Right of publicity question of the day

Does the mention of Lin-Manuel Miranda and his amazing, go-listen-to-it-right-now musical Hamilton, in this sponsored post at the Toast violate his right of publicity?

Silicon Valley darling uses negative option offers, attracts criticism

This Buzzfeed story suggests that JustFab, which received a billion-dollar valuation, has the same problems as previous FTC-targeted companies started by its founders.

seeds of disaster: Syngenta must continue to fight claims based on genetically altered seeds

In re Syngenta AG MIR 162 Corn Litig., Nos. MDL 2591, 14–MD–2591–JWL, 2015 WL 5607600 (D. Kan. Sept. 11, 2015)

 

Corn producers, non-producer corn sellers, and milo producers sued Syngenta because of its production of genetically altered corn, which allegedly harmed them in various ways. The court dismissed a number of claims based on failure to warn; trespass to chattels under all states’ laws except Louisiana; the corn producers’ claims for private nuisance; Lanham Act false advertising claims to the extent based on communications that weren’t commercial advertising; fraud and negligent misrepresentation claims; and some state-law consumer protection claims, while preserving other claims.  

 

Syngenta developed products called Viptera and Duracade, intended to make the resulting corn crops more resistant to certain pests, with traits known as MIR 162 and Event 5307, which isn’t creepy at all. Corn grown by farmers who did not buy Syngenta’s products gradually became contaminated with the MIR 162 and Event 5307 traits through cross-pollination from neighboring fields. Viptera- and Duracade-grown corn was also commingled with other corn in grain elevators and other storage facilities. Viptera corn infiltrated the general domestic corn supply.

 

China then began rejecting all corn from the United States containing the MIR 162 trait, which persisted for over a year. The loss of the Chinese market for that period caused prices to decrease in the United States, which in turn caused harm to plaintiffs.  According to the plaintiffs, Syngenta misrepresented the status, likelihood, and imminence of Chinese approval and the products’ impact on export markets, as well as growers’ and others’ ability to avoid infiltration of Viptera into the entire corn supply (through channeling and otherwise) and Syngenta’s own steps in that direction. Syngenta’s actions allegedly actually increased the risk of contamination and commingling of the corn.

 

The producer plaintiffs were corn growers who did not use Syngenta’s seeds in growing their corn. The non-producer plaintiffs exported, stored, transported, or sold corn. The milo (sorghum) plaintiffs alleged that the milo market in the United States was so closely tied to the corn market that they suffered the same economic damages that corn producers did.

 

On negligence, the court found that the plaintiffs had sufficiently alleged that a duty existed to take reasonable care in the marketing and commercialization of genetically altered corn.  The injuries alleged were not only foreseeable; they were allegedly foreseen, and Syngenta allegedly misrepresented the facts to the industry.  The court rejected Syngenta’s argument that a manufacturer generally has no duty to control third parties who buy and use its products, absent a special relationship, and that its corn was no different from guns, cellphones, or meth precursors.  However, plaintiffs sufficiently alleged that Syngenta failed to provide assistance (in the form of channeling and stewardship programs), without which producers and non-producers could not reasonably avoid contamination and commingling, and that Syngenta engaged in affirmative conduct that contributed to the harm.  The third parties here didn’t misuse the products, as with guns, phones, and meth cases; here Syngenta could allegedly foresee the “misuse” of the product by virtually every customer because they couldn’t avoid commingling.  Moreover, the victims weren’t random third parties, but participants in an interconnected market who Syngenta described as “stakeholders,” thus especially vulnerable to the allegedly wrongful acts.

 

Syngenta also argued that it shouldn’t be liable because its products were approved for sale by regulatory agencies, but it didn’t show that those agencies “necessarily approved (or had the authority to approve) the commercialization of its products in an unreasonable manner.”  (The court also rejected FIFRA preemption for the claims as asserted, except any claim based on an alleged failure to warn to the extent that the claim was based on a lack of warnings in materials accompanying the products.)

 

For similar reasons, plaintiffs adequately alleged proximate cause.

 

Syngenta argued that any claims for economic damages for negligence, negligent misrepresentation, or private nuisance in this case were barred by the economic loss doctrine, the rule barring a plaintiff from bringing a claim in negligence to recover solely economic damages, including damages based on plaintiffs’ theory that corn and milo prices dropped in the market generally as a result of Syngenta’s actions.  The court found that, contrary to plaintiffs’ arguments, they hadn’t alleged physical harm to their property, including contamination of their corn and harm to their equipment and storage facilities, because their damage theory was market-based (it wasn’t caused by contamination of any particular corn) and they didn’t plausibly allege that all plaintiffs suffered contamination of their corn. 

 

However, the economic loss doctrine is not always applied when the parties are strangers, rather than related by the purchase of a product or by a contract.  Only in seven of the 22 states under whose laws plaintiffs sued had even arguably applied the economic loss doctrine in a stranger case, and almost all were lack-of-access or public nuisance cases, where almost anyone could in theory be a plaintiff.  The court predicted that the presence of interconnected relationships and markets made this case inapposite for the application of the stranger economic loss doctrine in all 22 states.

 

Trespass to chattels: Louisiana doesn’t recognize the common-law tort of trespass to chattels, but instead recognizes a statutory cause of action for damage to movables; Syngenta didn’t make any arguments about that, so the court didn’t dismiss the Louisiana claim.  As to the common law claim, the court found that Syngenta wasn’t responsible for trespass just because it sold a product knowing that the product would end up interfering with the property of non-purchasers.  Plaintiffs didn’t plausibly allege that Viptera grown specifically by Syngenta intermeddled with their corn, although they could amend to identify specific plaintiffs where that theory was plausible, since Syngenta did conduct field tests in almost all the relevant states.  Moreover, the plaintiffs didn’t even plausibly plead that each producer plaintiff suffered contamination of its own corn in the fields or in grain elevators, or damage caused specifically by that contamination (as opposed to harm to the market for all US corn).

 

Private nuisance: Again, the general rule is that a seller of a product is not liable for a private nuisance caused by the use of that product after it has left the seller’s control, a rule that has been applied in asbestos cases, “even though that hazard exists even with the intended use of the asbestos-containing product.”  Likewise, the damages theory wasn’t based on any invasion of plaintiffs’ land.

 

Tortious interference with business expectancy by corn and milo producers: these claims, somewhat surprisingly, survived.  Plaintiffs didn’t have to identify specific third parties with whom they had expectancies, given the allegation of an identifiable class—purchasers of corn, a

commodity that is sold in a defined market. Nor did they need to allege that Syngenta intended to induce corn purchasers to stop doing business with plaintiffs, as long as they plausibly alleged that Syngenta had been substantially certain that interference would occur from its conduct. “One could reasonably infer from the facts alleged in the complaints that defendants knew that Viptera had not been approved in a key export market, that contamination of plaintiffs’ corn would occur after commercialization of Viptera without certain safeguards, and thus that interference with plaintiffs’ sales would be substantially certain to occur.”  Although Syngenta argued that it had no plausible motive to disrupt US corn sales, it could plausibly have wished to maximize its own sales regardless of whether corn prices were depressed generally.  Nor did regulatory approval of Viptera matter—it didn’t immunize Syngenta from liability for wrongful conduct in selling Viptera.

 

Lanham Act false advertising: Syngenta argued that its alleged misrepresentations couldn’t have proximately caused plaintiffs’ injuries under Lexmark.  The court found that plaintiffs plausibly alleged that Syngenta’s false and misleading statements caused sales of Viptera and Duracade, which in turn caused contamination. As for the “zone of interests” of the Lanham Act, Syngenta argued that plaintiffs weren’t competitors or in any sort of competitive relationship to Syngenta.  But Lexmark didn’t require such a relationship.  “Lexmark is most reasonably read as merely requiring that the plaintiff be a commercial actor, suffering commercial injuries (lost sales or reputational injury), instead of being a mere consumer who is “hoodwinked” into purchasing a disappointing product.”  The producer plaintiffs weren’t consumers of Syngenta seeds or even Viptera corn.  Their claimed injury, lost sales, was commercial, and they fell into the zone of interests protected by the Lanham Act.  This worked even for the milo producers, because of the allegations that the milo market was so closely tied to the corn market.

As for non-producer plaintiffs, they bought Viptera-contaminated corn. But they were alleging injuries not as buyers of such corn (consumers disappointed in the product) but as sellers in the market (as commercial parties).  Nor did they buy the allegedly falsely advertised seeds.  “[A]lthough they were arguably injured by getting different corn than they anticipated (because it contained Viptera), they were not trying to get corn made from Syngenta’s seeds (and thus were not an indirect consumer of the seeds).”

 

Commercial advertising or promotion provided more of a barrier as to many of the alleged misrepresentations.  The identified misrepresentations were in five places: (1) in Syngenta’s deregulation petition to the USDA; (2) in statements by Syngenta’s Michael Mack in an earnings conference call; (3) in a request form for Bio–Safety Certificates; (4) in a “Plant with Confidence Fact Sheet;” and (5) in a letter by Syngenta’s Chuck Lee.  Syngenta didn’t challenge that the fact sheet was commercial advertising or promotion.

 

Under Proctor & Gamble Co. v. Haugen, 222 F.3d 1262 (10th Cir. 2000), actionable the representations must be “for the purpose of influencing customers to buy defendant’s good or services.” “While the representations need not be made in a ‘classic advertising campaign,” but may consist instead of more informal types of ‘promotion,’ the representations ... must be disseminated sufficiently to the relevant purchasing public to constitute ‘advertising’ or ‘promotion’ within that industry.” The deregulation petition, as a petition to the government, was not obviously commercial advertising or promotion.  Though statements in government petitions could be made more for PR purposes/reaching consumers than for truly addressing the government’s requirements, plaintiffs didn’t plead sufficient facts supporting the inference that the challenged representations (about the financial effects of approval on the market for corn) were of that nature.

 

Syngenta also argued that the statements in the petition weren’t sufficiently disseminated to constitute promotion.  Plaintiffs alleged that online availability of the petition, and availability to any consumer who wished to review it, were sufficient, but without additional facts it wasn’t plausible to infer that “statements in a regulatory petition that is available—but not necessarily affirmatively distributed to anyone—were sufficiently disseminated to constitute promotion or advertising.”

 

Similarly, the earnings conference call was directed at investors and analysts, not consumers, and “[o]ne would not ordinarily expect a quarterly earnings call to be made for the purpose of influencing customers.” Again, without more, this wasn’t plausibly commercial promotion, nor was it plausibly sufficiently disseminated.  Mere availability on the internet didn’t equate with dissemination to the public.  “Plaintiffs have not pleaded that Mr. Mack’s statement actually reached some significant portion of the relevant public (customers of Syngenta).”  (I’m worried about this statement in other contexts—when advertising is directed at consumers, then the fact that we’re not sure how many consumers read it shouldn’t be dispositive, especially on a motion to dismiss; exactly how should a plaintiff plausibly prove that lots of consumers saw material on the defendant’s website, a matter within the defendant’s knowledge?)

 

Syngenta also allegedly distributed a request form for Bio–Safety Certificates issued by the Chinese government, knowing that it was useless in the absence of Chinese approval, in order to mislead farmers. But the certificates were provided to grain exporters and resellers, and weren’t pled to be used by Syngenta’s customers to influence sales.

 

Perhaps more used to securities law litigation, Syngenta argued that its statements were non-actionable forward-looking predictions and opinions. The court found that statements of Syngenta’s present expectations could constitute misrepresentations of fact.

 

Then came various state-law consumer protection claims.  Plaintiffs brought their Minnesota Unfair Trade Practices Act and Minnesota Consumer Fraud Act claims under the state’s Private Attorney General statute, only allows a private right of action if the plaintiff’s claim benefits the public. Since plaintiffs were seeking only damages and not an injunction, and since clarifying the nature of legal duties wasn’t itself enough to provide a public benefit (or any old case would qualify), the court dismissed the Private AG claims; there were no independent claims under the MUTPA (probably because only the Private AG statute offered the prospect of attorneys’ fees).  MUTPA doesn’t apply to merchants, but there was a fact question about whether these plaintiffs were sophisticated merchants in the relevant area.  (Wait, shouldn’t it be the actual purchasers from Syngenta whose sophistication is assessed, since it’s their purchases that allegedly provided the causal link between Syngenta’s conduct and the market collapse?)

 

Although Syngenta Seeds is a Minnesota corporation, the court concluded that Minnesota’s consumer protection statutes didn’t apply to non-Minnesota resident plaintiffs.

 

Claims, or parts of claims, under other states’ consumer protection laws survived: Colorado, Illinois, Nebraska, and North Carolina.  The court rejected various arguments that some of those states didn’t allow non-consumer plaintiffs.  North Dakota consumer protection claims were treated like the Lanham Act claims because North Dakota law prohibits the use of deceptive practices “with the intent that others rely thereon in connection with the sale or advertisement of any merchandise.”

 

More on VW and the DMCA

NPR has a short piece here.

Notice and Notice Failure at BU, panel 8

Robert Bone – Notice Failure and Defenses in Trademark Law

 

Bone’s basic argument: Principal notice issue in TM is uncertainty about scope, and principal problem is chilling effects. Bone finds an important distinction between unauthorized uses that implicate rights and uses that are valued only for efficiency reasons. Categorical exclusions work well for uses that implicate rights but not very well for uses valued only for efficiency reasons (except for trade dress).  Proposal: non-expressive nominative/descriptive fair use cases, and trade dress cases, should require proof of actual confusion (not just likely confusion) and significant risk of substantial TM-related injury to receive relief.

 

Favored/socially valued uses and possible susceptibility to chilling effects: four kinds.  (1) Copying/use of trade dress product design to compete in the underlying market.  (2) uses to inform consumers/the market about aspects of the D’s product—descriptive fair uses, nominative fair use, resale uses. (3) a special subset is use of the mark in technological contexts, such as metatags/AdWords.  (4) Expressive uses—gripe sites, parody, etc.

 

Causes of notice deficiencies & seriousness of the problem.  Less problem w/identifying a claimant to the mark, usually, b/c of public use requirement. Some favored uses even involve copying or knowing something about the P’s mark.  Real problem is the problem of defining the scope of the rights.  Likely confusion, dilution.  Two features contribute to uncertainty of likely confusion: it’s difficult to tell whether your use is infringing; fact-dependence generates litigation costs/risks that can be strategically leveraged to chill favored uses.

 

How serious are these problems?  Chilling effect is identified in the literature, but when you think about costs it creates, it’s not so much about impeding innovation, b/c that’s not what TM is for (unless you’re European), and it’s not about interfering w/ a licensing market; it’s not about info costs.  It’s just chilling favored uses through litigation cost/risk.  Break this down for different uses and users.

 

Trade dress uses: can they be chilled?  Large firms using marks to communicate information about their products?  Expressive/tech related uses are more susceptible to chilling effects b/c of risk aversion & resource constraints.

 

Maybe someone is chilled from a favored use b/c litigation cost/risk exceeds benefit.  Expressive uses are an example.  Magnified by risk aversion on the part of the expressive user.  Startups may be chilled—suffer from resource constraints and susceptibility to risk.  But trade dress involving established firms copying to compete in the underlying market, the benefit to them is large; don’t have resource constraints; don’t have high risk aversion. Instead, the cost may be greater than the benefit if preliminary injunctions are granted routinely.  But we need to think a little harder about why we have the problems and therefore how serious they are.  We assume they’re equally serious across the board, but maybe not.

 

What do we do?  A number of proposals floating around.  One way: narrow TM liability w/r/t sponsorship/affiliation confusion; post-sale and initial interest confusion.  I support that to some extent but you can cut back and still have chilling costs from likely confusion test—b/c it’s fact dependent it’s hard to get summary judgment/early decision.

 

Second way: categorical exclusions—defenses that protect favored uses, or some subset. Courts tend to resist that except in expressive use cases.  Problems of defining a favored use—descriptive use test has to figure out whether the use is descriptive; we could look at intent, but that doesn’t fit TM policy well; we could look at consumer understanding, but then the meaning of a use is contextual and must be assessed by reference to the market.  That reintroduces difficult factual issues.  Second problem: it’s not easy to justify, w/in TM policy, an absolute categorical exclusion. Much easier for uses that are protected by rights.  A right trumps/constrains utility; if TM is fundamentally utilitarian, a rights-protected use may simply override utility/TM policy.  However, for the rest of the uses, the policy goals of those uses/values of those uses is understood in utilitarian terms. 

 

Use procedural law & modify substantive test for favored uses other than expressive uses, nor trade dress which is also ok with a categorical rule.  For infringement liability, TM owner must plead and prove secondary meaning + D’s use creates actual confusion about source or sponsorship + significant risk of TM related harm that’s serious.   Tighten up on preliminary injunctions.  Escape valve/early exit from litigation for most favored uses.

 

Rebecca Tushnet: This is part of a story about what we lost when we abandoned theories of TM harm and shifted to theories only of confusion.  Also a story of First Amendment exceptionalism: expressive use?  Except for functional trade dress, constitutional lawyers would say it’s all expressive uses.  Even applying Central Hudson, current treatment of TM is, to say the least, underjustified.

 

Bone says: Categorical exclusions from coverage don’t fit well with TM and balancing tests are a better fit w/TM’s market focus, except with rights that serve as trumps (like the First Amendment).  (Which others?  The Second?)  But lack of actual evidence used in most balancing test cases makes this conclusion complicated.  True, courts say they are concerned with confusion, but then they routinely just eyeball the use—9th Circuit and 7th are the worst offenders.  The multifactor confusion test isn’t a trump-based rule, true, but it’s not really a marketplace test either—it’s an “imagine the marketplace” test and the question of whether that’s on balance better than a bunch of categorical rules is even more complex once we consider the costs of foregoing actual marketplace inquiry along with the benefits. 

 

Bone says we lack the empirical evidence to know whether the error costs from a rule in terms of missing actual confusion versus suppressing uses that aren’t confusing are greater or lesser than the error costs from a case by case standard, esp. in descriptive fair use/trade dress cases.  But that is true both in the context of rights as trumps and non-trumps.  Bone therefore attempts to set out when we should, for reasons based on our prior assessments of the costs of over and underenforcement, choose a rule or a standard.

 

Bone opposes rules (at least in non-trump cases) because a blanket rule encourages TM users to push the limits, and if consumers do blame the TM owner for a bad experience, then its ability to communicate will be impaired.  But in each case I’d want to ask: what is the TM user’s incentive to push the limits?  Maybe the argument is that we can expect a normal distribution of uses either affected by fear of TM liability or indifferent to that fear, so we can expect more confusion with a rule that is more protective of unauthorized users, but is that plausible?  For the example of expressive uses of marks, the likely motive is realism, as far as we can tell, or commentary on reality (in the Grand Theft Auto/Pig Pen case).  Those motives seem worth encouraging, and there is little reason to expect consumers are incapable of distinguishing the performance of a video game helicopter from that of an actual helicopter, even if they are customers of both (unlikely). Interference with social meaning—Veblen goods functions of a TM—seems distinctly possible, but that’s very different harm. 

 

Compare the incentive in a descriptive use case: the decided cases don’t give us a random sample of the relevant situations, but I can’t say I see many with motives to appropriate the plaintiff’s goodwill—instead at most I see indifference to the plaintiff’s goodwill and interest in using the descriptive benefits of the term at issue, from “Gatorade is Thirst Aid” to “Sealed with a Kiss” to “Own Your Power.”  If we look at descriptive fair use as another doctrine that gives trademark owners an incentive to choose inherently distinctive terms, then the argument for favoring trademark owners in cases of doubt gets weaker because such a rule diminishes the incentive function of the rule for trademark owners/choosers.  So we have to balance a lot of competing interests and policies.  (Also a related question: are the descriptive and nominative fair use tests rules or standards in Bone’s formulation?  Nominative fair use looks more rule-like, but concepts like using no more of the mark than necessary might seem standard-like.)

 

Really interesting argument in the paper: trade dress is good candidate for rules even though it’s not (always) a rights-based limitation b/c other identification means are always available w/r/t any given design.  TM owners may contest that—in Qualitex, would there be an equally perceptible symbol for non-English speaking users?  Or are you implicitly also disavowing post-sale confusion and similar doctrines in order to reach this conclusion.

 

Another important point from the paper: Descriptive use and trade dress provide us with big classes of cases in which even limiting liability to source confusion doesn’t do much to limit the scope of threats that can deter use.  So the many proposals academics have made to cut back on the idea of sponsorship confusion won’t help there.

 

Proposal: require secondary meaning in all cases involving nominative use, descriptive use, or trade dress, even w/inherent distinctiveness.  To prevail, plaintiff must show substantial confusion, likely with a survey, + serious risk of TM harm. If defendant’s products/services are high quality, then irreparable harm isn’t likely.  (1) Note that eBay may be doing this in all cases—any need for a TM specific theory?  TM owners abandoned harm stories and the confusion branch broke under them once eBay applied.  

 

(2) Is this really a shift from standards to rules or a hike in the burden of proof?  That is, suppose we didn’t require secondary meaning in all cases, just substantial confusion + serious risk of TM harm.  Wouldn’t we get the same results?  Is there any reason not to apply this standard to the entire universe of TM cases?  I take it Bone’s response will be that overenforcement isn’t as much of a problem in classic “does Borden for ice cream infringe Borden for milk?” cases as underenforcement is.  But do we actually know this? [Side note: any role for incontestability here?]

 

Stacey Dogan – Bullying and Opportunism in Trademark and Right-of-Publicity Law

 

Notice can sometimes feel like an undisciplined concept, applicable to any legal ambiguity.  Existence of notice failures that wouldn’t lead to bargaining failure—the accused infringer would just walk away. That’s a broader conception of notice, but really helpful nonetheless.

 

Paper contends that features of TM and right of publicity law make it costly and sometimes impossible to know when you need permission to engage in certain behavior or refrain from it.  A couple of wrinkles: motivated initially by an INTA panel on TM bullying.  Overclaiming or as PTO report to Congress said, abusive litigation strategies, enabled by ambiguities about contours of TM owners’ legal rights.  At the same time, working on right of publicity law, and people also worry about overclaiming in that context.  In both cases, ambiguity about outer limits of rightsholders’ interests generates overclaiming; this makes sense from rightsholders’ POV for several reasons.

 

(1) Notice failure about purpose, existence, and shape of legal rights.  (2) Unique to TM: notice failures in enforcement process.  (3) Legal incentives to assert rights against uses that neither harm them nor explicitly exploit the value of their mark in a merchandising way.  Trying to limit concerns about lack of notice, but hard to separate those concerns from substantive concerns—you really don’t like the scope of the right.  That’s true.

 

Why, what, and how: some of us like to talk about TM as protecting integrity of information to make markets more competitive. If that were the clear normative focus of the law, then even standards rather than rules could move towards a harm-focused regime that moved toward that normative goal.  But in many cases the law broadened away from competition-oriented focus, not always explicitly—protecting against the exploitation of parties’ trademarks.  This normative ambivalence makes it challenging to say clearly why we have TM and its limits.

 

Ambiguity in the what: not just likely confusion, but also protectability.  Whether trade dress has secondary meaning—who knows?

 

How: for right of publicity, expressive uses are the biggest source of ambiguity.  Where in TM Rogers v. Grimaldi we’ve moved towards clarity, right of publicity claims remain indeterminate.

 

Notice failure in enforcement: C&D practice is a primary source of actual practice of TM holders’ and users’ rights in marketplace, which raises real transparency concerns. Lawyers send letters; people back down either b/c they think the claims are plausible or it’s early enough in their business that they can change with less trouble.  You persuade the first recipients of your letters to back down, and then you have a record of enforcement that’s scary when you list the people who’ve already acquiesced in subsequent letters—a sort of common law.  Adjudication/rules/decided cases have notice functions of their own; if C&Ds are the de facto ways people decide what to do, risks a ratcheting up, similar to Jim Gibson’s work.

Exacerbating doctrines, most pertinent in TM: vagueness of boundaries explain veneer of plausibility for questionable claims.  Econ incentive to assert in many cases.  NFL threatens anyone who tries to refer to the Super Bowl nominatively in advertising. It’s ridiculous.  But they actually have an economic reason to do that.  What if there’s no harm/loss? B/c the rules of TM law encourage owners to stick their elbows out so the mark seems “strong.” Monster Cable & Monster Energy behave badly—Monster Cable went after Monster Mini-Golf. 

 

Bruce Keller, DOJ (formerly of Debevoise & Plimpton)

 

TM and right of publicity cause problems when cut loose to doctrinal moorings.  Some lawsuits are stupid and should be litigated to the point where that’s proven in court. 

 

Concept of bullying: I’ve written lots of C&D letters and responded to lots of dumb ones and never felt abused.  Didn’t reflect personal experiences [representing very well-represented and well-heeled parties!]—a lot of these complaints are anecdotal.  The label bullying/abusive masks a lot of what’s really going on.  A large company going after a small one isn’t the only scenario—a small one going after a large one for reverse confusion is also a possibility for use.  And this has happened for a while.  Oasis was sued by a small Italian wedding band from New Jersey in the 1990s—that’s not large v. small bullying but a small co. with a classic failure of notice.

 

Represented four companies getting demand letters from “History Makers” used in connection with educational services in relation to African-American history.  Those demand letters are silly, but not abusive.  Maine Lobster Promotional Council: “the ultimate white meat.” Pork producers sued the council; went away after pretrial conference, and they were shamed by publicity.  When dismissed, the council issued a press release: “We’re glad to have this behind us; we’re happy as pigs in mud.”  Bullying doesn’t explain these cases.  [Note that the pork producers went on to harass women selling pro-breastfeeding “The Other White Milk” shirts, so they may not have learned the lesson.]

 

Useful constraint: The concept of TM use: a material use in a purchasing context should be rigorously enforced; same with advertising or trade purposes in right of publicity cases.  Dryer v. NFL case, pending in 8^th Circuit.  Classic expressive speech about old NFL games.  There’s nothing wrong with sponsorship/endorsement being used in the right circumstances.  If you invigorate trademark use, you won’t end up with very many bad decisions.

 

There’s a huge difference between asserting a claim and trying a case to a successful conclusion. It’s easy to bring a claim and not so easy to win it.  [I say it as: when someone asks if they can be sued over activity X, I always respond ‘It’s America—someone can always sue. But can they win?’]  Example: Spiderman case, where the owner of building in Times Square sued for infringement b/c billboards had been edited to show ads for Sony’s co-promotion partners.  Laughed out of court, b/c Sony’s counsel said: the P’s theory of the case was that the billboards in the movies weren’t real.  But Spiderman’s not real either.  No TM use.

 

Lemley: sure, you can make a weak letter go away—if you can afford to hire Debevoise. The worry is the people who can’t, with no lawyer/solo practitioners.  Don’t we need more than “I can win this suit”?

 

Keller: True, though I was pro bono in some of these. The question is whether there’s a problem w/the law or with resource allocation of lawyers to people in need.  Not clear that retrofitting TM is necessary—overreaction.

 

Von Lohmann: I would love additional empirical evidence on chilling effects. Beebe’s research can’t help us, b/c chilling effect comes from demand letters and not cases. I’d love it if lawyers were required to send demand letters to chillingeffects.org.  But without that, we’re left w/anecdotes.  9 years at EFF = plenty of anecdotes of abusive demand letters. 

 

Keller: True, but we have much more transparency now than we did in the early 1990s.  Eat More Kale guy—more ability to spread the information than there was 20 years ago.  Do we need dramatic changes to the law?

 

Q: Early adjudications and sanctions should be more aggressively employed. Judges let cases go on so long that they become very expensive.

 

Keller: It’s very difficult to get—judges are reluctant, for lots of reasons. 

 

Dogan: Part of the reason is the incredibly fact intensive subjective inquiry—makes it hard to reject out of hand in some of these cases.

 

Bone: Sanctions can be part of a solution; there are costs to that. 

 

RT: move in © cases to dismiss on motion to dismiss in fair use cases. We could do better in TM too.  Have fees—if you bring a Rogers v. Grimaldi-barred claim that can be dismissed on a motion to dismiss, then you should pay D’s fees. 

 

Dogan: if courts take irreparable harm seriously, see fewer injunctions.  (I think this also affects plausibility of pleading harm, which may also be evaluated on a motion to dismiss.)

 

Bone: responding to RT: If eBay is fully implemented, then many of the problems we have may go away.

 

Q: practicing lawyer: People who start a business never imagine that they may succeed enough to get a C&D.  If we could teach solo practitioners to have TM search done at the outset that would be very helpful.

 

Bone: Note on expressive uses—I’m not talking about the constitutional right, but about the justification for the constitutional right—a moral justification that serves as a trump to TM utilitarianism.  If utilitarian/consequentialist justifications exist for the constitutional right, matters get more complicated.  (As indeed the justification for truthful commercial speech is.)

Notice and Notice Failure at BU, panel 7

Mark Lemley – Ready for Patenting

 

Patent’s problematic approach to what we want to encourage when we grant a patent. Long struggle with what you are giving us is simply an idea/conception or an actual thing/reduction to practice.  Various doctrines point in different, sometimes conflicting directions; most obvious is §102(g) priority rules under pre-AIA provisions—tried very hard to split the baby; invention is reduction to practice + conception + diligence in working to reduce to practice to figure out first inventor. Even pre-AIA, thumb on scale in favor of early filing/against reduction to practice in various ways.  Constructive reduction to practice is the easiest thing to do—get a patent application on file and you’re done in a priority contest; everyone else needs fairly substantial evidence.

 

If you have an idea, you can (1) tinker and try to make a working device; that’s costly and lengthy, or (2) head to the patent office, which is more likely to leave you labeled the first inventor if a priority dispute emerges.

 

Also, if you choose constructive reduction to practice by filing, there’s no need to show it works for its intended purpose.  If you make the thing, you have to show it works.  If you do the former, then if it works, you win; if it fails, no big deal. You do have to demonstrate enablement and written description, but enablement isn’t that difficult a burden.  §112 information required isn’t that difficult, b/c among other things the legal standard doesn’t require you to tell us how to make it work, only enough that a PHOSITA could make it work without undue experimentation.  Fed. Cir. has been quite dismissive of actual building/experimenting in various ways.  Definition of inventorship—court says the people who just built it are mere tinkerers and don’t count; inventors are the ones w/the idea. Infamous statements about software: you don’t have to disclose code or high level flowcharts because “actually writing a computer program is necessarily a mere clerical function for a skilled programmer.”  Heh.

 

If the pre-AIA statute put a thumb on the scale for early filing, AIA puts a fist.  And the elimination of experimental use (doesn’t think that’s right interpretation, but PTO’s implementing regulations say there’s no experimental use defense) makes it difficult if you wanted to keep tinkering before filing.  Even if the defense survives, it’s lost force.  Pre-AIA, once you were the first inventor experimenting, neither my own acts nor subsequent inventions could affect my patent.  Post-AIA, at most I get a year to prevent my own conduct from barring patent, but the only way to prevent other people’s conduct from being a bar is to make a public disclosure, when most experimentation by its nature is private. 

Result: patent info tends to be thinner.  We learn a lot by doing, figuring out what does and doesn’t work.  At the same time, patents tend to be written more broadly b/c not constrained by what’s practical or what works: write patents in broad functional terms precisely when they haven’t gotten the thing to work.  By encouraging early filing, we give the world less info and get broader/worse patents, particularly for software.

 

What can we do?  Require either commercialization or reduction to practice, says Chris Cotropia. Thinks that goes too far and is impractical for some technologies (e.g., my great idea for organizing a semiconductor fab, which costs millions). We’d like to have a world in which people who have a good idea but aren’t in good position to test it can sell it to others who are.  Paper patents thus serve a useful purpose but at a minimum we ought to be neutral as to whether or not you actually built something.

 

How?  (1) we ought to keep experimental use. (2) strengthen §112, particularly as applied to paper patentees.  Enablement standard should be raised, either across the board or for paper patentees.  Limit you to predictions you’ve actually made.  (3) small extension to prior user rights.  Prior secret invention no longer later prevents you from patenting, but in theory I have a prior user right.  We ought to extend prior user rights not just to commercial use but experimentation.  Building and testing before someone shows up at patent office = at least protect those people from being punished b/c they chose to build rather than simply to patent.

 

Paul Gugliuzza: There are still reasons to confer patent on the entity that wins the race to the patent office.  (1) Earlier expiration/entry into the public domain.  But is that really persuasive? How much will it matter? Related patents might also block entry. Paper might not want to concede benefits from marginally earlier expiration encouraged by early filing.  (2) Courts don’t have to conduct costly/context specific inquiries about diligence in reduction to practice; was the prior user really using it; etc.  Interested in hearing about cost/benefit tradeoff in messy validity/novelty fights. 

 

Enablement via prophecy: could we do that entirely? If so, what type of disclosure should we require, if you don’t want to go all the way to reduction to practice? What standard would go beyond “no undue experimentation”?

 

John Duffy – Counterproductive Notice Requirements and Literalistic Claiming

 

We’ve messed up and we should go back in time.  If law imposes difficult to satisfy notice requirements and invalidates the whole right as a penalty for noncompliance, the enforcement mechanism weakens notice. Invalidation of the whole right transforms imprecisions at the edges of the right where uncertainty is greatest into uncertainty throughout the entirety of the right.  (Encourages people to litigate even at the center.)

 

Major problem—pre-CAFC law tolerated fuzzy boundaries but provided more certain notice.  Return to pre-CAFC law because it’s based in never-overruled SCt precedents and b/c it’s superior public policy.

 

Liebel Flarsheim v. Medrad is a poster child for all that’s wrong.  DCt interprets claim term “inejctor” to be limited to injector w/pressure jacket; CAFC reverses b/c there’s no ambiguity. Years later, CAFC invalidates the claim b/c the specification shows no injector w/o a pressure jacket. 9 years of litigation to get the right claim interpretation only to have that interpretation invalidate the claim. That’s insane.

 

Things that are wrong w/CAFC approach: (1) consistently refuses to limit scope to structures disclosed in specification and their equivalents. (2) treats canon of construing claims to preserve validity as a last resort not a first principle. (3) eschews any attempt to discover the real merit of the invention as a step in defining rights. All represent abandonment of pre-CAFC law.  Many critics have thought these were symptoms of peripheral claiming and advocated for a return to central claiming (Lemley, Fromer)—but the CAFC is not doing peripheral claiming.  Prior-CAFC, peripheral claiming meant something much different: Risdale Ellis, who named peripheral claiming, said in 1949 that it measn that infringement requires: “(1) the claim must read in terms on the alleged infringing structure. (2) The alleged infringing structure must be the equivalent of anything disclosed by the patentee.”  Peripheral claiming wasn’t a rigid rule of everything within the claim being the patentee’s—a different version of doctrine of equivalents, in which the doctrine narrows the claims. That’s why old SCt cases are always talking about the doctrine of equivalents. 

 

CAFC’s literalistic one-step test of claiming is radically new and inconsistent w/SCt precedent and even CAFC’s own prior precedent.  They purported to adopt the jurisprudence of CCPA and the Court of Claims, and the latter used a requirement that didn’t just require the claims to read literally on the accused structures, but also a determination that the accused structures do the same work, in substantially the same way, and accomplish substantially the same result.  Autogiro v. US, triple identity test for doctrine of equivalents.  Very presciently said that making literal overlap only a step and not the entire test was consistent since 1898.  This is not an argument about a “defense” to infringement that CAFC has repeatedly rejected. This is a requirement of infringement analysis.

 

The consequence of CAFC change: allowing literality to satisfy the infringement test rewards literary skill/drafting, not invention.  Collateral consequences: traditionally we look into the art to find the real merit of the alleged discovery/invention.  Never discuss pioneering patents any more.  CAFC: validity preservation is a last resort only when a claim is still ambiguous after everything else has been tried. 

 

Patent claims are like metes and bounds system, which is vague and not certain, as real property authorities say.  When patent lawyers say “metes and bounds,” don’t think precision!  Think vagueness.  The terrain is irregular and mountainous; we’re stuck with metes and bounds, but then we need to use their tools—always try to preserve validity.  So practically, a cert petition should ask the SCt: whether a defendant may be held liable for infringement where the patent discloses nothing equivalent to the products or processes accused of infringing.  Prior-CAFC law: the answer is clearly no, not yes at is in the CAFC now.

 

Commentators: Henry Smith

 

Calls into question the assumption that peripheral claiming involves specifying patent’s outer bounds exactly; conventional wisdom is that central claiming started from the center and worked outwards.

 

Missing link: equity. Doctrine of equivalents is an equitable doctrine.  Explains how peripheral claiming works, why it fell out of favor, the limits built into it, and what would be required to bring it back. 

 

Equity is called for as a solution to opportunism; conflicting rights (nuisance); polycentric problems (like those that gave rise to class actions).

 

Older guidance: Ellis does say that doctrine of equiv. is used to narrow the literal claim. Also used to determine if a claim is too broad. Under peripheral claiming, DOE can be used to narrow a claim, never to broaden it, w/narrow qualifications. We rarely worry about patentee being too modest about claims. 

 

Why the change?  Fusion of law and equity; post fusion, function of equity can become obscure.  Equity either becomes the general case (realist, contextualist) or highly disfavored (neoformalist, literalistic). Suspicions about overexpansive IP and notice failure reinforce suspicion of equity. Does this apply in the narrowing direction, and if so how much?

 

Is equitable intervention (exceptional in principle) justified? Is the gain from preventing opportunism and solving complex problems worth the uncertainty that selective intervention causes?  We don’t trust judges w/notions of commercial morality etc. now, and if we don’t equitable interventions seem more problematic.  One last reason for pessimism: it’s time for the SCt to do something, Duffy says, but SCt’s track record on resuscitating traditional equitable doctrines is terrible; we’d get a 4- or 5-part test bearing no relationship to the doctrine he just discussed. Not willing to get on the equitable train if the SCt is the engineer.

 

Meurer: do you favor grace periods/international harmonization?

 

Lemley: if we could get other countries to sign on to a grace period as part of harmonization he’d be in favor. If it meant getting rid of any vestige of encouraging building the thing, then no.

 

Duffy: Landes wrote the bible on claim drafting in the second half of the 20^th century. In the 1970s he talked about means plus function; today the conventional wisdom is that’s narrowing.  Landes says in 1970s that’s not a problem b/c it gives you the broadest interpretation you’d ever be entitled to. This wasn’t a special rule for means plus function elements.  The standard rule allowed more functional analysis about how much contribution you’d made.  How can you tell how meritorious an invention is?  Even today, people will say things like “this is a strong case of obviousness”—how do they know? B/c we can tell the difference!  And if we can’t tell the difference between a pioneering advance that changes the art and a trivial advance, we have no hope of running a patent system.

 

Lemley: this is an explanation of why the abstract ideas branch of §101 is playing a new role: responding to the absence of constraint we built into the system a generation ago. One response is to go back to means plus function claims; hard to say that’s an abstract idea.  People w/the most difficulty doing that are the paper patentees, to link that to my paper.

 

Duffy: DOE was told to juries—so not equity in that way, and not equity just b/c it’s fuzzy.

 

Smith: equity can work functionally even on the legal side. 

Notice and Notice Failure at BU, panel 6

Margaret Jane Radin – Patent Notice and the Trouble with Plain Meaning

 

Notice is a cost and a cost-saver; hard to figure out its overall profile.  Plain meaning as ever-receding ideal.

 

Philips v. AWH (Fed. Cir. 2005); Festo (2002).  In Philips, Fed. Cir. laid out interpretive procedure agreed on by all but 2 judges to focus on entire available text, including prosecution history. Only useful from notice POV if they generate more predictable outcomes—but they still didn’t get the same answer when they applied the agreed-on interpretive approach to the facts before them.  Not clear that the interpretive models affect outcomes, compared to priors.  If context really does matter, then intuition is not necessarily a huge problem.  Maybe plain meaning is really closet holism.

 

Festo: Introduced the concept of describability.  Doctrine of equivalents and file wrapper estoppel.  At least estopped from claiming something described and disallowed during prosecution.  But broader implications: it’s a crucial issue whether an equivalent could’ve been described in language when the claim was drafted, and this can occur even w/o claims being amended.  Describability can change over time; if it was describable at the time of prosecution then you can’t get it, and if it’s only describable now then maybe you can.  Describable by whom? Great unanswered Q—we don’t want to think of patent prosecutors as co-inventors, but it’s a fact.

 

Other patent puzzles: if fully describable at the language of the time, is it then obvious?

 

Inventions are emerging knowledge, and thus plain meaning will be contestable, lacking the clarity its advocates hope for it.  The word describable is new in Festo but the older cases use the concept—the emergent nature, esp. of true breakthroughs—language only catches up. Thus the idea of the essential nature of an invention survives, even though it’s an echo of central claiming that died long ago and even though it’s anathema to plain meaning advocates.

 

Suzanne Michel, Sr. Patent Counsel, Google

 

Wasteful litigation boom.  Lack of clear thinking about claim construction is an important reason for lack of clear patent boundaries.  True, fencelike boundaries can’t be achieved when describing something that’s new. But it’s still a useful analogy/talking point/goal even if we can never get to that shining beacon—can still consider whether we’re improving or not improving.  Points out the shortcomings of the term “IP,” a boon for patent maximalists.

 

Judges make decisions for reasons they’re not fully examining in claim construction.  Unpacking methods will improve decisions. One frustration is the pablum that judges just apply the law, not make policy—that isn’t and can’t be true.  Plain meaning judges will often limit claims only if there’s a clear disavowal, which means that Philips didn’t change what it was supposed to.

 

Would focus on the context of the patent document. Often in litigation the words the case turns on is not one that has meaning in the art—“sandwich” in an electronics patent; so you have to lean on the specification.  Also relates to proportionality/patent bargaining: right should be commensurate with what you have given to the public, what is described in the specification.

 

In some cases interpreting a patent narrowly to sustain it is a better idea than broadly then arguing over invalidity.  When a patent is interpreted broadly and the only defense remaining is invalidity, people are coerced into settling.  Disclaimer approach (only limiting the scope when there’s a clear disclaimer) penalizes patentees who clearly describe their inventions.  People who have a patent for a fax machine then claim the internet infringes are a huge problem. 

 

Keith Hylton – Patent Uncertainty: Toward a Framework with Applications

 

Uncertainty has dynamic and static elements (uncertainty in determining boundaries of property  right).  Sources of static uncertainty include: (1) statistical artifacts from the sample of cases you look at. (2)  Inherent uncertainty, as Radin discussed.  (3) Strategic uncertainty: people gaming the system to use it to their advantage.  Static/dynamic balance is why increasing scope doesn’t always increase innovation: optimal scope (which applies to all property rights).

 

Statistical artifact uncertainty: Oversampling, as you oversample the bad drivers you encounter on the road.  Explosion of litigation costs in patent—timed to software patents.  Alice produced a sharp drop in patent litigation—at least 1/3 and maybe more.  Recent uptick in 2015, but not enough to take it back up to previous levels.  Suggests that knock-on effect of Alice was reducing this observation of uncertainty. 

 

Another feature of software patents: asymmetric information probably less of a problem than with things like medical malpractice. 

 

Inherent uncertainty: Courts start from maximal uncertainty about a case and try to work towards an optimal rule—this uncertainty is unavoidable.

 

Strategic uncertainty: deliberate use of vagueness to increase economic value of patent/expand its boundaries.  Four categories of uncertainty w/in strategic uncertainty.  First, inherent level of abstraction in the patent + notice.  Are you truly trying to tell people about the boundaries of this patent?  Abstraction: what applications, known and unknown, does this patent cover?  Abstraction can coexist with notice—they are separate in that I could patent the quadratic formula and then there’d be notice but lots of abstract uses.  Bilski: people know what hedging in the energy markets is and they know what a computer is so they know when they’ve implicated the Bilski patent. Abstract w/o notice is the most troubling quadrant (remaining: not abstract + notice; not abstract + no notice).

 

Algorithmic patents should just be unavailable/ineligible. But other software patents are worth worrying about.  Rowe patent: detects driver impairment.  We want that innovation incentivized in that space, so Alice shouldn’t be quick to kick out those kinds of innovations.

 

Benjamin Roin: Policy levers—blunt tools are hard to think about b/c there’s so much going on at the theoretical and empirical levels.  Some qualms about use of terms static/dynamic—in some sense static uncertainty about what a claim covers is always dynamic b/c you don’t know what tech will arise.  It’s clear that abstraction and notice aren’t the same thing.  Roin suggests: also considering patents as necessary incentives for underlying invention—that’s actually distinct from notice and abstraction.  Probably relates to R&D costs, market, uncertainty, cost of capital, cost of imitation.  If we want to get rid of chunks of patents, incentives should be part of that analysis.  Driver safety software: significant premakret safety testing, long time to market, need for licensing to big auto, need to create the market—they may or may not need a patent. 

 

Benefits of uncertainty: Incentive benefits of patents are highest when blocking copycat imitation and “fast followers.” Practitioner literature emphasizes difficulty foreseeing & drafting claims to block all design arounds.  “Ease of designing around” is most common reason patents are seen as ineffective in industry surveys.  Rules v. standards: vague(r) claim language helps or could help block mere design-arounds.  In tax rules, precision makes evasion easier.  Dissidents in USSR wanted clear standards so they could avoid censorship; censors refused so they could punish them after the fact. 

 

Notice to whom?  Potential infringers w/advance notice are more likely to avoid liability by designing around the claims. Copycats and fast follwers are probably most likely to have notice of the patent. Are we getting the worst of both worlds? Maybe we give sufficient notice & certainty to allow them to design around, undercutting main beneficial incentive effects; while giving insufficient notice and certainty to more substantive follow-on innovators (particularly ones in complex downstream product markets and ones in more distant tech/market spaces), exacerbating the system’s main adverse incentive effects.

 

Stan Liebowitz – The Benefits of Unbundling Copyright from Patent in Economic Analyses

 

© and patent are often lumped together in discussions, including discussions about notice, but they differ in important ways, leading to analytical errors when they are lumped together.  [Liebowitz thinks that it is easy to tell when you have infringed copyright because, except in unconscious copying cases, you know when you’ve copied and thus it’s easy to avoid, unlike patent infringement which does not require copying.  This entirely ignores idea/expression difficulties and his own discussion of genre and how no copyright owner can own an entire genre even if she creates it.  By definition, creators who participate in the genre know of the existence of the founder, and their question is how close they can go.]

 

Notice costs are resources used to impart ownership information.  The idea that IP/intangibles have higher notice costs than tangible goods. This may be true for patented goods; less likely to be true for copyrighted goods. 

 

Simplifications: creators of new works try to avoid infringing previously created works or wish to get permissions.  This is the forward-looking view.  I will assume © lasts forever with no limitations on ownership rights, which eliminates the need to examine the costs of dealing with restricted ownership, such as fair use or compulsory licensing.  [So, assuming a can opener, © would be different from patent?  And yet it’s still not true b/c of idea/expression.]  If you don’t copy from someone else, it’s ok.  If you never saw the first work, it doesn’t matter if the second looks like it.  [The other important thing he has assumed away is any difference between “never saw” and “never copied,” which is idea/expression.  And yet successful works are seen and heard by millions, because that’s how they have value.]  It’s perfectly fine for the Beatles to write “Back in the USSR” to josh about the Beach Boys’ “California Girls” b/c all they took is the idea, so they don’t have to worry about notice costs. There are no notice costs as long as people are only creating new stuff.  This is possible in © but not in patent or real property.  [It’s distressing to me that he doesn’t notice the contradiction inherent in his story of the Beatles creating as a but-for consequence of the Beach Boys.] 

 

Of course, this isn’t the real world.  There are copiers out there, and that produces notice costs for permission, evasion, or application of exceptions.  Costs are higher b/c copiers want to avoid payment by checking on whether works are in © (or limits apply)—duration imposes extra notice costs.  Fair use imposes extra costs, but these are not notice costs b/c neither the owner nor the copier can tell another whether a use is fair use.  That’s a cost, but he doesn’t want to call it a notice cost b/c it comes from the legal system and not from a claimant thereunder.  We have decided to bear the costs of having fair use.

 

Bottom line: copyright has lower notice costs than other properties for works created de novo, at least when people know when they’re copying. Guesses that majority of works that have market value are works of this type.  Thus, patent notice costs are likely to be higher.

 

Wendy Gordon: Key point: he reminds us that if we’re not copying, we don’t need to worry about copyright, in the abstract. In the concrete, given the ubiquity of works, you can be forced to prove you didn’t copy b/c access will be possible.  The practical issues arise, though perhaps not to the extent as in patent. Favorite example: Spider Robinson’s sf story, Melancholy Elephants—if we knew our borrowings all the time we’d always infringe; we need the ability to forget.

 

Notion, adopted as a matter of mere convenience, of inherent copyright (that lasts forever with no holes)—it’s inherently contradictory.  If a copyright were completely owned, then its ideas would also be owned. A classic ambiguity—and you’re trying to rule out ambiguity—is idea/expression. We also recognize indirect liability: if I copy Stacey & she copied Fred, Stacey’s grant of permission to me doesn’t help my violation of Fred’s rights.  

 

If your hypothesis is that everything the creator did was new, you have the paradox of human creation—language is not new.  You are always building on the foundations built by others.  There is no such thing as inherent copyright.

 

Patent too often takes for granted that independent inventors, if they come/file later, are guilty of infringement. This gives rise to trolling/submarine problems.  Arguing that patents shouldn’t have a defense for independent inventions because that would be inefficient requires some heroic assumptions.  She’s never been persuaded that simultaneous invention justifies the absence of an independent inventor defense; also seems inconsistent w/ human rights entitlement to the fruits of one’s own labor.  Winner-take-all seems unjustified.

 

Lemley: for Radin: Agrees w/approach and suggestion that plain meaning won’t bring clarity. Take your argument to its logical conclusion, and it’s not obvious that adding more words on top of the claim gets us any further.  Claim construction = lawyers fight about meaning of claim construction.  19^th century model: would we be better off w/central claiming and what the patentee actually built, not what the lawyer wrote?

 

Radin: sympathetic to that—we do that sub rosa.  Causes judges sometimes to construe “plain meaning” broadly.  Thinks we always have both.

 

Menell: pragmatic issues around Markman hearings are so strong—dealing with judges not trained in these areas—you need assistance finding the essence of an invention. © also needs a Markman process trying to delineate what the uncopyrightable elements of the work are for the jury. That’s an important part of the translation. 

 

For Roin: suggests benefits of uncertainty, but you can’t have a public system of property rights w/o a serious public disclosure of boundaries.  Left w/trade secret if you don’t want that.

 

Roin: It’s a rule v. standard thing—ex ante v. ex post.  (So I take it that central claiming could address some of his issues?)

 

Q: when you have a patent, you have multiple claims, not just one claim.  The life of a patent isn’t over during the span it’s in effect.  You can cross-license with an improver.  You can use continuations to extend its life.

 

Radin for Michel: Michel suggested that boundaries were a good analogy/aspiration, but Radin thinks it can be a misleading one.  We still have lots of agreement about what judges are doing.

 

Chiang: You can’t capture the policy goal of complete definition with language. But if you want a rule w/ a result that’s clear one way or another in a particular case, then you can provide notice/plain meaning—everyone can predict the result ahead of time.  Radin claims that the fact that judges purport to apply plain meaning doesn’t show such a thing exists, and he agrees. But the fact that they disagree on what the plain meaning is also doesn’t show there is no such thing as plain meaning.  You have to add in dishonesty [Radin clarifies: not in the sense of lying, but in the sense of having intuitions that are not fully explained].

 

Radin: we can get many easy cases, but when there’s a lot of money that matters we won’t get help from plain meaning.

 

Chiang: but as a philosophical claim that plain meaning doesn’t exist, it’s a problem that your claim only covers hard cases, not easy cases.

Radin: sure there is plain meaning when we all agree, but that’s not b/c of inherent meaning but rather b/c we all agree.

 

Henry Smith: can agree that plain meaning doesn’t exist in practice/hard cases but still not think it necessarily matters.  You could think language is indeterminate, and nonetheless formalism/contextualism depends on the nature of the system. We have different varieties of English, some more and less formal.  There’s a dividing line about what we should care about. The plain meaning folks are saying “in this context, we need only so much information, not more, to do what we want done”—that’s a pragmatic judgment. Philosophy of ideal points doesn’t tell us much about that.