IPSC session 4

Empirical Work

Jamie Lund, St. Mary's University School of Law, An Empirical Examination of the Lay Listener Test in Music Composition Copyright Infringement

Musical work: melody, rhythm, harmony and lyrics, as understood from the 19th century by music publishers who wanted the same treatment as publishers of books.

Jury is asked to listen to the recordings but decide based only on the musical work, not on the performances in the recordings. 178 participants. Chose songs from Carey v. Swirsky (where Carey initially won summary judgment but the 9th Circuit reversed for a jury determination, so it was a middle-of-the-road case) and Gaste v. Kaiserman (where it was an extreme example of similarity and the plaintiff won at trial and won on appeal).

Half of the groups heard the pairs played similarly. Half heard them with different performance aspects—vocal phrasing, genre, orchestration are possible, but for the experiment they chose tempo, key, orchestration (what instruments, how many), and style (genre). Listen here. People who heard them played similarly and were asked to rate the similarity on a 1-5 scale gave 4.6 rating on average, while the ratings were substantially lower in the different performance style condition. Given the legal definition of substantial similarity and asked whether the two works were substantially similar, 38 in the similar performance style said yes, 6 said no; 7 said yes and 39 said no in the different performance style condition.

Gaste: Performance was still significant, though the works were highly similar. Performed similarly were rated 4.4, differently 3.07 (more similar than not). But there was a smaller effect of performance, and with a jury instruction for substantial similarity, 40 people said yes and 4 no on whether the works were substantially similar; in the different performance situation 36 people said yes and 10 said no. This suggests that there’s only so much you can do to game the system with a different performance.

Q: Did people hear the songs back to back?

A: Half were told to compare the songs; after the jury instruction they were told to pretend they were mock jurors, and they even had deliberations. People talked about their feelings about the songs.

Q: prior familiarity—if you know “Feelings,” it would be a basis of comparison as you heard the other song. Did you exclude based on past familiarity?

A: we asked people if they knew the song. Out of 178, 10 said they knew any of the songs. We didn’t back them out; not clear they’d get excluded from a jury either. That’s why she left them in.

Q: is it strange that the similar performance condition results were the same for both sets of songs?

A: Maybe. Some people possibly thought they were being gamed and thought there had to be some trick going on/trying to figure out what was being tested. But that also probably happens in litigation.

Grimmelman: any possibility of playing jurors multiple versions to help them appreciate composition v. performance? Also, are things you’re calling performance really properly classed as the composition, when you have the composition as embodied in the performance?

A: Multiple versions is a possible solution. Expert jury would be another possibility, but that’s hard. Another option: let’s have a special verdict form. Another: allow expert testimony on substantial similarity, contrary to the current test in many circuits. As for composition/recording: she used Nimmer’s definition; courts have tossed a lot of things about; maybe we should include some of these factors that come in now that people “compose” on tape in the definition of composition but there are practical barriers—interference/overlap with the sound recording right. I Will Always Love You was originally written in country style; defining composition copyright narrowly actually expands rights in covers.

Q: Did you poll people before deliberation as well as after?

A: We didn’t see a statistically significant swing between asking them 1-5 and after the jury instruction/deliberation. Might be able to test different jury instructions. (I think that didn’t answer the question; sounds like they didn’t ask individual jurors their reactions to hearing the definition, though I think that’s also less important given that deliberation is a part of what actually happens. This is significant work.)

Andrew W. Torrance, The University of Kansas School of Law, Design Beauty In The Eye Of The Judicial Beholder

Design patents are understanding. Law covers visual designs in various ways: design patent, TM, copyright, publicity, mask works. Tested ornamentality requirement in design patent—hypothesis was that ornamentality means attractive. Data: population of all the design patent cases coded by result—invalidity, no invalidity but no decision of infringement, and valid and infringed. Used human subjects to gauge attractiveness of designs covered. Conclusion: ornamentality may once have meant aesthetically attractive, but no longer so.

Darwin had theories about aesthetic preferences—might be functional/organizational: A human should find something beautiful because paying attention to it would have been advantageous in the environment of evolutionary adaptation—sexual aesthetics. Environmental cues regarding landscape (see Buccafusco presentation). Skill aesthetics: items may demonstrate desirable skill of the maker.

Design patents: there used to be an explicit requirement that the design be aesthetically pleasing.

Attractiveness, as coded by students, didn’t appreciably rise. But pleasing designs were increasingly found invalid and ugly designs less and less often were found invalid—that is, pleasing designs lost their advantage versus ugly designs. No difference in attractiveness of not invalid but not infringed. Nor with valid and infringed. As you move forward in time, the lines converge, and there appears to be no advantage to being aesthetically pleasing.

1982: Federal Circuit went to work on the aesthetically pleasing requirement and knocked it down, saying that “ornamental” just meant that the design couldn’t be the sole product of functional considerations. Empirical evidence may have detected evolution of design patent doctrine.

Future work: whether different generations evaluate what’s attractive differently; whether different fields of law behave differently.

Comment: confound might come not just because different age cohorts think differently but because they think differently over time; 1982 reactions might have been different.

Comment: novelty: maybe beauty’s been done and now ugly seems new and ornamental.

Comment: litigated cases may be different in attractiveness as they are in other features.

Torrance: move away from aesthetics on grounds that people can’t agree on what’s aesthetic. Judging functionality may also be highly subjective, but they may have been searching for greater objectivity.

Hughes: finally judges are taking Holmes’ admonition in Bleistein seriously. Arguably no one ever applies for a design patent unless it’s aesthetically pleasing to someone. (I’m not sure why that would be true—there are reasons to protect yourself against competition to apply for a design patent, and EU actors sure seem to use it for nonaesthetic reasons.) Design protection in the UK starts historically with calico prints, which is about aesthetics even if it’s not formally part of the standard.

A: courts do talk about saleable value. People will want to buy it.

IP Litigation and Theory

Nahoko Ono, Visiting Scholar, Columbia Law School, Secured Transactions in IP

UNCITRAL legislative guides on secured transactions (security interest, including mortgate or pledge), modeled after UCC Chapter 9; covered personal property in general, including IP, but not real property. In Japan, the civil code covers what in the US would be the UCC, property, contracts. Not so many patents in Japan (like the US, Japan has a history of wanting to be able to copy other nations’ tech). Many Japanese patents, like US ones, are not used, and mostly they’re used in intercorporate functions.

Why? Patent and copyright transaction related provisions were illogically inserted into the Civil Code, which (under the influence of German law) presumed tangible property and possession. The 1959 patent act was too detailed.

Supreme Court decision in 2006 showed Japan’s continuing troubles. P bank loaned to X with a pledge on X’s patent, duly requested JPO for registration. X assigned the patent to Y, then Y to Z. JPO registered the assignment first by mistake. JPO later adjusted the registration but was defeated by Z.

US has its own problems: where do you file? Berne Convention issues—do you need to register in order to perfect a security interest? UNCITRAL solution: general in principle, but an existing specific registry has priority.

Conclusion: don’t regulate recordation strictly; Japan has had a bad experience. For developing countries, the Japanese model is probably not helpful. Recording should be minimal about what has to be disclosed.

William Gallagher, Golden Gate University School of Law, The IP Law Disputing Process: Strategic Enforcement of Patent, Trademark, and Copyright Claims

Most IP enforcement occurs outside the legal system. Talking to lawyers (which has limitations of its own as compared to the IP owners themselves); they are accessible and we know lots about what lawyers do in almost every other area of law—divorce, white collar defense, prosecutors. We know that most disputes aren’t litigated, so empirical studies of case outcomes are inherently limited. If we worry about chilling effects, we have to worry about nonlitigated disputes—both for free speech and competition.

Almost 200 lawyers in the project—qualitative study with semi-structured interviews. How do you select targets, what factors influence enforcement and settlement decisions. There are repeat player advantages, especially if they are going after individual one-shot users of the legal system—trying to flesh out what that means in IP. Is there over-enforcement? How effective is resistance to allegedly improper enforcement? 90% of the time a C&D works, so what does that look like and what makes resistance effective when it happens? Varies by industry; movie industry doesn’t like suing fan sites. Rewards from aggressive patent enforcement are different from rewards from copyright/TM enforcement.

Lisa Ramsey: how do you avoid getting the idealized version?

A: ask very specific questions about what they did most recently, what they said, what they did this morning, etc.

Ramsey: who will talk to you?

A: virtually 98% response rate. Lawyers are self-important and they are happy to be asked.

Me: Culture clashes with lawyers from other countries? (British lawyers, in my limited experience, have a very different communication style from US lawyers that probably leaves both sides feeling hard done by, since two aggressive communication styles are even worse than one.)

A: didn’t get that, but did get people talking about culture clashes with those awful NY lawyers or those awful LA lawyers.

Q: use of automated systems to detect infringement?

A: didn’t capture that in interviews. Did ask them to list the forums in which they worked, but might not have followed up appropriately to dig that out.