AU TM roundtable, part one

Thanks to Christine Haight Farley for organizing!

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 20^th 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 20^th 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 6^th 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.