WIPIP part 2

Lydia Loren, Orphan Works and Open Access

Orphan metaphor: poor things that need help/protection—powerful metaphor, fits with powerful/pernicious metaphor of romantic author.  Sometimes those authors die and leave orphans in need of special solicitude. What happens to orphans? They end up in workhouses, orphanages, coopted by criminal gangs.

Different metaphor: hostage.  Held hostage by automatic and extensive nature of copyright rights and remedies. Users of orphan works: special forces operatives who should be applauded for their role in freeing hostages.

Copyright is a statutory right to exclude, a social institution—public aim of progress/knowledge.  Regulatory construct rather than property/tort. Private interests may misalign with public aim. Given that these are orphan works, we don’t have to worry too much about incentives for future creation; we need to worry about dissemination/exploitation when there’s no copyright owner to ask.  Not a strategic choice by the copyright owner. Think of them as abandoned, neglected, or derelict property.

Adverse possession theory: one justification is the demerit of the original owner, another to reward the merit of the useful possessor. Do we really need a new owner?  No.  All kinds of rules for designating new owners for tangible property whose original owner is missing.  That’s when the property has positive value; when it has negative value it’s garbage and we have rules about responsibility for garbage. Real property: doctrine of waste.  May analogize to orphan works. Waste is when there’s divided ownership: current owner/possessor has various duties to subsequent owner.  Evolves over time, but there’s no obligation to avoid waste if the property is owned in fee simple. In copyright, the public is the remainderman: the rights are possessed by the public.

Solution: reduce barriers to non-owner distribution. Risk underproduction of info about whether particular works are orphans. Who will invest in this info? Proposed European Directive: reasonable diligence.  What’s the incentive to incur that cost? One possibility: new ownership right, as with adverse possession or orphan drug act. Loren is concerned about taking ownership and giving it to someone else when we do have remaindermen.

Open access as a tool: eliminate liability for identifying hostage works and freeing the works, but require them to correct errors when identified. Elimination of liability will be enough for nonprofits and libraries—they’re interested in preserving their budgets against liability so they can save the money to buy in-copyright works. Open doesn’t have to mean “no way to make money.” Allow for commercial uses as long as consistent with open access principles. Current open access models are based on copyright owner consent. Should provide information, in markup language that can easily be searched, which can help correct records if owner is identified.

When a copyright matures, it’s emancipated. Open access as a step in that maturation process.

RT: in real property, can’t have adverse possession against an interest holder with no present interest like a remainderman, so awarding the rescue team with a new property right would be inconsistent with the metaphor (at least if it lasted longer than the original duration of the ©).

Q: Is Google Books a liberator or a hostage-taker?

A: Neither.

Q: Aren’t people unjustifiedly worried about statutory damages when all they’ll have to do is take stuff down?

A: to a certain extent. But libraries have limited budgets and are risk-averse. They are also interested in doing the right thing. They need a legal structure that reflects what the right thing is. Derivative work creators are worried.

Dave Fagundes: the social costs of waste in physical property might be higher than IP—more externalities, as with foreclosed homes. Nonuse of IP may be more inert. Physical property is also finite; you can make more IP. Waste: refers to harm to future interest owners—is that really what’s going on here? The harm is in the present with orphan works. To make analogy work, you have to show that the nonuse is harmful to the future owner, which you may be able to do. Also, are the hostage-freers still unincentivized? 

A: She’d like no damages. Even a reasonable license fee might be unwarranted without proof of actual harm.

Kelly Casey Mullally, Blocking Copyrights Revisited

Courts should take contributions of second-comer more into account in remedies—a “blocking copyrights” perspective.  eBay gives courts more leeway to deal with unauthorized works.  Courts have been somewhat receptive to denying injunctive relief where there’d be harm to public interest; her proposal capitalizes on this. Courts might also be more comfortable with “blocking copyrights” as part of equitable relief rather than as part of difficult constitutional questions or at the liability stage.

Look to tort law for lessons for improvers.  More favorable to follow-on creators than copyright. Courts have been willing to grant right if improver acted in good faith and made a sufficient contribution to the final materials as long as the improver pays compensation. Tort law also has experience valuing reputational harms, sometimes raised with derivative works. US law doesn’t support moral rights, but tort law can value if we think it should. Courts have also looked to tort law to figure out what actual damages are in copyright.

How this might work: good faith.  Tort applies a broad view of good faith—innocence isn’t required; have considered prior attempts by improvers to negotiate and the fact that the improver improved at his or her own expense as evidence of good faith. Could encompass unintentional infringement for copyright, as with mistakes in real property, but should be broader because copying is often deliberate and nonetheless worthy of protection. Significant efforts of substantial improvers should be taken into account.  Look at transformativeness, new meaning/message—particularly transformations not dictated simply by a change in genre; look at whether new work is successful because of factors unrelated to the preexisting work; attempts to negotiate and copyright owner’s general willingness to license/exploit the market at issue; delay in reacting/filing suit—gets at whether there is real harm. Does the use increase demand for the original work? Gist: courts adopt an ameliorating practice within eBay and still compensating the owner of the copyright where appropriate.

To do this requires a lot of partitioning of damages.  That’s a barrier to this approach.  Her approach attempts to avoid problems of defining what’s an improvement by sticking to statutory language—the definition of what’s a derivative work. Courts have already addressed what it means to create a derivative work out of an existing work. Courts have also had to address the value of an infringing work as part of a larger work. URAA derivative works cases also require assessment of reasonable license fee from reliance party. Greater protection for unauthorized derivative works is the goal.

Glynn Lunney: He heard an argument for reduced damages for unauthorized users who create value, but that doesn’t implicate blocking copyrights as in Gracen v. Bradford Exchange.  Blocking copyrights would mean neither could exploit Gracen’s plate unless both agree.  Or do you just mean that Gracen should be able to distribute her plate on her own by paying?

A: that’s at least what she wants.  More to come on this project.  Ideal: express acknowledgement of right to copyright unauthorized author’s contribution.  If it’s still profitable for the unauthorized user to continue, what if the copyright owner decides to get into the market to compete?

Fagundes: you’re talking about property torts like conversion, but does that work?  Separately, one counterargument is that you depress incentive to create first-generation works like motion pictures with sequel franchises.

A: Need more evidence the derivative right is important—more like a lottery.  Author reputation can also preserve a market: George Lucas’s version is more attractive.  Especially if the other creator has to pay the damages to continue.

Q: does the proposal work better for some categories, e.g., computer software, than for cartoon characters?

RT: one usual objection to tweaking remedies in this way: leads to expansion of liability. Your factors seem to play into that by replicating the fair use test.  I think if there’s new meaning & message and the copyright owner doesn’t want to exploit that market, it’s likely to be a fair use! My specific concern: noncommercial users. Plenty of effort and creativity, little financial reward.  Also, blocking copyrights—copyright owners would be terrified of strike suits under such a regime—your Avatar sequel is too close to mine! You must have copied!  They’d attempt to suppress unauthorized uses much more aggressively under this regime.

A: interaction with fair use is significant, but sometimes courts aren’t willing to say it’s fair use; can incorporate eBay framework in those cases. 

McGeveran: Derek Bambauer on derivative works has some relevant stuff.  Also, on incentives: lots of people buy lottery tickets in the unrealistic hope they’ll win. To what extent is that incentive necessary. (To what extent do average authors trying to win the lottery understand the extent of the law?) 9 of 10 top-grossing films this year were sequels.

Eric Goldman, Death of the Initial Interest Confusion Doctrine?

Why academics hate IIC: no well-accepted definition.  Capturing a consumer’s attention is in his world called marketing. But courts are all over the map on this. Courts disagree whether the doctrine even exists—compare the 4^th Circuit in PETA to the 4^th Circuit in Falwell.  Because there’s no definition, there’s no way for defendants to respond; no way to do empirical studies on either side. Lacks contours.

Also IIC pushes TM too early into the consumer search process.  Consumers experiencing IIC are actually suffering no harm at this stage. Leads to “hit the back button” response.

Practically: doesn’t improve judicial decisionmaking. Courts can’t figure out how the test applies to ordinary likelihood of confusion analysis—is it a factor? A substitute? His hypothesis: rarely changes a case’s results. A doctrine that is supposed to help doesn’t.

Non-rigorous search via Westlaw.  He looked at 55 cases 2009-2011; IIC “found” as best he could tell in about 9 cases; sometimes hard to figure out what the court did.  3 categories: Domain name cases (ACPA failures but the court lets them continue); keyword ad cases (funky; something ambiguous in the ad copy, though not a clear ripoff—court is not sure what the ad copy is telling people—Pillow Pets case); trade dress cases (Wolf/Viking red knobs on ovens, RE/MAX—court thinks people might not understand as they’re whizzing by at 50 mph).

We have doctrines that cover all these things and give a lot of law for parties to use.  We have ACPA, UDRP, etc.  We have law on keyword ads, Google’s own policies which are decreasing judicial activity.  We have trade dress law.

Implications: often pled, rarely successful. Why not plead it?  (Sounds like the history of dilution to me.)  Where it’s helpful, chances are the P was going to win on some other theory.  Means an increase in cost of litigating without payoff.  How do we declare a common law doctrinal experiment a failure?  How do we kill common law?  The whole nature is to build on precedent.  May be shaved to death, but when can it be called dead?  (Dilution might be compared as a legislative experiment—Clarisa Long?)  We as law profs would like to be able to declare its time of death, but he’s not sure how that’s done.  Only certain way: statute.  (How did competition die as a requirement through common law?  McKenna.)  Judges do have the power to simply say it failed. 
Sheff: the one category that’s most problematic is trade dress. There you can distinguish bait & switch from foot in the door. Trade dress: foot in the door. Different kind of harm than domain name where you can just hit the back button. Might influence consumer decision based on goodwill of manufacturer. Whether we care about that is a separate question. SCt denied cert. in Gibson Guitar case on the “smoky bar” initial interest confusion theory, where the 6^th Circuit rejected the P’s theory. That may be the best signal we can expect.

McGeveran: Could be an article in the Prosser tradition: I’ve read all the cases and here’s what they mean. That’s how courts gravitate away from a common law doctrine now in disfavor—they start to cite the old cases grumpily, and citing a comprehensive survey can help.

Q: potential statutory hook: sale, offering for sale, or advertising.  That may be justification for claiming it’s infringement to offer for sale/advertising.

Ramsey: First Amendment as a justification?  Requires narrow statutory interpretation to protect speech interests; IIC doesn’t do that.

Me: compare dilution; compare pleading state causes of action, which actually wastes only paper as far as I can tell.

Lunney: INS-style misappropriation also died a common-law death.  The Third Restatement declared it dead, and after a while the courts went along.

Felix Wu: if you want to make something narrower you add an element. Misappropriation: courts added so many elements that it became essentially impossible to satisfy.  One way to read Gibson Guitar case is that the court added an implicit materiality requirement, and making it explicit might be a good way to kill the doctrine.

Leah Chan Grinvald, Debunking the Duty to Police in Trademark Law (with Eric Goldman)

Hypothesis: the duty to police is overblown, played out in nutty TM enforcement claims. Monster Cable suing everything Monster, including the movie Monsters Inc.  Yoga for Athletes is on the supplemental register: sending out letters to all sorts of studios & succeeding without having to sue.  They defend themselves by saying “we must do that or we lose our brand.” But what are lawyers actually advising and is it consistent with the actual law?  Countless numbers of practitioner materials say that.  Even the PTO’s bullying report says TM rights may be weakened if use goes unchallenged so enforcement is important.

These sources are conflating the issues: actual consequences of nonpolicing are much more nuanced and harder to explain. Easier to say “always!”  Laches/acquiescence; reduction in strength; inability to bring dilution claims; abandonment; genericide—these are some possible consequences, depending on what exactly is happening.

Current results (WIP): it really depends.  Doctrines are all over the place.  Against a single defendant, laches/acquiescence still isn’t very common unless you’ve really let it go—the shortest period we’ve seen is 5-6 years (no statute of limitations on Lanham Act, so courts borrow from states).  Not clear how often people lose dilution claims because of similar unchallenged uses. Abandonment/genericide is really rare.  That’s why practitioners trot out a few well-worn examples like aspirin—that’s pretty much all that there is.

So why do people promote, in all honesty, the absolute policing belief?  Anticompetitive behavior: using it as a way to stop competitor product sales.  Anticonsumer behavior: might hurt consumers, but we have to stop it or hurt our brand.  Improper advice: practitioners using anomalous cases to scare their clients into believing that there’s a monster in the closet. Most practictioners who focus on TM do seem to understand the nuances, but there’s a lot of risk-avoidance.  Attorneys should reexamine their advice and stop talking about a “duty to police.”  New framework: identical mark situations v. nonidentical mark situations.  Other variations.

McGeveran: Documenting the risk of bad PR from being overzealous, especially in a twitterfied environment—there are countervailing/downside risks of overpolicing.

Sheff: Bucky Badger case—failure to police led to affirmative expansion of TM rights.  Policing is not that relevant to the scope of duration of TM rights, at least now.

Ramsey: why carve out naked licensing cases?

Q: Malpractice fears aren’t really necessary when you can get billable hours out of telling your clients to fight a use. How do you bring that up without alienating the lawyers?

Loren: sees policing referred to in case law in discussions of dilution: courts seem to weigh C&D letters in P’s favor.

Ramsey: plus, if you deter competitors from using a mark, you have a better argument that competitors don’t need to use it.

McGeveran: can the law agree that agreements that the goods don’t overlap are just as good as a C&D?

Devin Desai: but you still give the markholder reason to come beat on someone with a stupid doctrine.  Perception can still induce panic.