WIPIP, Panel 5

Irene Calboli, Marquette University Law School
The Case for a "Reasonable" Expansion of the Protection of Geographical Indications of Origin Under TRIPS
Abstract | Paper

Calboli defends some expansion of GIs, though does not endorse the European prohibition on “-like” or “-style” designations. Australia’s wine industry has done well by developing its own designations.

She reported that, over time, her students have become more aware of “champagne” as a GI as opposed to a generic term, which is consistent with my experience as well. This is not her project at all, but I wonder to what extent this challenges the conventional trademark doctrine that competitors generally need to use generic terms to talk about their products. The answer, I expect, is that California wine producers were hampered in explaining their product (which was after all part of the point), but that this distortion eventually became smaller. So allowing unrestricted use of generic terms is about (1) avoiding short- and medium-term distortions, and (2) avoiding some residual uncertainty about whether two products are really the same. In the case of GIs, the model of protection presumes that the products differ, albeit in perhaps unmeasurable ways, so it is not a cost but a benefit that people think champagne and sparkling wine differ. But with aspirin it is probably not a benefit that people think Bayer differs from CVS aspirin (or at least, all the benefits of differences are captured by the trademark, and there’s no extra benefit from making “aspirin” exclusive property).

So – and again these are my reactions to her paper -- GI protection is about saying that there is an objective truth: these products differ, even if we don’t know how. The protection exists regardless of consumer perception. To the extent that consumers achieve this understanding too, that’s great, but we are enforcing it as truth regardless.

Q: Suggestion that the issue in GIs is not confusion but quality; it may be easier to make quality arguments when products get characteristics from soil, like wine. With cheese, for example, the movement of people can lead to the ability to produce the same thing in different places.

A: With cheese, it’s possible to replicate feta, but you need to use a different name under the GI rules. Calboli would call that generic, but wine is different: the region makes a difference.

Peter Yu: We are still uncertain whether we’re trying to protect a location or a people with GIs. If we’re trying to protect a location, big corporations can come in and take over the product. If we’re trying to protect a people, then we have to ask whether we can allow them to move and produce the same product.

Calboli: Protection shouldn’t be tied to producer size. Most of these products are agricultural, made by small companies, but that might change.

Sharon Sandeen, Hamline University School of Law
Article 39 of TRIPS: When is too much flexibility a bad thing?
Abstract

TRIPs and the Uniform Trade Secrets Act differ in definitions of trade secrets. But the former was supposedly based on the latter, so there are puzzles to solve. Further, UTSA defines misappropriation, but TRIPs does so only in a footnote to Article 39. Pharma cos are trying to use Art. 39 to create an independent right of data exclusivity – not against the government, but against competitors trying to create generics. She is disturbed by this. Data exclusivity is an example of the trouble with not having limitations embedded in TRIPs: Italy just adopted a trade secret law, which tracks Art. 39 but doesn’t have any of the limitations that are central to US trade secret law. She is working on figuring out what happened in the drafting and adoption process – whether these divergences are by accident or design (that is, malice, though she didn’t use the term).

WIPIP, Panel 4

Deborah Gerhart, University of North Carolina School of Law
Consumer Investment in Trademarks: Why it Deserves More in Fair Use Returns
Abstract | Paper

She’s beginning a project on the following idea: The corporate owner of the mark is not the sole master of its meaning; it’s important that consumers get some control reflecting their investment in TM meaning. The discourse surrounding consumers in TM cases is patronizing; based on a model of consumers as superabsorbent couch potatoes. One issue: use of terms in dictionaries; dictionaries respond to TM lawyers’ threats even though there’s no cause of action – consumer interests might affect this hypervigilance by TM owners. There is a duty to police, but we should carve out exceptions honoring this consumer investment. (There’s a similar proposal by Deven Desai & Sandra Rierson, relating specifically to genericity.)

We could, for example, recognize a type of cultural dilution as nonactionable, for example the appropriation of “spam” for email. It’s not blurring because it doesn’t interfere with source identification, just creates a second parallel narrative. Another possibility: Consumers deserve to be able to use marks to search for information about those marks – informational fair use.

Eric Goldman: Likes the idea of investment, and suggests exploring more how consumers use marks to manage their lives – reducing search costs in ways that we don’t usually think about. Also asks about what happens when TM owners change their products – are they harming consumers who have invested in the brand, e.g., New Coke? And wonders about the problem of heterogeneity of meaning. Brands mean different things to different people; whose meanings should we honor?

A: This last is why the problem of consumer investment is so important. We can’t just look at the TM owner.

Goldman: So how would that play out in an infringement case? How do we account for the brand stories of people who aren’t present in the courtroom?

A: We should look at evidence of use, e.g. on the internet. We look for viral meaning, not meaning created by competitors.

Lisa Ramsey: “Spam” is a sort of dilution by blurring. Also, consider descriptive terms – consumers have a right to know about the descriptive qualities of products or services regardless of secondary meaning. The descriptive fair use defense may be too limited for consumer needs.

A: Spam may have been blurred, but it’s not something that should be actionable nor does she think it was intended to. 9/11 means something different to us now, but the Porsche 911 still has a meaningful narrative. It doesn’t harm in the same way as use by a competitor.

My comment: Gerhart made several references to the special harm done by “competitors.” This seems to be calling back to an older idea of TM infringement. Once it was abandoned and noncompetitor use became actionable, TM just kept expanding, causing us to look around for limiting principles. Those principles having failed, we return to competition; likewise, people like Mark McKenna are starting to suggest a materiality requirement for infringement. The interesting thing to me is that competition and materiality are parts of the false advertising test under the Lanham Act; and furthermore, they’ve been implied by courts. So there is a model for doing something like this already in the caselaw.

Q: Consumers can contribute to the value of a product – network effects with a computer program, for example – but may not be contributing to the value of the mark – Lotus 123. There are all sorts of investments.

A: Agrees. But surprisingly, many uses of marks are expressive – people mostly buy hybrid cars to express something about themselves, despite the price of gas.

Tom Bell: Your examples involve consumers having settled on a meaning. But when people are contending to develop meaning, we could get chaos.

Peter Jaszi: (Responding to Gerhart’s earlier invocation of “Napsterphobia,” where TM owners irrationally fear loss of control/rights.) What evidence can we use to define and address the problem?

A: She’s seen it in her own licensing work – people want to lock up their content so tight it’s useless.

William McGeveran, University of Minnesota Law School
Rethinking Trademark Fair Use
Abstract | Paper

Contours of the project: Anytime someone uses a mark to facilitate saying something, we need to at least inquire about whether that’s legitimate and not within the scope of infringement/dilution, though some will perhaps ultimately be correctly suppressed. That puts descriptive and nominative fair use together.

There are few really bad decisions when they get all the way to final judgment, but there’s a persistent chill on these types of uses despite the paucity of bad law. McGeveran argues that part of the problem is a failure to conceptualize the relevant defenses – the circuits disagree, the treatises disagree, and even copyright fair use looks better. Moreover, almost all the versions end up collapsing into likelihood of confusion inquiries – for example, this is true with “trademark use” requirements, as well as with nominative fair use. It ends up being more difficult to show nominative fair use than to show lack of confusion. And, as the previous sentence suggests, the burdens of proof get misplaced – if nominative fair use is a substitute for the confusion test, the defendant has to show it’s done nothing else to cause confusion. Relatedly, because these tests are fact-intensive and conflated with confusion, they’re not prone to resolution early on in a case, even summary judgment.

So we need to restructure the law to allow early deployment and resolution, detached from fact-intensive considerations. Hard cases will still need further factual development, but that could decrease the chill.

Sharon Sandeen: What about a Markman hearing type procedure? In her experience, it did help settle cases.

A: That’s the kind of thing he’s thinking. There’s no need to change the FRCP, just doctrine and possibly judicial management practices. The substantive problem with our current defenses is that they depend so much on the facts.

My Q: How do you cash this out?

A: Use news reporting, use in political campaigns, etc. as explicit carveouts, as with dilution law. It may leave us with keywords as an issue that has to be thought out, but at least we can get rid of suits against artists and Ralph Nader.

Farley: You have to answer a question that puzzled the Court in KP Permanent: What does “fair” mean? How can it be fair if there’s confusion?

(I think the answer can be Scalia’s in Wal-mart: given the costs of sorting out the few confusing uses from the many nonconfusing ones in a defined subset of cases, the game isn’t worth the candle. This of course makes you rely on generalizations like “most uses in headlines aren’t confusing,” but if it’s good enough for Scalia, why isn’t it good enough for us?)

A: This is a problem that shows up in the 9^th Circuit’s rule on remand in KP Permanent, where the court denies summary judgment – the remand makes the problem even worse by complicating the test for descriptive fair use. We must consider how our beautiful tests work structurally and procedurally, or they’ll suppress good uses.

Ramsey: consider anti-SLAPP procedures as a model. And consider saying “we just don’t care about certain types of sponsorship confusion,” maybe on constitutional grounds.

A: That could be good!

Mike Carroll: rather than needing a coherent theory of fair use, we need a more robust theory of TM’s limiting principles outside of confusion. Then we can figure out how to clean up our standards and implement our normative limiting values. Lists of specific safe harbors have pernicious unintended consequences, as we’ve learned in copyright – floors become ceilings; courts draw negative inferences. At a minimum, safe harbors should be defined functionally. And we should also loosen the standards for declaratory judgment so people can get answers quickly.

Mark McKenna, Saint Louis University School of Law
Trademark Use and the Problem of Source in Trademark Law
Abstract | Paper

The search cost theory of TM law is not sufficiently rich to give us those limiting principles Carroll talked about. Our failure to find limiting principles once the competition requirement was abandoned has led to the development of the new contender, trademark use – defined roughly to mean a use that indicates source. (You could require affixation as in the statute, but that wreaks havoc on a lot of doctrine.)

He’s emotionally on the side of Lemley & Dogan, but ultimately trademark use reduces to confusion – do consumers understand something as an indication of source? – so it doesn’t get us out of the problem.

So far the only things that make irrelevant the basic question of source identification are from outside TM: Dastar and Traffix considerations of interference with copyright and patent regimes. This is a much bigger problem than TM use: everything in modern TM law is tied to a concept of consumer understanding of “source,” and the judicial interpretations and practical meanings of source have kept expanding. Even the start time of a baseball game – 7:11 – can indicate sponsorship, so consumers can rationally conclude that anything can. The only logical endpoint is complete control over a mark. But that’s so obviously bad that we need principles to deal with it.

And this is search cost theory’s biggest weakness: once we decide consumer confusion is the harm we care about, as opposed to an indicator of some other harm, it’s hard to identify what the stopping point is and it’s very easy to characterize plaintiff’s claims in consumer protection terms. So let’s detach some defenses from confusion, increase the quantum of confusion necessary to support a claim, add a materiality requirement, and maybe other things.

Farley: We really need to bring “source” back within some reasonable bounds. McKenna says TMs are functioning in the world more broadly than they used to, so of course the law needs to follow, but she’s not convinced.

A: He thinks we can’t go all the way back to trade diversion, but he wouldn’t say we have to follow “source” as far as the market does in practice. We could define source differently for infringement purposes. It might actually matter to some consumer decisions if there is an affiliation between the plaintiff and defendant, and we should be willing to recognize it but perhaps presume irrelevance in certain circumstances. If people start to believe start times signify source, though, then maybe a team shouldn’t be allowed to pick a 7:11 start time to advertise itself.

My Q: Nominative fair use, trademark use, and inherent distinctiveness can be seen as a bunch of presumptions, some rebuttable and some not. If we raise the evidentiary standards and don’t allow owner-favorable presumptions (such as occurred in Boston Hockey), and we regulate surveys carefully, we might find there’s very little evidence of interference with trademark rights in many of these cases. Consumer perceptions, in other words, might not be as trademark-driven as we think.

A: He agrees, but it doesn’t solve the problem of kicking cases out early.

Calboli: Maybe you’re going back to technical TMs v. unfair competition.

A: If he had confidence in our ability to limit the concept of unfair competition (requiring, say, competition) he might endorse that. But he’s not sure that TM can be distinguished from unfair competition in that way. We need to define the harm agains which we’re protecting people.

WIPIP Panel 3

Jasmine Abdel-Khalik, University of Missouri-Kansas City School of Law
Is a Rose by Any Other Image Still a Rose? Disconnecting Dilution’s Similarity Test from Traditional Trademark Concepts
Abstract | Paper

Dilution is about the mark itself, unconnected to any goods; it’s about interfering with the story of the mark, rather than interfering with source identification. So how do you tell how similar a mark has to be before it dilutes? Schecter wanted protected marks to be coined, arbitrary, or fanciful, and they’d be protected against identical uses. The change in modern law, allowing acquired distinctiveness to suffice for dilution protection, is important because the mark owner is now adding its own story to an existing term, which means it fights against preconceived ideas – it’s prediluted. So we need to focus on the number of 3^rd-party marks out there, not just whether the claimant has acquired distinctiveness. That is purportedly captured by the fame requirement – it means your story has to have won out.

Substantial similarity is the killer question. In the 9^th Circuit TREK and ORBITREK are apparently similar enough for dilution; query whether that would have been similar enough for Schecter. Another case: DOGIVA and CATIVA; the court skipped past similarity, especially for the latter. Many other –IVA marks exist; there must be something more that triggers substantial similarity. Moseley said mental association wasn’t enough to demonstrate similarity, but didn’t say what would be enough. What about sight, sound, and meaning, the standard infringement trilogy? But with likelihood of confusion, you always look at the mark in context, which influences judgments of similarity. She would like to talk about uniqueness, which to her resembles copyright more than trademark – it’s about originality.

Goldman: Invoking substantial similarity from copyright creates a bunch of problems; it’s so unpredictable. Perhaps there’s some more precise test (as copyright has in special subfields).

Q: Arbitrariness alone is super-distinctive, but doesn’t deserve dilution protection without fame. If you push for uniqueness, don’t you lose MCDONALD’S and protect all those unknowns?

A: She’d offer thinner protection to MCDONALD’S than to a unique mark.

Q: The more famous the mark, the less you can dilute it.

A: That ties in to the concept that it’s the death by a thousand cuts, not the first cut, that matters.

McKenna: There’s a bunch of cognitive psych literature that says some marks are just unassailable. That leaves open what happens to the others. But it’s hard for TM owners to make a straight-faced claim about this – they have to say “we’re really famous, but not that famous.” I think very badly of TM law, but I think worse of copyright. Substantial similarity is just a crapshoot. But you could at least evaluate similarity on basic principles; copyright similarity is about market substitution, but that doesn’t make sense here, and that’s a function of the fact that we don’t know what the harm of dilution is.

Irene Calboli: Why do you think the test should be different from the infringement test? Similarity should be required in both cases. What about the old technical/nontechnical trademarks division?

(My thought: with confusion, less similarity can trade off with mark strength and relatedness of goods – CATIVA for candy is a different thing than CATIVA for cellphones. I don’t think we want that for dilution.)

Lunney: Schecter was writing about technical trademarks, since they were the only ones that could be “TMs.” Why do you want a similarity screen before going to the blurring test?

A: Because we’re going to make mistakes on blurring.

Q: So why not just fix the blurring doctrine?

A: Similarity as a screen allows better evaluation of risks by potential market entrants than a multifactor test.

Sean Pager: What about the filtration procedure from copyright; could it be applied to the trademark in evaluating its position relative to other marks (applying semiotic theory)?

My comment: The funny thing to me is that when marketers talk about unique brand stories, they often speak in one-word terms – this brand is about YOUTH, or POWER, or whatever. And those are the farthest thing from unique, even though the brands themselves are distinctive and powerful. So seeing dilution as about preserving brand stories makes dilution even more puzzling to me.

Katja Weckström, University of Turku
Trademark Dilution, Trade Mark Use and Trademark Law Theory- In Search of A Logical Connection
Abstract | Paper

Dilution is a right to control meaning: what are the appropriate limits on that right? The US and European conclusions are very different. The ECJ has said that TM use can’t be a categorical limit on the TM owner’s right to prevent infringement or dilution (and indeed the line between infringement and dilution is less clear there). Weckström likes the European system of flexibility in factors, which invites the ECJ to look at general legal principles without finding facts, because she finds it less burdensome to defendants – though it might not work the same way here.

Lunney: Do search engines behave differently in Europe?

A: There are the same problems, but on a national level, and hasn’t reached the ECJ yet. It’s not part of harmonization. The ECJ has no interest in making exceptions or special rules (e.g., how search engines should be treated). She would guess the UK is close to the US, but other countries will have strong protectionist caselaw that will usually find in favor of the TM owner.

Christine Haight Farley, American University Washington College of Law
The Feminine Mystique of the Brand in Trademark Today
Abstract

Her argument isn’t that dilution proponents make explicit, conscious use of metaphor, but rather that they evoke a submerged association between the brand and the vulnerable feminine subject in need of protection. It gives us a moral justification for dilution, which sorely needs one. It draws on past ideas about purity, like the old torts that protected male property interests in their female relations. It makes an affirmative claim that the harm is unmeasurable in market terms and that’s why we need to give legal redress – performing conceptual ju-jitsu on the “you can’t identify the harm” objection. That’s ironic given the strength of today’s brands.

The traction dilution gained in the 1970s and 80s tracks what was happening in the world of marketing, which was the rise of brand extension. Brands were exploiting themselves, creating their own vulnerability. Also, brands were no longer associated with a set of goods, but a set of ideas. And that’s always more tenuous – holding on to a “luxury” reputation is harder than holding on to a “bracelet” reputation.

Matthew Sag: How do Europeans talk about the same phenomenon? Brand extension goes beyond the US; we can learn about cultural meaning from the comparison. Maybe this is a function of the American prudish obsession with sex.

McKenna: Wants to challenge the historical narrative – state dilution is much older than federal protection, and state cases say the same thing decades back, though sometimes they say they’re deciding based on confusion.

A: Farley identifies an evolutionary development over time.

McKenna: See also the rise of the right of publicity, which does the same thing for people. Really this is about tarnishment – does blurring fit this story or not? Also, the John Deere case is a great example for you, “feminizing” a masculine brand.

A: Tarnishment is conceptually hard to separate from blurring, especially when the plaintiff is trying to sell one kind of sex (teasing) and defendant is using it more explicitly (porn) (e.g, the Victoria’s Secret case, the Dallas Cowboys Cheerleaders case).

Calboli: Does the older rhetoric of TM as property fit in here? During the same period, women’s reputations were protected as property, so the analogy is strong. Also, international development of protection may offer some lessons, especially in countries like Benelux that protected against any “association” or unfair advantage. (Unfair advantage has real resonance with the gender metaphor here.)

Me: The consumer also loses in this model of dilution, her attitudes changed to her detriment – kind of a “think of the children” thing. I now wonder about a slightly different metaphor, that of vulnerable child, who is unable to reason and subject to predation. Middle-class anxiety over managing children’s every experience is even greater than anxiety about women – and of course it’s young women’s sexuality that we worry most about. Though I’m not sure whether it’s the consumer or the brand who’s the child here; we could do a model of the TM owner as benevolent patriarch, TM as mother, consumers as children being guided in the proper way to think – and why should outsiders get to interfere with the parent-child relationship?

WIPIP, Panel 2

Frank Pasquale, Seton Hall Law School
From Net Neutrality to Search Neutrality: Frontiers of Equitable Information Policy
Abstract

Principles of net neutrality: transparency – we want to know if traffic is being slowed down, or if carriers are turning down controversial text messages. Open infrastructure – non strangulation principle that providers shouldn’t deliberately degrade quality of service in order to upsell the better quality, as makers of printers for home use do.

Many skeptics of net neutrality see it as an unnecessary burden. There’s been a “laissez-faire switcheroo”: Google is closer to a monopoly than broadband providers. The reductio ad absurdum is – what’s next, search neutrality? Net neutrality advocates call this a red herring, but Pasquale is interested in it. Pervasive vertical integration is a problem no matter the layer. Verizon cutting a deal with Yahoo! search is a problem, and so is Google cutting a special deal to put a company at the top of organic results all the time. The FTC has warned search engines to separate paid and organic content, but without transparency we just won’t know if that’s happening.

Google will put a notice next to your site if it appears to contain malware. If that gets you to clean your site up, great; but maybe there needs to be some sort of due process. (Later he talks about individuals’ ability to respond to their FICO scores, see election software, etc.)

Transparency: net neutrality advocates want to know whether packets are being blocked, quality of service is degraded, etc. Compare to the NYT/MoveOn controversy – we should know who gets discounts. There are parallel demands in the search engine context. Which groups and governments’ demands are acceded to? E.g., the results for a search of “Jew” on Google produce a link from Google explaining matters.

Laissez-faire claims against net neutrality: property fundamentalism (we own our platform); free speech absolutism (Red Lion is dead); Schumpeterian optimism (Google will build its own internet). And Google makes the exact same claims when people argue for intervention into its search results! Pasquale disagrees with them all. Google isn’t willing to wait for salvation through the market in the carrier context. Net neutrality can help competition.

Tom Bell: References work on the history of mandatory interconnection. Before then, people had two phones on their desks – there was competition, and then after mandatory interconnection Bell wiped everyone else out. So Google’s take on net neutrality might help it consolidate its power.

Pasquale: If you have net neutrality, you have to look at regulating Google too.

Eric Goldman: Google’s trying to have it both ways and should be held accountable. You are trying to develop a law of intermediation – the same arguments can be made against any intermediary.

Christopher Yoo: Failure to interconnect drives competition to connect everyone; someone then wins the race, and that creates a new set of policy problems. Everyone says Bell refused interconnection, but new entrants were no more interested in interconnection. Also, this isn’t Schumpeterian competition, which is vertical competition for the market – a succession of monopolies. Here, there is a drive to add a third player to a duopoly. Different monopolies at different levels can push into each other’s levels – one possible story is that those bumping up against each other are a good idea.

Pasquale: That’s a benefit of having countervailing monopolies at different levels. Maybe that’s the only hope we have – set some corporations against others.

Mark Schultz, Southern Illinois University School of LawThe Music Never Stopped: Technological Progress, Economic Growth, and Copyright
Abstract Paper

An interesting argument: performing arts are subject to the “cost disease” – productivity increases in the overall economy don’t increase productivity in this sector. A 45-minute sonata still takes 45 minutes and the same number of performers in 2007 as in 1907. As a result, performances become more and more economically unsustainable. There have been a number of responses to this argument, including claims that people spend more on art as society gets wealthier. But tour prices continue to go up, and only a few bands can make money from live performances. Copyright is a potential savior by allowing performers to capture some productivity gains from technology in the form of recorded/broadcast media and broader distribution. Basically, neither impeding technological progress nor abandoning copyright is a good idea for artists.

Tom Bell: Do we care about artists except insofar as their works are accessible to consumers? Performing costs are a red herring – we can get music from recordings, so who cares if live performance is more expensive?

A: This is a common response to the cost disease argument. You still need an incentive to produce recordings. Will we get anything if live performance gets more costly & records are no longer worth distributing?

Bell: Garageband shows that plenty of people will publish for free!

Michael Carroll: You’ve set up an all or nothing proposition: get rid of copyright or keep it. Also, the superstar effect creates a lottery effect – people will take the risk because they want to be one of the ten winning bands that makes money on tours.

A: It’s not all or nothing, though people do argue for abandonment of copyright. There is a class of performers who can’t provide music for free and can’t make a living just by touring, but could use copyright-protected business models.

My question, like Mike’s: allocatively, the rewards copyright offers suggest a shift more towards winner-take-all, since one violinist can satisfy more demand. How does that interact with the paper’s analysis? Depending on how people react to tournaments, that could induce more people to pursue artistic careers, or fewer – and either might be good for society, depending on the alternatives!

A: The long tail moderates that – technology allows people to connect with a smaller group of fans.

Q: So is the winner-take-all system more powerful in recorded media or in live performances? Which market is more skewed, and what effects does that have on incentives? We need to know more about the interaction of incentives; the long tail, after all, is profitable for retailers, but it’s not clear that it provides musicians with a living.

Glynn Lunney, Tulane University Law School
Copyright’s Price Discrimination Panacea
Abstract Paper

The paper was an example of work I like but do not remotely do. Lunney models the effects of increased price discrimination in a world where resources invested in creativity have to trade off with other investments, arguing that the most likely alternative is diversion from other creative fields in which price discrimination (or even copyright protection in the first place) is relatively less important. As a result, he shows, increased price discrimination is likely to decrease overall social welfare. I found the model comprehensible even though graphs give me hives.

Terry Fisher, in another paper, says price discrimination is socially cheapest way to achieve any given incentive level compared to uniform pricing. You can decide on the incentive level and then allow price discrimination and give less overall copyright protection in length and scope. But there are two problems: (1) the difficulty of setting the right incentive level, and (2) political economy: you never get the quid for the quo; scope keeps getting bigger.

There may be cases in which price discrimination is a good idea – addressing the costs of uniformity in copyright scope, or achieving a better incentive level – but the assumptions really matter; we need to articulate and defend the reasons why we think price discrimination works.

Q: Aren’t you assuming a lot about the industries copyright would steal from?

A: Look at other creative industries – they don’t have anywhere near the ability to price discriminate as copyright industries.

Q: Price discrimination is not the only way to appropriate extra value.

A: I don’t see copyright industries capturing a smaller fraction of value than the industries nearer to them. But this is the right debate: what are the most plausible assumptions to make about the markets?

There are always more market failures to talk about, which is why second-best analysis is so hard to do – intractable, even.

A paper from another panel:
Eric Claeys, George Mason University School of Law
INS v. AP: Hot News and Natural Property Rights
Abstract Paper

I liked the discussion at the end of the paper of the limits of economic analysis in the presence of substantial empirical uncertainty, and the ways in which economics in fact reduces to intuitions. Exactly what Lunney was talking about!

IP Works in Progress, herein of the First Amendment

Works in Progress Intellectual Property Colloquium, panel 1

Lisa Ramsey, University of San Diego School of Law
Increasing First Amendment Scrutiny of Trademark Law
Abstract | Paper

Ramsey began with an interesting example of First Amendment concerns with TM: a company with a TM in LIFE IS GOOD that makes branded apparel has gone after parodists and competitors, including LIFE IS GAY and LIFE SUCKS. This is worrisome. She offers a framework for approaching 1A problems in TM.

Questions addressed: (1) Is this use of a TM actually speech? (2) Is this speech regulation state action? As to TM, she considers this an easy question: yes, the state is involved. (3) Is this a type of speech categorically excluded from 1A protection/entitled to lesser protection? (4) Is this content-based or content-neutral regulation? Also we need to consider vagueness, overbreadth, and prior restraints.

Benefits of this approach: it focuses us on the government’s regulatory purpose and requires carefully shaped laws. The 1A approach makes us decide whether confusion as to sponsorship should matter, and may offer a way out of the circularity of permissions leading to ever-more-expansive TM rights noted by many. It also has implications for dilution, initial interest confusion, cybersquatting, and other areas.

Ramsey considers TM to be a content-based, sometimes word-based or speaker-based, regulation, requiring a compelling interest and least restrictive means analysis. But this is different from regulation that stems from disagreeing with a word, like indecency regulation; the government isn’t really trying to control the communicative impact of the word used by any speaker in any context. So much TM law would survive.

Eric Goldman makes the interesting suggestion that she should apply her thesis to “para-trademark” laws like Utah’s online registry law. 1A challenges might work well there even if courts resist them in traditional TM law.

Rebecca Tushnet

It Depends on What the Meaning of “False” Is: Falsity and Misleadingness in Commercial Speech Doctrine
Abstract | Paper

My notes: The Lanham Act is about who is to be master of meaning in commercial advertising.

Even at the level of individual words – trademarks or other advertising claims – sorting true from false is extremely difficult. This is why I am deeply skeptical of proposals to equate commercial and political speech when they’re accompanied by promises that we’ll remain protected against consumer fraud.

True and false aren’t easy lines to draw. So just saying “false and misleading speech can be banned, which makes trademark law constitutionally acceptable” rushes over much of the real conflict between the Lanham Act and the First Amendment, which is who gets to decide what’s false and what’s misleading.

A fundamental thread running through much modern trademark scholarship and case law is that if a defendant’s use of a mark is truthful, it can’t cause confusion. The problem is that it’s not right. True statements can cause confusion, because of the multiple ways in which people interpret messages and because of the irreducible, even tragic, gap between speaker and listener.

False advertising law – also part of the Lanham Act – knows this, but we have adhered to this extremely useful fiction in trademark law because acknowledging that truth can be confusing would either destabilize much trademark law or expand trademark rights beyond acceptable boundaries.

Example: Ask doctors which of two products they prefer; 30% choose A, 10% choose B; 60% say there’s no difference. Is it false to say A is preferred by doctors 3-to-1? The Seventh Circuit said no, because it was true, even though the survey showed that it misled consumers about doctors’ overall preferences.

The obvious countermove is to say that if a statement is confusing, it can’t be true. But that hitches speaker’s truth to listener’s understanding, leaving us nothing independent against which to evaluate the listener’s understanding. It’s unlikely that we want to do that – or even that we can, as a matter of constitutional law.

To take an example from Mark McKenna, suppose the NYT runs a story truthfully saying “Nike Announces New Shoe Line,” and because Nike is so good at marketing consumers assume that Nike authorized that headline. The confusion is over what consumers perceive to be an implicit representation added to the explicit headline: Nike approved this story. The headline itself is true – standing alone -- and it is confusing – when the implicit message attached to it is added in.

The if-true-not-confusing position ignores implicit meaning. That’s fine here, since no one wants the NYT even potentially exposed to liability for such a headline – but it is an undertheorized thing, and it’s bound up with the problem of trademark use that is so consuming trademark scholarship these days.

Ignoring implicit meaning may also be an impossible thing as a practical matter, since speech depends so much on implicature for its success. In fact the presence of a claim in an ad is an implicit representation that it is or should be material to choice, and we routinely understand it that way – my favorite example comes from an ad for coffee that said “made with smaller grounds” – people liked it better, even though they were given no reason why smaller grounds were better and in fact there’s no objective evidence that they are.

But there are a lot of scarier things that can be said through implication – e.g., the recent informed consent case decided by New Jersey Supreme Court. And this is worth emphasizing: Regulating truth and falsity necessarily means shaping preferences. There is no way to limit regulation to “just the facts” because it’s the implications of the facts that aid or deceive consumers.

Another example, recombinant bovine growth hormone: What if a dairy advertises its milk as rBGH free? There’s no evidence of health or safety differences in the milk for humans. But there are concerns for the cows, the survival of family farming, and the general wisdom of genetic engineering.

The FDA has suggested that labeling foods as non-GMO has the potential to deceive consumers about health. If more consumers care about direct health and safety consequences than about other possible consequences of GMO food – which seems likely – and if consumers see labeling as a signal about health or safety, then the GMO label will help a small percentage of consumers, but only by deceiving a larger percentage. And that’s assuming that there are no preference-shaping effects, which complicate matters further.

Final point: trademark lawyers think TM is insulated from the First Amendment, as copyright lawyers once did, as defamation lawyers once did. But the Fifth Circuit last year decided a case about the statutory regulation of “Cajun”: the First Amendment precluded the legislature from banning the use of the term on non-Louisiana foods because there was no evidence it was inherently deceptive in a way that couldn’t be corrected by disclosure or consumer sophistication.

Especially as we consider expanding GI protection, it would be a serious mistake to think that our little corner of the law will continue to get a free pass when the Supreme Court has been increasing its scrutiny of other commercial speech regulations consistently over the past decade. Imagine the commercial speech standard – suppression allowed only when the speech is inherently deceptive – applied to private party trademark suits. That would be a big enough change, and it would only involve applying general commercial speech doctrine as it’s evolved under Central Hudson. Full constitutional protection for commercial speech would mark an even bigger change.

Many insightful comments, including a defense of laissez-faire (which I don’t think can be coherent because once you allow common-law protection against fraud into your laissez-faire state we are merely debating what counts as fraud – consumer protection is at least in one popular form about promoting autonomy).

Eric Goldman suggested important differences between preference-shaping by private actors and government. My reaction: Such differences might well justify certain procedural requirements on regulation, but – because consumers vary in the use they make of information -- government cannot get out of the business of preference-shaping; both banning the “non-GMO” label and requiring the “GMO” label are preference-shaping, and government might legitimately do either, depending on the evidence, because both could be justified as anti-fraud measures as to some significant number of consumers.

Goldman also pointed out the costs of labeling and mandates, since meaning evolves over time. The paper takes this up – I agree, but there are also costs of uncertainty and of confusion during the transition time; certain market participants might find it valuable to redefine “dolphin-free tuna” as tuna with no dolphin parts in the cans, but that would be costly to non-dolphin-killing tuna producers and consumers who want to buy their products. Finally, Goldman suggested that the internet is a good way to punish misbehaving sellers – consumers can communicate with each other. This is true, but information overload limits our ability to use all the information out there – and especially if the government cut back to common-law fraud, it would be even harder for us to figure out what we need to figure out.

David Olson, Boston College Law School
Towards a First Amendment Grounding for Copyright Misuse
Abstract | Paper

The paper grows out of Carol Schloss v. Estate of James Joyce: what can be done to make the world freer for this sort of scholarship? Fair use is too risky: indeterminate, expensive, leads courts to split the baby – though Schloss got attorneys’ fees, it’s too rare to rely on. Copyright misuse could be the proper sword against overreaching by copyright owners. But in order to induce courts to find misuse, which they won’t if the consequences for the copyright owner are too severe, he wouldn’t completely invalidate the copyright of an overreaching copyright owner – he’s considering various remedies, such as compulsory licensing until the misuse is cured, free licensing to the injured party, etc.

Born freecycle

Freecycle Network, Inc. v. Oey, --- F.3d ----, 2007 WL 2781902 (9th Cir.)

Oey was preliminarily enjoined “from making any comments that could be construed as to disparage upon [The Freecycle Network]’s possible trademark and logo” and ordered to “remove all postings from the [I]nternet and any other public forums that he has previously made that disparage [The Freecycle Network]’s possible trademark and logo.” The Ninth Circuit vacated this injunction.

Plaintiff TFN is an Arizona nonprofit “dedicated to encouraging and coordinating the reusing, recycling, and gifting of goods.” It coordinates over 3,700 Freecycle groups worldwide. (Disclosure: I was a member of the Arlington group for a while and admire the organization.) People use Freecycle to offer items they no longer want, avoiding or at least delaying the trip to the landfill.

TFN claimed to have consistently used the marks FREECYCLE and THE FREECYCLE NETWORK and “The Freecycle Network” logo since May 2003 to refer to itself. But it also admitted that it initially used the term “freecycle,” freecycling, freecycler, etc. to refer more generally to the act of recycling goods for free via the Internet. In 2004, based on Oey’s advice – he was then a member – TFN decided to police its use of the term and to pursue trademark registration for it. Shortly after filing its registration application, TFN implemented a strict usage policy, drafted by Oey. In early 2006, the mark was published for opposition, and an opposition was filed; the mark remains unregistered, and the opposition was stayed pending the outcome of a Northern District of California challenge (by a group founded by Oey) seeking a declaration that “freecycle” is generic.

Obviously, Oey experienced a change of heart about TFN and the putative Freecycle mark. By mid-2005, Oey was making statements in email and on the internet that “freecycle” was generic and incapable of trademark status, encouraging others to use the term in its generic sense and to oppose TFN’s pending registration. He did not oppose trademark status for the full name “The Freecycle Network.” He argued that established genericism would help TFN in its marketing mission, spreading the “freecycle” concept.

In spring 2006, TFN sued Oey for contributory trademark infringement and trademark disparagement under the Lanham Act, injurious falsehood, defamation, and intentional interference with a business relationship under Arizona law. The district court granted a preliminary injunction based on the Lanham Act claims, and the Ninth Circuit stayed the injunction pending appeal.

The district court characterized the trademark issue as one of infringement. But it didn’t analyze (or even mention) the factors in the likelihood of confusion test. Instead, the district court found (1) TFN has a mark, (2) Oey at one time believed (1) and sought to protect the mark, and (3) he later publicly encouraged the disparagement of the mark. Even if all three things are true, they don’t demonstrate likely success on the merits. (The court of appeals also noted that the actions Oey encouraged others to take aren’t actionable under the Lanham Act either, making success on a contributory infringement claim unlikely. Nothing in the record suggests intentional inducement of infringement, or that third parties actually used the mark to infringe. Encouraging the use of a claimed mark in its generic sense is not actionable.)

Specifically, the court held that Oey’s actions were likely not “use in commerce” – here not used as a jurisdictional term about Congress’s power under the Commerce Clause, but deployed as a limiting construction precluding Lanham Act coverage when the defendant didn’t use the mark “to promote any competing service or reap any commercial benefit whatsoever.” Oey just expressed his opinion about TFN’s trademark rights and encouraged like-minded individuals to do the same.

Even if Oey’s statements were “use in commerce,” they were not likely to cause confusion about the connection between Oey’s services (or any others’ services) with TFN. His statements neither mentioned any competing service or product, nor claimed affiliation with TFN. (If other groups, relying on Oey’s analysis, called themselves “freecycle networks,” presumably that could cause confusion, but it does seem mistaken to hold Oey responsible for that possibility.)

Finally, his statements couldn’t be false advertising, because they weren’t made in “commercial advertising or promotion.” And then the court made a holding that may come up in more standard Lanham Act cases: Oey’s statements didn’t concern “the nature, characteristics, qualities, or geographic origin” of “another person's goods, services, or commercial activities.” Statements about the mark, the court held, are not statements about the services.

Though the case law is divided, some courts have suggested that statements about a competitor’s trademark rights (or lack thereof) could be false advertising. Suppose a true competitor said “Our competition claims to have a trademark on Product X, but they don’t.” It may well be that no reasonable consumer would take this as a statement about the competition’s honesty or competence – though I’m not so sure – but the interpretation in this case cuts off potential liability under the Lanham Act as a definitional matter. The court, however, did not address the perhaps more common situation of statements accusing a competitor of trademark infringement, which might be more clearly within the category “commercial activities.”

Also, Oey didn’t disparage TFN’s goods or services; rather, many of his statements “appear aimed at ensuring the ongoing success of TFN and its services.” He said things like, “Let everyone know that TFN does not need to control freecycling for TFN to be successful”; “[Keeping the term ‘freecycle’ in the public domain] fits well with a ‘viral’ marketing approach to freecycle. People hear about it and want to know where it came from--which will lead back to [TFN] without strong trademark enforcement. It will also generate lots of goodwill”; and “My alternative also has consequences but I firmly believe it is a much better choice for [TFN] in the long run.” (TFN might consider itself damned with faint praise.)

TFN also alleged “trademark disparagement” under §43(a). But no such claim exists; TFN’s allegations of false statements, made with malice, about TFN’s mark, track a common law slander of title claim. The court found no textual basis for a Lanham Act claim from these elements, and a corresponding absence of precedent supporting them. Even if trademark disparagement were cognizable under the Lanham Act, TFN didn’t show likely success because Oey’s statements weren’t false. “At worst, Oey offered an erroneous legal opinion (by a layperson) that TFN lacked trademark rights in the term ‘freecycle.’” And statements of opinion aren’t generally actionable under the Lanham Act. There has been no formal determination yet that TFN has trademark rights in “freecycle.” Oey’s statement that TFN lacks such rights can’t be a false statement of fact until those rights are definitively established. And, the court added, Oey would in that case remain free to argue that the decision to grant TFN such rights was a mistake.

TFN’s basic complaint is that Oey shouldn’t be allowed to use or encourage the use of “freecycle” in its generic sense. But the court held that TFN’s mark, like all marks, is always at risk of becoming generic if the relevant public appropriates it. Genericide has both social costs and social benefits for communication. Trademark owners are free to undertake PR campaigns and police a mark’s use. But the Lanham Act doesn’t grant this kind of policing power. The court expressed no opinion on whether genericide was an available theory under other causes of action, and declined to address the First Amendment objections to TFN’s legal campaign, leaving those matters for the district court on remand.

Informal formalities

BNA reports that, at a Sept. 18 Pike & Fischer event, "Legal Risk Management in a Web 2.0 World," Matt Schruers, senior counsel for the Computer & Communications Industry Association, said something very interesting: the technological solutions being implemented by many sites to screen for content posters do not have authorization to post may be reinstating formalities sub rosa.

These technological measures compare submissions to a central database, for example of songs, but only a small fraction of copyright-protected performances are in the database. "We thought that abolishing formalities would protect the little guys," Schruers said. "Instead, we've seen the large content providers drift back towards a form of private-sector protection of content that may end up leaving the smaller players by the wayside."

Separately, Patrick Ross, the executive director of the Copyright Alliance, spoke at the conference. I found one remark particularly telling: "Whether the DRM is on a service sponsored by a rights holder, or is used by an upload service to ensure copyrighted works are treated differently than user-generated-content, there will always be a role for DRM" (emphasis added).

We tell our students that all works are born copyrighted now, that copyright is no longer a verb. (As the Copyright Alliance site puts it, "In fact, every time a child takes crayon to paper, he or she has created a copyrighted work ....") But the fact that even Mr. Ross, whose organization defends strong and ever-increasing copyright rights, thinks in terms of works that are really copyrighted versus those that aren't is evidence that an affirmative desire to claim rights is still important in our moral and practical evaluations of various copying practices.

Copyright minimalists like me are fond of formalities. We have talked a bit about lack of notice as unfair surprise; perhaps, following on Schruers's observations, we should also talk about the importance of public regulation rather than informal formalities created by private parties.

Is it safe?

The debate over social networking sites and child protection took a turn towards false advertising law, with NY's AG subpoenaing Facebook about protecting users from child predators. According to a letter the AG sent to Facebook: "To be clear, within the constraints of the law, Facebook has the right to operate any type of Web site it deems fit. However, it does not have the right to represent that its site is safe and that it promptly responds to complaints when such statements are not accurate." (AG's press release -- contains explicit content.)

Facebook's response was extremely conciliatory, which is not surprising given the cultural power of the child protection theme.

It took popular anxiety, and regulatory attention, about a year to get to Facebook. Could this be related to the class differences between MySpace and Facebook?

Copyright and media literacy

American University, Washington College of Law, The Cost of Copyright Confusion for Media Literacy (program sponsored by WCL’s Program on Information Justice and Intellectual Property, AU’s Center for Social Media, and the Media Education Lab at Temple University). Webcast here.

Renee Hobbs, Professor & founder, Temple Media Education Lab: When she first started teaching teachers, she used everything: books, magazine covers, commercials, movie clips, anything was an artifact she could use to discuss critical media thinking skills. Gradually, one question became more prominent. In the 1980s, only a few teachers would ask, but by 2000 it was almost their first question when they began media literacy studies: “Did you have to get permission to use that?” Or, “Can I get in trouble if I use those?” The climate is one of fear.

The study released today is based on interviews with 63 media literacy educators across the country, in high schools, universities, arts centers, elementary schools, libraries, and other places. They discussed how they use copyrighted materials in their work, how students use copyrighted materials in schoolwork, and how teachers use copyrighted works in teaching. Hobbs showed a beta version of a video outlining the findings. In brief: Teachers are afraid to share teaching materials; teachers are afraid to let students use the copyrighted works that mean so much to them in creating their own productions. But copyright law is more favorable than many think; Peter Jaszi says “Fair use is like a muscle. It needs to be exercised.”

Peter Jaszi, Washington College of Law: Teachers experience copyright as a burden on practice when it should be an engine for production and republican discourse. The challenge is to find our way back to the original understanding. The way back is substantially through the fair use doctrine. The interviews revealed an irony: as the fair use doctrine has grown in the courts in recent decades, teachers have grown more afraid to use it, as Hobbs described. The potential remains, aided by judicial sensitivity to the consensus of various practice and use communities on what uses are fair. So practice communities must reclaim fair use for themselves. Specifically, the media literacy education community should take charge of its own fair use doctrine, producing a consensus code of best practices. This would improve practices among teachers, discourage overreaching copyright claims, and help in any unlikely judicial test. This use of best practices isn’t just theoretical; documentary filmmakers have already used best practices to improve matters for themselves.

Pat Aufderheide, Professor & Director, Center for Social Media: Studies reveal that people have no idea how widespread their problem is – in the interviews, they thought they were just being bothered by a picky administrator, or that they were unsure but others knew. Their experiences were not idiosyncratic, but systemic. (Comment: Best practices as consciousness raising?)

Documentary filmmakers believed that their opinions wouldn’t make a difference – at the beginning of that project, filmmakers told Aufderheide to go talk to insurers and network broadcasters, because filmmakers didn’t have the power. But the filmmakers did have the power to change the risks (or risk perceptions) of those other groups by creating best practices. And right after the best practices report came out, insurers and broadcasters began to accept compliance with its recommendations instead of permissions.

Kenneth Crews, Indiana Law/IU School of Library & Information Science: His background is in fair use guidelines, and he wants to emphasize their troublesome aspects. The central clash is between the law of fair use and the guidelines as a surrogate or replacement of the actual law. Invariably, guidelines (photocopying, multimedia, etc.) are much more restrictive than fair use actually allows, and often much more complicated and difficult to apply than the law of fair use. We should take guidelines with a grain of salt, keeping an eye on who they’re from, fighting the climate of fear, and embracing uncertainty – which is another word for flexibility, one of fair use’s greatest virtues. Teachers and others should make judgment calls based on the four statutory factors.

Implications for Media Literacy Teachers

Shay Taylor, Montgomery Blair High School: Teaches media production and analysis to 10^th graders, along with electronic newsgathering and production, and the school television program (like a super-school paper with engineers, PR people, internet division, etc.). When she began teaching, she had all sorts of great media example. Then she heard from a teacher that someone else had heard that someone had said that you could get in trouble for using media in the classroom. What if a student’s parents are lawyers and hear about what they’re doing in class? She was ready to give up and teach math, but decided that the cost of copyright confusion was much greater than dollars and cents. Even in a county where almost every high school has a media program, media teachers don’t get together and talk about these issues.

Karen Zill, Alliance for a Media Literate America: The problem is not just teaching media literacy but using media to teach any subject – there’s a reluctance among teachers to use up-to-date materials because of copyright fears. They need a comfort zone, and tools for complying with copyright law as well as for interpreting fair use.

Dale Allender, National Council of Teachers of English: There is a pressing need for teacher professional development. Creating a consensus statement on fair use is itself a professionalizing experience, and then applying it in an instructional context will further that development goal. Copyright concerns aren’t new; they tie in to efforts to deal with plagiarism, use of books challenged for content, and interactions with libraries. But our digital age makes copyright more salient – there are increased opportunities to create, to copy, and to disseminate works by teachers and students (the earlier film showed that student productions could easily be uploaded to YouTube, for example). Teachers are now working on best practices in 21^st-century literacy, and use of media technology will be part of that. And that means more attention to fair use.

Question: In a society where people are afraid to let their kids play dodgeball, this seems like a real minefield. Also, what implications does this have for libraries maintaining a set of materials for any teacher to use?

Hobbs: Communities, school districts, and even individual schools have begun to create appropriate use policies, in order to get a handle on the explosion of uses and the environment of fear, uncertainty and doubt. But many of these policies are much more restrictive than the law – e.g., a college professor received an email from provost saying that no professor could use a DVD in class unless it had been purchased by the institution. That has no particular relationship to the law. Teachers have to learn to live with those policies or learn to ignore them, and it creates an extra layer of uncertainty.

Crews: Providing resources on copyright is definitely a role for libraries. Librarians often care more about information-age issues because they see them so often.

Q: Copyright holders are worried and mixed-up too. Couldn’t they be an ally? If schools teach fair use, that would also teach about stealing.

Hobbs: We’re beginning to explore how to engage with copyright holders, including educational publishers and mass media. There is a place of consensus to be found. Many publishers want educators to use their films (e.g., Chronicles of Narnia) for educational purposes. (Comment: given the religious background of the Chronicles, I’m not convinced this is a completely benign partnership. But that’s not so much a copyright issue.)

Jaszi: When copyright owner representatives are brought into these conversations in public or semipublic discussions, they tend to take extremely hard lines. Though in private they are more conciliatory, they feel pressure to be extreme in public. So the better idea is for the user community to take the lead and relieve copyright owner representatives of the very problematic burden of participating in a consensus-building exercise with a use community. If the practice community comes to a reasoned and reasonable position on fair use, it will then be possible for copyright owners to endorse either explicitly or implicitly. Inclusion at the early stages of consensus-building is harmful, though.

Aufderheide: It’s clear that copyright representatives will let hell freeze over (or the ice caps melt) before saying publicly that fair use exists. But they can live with other people saying it. Copyright owners want to use the filmmakers’ guidelines too, even though their participation would have killed the project before it got off the table; now that exists, they like the ability to say “this goes beyond the guidelines” when some entity threatens to use without permission and claim fair use unless it gets a lower license price. (This story, by the way, seems to strengthen Crews’s point.)

Q: What about the Hollywood guilds, which take a harder line than even copyright owners and would prefer to ban any unauthorized use of a television show in class?

Crews: At least with respect to the creative content, writers’ and others’ contributions are bundled into the copyright rights. The more complicated the creative structures get, the harder it is to get real permission, and thus the more important fair use becomes.

Q from documentary filmmaker: If you buy a film for your home use, can you take it into the classroom and show it?

Crews: If there were a valid license to which I agreed saying home use only, then no. But what if the box says “home use only”? That is not a contract and you can show it in class.

Hobbs: But this is an example of pervasive confusion. (And, I would add, encouraged by copyright owners with their overreaching claims on DVDs.) Media literacy educators understand that messages are interpreted, and it’s by interpretation that we learn and understand fair use.

Q from earlier filmmaker’s partner: Half of our income comes from educational sales. We experimented with home video, but teachers stole our product – it clearly said on the box, “educational use prohibited.” Would showing the entire hour of our show be fair use?

Crews: The question is “can a teacher show the whole thing in the classroom?” and the answer is “yes,” but not because of fair use. There is a specific section of copyright law apart from fair use that clearly says lawfully made copies of the video may be performed in face-to-face instruction. There is no amount limit. If you really want to split the market, a label on the box is not enough. It has to be a real part of the contract. As an educator, Crews urges creators not to do that.

Q: But this limits sales to the general public. We sell to libraries, schools, and colleges. But if we sell it as a home video, that destroys our market. We can’t afford to sell it to the general public if teachers are going to steal it.

Aufderheide: This is an important area of real disagreement, and the filmmakers are not fair use haters. The two-tier pricing model for documentaries is falling apart, and creating real problems for filmmakers.

Q: The DMCA now allows media educators to use film clips from DVDs. Will this exception continue to be focused on film professors?

Jaszi: We will be back for that exception next time. He expects that other use communities will try to make the same demonstration of need. Many other teachers have pedagogical needs for clips.