IPSC session 5

Trademark-Copyright Theory

Jacqueline D. Lipton, Case Western Reserve University School of Law & John Tehranian, Southwestern Law School, Derivative Works 2.0

Copyright v. right of publicity in treatment of derivative works: addressed very differently. Right of publicity protects transformativeness more strongly—you are far more able to make a painting of Tiger Woods or mock the Winter Brothers in a comic book. If you reuse fictional characters, you’re typically infringing. Ironic that real people get less protection than fake ones.

Henley v. Devore: emblematic—increasingly courts use fair use as a doctrine of necessity, with no independent First Amendment check as there is in right of publicity, and “commercial” is defined incredibly broadly, so the use of a song parody in a political ad was nontransformative and commercial.

Another example: crowdsourced production of Star Wars remake. Star Wars itself can be seen as a derivative of other existing things in popular culture. How should we think about reuse? Commercial/noncommercial seems to be important—online mashups are fair use, whereas Star Wars Uncut is a major work that could be released, though the editor hasn’t made any money from it. Lucasfilm basically seems to be reserving its rights to pounce if it wants. We could revisit the emphasis on commercial use with specific reference to derivative works; we could add an intermediate liability option where statutory damages would be off the table.

Comment: encourage you to take the middle ground, because most of the literature seems to endorse one side or another (free use or permission always required). Greater void in literature on the middle ground. (I think this is not an accurate description of the literature. Plenty of people say that there should be an intermediate stage in which payment is required but control not allowed, as with the right to cover musical works; the problem on which these proposals run aground is implementation. Terry Fisher made some relatively serious attempts at figuring out implementation, but doing so makes obvious the political problems. Plus the Supreme Court has said twice that this solution is available under existing law as a matter of remedies for infringement, as the literature is also keen to point out, but courts don’t want to implement it in the average case because they tend to think that one side is the bad guy and one the good.)

Comment: go beyond law reform; talk about possible business models/practices in the industry.

Tehranian: YouTube involves a model where the labels accept that this stuff is going to get created, and they might as well get paid. Content ID.

Ramsey: international obligations? Also, should we treat all derivative works the same? Are sequels the same as stuffed animals?

Tehranian: intermediate liability proposal would move from property to liability. Derivative works would make you a joint author with the original creator, and would have to split profits 50/50, ensuring that the original creator gets paid if you do. Parties could make their own deal.

McGeveran: What’s the connection between crowdsourcing and derivative works? Most of what you said would be true of one derivative maker as with a cooperative crowd.

Lipton: true; the crowdsourcing case studies allow us to think usefully about derivative works.

Laura A. Heymann, William & Mary Law School, A Name I Call Myself: Creativity and Naming

Choosing a name leads to a sense of ownership; copying can feel like a transgression. When you name yourself, say for an online environment, you’re often trying to send a message, leading to questions of authorship and authenticity. Creating a name is a part of performativity—hip-hop performers rarely perform under their given names. CB users choose names.

People want credit for the act of creation. Even renaming can be a “reboot.”

Courts occasionally mention naming as creative--Gaiman v. McFarlane suggests that naming was part of making a character distinctive, and some courts have used copyright-like language of creativity when talking about TM and the Abercrombie spectrum: “Security Center” required only a modicum of creativity which was one reason it wasn’t strong.

Recognizing and validating the creative interest in names tends to show up in whether a community allows people to choose their own names, and whether duplicate names are allowed even when there’s no impersonation or fraud. E.g., the master roster in roller derby prohibits duplicates even when geographic areas are distinct. Less organic models don’t recognize creativity: Google+ requires you to choose a name that is not too creative. Second Life requires an account name, but allows a changing display name that can overlap with someone else’s display name. Anger and frustration born of these policies is not about trademark or privacy—if that were so, the service could assign names/numbers. The concern is that naming says something about us, and so we want to choose.

Lessons: nascent communities—social networks, virtual worlds, etc.—should give attention to this interest in microcreativity. Value of observing how these communities deal with microcreativity tells us something about what motivates creativity in an environment where we’re pretty sure that it’s not about economics, but about other motivations such as identity.

Jessica Silbey: you talk about creativity and attribution; what about the relational aspect to naming—not just uniqueness, but relation to community. Although the names are unique to a person, they’re always building on someone else—choosing a name for your kid or playing on a famous name in your skate name. Transgression to relation with community is an important part of that when a name is “stolen.”

A: Absolutely.

Q: there’s genealogy/loyalty/continuity interests too—if you’re in the British royal family, name choices are limited.

A: a certain community may value limits. That has expressive value too.

Q: unusual names for children that are protectable as TMs—Facebook, Lex Luthor. What about them?

A: Sure, there are Lexuses out there. Communities are crossing. She doesn’t want to say that’s not creative—you definitely want to convey something by naming your child Lexus (or Kal-El!). That’s not anomalous, but does represent a community conflict. Twitter: various communities had no problems with people using a celebrity name as their handle, but then “the real” Tina Fey had to distinguish herself. She thinks impersonation is a separate issue, but even when there’s no impersonation we still have problems of creative conflict.

Amanda Compton, Charleston School of Law, N.I.G.G.A., Slumdog, Heeb, and Dyke: Reconsidering Disparaging Trademarks in a Post-Racial Era

Some people (she is not endorsing this) argue that we’ve reached a post-racial area, and also a post-sexist/sexual orientation era, which might indicate that certain terms should now be registrable.

What does the Lanham Act seek to accomplish with prohibiting disparaging marks? Sometimes it’s offense to a particular group, sometimes about attacks on them and sometimes about associating them with a product with which they would not want to be associated. Relationship tests (does the person/group have a relation to the product), rights of privacy, and multifactor tests have all been used; the multifactor tests are hard to apply. One problem is the one-person bottleneck: a single examiner will decide, though s/he will also look to external evidence. Doubts should be resolved in favor of the applicant but they aren’t always, especially if they aren’t represented by counsel. Result: wild swings.

Rejected: THE BIG HEEB BREWING COMPANY for beer; N.I.G.G.A. for clothing; SQUAW for some items; JAP for clothing; WHITE PRIDE for a variety of goods and services. Accepted: SQUAW VALLEY for ski clothing. Suggests that if you use the term as your trade name you do better. (I thought the SQUAW VALLEY case was decided as it was because it had geographic meaning distinct from its disparaging meaning as applied to these goods and services, but the overall point about unpredictability is quite valid.) N.I.G.G.A. was rejected though filed by a black comedian; this variant does not necessarily have the same meaning within the black community when used by a member as the very similar but highly offensive word I won’t write. If it’s been appropriated in a positive way it shouldn’t be rejected on disparagement grounds.

WHITE PRIDE rejected as disparaging to nonwhites. But Black Pride and La Raza marks are allowed registration—what’s the difference? (I’d say it’s about power. But I should definitely use WHITE PRIDE as a teaching example; disparagement is very difficult to teach.)

HEEB for magazines allowed; also DYKE TV; DYKEdolls for dolls with a very suggestive design.

Drawbacks of the ban: denies people the benefits of registration, though the marks can be used; prevents reappropriation; frustrates post-racialism; First Amendment issues.

Q: How helpful are statements about postracialism? Such broad statements about our current area don’t seem accurate or helpful.

A: She doesn’t personally agree with those statements, but if that’s the direction we want to move in, we need open discussion. Maybe we do want to allow certain products to invite discussion. We can still remove the mark from the marketplace, but that should be via consumer decisions. Or petitions to cancel by people who are harmed by the registration.

Ramsey: agrees that it’s inconsistent, and it would be great to have certainty, but there’s also a First Amendment argument against registering these marks. If they are in fact expressive (reappropriative) uses, then other people can’t use the marks in the same ways.

Rosenblatt: we see inconsistency in what gets registered, but that may be the application of the test rather than the prohibition. Courts should be looking at the mark plus the use in connection with the particular goods/services. What do we mean by protecting consumers? A lot of times the mark is offensive to a reference group that’s not the target consumer. If you’re the target consumer, you may not care about the harm to the non-target consumer.

McKenna: Incoherent area of the law because everyone grossly overemphasizes registration. Refusal doesn’t take the mark out of the market—still enforceable. If we had the courage of our convictions we wouldn’t enforce the law at all against such unregistered marks.

Me: There are a couple of cases that suggest that a mark not registrable because it’s disparaging is also not enforceable on public policy grounds (though McKenna pointed out that the courts that say that the prohibition on registration is constitutional say that it is because unregistered marks are still protected), so it’s a little more confused than that. Students don’t like disparagement—they don’t want to apply the test to deny marks, but they also don’t think it’s unconstitutional. We seem to want the prohibition to exist for expressive/symbolic reasons and then not apply it. Is it really a good idea to have a system on the books or should we just get rid of it? Should we have a situation unique to disparagement where it’s the one thing the examiner shouldn’t ever determine on his/her own?

A: Yes, she thinks the consumer should decide.

Viva R. Moffat, University of Denver Sturm College of Law, The Copyright Professor as Reader: Unauthorized Sequels, Copyright Law, and Trademark Concerns

Starting point: rethinking copyright as TM cases. Salinger v. Colting as an example. How do we tell which retellings are infringing? Is it really possible to distinguish Pride and Prejudice and Zombies from Mr. Darcy Takes a Wife? She read a bunch of these--Jane Eyre and Wide Sargasso Sea, King Lear and A Thousand Acres, and so on.

What is the interest of the author? What does the author want and what should the author be able to get? JK Rowling was asked if she was going to write a sequel, and she’s said she was done with Harry Potter. She said “it’s my baby, and if I want to take it out and play, then maybe one day I will.” Reflects a certain natural rights/moral rights line of reasoning. Salinger rejected a movie because he saw his novel as a novel and only that: absolute property rights. Salinger’s estate settled: the book can be sold outside the US, but the settlement agreement bars Colting from using the title “Coming Through the Rye,” which says something about the estate’s interest. He can’t dedicate the book to Salinger. These are moral rights/affiliation concerns.

Copyright promotes balance between incentives and public interests/access. Would TM principles do a better job? Suppose Colting’s book is clearly marked as an unauthorized sequel. There is clearly similarity in the titles/books. Intent to capitalize on Salinger’s goodwill? No intent to confuse, per disclaimer. Salinger would not win a TM claim. Assuming he did win, the finding of confusion would satisfy the author’s legitimate interests. Confusion in the marketplace may substitute for the effect on the market inquiry in fair use. Confusion makes effect on the market likely. If people aren’t confused, highly unlikely that the market for authorized derivative works would be affected. TM would better promote the copyright balance in this context: unauthorized retellings of novels. Possible broader application, to characters more generally and Harry Potter Lexicon.

My thoughts about Rowling’s quote: (1) Rowling is very supportive of fanworks in general, so she’s not all that wedded to a traditional copyright conception of natural rights, though TM might coincide with her view. (2) If you did that to an actual baby (or in other ways asserted absolute rights over that baby) you’d be arrested. Actually the TM idea that rights require use might have something to say about the common work = child analogy too; having a child requires you to take care of it.

Ramsey: Initial interest confusion might be of use here. A lot of cases involve potential confusion about the source of expression. Star Wars Uncut: you might think that Lucas is the source, but further inspection would dispel any such notion. (Harry Potter and International Relations, anyone?) Some people say that this is actionable, but others say you have to look at the content to figure out if there’s anything actionable.

A: She’s not necessarily thinking that current TM doctrine has the right answers, but that TM principles might be better for this area. She doesn’t want dilution, certainly. Could incorporate TM principles into the fair use inquiry.

Said: Jeannie Suk’s note on orginality has a lot on retellings. In so many of the litigated cases, the monetizable uses already involve TMs. So are you only talking about cases in which TM isn’t already implicated, or a larger set?

A: she’s starting with the smaller set, but there may be more general implications. Maybe they’re already in the cases, but maybe we should do more channeling: all you can bring is a TM claim.

Heymann: what if the sequel is good and satisfying even if it’s not from the author? TM and copyright think somewhat differently about nonexistent but theoretically possible markets.

A: Might not be perfect substitutes. (I’d think that would be the point. Being satisfied and being fooled are two different things, and we might use the difference to define the market to which the copyright owner is entitled and the market to which it is not, as a way out of the well-known circularity problem.)