IPSC part 1

IPSC 2010

Preliminary notes: (1) Usual caveats: I’m missing a lot of interesting stuff, including the things running opposite my own panel; I am not a patent scholar; these are my incomplete notes and my own perspective. (2) Unusual caveat: Running on 3 ½ hours of sleep due to flight delays; apologies for any extra incoherence.

Opening Plenary Session

William McGeveran, University of Minnesota Law School

Impersonation

Privacy and TM: both ways of managing reputation. Complaint over fake Tony LaRussa profile on Twitter, shotgun complaint: TM infringement, dilution, cybersquatting, misappropriation of name/likeness etc. On the internet, no one knows that you’re not Lassie.

Risks: Fraud (I’m in England and have been pickpocketed; send money); reputation; confusion; emotional distress; invasion of control to which subject is entitled as a moral matter over indicia of identity. Remedies map onto this: fraud, identity theft, defamation, TM infringement, dilution by blurring or tarnishment, cybersquatting, publicity rights, appropriation, intentional infliction of emotional distress. In general the remedies are tailored mostly towards one of the harms in rhetoric and design. But impersonation tends to bring those harms in a lump. If you’re concerned about the impersonated, you use TM dilution, appropriation, publicity. If you’re concerned about the audience, use fraud, identity theft, TM infringement.

Propertization and special treatment of celebrity. LaRussa’s complaint emphasized his tort-oriented harms (distress, reputation) but his IP remedies. Advantages of IP claims where the harms are not classic IP harms: Don’t have to do as much work because you get presumptions of harm, even after eBay. Also: you get around §230, which is useful when you’re suing Twitter since the John Does don’t have any money. Result: §230 encourages propertization claims. Defamation has actual malice requirements.

Parody: impersonation is the lifeblood of parody. It is probably the only legitimate reason for impersonation.

Private remedies for impersonation: ToS requirements; verified accounts. Twitter: impersonation forbidden, but concrete best practices for parody and fan/tribute sites, making clear in the name and profile. Other sites have elaborate policies.

Peter Kaplan: editor of New York Observer, well-known in NY media circles. He’s a character, throwback to inkstained wretches of the past. Two different parody twitter accounts: CrankyKaplan and wise_kaplan, along with real_kaplan, who corrects the mistakes of the others. Twitter allows verified accounts, but only for celebrities, businesses, and government entities: an architectural solution to impersonation. Compare: eBay’s elaborate dispute resolution processes, with power to intervene and suspend or terminate accounts for among other things impersonation.

Madhavi Sunder, University of California, Davis

IP - The Case for Participatory Culture

The threat of participatory culture: rise of citizen bloggers/journalists is said to threaten traditional cultural sources of authority/incentives for professional creatives. We’ve been here before. Today’s participatory culture is similar to Habermas’s account of the enlightened public sphere of the 18^th century. Elaborates connections between participatory culture and deliberative democracy; the once thriving participatory culture of Enlightenment Europe evolved into a commodity culture—a narrative arc of a rise, a fall, and a comeback.

In Enlightenment Europe individuals rejected monarchy; “think for oneself” extended beyond politics to art, philosophy, and literary meaning: public opinion was formed in what Habermas calls the public sphere. Habermas’s ideal: virtually as many express opinions as receive them; people can quickly and effectively answer back; there’s a ready outlet to express opinions, even against the prevailing system of authority; the authority does not mostly coerce the public and the public is autonomous. But the system transformed into a culture of consumption. Access to cultural goods became the end and not the means of public participation. Consumption stimulated relaxation rather than the critical faculties; heightened separation between cultural elites producing culture and the general public. Public sphere became privatized.

She doesn’t think that commodification is inherently profane and dehumanizing. She critiques the 20^th century mentality that treats access to knowledge as the end and not the means: production of culture for the people but not by the people: production of books valorized over production of book clubs. Questions like who produces the goods, and what are the terms under which we can engage with the products were ignored.

Revisiting the Enlightenment suggests serious normative benefits to participatory culture. (1) Engenders democratic citizenship. Innovation: the essence is critical thinking, not passive reception—seeking novel answers to problems old and new. Young people’s engagement with Harry Potter shows how youth learn the skills of democracy by working through the culture around them. Central characters defy authority and defend the weak. Rise of participatory groups allows readers to go further than receiving those values and act them out: the HP Alliance is dedicated to upholding kindness, the courage to question, and justice. Enhances sheer amount of info available to citizens. Demystifies knowledge and its production—wikipedia is the result of human agency exercised here and now by ordinary citizens. Fosters a healthy skepticism of truth claims and helps filter fact from fiction (not so sure about that latter). Participation empowers you whether you participate or not. You know how easy it is to contribute.

(2) Promotes mutual understanding/recognition of the other.

(3) Promoting global participation in culture/development: revenues may flow in global markets to new producers. Distributive impacts.

Much more at stake than the optimal production of goods. A tool and not a right. Expand goals from incentives/efficiency to promoting democracy, development, mutual understanding—IP as a tool for promoting development.

Andrew Keen’s criticism of cult of amateur; promotion of mimesis; promotion of narcissism and atomism. (Don’t at least criticisms 2 and 3 conflict? Or at least you have to work at putting them together.)

Adam Mosoff, George Mason University Law School

Rethinking the Validity of Samuel Morse’s Telegraph Patent: A Foundational Patent Case in Historical Context

Claims didn’t exist until the 1830s, and peripheral claims were later. Patents were the principles/essence of the invention. No distinction yet between literal infringement and the doctrine of equivalents, which comes from the absence of peripheral claiming. If the patent defines the core essence, then that’s what courts look at. Antebellum cases read like equivalents cases. Claim 8 is the one quoted in opinions, “the essence of my invention”—his patent was the principle of electromagnetic telegraph, not just the particular machine described. The essence was the use of electricity to create a magnet to physically move another mechanism/lever in order to print intelligible characters at a distance—does not cover all electrical communications, as modern commentators say. Email doesn’t use electric magnets to move machine components.

Patent scholars check their realism at the door when they think about judicial ideology in historical cases: Taney wrote a decision about Morse’s patents; need to think about that the same way we think about “what does it mean if we predict that Stevens will write in Bilski?” Taney consistency evidences in his decisions that he views patents as statutory monopoly grants. Taney thus misconstrued what Morse was claiming in his patent. Patents were being secured as property rights in accord with other civil rights at the time; this explains expansive reissues/extensions. Historical myth of Morse case prevails through a happy accident for Taney: his view of the claim ultimately fits with a later, modern patent doctrine on the nature and function of peripheral claims.

First Breakout Session

Copyright Track Room 250

Fair Use & Exhaustion

Barton Beebe, NYU Law School & Matthew Sag, DePaul University College of Law

Objective Factors in Fair Use Litigation

We have normative and descriptive intuitions about fair use; mostly anecdotal, except for Beebe’s previous work. We’re looking at objective factors: a set of testable implications. So, for “fair use favors certain users; it’s a form of charitable subsidy” we can test “fair use favors the underdog.” Market effect: testable H is “fair use is more likely when P and D are in different industries.”

We coded everything we could think of that we could ascertain: Parties: names, natural person, gender, type of legal entity, repeat player, industry, annual revenue, number of employees. Attorneys also coded, along with a bunch of stuff.

Preliminary analysis, reflecting a bunch of gaps in the data. Results may change. Does fair use favor the underdog? No empirical evidence of that. We found an opposite result for some measures. Natural person = fair use less likely. Anything v. a Fortune 500 company = fair use less likely.

Attorneys: If you come to court with less experienced lawyers or a small firm against more experienced or large firm, you are less likely to prevail in your fair use defense. May overwhelm any underdog effect.

Transformative use: Medium shift is not significant. Creativity shift is significant at .10 level, but negative in sign: creativity shift makes fair use less likely. The creative nature of the work is not a significant predictor of fair use. Defendants are slightly more creative than plaintiffs. (Define creativity here? Seems to be creative/informational.)

Effect of being in the same industry: Fair use wins for defendant are 58% when in the same industry, 50% when not. Not statistically significant. Broadcasters as defendants have extraordinarily high win rate compared to others; clear industry differentiation as results.

Dotan Oliar: Litigation to conclusion comes from different estimates of likely results—can this explain the results, when underdogs with bad lawyers may have unreasonable expectations about what the law is? So is this a representative sample?

Sag: Everything here can be driven by selection effects. People who end up in court are crazy or different than the average litigant in some important characteristic (Google, bet the company). The stakes are not symmetric. The plaintiff can’t negotiate with the defendant to stop infringing on behalf of all potential defendants. You do see litigation where the Priest-Klein model would not predict it. But there are plausibly selection effects. Clearest example: factor two; we know from the case law that it rarely does any work, but that may well be because a lot of copying of informational works is not infringing and so when you get to court it’s because you’ve copied a lot.

C. Scott Hemphill: Can you code complaints?

Sag (w/interjection from Mark Lemley): You could, with variable reliability.

Brian Holland, Texas Wesleyan School of Law

Social Semiotics in the Fair Use Analysis

Prevailing concepts of transformativeness focus on whether defendant engaged in authorial process, purpose, or activity (Laura Heymann & Mary Wong have written on this). This conflates incentive and accommodation. We should reframe that inquiry as not about incentive focused on authorship/originality; instead, a doctrine of accommodation focusing on new expression, new meaning, new messages. Focus on the resulting work not as evidence of authorship (incentive) but as a potential source of social value (expression). Expanding the body of new expression without cannibalizing expression. Not just new forms but meanings and messages. (I think the example I used in Copy This Essay of Martin Luther King Jr.’s preaching might be useful here—King copied, but he’s the one we know because of context.)

Misconception: meaning resides in mind of author, transmitted to audiences. But meanings aren’t controlled, not transmitted, not even consistent among audiences. Meanings are negotiated not between author and audiences but between work and audiences and audience members themselves. Audiences = Individuals and interpretive communities. Audience engagement creates the social value copyright is intended to promote: new meanings. Heymann: facilitating dissemination of multiple meanings can achieve copyright’s goals same as facilitating dissemination of multiple works.

Social semiotics: a theory of production and interpretation of meaning. Semiotic resources have meaning potential, which is actualized in concrete social contexts. Meaning is produced by audiences through culturally shared codes. Ultimately, readers, not authors, are the determinants of the meanings of texts and the relations between them.

If we look at transformativeness, authorial process, purpose and activity still matters. But there are cases even where this falls short. Social value of new expression may still be present. Divergent and unexpected social responses to the work, cultivating a multitude of different meanings in different audiences. This is the breathing space in which interpretive engagement takes place. (Consider: Tina Fey repeating Sarah Palin’s words verbatim. Also possibly the clip of Palin engaging with that Alaska teacher?)

Works don’t have unlimited potential to mean anything; social convention is a limit. Whose social realities are privileged or suppressed? Fair use should facilitate the struggle. Example: Fairey v. AP. The work at issue employs semiotic resources: constructivism and Chinese propaganda, Bauhaus, the De Stijl school, even the WPA. These have certain social meanings. He also studied past campaign posters. There is nothing different in pose than anything else: showed Willkie, Barry Goldwater, McGovern, and other posters with all the elements included in this work, but that didn’t prompt the same response. Fairey himself draws on Warhol, commie chic: Fairey uses these resources to be radical, ironic, idealistic. Other people took it differently: a real metaphor for alternative forms of government—socialism and communism as real threats to capitalist economies. The picture enters an interpretive community that views this as a real threat: Obama as false god, fake christian, false messiah. Another: elitist, pompous, snobbish, arrogant (uppity). The poster had the effect of othering certain audiences who decoded the text this way, who responded by othering Obama. He’s collected 400 different images of responses to the poster.

Molly van Houweling: Authors as defendants, Fogerty v. Fantasy. Do authors fare better than others? Her intuition is that authors will do better as defendants, but should that be the case? If the author is just sending the same message, maybe it’s not as good.

Holland: he thinks the author is less interesting, but the semiotic approach doesn’t displace author’s purpose and intent; authors who have no audience engagement still count. His idea is another way of showing fair use, not displacing the author.

Q: does it matter that he lied about source of the photo?

Holland: it would be irrelevant to transformativeness in his view.

Trademarks + Track

Reputation, Publicity, and Trademark

Laura Heymann, William & Mary

The Law of Reputation

Matthew Effect: the rich get richer in terms of reputation; there’s so much scholarship there’s no way to read it all, so you pick by reputation, which enhances their reputation. If we have a bad meal at a restaurant, we wouldn’t say the restaurant has a bad reputation; but if we’ve heard from other folks, we might think our experience informs creation/construction of that reputation: experience must be combined with collective reactions to be reputation. Not all forms of legal control of reputation acknowledge this collective construction. Defamation does: communication to other parties; community reaction in defining what’s defamatory.

TM law is supposed to look at consumer reactions, though it might not. False endorsement: that might seem to directly implicate reputation/reactions of community, courts don’t actually look very far for that: Rosa Parks case; 6^th Circuit credited consumer affidavits saying they believed the song was about Parks or was connected to an album she authorized, none of which went to the question of affecting her reputation. Dilution by tarnishment is supposed to be about the reputation of the mark, but in a lot of cases the consumers don’t judge the famous brand differently as a result—they might have different emotional reactions, but that’s not a reputational/judgment based harm—look at the Victoria’s Secret case; the army colonel who noticed the store was offended by the defendant, not by the plaintiff. The allegedly dilutive use didn’t change his mind.

Copyright: musicians object to campaign uses—say that they don’t want to be associated with campaigns. Can use copyright to vindicate reputational interests, and at least one case involved arguments for high statutory damages because of the reputational effect of infringement. VARA deals on its face with reputation.

Other causes of action: false light, right of publicity, etc. Fractured approach to the reputational interest, but doesn’t tell us why we should care about reputation. Some have tried from perspective of reputation owner: Robert Post suggests justifications—(1) reputation as property, created due to our actions and efforts; (2) reputation as a dignitary harm, entitled to good name as condition of being human; (3) honor, accorded as a result of the assigned social role, like respecting the office of the President; law has interest in preserving this social ordering/hierarchy.

None of these, proceeding from the owner’s perspective, ask how reputation is constructed. Should incorporate the audience perspective.

Audience has interests, aligned sometimes with reputation owner and sometimes not: reducing search costs; guarantor/predictor of future action; signaling (e.g., where you went to school; franchises use reputation of franchisor to avoid startup costs). Community has interest in ensuring that creation of reputation is built on solid foundation and that use of reputation information is fruitful.

Helps explain some anomalies—audience focus provides further support for the exclusion of truthful statements from defamation doctrine. Suggestion: focus on whether the community’s judgment is affected—analogous to the materiality argument Lemley & McKenna (and I) are making in TM.

McKenna: Courts are differentially willing to presume harm to reputation: almost all the time in TM; not so in defamation—courts tolerate a lot more. Reputation is too broad a term. Not sufficiently precise to capture reputation for what—as a source of goods or services is not the same thing as reputation full stop. Specify what kind, telling you what’s at stake and what remedies might be appropriate.

Jennifer Rothman: You can affect a consumer purchasing decision without affecting reputation. (This comment made me think about comparative advertising—is there any role for relative reputation?) Also circularity: consumer perception will be driven by what courts require in terms of permission. If consumers know permission isn’t required, then there will be a smaller reputation effect. (I think this is important and true, but also skips over a lot of the questions about what consumers think the law is and how they come to think that—it’s not Platonically circular, though there may be a long and meandering feedback cycle.)

Sandy Rierson,Thomas Jefferson School of Law

The Moral Right of Dilution

Traditional explanation for dilution (whittling away) just doesn’t work. TM holders can’t prove damages in dilution cases because there aren’t any. So what is dilution for? Big corporations get protection—they are influential. But also: Most people would reject a Harry Potter Dry Cleaners even if they’ve never heard of dilution. (How do we know this is true? Also, that doesn’t necessarily translate into a legal right: in a speech-protective culture, there are plenty of people who think that something is wrong but that the actor has the right to do it and that the only appropriate response is to say, “I think that’s wrong.” Also, is this judgment of wrongness true everywhere? Consider Chinese practices of adopting foreign marks.) There is an anti free riding impulse into which dilution taps, not so much about the rights of the TM holder but our desire to punish pirates and cheats. Free riding doesn’t work so well on tarnishment, though.

Putting dilution on the couch—why is it part of the IP landscape? Brings her back to a moral right. Moral rights are based on the personal right of the creator: author gets to retain control over the work/mark even where the author may not own the work any more. Big question: how did this happen, since we hate moral rights in the US?

We’re not really admitting that it’s a moral right. The statute and the courts shove it into the traditional utilitarian model for TM law. Less pushback on impact on public domain in TM as compared to copyright. Extending TM does raise First Amendment issues, but we live in the commercial world, and free speech interests aren’t given as much weight. (Weirdly, of course, corporate speech protections are increasing.) Public choice dimension: artists arguing for moral rights don’t have the same firepower.

Implications: could say we have no business giving moral rights to TM holders. (As with the Prop. 8 ruling, moral disapproval is an inadequate basis for public policy.) Corporations have no souls to protect. If we’re stuck with dilution as a practical matter, one implication is for remedies. Focus more on disclaimers, like a right of attribution/disavowal.

Q: might use this to explain strange empirical result: 100s of unauthorized uses of famous TMs, virtually always as trade name or service mark: not for products. Consensus about what is a moral/immoral use. Rolls Royce Realty in Madison, WI, but not Rolls Royce candy.

Q: compare copyright cases that are pseudo dilution cases, especially sampling cases.