WIPIP at BU session 2

Stacey Dogan and Wendy Gordon, Functionality

Dogan: Project: IP protection for product design more generally; functionality is a key concept here, and on the copyright side separability. Tentative conclusion: both doctrines moving in a direction stingy from designers’ perspectives, and appropriately so. End of project will be that burden ought to be on those seeking to fill the gap that there is a need for design protection, but neither area of law (copyright or TM) is appropriate for protecting design that blends form and function.

Structuring assumption: need of patent system to distinguish protectable from unprotectable reigns supreme in conflict with TM and copyright. Traffix did not end the debate over what the standard was with respect to competing designs. You end up backing into a competitive necessity test: is this type of spring mechanism essential to road signs? Federal Circuit has left open the relevance of the need to copy in order to sell a competing product.

We fear error costs. If we focus on competitive necessity, there will be false positives and false negatives. Costs of false positives will chill entry by competitors. Costs of false negatives, however, are much less weighty for product configuration, as Wal-Mart and even Dastar suggest—to what extent do purchasing decisions really turn on source indicating features? Not much, especially when labeling is available. Combination of risk of error costs and disparity in costs between false positives and negatives is significant reason for Court’s strict approach in Traffix.

Gordon: 102(b) is a way of keeping patent sovereign: does not have a competitive necessity test, it’s a straight ban. Likewise merger prevents monopolizing ideas, though there competitive necessity may play a role. Separability: also does not ask about competitive necessity. Stay away from the cliff; don’t ask about alternatives unless there is actual separability.

Two tests: process oriented, Pivot Point and Brandir, asking whether utilitarian concerns influenced the design sufficiently to prevent copyrightability. Traffix/fine grained approach looks at whether the object, if utility were stripped away, would still be art, and vice versa—see most clearly in Carol Barnhart. If you stripped away the art, would the object still be as sturdy/useful/inexpensive and so on? Mannequin: the artistic part is the width of the shoulder and configuration of the body—inextricable with the function (as in Traffix, it’s the reason the product works). Statute seems to put art over function—whether art is left when function is subtracted. Alternate question would be whether function is left when art is subtracted, and that would be a better fit to the policies we are trying to further, but it’s not clear how to get that from the language.

Language about art existing on its own in the statute arguably pertains to the basic originality requirement: separability isn’t enough; you need originality. Second question: separable from what? Statute may imply we’ve already taken away the functional aspect before we start analyzing. Mazer v. Stein--take away the lamp and you still have the dancer. Esquire v. Ringer--not so much. This looks like it favors the process approaches—aim at rewarding creative people who don’t have too much of the engineer in them.

Proposal: Read the statute to say that art and utility need to be able to exist on their own. Utility is equal to art. Remember purpose of deference to patent: deference to utility.

Laura Heymann: Importance of markets to each of these parts? How do you define the market each of these things aims at? Has an impact on each question—is the market spring-mounted road signs or road signs? Is the market statues or lamps?

Dogan: if you did accept competitive necessity, market definition is key, but antitrust shows us that it’s nearly impossible, so that’s another reason to shy away from that inquiry—we don’t want to risk defining the market too broadly. De jure/de facto functionality: cases are really talking about functionality of object v. functionality of feature, and we want to draw out that distinction.

Gordon: we’re trying to avoid that question—not whether there are other mannequins that can do the job but whether this mannequin will do the job if you strip away the shoulders. People doing process analysis have to engage in market definition.

Q: Can we succeed by focusing on whether there is a way to strip stuff away from the object? Flatten out the spoon, and so on. (But you could strip stuff away from the lamp in Esquire and end up with a lamp.)

Gordon: “Stripping” is a hard call because, for example, a knit sweater may be impossible to strip off the pattern, but it can easily be done imaginatively, in which case you’d have a design you could frame and a colorless sweater you could still wear.

Q: so what’s the result in Brandir?

Gordon: nonprotectable under all approaches.

Dogan: other regimes do grant sui generis design protection. This project suggests that from an institutional competence perspective, neither TM nor copyright are appropriate for responding to a “design gap.”

My question: Query whether separability can ever really be made to ignore competitive necessity. Seems to me the Bonazoli case went off the rails by resting on separability rather than merger, because the key issue was whether the appropriate market was one for measuring spoons or for measuring spoons with heart-shaped bowls and fletched arrows as shafts (notably, the spoons would work a lot better as measuring spoons if you stripped away the fletching). Whereas competitive necessity can do some work in harmonizing Brandir, Kieselstein-Cord and Carol Barnhart. The more I hear about this the more I think it’s ultimately about merger/competitive necessity, simply because we don’t know how to do any other kinds of analysis.

Also: Playtime Novelties--separable? http://williampatry.blogspot.com/2006/11/novelty-claim.html

Raizel Liebler (with William Ford, not presenting), Games are not Coffee Mugs: Games and the Right of Publicity

Games aren’t just merchandising, but are closer to traditional forms of media. Restatement of Unfair Competition talks about appropriating identity “for purposes of trade.” Lawyers have listed video games along with coffee mugs as if they were the same. McCarthy used to say that board games and wall posters are not traditional media in which ideas are conveyed and should usually be viewed as more exploitative than informational or educational; most uses should be infringements. He removed this section in the recent edition.

Merchandise is viewed as closer to advertising, but Liebler & Ford argue that they are closer to traditional media. Books and shoes are on opposite ends of the spectrum; why are board games in the middle? Posner: “We are in the world of kids’ popular culture”—people think about what children do.

But the CBC case held that fantasy baseball leagues superseded the right of publicity. Many pending game cases followed! Ranging from amateur athletes to present and retired athletes claiming rights. Can you include demographic stats? Hairstyles? Names? Can you allow players to modify their initially generic characters to be more like the existing athlete?

Transformativeness: right of publicity “continues to shield celebrities from literal depictions or imitations for commercial gain by works which do not add significant new expression” in California (Cal. Ct. App. 2006).

Putting Paris Hilton’s face on checkers doesn’t add anything to the gameplay; it would work the same. But Who Can Beat Nixon?, a 1970 game, might be a clear case the other way. Game: 1960: The Making of the President--uses a lot of historical figures, not all politicians. Can it use Martin Luther King Jr.? Historical wargames with reenactments should be easy cases, even including an image of Patton and his role in the war. But now we are seeing claims over things like the “Dillinger Tommy Gun.” This should be viewed as transformative.

As games get more elaborate, they get more creative/transformative—Grand Theft Auto. Playable characters in Guitar Hero etc. Gwen Stefani sued because her character was able to do things she didn’t approve of; in the latest version, players are no longer allowed to participate as celebrity characters.

One case: retired players were made less realistic, but sued anyway. Even if their names aren’t incorporated, people can add in mods to include players’ names attached to their numbers and physical appearances, including having them announced in the game. It wasn’t by random chance that a football player who was 5’5” showed up in the game with a particular number on a particular team.

Dogan: What should happen in these cases?

A: football player cases are more realistic, and we could thus argue that it’s more protected, but you could also argue that it’s therefore not transformative because it doesn’t refigure the football players as half-worms. We haven’t figured out what to do about this. For political figures, where use of person within the game has a role within the narrative of the game, that should be allowed.

Mark Lemley: you seem to be distinguishing (or the cases do) between politics/history and unimportant stuff. Is this defensible as a matter of First Amendment theory?

A: McCarthy specifically makes this distinction (but, as I expect Mark might say, that just reflects the fact that IP lawyers long thought the First Amendment didn’t apply to them, and they are (descriptively and normatively) wrong—remember that heightened protection for corporate speech Jessica Silbey was talking about on the last panel?).

Bruce Boyden: can put games on a spectrum of complexity from checkers to simulation type video games. Both ends give you trouble. For the video games, seems like the thing can be analogized more to fictional works, like TV shows/books; the relevant test there is whether there’s a reasonable relationship between the use in the fictional work and the work itself. For the historical video games, that seems obvious. The sports games: more of a problem when they’re not reenacting actual games. (As if you reenacted actual battles in WWII games any more than you reenact football games? I’m pretty sure it’s possible for the Allies to lose most WWII games. In both cases you step into the shoes of some group/person. Boyden seems to me to be doing what Lemley just identified—Patton is important and thus has no rights, whereas Peyton Manning isn’t and thus has rights.) He sees this as more of an ad.

A: Difficulty in playing “as” a person: fantasy football leagues—people do play out the role of the “what if” in many contexts.

Heymann: simulations add an extra layer—if you’re allowed to be Gwen Stefani, you can fix that as a video. Conflict between autonomy of gameplayer and interest of celebrity, which no one would ever notice in a board game involving roleplaying.