and use.

After 1998, the market for quinine sulfate was filled by drug makers selling unapproved prescription quinine sulfate. Mutual submitted a new drug application for treating symptoms of imported drug-resistant, uncomplicated malaria by quinine sulfate, and received approval and orphan drug designation, which allows it exclusive marketing rights for the approved indication. It markets its drug under the name Qualaquin.

Defendants continue to market unapproved quinine sulfate of varying dosages to the public for treating both complicated and uncomplicated malaria. Mutual contends that they’ve represented that their products are safe, effective and FDA-approved for treatment and prevention of malaria, all of which is false. Defendants’ labels allegedly list information that omits warnings the FDA requires on Qualaquin and recommend incorrect and potentially dangerous dosages. Third-party internet retailers such as buygenericdrugs.com make representations that all the products sold on the site are FDA-approved, then sell defendants’ quinine sulfate.

In addition, Mutual challenges defendants’ placement of their drug on “privately integrated drug dispensing databases and pricing systems (‘clinical/price lists’)” that “‘represent a major drug-marketing communications-channel to pharmacists and chain store buyers.’” Defendants have other marketing channels which Mutual doesn’t attack.

As the result of Mutual’s complaints, the FDA is considering, but hasn’t decided on, an enforcement action against defendants.

The obvious question is whether Mutual can use the Lanham Act in this instance, when the FDA has authority in the area and there’s no private cause of action under the FDCA. The court used the standard resolution: a Lanham Act claim that would require interpreting the statute or FDA regulations is out, but a claim whose truth or falsity can be adjudicated without doing so – even when that requires reference to specific FDA determinations – is acceptable. (The court referred to the latter as a claim whose false or misleading nature can be “easily verified,” and suggested that the FDA’s determination of truth or falsity would be determinative in a Lanham Act case; both of those seem somewhat shaky, but okay.) Despite the seeming ease of resolution, the case ends up edging closer than ever to the question of which rule applies when the plaintiff has a consumer survey indicating that consumers think something about FDA rules.

First, the court addressed the labeling claim, which encompassed omission of FDA-required warnings, bad dosages, bad instructions for what types of malaria are covered, all on a label printed with the same format and “look and feel” as the label of an FDA-approved drug. The FDA required Mutual to put a huge warning on its label about one potential side effect, which can lead to arrhythmia, a heart attack, or sudden cardiac death. Defendants’ label mentions only “anginal symptoms” as a possible adverse reaction. Mutual submitted a survey in which 11% of pharmacists did not believe, and 20% did not know, that the quinine sulfate they dispensed using the clinical/price lists had that potential life-threatening side effect.

The court rejected Mutual’s FDA preemption argument. In the special circumstances here of a grandfathered drug, the argument was that the FDA has already determined what must be included on the label for quinine sulfate specifically, and defendants’ labels don’t conform. This didn’t require the court to interpret any FDA regulations. (I’m a little dubious about this. If the formulations aren’t exactly the same – even if the delivery form is different, as with tablets versus gelcaps – my understanding was that the FDA might require a slightly different label. The problem I’m having here is that defendants’ drugs are neither me-too drugs (which would merit their own labels) nor generic versions of Mutual’s drug (because the formulations and dosages are different). It is certainly plausible that formulations and dosages wouldn’t affect the relevant parts of the label, but I’d have appreciated more about the special regulatory background here.

Anyway, the court analogized the label to a direct statement that a product was FDA-approved when it wasn’t, a readily verifiable factual matter, and found that Mutual was likely to succeed on its falsity claim.

The price lists claim was more interesting because of the interaction between the FDA and consumer surveys. Mutual’s surveys demonstrated that a drug’s presence on clinical/price list has special meanint to pharmacists and large pharmacy chain stores. One survey – done before Qualquin was even available – revealed that 91% of the pharmacists surveyed believed that all of the drugs contained on the clinical/price lists were FDA-approved, including 89% who believed that the quinine sulfate they dispensed using the clinical/price lists was FDA-approved. Another survey showed that 48% of pharmacists who use such private clinical/price lists commonly mistake the fact that a drug appears on the list means the drug was approved for use by the FDA, and that anywhere between 28 to 38% of pharmacists thought that the usage and other labeling information listed in connection with the drug on the private clinical/price list description is complete.

Moreover, a similar survey of 11 chain pharmacy stores found that ten either frequently or always refer to clinical/price lists when dispensing or ordering prescription drugs, and that nearly half thought that "all of the prescription drugs listed" on the clinical/price lists "were FDA approved."

Thus, the survey evidence showed that the marketing channel deceived the relevant consumers into thinking the defendants’ drugs were FDA-approved. Defendants called this a clever evasion of the general rule that false implications (as opposed to explicit representations) of FDA approval aren’t actionable. It is an evasion, in the sense that this is the first case of which I’m aware in which the plaintiff used consumer survey evidence to prove that consumers interpret silence as FDA approval where drugs are concerned. In previous cases, plaintiffs just tried to use logic to show that the omission was false. But if consumers really are being fooled, the policy objectives behind the Lanham Act counsel in favor of liability, and it’s not clear what FDCA policy goals are being served by allowing such deception. Presumably it’s always possible to disclose affirmatively a lack of FDA approval, so that a lawful but unapproved drug could still be marketed even if governed by Lanham Act requirements.

The court ruled that it wasn’t just marketing an unapproved drug that led to the falsity here, but the particular form that the marketing has taken, which carries implicit false representations of FDA approval. Of course, the blank spot here – that I strongly suspect could be filled by a survey – is whether all marketing channels for prescription drugs in the US carry implicit false representations of FDA approval. If that were true, then past cases holding that merely marketing an unapproved drug is not itself a false implicit representation of FDA approval would either have to be distinguished as not having involved consumer perception evidence (my preferred result) or applied to bar claims even when there was evidence of actual deception. Mutual’s litigation strategy here, however, allowed it to avoid facing those precedents head-on by characterizing the price lists as a unique and specialized marketing channel.

The court also found that defendants could be held liable, under standard contributory liability principles, for the false statements of third-party internet retailers if it knew or reasonably should have known about the false claims and continued to supply the product. At this stage, however, Mutual lacked proof that defendants knew their products were being falsely advertised.

Mutual’s labeling claim also faltered at the irreparable harm stage – because defendants weren’t engaged in comparative advertising, there was no presumption that Mutual suffered harm from the false advertising, and Mutual hadn’t put in any other evidence of harm. I find this a bit puzzling – if Mutual is the only FDA-approved source of quinine sulfate, it would seem that Mutual is the only competitor who could suffer. In a highly concentrated market, even noncomparative advertising can be the equivalent of comparative advertising. It’s possible, however, that the misleading label information led to the theft of business from non-quinine sulfate malaria treatments, so maybe there needs to be more marketplace information.

Mutual’s consumer survey evidence, in contrast, was enough to show irreparable harm on the price list claim, so the court enjoined defendants’ use of such price lists.

I think Urine You're Out was a better name

Medallion Products, Inc. v. H.C.T.V., Inc., 2006 WL 3065344 (N.D. Ill.)

Plaintiffs’ allegations: Plaintiffs make consumer products that are initially promoted by infomercials, then expanded if successful to internet, catalog and retail sales. Defendants are marketing companies and a chemical company. In September 2004, defendants contacted plaintiffs about making a cheap pet-stain-removal product. Plaintiffs developed such a product, a solution in a spray bottle to be used with a blacklight to detect cat urine and other organic stains. Eventually, plaintiffs developed an enzyme-containing formula whose cleaning action could be demonstrated visually in a test tube by using ultraviolet light. Defendant agreed to buy the formula from plaintiffs for the life of the product, in return for an exclusive right to market the product. Plaintiffs agreed to purchase the blacklight that consumers would use with the cleaning solution; defendants agreed to package and ship the solution, sprayer, and blacklight.

Defendants, however, were plotting to appropriate plaintiffs’ rights. They registered as co-applicants for trademark protection of “Urine Gone.” Plaintiffs had test marketed the name “Urine You’re Out,” but defendants told them that the “Urine Gone” application was already filed, and plaintiffs agreed to proceed under the exclusive sales agreement using that name.

The infomercial first aired in March 2005 and proved quite successful. Plaintiffs sold over 3 million units in the first 8 months. At some point, defendants stopped using plaintiffs’ blacklight supplier, but failed to verify that the new blacklight had the appropriate radiance and ultraviolet rating to detect the presence of the organic stain. Defendants also filled some orders for Urine Gone with counterfeit solutions supplied by the defendant chemical company. Meanwhile, while defendants were arranging to amp up their independent supply, they were also lulling plaintiffs into a false sense of security with acts such as placing orders of the genuine product for use in sales demonstration. Defendants also expressed concern to plaintiffs that the product’s success would lead plaintiffs to break the exclusivity agreement and market the product itself.

The cleaning solution defendants sold as of Fall 2005 was manufactured by the defendant chemical company, and it didn’t match the label. Tests showed minimal to no enzyme activity. Defendants sold Urine Gone on the retail market, but labeled it “as seen on TV.” At that time, plaintiffs began receiving customer complaints regarding Urine Gone’s performance, because defendants advised dissatisfied customers who’d bought through catalog or internet sales that plaintiffs made the solution.

After plaintiffs learned about the counterfeit product, they sought to enter into an agreement with another infomercial developer, but some of defendants’ principals assaulted one of plaintiffs’ employees at a trade show where she was demonstrating the cleaning solution at the developer’s book. After that, the developer withdrew its support.

Among plaintiffs’ claims are Lanham Act and state-law false advertising counts. Defendants argued that they couldn’t counterfeit their own product – they see this as just a licensing dispute over who owns the trademark. The court pointed out that the allegations also include that the label is false.

Defendants argued that some of the defendants lacked standing. The general standing test requires a “reasonable interest” to be protected under the Lanham Act, and a discernible competitive injury from false advertising. Plaintiffs’ complaint alleged that the plaintiffs were involved in the formulation of the original Urine Gone product and all have a proprietary interest in it. Furthermore, all are attempting to make and launch a directly competing product, which is sufficient for standing. Note here that the prospect of competition is usually not enough to confer standing – but the fact that plaintiffs demonstrably can make and sell the product, if they find a marketer/distributor, and did in fact make and sell 3.3 million units not too long ago, may be enough to justify extending standing to them. Possibly, also, if defendants really did intimidate the competing developer from partnering with plaintiffs, they shouldn’t benefit from suppressing competition with a favorable standing verdict.

Plaintiffs’ defamation claims also survived because the affirmative act of telling dissatisfied customers that Urine Gone was made by plaintiffs could be defamatory.

Tuesday, November 07, 2006

Nimmer on the Dead Sea Scrolls

GW’s IP Symposium tonight hosted David Nimmer on Copyright in the Dead Sea Scrolls.

Nimmer went through the history of the dispute, which he has comprehensively discussed in Copyright in The Dead Sea Scrolls: Authorship and Originality, in the 2001 Houston Law Review. He noted that Shanks, the unauthorized publisher of the Qimron/Strugnell reconstruction of the Dead Sea Scrolls, declined to name Qimron in his attacks on Strugnell. But the formulation “Strugnell and a colleague” mortally offended Qimron, who sued based on his loss of glory.

The question is what Qimron did – was it creative? Qimron couldn’t actually come up with much, only changing the orientation of some fragments and interpreting a word in the middle of ritual code to mean a different word that was pronounced the same way. The Israeli court applied US law and found in favor of Qimron on his copyright infringement/quasi-moral right claim; the Israeli Supreme Court affirmed based on Israeli law because 4 copies of the infringing book had gone to Israel.

Qimron was claiming that his creative insight was to change the orientation of a fragment, but that’s just like reframing a painting, which creates no copyright therein. Likewise, there’s no copyright in single words, so changing the spelling of a word isn’t a copyrightable contribution.

But the deeper question is what Qimron was doing – was he engaged in creative work at all? Or was he engaged in trying to find out what other people had done in the past? If he was trying to figure out what the Scrolls meant, he was asserting something about the truth of his reconstruction. The assertion of factual, historical truth is inconsistent with a claim of creation. If you get up and quote Shakespeare, and I correct your misquote, my quote of what Shakespeare said isn’t copyrightable – but that’s what Qimron was doing.

Many works have now been published about the Scrolls; every single scholar credits Qimron – no one thinks Shanks did the reconstruction of the Scrolls. The people who bought Shanks’s book knew who “Strugnell and a colleague” were, since it wasn’t the kind of book you buy if you aren’t deeply immersed in the scholarship. So there was no moral rights violation.

Shouldn’t Qimron’s 12 years of effort count? He’s an authority, not an author. In response to questions: even his reconstructions and gap-fillings were “readings,” in that he was filling in information based on what he knew from other sources, as if you were to read “oh say can you see by --- ------ ----- light.” Qimron had his reasons for filling in each lacuna in the Scrolls based on his knowledge and study. Even if he didn’t see the word, his choices are the choices of a reader, not a writer.

Q: Wouldn’t all these claims apply to the work of a translator?

A: Qimron deserves a copyright for his translation.

Q: But why isn’t reassembling a text to make it comprehensible to other people a creative act?

A; The Talmud has a story in which each of 72 scholars produced exactly the same translation of the Septuagint; it isn’t a credible story, because there are so many different locutions that can be used in translation.

Q: Does Israel follow the “sweat of the brow” doctrine?

A: The Israeli Supreme Court cited Feist and said it wasn’t protecting industrious compilation, but it went on for page after page about how much work Qimron had done. So it’s hard to say.

Further story: there was a side lawsuit when Qimron’s lawyer sent threatening letters to two other scholars who’d reverse engineered published concordances to produce a text for the Scrolls, claiming that “any use” of the text violated copyright law. The scholars filed for declaratory relief, but then Qimron left the country and the case went nowhere.

Coda: even after the Israeli Supreme Court ruled, Qimron said that he wished he had more time to polish the manuscript. There are some people who simply don’t want to publish. When the work is one of intense general interest and the scholar in control of it didn’t write it, he has no interest in suppressing its publication.

Wednesday, November 01, 2006

Blanket licensing of derivative works

It's not just for Creative Commons any more.

Comic Book Creator featuring Marvel Heroes lets you create comic books starring yourself (or, I guess, Brad Pitt) opposite Wolverine, and even post the results. I'm encouraged by this glimmer of acknowledgement that copyright owners benefit from nonauthoritative reinterpretations. It's not surprising that comics are in the lead. After all, comics brought us Lex Luthor the hero/Superman the villain and Archie v. the Punisher -- and it's not like comic fans have difficulty dealing with contradictory canon. (I need to get my hands on the software, though, to see whether the license works like the music companies' deals with YouTube, allowing Marvel to pull any panels that are too offensive. Sadly, the license agreement doesn't appear to be on the site, though the support manual has a lovely screenshot of its opening lines.)

Michael Madison at GW’s IP Colloquium on Information Form and Flow

Madison thinks about IP at a fairly high level of abstraction, and is trying to think unconventionally, without defaulting to standard property/contract/commercial law forms. Creative Commons, the focus of the talk, is an example of interesting phenomena seen in the licensing space. “Self-governing goods” range from a device that comes with technological controls built in like DVDs to an object with a text-oriented restriction like a shrinkwrap license. Those are usually put into different categories, but Madison thinks they’re on a continuum and not conceptually distinct – this is the future of IP. CC is a manifestation of that practice of creating self-governing information goods.

The method: IP is property, contract, commercial law with a little bit of free speech law mixed in on the copyright side. Conventional scholarship tries to blend these points of view, but that frustrates him because it doesn’t deal very well with new things like TPM-controlled devices. That also doesn’t match up well with how individuals and even firms ordinarily deal with IP objects. Actual experience should be worked into the structure of law, leading him to examine metaphor and conceptual experiences of the world. He is concerned with in systems and form and rigor, but also wants law to accept the fact that there’s a great deal of uncertainty, unpredictability and imagination in the world.

This is a supplement to existing ways of looking at the world, not an attempt to dethrone law and economics or any other theory.

What is CC in a modern IP sense? His thesis: CC is a kind of governance regime, specifying what can be done with a particular work, like shrinkwrap licenses and CSS on DVDs. It has a regulatory dimension and an enforcement component, but it doesn’t come from the government. It has a public-regarding character, but it’s not public in the conventional sense – not part of the Copyright Act. His intuition is that the CC license is a good thing, but it’s hard to map it onto our conventional doctrinal categories.

Four conventional views of the CC license: each has kernels of truth in it, but each misses something important. (1) CC license as contract. Consensual, bilateral, private ordering, involving consideration, offer and acceptance, etc. The license is explicitly written in the form of a contract. It presents itself as a (nominal) negotiation between author and user, which means a mechanism for taking both points of view into account, not just the author’s, which is good news. Bad news: this is not that clearly done; the contract language is distant from the ordinary CC logo you see. Also, the contract isn’t that well drafted. And at a conceptual level, Madison’s read of the CC project is that it’s an attempt to use the legal form to produce third-party benefits in a stable public domain, yet here is a bilateral legal form that isn’t easily reconfigured to do this.

(2) CC license as property. A covenant that runs with the code, borrowing Peggy Radin’s phrase. This tracks how you experience and encounter works on the internet. The bad news: What happened to the user? The author unilaterally decides what is & isn’t part of the work and the attendant rights. More theoretically, it’s not clear to Madison that people who make things have the right to label them unilaterally and control downstream use without being in privity with later users. The property model seems inconsistent with the underlying concern CC is trying to address, the anticommons/absence of a public domain.

(3) CC as copyright license rather than as license to ordinary property interests, parsing the legal rights in § 106 in a slightly different way. This is intelligible to us as IP lawyers, who work with slicing up copyrights all the time. Bad news: the licensor has taken a background set of legal entitlements, which is confusing and abstract and difficult in the best of worlds, and has now added a layer of complexity (e.g., the ShareAlike license, the attribution right). The other conceptual problem is that the CC license feeds the argument that we have too much of a permission culture as it is. The CC license doesn’t critique the permission culture; even if you want to use the work in a public-regarding way, you have to look at the CC permissions to see if it’s allowed.

(4) CC as expressive or communicative act, more like a trademark. It’s a sign that you’re an IP progressive; you don’t care what the text of the legal code actually says so much as you want to be in the same club as Larry Lessig (as who wouldn’t?). Lack of understanding of what a CC license does is still an important factor, since lots of people like the idea without deeply comprehending the terms. They don’t have a real interest in enforcing the license in a detailed way. It’s more of a certification mark, though he’s not arguing that they actually function doctrinally that way, just that there’s a symbolic consumer function. Now that some search engines allow search by CC licensing, CC is consistent with trademark’s search costs rationale – the label makes it easier to find the product with the defined characteristics. Bad news: this just doesn’t fit the doctrinal definition of trademark. Also, CC’s sponsors aren’t trying to get people to endorse CC generally but to actually accede to the specifics of the license.

Madison’s alternative conceptualization, which he thinks could also be used to analyze open source, patent pools, collective rights organizations, etc. Five minitheories, theories of the middle range:

First question: Place (and space). Most scholarship about the metaphors of place used by judges on the internet has been critical. In the proper hands, using a place metaphor can be quite helpful and not necessarily anti-progressive. We all use references to the landscape or layout of the legal territory, and that’s just a natural way that we look at the world. Start with the name, Creative Commons, an intentional evocation of the land-based commons. The CC license even calls itself a deed. Doctrinally that’s confusing, but metaphorically it’s like deeding interest in land to whoever comes on and uses it. Question: how does the user experience the CC license? You go to a homepage, or visit a website. CC doesn’t fully take advantage of the benefits of this place metaphor, which could make clearer who owns what.

Second question: Thing. Thingness, metaphoric as well as literal, is a big deal experientially and legally. Patent law is much more comprehensible to the extent that we can give concreteness to claims. Problems arise when you introduce things that create ambiguity about boundaries, such as the doctrine of equivalents. Copyright law is much worse on this score. How thinglike is the CC license? It’s designed to be machine-readable. We don’t know enough about how the license behaves in the world – how salient are the edges of this object that people are transacting in? As with place, also with thing – the more salient and vivid the edges, the more likely we as people and as a legal system are to want to find a way to validate it as an entity.

Third question: Groups. Even when we agree that individuals are constructed and situated, we usually focus on the individual. There are lots of places in law, including IP, where groups are really, really important. The rights of the “user” are really about rights of subgroups within the public – critics, scholars, historians, journalists, each with their own group definitions and norms. If you can articulate and see a group-level interest in the legal form, the legal form is more persuasive. Most persuasive parts of IP law are those that explicitly embrace collectivity, like patent pools and collective rights organizations. The participants know the domain, the rights, the scope of the rights – it’s complex, but comprehensible and it seems to work. Mechanical licensing can also be a great thing because it enables collective reuse of works. Open source licensing is more successful than CC on this score, because it’s designed to support a collaborative development process (oriented around a thing, the software program). The CC license is ultimately about downstream collaboration, but it’s not as clear and vivid a part of the CC program.

Fourth question: Narrative and story. Persuasive legal forms come with persuasive stories. (1) A static story interpreting what we see in front of us. (2) Less metaphorical and more rhetorical/literary, an aspirational story to remind us what we want to be. CC does better on the second – on the first, it’s not clear whether we have a creative commons or whether it doesn’t yet exist. CC’s aspirational story: We want a better future, but can’t trust Congress to give it to us, so we have to do it ourselves.

Fifth question: Governance. How thoroughly does the license express this regulation? Is it comprehensive, and does it define enforcement? If licenses are self-executing, we don’t need judicial or other involvement. In form, open source licenses seem comprehensive enough to be self-contained, while CC doesn’t seem to be quite there.

Further directions: How to distill this into a more concrete form.

Judge Rader: You discounted CC as a license because there’s no return for permission for each use. Why can’t you view it as a blanket license?

A: That’s what it’s trying to do. Madison sees a mismatch between ideology and rhetoric – if it’s an attempt to simplify copyright rights, it doesn’t get the job done by adding a new licensing regime. If you don’t have expertise in copyright, don’t have counsel, CC is trying to give a simplifying tool, but it’s not clear that CC works that way. [Niva Elkin-Koren’s critique.]

Rader: They’ve got the right to use, what more do they need? Legal fine points only make a difference when the lawyers and insurance companies come into it.

A: One reaction to my argument is “so what?” CC, do your stuff and we’ll talk when someone sues, which is quite unlikely. Should the legal system – legislatures, courts, Copyright Office – ignore what’s going on and let CC bop around on its own. Or do we like this stuff as a matter of public policy because it fills a statutory gap? If the latter is true, then maybe we should take some steps to make it easier to build out these licensing schemes. We could use the same concepts in interpreting things like shrinkwrap contracts or website terms of use – recognize them more readily when they’re salient and vivid to the user.

Rader: Once it has commercial impact, you do check it out. No corporate user is going to try to make money without checking out the terms. When it matters [interesting assumption] it will be fully assessed.

A: Not sure that’s true.

Rader: In that case, caveat emptor; they deserve what they get for trying to make money carelessly. [Caveat licensee? Sucks to be a small business?]

A: Consider whether adding an attribution right makes a difference to businesses, who may be used to dealing with statutory rights; they may not expect a standardized attribution term. If American IP law doesn’t tell you to look for attribution rights, it might be more understandable to overlook them, so a CC license needs to bring attribution to the attention of the end-user before we apply a caveat emptor argument.

Q: It will take only one or two cases to get this done.

A: Maybe, maybe not. If it’s possible for public policy – litigation or legislation – to influence this field, how hard will it be to do so? Until 1996, there was no widely understood definitive decision on the validity of shrinkwrap licenses. Then ProCD definitively says they’re enforceable. It’s a circuit court in a diversity case interpreting state law, but as a practical matter that one case shifted the whole landscape for practicing lawyers. Are CC licenses at a tippable stage, such that one well-placed litigation could solidify understandings? Is there enough commercial interest in how these things work such that the commercial bar is aching for an explanation? Madison isn’t aching for an explanation of CC licenses as such. A patent pool or a CRO could be an example of a commercially oriented commons about which we could also ask these five questions.

My comment: Law isn’t autonomous – the Copyright Office adds an attribution requirement because of an analogy to CC licenses, not because of reference to international models.

A: Yes, there’s an inescapable interdependence. You can still meaningfully talk about law as a distinct phenomenon, though the metaphors and experiences overlap within and outside “law.”

Laura Bradford: Is this a descriptive project or normative?

A: Much more descriptive. There may be contexts in which we don’t care about vividness, salience, transparency, etc., but asking these kinds of questions can help feed into normative accounts that help us figure out where we do need it.