Wednesday, November 30, 2016

New edition, Goldman & Tushnet, Advertising and Marketing Law

Eric Goldman has posted all about it, including an overview and links for where you can get your own fresh copy.  Eric did the heavy lifting on getting this out, and I really appreciate it.  I also am personally satisfied with the revised disclosure materials, which incorporate recent FTC activity and the DC Circuit's AMI decision applying Zauderer to all mandatory factual disclosures.

Tuesday, November 29, 2016

Reading List: Legal Amateurism

Legal Amateurism, Annelise Riles

 Academics in the humanities and social sciences have often remarked upon the “amateuristic” quality of the analytical tools used by legal scholars. Rather than dismiss this quality out of hand, this paper approaches “legal amateurism” as a practice of knowledge production that can be studied ethnographically. The type of academic work produced by legal scholars expresses a unique relationship between scholarship and practice that bears the imprint of both the Formalist and Realist legal traditions. A certain degree of amateuristic scholarship, especially if it pertains to topics outside of one’s immediate area of expertise, provides legal professionals with a space for thought, reflection, and play – elements that are experienced as sorely lacking in today’s fast-paced, highly technological world. While amateur, non-monetized work can be a way to accrue symbolic capital or demonstrate a certain level of privilege, it also offers legal professionals the opportunity to refresh and renew their commitment to their own work and the legal profession more generally. Drawing on examples from the eccentric scholarship of John Henry Wigmore, as well as the drafting of technical documents in a Japanese bank, this paper argues that a certain aesthetic of amateurism lies at the heart of what it means to be a legal professional today.

ABA Blawg 100/Hall of Fame

I’ve made the ABA Blawg Hall of Fame, as well as the Blawg 100, which is very nice.  I believe it’s in part a reward for persistence, as I’ve been at this since 2003 (though I only got serious in 2005), making the blog older than my children.  A number of other interesting IP blogs made the list, including Hall-of-Famer Eric Goldman; check it out!

Monday, November 28, 2016

TM question of the day, high heel edition

We know that Louboutin's red sole mark is only valid as applied to shoes with contrasting uppers.  So, do these shoes infringe?  (In case it's hard to tell, I'd describe the sole color as a fairly bright pink.)  Do they dilute?
pink, white, silver
If they can dilute, could a different but also unusual-for-soles color dilute?  Wouldn't any unusual and contrasting color make consumers think of Louboutin?
white with--dare I say--Tiffany blue contrasting sole

Breakfast break: energy claims not misleading by US standards

Spector v. Mondelēz International, Inc., 178 F.Supp.3d 657 (N.D. Ill. 2016)

Mondelēz makes belVita Breakfast Biscuits and Breakfast Bites. Spector allegedly bought packages of Breakfast Biscuits in reliance on the package representations of “NUTRITIOUS STEADY ENERGY ALL MORNING”:

The relevant graphic uses a clockwise arrow representing a four-hour period of time between 8 a.m. and noon:

The Breakfast Bites icon is similar, but contains the phrase “4 hours”:

The back of the Breakfast Bites box states that a single serving is “[a] nutritious start to a busy morning,” which is “a nutritious, convenient, on the go breakfast choice that contains slow-release carbs from wholesome grains to help fuel your body for 4 hours”:

Spector alleged that this was misleading, in that it portrays the products as “perfect for an ‘on-the-go’ lifestyle due to their being ‘portable.’ ” However, th products actually provide four hours of nutritious steady energy only if they are combined with a serving of low-fat milk. The disclosures on the Australian website for belVita allegedly showed that “Defendant fails to state in its United States advertising that the purported studies on which Defendant claims to rely require that the Products be consumed with at least a serving of low-fat milk in order to obtain the benefits Defendant touts.”

The back of the Breakfast Biscuits box, which repeats the claim of four hours of “nutritious steady energy all morning” while suggesting that Breakfast Biscuits be “enjoy[ed] part of a balanced breakfast with a serving of low-fat dairy and fruit,” allegedly conveyed that milk was optional.

Pleading a violation of the Illinois Consumer Fraud Act requires a plaintiff to satisfy Rule 9(b).  The fundamental defect here was that Spector pled no facts, such as personal experience or third-party studies, showing that the products don’t provide “nutritious steady energy” as promised.  Spector’s allegation of falsity was merely conclusory. 

Spector argued that the studies cited by Mondelēz on its Australian website were sufficient to form the basis of a plausible claim that the “nutritious steady energy” claim was actually false because the Australian website supposedly said that a glass of milk was required.  Under Illinois law, “[l]ack of substantiation is deceptive only when the claim at issue implies there is substantiation for that claim, i.e., if defendants had claimed something along the lines of ‘tests show that [the product in question] is [ ] effective ....” Here, though, the products’ packaging didn’t imply there was substantiation for the “nutritious steady energy” claim.  [I disagree—in the modern world, a health or nutrition claim is a scientific claim, especially when quantified for “four hours,” and necessarily implies some degree of scientific substantiation.]

Further, while the Australian website did imply the existence of substantiation for the “nutritious steady energy” claim, Spector didn’t allege she ever saw the substantiation claim on that website and thus she couldn’t have relied on it.  But she was using the Australian substantiation as evidence that the US package was false, not as something she relied on.  Mondelēz argued that, because Spector herself made the studies part of the complaint, the court could examine them, but the court found merit to Spector’s point that she was citing the description of the studies, not the studies themselves.  So the court proceeded without evaluating the study data.

The Australian website allegedly claimed that “belVita Breakfast biscuits† provide carbohydrates that are continuously and gradually absorbed and released throughout the morning,” with the † leading to the statement, “belVita Breakfast plus a glass of low-fat milk,” below this chart:

Although these disclaimers were repeated multiple times, the court found it clear that they didn’t say that “one must consume the Products with low-fat milk in order to achieve four hours of energy.” “The actual statements do no more than refer to the fact that milk was consumed with the Products in the cited studies.” Plaintiff confused correlation with causation. This was not enough to rise to the level of plausibility under Twiqbal, especially since her claims sounded in fraud.  “In the context of this case, the Court concludes that Plaintiff must do more than allege ‘the neutral facts necessary to identify the transaction.’”  This was necessary to protect Mondelēz from the stigma of fraud.  Further Illinois courts are “always watchful that the Act not be used to transform nondeceptive and nonfraudulent omissions into actionable affirmations.” An omission is actionable only “where it is employed as a device to mislead.”

Also, Spector lacked a relevant injury under ICFA.  Although she alleged a financial injury—she wouldn’t have bought the products or paid as much for them had she known the truth—that wasn’t enough under ICFA.  Illinois cases established that a plaintiff who alleges deceptive advertising about the effectiveness of a product has not suffered an injury if she “believed the [product] [was] effective and never complained to anyone that [it] did not work.” Spector never alleged that she didn’t get four hours of steady energy.

The same defects doomed her claims for breach of express warranty and unjust enrichment.

Fourth Circuit rejects attempt to control references to expert services with IP

File under "we need a federal anti-SLAPP law."

Devil’s Advocate, LLC v. Zurich Am. Ins. Co., No. 15-1048, 2016 WL 6871905, --- Fed.Appx. ---- (4th Cir. Nov. 22, 2016)

John W. Toothman is a lawyer and the founder of Devil’s Advocate, a consulting firm that provides expert testimony about the reasonableness of legal fees. In 2008, Zurich became embroiled in a coverage dispute in Texas state court.  In 2010, a lawyer representing, contacted Toothman about serving as an expert witness in the case. Toothman responded by email, indicating his availability and attaching a copy of a blank form billing agreement, his resume, and additional information about Devil’s Advocate’s services. The Billing Agreement left blank spaces for fee terms; nobody at Zurich signed it.  After a further request, plaintiffs proposed a fee of “2.1% of the gross amount of the fees we would review and report upon,” and stated that the proposal was “preliminary, prior to our engagement and full review of available information.” 

Zurich didn’t accept the proposal but told Toothman that, because the deadline for designating experts had passed, Zurich needed leave of court to designate him as an expert witness, which was a condition precedent to Zurich’s acceptance of the proposal. In several emails, Toothman indicated that he knew he had not yet been retained.  Toothman ultimately sent an estimate of nearly $70,000 and an invoice for half that amount; Zurich denied ever agreeing to its terms.

Toothman then took the position that “[payment of the full fee was triggered when Zurich designated me as its expert on December 3, 2010.” Zurich withdrew its request for leave to designate him as an expert witness in the Texas litigation. Plaintiffs responded by suing Zurich, alleging claims of breach of contract, unjust enrichment, conversion, unauthorized use of name, trademark infringement, and copyright infringement.  None of these worked, in the district court or on appeal.

Unjust enrichment: no sufficient allegation of actual benefits conferred on Zurich.  Plaintiffs knew that Zurich was submitting their materials to the court, and that getting court approval was a condition precedent to getting plaintiffs hired.  The assertion that the mere use of their names would promote a better settlement was “wholly speculative” and anyway not realized by Zurich because it withdrew its motion to designate Toothman as an expert before settling the Texas litigation.

Unauthorized use of Devil’s Advocate’s corporate name and Toothman’s personal name. Virginia Code § 8.01-40(A), in pertinent part, says:

Any person whose name, portrait, or picture is used without having first obtained the written consent of such person, or if dead, of the surviving consort and if none, of the next of kin, or if a minor, the written consent of his or her parent or guardian, for advertising purposes or for the purposes of trade, such persons may maintain a suit in equity against the person, firm, or corporation so using such person’s name, portrait, or picture to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use. ...

But a corporate entity is not a “person” for purposes of the Virginia statute. And Toothman’s name wasn’t used for advertising purposes, defined as “a publication which, taken in its entirety, was distributed for use in, or as part of, an advertisement or solicitation for patronage of a particular product or service.”   Use in a court filing or email to opposing counsel isn’t advertising or use in the course of business; we are unable to discern what additional legal services Zurich could have intended to solicit.”

Trademark infringement: time-barred under Virginia’s two-year statute of limitations for fraud.

Copyright infringement: first, plaintiffs’ proposal lacked substantial similarity to the designation Zurich filed in Texas, an inquiry that could be made at the motion to dismiss stage.  The proposal discussed “Appellants’ conflicts, Toothman’s familiarity with the parties involved, his academic and professional experience, an overview of the billing structure, and some observations on the Texas litigation.” In terms of extrinsic similarity, the expert designation “generally summarizes the subject matter on which Zurich’s two experts would testify without specifying the material about which either intended to opine.” There was “little if any similarity,” and likewise it was “implausible that any intended audience could view these two documents as intrinsically similar.”

Zurich also didn’t infringe the copyright to Toothman’s resume; its use was fair under Bond v. Blum, 317 F.3d 385 (4th Cir. 2003).  The material was factual; Zurich’s use “was not for profit or in a traditionally commercial sense”; the amount taken didn’t interfere with any legitimate purpose copyright exists to serve; and there was no interference with a market because there was no market for Toothman’s resume as such.

Breach of contract: there was no meeting of the minds.

Conversion of name and reputation: a plaintiff can’t show the necessary element that the defendant wrongfully exercised dominion or control over property, thereby depriving plaintiff of its possession, where he consented to the use of the property.  The facts indicated Toothman’s implied consent: “Toothman knew that, in order to obtain permission to designate him as an expert, Zurich needed to disclose his name to the court and opposing counsel, and he permitted such disclosure.”

Monday, November 21, 2016

Court tentatively holds that NY's GBL covers damage via personal injury

Carias v. Monsanto Co., 2016 WL 6803780, No. 15-CV-3677 (E.D.N.Y. Sept. 30, 2016)

The plaintiffs filed a putative class action claiming injuries based on their use of Monsanto’s herbicide Roundup. Along with products liability claims, they brought claims under New York General Business Law §§ 349 and 350. The court dismissed claims under the GBL for injunctive relief and design defect claims are dismissed, but not others.

The primary ingredient in Roundup is glyphosate; the EPA approved Roundup and its labeling. The label says that “Glyphosate targets an enzyme found in plants, but not in people or pets.” There are no warnings of serious health risks to humans.  In 2015, the International Agency for Research on Cancer classified glyphosate as “probably carcinogenic to humans.” The plaintiffs alleged that, in reliance on the “plants not people” statement, they purchased Roundup on “several occasions” over the past four years and “used and/or [were] exposed to the use of Defendant’s Roundup products in their intended or reasonably foreseeable manner.” They allege that their “exposure to glyphosate caused” various maladies, including non-Hodgkins lymphoma, pancreatic cancer, renal pelvis cancer, “a pituitary gland tumor,” leukemia, “irritable bowel syndrome/leaky gut disease,” diabetes, and kidney disease.

Plaintiffs alleged that the “plants not people” statement was false because glyphosate inhibits organisms from producing the enzyme EPSP synthase, which is found in gut bacteria in human stomachs and intestines. The total microbiota found in humans can weigh up to five pounds, but gut bacteria are vulnerable to being killed off by glyphosate.

Monsanto argued that FIFRA preempted the failure-to-warn and GBL claims, as did the EPA’s conclusions in various contexts that, as a factual matter, glyphosate does not pose a chronic health risk to human and is not carcinogenic.  Multiple district courts have rejected these arguments, and this one did too, mainly because false statements about safety cause pesticides to be misbranded under FIFRA, and states can impose their own remedies for conduct that violates FIFRA.  EPA’s approval of the label, and statements about safety, weren’t factual findings entitled to preemptive force for these purposes.  However, plaintiffs’ request for injunctive relief under the GBL was preempted because it would require Monsanto to change the label.

Monsanto also tried to rely on the GBL § 349(d) safe harbor for acts that comply with federal agency rules, regulations, or statutes.  EPA’s approval of the Roundup label didn’t suffice given FIFRA’s language, which makes clear that FIFRA doesn’t absolve pesticide makers from liability for misbranding. 

Further, plaintiffs plausibly pled that “plants not people” was false or misleading.  It could be literally false to say that the relevant enzyme is “found in plants, but not in people or pets,” because it is, in fact, found in the gut bacteria of humans. Further, plaintiffs plausibly alleged that this statement was “inherently misleading because it creates the impression that glyphosate has no affect [sic] on people or pets, when in reality, it directly affects both people and pets—by killing-off beneficial gut bacteria.”

Monsanto argued that plaintiffs were relying on a strained parsing of the word “in,” but the court didn’t find it implausible. “Notably, defendant does not point to a single case granting a motion to dismiss where the statement at issue was literally false or the statement at issue was even remotely similar to one at bar.”  Monsanto wanted to dispute that Roundup affects gut bacteria in a manner that is any way detrimental to human health. Not on a motion to dismiss.  If Monsanto was right, then it would have a strong argument that “plants not people” is not material.  (Why?  People are allowed to care about whatever they care about; advertising law usually doesn’t judge the wisdom of their preferences.  Also, I remember a time when the effect of H. pylori on ulcers was a matter for debate and even mockery—if Roundup does affect gut bacteria, a reasonable consumer might care even if the scientific consensus was that no harm has been shown.)

Further, plaintiffs alleged a cognizable injury.  Monsanto argued that exposure to glyphosate by ingesting it on agricultural crops wasn’t related to plaintiffs’ purchases of the Roundup consumer products at issue in their GBL claims. But plaintiffs also alleted that they were exposed to the Roundup products they purchased. “[C]omplicated questions of causation are normally not decided on a motion to dismiss.”  Monsanto further contended that personal injuries aren’t actionable harms under the GBL, a matter on which there was scant authority.  The GBL allows any person “injured” by reason of a violation of the statute can recover “actual damages.”  The plain language thus covered personal injuries.  (The court contrasted New Jersey law; the comprehensive New Jersey Products Liability Act is the right authority for personal injury claims, not the New Jersey consumer protection law, but New York doesn’t have a comprehensive products liability statute.)  Although the court was skeptical that GBL §§ 349 and 350 should apply to personal injury claims, “which have traditionally been pursued through product liability suits under New York common law, defendant has not persuaded the Court at this time.”  The court was willing to revisit the issue on fuller briefing at a later stage.

In a footnote, the court noted that “causation for the GBL claims appears to be a particularly difficult hurdle as plaintiffs will presumably have to prove that their injuries were caused by the specific Roundup products that they purchased and used even though the plaintiffs were also exposed to glyphosate through numerous other sources—a point noted in plaintiffs’ own complaint.”  Further, the court cautioned that a fee award would be unlikely “when, as here, the plaintiffs have suffered substantial and high-value personal injuries and allege product liability-type claims under the guise of the GBL. The instant suit is unlike most GBL § 349 claims, which involve statutory damages or minimal actual damages, and where the prospect of an attorney’s fees award may be necessary to attract competent counsel.”  And, “[b]ecause of the nature of the injuries alleged by the named plaintiffs here, the Court has grave doubts that class treatment will be appropriate in this suit.”  Apparently the court wasn’t willing to hand plaintiffs an unalloyed victory.

Pro tip: don't refer to delayed TM claim as "lottery ticket"

Dropbox secured a rare laches ruling based in significant part on internal discussions by the other claimant to "dropbox" about how delaying a claim until after Dropbox's IPO would increase the payout.  Via DuetsBlog.

Truthful report about injunction not misleading, even if injunction shouldn't have been issued

Peek v. Whittaker, 2016 WL 6806265,  No. 13-cv-1188 (W.D. Pa. Nov. 17, 2016)

The parties, floor care businesses, are in a litigation deathmatch; this case is a follow-on to a state court lawsuit.  Whittaker sold carpet cleaning machines and fluids to other businesses that needed to clean their carpets. Whittaker’s Director of Sales was Paul Offutt, who worked under a contract that included a non-compete provision.  When Whittaker told Offutt that Offutt’s contract would not be renewed upon its expiration in June 2008, Stephen Peek told Offutt “The hell with them. Why don’t you look into doing something with me? Let’s do something together.” The two created Clear Floor Care, LLC and took on another Whittaker employee, who took documents with him.

“Whittaker got wind of this, and sued in state court to nip this new venture in the bud.”  He obtained a preliminary injunction barring the defendants from directly or indirectly engaging in any business that competed with Whittaker, soliciting current, former, or prospective customers of Whittaker, soliciting employees of Whittaker, or using any of Whittaker’s trade secrets. Several years later, in April 2013, “after extended discovery, and after the non-compete provision in Offutt’s contract had timed out, the state court went in the other direction and granted summary judgment to Peek et al., concluding that Whittaker was unable to prove its claims that the state court defendants had actually taken or used any trade secrets.”

Peek then sued, arguing that the state court lawsuit was baseless, and that Whittaker knew as much from Day One.  The court rejected Lanham Act claims based on Whittaker’s statements about the lawsuit.  Whittaker sent the preliminary injunction order to three people who worked for two companies (Tandus and Shaw Carpet). These companies were “carpet mills” who weren’t customers of Whittaker nor potential customers of Clear Floor Care, LLC, but they make carpet cleaning and maintenance recommendations to their customers.

By contrast, the parties’ clients or potential clients are organizations in need of carpet cleaning equipment, such as convention centers and personal care facilities. There was no evidence that any such entity received a copy of the preliminary injunction order. Thus, the dissemination wasn’t “commercial advertising or promotion.”  Even if the carpet mills had constituted a relevant purchasing public, dissemination to three people wouldn’t be enough.

Moreover, Peek couldn’t show deceptiveness.  The preliminary injunction existed, and Peek couldn’t show misleadingness.  Even if the injunction had been procured with false testimony, that wouldn’t deceive relevant purchasers because it was a real injunction.  “It was not as if Whittaker disseminated an injunction that it did not have, or stated that the injunction prohibited the Plaintiffs from doing more than what they were actually prohibited from doing. Whittaker disseminated an actual injunction that had the full force of law.”

When Lexmark raises the standard: competitor fails to show harm causation from literal falsity

Snac Lite, LLC v. Nuts ‘N More, LLC, 2016 WL 6778268, No. 14-cv-01695 (N.D. Ala. Nov. 16, 2016)

Snac Lite sued NNM for misrepresenting the protein content of its specialty nut butters.  The court granted summary judgment, despite past literally false advertising, because of Snac Lite’s inability to show harm causation.  While Lexmark appears expansive, it can have contractionary effects at the summary judgment stage.

Snac Lite sells four types of peanut butters and almond butters with added pea protein, flax seed, and other nutrients, marketing them as more healthy alternatives to traditional, non-fortified nut butters; it also adds sugar. Its products sell at higher retail prices than many mass market peanut butters.  Snac Lite sells its products at grocery stores such as Walmart, Publix, Giant Eagle, Shop Rite, Kroger, and HEB, as well as GNC, Vitamin Shoppe, and other “mom and pop health food stores.”  In 2012, Snac Lite recalled all its products due to salmonella contamination at one of its manufacturers’ facilities. Snac Lite didn’t resume selling its products for several months after the recall while it looked for a new manufacturer.

NNM also sells enhanced high protein peanut and almond butters, using added whey protein, fiber, organic flax, and the sweetener xylitol, derived from birch; it has more flavors than Snac Lite (e.g., cinnamon). NNM also promotes its products as enhanced alternatives to traditional nut butters, and its nut butters sell for even more per jar.  NNM’s “brand personality” is fitness-oriented, and its products are sold at fitness and supplement shows, GNC stores, Whole Foods stores, and through online retailers. Unlike Snac Lite, NNM often uses social media websites and touts its products by highlighting its “celebrity” customers.  In March 2013, NNM appeared on the network television show Shark Tank, pitching to prospective investors. As part of their pitch, NNM’s representatives touted its nut butters as containing 14 grams of protein per serving. NNM ultimately obtained capital from two of the investors on the show, and appeared in two of the show’s follow-up episodes.

Snac Lite had 21 of NNM’s products independently tested and found a protein content less than eighty percent of the amount of protein claimed in NNM’s labels and advertising. Until 2014, NNM’s products featured the claim “14 grams of protein” on their nutrition labels and elsewhere on the products, displays, and in advertising.  In 2014, NNM reformulated the products and changed its labeling and advertising to reflect the “new” protein content, 12 grams.

Snac Lite tried to show damages with two experts; neither sufficed.  One, Dr. Robicheaux, spoke to employees at two GNC stores in Birmingham, Alabama and reviewed email messages sent to a representative of NNM. He conducted internet research to determine the benefits of a high protein diet, and to learn more about NNM’s target customers.  He concluded that the determinant attribute for potential buyers of high protein nut butters is protein content, and that misrepresentation of protein content was thus likely to materially deceive potential customers, leading to a significant diversion of sales from other high protein nut butter sellers.

The court excluded Dr. Robicheaux’s proffered opinion because it was unreliable and not supported by a reliable methodology.  He didn’t speak to any customers, conduct customer surveys, conduct focus groups, or interview any authorized representative of NMM’s distributors or retailers. He didn’t analyze NMM’s marketing strategy, either.  While survey or market research isn’t required to show causation, there needed to be something to show the impact of false advertising on  Snac Lite’s sales.  That is, causation requires the expert to show “both that consumers chose Defendant’s products over Plaintiff’s products, and that consumers’ choices were connected to Defendant’s false advertising.” 

He also failed to account for additional variables that might have affected the parties’ sales positions. Experts don’t need to exclude every possible alternative cause, but “in order to provide reliable testimony an expert must take into account most relevant factors as to causation.”  NMM’s appearance on Shark Tank was an important factor that needed to be taken into account, as was the salmonella recall.  Given the recall, Dr. Robicheaux’s assumption that all of Snac Lite’s sales losses since 2012 were attributable to NMM’s alleged false advertising was unlikely.

Similar problems attended the testimony of another witness, a CPA, who simply calculated all of Snac Lite’s sales declines following 2012, and then reduced that amount by sales of any product Snac Lite’s representative admitted were not directly affected by NMM’s presence in the nut butter market. He didn’t interview any of NMM’s customers and admitted that he couldn’t otherwise determine why a particular customer would choose to buy less from Snac Lite. “Notably, in a Lanham Act false advertising case, there is a heightened risk associated with causation testimony that ignores the competitive market as a whole.”

NMM thus received summary judgment on the key issue of causation. Courts may presume causation where a defendant engages in deceptive comparative advertising, but that wasn’t alleged here.  Courts can presume deception from literal falsity, but even then the plaintiff must prove harm causation, “here, that consumers chose Defendant’s products rather than those of Plaintiff.”

There was a genuine issue of material fact as to whether the parties were direct competitors, even though they had different nutritional profiles and were sold in different flavors through different marketing efforts and strategies.  Direct competition isn’t required under Lexmark, and the differences between the parties were not “so vast that they are vying for different consumers and markets, and therefore no action of Defendant could have harmed Plaintiff.”  They both sell premium nut butter products, which are distinguishable from traditional nut butters, and their products were “available at stores that sell products intended to promote healthy living.”

Nonetheless, there wasn’t sufficient evidence of harm causation.  Snac Lite sought lost profits, requiring it to establish actual lost sales as a result of the false advertising, which it couldn’t do.  Along with comparative advertising, courts can presume causation in “two-player market” cases and trademark infringement cases, but this case involved none of those situations.  Snac Lite needed to connect its losses to the false advertising, and it couldn’t, while NMM presented evidence of other causes; Snac Lite even experienced losses with respect to certain retail customers who never stocked NMM’s products.

Similarly, though Snac Lite sought disgorgement of NMM’s products, it would only be entitled to that remedy if it established a violation of the Lanham Act, and that requires causation.  Indeed, the court doubted whether Snac Lite had standing under Lexmark.  At the summary judgment stage, mere allegations weren’t sufficient, though disputed facts had to be construed in the light most favorable to the plaintiff. Under Lexmark, a plaintiff must “ordinarily show economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising” in order to have standing. Without “intending to conflate” causation and proximate causation, the court held that, at a minimum, some evidence of proximate causation is required at the summary judgment stage.  Pre-Lexmark caselaw suggesting that causation need not be established for disgorgement was no longer good law.

Friday, November 18, 2016

Jaszi festschrift--abbreviated panel 4

Pam Samuelson Reflections

Praised Jaszi’s leadership in fighting White Paper, Digital Future Coalition; the DMCA could have been much worse. Reached out to people who think about copyright ownership who aren’t lawyers.

Panel 4 – Pedagogy Plus

Joseph Liu and Alfred Yen, In Praise of a Classic

Copyright textbook, now in 10th edition.  Reflections on the textbook based on creation of own textbook.  Jaszi’s textbook: narrative thread strong, but over 1000 pages.  That could make it difficult for students to swallow, or, if you assigned only chunks, lost narrative thread.  Their own book: 750 pages—can go through whole thing; fewer case notes.

Jack Lerner

DMCA exemption: making the case with the facts with extensive factfinding for filmmakers.  Lots of different jobs for students in developing facts, discussing with experts, preparing testimony. 

[sick child; had to leave—sorry!]

Jaszi Festschrift, Panel 3 Fair use

Michael Donaldson, Reflections: More lobbyists in Congress for © industries than there are members of Congress.  But fair use guidelines for documentary film weren’t threatening, especially once there was insurance for filmmakers who used the guidelines.  Good fair use decisions, e.g. on replicating scenes from Deep Throat for Lovelace.  Fictional films based on factual situations: pushback from studios, which clear everything; they don’t care.  Clear the spines of books visible on a bookshelf. Independent filmmakers don’t have time, personnel, or money to do that and have to rely on fair use. We found it fairly easy to call these films hybrids, so when they were dealing w/historical facts we used the same logic as in best practices.  Three-question safe harbor developed in our office. When we write our opinion letters we start with the statute, though it’s not always as much help as one would like; our safe harbor/best practices are more helpful.  Difference b/t major studios and small filmmakers: Major studios only relied on fair use in biopic about Steve Jobs, and sadly cut down substantially on the amount of the commercial they were using.  Ringgold case: the defendant didn’t develop an argument for why it was important to use the print on the wall to signal commitment to African-American culture; the script didn’t call attention to why it was important to use that print (but that wasn’t necessary for the lawyers to explain why it was an important signifier of African-American church culture).

Panel 3 - Fair Use

Jonathan Band, Copyright and the Telling of History

Recent fair use decisions have significantly helped solve the problem copyright causes historians, a shorthand for people who want to make use of historical clips—documentary filmmakers, academics, etc.  Long © term is the source of the problem.  Search engine precedents: thumbnails, snippets.  Visible uses in the course of search are fair.  Preservation and identification have become much easier.  Use in telling the story is also a transformative purpose.  Bill Graham v. Dorling Kindersley. Original use was to tell people where/when the concert was; reuse had historical purpose.  (By contrast, use just to make you laugh might not work, as in recent Who’s on First case.)

More complicated: Bouchat v. Ravens: Baltimore Ravens logo.  Flying shield logo turned out to be infringing, so they redesigned it.  But they have all this footage of the games in the first three season where they used the infringing shield. Under what circumstances can you use the footage?  Multiple decisions, some make more sense than others; one decision disallowed the use in NFL highlight films because they didn’t think it was really historical, only entertaining and promotional for Ravens games/NFL. Using still images, even in a display in corporate office, was more museum-like and fair use. Later case: telling more of a story about the draft picks, and that was seen to be a fair use.  That’s more like a real documentary than the highlight films; he’s not sure that line makes sense.  The complicating factor is that the Ravens and the NFL were the initial infringers; maybe a 2 strikes rule (for football). 

Fox News v. NJ Management Gp.: used image of 9/11 fireman juxtaposed against Iwo Jima photo; Fox was trying to say that they didn’t need to license that b/c they were commemorating the event.  The court thought it was more promotional for a broadcast/part of advertising.  Skeptical of transformative purpose. 

Recent fair use jurisprudence can address how family members or owners of estate want to use © to protect the image of a dead person: MLK Jr. and the movie Selma, where they rewrote speeches to avoid threats.  So they don’t use King’s actual words but paraphrases. Fair use is a critical tool in preventing the airbrushing of history.  Prof. Jaszi has made this tool much more effective in preventing such airbrushing.

Rebecca Tushnet, Fair Use Hopefulness

I’m here to praise Professor Jaszi’s work making fair use useful: empowering communities and individuals to rely on fair use, rather than leaving it, as Larry Lessig famously said, merely the right to hire a lawyer.  Professor Jaszi has spent decades working to improve the situation of creators in the real world as they navigate copyright law’s affordances and constraints, because he believes that there are measurable improvements that can be made even when, as has for too long been the case, the political system is captured by large institutions with little regard for fair use or for the budding creators that are the seed corn of culture.  The law’s recent encounters with fandom provide some reason to think that Professor Jaszi’s eternal hopefulness is justified.

In media fandom, a set of communities often constituted primarily by people who identify as women, practices of remix and appropriation are performed for pleasure and in order to provide the community with more of what it wants, a “more” that the supposedly endless productivity of capitalism has been unable or unwilling to provide in return for money.  Through iteration, individuals recognize themselves as creators and as part of a community, sharing meanings and developing identities. 

Although fandom communities are far from utopias, and can partake of the worst features of mainstream culture (fans are, after all, people), they also offer feminist models for understanding the dialogue between individual and community at the heart of almost all creative practice.  The apparent contradictions embodied by fanworks—produced by individuals in a communal context, created by authors while explicitly acknowledging copying, intermingling noncommercial activities with works created for commercial profit—find in fandom communities a partial but productive synthesis.

In the legal literature as well as elsewhere, there are increasing numbers of thick descriptions of fan communities, types of fanworks—fan art has a different trajectory than fan fiction or fan video—and different national or historical experiences of fanworks.  In addition, fanworks are now increasingly part of the copyright “test suite,” used to examine implications of various rules or rule changes.   A rule that would treat noncommercial fanworks as infringing is, by default, an unattractive one to most copyright academics and even some policymakers.  I’m very happy about that.

Scholars have also explored other low-IP spaces, trying to glean why they could remain so creatively productive despite a lack of propertization.   Noncommercial fan creators joined an ever-growing list of exemplars of well-functioning creative communities with only glancing intersection with the intellectual property system, including stand-up comedians;  American fashion designers;  high-end chefs;  roller derby performers;  magicians;  tattoo artists;  typeface creators;  substantial parts of the pornography industry;  graffiti artists;  athletes;  and drag queens.  Recent work by Jessica Silbey and others also shows that even in supposedly “high-IP” spaces, the actual process of creating and monetizing copyrightable works and patentable inventions relies much more on intrinsic motivations, attribution, and behavioral norms than on law.  

Meanwhile, a lot was going on in other areas of copyright law and scholarship.  In the courts, fair use was finally resuming its role as an important guarantor of free expression.   No longer was fair use merely the “right to hire a lawyer,” as Larry Lessig famously disparaged it.  In particular, the concept of “transformativeness,” which is to say, adding a new meaning, message, or purpose to the existing work, began to have real bite in identifying works that copyright owners should not be allowed to control, even in the absence of savage criticism of the original.   Fanworks are regularly transformative—even when they’re celebratory, they create new readings and meanings for the originals that inspired them.  Recent cases involving noncommercial video are also promising in more readily finding fair use.

Outside the courts, we’ve seen greater flexing of fair use muscles as well.  Patricia Aufderheide and Peter Jaszi have shepherded the development of fair use best practices in various communities.   These include best practices in online video, though that project (in which I participated) doesn’t fully cover fan practices.   The various best practices projects are one implementation of a larger idea: creative communities can engage in deliberation about how to respect earlier creators’ rights while also preserving important freedoms for subsequent creators.  The best practices projects turn implicit knowledge into useful guidelines for newcomers as well as providing good examples for people to think with.

Fan creators have been participating in legal dialogue in other ways.  The Digital Millennium Copyright Act barred circumvention of technical measures used to prevent copying,  but provided for a temporary exemption process where the anticircumvention rules hampered noninfringing uses.  In 2010, following submissions from fans collected and curated by the OTW, the Copyright Office for the first time recognized the needs of noncommercial remix artists, including fanvidders, to make clips of video using high-quality source.   It specifically mentioned fanvids in its rulemaking, and again when the exemption was renewed and expanded in 2012,  and again in 2015.   Although the Copyright Office does not bind courts in copyright infringement cases, the fact that fairly conservative copyright lawyers recognized that at least some fanvids constituted fair use was another indication that fair use law has moved to where fans need it to be.  (Quite relevantly, Professor Jaszi was vital in convincing the Electronic Frontier Foundation that it was worth trying to get an exemption for noncommercial video makers like vidders, after AU’s IP Clinic helped Peter Decherney secure the first use-specific exemption for film studies classes in 2007.  We discussed how to frame our arguments with him, which was very valuable in successfully presenting our evidence to the Copyright Office.  And I was not as hopeful as Prof. Jaszi: after the first time I testified, I wrote in my journal that “Today I did a very good job at something where the extent to which I did a good job doesn’t matter and should,” but Peter’s optimism was more justified.) 

Outside the United States, there were also important developments.  Most notably for fan scholarship, Canada enacted an exception for noncommercial remix or “user-generated content,” known as the YouTube exception although it applies to far more than video and audio remix.   Because of this exception, Canada is arguably ahead of the US in protecting noncommercial transformative works.  In 2014, the Australian Legal Reform Commission recommended the introduction of fair use into Australian law, predicting that change’s positive effects on  “musical compositions, new films, art works and fan fiction.”   Similarly, Peter Yu has been working tirelessly for reform in Hong Kong that would, among other things, protect remix and fanworks.  Naming a thing is usually a predicate for assigning it legal meaning and value, and so these are important positive developments for noncommercial transformative works.

Fans have also begun to engage in deliberate activism around copyright reform.  New York Times best-selling author Naomi Novik, also a fan writer and vidder who helped found the Organization for Transformative Works (OTW), testified before Congress at hearings on fair use.   Among other legal initiatives, the OTW helped renew and expand existing exemptions to §1201’s prohibition on circumventing digital rights management technologies in order to make remix videos.  Fan video makers provided the bulk of the evidence used to secure the remix exemptions, and are likely to continue to do so.   Even in individual interactions, fan creators increasingly adopt the language of transformative fair use, deploying the arguments of fan-friendly lawyers.

Fandom is, after all, a training ground that teaches people that they can speak creatively, and that their speech is often welcome.  And it’s a place where communities of like-minded people meet up and do things together.  Political possibility is thus inherent in participatory fandom: transformative fandom is definitionally about the possibility that things might be different.

Professor Jaszi’s long-term project of creating numerous fair use best practices is a particularly striking example of using within-community dialogues to have a broader impact; but there are also other ways in which the presence of multiple voices can change how we think about creativity and creative freedoms.

“Work” is a noun in copyright, but a verb in the everyday practice of creativity.  One of the implications of thinking about process is that valuable acts of creativity occur even when the results are similar to those that have come before, because it represents the creative development of the individual.  And as Jessica Silbey’s interviews with professional creators and the people who support them have revealed, economically successful authors and fans are not all that far apart in their needs and concerns for process. 

Work from across many kinds of creative spaces also shows that creators place value on attribution across communities, though with specific twists: in each community, some creations or credits are shared and others aren’t.  Credit plays an important role in incentivizing production and structuring community relations and in-community hierarchies.  Credit is also highly context-dependent in terms of what suffices for proper credit and who’s credited.  This extensive variation suggests some of the problems with a legal attribution right, which can never be as responsive to context as community norms.

Likewise, communities always have people who do the difficult and underappreciated work of making the community function—for the derby girls David Fagundes studied, the work was running the master name roster, but it can be making sure that the chairs are set up and that the coffee is brewed for a local meeting, or paying the website hosting costs and writing the code for a fan fiction archive, something Abigail De Kosnik has written about.   If we value communities, we need to know more about how to keep those structural features in place, especially as they seem to degrade in broader society—and we need to think about how gendered expectations of work have contributed to their structural invisibility.  

How should the law react to the kinds of variations we see?  I have a few lessons to suggest. 

One direct legal lesson from the seemingly endless variety among fanworks is the importance of epistemic humility.  Because different audiences may read a new work in varying ways, some may see parody and transformation while others see merely repetition.  To take a recent copyright example, where some people saw feminist toy company Goldieblox’s rewriting of the Beastie Boys song “Girls” as feminist and critical, others claimed that the original song was already mocking the sexism Goldieblox sought to criticize in its ad for an engineering toy directed at girls.   The lesson of this inevitable multiplicity is that no one group’s reactions should be prioritized in assessing transformativeness; where an interpretive community finds a new meaning or message in a new work based on an existing work, that should strongly favor fair use.

A broader, though perhaps less helpful, lesson for the law is that it doesn’t do particularly well at regulating relations within communities.  The creative ecosystem is a blooming, buzzing confusion of different kinds of creators, and of norms that differ as between insiders and outsiders.   For example, in many areas of media fandom, creating unauthorized new stories based on the work of profit-seeking copyright owners isn’t just fine, it’s constitutive of creative fandom.  However, doing the same thing to a work of fan fiction—creating a fanwork of a fanwork—without the original creator’s permission is highly controversial.  Fan art is routinely sold, but “pulling to publish”—removing fan fiction from online distribution and rewriting it so that it can be sold as a separate work—is controversial, perhaps precisely because it seems to be withdrawing a gift that has been reciprocated with gifts of feedback and praise.   These differing norms by medium are an example of the kind of context sensitivity—and lack of fully settled rules—that communities routinely produce and that generic legal regimes find hard to replicate.

Low IP-communities are also spaces of creative risk-taking.  In transformative fandom, any given story is just one of many featuring the same characters; you can kill them all and see if that works, and give them all babies and happily ever after and see if that works, and so on.  Similarly, fanworks can easily experiment with form—not just the short story (for which there is an extremely limited commercial market) but also with poetry, mixed media, and other innovations.   Fanworks are also well-known for experimenting with content, especially sexual content, and for providing stories that feature heroes other than straight white men.   People who are drawn in by the presence of favorite characters are willing to take more chances in their media consumption than they otherwise would.

When they succeed, the experiments found in fandom can also be the source of important and economically significant innovations.  Fifty Shades of Gray is a controversial example, but it involves a classic innovation story of the kind studied by Eric von Hippel: a “user” who did not professionally produce the text at issue customized it for her own particular interests (rewriting Twilight without supernatural elements and with a lot of explicit sex).  The customized version proved popular with other users.  This altered version was then commercialized (during which process some of the rougher edges were smoothed over).  The example of Fifty Shades has led commercial publishers to seek to satisfy a previously unrecognized market for written erotica that appeals to women, a market they had been unable even to see before a revised fanwork illuminated the demand. 

So, another lesson is that the ability to move into and out of the formal economy is an important part of the creative cycle.  To deem an experimental act of creativity infringing because of its potential connection to economic reward risks shutting down that generative flow. Just as Uber, Airbnb, and other startups are trying to turn once limited, often freely offered personal interactions into monetized transactions in which a third-party intermediary makes most of the profit, copyright owners see the possibility of controlling every creative expression related to their works.  But to do so would be both futile and potentially deadly to creativity.

Feminists working in intellectual property need to talk about the way that our pleasures are mobilized in order to keep us providing uncompensated value to copyright owners: after all, we like it.   One ongoing goal is to make economic hybridity less repressive and exploitative than the coopation offered by initiatives such as Kindle Worlds.  As commercial entities move from suppression to cooptation, our legal and practical strategies must change as well.  Continued insistence that commercial motivations are not fatal to fair use defenses is one important part of these strategies. But supporting communities through other ways, such as preserving permeable noncommercial spaces and through using nonprofit law, is also important and doesn’t rely on IP law as such.

To borrow a famous line, women can make our own history, but we do not make it as we please; we do not make it under self-selected circumstances, but under circumstances existing already, given and transmitted from the past.  Remix is a way of taking what we’re given and making it better.  It remains for us to keep choosing our conditions, recognizing that our choices are partial and constrained but not therefore meaningless.  Remix, then, is fundamentally a hopeful act: it reminds us that things could be different. 

Michael Madison, Patterns and Fair Use in Copyright 2: The Sequel

Past work: found patterns in fair use decisions. A descriptive claim: a community or group is present; this can predict a fair use finding.  Social science links behavior of individuals in communities to creative outputs, not in a linear way but a probabalistic way. Trying to step beyond norms and customs as such (responding to Jennifer Rothman’s criticism) to look at groups, whether commercial or noncommercial, small or large.

What do the cases decided since the end of 2003 tell us?  Provisional results: to a significant degree, those patterns still matter.  What’s changed?  Google cases, Kelly v. Arriba Soft—different valence compared to the history; the word Madison uses is info “infrastructure”—to evoke Brett Frischmann’s work on infrastructure.  I don’t think it’s a social pattern or community activity, so a gap has opened up compared to 2004 where I saw social groups as explaining most of the cases.

Storytelling no longer quite captures the idea that defendants might be legitimately engaged in acts of affirmative creation of new artwork, whether in narrative form or otherwise.

There’s a gap opened up b/t the path of legal doctrine that focuses on transformative use as Campbell and the idea of social patterns as an independent explanatory variable.  Jaszi liked the idea of talking about socially patterned activity, aligning with transformativeness under Campbell. Since then, transformativeness acquired a gravitational pull of its own, no longer as clearly derived from or driving patterns of social activity.

Micro observation: linkage b/t socially patterned idea and what Jaszi & team did in best practices.  Influential b/c they had a strong descriptive and normative foundation. Worry about whether normative foundation is still as robust as it was—need to keep working to ensure they’re founded in where the law is.  Madison is invested in knowledge commons, community self-governance as a way of dealing with knowledge, linked to “IP without IP” studies.

Patricia Aufderheide, The Impact of Codes of Best Practices in Fair Use

Worked w/more than ten different communities on best practices. Each is distinctive, and we’ve learned a lot.  The method: deeply research actual practices to understand the community’s problems, facilitate discussions about balancing their interests as people who own © and people who need © material.  Evidence-based action.

Copyright Office adopted Rothman’s critique that these are unreliable b/c not negotiated w/rights owners [critique from the right].  Jim Gibson says: they could become ceilings and not floors [critique from the left].

What evidence?  Insurers started routinely accepting fair use claims.78% of filmmakers surveyed started to understand fair use; they thought it was very valuable, especially younger filmmakers who saw it as essential tool. We asked how many had had fair use claims rejected? 1-3% reported problems—that is an industry standard, where 99% of insurers accept claims and 97% of broadcasters.  In 2005, Donaldson’s firm didn’t handle any fair use issues for Sundance; 2010, they’ve got 5 films using fair use, and 730 different fair use issues (two films used lots of clips); 2015, they’ve got more than 25 (lost the exact number) sprinkled throughout types of fair use.

Communications scholars’ best practices. Less successful story, b/c communications associations that adopted code haven’t been particularly interested in promoting it.  The codes do nothing; the community must absorb and use the code. Nonetheless, saw changes in 5 years among communications scholars. More people know they’ve employed fair use; they are more frustrated when they can’t get fair use claims accepted. Sad news: only 1/3 know they have a code of best practices. Most of the people who use the code find it helpful. People doing multimedia publishing are a subset who know about fair use and are using the code heavily.

Best practices for fair use in the visual arts: in survey, nearly 2/3 of them knew about the code 10 months after release.  Half who knew had used the code.  Increased likely use of fair use. Also huge institutional change w/in 10 months. Major publications in the field, including the leading publication which is by College Art Association—changed default to fair use; Yale Univ. Press created similar guidelines; museums changed institutional policies internally; MIT and Smithsonian Presses in negotiations. These institutional changes have huge effects, similar to insurers.

Creating the document opens the door to what might happen. Culture of community will change if and only if leaders circulate the information and institutions take the opportunity.

Critics: Unreliable?  Not to insurers, broadcasters, publishers.  Is it a ceiling or a floor? We do have uses that keep expanding.  The same thing happened with open courseware.  Documentary filmmakers move from a position of believing they’re doing something that might be illegal to believing that they have a right to do it to believing that they’re entitled to defend it in public, as at the DMCA hearings.

Brandon Butler, Rationalizing and Operationalizing Non-Transformative Fair Use

He’s from U. Va., founded by the “he who lights his taper from me” guy (a civics lesson from a slaver).  Transformative fair use & why it works so well: you need to know your purpose, the other guy’s purpose, and how much you took.  That’s a very different situation from life w/o transformativeness. Takes the user’s point of view—the client in the clinic or the community for best practices. They’re in the driver’s seat explaining why they want the use. The normative force is clear, unequivocal and even constitutional: you aren’t begging.

Alternatives: varieties of market failure: HathiTrust, no interest in market; Georgia State: favored purpose + market failure. Fails b/c the details are often arcane: Georgia State involves 600 pages of market information which no librarian could ever know ex ante.

Jennifer Urban (remotely from Berkeley), Comments

Shift in the way fair use is thought about, theorized, and practice.  Cluster of work in scholarly world that is loosely empirical—Sag, Beebe, Madison, Samuelson—making sense of the case law for practical application. Tushnet, Silbey etc. talk about how practice has changed naturally with this as tools have become more democratically available. Shift from individual view of fair use to community view underpins the statements of best practices. 

How do statements of best practices fit into broader landscape of change? From lawyer’s perspective, change relationship b/t lawyer & client, and ability to counsel the client.  Demystifying fair use: article w/Tony Falzone.  Triad relationship between practitioner/creator, lawyer, and gatekeeper/distributor/superior in creator’s organization.  Each participant encounters a set of barriers to making a fair use.  For the practitioner there are things like downside risk, permission culture, lack of expertise, unclear legal boundaries, difficulty negotiating w/gatekeepers when you don’t speak copyright, wish to be ethical/collegial, desire to avoid expense of lawyers.  Newcomers may not know limits of collegiality/ethics.

Gatekeepers: permission culture is a big thing; very aware of downside risk. They often don’t want to be blockade and would like to give more leeway, but they’ve come to believe that a norm of licensing is actually required, and that makes them less flexible.  Lawyer faces highly contextual caselaw; worries about downside risk to client; has limited sense of community norms.  Together, those things in the past set up fair use as an unusable right.

Best practices address all these issues together, shifting from jargon to community vocab. Go from unclear cases that have to be analogized to common specific scenarios encountered in the field and allow decisions based on known facts.  Practitioners can reflect ethical practices of her community. She has the tools to negotiate w/gatekeepers about what she’s trying to do in concrete terms.  Specific and applicable examples can diminish the distance b/t case law and this situation; helps to calculate practical risk.  Teaches the lawyer the community norms and vocabulary for whatever community we work with.  Some people develop expertise w/ communities, e.g. Donaldson for documentary film, but best practices allow more people to do that, to compress education in the community’s practices.

There is no way to completely remove downside risk, w/o reform of remedies. But best practices can put that into perspective. There’s even insurance for documentary filmmakers.  Simple steps can move a creator and a community from essentially being unable to use fair use to being able to use it on a regular basis. Poets routinely paid permissions even for critical commentary in a scholarly article.  Hope that best practices can move them.  Relatively simple statements can have profound effect w/in communities. 

There are definitely skeptics; she was a friendly one at the outset. Her concern was the concern for defining a ceiling/failure to update as practices change. But as she’s worked w/clients over the years and her students have, she’s come around to the view that they can describe the most important situations practitioners encounter and that they can be updated over time.

Too permissive/dream of fair use?  When she hears that from a lawyer, she invites them to read 3 of the statements; the statements are careful and ethical.

It’s easy to forget how strong the skeptics were at the start.

Jaszi comment: thinks Gibson is now no longer as serious a critic and now has agreed. Also, insurance isn't just for movies. You can get E&O insurance for books. It's possible that while we wait for remedy reform, the missing piece of all this, we need to experiment more with the additional possibilities of insurance.

Jaszi festschrift: Panel 2 – Authorship

Margaret Chon, What Berne Article 15(4) Tells Us

Decolonization and development: only one country, India, initially designated an authority to facilitate compulsory licensing and even after Berne was amended only two dozen countries have taken advantage of the option.  Non implementation of provision on TRIPS and public health—the story that these development-oriented provisions tell is one of disconnect, not development; asymmetry, not alignment. 

Anonymity/anonymous authorship.  History in which women couldn’t risk being known as writers/having a public identity.  Attention to quilting as quintessential type of anonymous folklore that is gendered female.  As interesting: Woolf’s quote towards the end of her life that “anon is dead.” She was responding to the cult of the romantic author. It was anonymity that appealed to the nostalgia of modernist British writers for balladeers etc.: prizing aesthetic of anonymity.  Individuality in authors and in fragmentation of authorship prevented works from being absorbed into the public as part of their consciousness as ballads were.

Romantic anonymity: not the same as the traditional pool of cultural knowledge that is supposedly the opposite of romantic authorship.  Berne tells us that publisher is representative of published author and the state is the representative of the unknown author/collective. The latter is pressed into the service of building a national identity. But that division ignores the dynamism of the anonymous creator.  Reasons for anonymity: Standing out from the mass; call attention to author’s shame or risk; to promote a cause; expressions for political minorities.  Recent mural by Banksy: will be protected by gov’t of Calais even as it destroys the surrounding “Calais jungle.”  Promoting the state undermines local political authorities who might act as custodians, and erases the need to create further devolution of authority to create space for dissent.

Christine Farley

Jaszi’s lessons: Authorship should not obscure the need for cultural commons; authorship has been a contested concept for a long time. Because of the romantic author, it’s hard to focus on the reality of collective creativity.

AI as a challenge to the concept of authorship. But has there ever been the romantic author? In the heyday of Renaissance art, the artist might not have touched the canvas; Jeff Koons & Andy Warhol; we’ve always had mechanical aids to authorship as well. 16th Century: Vermeer & other artists used camera obscura to help them with their art.

Algorithmic art: poetry can now be created by computers.  Procedurally generating works: signal and noise are the same thing.  Visual art likewise.  If art demands intentionality, that’s not art. But artists have always challenged that requirement: Dada’s art of chance & others.  Still, there is someone pulling the strings/causing something to happen.  Is this new environment different in the sense of shared autonomy?  The singularity is near, focused on intelligence/thought (not directly on art).  A human can take a leap of faith without following an orchestrated pattern.  A human is capable of subtlety and nuance; AI research says these are cliches that we will get beyond; there is no last frontier for the human mind.

New ways of extending authorship metaphor/be on guard for ways in which that might happen.  If we have a corporation generating all of the works and can maintain that control rather than creating a commons of cultural production, this could be a big problem.

Robert Brauneis, How to Fix Copyright Registration: A Proposal to Institute Graduated,
Periodic Registration Fees

Jaszi was involved in the §412 report. Provides incentive to create useful record; also, since statutory damages are exceptional, one ought to have to act in some exceptional but not difficult way to get them.  Is the CO currently providing information about ownership etc. in an optimal way?  No.  The registration records don’t even always contain names of authors of the registered works, making it much  more difficult to determine when the term of © has ended or who holds the power to terminate transfers. 

Why have courts sanctioned this practice? Before electronic registration, it was expensive and error-prone tedium of typing; afterwards, still concerns about system capacity. 12 million records of works potentially still under copyright until 1977 that are not electronically searchable or online through the CO.  1.2 million renewal registrations 1950-1992 not electronically searchable/online. Most registered works are in the public domain but we don’t know easily which ones.  Credit for figures: Zvi Rosen.

Recording documents: Means of submission, paper only; PTO electronic only.  Per year recordings: 11,000, v. 400,000. Staff of 12 v. 10 for PTO recording division. Average time from receipt to online cataloging 225 days v. one day.  Fee: $105 plus $35 per additional titles v. $0 recording costs at PTO. 

Lots of other things to be done: registration system that has API that would allow integration of registration application into authoring software like Photoshop, Pro Tools.  Integration of copyright information into user software (Spotify, Shazam).  Why not enough resources?  Total 2015 budget $48 million, only $28 million from fees.  Library of Congress has to balance its requests w/other asks, around $600 million, with CO only a small part.  PTO’s budget is $3 billion, all from fees. 

Those who benefit more from the PTO pay more. Diachronic differentiation: PTO changes fees over time.  Relatively small application fee going in, $280. But as you get more confident in proceeding, you pay more, $2560 total by issuance.  Maintenance fees at 3.5 years, 7.5 years, 11.5 years, increasing over time to a total of $15160. Also synchronic differentiation: discounts for small/medium enterprises of 50%, 75% for micro enterprises.  The result is a 24:1 ratio between what a micro enterprise pays at issuance versus what a regular enterprise would pay for a full term patent.

42.5% of patent office budget is maintenance fees.  Substantial percentage of filing, search and examination fees are 31.3%.  Differentiation in copyright registration is $55 for standard, $35 for single work, single claimant who is also the author.  1.5:1 ratio, and so the movie Avatar with $2.8 billion in revenue is paying 1.5 as much as the author of the Let’s Go Crazy video of her kid, Stephanie Lenz, with no revenue.

So we should pursue periodic registration fees & graduated registration fees.  Maintenance fees are prohibited for non-US works by Berne Convention & TRIPS.  [How many registered works are non-US works?]  However, periodic fees to maintain the additional benefits of registration are not: statutory damages and attorneys’ fees across the life of the ©.  Since they’re extraordinary, one should have to do something extra to receive them—and it shouldn’t necessarily be just once.  For US works, ability to file infringement suit could be added.  We could also extend the enterprise size differentiation of the PTO.  More radically: that has always correlated badly with the value of the work. Thought experiment: graduated fees for graduated statory remedy, attorney’s fee ceilings.  For $0, could give you actual damages.  $50: $200-$10,000; $200 gets more, and $800 gets $750 up to maximum.  [Might have to integrate that with small claims proposal.]

Graduated fees lead applicants to value their own works and evaluate their own desire to monetize those works. [Could you change over time and step up for subsequent infringements if infringement became common/the work became valuable? As long as there was no retroactive applicability, that could make sense.]

Is this a political nonstarter? Maintenance fees and SME discount came in 1985, and 2013 created the micro discount.  Odd crossing of paths: patent got more formality oriented as copyright entered Berne era.

Marc Perlman, How to Do Things With Romantic Ideology

First mentioned by Umbreit 1938, taken up by Benjamin Kaplan in 1967, who saw Romantic ideology as still influential.  Jaszi in 1981 followed Kaplan but suggested that the Romantic fever had broken b/c imitation was widespread in serious literature.  Litman (1990): romantic model of authorship was still alive. Influence of poststructuralist literary theory in 1990s made intertextuality part of critiques of © expansion. 

Most appeals to history advance a causal thesis about how literary theory influences law.  Called into question: may be implausible or at least overstated.  I argue that even if the causal thesis is correct, that wouldn’t itself delegitimize Romantic authorship, which might be a good/correct idea, like the conservation of energy.  There is no simple relationship between law and social norms; law is a site of struggle. Customary law: it can be hard to determine exact contents of norm except in the smallest groups. Literary imitation and borrowing was affirmed as legit by many in pre-Romantic literary circles, but there were also constant accusations of plagiarism in pre-Romantic literature.  Gap between aesthetics in the books and aesthetics as lived.  Cries of plagiarism were raised both for literal copying and for tenuous similarities.

Is Romantic authorship normative in our society today?  Kaplan and Litman thought so, but Jaszi thought imitation had lost its stigma.

Seeing how differently ancestors thought can unfreeze our minds, contemplate radical reform. It was the search for such inspiration that motivated Kaplan.  As things were different in the past, they probably need not be as they are. But there are problems w/this view: it is not easy to get from “things have been otherwise” to “things could be otherwise.”  Have been = often informal norms. As jurists, when we posit “could be” we usually posit revision of formal laws.  Difficult enough to read laws from practices; equally difficult to turn practices into laws. We need historical interpretations that are highly contextualized.  Trap of exoticism, others.

Anecdote about 15th c. Chinese painter used to support © minimalism by Lewis Hyde.  In ancient China creativity was an act of reverence toward earlier generations; to copy the work of those who came before was respect and not theft. Quotes Shen Zhou: if my poems and paintings should prove to be some aid to forgers, what is there for me to grudge about?  From Wen Fong 1962, used to demonstrate tolerance by painters towards forging of their own works.  But the full quote is about signing forgeries; someone asked the master to stop.  “When people beg me for my paintings, do you suppose they merely want them for enjoyment … they merely want them for making profit for them.”  Shen Zhou & colleagues were prominent intellectual/social leaders; as gentleman painters, they weren’t supposed to accept any fee, and demands were often a nuisance. They would thus be willing to lend their names to imitations. Not a purely selfless display, but highly contextualized. He wasn’t supposed to earn money; those who clamored for his paintings had found a way to profit that he couldn’t use.  He looks less like a defender of the commons and more like a sly critic of the venality of his “admirers.”

What then?  Romantic ideology thesis is a polemical weapon.  Weapons are inherently disloyal tools, don’t care about uses to which they’re put. Historical examples can also turn against their masters. The only sure way to prevent betrayal is to avoid historical examples entirely.  Scholar asks what is; jurist asks what ought to be. Scholar has no special expertise in ought, but may enable jurist to liberate her imagination.

ABA amicus in Lee v. Tam

The ABA’s amicus in Lee v. Tam in favor of neither party is largely strong (though I don’t agree with everything therein) but does contain one argument that is unworthy of the ABA’s trademark experts:

The theory that otherwise valid marks become unprotectable because they are unregistrable also cannot be reconciled with Section 43(c) of Act, 15 U.S.C. § 1125(c) (2012), which protects the distinctiveness of famous marks against likely dilution. Under that statute, whether or not a mark is registered is merely one of four nonexclusive factors used to determine whether a mark is sufficiently famous to qualify for protection. See 15 U.S.C. § 1125(c)(2). The nonexistence of a registration therefore does not preclude actions brought under that statute.

This is a classic fallacy of the excluded middle.  It is completely consistent with §43(c) that dilution protection could be available for a registrable but unregistered mark but not for an unregistrable mark.  The ABA takes the position that unregistrable only sometimes means invalid and unprotectable; I strongly doubt that it wants invalid marks to be given dilution protection—but on their theory that registration isn’t dispositive to dilution, such marks should be eligible.  (Actually, the ABA's position that invalid marks ought to get some "protection" under the common law and §43(a) implies that maybe the ABA does want dilution to be potentially available.  However, that "protection" has historically been not a prohibition on use but an obligation on the second-comer to sufficiently distinguish itself from another's generic, functional, or abandoned use, which is a confusion-based remedy that has no obvious purchase on dilution.  Even the remedy suggested by the court of appeals in Belmora to implement Bayer's §43(a) right based on its Mexican rights was supposed to respect the defendant's rights to use its registered mark in the US.)

The difficulty with the ABA’s theory overall, though it is not an insurmountable one, is that there is no statutory guide for which unregistrable marks ought to be considered “invalid” and thus entirely unprotectable versus which should be merely unregistrable and protectable under §43(a).  History may provide some guidance, but it’s actually pretty wobbly on a lot of the categories of unregistrable marks.  This is one of the points I make in my forthcoming article on registration.

Jaszi festschrift, Panel 1 – Traditional Knowledge

Intellectual Property and the Public Interest: Toward a Festschrift for Peter A. Jaszi

Boatema Boateng, “Tradition” and the Production of the Other in Intellectual Property Law

Jaszi’s questioning of received wisdom of copyright law is a key influence.  How different cultural forms have been shoehorned into © while others have been denied entry.  A matter of power, as well as overlooked similarities among kinds of knowledge production. It must be more than coincidence that forms still denied protection are produced by global South and by specific subject populations in North and South.  Ghana’s protection under ©: while fabric designs were protected under industrial design, other elements of local culture weren’t protected for a long time.  But in 1860s-70s Britain began to turn interest in Ghana from slave raids to territorial control and resource exploitation (gold). Asanti made adinkra cloth; resisted British control, but Empire claimed elements of Asanti culture through ©.  Britain had no qualms about questions of originality that now dog protection for a range of cultural forms—it simply used © to claim cultural forms for itself.  Reinforces her view that protection distinctions are matters of politics, not philosophy.  It’s easy to assign formal equivalence to positions in debates over protection for traditional cultural forms, especially in UN.  Yet for most ex-colonies, modern nationhood doesn’t translate to modernity in the eyes of outside observers. 

Forms of subjugation changed over time: dominationàideas of underdevelopment.  Most former colonies have gained formal independence, adopting trappings of modern nationhood including legal systems.  But this doesn’t make them fully modern, as you can see from the persistence of the concepts of modernity and of tradition, tribe, etc.  Culture and knowledge of indigenous people defined as folklore, traditional cultural expressions—serves to fix the people who produce this knowledge in a subordinate position to the people of Europe.  Exclusions from IP law exist in US quilts on the basis of gender & categories of art v. craft; it’s clear in quilting that this isn’t traditional knowledge and yet it still raises the same questions of originality/entitlement raised with TK. 

Not all gloom & doom: possible creative use of these categories to push at boundaries of resistance.  Indigenous people do innovate!  But the double standard has facilitated shoehorning of software to © and patent while firmly resisting protection for cultural expressions of global South. Key issues are not only about what’s protected and why but also about whether those who produce have gained full admission to the benefits of humanity.

Lorraine Aragon, The Third Enclosure: In Search of Porous Fences around Traditional Cultural Expressions

Third enclosure: shift from covering material fixations to claiming indigenous elements with blurry boundaries as national property.  Romantic authorship doesn’t seem to be part of this law. Her work began with religion in Indonesia.  Rice fields were reallocated annually; “owners” were the deities and people were the managers.  Most Indonesian traditional artists show little interest in either IP or cultural property claims, while high-level officials support regulation of TCEs.  Jaszi investigated effects on artists; talked to lots of artists and gov’t officials (w/Aragon).  Jaszi wrote final report, 2010. Discusses promises and perils of conventional IP, and what sui generis right would provide.  Mobilizing IP in discussion v. TCEs.  Production (arts) v. product (TCEs).  Conventional IP is robust and tested internationally, but TCE protection isn’t.  IP is a metaphor, and so is culture—it’s a noun of process, not a product: the tending of something—crops or animals (Raymond Williams, keywords).  We tend to use it in anthropology as an adjective rather than as a noun, which seemed too fixed.

From traditional arts to Ethnicity, Inc. Perfect storm of financial pressure to move from natural to cultural resources + human rights and cultural heritage rhetoric.  Yet out of touch w/how art process works, how authority works, how IP works.  Law as politics, like North Carolina’s HB 2 “bathroom bill.”  Giant solution to relatively small problem. Gov’t and media tap into public anxieties—cultural theft, sexual boundaries.  Incapable of being implemented: the Indonesian law has no implementing regulations; NC is not going to check birth certificates at bathroom doors.  Multi-scale politics and aspiration: speaking to issues working at higher or lower levels on political scale.  Cultural theft in Indonesia: the enemy is always Malaysia, accused of stealing many genres (though they’re shared in a long history).  Indonesia: 4th most populous nation, thousands of ethnic groups, hundreds of islands, lots of hybridity already. Political intervention: expressions are matched w/provinces which are matched w/ethnic groups as if everyone was matched at the border.  A process of fixation.  Invented traditions. 

Dizzyingly different to distinguish between traditional works and new creations based on traditional elements: Jaszi said that old forms were once new forms, and new forms are always based on elements from the past.  Disrupted the narrative of modern innovation v. old static existence.  Invented traditions aren’t not just nostalgic fictions, but often forgotten/unforeseen art trajectories.  Art repertoires as extended minds. 

District officials have attempted to © traditional “chicken eye” pattern.  Optimism: Indonesia has always had plural legal systems, always in dialogue.  We know that Indonesian producers are clever in managing their own knowledge; it’s not democratic or evenly distributed, but it is locally negotiable as top-down is not.  Related or neighboring rights for performers not well-recognized in Indonesia; could be important for some groups.  Other possibilities: certification marks, etc.  We don’t want this law to be an eminent domain, top-down law, where the commons becomes “waste”—traditional arts’ functionality is ignored when it’s not monetized. But Indonesia has many arts entrepreneurs—might want a legal boost, but not legal dynamite.

Ruth Okediji, Traditional Knowledge and the Public Domain

Property rights regulate distribution/use of scarce resources; so when nations agree to grant property rights in intellectual creation, they’re not only encouraging investment but setting baseline for competitive relations among different people. Every property right contracts the interests of others/adjusts the competitive landscape.  A neutral way to express concerns: new rights harm the public domain, a powerful concern w/particular resonance at WIPO. 

“Traditional knowledge”: search for language to anchor claim for protection against piracy—indig. groups have used the same language as “authors”—they claim there’s no such thing as a global commons.  Recognize public domain as important consideration, but it’s clear that early acknowledgements proceed from different premises. Some countries view public domain as a threshold for protection, and others view it as distraction raised by elites from the global North or of little relevance for interests that lie beyond the traditional patent/©/TM fields.  Public domain is thus a lightning rod in int’l negotiations.  Attempt to find common ground often cedes principles for which we are contending. 

Indigenous groups have real concerns.  “Common heritage of mankind” developed global knowledge infrastructure using plant genetic resources and TK.  Int’l institutions have been built around the idea that this belongs to the public and should be freely/methodically exploited by big institutions.  But the idea that public domain only represents the attempt to recontrol or reallocate resources of the global South goes too far.  Need to assert definitions of public domain as part of TKE; remains skeptical that current proposals are actually in furtherance of global South; privatization and prevention of border-crossing will defeat the very purposes for which we value knowledge. Property begets property in a vicious cycle.  The purpose of the public domain isn’t to deny property rights but to establish a zone in which human beings, communities are able to engage in the oldest act of human expression, the creation of knowledge itself.

Fumi Arewa

Nollywood films: the film production quality weren’t to global standard in early days, but that’s changing—Toronto film festival premiere.  Authorship comes in all kinds of places and forms. Nigeria had very little IP enforcement during the emergence of Nollywood: huge global film industry, challenging assumptions about IP.  IP is very important for creative people, but we over and underestimate its importance in various situations, which Jaszi has drawn attention to in his work.  Attitudes have been shaped by external pressure saying that IP rights are really really wonderful.  Nollywood producers were a tough nut to crack on fair use; they thought fair use was bad for filmmakers. Jaszi, in two hours, got them to start thinking about how fair use could be an important part of IP and important for them.  Developing countries need an IP agenda appropriate to their situations, not externally derived, despite reality that much of IP will be TRIPs-derived. She wants to know what IP does for them and for domestic creators.  IP has been externally derived for a long time—a lot of IP laws on the books.  Digital colonialism: take a second look at historical narratives about lawmaking.  During the colonial period, people were upfront about what they think. Legal systems in places like Nigeria were overlapping and didn’t take account of conflicts; they just copied British laws or laws from other colonies.  No consideration of local or public interest in discussions of laws, which are often still on the books.  Countries are starting to look at this overhang of externally derived law, but it can still harm economic development.

Irene Calboli, (remotely from Singapore) Geographical Indications, Economic Development, and Cultural Heritage: Good Match or Mismatch?

Asian interest in GIs is serious, going far beyond pressure of EU.  Anti-American, anti-New World in EU version, but also interested in protecting GIs as potential for marketing products internationally. To what extent that potential really exists is up for discussion; it can help or can be useless.  Case by case.

Little farms in France and indigenous people want recognition—a moral rights aspect to GIs.  Understandable, but fundamental issue with value of component inputs, foodstuffs v. products that go through more processing.  There can be excellent spillovers for land, people, sustainable development when consumers can be convinced to pay.  Public interest for consumers: accurate product information; narrative of trace-marks.  We need to tailor GI protection for better and more transparent ways for consumers to know where products are from and how they are made. Local developers won’t be able to cheat if the how is clear.