Patry on Father Drinan and Copyright

A copyright legislation-focused memorial here. Father Drinan, as everyone says, was tirelessly interested in everything around him, and most especially in doing justice -- including for authors and educators. It was my privilege to be his colleague for a too-brief time.

Disparagement of a product class as advertising injury

Acme United Corp. v. St. Paul Fire & Marine Ins. Co., 2007 WL 186247 (7th Cir.)

A competitor sued Acme for making false and disparaging statements in Acme’s advertising (specifically, claims centered on the idea that in its ads and on its packages that its titanium scissor blades were better than stainless steel scissor blades, when its scissors contained negligible amounts of titanium). Acme tendered the lawsuit to its insurer St. Paul, which denied Acme’s request for coverage and disclaimed any duty to defend. Acme’s policy covered “advertising injury” (which was defined to include statements that disparaged others’ goods). Acme settled and sued St. Paul; the district court granted summary judgment to St. Paul, but the court of appeals reversed and remanded for entry of summary judgment in Acme’s favor and for a determination of damages.

The court of appeals found that the policy, and its use of the term “disparage,” was clear and unambiguous. The competitor’s complaint alleged that Acme made a false comparison, to the competitor’s detriment, sufficiently alleging “disparagement.” The district court denied coverage because, though the ads disparaged stainless steel scissors, they didn’t specifically disparage the competitor’s stainless steel scissors. The court of appeals found this unconvincing, given that the complaint specifically alleged that Acme’s statements were directed at the competitor’s products and that the competitor lost sales as a result. The court of appeals said it therefore didn’t need to decide whether an ad must specifically name another producer or product to “disparage” under the policy language, though it noted that the insurer could have written the policy to cover only situations in which a specific producer/product is named.

Comment: this really seems like a no-brainer: False advertising claims = advertising injury coverage. Assuming standing requirements are met, any producer of a product should be able to contest a party’s false advertising about that product, and that’s “advertising injury” under any reasonable interpretation of a standard advertising policy.

Google v. Stoller

Here's something that will make Google very few new enemies, and perhaps some new friends: As reported by the TTABlog, Google has sued Leo Stoller, the well-known trademark "entrepreneur," for false advertising, RICO violations (the predicate acts being state-law extortion and wire and mail fraud), and unfair competition. The complaint, 222 pages including the exhibits, is here.

I've said a couple of times in this space that there's no provision in trademark law penalizing false claims of trademark ownership, or even false claims to own a federal registration, in contrast to the rule for patents. Google has brought its claims under the Lanham Act's general prohibition of false advertising; not only does it dispute Stoller's claims to own a federal registration to the mark "Google," but its allegations also encompass Stoller's claims to own common-law rights in the mark, representations that he could license the mark, representations that he'd prevailed in numerous court cases, and representations that "99% of [his] opponents opt to settle."

The obvious question is whether Google has Lanham Act standing. If the relevant market is the market for licensing trademarks, then Google seems to be a consumer rather than a competitor. If, however, Stoller asserts rights in goods and services sufficient to give him standing to oppose Google's registrations before the PTO, is he estopped from denying competition? My guess is not; noncompetitors can be operating in categories sufficiently related to justify oppositions, besides which Stoller's oppositions have all been rejected.

Evil thought: if Google is using marks in commerce through its AdWords program, then probably they are competitors (though Google doesn't claim to be able to license marks, only to sell them as advertising keywords).

Assuming Google can get past the standing hurdle, are misrepresentations of trademark ownership misrepresentations of the "nature, characteristics or qualities" of Stoller's goods and services? The phrase has been interpreted expansively in the past, and should be here, whether we think of the relevant services as Stoller's licensing services or the relevant goods as Stoller's supposedly Google-branded products. Usually, a misrepresentation of trademark ownership would not be material, but the context here makes it so. (On the other hand, the reason it's material is that Google is the target/consumer, so we're back to the standing issue. State-law fraud/consumer protection claims might have been better under the circumstances.)

Final thought: Whatever Stoller's other characteristics, he doesn't suffer from low self-esteem. In his communications with Google, he promised that his threatened lawsuit would bring Google's stock price below $5 and would result in Google's "total destruction." Even the Author's Guild doesn't make those kind of claims about Google Book Search, and that really could be bet-the-company litigation. Did Stoller really think that his rhetoric would avail him against this ten-ton gorilla?

It will be interesting to see what happens next.

Baby Einstein, marketing genius

Slate has a story on Baby Einstein and the at best ambiguous evidence supporting its claims to enhance infants' mental development. The American Academy of Pediatrics recommends no TV for kids younger than 2 years old, and the concern is that the shows crowd out activities like unstructured play that are superior for mental and physical development.

In May, the Campaign for a Commercial-Free Childhood (represented by Georgetown Law's Institute for Public Representation) filed a complaint with the FTC seeking to have Baby Einstein and Brainy Baby investigated and enjoined from making unsubstantiated claims. This is an obvious case where government can do what Lanham Act suits won't: no competitor has any incentive to challenge the basic efficacy of baby videos. Likewise, consumers are unlikely to have the resources or the information to challenge these claims.

FTC rules require substantiation for advertising claims, unlike the private actions that require plaintiffs to prove falsity. The big question here is whether any research-based substantiation is required for claims to enhance infants' mental development, or whether anecdotal testimonials suffice. Baby Einstein and Brainy Baby have plenty of satisfied customers, but the research all goes the other way, and it's certainly possible that customers' babies would be as smart or smarter if they'd been playing with blocks instead. For health claims, the FTC requires more rigorous substantiation than for ordinary claims, in part on the ground that consumers expect that health claims are backed by scientific evidence. Are "brain development" claims similarly likely to be interpreted as claims that controlled/replicable studies show that the videos are good for babies? I would say yes, especially given parents' susceptibility to claims that things are good for their babies.

Full disclosure: as a parent of an infant, I own a Baby Einstein video, but I've never opened it -- like other anxious parents, I'm vulnerable to lots of pressure and advice and prone to second-guessing. It would be awfully nice if I could guarantee him admission to the college of his choice by careful video selection now. My son also watched a Sesame Beginnings DVD once, but he showed little interest in the Muppet Babies, and we haven't been back.

Should government speech be free?

Free as in beer, that is. This story indicates that a watchdog group is criticizing the BBC's plans to make its programs available free on the internet on the ground that this will unfairly compete with, and discourage investment in, the private provision of content. My first reaction was disdain; the common content providers' attitude that it's unfair to have to compete with free is both ugly and silly.

But maybe I should be more skeptical of free government-provided content that could be provided by other sources -- that is, editorial and entertainment programs, as opposed to reports drawing on resources the government is uniquely positioned to marshal, such as statistical data. Perhaps what the BBC is offering is the circus part of bread and circuses. (Ah, Torchwood.) Government already has a bully pulpit or two. If Neil Netanel is correct that an independent copyright-supported sector is an important counterweight to government views, then perhaps government content sources shouldn't be allowed to undercut that sector on price as well.

Ultimately, I'm still on the BBC's side. Given that its programs are already produced with public funds and available to anyone who pays the TV license fee, the marginally increased competition seems unlikely to drive private producers out of business, and it could provide people with access they'd otherwise lack. But I might not be as sanguine about the system if I thought the BBC was an Orwellian propaganda machine, producing slick ads for government policy in the guise of harmless entertainment.

In the US, government propagandists have increasingly inserted their material into supposedly independent news reports. Because news is low-margin, many outlets are happy to take government-provided content and pretend that it's their own reporting. This seems to me much more detrimental to democratic principles than BBC-branded entertainment, and it's direct subsidy rather than competition.

False advertising-related CAFA decisions

CAFA Law Blog reports on two recent decisions -- one involving a consumer false advertising class action, and the other a competitor false advertising class action – interpreting CAFA to place the burden on the removing defendant to prove that CAFA’s jurisdictional requirements are met, including numerosity and amount of monetary relief sought.

A Million Little Lawsuits

Samantha J. Katze, Note, A Million Little Maybes: The James Frey Scandal and Statements on a Book Cover or Jacket as Commercial Speech, 17 Fordham Intell. Prop. Media & Ent. L.J. 207 (2006): A useful overview of the legal background for consumer protection lawsuits against publishers. I disagree with Katze’s conclusion – that statements on a book cover should never count as commercial speech for consumer protection purposes – but it’s still a concise and clearly argued piece. (For one thing, Katze’s argument skips over the false designation of origin problem, as with Stephen King’s The Lawnmower Man or false claims that a biography is authorized. If that’s noncommercial speech, then, I would argue, either trademark law or First Amendment law is going to end up damaged, and given the likely equities in such a case I’d fear for the First Amendment.)

One factual update: as discussed earlier here, the JT Leroy saga has resulted in litigation. Katze suggests that the different levels of outrage to which Frey and Laura Albert were subject is evidence of some underlying uncertainty about just how bad it is to fool people in a memoir or a memoirish piece of writing, but one could also argue that Frey’s greater commercial success – not to mention the fact that he positioned his book as a real memoir, rather than a work of fiction with “autobiographical” elements – accounts for the greater backlash.

ETA to correct spelling of Katze's name.

If I am not generic, who am I? If I am generic, what am I?

(With apologies to Hillel.) The Seattle Trademark Lawyer reports on a recent California district court decision finding "kettle" generic for a type of potato chip. Briefly noted: a chip industry leader, whose testimony the court found credible and persuasive, described "kettle" as a generic term -- like, he said, Xerox and Kleenex, which he believed used to be trademarks but now referred to photocopiers and tissues generally.

I teach my students that Xerox and Kleenex are the best examples (perhaps now joined by Google) of modern marks that will never be declared generic by a court despite widespread generic use by ordinary consumers. Here, an experienced marketer recognizes that people use Xerox and Kleenex generically, while simultaneously recognizing that there are specific companies behind Xerox- and Kleenex-branded products. And I doubt most consumers are any different -- depending on what precise question you asked them, they'd say both that Xerox is a specific source of copiers and that another name for photocopier is "xerox machine."

What I find particularly interesting about the comparison is that, unlike Xerox or Kleenex, "kettle" has always had an obvious generic meaning -- the chips were cooked in a kettle. Rather than suffering "genericide," "kettle" was born generic. The gentleman testifying was responsible in significant part for creating the kettle segment of the potato chip market, so he understandably feels like he's lost some proprietary rights now that the market recognizes that segment as a distinct entity -- but he really hasn't.

TWEN and copyright

This semester, I'm trying something new with my Copyright class: TWEN, instead of Georgetown's homebrewed courseware system. Both allow controlled access to course materials, external links, class discussion, etc., but I'm trying TWEN to see if I can take advantage of a few features -- customized polls that can be taken in class or outside it, as well as office hours scheduling integrated with the course website.

Password protection has some nice features. Even though publishers demanded security measures as part of the TEACH Act allowing certain types of copying for academic purposes, however, they've now discovered that password protection (like encrypting P2P traffic) has the distinct disadvantage of preventing external monitoring. They're nervous that professors are putting up electronic materials on closed course sites instead of getting CCC licenses. For a fairly pro-publisher take, see this story, which includes a discussion of Cornell's agreement with the AAP. For the University of California's more aggressive pro-fair use stance, see here.

TWEN makes it easy for me to link to Westlaw materials, to which the students of course have free access by virtue of their Westlaw accounts. TWEN makes it slightly harder to upload non-Westlaw materials, and imposes a 15 MB individual/100 MB total limit on document size. Providing free courseware for professors is, it seems, another way publishers can get control of the ways in which schools use copyrighted works, supplanting copyright (including fair use and TEACH Act rights) with contract.

I am looking forward to finding out whether the advantages of TWEN outweigh the restrictions. I'm in a good position -- if the polls aren't that helpful, I can switch back to Georgetown's own less constrained system.

Best post title I've seen in a while

Judge Tries to Unring Bell Hanging Around Neck of Horse Already Out of Barn Being Carried on Ship That Has Sailed. Sure, it prejudges the story, but isn't that half the fun of having an opinion?

I had to double-check the date

Ralph Oman, former Register of Copyrights: "Without security for the content and certainty of payment, the internet will not attract the really valuable content.... The internet will remain an email convenience and a haven for hackers, pirates, and porno creeps."

Yes, this was published in 2006. Consistent with Mr. Oman's hopes, it is not available on the free internet. See Ralph Oman, How Digital Rights Management Will Save Authorship in the Age of the Internet, 84 Denv. U. L. Rev. 7, 7 (2006).

Good reading on ads as offers

Jay M. Feinman & Stephen R. Brill, Is an Advertisement an Offer? Why It Is, and Why It Matters, 58 Hastings L.J. 61 (2006)

By performing a close reading of the cases on which the rule “an ad isn’t an offer” is supposedly based and appealing to general contract law principles, the authors argue for a context-sensitive appreciation that ads can often constitute offers. Their argument calls attention to the statutory background of false advertising/consumer protection laws requiring that advertisers carry sufficient quantities of advertised goods, at the advertised price, to meet reasonably foreseeable demands. Given these laws (and their underlying rationales), consumers can and should expect that sufficiently specific ads are offers. As they point out, quoting another contracts scholar, it is ridiculous to think that consumers expect that ads are merely invitations to negotiate, as the dominant theory has it. In the modern economy, an advertiser whose ad said “TV sets $50” but who, in the store, said “TV sets are $500; my ad was just an invitation to negotiate” would be a liar, a cheat, or both.

Inexplicably, the Hastings L.J. makes tables of contents, but not articles, available online. It should do better.

Patent applications don't justify exclusivity claims

Medtox Scientific, Inc. v. Tamarac Medical, Inc., 2007 WL 37793 (D. Minn.)

Plaintiff and defendant compete for the market for filter paper for lab tests of lead. Defendant Tamarac distributes “D-Lead waterless hand soap” and “D-Wipe towels” under an exclusive license; they’re subject to a patent application, but no patent has issued. Plaintiff “occasionally uses the D-Lead and D-Wipe products in test kits when required to meet customer specifications.”

Plaintiff alleges that defendant has falsely claimed an exclusive right to the products based on the pending patent application, including in a bid to the State of Ohio, wherein defendant stated that any other offer to provide the D-products “should be seriously questioned.” Defendant claimed to be the only lab in the US that could, “without restriction, provide all of the required brand specific components,” and claimed a “right to exclusive use of these products, as well as any other products performing essentially the same function,” protected by a patent application. Plaintiff alleges similar misrepresentations in a bid to an Oregon county health department and to another customer.

Earlier, the court issued a TRO preventing defendant from stating or implying that the pending patent application gives it the right to exclude plaintiff from marketing competing products. After that, defendant distributed a summary brochure at a conference stating that the D-products are “technology licensed to Tamarac Medical. They cannot be used with any other capillary blood lead test. U.S. patent applied for.”

Plaintiff sued under the Lanham Act and the Minnesota Deceptive Trade Practices Act, but the standards are the same so the court only discussed the Lanham Act. The court used a definition of literal falsity that includes falsity by implication, when the intended audience “would recognize the claim ‘as readily as if it had been explicitly stated’” (citing Millennium Import Co. v. Sidney Frank Importing Co., 2004 WL 1447915, at *5 (D. Minn. June 11, 2004)). (How does a court know that the intended audience would interpret a claim that way without evidence from that audience? Common sense, and perhaps expert testimony, but this definition highlights the great ambiguity that falsity by necessary implication has introduced into the explicit/implicit divide.)

Plaintiff argued that its claims aren’t literally false because its license agreement excludes other parties from providing the D-products. The court rejected this argument, because the patent application doesn’t confer a monopoly on plaintiff. Thus, statements that its exclusive rights are protected by pending patent application are false, and its use of “U.S. patent applied for” directly following a claim of exclusivity is false by necessary implication. Even a sophisticated consumer audience (which, of course, may not be legally sophisticated) is likely to interpret that as a claim of patent rights.

Having found likely success on literal falsity, the court didn’t need to consider actual consumer impact, but noted that plaintiff had submitted evidence that customers understood defendant’s claims to mean that defendant had exclusive patent application-based rights to the D-products, and that this had affected their purchase decisions.

Because plaintiff was likely to succeed on the merits, the court presumed irreparable harm under the Lanham Act – note that this is a rule from trademark cases, and not usually applied in noncomparative false advertising cases. Given the apparently small market at issue and the claim of exclusive right, it may make sense to treat the claims here like comparative false advertising. The balance of harms also favored an injunction because that would require only relatively small changes in defendant’s advertising, while plaintiff submitted evidence of harm to its sales and good will. The public interest in truthful information about competing products likewise supported an injunction.

As a result, defendant was enjoined from representing that its rights to the D-products are protected by a U.S. patent or patent application. There’s a key difference between these two things: it’s factually false to claim patent protection (and defendant doesn’t seem to have done so), whereas it’s misleading to claim application-based rights, and the misleadingness comes not from a factual misstatement but from a false implication about the law that a patent application creates some sort of legal rights. It is reasonable to conclude that customers received such an implied message – the tone of defendant’s claims is designed to create that impression, and plaintiff has evidence that customers believed it – but it is an implied message. Perhaps explicit/implied is simply not the right division for Lanham Act purposes; we might be better served by admitting there’s a spectrum and not pretending that necessarily implied claims are “really” explicit claims.

Side note: the jurisprudence on false legal claims is complex and not entirely coherent. False claims that a competitor is infringing a patent, which the claims here edge close to, are not always actionable – sometimes courts require the parties to fight the patent out first, though with no patent to litigate about that wouldn’t work here. False claims about legal requirements in general are often only actionable if the claim is made by someone a consumer would expect to have legal expertise.

The injunction also required that, if defendant refers to its rights under its exclusive license agreement with the D-products’ maker in proximity to a statement about the patent application, it must include disclaimer language making clear that its exclusive rights don’t arise from the patent application. Though disclaimers are often disfavored in advertising law, the circumstance that the falsity here is about the legal effect of a patent application rather than its existence may make such language sufficient to avoid deception.

AALS Sections on IP & Jurisprudence: Copyright Disobedience: panel discussion

My questions for the panel: Solum immediately introduced the word “arguably” to modify “violating the law.” Is there a difference between being told by a judge or a police officer to stop doing something versus being told by the RIAA? How can a Rawlsian factor in uncertainty to the civil disobedience equation? On the other hand, how do we know what the norms are? The RIAA is intervening in that debate as well. How does a virtue ethicist deal with norm shifts or conflicts between norms? See also China, where there may be no norm against commercial copying of foreign products. Does a virtue ethicist endorse that?

Solum: If you believe in a duty to obey the law, you have to have permission to test the law if there’s genuine doubt. Assessing normative change: we need a theory of the purpose of law, e.g. to create conditions of human flourishing. This would imply a conventional policy analysis on what law promotes creativity and dissemination.

Edmundson: The term “norm” is ambiguous. It might be positive, describing custom and habit, but it can also be normative, as in critical moral norms. Social norms may arise without being objectively defensible. One example might be speed limits; in his area the posted limit is 55 mph and the actual speed is about 75 mph; neither seem optimal.

With respect to copyright, free riding is the key question. The literature arising out of Rawls’ discussion of the duty to obey derived a general principle of fair play. This was intensely attacked by Nozick. Imagine you live in a neighborhood with 364 others who get together to play classical music over the PA each day. You like classical music, but don’t want to volunteer one day a year. Does your enjoyment impose on you a duty to contribute? No: benefit does not in itself give rise to reciprocal duty. Free riders take without giving back a fair share, but it’s difficult to formulate a rule against that in a deontologically plausible way. People who send you stuff in the mail don’t create any moral obligation in you. Yet it also seems that we sometimes have a duty to do our fair share. Can norms or law draw the line?

Dogan: Widescale voluntary compliance exists, limiting the free riding problem. The question is whether this would continue to be true if we changed the law.

Question for Solum: Was Bull Connor a virtuous person in adhering to positive law and norms?

Solum: Very short answer – the main talk required shortcuts. Not all things are norms to which adherence is a virtue. A norm has to be widely shared and deeply held. It must also fulfill the function of law by promoting conditions of human flourishing for all citizens. Bull Connor was only acting for part of the community. In copyright, there is an equivalent question: if copyright is clearly cutting off human flourishing, it would not be virtuous to follow the law.

Question for Katyal: is dynamism a positive virtue? Or only if your side wins? The DMCA is obviously a change produced by ferment – is it good therefore?

Katyal: There are two payoffs of dynamism. The law sets a baseline level of regulatory oversight of disputes, taking some decisionmaking power out of copyright owners’ hands. Congress can consider the value of innovation. Her position does offer arguments against DRM – we shouldn’t delegate full authority to the copyright owner. At times, copyright disobedience can motivate shifts from property to liability. One possibility now is levies for filesharing. Disobedience can lead to an income stream for copyright owners.

Questions for Dogan: For your category (2) of boundary disobedience, declaratory judgment actions are possible, so doesn’t that affect the morality of disobedience? For (3), civil disobedience, you’re making a claim that the First Amendment trumps copyright so the positive law is really on your side. For (5), commercial misbehavior, antitrust claims are available – if a separate law exists to remedy the problem, disobedience may not be morally permissible.

Answers: (2) You still have to engage in the disobedience to have standing, so that can’t answer the morality question. (Consider the Felten saga, which shows that you may not have standing even then!) (3) The First Amendment argument might be true in some cases, but not others. Many courts have found that the First Amendment doesn’t trump copyright law. (5) Antitrust claims may or may not be available – the doctrine these days is quite restrictive. The students’ concerns, which included coordinated behavior by the industry, do not give rise to actionable claims.

Mark Lemley: The optimal economic result may well be some, but not much, infringement. This creates a puzzle: does morality require a deviation from maximum social welfare? Or do you need to disaggregate behavior and check whether you’re not behaving normally? Maybe copyright disobedience is only justified when it’s non-normative.

Solum: This raises a profound question that, restated within moral philosophy, asks what obligations there are under act utilitarianism. Perhaps just those people whose disobedience will create the greatest social good should disobey. But if we need 15% filesharing, how do I know if I’m in the 15%? Stability in norms is very difficult, which is a general problem of act utilitarianism. Hare’s solution: on the ground, people ought to use rules despite utilitarianism, because we lack a God’s-eye view. It’s a crude result, but as good as we can get.

Question: Much disobedience has to do with enforcement (absence of blanket licenses, resistance to enforcement by private parties) rather than copyright itself.

Dogan: This relates to the boundary issue. Enforcement tends to push for stronger rights, leading to a moral claim for resistance. But it’s not necessarily okay to break the law just because you don’t like the industry standards like a la carte licensing.

Katyal: There is a moral argument for filesharing as resistance to overenforcement – e.g., the Diebold case – to promote access to information.

Pam Samuelson: What about dysfunctions in the legislative process as justification for disobedience? Disobedience counterbalances an otherwise failed system – it is simply unlikely that law will be brought back into conformance with social norms. As scholars, at some point we need to try to solve the norms/law gap or stop spinning our wheels in complaint.

Solum: An eternal question – the relation between normative theory and political possibility. Samuelson’s frustration is pervasive and even corrosive. There’s such a gap between the ideal copyright law and possibilities in our actual political system. What is our stance when the first-best world is impossible?

Dogan: Classic copyright civil disobedience could fit into this. It calls attention to the plight of individuals who are sued unjustly. The challenge is to ask whether this is essentially a just form of government – will decisionmakers respond if the claims are sufficiently powerful?

And that was all the time we had. Congratulations again to Wendy Gordon for organizing (and to Graeme Dinwoodie, the new chair-elect nominated by incoming chair Jessica Litman).

AALS Sections on IP & Jurisprudence: Copyright Disobedience: Stacey Dogan

Stacey Dogan, Northeastern: Disclaimer – she’s not a philosopher. She proposes categories of noncompliant behavior, perhaps incomplete and definitely overlapping. We can initially distinguish between acts contrary to law and uses unauthorized by copyright owners, the latter of which is a broader category.

(1) Commercial, nonpersonal, exploitative use: an easy case, but why? If we accept the basic market failure premise of copyright, such use goes to the very reason we have copyright in the first place. There is no compelling justification to counteract the weight of copyright’s theory – such copying has no expressive value and it’s done for private gain. Even if we don’t think copyright is efficient, its premise isn’t flagrantly unjust or immoral. This kind of copying also lies outside social norms.

(2) Something that may not be disobedience at all: boundary disobedience, openly testing the limits of uncertain laws. Boundary disobedience may or may not be commercial. The goal is to persuade a court that this is not infringement, and often to preserve users’ rights. This doesn’t feel like disobedience, because of the user’s belief in the legality of her conduct. It promotes important social objectives: clarity, free speech, transparency/openness in airing both sides’ arguments. It may be morally compelled to do this to prevent otherwise inexorable narrowing of users’ rights.

(3) Classic civil copyright disobedience: deliberate public and flagrant violation, committed ofr the sole purpose of challenging the law on free speech grounds – the online gallery of DeCSS is one example. The Downhill Battle/Eyes on the Prize events are another. The keys are openness and risk to oneself. Many would see this as a legitimate appeal to government/other citizens, illustrating injustices. Like boundary disobedience, it creates an opportunity for full and fair discussion of the issues. Complicating factors: openness and risk are relative, and have become more so in a global age. Often protestors are remote and dispersed. Such disobedience can also have a cascade effect, breeding further protests and making the risk to each individual protestor lower and diluting the moral effect of willingness to be caught. (It seems to me this was also true of classic civil rights protests; my husband’s mother was arrested at a Baltimore sit-in, but was ultimately not prosecuted – her status as a nice white girl always put her less at risk, but that can’t have invalidated the justice of her disobedience.) Moreover, the potential harm from cascades may be greater than in non-internet contexts. The calculus of disobedience may just be different now.

(4) Personal free riding: Dogan isn’t trying to use “free riding” as a distasteful term. It’s simply the use of an information good without paying for personal purposes. It may be in protest, or it may just because the person enjoys the content. Many filesharers are like this. It conforms with existing social norms, some longstanding. Downsides: it works only as long as paying customers buy enough to preserve copyright’s incentive structure. Sometimes disobedience breeds disobedience, and copyright owners can’t discriminate between those who’ll pay and those who won’t. People spiral into nonpayment norms. It’s hard to isolate the morality of a single actor here because of the inherent interconnectedness of internet-based disobedience.

(5) Private disobedience designed to influence commercial actors rather than government: five years ago, Dogan’s students argued that the music industry was corrupt, oligopolistic, and inefficient, and the market needed to change. Once you’ve achieved that objective, however, disobedience should desist: now that per-song downloads exist, this category seems empty/illegitimate.

AALS Sections on IP & Jurisprudence: Copyright Disobedience: Sonia Katyal

Sonia Katyal, Fordham: Katyal addressed a larger issue in copyright, the lack of clarity as to what constitutes disobedience at all. Social movements critical of IP/copyright generally are dedicated to the idea that information wants to be free and is free. Downhill Battle organizes national campaigns of “copyright civil disobedience,” for example unauthorized public performances of Eyes on the Prize during National Black History Month.

The story of opposites occupies public thinking: you either obey copyright or oppose it. This means there’s a presumption of clarity in the public discourse (when uncertainty is in fact the rule). The RIAA describes piracy, including downloading, as a major threat; stealing is always wrong, and copying is stealing.

We could reject this bipolarity and ask how social norms tolerate certain unauthorized uses and not others. Notably, copyright owners also choose to tolerate many unauthorized uses, such as much of what’s on YouTube and the “Gray Album.” IP is imprecise and even thrives on imprecision.

The recording industry itself was characterized as piracy by composers. This led to a deal between new and old industries with a new compulsory license. In the past, court decisions often favored new industries in a way likely to prod Congress to act. Some kinds of disobedience (disobeying, at least, established players’ desires) motivate changes in the law. In her work with Eduardo Peñalver, Katyal distinguishes between acquisitive disobedience (downloading) and expressive disobedience (Downhill Battle). The latter has a greater claim to legal protection. (Though the newly formed radio industry was more acquisitive than expressive, wasn’t it, on these terms?)

Underenforcement allows copyright to remain leaky and productive. Copyright’s rules have historically served as a kind of anti-delegation doctrine: the copyright owner hasn’t had absolute rights to determine what’s an authorized use of the work. This is a central feature that owes much to periodic outbursts of disobedience (of whom? copyright owners or the law?), which then lead the law to clarify rights and exceptions. The complexity of determining what is law-abiding has to be factored into any assessment of the morality of disobedience.

Pleading dilution

Counterfeit Chic provides a copy of the complaint in Victoria's Secret v. Nines USA, which includes pictures of the panties that allegedly infringe and dilute VS's copyrighted/trademarked pink dog design. Notably, VS pleads only New York state dilution, which is probably the wisest strategy for plaintiffs who don't want to be sucked into a debate about famousness under federal law. It will be interesting to see how other elements of a state-law dilution claim are affected, or not, by the new federal definitions.

My take: a strong case for the plaintiff, but one that raises interesting questions of "use as a mark." The dogs are used as repeating designs on the panties; often, that type of use would be decorative rather than trademark use. Because we're familiar with VS's mark, the dogs serve as an indicator of source -- but are there any cases in which a similar dog outline could be used decoratively on clothing and not count as trademark use?

What does it take to create a derivative work?

DesignsfromMahrs takes old comic books and sews the pages together to create bags. In the 9th Circuit, this is probably enough to constitute a derivative work (at least if you get a panel that is committed to following prior panels), but what about elsewhere? It doesn't seem like the creativity in putting four or five pages together in a new configuration should suffice for copyrightability, but I could be wrong about that. In theory, the justification for a heightened creativity standard for derivative works is to avoid blocking other creators of derivative works when (if) the underlying work enters the public domain, and you could avoid that problem by saying that only exact duplication of a bag would infringe the derivative bag.

(If I recognized the comics, I would probably buy one of these bags. But there is probably a reason they're not using big-name DC/Marvel comics in the first place, either to appeal to people whose comics tastes are more refined than mine or to avoid DC/Marvel lawyers.)

Political speech and publicity/privacy rights

I have a post up at the Georgetown Law Faculty Blog, Can Property Law Reverse Cohen v. California?

AALS: The Morality of Copyright Disobedience: Larry Solum

Larry Solum, University of Illinois: There is a conflict between copyright and copynorms. Copyright prohibits a lot of socially acceptable conflict, such as, at least until a few years ago, music filesharing. Other examples: making compilation CDs for a friend, photocopying material for small groups, downloading images from the internet – probably a violation of the law; maybe they’re fair use, but they’re socially ok. (Comment: the “downloading images” bit in particular seems an extreme interpretation of the law, unless he means downloading images that weren’t originally put there by authorized parties. I don’t know any copyright person who rejects the idea of implicit license for copies made by surfing, or even permanent copies saved to one’s hard drive.)

Thesis: copynorms reflect historical patterns of technological copying ability, from the age of big printing presses, but we’re in a decentralized, privatized technological environment. Though everyone can now make thousands of copies at home, the “copies at home are fine” norm has persisted. Personal noncommercial copying is socially permissible, as is sharing with friends, but norms support copyright when public commercial copying is at issue. One example: P2P filesharing among young people is okay, but a similar norm doesn’t exist for posting files on websites. P2P is perceived as private, noncommercial, like sharing with friends.

The norm exists in other areas: one can copy an article and distribute it to a class because it’s too hard to get permission. This is arguably unlawful (comment: a lot of the time, it would fit inside the educational guidelines, which were supposed to be well within the bounds of fair use – Solum’s examples just show how far the copyright-expansionist party line has reached) but we do it all the time.

Implications: (1) copyright law is ineffective. Tom Tyler has written about how people comply with the law because they perceive it as just and legitimate. The reverse is also true, when there’s perceived illigitimacy. Harsher sanctions may even increase disobedience by worsening the perception of injustice.

(2) The greater the gap between law and norms, the less people perceive that law has a content-independent aspect of legitimacy and obligation to obey. This creates an existential quantary – either we’re increasingly inclined to think there’s no moral duty to obey the law as such, or we are routinely engaged in serious immorality.

What can moral philosophy tell us? Deontologically, Edmundson’s presentation set out the issues. If you’re a deontologist asking what the rules are, you’re driven to two unsatisfactory extremes, either the Kant/Rawls view of a strong content-independent duty to obey except in very narrow circumstances, or you can go with the anarchists and say there’s no duty as long as we have good and sufficient reasons to act. This creates a serious conflict with our moral intuitions.

If you’re a consequentialist, each act has to be evaluated seperately.

If you’re a virtue-ethicist, there’s lots of work necessary to specify what justice requires. The virtue of law-abidingness, as set forth in Edmundson’s paper, is part of this. To the Greeks, the virtue of lawfulness didn’t map on to the positive law; the Greek term was nomos/nomoi. The desired character trait encompassed positive law, but its focal meaning is closer to following the social norms of the community. Virtuous/excellent humans will have a natural disposition to obey copyright if and only if the law matches social norms. This virtue is content-independent in one sense – it’s not dependent on our own moral judgments. But its relation to positive law is not content-independent.

This suggests two options for bringing copyright law into harmony with copynorms. (1) Expand fair use, create safe harbors, create rights to private noncommercial copying. (2) Bring social norms in line with the law – this is very hard when social norms govern private, consensual, nonpublic behavior, and in general law fails at this task. (If it wasn’t just repeated for emphasis, I’d be fascinated to learn more about Solum’s view of the difference between private and nonpublic behavior – I can see feminist theory distinguishing between the two concepts.)

AALS: The Morality of Copyright Disobedience: Bill Edmundson

Wendy Gordon found a great mix of panelists for this joint session of the IP Section with the Section on Jurisprudence.

Bill Edmundson, Georgia State: We often have an intuition that there is a duty to obey the law. It is universally borne by citizens and content-independent – that is, the moral merits of the law are irrelevant to our duty to obey it. The duty is merely prima facie and can be overridden in specific circumstances, but it’s the starting point.

Rawls set out a justification for the duty to obey, based on hypothetical consent to institutions. Just institutions do not, however, guarantee just (or efficient) laws. Civil disobedience is thus allowed in extraordinary circumstances even in an democracy.

Civil disobedience, to Rawls, is a mode of address by citizens to other citizens. Arrest and punishment are expected and accepted; it is a desperate act justified only as a response to grave injustice that majorities persistently refuse to correct. Only certain kinds of injustice justify civil disobedience – violations of the equal liberty/equal opportunity condition.

How shall this be applied to copyright? For Rawls, there is no natural right to property. Entitlements emerge from basic institutions endorsed by persons in the original position. Incentivizing is built into the difference principle. Bill Gates has a copy of Vista and I don’t. This is prima facie unjust inequality and can only be justified by greater net social output. IP law is a legislative device to create incentives and is not normally a proper subject for civil disobedience. Violations of the difference principle that might arise from the IP laws don’t cut against basic rights and liberties.

Rawls on the defensive: the now dominant counterposition is philosophical anarchism, which denies that the starting point is a presumption in favor of the duty to obey the law. Rather, we should be against any duty that cuts against natural liberty.

Disobedience in IP invites three responses:

(1) Accept a duty to obey and try to satisfy Rawls’ constraints. Some forms of civil disobedience may be justified on the ground that IP can undermine political liberties, along the lines of Rawls’ defense of campaign finance legislation. One could also emphasize the need for a wider public domain to improve moral capacities.

(2) Side with the anarchists and deny any duty to obey the law. IP is no better than any other type of law, and needs justification on its own bottom. The resulting morality requires a kind of honor system, accepting lessened (even suboptimal) incentives for creators. One could also argue for copynorms as a source of moral obligation, which creates many difficult but fascinating issues.

(3) Argue for the binding status of IP as a fair play duty, like a freestanding moral duty not to steal or kill. (I may have misunderstood the role of copynorms; Edmundson may have intended to place them here.)

BusinessWeek story on misleading claims for compounded medications

The story, Is Your Medicine the Real Deal?, takes a little time to reveal that the issue is not counterfeit imported drugs -- the story we've heard a lot about -- but drugs advertised by compounding pharmacies as equivalent to brand-name (or even generic) drugs produced by pharmaceutical companies. The Supreme Court, relying on the First Amendment, struck down certain restrictions on advertising compounded drugs in Thompson v. Western States Medical Center; now, BusinessWeek reports, the FDA is going after compounding pharmacies for making false and misleading claims about substitutability. According to the story, "[Compounded] products can be sold without FDA approval, provided the pharmacist has a prescription from a doctor. But once a compounding pharmacy starts mass-marketing its own recipes, via the Web or other means, the FDA can regulate it as if the pharmacy were a commercial drug manufacturer." (I believe this is a description of the FDA's enforcement choices; my understanding of the governing law is that compounding has to be limited in scope and subject to quality control standards regardless of the amount of advertising a pharmacy does.)

This is one of Thompson's unanswered questions: If it's unconstitutional to bar advertising of products deliberately left unregulated by Congress, is it constitutional to impose significant regulatory burdens based on the fact of advertising? Keep in mind, as you consider this issue, that whether a substance is a "drug" for purposes of the Food & Drug Act depends on whether the substance is held out -- advertised -- as having a medical effect. The answer thus implicates FDA authority generally, not just regulation of compounded drugs.

Deep thought

Low-protectionists in IP like to talk about "standing on the shoulders of giants." How come we never ask what the giants think? Maybe they're saying "Ow. Ow. Get the %^&* off my shoulders!"

Following up my previous post on a very expansive application of Dastar, I suggest that those interested check out Mary LaFrance, When You Wish Upon Dastar: Creative Provenance and the Lanham Act, 23 Cardozo Arts & Ent. L.J. 197 (2005), sadly unavailable on the free internet. The article combines an aggressive stance on reverse passing off (arguing that no part of the Lanham Act really provides for such claims) with a proposal for retaining some attribution rights against explicit falsehood or misleading attribution of a mutilated work to an author.