Saturday, March 29, 2008

Fordham IP: Free speech and P2P issues

Free Speech and Copyright and Trademark Issues in the US and around the World

Moderator: Prof. Sonia Katyal, Fordham University School of Law

Speakers: Prof. Robert Burrell, University of Queensland, Brisbane

Exporting Controversy: Free Speech and Trade Agreements

It has recently been suggested that freedom of expression should be treated as a trade issue, in part so as to ensure that future trade agreements are more ‘balanced’. This paper will argue that calls for freedom of expression to be treated in this way are unlikely to be well-received in partner countries, even amongst those who would otherwise be sympathetic to the aim of reducing censorship.

Google has thrown its weight behind proposals to treat speech as a trade issue, and some human rights and trade lawyers have expressed support. We must be very clear about the terms and the costs of such a policy. What’s motivating these calls? Google has a financial incentive to avoid the disruption of business caused by censorship. But there’s more: a desire to make future trade agreements more balanced, the informational equivalent of higher labor and environmental standards.

Still, unlikely to be met with much enthusiasm in partner countries. Consider how Australia would have reacted in the Australia-US FTA. If this just means the US exporting the First Amendment, the impact would have been dramatic—the Australian constitution establishes freedom of political communication. (1) No scope for arguing that corporations get less protection than real persons. (2) Expressive behavior falls within the scope of protection. (3) Only communication with political content is protected.

The political costs associated with the present form of US trade agreements need to be measured; Australia got mad at the US attitude when the FTA was supposed to be a thank-you for Iraq. Adding free speech would make things worse.

Suppose you say, as people will, that we’re not trying to export the First Amendment. Then, how do you decide what is a free speech issue? We’d end up with some vague statement with little help to the real issues, for example the differing treatment of defamatory statements. We should negotiate about jurisdiction on the internet. Specifics are more useful than generalities.

Prof. Spyros Maniatis, Queen Mary, University of London

Mr Miss World and Haute Diggity Dog: Parody, Freedom of Speech, and Trade Mark Law

What are the tensions between trade mark rights and freedom of speech? A look at two cases from both sides of the Atlantic.

His cases are not yet canonical, so we can’t yet make predictions about convergence or divergence. The UK case involves an attempt to restrain publication; the US case involved a full record.

A TV channel used “Mr Miss World” as a title for a documentary on a beauty pageant for transsexuals (notably, the first result in my Google search, though the show itself has been renamed Mr Miss Pageant). The TM owner of Mr World & Miss World sought an injunction. The court began by looking for straightforward TM infringement: the marks are very similar and the services, entertainment, do cover TV programs. But real holding: the use is parasitic on the trademarks, and even without confusion there would be association. Thus it’s a free riding case, with a hint of tarnishment. At least a triable question. The judge then moved to a freedom of speech argument.

In South Africa, the constitutional court held that a parodic use on T-shirts was not an infringement. One of the opinions was traditional and held no infringement under usual standards. Another opinion reasoned that free speech was at issue.

The Mr Miss World court found that free speech was a right. The brand was pitted against its own weight and popularity, altered but recognizable. But, the judge reasoned, this was a question of fact—whether the point made by the alleged infringer was disconnected from the function of a TM as an indicator of origin. The European Court of Human Rights has identified 3 kinds of expression: political, artistic, and commercial, with a hierarchy favoring political expression.

The defendant argued that its use was a parody of the 70s values that produced Miss World. The judge accepted the basic argument, but the power of the descriptive use relies on the strength of the TM. TMs are property rights, and must be balanced with free speech rights.

Haute Diggity Dog, by contrast, accepted that parody is not necessarily dilution even when used as an indicator of source. A successful parody negated both dilution and infringement.

Prof. Rebecca Tushnet, Georgetown University School of Law

Commercial Speech and Intellectual Property Law

The U.S. federal judiciary has become increasingly conservative, and specifically, increasingly pro-business. While this was good news for copyright owners in Eldred, it may have some surprising effects on free speech doctrine. If commercial speech receives heightened constitutional protection, trademark owners may find expansive trademark claims harder to maintain; and a property-like conception of copyright may even bolster the case against removing works from the public domain, as in the URAA restoration case.

Top issues from my perspective: (1) American exceptionalism, which is even more evident in our free speech doctrine than in our IP doctrines; (2) the definition of truthful commercial speech subject to heightened constitutional protection;

False and misleading commercial speech can be banned outright.

Truthful commercial speech about lawful products or services, however, can only be regulated if the regulation directly advances a substantial government interest, and if there is a reasonable fit between the aim of the regulation and the ban on the speech.

(3) trademark dilution as particularly vulnerable to constitutional invalidation.

Other problems: presumptions and burdens of proof. In other areas, the Supreme Court has been skeptical about alleged harms including deception or abuse from advertising and has required proof – very different from current trademark law, which allows courts to find confusion, and especially initial interest confusion, without direct evidence


Prof. Pamela Samuelson, University of California, Berkeley

5 years ago most American IP people would have said that free speech wasn’t much of a limiting principle, because TM and copyright are property interests. That perception is eroding. Her study of trade secrets shows there’s plenty of room to invoke free speech, for example third parties who acquire information through no fault of their own, or even people who agreed to secrecy but disclosed when the disclosure serves a public interest. Samuelson foresees First Amendment defenses to patents on methods if infringement could occur through thinking.

There’s more effort to breathe First Amendment doctrine into all areas. E.g., fair use ought to be a right, if it’s a free speech guarantor; Eldred invited that conclusion. Likewise, the derivative works right might need to be cut back; people are arguing that unwarranted assertions of copyright ought to be treated as misuse, as in the Joyce case brought by the Stanford Fair Use project. Intellectual privacy interests also have a First Amendment dimension, as well as certain acts of circumvention. And that’s leaving aside the Golan and Martignon cases.

Prof. Susan Scafidi, Fordham

Combining copyright and trademark in a free speech analysis is difficult. The existence of dilution highlights this: there’s always tension between free speech and property in copyright, whereas both the plaintiff and defendant in a trademark case want a mark to serve as a signal, and thus both have speech interests. (Comment: I’d say this is often, not always true; e.g., when the defendant claims that a term is descriptive or generic, it wants to use language in a particular way and has a speech interest, but it doesn’t want the term to serve as a signal.)

Cultural norms: it is extremely difficult to take something as broad as free speech and write it into law; ties into the previous panel on rules v. standards. Mr. Miss World offers no critical commentary on beauty pageants; the association is one of attempting to force the audience to remember their own preconceptions of what a beauty pageant is—that’s didactic or instructive, but attenuated. Whether that fits in parody is a cultural issue.

We’re accustomed to creating post hoc narratives—visual symbols are particularly subject to multiple interpretations. If you make the judge laugh/tell a good story, you win a parody case. (Does this mean that Americans have a better/broader sense of humor than Europeans? I’m not sure, given the existence of Monty Python.)

Counsel’s intuition about parody is 1 is a work of art, 10 may be free speech, but 1000 is commercial and free riding. We have a difficulty conceptualizing parody as a culture, and the scope of the exception will have to be fleshed out over time. Seeing things like Haute Diggity Dog, defendants are reaching for parody as a defense. What is a pair of girls’ panties with a picture of Mickey Mouse and “PARODY DESIGN” written underneath the image?

Q: Parody/satire is a ridiculous distinction, economically and culturally.

Maniatis: Comparative advertising case on smell-alikes—one judge looked at what’s happening in the US. He thought that in many cases there is a “wink” at the audience—it is and isn’t the original.

The Role, Effectiveness and Issues in Infringement Actions against Individual P2P Downloaders; Recent Legislative Initiatives Aimed at Downloaders


Prof. Hugh C. Hansen, Fordham University School of Law

1. What is the effect in the U.S. of the “making available” right? Comparative approaches in Asia, interpreting the making available right, and also the intersection with secondary liability.


Michael Schlesinger, Greenberg Traurig LLP, Wash. D.C.

The making available right has been almost universally adopted, including 5 out of 5 in Asia. Japan: a P2P case involving shared folders on individual computers—whether a user who merely connects to a server makes the files “transmittable.” Japanese court created a “making transmittable” right. Liability where the defendant takes the necessary steps for infringement to take place.

Hong Kong: Criminal case that went to the Court of Final Appeal: D seeded a file on Bittorrent and claimed no criminal distribution; court found at least attempted distribution, which occurs when recipient can easily take the copy, like getting a drink out of a vending machine.

Korea: putting files in shared or downloaded folders was making available.

Aust’l: liability for authorizing infringement by providing deep links.

[Some discussion of the US rule, which I missed, but the tenor was that this is or ought to be the rule in the US.]

Hugh Hansen polled the audience; most of the participants thought that sharing files in a shared folder was distribution even without proof of any download.


Ray Beckerman, Vandenberg & Feliu LLP

Hotaling is distinguishable—you don’t reward a library for failing to keep circulation records. Early filesharing cases involved pro se defendants or bad attorneys. The Capitol Records case involved a jury instruction, and the defendant’s lawyer—who had petitioned to withdraw from the case for nonpayment—declined to fight it. There are 6 fully litigated cases that declined to decide it. Recent decision from Connecticut specifically held there’s no making available right—on a default judgment, where the judge familiarized herself with the law. One fully briefed case has been pending for two years. Despite the raising of hands solicited by Hansen, this isn’t Congress. US law says distribution requires dissemination by sale or other transfer of ownership, or by license, lease, or lending.

Prof. Brian Fitzgerald, Queensland University of Technology Law School, Brisbane

In Australia, creating a hyperlink is not itself a communication, because it’s the person who puts the content at the link who creates the communication. But distribution liability can be broader. We haven’t had as many cases, but communication is regarded as a pretty broad right. Putting software up on websites would certainly be “making available,” without more.

Prof. Jane Ginsburg, Columbia Law School

When the WIPO copyright treaty put in making available as part of the right of communication to the public, the theory was that members could achieve that right through either the performance or distribution rights, and the US thought it qualified on both counts. But maybe our umbrella has been reduced to a naked shaft. A download that is not also a stream is not a public performance, according to the district court in ASCAP rate court. So that route to making available has come into question, though the rate court isn’t the last word. (Comment: no, it’s only the word that agrees with the Copyright Office and the rest of the authority to date.)

So we’re left with distribution, which has a specific definition. There’s not exactly a transfer of ownership of a copy, because it’s not the same copy. You’re creating ownership of a copy in the hard drive of the recipient. But that’s not all there is in the Copyright Act: arguments from the definition of publication and the definition of a digital phonorecord delivery. She thinks there are reasons to find §114 and §115 offer a different definition distribution. Transfer of physical copies is not the only route to distribution in the Copyright Act. Other amendments to the Act arguably effectively enlarge the distribution right despite the definition in §101. The courts have been fairly unrigorous about this. The commonsense position is that if the recipient ends up with copies because of the uploader, there’s a distribution; but we still have to ask whether the words of the Copyright Act get you to that commonsense result or whether we need to fix our tattered umbrella.

Prof. Mary Wong, Franklin Pierce Law Center

We’re not all on the same page when we talk about making available. There are serious differences in academic and national perspectives.

Schlesinger: Tasini and Grokster said that transmitting a file on the internet was distribution. (My reaction: an issue not raised or argued by anyone; the Court was focusing on entirely separate legal issues.) Perfect 10 seems to endorse “deemed distribution” under Hotaling, at least when the person accused of distributing actually has a copy. Mere offering is likely to constitute distribution.

Hansen asked Beckerman how one could sue a P2P user under his interpretation. His answer: standard copyright principles, like unauthorized reproduction. The EFF has taken the position that an ephemeral transmission can’t violate the distribution right even if it resulted in a physical copy, but the DoJ disagreed.

2. Should new limits be placed upon statutory damages? Did the supporters of P2P software and the individual defendants miscalculate the reaction of juries? A review of case law, e. g., Capitol Records v. Thomas, (D. Minn. 2007).


Kenneth Doroshow, Senior Vice President of Litigation and Legal Affairs, Recording Industry of America, Wash. D.C.

Stipulated already that he and Beckerman will disagree on everything. Capitol Records was an award of $9000 per work willfully infringed, a huge award total. P2P supporters grossly miscalculated the public reaction. No fair-minded person who watched the trial, though, was at all surprised. Why the disconnect? There is lots of misinformation on the internet about the facts of the cases, the strength of the cases, and the law. A fair-minded jury is likely to view the cases favorably to the RIAA. There was evidence of 24 actual downloads, so the making available issue was not relevant.

At this point I had to leave, but I have no doubt that the ensuing discussion was vigorous.

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