Paper 1: Jessica Silbey, “IP at Work: The Roles of Law in
Creativity and Innovation, Chapter 5: Reputation”
Interviews with creative professionals/facilitators. Topics: Claiming, disputing, protecting
either with reference to law or with something they want to be a
rule/law-like. Are they really
describing law? They’re talking about
things they care about and wish they could protect—so what is law? Research is highlighting IP-like claims to see where/if
there’s an alignment with the rules as lawyers understand it. Asks how they start work; how they keep working
every day—those don’t align at all with IP—beginnings emerge from serendipity,
pleasure, play, urgency, need; work every day is all about labor—employment
law/contract relations. Also asks about making do: how
they actually make their money. Answers are varied;
only in isolated places is it clear that IP funds livelihood.
Reputation is a big theme: most people cared most about
public image and the intrinsic value of their identity as they understood
themselves. This was paramount. There was a misfit/misalignment with legal claiming—many
would go to copyright or TM when they experienced reputational harms/wanted to
protect reputation in anticipation of harm.
They don’t care about the IP regime but want to manage reputation with
legal restraint or with private ordering/norms. The IP rules we think of
–consumer search costs, improving quality of goods—don’t fit very well. Under and overclaiming are ways of describing
from the ground up what people are claiming/saying about their work.
Conclusion of chapter still undefined. Misfit/leakiness between reality and legal theory is a problem if we want to
say IP is doing what it’s supposed to be doing.
If the interviews are descriptively accurate, that decenters IP from its
important role in making art and science happen/get it distributed.
My thoughts: Quote from the paper: “We are different than
other companies, where we don’t say, ‘All right, now we own your
property.’ We partner with them, and we
take it out together. … it’s just, it’s
an ethical thing for us. You know? …
it’s their baby …” I would suggest
interrogating that further: who are those bad guys/other companies, and what do
they think about the child metaphor? Who are your informants constructing
themselves against in the creative sphere?
Underprotection section seems to equate “branding” with “making
legal claims of ownership” and I’m not sure that works on either side: paper
suggests that people often “under-protect reputational interests by avoiding
self-conscious marketing”: this is using the concept of protection in two distinct ways that should be
disaggregated more clearly—legal (making claims to TM ownership) and outcome
based (preserving a reputation as an independent/as an entity or person not
concerned about “brand” but only about truth/etc.).
Any traditional infringement scenarios in your interviews,
or all expressive uses? Bill McGeveran asks likewise:
what are they worrying about?
A: counterfeiting came up a couple times when I pushed the
interviewee, but mostly they aren’t worrying about likelihood of
confusion. Many say that name
recognition/reputation is everything; different industries really matter in
terms of what they worry about.
Who are the bad guys?
Lawyers were the ones most self-conscious about fitting their clients
into a structure that somehow needed justification. One lawyer talked about
working hard to convince engineers to file patents. She perceived herself as representing the
“bad guy” against the people who just wanted to share. They justify their behavior as commoditizing
stuff so we can pay you.
Bill McGeveran: Not happy with overprotection/underclaiming
frame. Alternate frame: These are things
that my interview subjects hate that the law probably doesn’t address, and
these are things that the law covers but that my interview subjects don’t
necessarily worry about. What is the
baseline? Are you assuming that the law
is? Is that normatively justified? It’s certainly not that you want to say
“these guys aren’t making all the claims that the law allows and that’s misguided.”
Christine Haight Farley: also wanted more clarity on
over/underprotection.
A: Hard to extract these categories from the varied
responses of the interviews: inherent messiness.
Discussion back and forth of the way to avoid the message
that “mismatch must be corrected.” It’s
not just that people wish that the law would do more and that they don’t care
about some things the law presumes they care about. It’s that the law purports to grant TM for
reasons that many respondents don’t seem interested in.
Lisa Ramsey: so what are the goals of TM? Law takes into account interests other than
those of TM owners. Can say: this is
what TM owners want; should reputation be more important in TM, given the need to consider competing
interests?
Silbey: if we are willing to accept the idea that IP is more
than a wealth creator, then we have to have evidence for that. The way IP gets made and enforced on the
books has little to do with moral rights, which is how interviewees are
speaking about it. We need another
story/admit that IP law doesn’t read on creative practice.
Irene Calboli: Distinguish TMs from brands. Brands = reputation. But what is a brand from TM’s
perspective? Is goodwill reputation?
Mike Carroll: agreed.
Part of the story is people who perceive themselves to be creating
value; the value is associated with reputation. You might disaggregate what
reputation is doing. There are personal and
commercial dimensions. This value is important because it has a
market/competitive function. TM polices the edges but not the whole thing. Brand management team: feels a sacred trust
with the product; the feeling is really religious—must protect the brand. TM doesn’t police that. New Coke: Coke lost $30 billion in
goodwill. Part of the reason there’s not
a close mapping to interviewees is that they’re talking about value/reputation
in the market and they only go to law when there are edge behaviors they need
to place.
Farley: that was Schechter’s concern as well.
Silbey: rarely find law except from lawyers/licensing
officers, and even they are talking about brand rather than TM.
Mary Wong: domain name side—lawyers also use the term “brand
owners.” Worth distinguishing,
especially for non-IP lawyers who might be reading.
Glynn Lunney: also wanted to press on is/ought. There are always difficulties in coding
qualitative data.
A: Right, but Silbey is trying to show that the incentive story of
IP is not the only story. Showing variation in how and why people work, and
make money, is a useful result.
Quantitative data is not the only way to show that. We can argue about meaning, but we should be arguing about meaning!
Mark Bartholomew: why not cover publicity rights? People do make (dumb) incentive arguments for
such rights. One quote talks about how
the interviewee doesn’t care about what happens after he dies.
Leah Chan Grinvald: industry really does matter—creative
industries are going to think differently about TMs.
Paper 2: Mark Bartholomew, “Trademark Morality”
TM purports to be about search costs/rationality. This isn’t really true. Having taught TM, noticed pockets of doctrine
that didn’t match the search costs rationale.
Judicial decisionmaking: when/where are judges invoking a moral sense
instead of an economic sense? Moral
psychology: how people make moral decisions.
History: early 20th century cases, courts are more willing to
explain their moral decisions explicitly.
Decisions are made on the ground. Descriptively, human decisionmaking systems in each brain: System 1 is deliberative;
system 2 is quick and emotional, very sensitive to context and culture. History informs the culture that leads to
particular moral judgments. Moral
foundations theory: there are various major foundations for moral decisions: care/harm; fairness
and reciprocity; etc. What does it mean
for something to be unfair? How do
people view the marketplace? Early 20th
century: market is seen as a crucible for forging character—learn to steer between honest
and dishonest people. Personal names
privilege: defendant has a privilege to use his/her own surname, which around
1900 was absolute. The power of this privilege waned over time, but
we still have a perk—courts are reluctant to force defendants to give up their personal
names, using disclaimers instead of bans.
Another example of fairness: TM’s fixation on intent, which Barton
Beebe’s work shows is key. Intent to
deceive makes sense as a factor, but intent to make use of another’s goodwill
is also punished because judges think it’s unfair.
Another moral foundation: purity/sanctity; avoiding
contamination/disease/sexual partners who might be diseased. Connected to TM’s relationship to
sex—dilution by tarnishment now has a presumption, in 6th Circuit,
that use of a famous mark in a sexual manner presumptively creates tarnishment—even
for Victoria’s Secret, whose TM is already drenched in sex. Double standard: Adults ‘R Us enjoined; Guns
‘R Us not even though Toys ‘R Us was one of the first stores to ban toy guns. Courts presume sex is harmful/damaging. Pink Panther case: cheapens the mark to be
associated with homosexuality.
Finally: loyalty to ingroup/respect for
authority—nationalism in TM reflects this.
McGeveran: Pink Panther is important because Judge Leval is
so well-regarded. (I’d also note that he
decided the Farmer’s Almanac case the other way, finding no infringement, at almost the same time.) A per se rule about sex could be brought back
to an economic argument—we know that sex tarnishes, not because of our morals
but because of “the market’s.”
(This strikes me as too naturalized—compare Palmore v. Sidoti, which says that courts can’t
accept racially discriminatory social mores as reasons to accept a harm story,
even if the racially discriminatory attitudes do exist; Title VII cases are
similar with respect to BFOQ for sex.)
Farley: if sex necessarily tarnishes, Victoria’s Secret
shouldn’t be able to maintain a dilution claim, nor the Dallas Cowboys
Cheerleaders.
Bartholomew: right, it’s interesting/disturbing that these
launching points are sexualized marks.
Maybe tarnishment is about disturbing you in your head. (The Centerfold
argument.)
Me: Compare what the counterfeiters say about the morality
of what they’re doing. Many, especially
if the mark is a foreign one, may not care about the TM owner’s interests for
the same in-group/nationalistic reasons.
Bartholomew: other values in TM law are often mentioned but
rarely articulated—it’s not just free expression and search costs. What else is there that hasn’t been teased
out.
Ramsey: compare morality in EU—different kinds of
comparative advertising generally not allowed/concept of using the goodwill is
much broader.
Lunney: the most important consideration in a TM case is
which judge you draw—some are really willing to find confusion and others
aren’t. Judges make up their mind
quickly and evidence is rarely helpful.
Is that morality? Or some other
heuristic? Anti-Monopoly case as an
example: taking a Parker Bros. TM away sparked the kind of outrage one
associates with a moral response and even resulted in an amendment of the
Lanham Act.
The personal name privilege got cut back because people abused
it—finding a person with the appropriate name to lend it to the venture. Sex: if customers are offended, even if
there’s little chance of confusion, any confusion that does occur will be extra
harmful.
Wong: in thinking about morality, is it framed as the public
interest?
A: sure, it’s characterized as protecting consumers from
inefficiencies.
Wong: that makes it very hard to ID the morality.
A: yes. Will try to make
that point more forcefully. Judges think
they’re deciding based on X, but internal, unexpressed considerations are
guiding that.
Wong: also look at UDRP/bad faith standards. Those are explicitly moral.
Greg Lastowka: if it’s really morality underlying this, that
creates serious due process concerns: what is the standard D is supposed to
follow?
RT: Another source of examples: the “irrelevant” facts that
appear in opinions that aren’t really irrelevant at all because they convince
the court that, for example, the
defendant is more sinned against than sinning.
Some discussion of the socially constructed line between
“legitimate” sexiness and immoral sex, as with the Dallas Cowboys cheerleaders
and Victoria’s Secret.
Carroll: we used to have a broader language about the morals
of the marketplace. We have some
baseline level of morality, but it differs: in the past it was caveat emptor, you’re supposed to
protect yourself—some things are still immoral in that universe. Now it’s not morality but “business ethics,”
but we still have a sense about what kinds of competition are “wrong.” But what is it that triggers that
impulse? The foundations approach can
help, but you need not marry yourself to it especially since what counts as
immoral/etc. varies over time.
Farley: it sounds like you want to accept morality as a
value as long as we think clearly about it.
Farley is much more cynical about that.
Paper 3: Leah Chan Grinvald, “Trademarks and Free Speech
Justifications: A Comparative Analysis”
Goal for book chapter: educate Israeli academics who may not
have a lot of background in TM law. Israel stands in the center of EU and
American approaches to TM and free speech (and comparative advertising more
generally). Similarities to Asian law of
comparative advertising. Asia is even
more strict than EU, which has relaxed its ban on comparative advertising, but
South Korea and China ban it.
McGeveran: for a US audience, more Israeli law. Expressive interests in TM—people want
T-shirts that express something about themselves.
My thoughts: Comparative advertising theory—most countries give very little protection to commercial speech. Talk about why: why it is so
risky to have self-interested commercial speech (this will help the US
audience, which is relatively unfamiliar with these arguments)? Different theories of the baseline skepticism
with which consumers empirically do and normatively should approach commercial
pitches.
Lunney: Substantive justifications for First Amendment
rights—important to us as a people, but it’s not clear why the courts should
enforce that instead of having Congress implement that—add a process based
account for why political speech is at the core; that could diminish the
personal expression/commercial speech interests; think specifically about why
we might trust or not trust the legislature.
Historically, we had double identity same as the EU; likely
confusion was used as a tool to expand
the scope of confusion, and then in the US we doubled back and got rid of
double identity as a separate head of liability so it’s all confusion now.
Ramsey: Internationally, people are trying to get
registration for their marks for the provision of information—if they do that,
they can stifle speech under the double identity rule. TMs as property aren’t the end of the
story—they need to be balanced against, for example, competition in the
EU. Can even frame commercial speech arguments
as competition arguments—competitors’ comparative advertising, consumer complaints.
Bartholomew: why is Israel drifting further from the US
approach? Even rank speculation would be
of interest. Is there really a drift,
though? It’s not clear whether Israel is
hanging on to a general confusion requirement—is the McDonald’s case (where Ariel
McDonald’s appearance in a Burger King ad was held to be an infringement)
an aberration?
Grinvald: thinks there is a drift towards Europe. They call themselves a mixed common/civil law
jurisdiction. Thus a split in desire to change via common law judicial
decisionmaking v. statutory; getting anything through the Knesset is a big
task.
Farley: note that US might not be the most protective—South
African Black Label/Black Labour T-shirt case.
The South African court cites US law throughout, but finds in favor of the T-shirt creator,
which she thinks might not happen here because of the different values—they’re
more sensitive to racial messages that have a political valence even if the
parody is not obvious. (I think the
chances are good that it would be the same result here.)
Grinvald: Israel does have a history of passing
off/confusion too. Not sure how deep
they are on general business torts/unfair competition. Well-known marks doctrine exists, but they’re
rather wary of it. Likely association
isn’t enough; there’s a confusion element.
Paper 4: Lisa Ramsey, “Mechanisms for Limiting Trademark
Rights to Further Competition and Free Speech”
Structure of TM decisionmaking is her focus (with coauthor Jens
Schovsbo). Int’l law currently doesn’t require TM limits to protect
competition/speech, but you can. Proposals to impose certain limitations
exist. Domestic law: what is the best
way to achieve the correct balance?
Internal limits on TM law (rules, standards, “trademark use,” limiting
subject matter/higher standard of proof for particular subject matter;
commercial use requirement; various defenses such as descriptive fair use,
parody, etc.) or external (constitutions, human rights treaties protecting
expression, competition law).
Carroll: for copyright, we are trying to draft a model open
clause that isn’t fair use as such but could be transposed into national law in
various countries. We’ve been wrangling
with sources of resistance: critics say it’s too uncertain! That’s total nonsense because judges are
willing to take liberties with code text, but people still resist explicit
delegation of interpretive authority. In
copyright law, when you think of modes of security, there are intermediate
modes like presumptions and safe harbors are ways to set a bias in a particular
direction without an absolute. Ex ante
uncertainty can also be addressed—advisory opinion mechanisms?
Bartholomew: one problem with US TM law is that the First
Amendment is too external; courts don’t use it enough. Constitutional/international sources—how do
we guarantee that they’ll be noticed/used?
Ramsey: because the US has a case by case, contextual
analysis, it incorporates concerns about speech within the internal tests. Europe doesn’t have that ability (arguably,
though things like “undue cause” in dilution could be interpreted in this way) so arguably it
needs greater recourse to external sources like human rights treaties. Case by case decisions mean that no one will
step up and call dilution unconstitutional.
Our proposal offers a statutory list: things that a national legislature
has decided are important. Then you have
the possibility of additional arguments on public policy or
constitutional/treaty grounds.
Markholders criticize such proposals on uncertainty grounds, but we’ve had such an expansion
of TM that the balance isn’t right now.
We don’t propose specific solutions as such, but want nations to
consider alternate stories about competition and speech. Statutory exclusions might work best in civil
law countries. Legislatures need to make
more clear what they are doing and what they want TM law to do: what’s the
function of a TM? Well-represented Ps
face under-represented Ds, and Ps can tell convincing harm stories and there
are less skillful public interest defenses.
Farley: consider other comparative analysis: Australia is a
common law system with a lot of exemptions.
TRIPS says exceptions are permissive provided they take due account of
TM owners’ rights (as well as the public’s).
Say more about what that might mean.
(Would need an account of what interests TM legitimately protects.)
Ramsey: in the long term, the aim is to prevent TRIPS-plus
from ratcheting standards up further.
Wong: can these proposed changes be made without changes to
the Directive?
Ramsey: the EU should change its laws at the level of the
Directive so that nations can do this, and other nations should as well.
Lunney: we all know the capture/public choice problem with
the legislature; underfunded defendants who just want to get out of this one
case are a problem with the judiciary/common-law development. If we have only those two mechanisms, need to
think about comparative institutional competence and where the worst lawmaking
failure is likely to be.
Ramsey: we advocate for belt and suspenders approach.
Lunney: with the legislature, you might be able to convince
them to recognize some important limits—TDRA did. The dynamics are different with legislation.
McGeveran: if people on the other side (TM owners) really want something
done, there’s room to move. ACLU etc. said “we’ll make it really difficult to
pass a fix to the dilution law unless you have limits,” and they were bought off with clearer exclusions. In the absence of a Victoria’s Secret case to fix, it wouldn’t have happened. But cases to fix do come up on a reasonably
regular basis.
Focus on how long and expensive a fight is likely to be—a
clearer rule can lead to cases being dismissed earlier on. But worrying about outcomes v. process in Europe may be different—in the US, courts generally get it right
in the end, but they take so long/make Ds wait for summary judgment so often
that there’s still a huge chill. So think
not just about outcomes but about impact on prelegal dispute resolution
processes.
Lastowka: fee-shifting, for example, may matter. Penalties
for frivolous complaints/UK threats action.
Wong: Doesn’t like the terminology of “user rights,”
especially not as equivalent to “safe harbors.”
Being in a safe harbor isn’t the same thing as having a right. Calling something a noninfringement isn’t the
same thing as having a right. If it’s a
right, what’s the source of law? TM
isn’t the source of the right.
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