Intellectual Property at the Edge Part 3

Right of Publicity

Stacy Dogan

Unjust enrichment is an underlying theme here and clearly important to the RoP; makes it very difficult to define what the limits on it might be.  Tabor also seemed to be about the court’s offense at unjust enrichment. Courts rebelling against the absence of an underlying theory of dilution—are courts equally frustrated right now by the absence of a normative definition for the right of publicity? May be bending over backwards to recognize First Amendment defenses now.

Her paper: the Haelan case gives as a rationale for creating the right the fact that the baseball players want it.  RoP lacks clearly defined normative justification, but there is no central justification, and that makes balancing celebrity interest v. speech interest difficult in any given case.

Really about unjust enrichment: not fair to make money from the use of someone’s identity. Courts thus apply their own judgments about the value of the speech at issues. District courts address identical facts and go in different directions.

Descriptively: the law protected against the use of name and identity in certain cases, but it was a harm-based personal right.  Haelan’s innovation was to shift the nature of the right from harm-based to benefit/unjust enrichment-based.  Right to capture any value stemming from commercial uses of identity.  Two sets of following cases: use in advertising, and use as part of expressive product.  Haelan was amalgam: in theory the cards marketed the chewing gum, but people were buying the package in large part for the card, part of (or the only important part of) product itself.  Celebrity always wins ad cases, even allusion or poking fun: Vanna White is the classic case.

Doctrinally, this results from the less privileged status of commercial speech paired with the fact that the RoP has no internal limits.  (Note that this result is nuts insofar as Central Hudson applies to truthful nonmisleading speech.)

Product cases: courts always find a violation of the RoP (not in NY, though).  All the heavy lifting falls on the First Amendment.  For noncommercial speech, the First Amendment can carry some of the weight. But then you balance the interests of the celebrity with no normative core with the interest in speech, creating a mess. Most courts seem to be moving towards transformativeness to evaluate whether the speech ought to be protected.  Some courts look at whether the image itself was transformed—artistically—others are willing to look more broadly at whether the defendant has created a new product with some new market value. Courts sometimes engage in tortured approach to find transformativeness, as in the Hart v. EA case in NJ (which has an opposite result in the Cal. case; both are presently on appeal).  NJ court said the fact that it was possible to change the likeness of the football player made it transformativeness; Dogan finds that tortured even though likes the outcome.

Is there similarity between RoP outcomes on transformativeness and copyright/TM outcomes?  What is the relationship between TMs incorporated in products and celebrity images incorporated in products?  As TM licensing spreads, people pay to incorporate products and it becomes harder to argue you shouldn’t pay the celebrity.  The NCAA made tons of money from the game company’s payments to the NCAA to license the mark, jerseys, etc.

Ginsburg: relationship between copyright & TM—if the court finds it fair for TM, it will find it fair for copyright; if the court finds no confusion, as in Rogers, it won’t find violation of the right of publicity.  (RT: which is why sometimes you see the celebrity plead only RoP.)  States where RoP is based on a statute “for purposes of trade” there’s at least a technique for limiting the scope: not artistic or editorial.

Report on David Lefranc’s comments: Seems like there’s no legal basis for RoP in France either.

Singer granted rights to Universal to use his image; 3d party produced a calendar using his image.  Universal sued the 3d party on the ground that it was exclusive owner of rights in the image for purposes of merchandising.  Decided in 2002, but didn’t get further than the appellate court. Universal won.  Everyone has over his image an exclusive property right which permits him to oppose/prevent the distribution of that image without express and special authorization.  The owner can then contract about it.  He should be able to grant authorization for all uses, not just commercial ones.  Universal’s exclusive right is therefore perfectly lawful.  Property right created out of nothing and made huge and transferable.

Lefranc put together a chart: US and France protect privacy, but that is in theory inalienable.  Celebrities are protected by the right of publicity in the US and the right over the image in France.  How did it come about?  Originally in US through privacy waivers; in France for a long time these licenses were in the form of waivers/abstaining from enforcement as well.  Boundaries are similarly unclear: no decision of the highest court defining the regime in France.  Only considers the right of the person depicted, not countervailing public interest.  Grown out of a moral right into a property right with no legal basis and therefore incoherent.

Liu: if unjust enrichment is really the focus, then we’d expect the focus to be more on the user and on the rightsholder.  If that’s the case, the lack of separate defense seems really problematic. If you rely on internal limits, that won’t work—the right is vague and also you’re focusing on the wrong person. Defenses tend to be structured more on the actions of the defendant.  Important to have open-textured defense that allows multiple uses.  Because we don’t have a strong theory, rights like dilution become stronger; that same quality can become important in supporting privileges as you get a richer account of what kinds of uses are privileged. That’s lacking in the RoP.

Dogan: an external interest seems to be emerging from the cases, drawing on copyright and TM.  To the extent we see convergence, that’s through external limits/First Amendment intervention.

Maybe if the court had used the language of unjust enrichment we’d have better limits (as Beebe suggested for dilution).

Fromer: Rob Merges’ book has a chapter on the RoP and possible justifications for pulling back.  Any focus on what the rightowner does with her own rights?  Kardashian case: Old Navy says she has no reputation to protect.

Dogan: doesn’t really see that.  The question is whether the user gained value; and the First Amendment interest wouldn’t really be more weighty if the celebrity had no reputation.

Kur: German law: a written statute on the protection of images.  Born as a defense of the person whose portrait had been taken against the photographer/painter.  Gives the person a right to oppose distribution and display. Developed into basis for affirmative protection; has a catalog of limitations.  Doesn’t have any basis for damages. Courts have tried to find a basis for damages, partly because of the constitution’s protection for human dignity/free will.  Courts wanted to regard it as personal; reluctant to acknowledge financial aspects until a long time had passed.

Strandburg: is there some conception of unjust enrichment on the side of the plaintiff? To what extent is this value created by the public v. the person.

Dogan: Michael Madow and others have created a rich literature.  Cardtoons points to this principle as a basis for weighing RoP interests somewhat less heavily and weighing First Amendment interests more heavily.

Dreyfuss: interesting that of all these rights there’s no attempt to internationalize this one.

Dogan: no apparent constituency.

“Paracopyright”

Joseph Liu

Anticircumvention is a relatively recent addition to US law; hard to look for an untold story of an old case.  Most obvious candidate for major case, Corley, is not all that interesting.  In his view, it seemed pretty straightforward. Raised interesting First Amendment and fair use issues, but fit factually within what you’d expect the DMCA to cover.

He looked at the other case law.  Reported decisions: 50-odd. Something interesting: most observers are aware that the DMCA has been applied in questionable circumstances like Chamberlain and Lexmark.  The extent to which the DMCA has been so employed is surprising—most are cases that pretty clearly have nothing to do with what Congress was thinking about, which was protecting an underlying work. Majority of reported opinions at appellate and trial level had nothing to do with copyright. Being used strategically for some unrelated purpose. Corley is interesting as exception rather than rule.

Five categories: (1) Core cases involving CSS, cable TV, etc.  (2) Tying cases, plaintiffs using DMCA to tie products/services, like Chamberlain, Lexmark, cellphone. (3) Cheating in online games: enough to have their own category!  (4) Website access cases: people who use stolen passwords or evade CAPTCHAs; defendants have lost cases.  (5) CMI cases, almost all of which involve non-technical information—removing the credit from the photo as DMCA violation.

Implications: is this a big problem? Maybe reported opinions don’t reflect what’s happening.  Maybe you just need one big case to set the rules for an industry. Maybe this is just working out the kinks. Doesn’t think this is true because of the extent of the non-core cases.

Legislation and judicial role in an era of change: what should be done?  Limits of our predictive abilities and consequences of failure to predict.  Absolutist hopes and fears for perfect technological control, perfect markets.  Those discussions have faded into the background.  One view: this reflects that fears and hopes haven’t really been realized; maybe we underestimated markets & tech achieving their own equilibrium. Séverine Dusollier’s contribution: this is a sinister development as DRM has turned into/displaced social control, conditioning us to accept a certain kind of access to works in a way that’s largely invisible and shapes us without thought.

Maybe emphasize statutory rather than judicial origins and how that affected the development of the law. Lacks open texture, for good or for ill, making for different “foundational” opinions.  Ambiguity inherent in Haelan or Schecter is not the same—DMCA may have ambiguities, but lacks generative potential, which may be why Corley is not as interesting a case.  DMCA limits open texture not so much of the rights but of the limitations—no broad fair use defense. Expressly substituted a long list of very narrow exceptions.  Maybe that’s why there are so many cases falling outside congressional intent: no good avenues to get rid of them.

Dreyfuss: Equilibrium? Consumers have basically rejected encryption, but piracy hasn’t abated.  Attempt at statutory solution before nature of problem was understood. Also using the international stage at a very early point, putting it into the WIPO Copyright Treaty before we knew what would happen.  Database Directive is a similar example: the solution didn’t do anything there either. Semiconductor Chip Act.  AHRA.  DPSRA.

Liu: he means equilibrium not in the sense of solving a problem but in the sense of not making much difference. Despite all of this, Dusollier says, hasn’t seemed to be much litigation in EU over the extent of the rights or the extent of the limitation. 

Bechtold: the question is why US cases are so weird.  DRM is actually used in cellphones, printers; not used in music, so maybe not that surprising that you don’t see cases at the core.  European version: we don’t have that many cases, but the legal situation is different.  Access directive covers part of the pay TV stuff; cellphone cases fall under telecom regs; printer cases don’t work because of a different law.  So tech adoption may help explain differences.

Liu: you could imagine just a few cases in major industries that use DRM; counting cases may not be a good proxy, but it’s still interesting to look at what really gets litigated.

Fromer: fits into story of attempts to broaden IP rights. Path is closed off and rights claimant tries to find another path: printer company is trying to protect a function denied protection by copyright.  Game Genie: copyright law allows cheat codes, so rights owners use the DMCA to fix that.

Ginsburg: DMCA and WIPO treaties seemed to create a new access control right; Liu’s take is not inconsistent with that, especially the website cases.  Was under the impression that there were abusive cases, but once those got slapped down we weren’t seeing more.

Liu: not many more tying cases.  Cellphone cases though.

Ginsburg: videogame cases, though, she thinks of as an access right.  Consider discussing 1202 as being pressed into service as an attribution right, though drafting makes it difficult to bring successful claims.

RT: I wonder about the general failure to use the DMCA along with the “exceed authorized access” cases under the CFAA.  You see CFAA claims creeping into other unfair competition claims and that’s still very much a live issue; trespass to chattels also had its day in the sun. 

Liu: cases have been uniformly negative on simple passwords, but plaintiffs have won with CAPTCHA.

RT: Also, the DMCA is important in affecting institutional practices, like those of libraries and publishers: they won’t circumvent without an exemption even though no one would ever go after them for doing so.  Also, and this is more about Dusollier’s paper, people in Europe create a lot of remix videos despite not having an exception that applies (as we do for the DMCA and noncommercial remix)—they circumvent the DRM on DVDs a lot; it may be that there’s an equilibrium of nonenforcement, but that’s different than an equilibrium of nonuse.

Jacob: we don’t necessarily see the situations where no one litigates because they think they know where they stand.

Limitations – subject matter

Ted Sichelman

Renewal of interest in patentable subject matter.  Funk Brothers: A law of nature, phenomenon, or abstact idea are not patentable in themselves but an application of the law to a new and useful end can be patented. So what’s the pure/applied distinction?  Before Prometheus, the court said don’t split up the claim.  In Prometheus, the Court adopted point of novelty/inventive concept approach, looking only at the novel/nonobvious elements for purposes of patentable subject matter. So if the only thing that’s new in your claim is a law of nature you’re out of luck. You have to do something novel and nonobvious in applying the law of nature, not just instantiate it into a practical application.

Funk Bros.: inoculants to help legumes grow.  Different strains of bacteria and varieties of plants, with different strains working with each.  If you mixed them, they inhibited each other. Inventor figured out that some strains didn’t inhibit each other.  Then claimed the broad principle of mixing non-inhibitory strains together.

Majority said: however ingenious the discovery, the application is hardly more than an advance in packaging.  No different results from prior art of pouring two packages onto the plant. Frankfurter: everything that happens may be deemed the work of nature.  Dissent: claim was enabled, it’s a practical application embodied in packaging that serves a commercially useful end.  Frankfurther concurrence offered a scope theory: he didn’t really contradict the dissent, but Sichelman reads in to say that there are so many mixtures that are possible—and it turns out that this mix is still sold—that giving this person a claim over the entire range of mixes is just too broad. 

Prometheus then took a wrong turn.  If interpreted broadly (which the Fed. Cir. is unlikely to do) it could make almost every invention characterized as an application of a natural law; there are a lot of conventions, and you could call very narrow things laws.

Has some suggestions for factors that would help figure out what should be allowed, like whether the patent discloses a small number of embodiments but claims a broad application. Justine Pila suggests we need bright lines, but he thinks that ends up excluding too much.

Strandburg: one underlying thought: we have another system for discovering underlying scientific laws, which is called science. This helps gesture at the question of when/why we’d want to deny a patent to something new and nonobvious.

Sichelman: the point of patents is to create thickets and prevent innovation on downstream research; the question is when that’s ok.