Drake part 6

Panel 6: Trademarks and Unfair Competition

Prof. Sean A. Pager, Michigan State University College of Law

Unpacking Traditional Knowledge Rights and Wrongs

WIPO is busy drafting TK treaties and there’s a burgeoning literature. Often begins with a misappropriation anecdote, then laying out proposed rights and remedies. How you characterize the injury in the anecdote matters a lot for the rights and remedies one might design to follow.  Outsider comes into community, takes part of cultural heritage without consent, strip it of time-honored meaning, and commoditize it into an external market in an inauthentic, possibly offensive way.  Ending: community devastated by loss, tradition despoiled; indignity compounded by the knowledge that someone else is making money and they aren’t benefiting.

In this archetype there are two distinct injuries: harm to authenticities, a cultural injury; then economic injury/unjust enrichment.  For the latter, cutting a check/rough justice is probably ok; level of governance will be thinner than the necessarily thick regulation of cultural injuries.  What about geography, local v. globalism?  Cultural injuries are more likely to be local, local decisionmaker is more likely to govern more effectively for the interest; you might not need to worry about global harms because the harm from local violations will be felt disproportionately.  Whereas an economic rule, especially if it’s merely calculating a price, can be more easily expanded in geographic scope, and there’s no reason to think that someone making $ locally is any worse than someone making $ across the world.

Biological development: countries have access, but don’t have development resources to commercialize/synthesize—there is a holdup problem and an economic solution; need a global mechanism to solve it. Cultural resources are different: shaman’s melody; still recognizably derived from the shaman’s melody, thus capable of inflicting cultural harm. And yet primarily these harms are going to be local.  Sustained, serious uses will be by communities that are proximate to the affected community, because that’s how culture flows.  NCAA mascots as a US TK issue: why is it that all these American sports teams have Native American instead of Australian Aborigine mascots?  In Australia, the iconography is aboriginal rather than Native American, and the harms of inauthentic use are local.

Prof. Jake Linford, Florida State University College of Law

Trademark Owner as Adverse Possessor

TM owner resembles an adverse possessor through the process of acquiring TM protection. Requirements: actual possession, open and notorious, exclusive, continuous for statutory period, hostile/without permission/under claim of right. There are fights over whether good faith/knowing is the right standard, and other details of color of title.  Property rights in TM are not property rights in words, but property rights in words used to signify particular meanings for goods and services; this can be expansive for dilution but still isn’t ownership of the words themselves.  You secure rights by showing courts you’re serious/responsible about it. 

Courts think commercial strength trumps inherent strength. It’s acquisition of secondary meaning that matters, but we have no real solid rules about how that’s acquired. We presume in 2(f) that substantially exclusive continuous use for 5 years creates secondary meaning, but PTO has told examiners to ask for more in the case of trade dress, muddying the rules and creating uncertainty.  Rely more on what mark owners are doing in commerce than cleverness of the initial mark.  What if we turned 2(f) into a floor on the amount of time to acquire distinctiveness?  That could provide more certainty for competitors and consumers.

Not every crystalline rule necessarily benefits consumers.  If you had an inherently distinctive mark, failure to establish commercial strength might not hurt your chances of winning, at least for the first 5 years.  We may actually be doing this in practice, as he looks at likely confusion cases.

Posner: a TM owner has to be serious about protecting it; at the same time, not allow from the public domain a name the public is using to denote someone else’s good or service.  This approach was disregarded in Golan; we have a more active public domain in TM than in copyright.

(My comment: presumptions about strength are not really about confusion, and we should consider stopping pretending that they are.  EU approach: rights over the use regardless of likely confusion.)

Prof. Joseph A. Tomain, Florida Coastal School of Law

First Amendment, Fourth Estate and Hot News: Misappropriation Is Not a Solution to the Journalism Crisis

The NYT invents the news.  We need an institutional press with resources to cover what citizen journalists can’t.  Reap what you sow = occasionally a threat: you will get what’s coming to you.  Also, sometimes you’re forbidden from reaping what you sow.

The utilitarian claim is the key one: public will lose info necessary for self-governing society without a misappropriation right. 

Recall the history of INS v. AP: Hearst couldn’t send reporters of its own because it was excluded by the Allies.  This should make us wary about First Amendment implications of misappropriation.  In addition, who gets to decide what the value of the news is, or whether it’s degraded?  Vagueness is a worry. Prior restraint on information from a permanent injunction.  Does not appear to him to raise problems of content-based regulation, but assessing it by content-neutral standards still creates problems for things like injunctive relief; perhaps only monetary damages should be allowed.

Daily Mail principle: publication of lawfully obtained information is protected absent a state interest of the highest order.  Can hot news really pass this standard?  Name of a rape victim, contents of illegally recorded conversation, juvenile defendant’s identity: is economic incentive really more important than these interests?  Only at the most generalized level.

Golan: the public domain isn’t inviolate, so the SCt might let this pass.  But is there a difference between taking a work out of the public domain and taking facts out?

Utilitarian analysis: if constitutionally permissible, still a good idea?  Very hard to prove harm to newsgathering incentive.  Should courts be allowed to presume that harm naturally follows free riding? No, evidence ought to be required.

The real trouble: lost ad revenue.  Concentrated ownership of media outlets.  Taxation of online ads with revenue going back to the institutional press might be a way of supporting that press.

Dr. Katja Lindroos (Weckström), Lecturer in Intellectual Property Law, Faculty of Law, University of Turku (Finland)

Injunctions Against Intermediaries

TRIPS: effective measures against infringement; requires injunctions against certain types of infringement.  Doesn’t say injunctions have to be available against all types of TM infringers—minimum standards. Criminal sanctions against willful TM counterfeiting on a commercial scale.  EU: enforcement directive, 2004, covering all IP as TRIPS implementation—a long list of sanctions member states must afford; member states resisted and thought it was overbroad.  But still required!  Rightholder has a right to injunctions against noninfringing third parties.  2000 E-commerce directive; covers all IP too; narrow safe harbors for mere conduits, caching, hosting; (discussion on that centered around copyright despite scope of directive); no duty to monitor.  ACTA covers TM, copyright, and related rights. 

What is TM counterfeiting?  She showed “abibas” shoes, with a logo very similar to that of adidas.  But when it’s a fake iPod, are we really talking more about copyright or TM infringement, or even product liability?  Under current law, TM is the rubric.  Who goes to jail for TM counterfeiting?  French want to throw shoppers in jail.

Spotting the fake may be easier in physical space than online: if offered a Louis Vuitton on eBay, it may look just like the real one.  With copyright, we know that the rightholder can authorize digital sales; if the copyright owner says no, we know it’s an unauthorized copy. But with TM, it’s not that easy to distinguish between legal/illegal items on an auction site because of first sale.  We can’t assume the same type of absolute control as in copyright.

L’Oreal v. eBay: ECJ said eBay isn’t directly or contributorily liable under TM directive; nonetheless, injunctions must be available to rightholders under enforcement directive regardless of fault.

Helsinki District Court: Elisa must prevent subscribers from accessing Pirate Bay domains, big fine pending resolution of the case.

O’Melinn for Tomain: Is hot news content-based?  Say more about reasoning and about Golan.

Tomain: Given Golan, wouldn’t be surprised if Court could take facts out of the public domain, though that’s wrong.  Not content based because could have any content: sports, politics, etc.

For Pager: what would the baseline be for remedying cultural harm?

Pager: culturally defined—what is a harm, who is entitled to do this?  Devolve to local decisionmakers; a WIPO treaty could create the baseline principles.

Yu: indigenous communities often don’t want to separate TK and traditional cultural expression, economics/culture.

Pager: true, but we split IP all the time: copyright and TM.  Separating them doesn’t mean there’s an ontological distinction.  This has been overly politicized.

Corbett for Weckström: what standard must eBay follow?

A: notice and takedown for copyright, but not clear what TM requires.  L’Oreal has stopped sending notices, because they feel it’s not a good enough remedy.  Issue for court: possible injunction to get closer to active monitoring even though the court says monitoring shouldn’t be required; up to national courts to strike a reasonable and fair balance.  Discussion is somewhere between notice and takedown and an active duty to monitor.  German court—remove listings that say “replica” or “copy.” But then we have to discuss whether these tools are reliable or overinclusive.  German court on remand said that removing copy/replica listings was sufficient.  Once you have evidence from the TM owner that there’s routine infringement, might have to monitor IP address to prevent creation of new accounts.

Corbett: offline shop also has duties.

A: but eBay is not selling just one item; also eBay doesn’t have custody of a physical item, only a product description.  Not like a flea market where the seller can inspect the product and figure out if it’s fake.  Even with a picture, authentication is almost impossible.  Can use indicia—where sold, price, how many on offer—but that’s not as predictive as we might want.  Overinclusiveness isn’t as big a problem in copyright (well, it isn’t w/r/t digital downloads, as opposed to sale of copies, at least where there’s been a first sale; but I suppose if there’s no exhaustion of the distribution right, at least across national boundaries, then physical copies are also at issue).