IPSC session 4

Session 4: Old and New Theories of IP
Shyam Balganesh, The Common Law of Copyright

Censorial copyright claims: motivated by non economic, dignitary concerns, and the author/creator’s principal objective is expurgatory—to prevent the work from circulating publicly. These claims have existed from the origins of Anglo-American copyright. We treat them as illegitimate b/c of incentives myopia. This exists w/in the moral rights paradigm, the right of withdrawal/repentance right. In one jurisdiction, author has to purchase copies at lowest available price. During 1965 © revision study, they considered withdrawal right & said it was absurd, though they were aware it existed. 

Pope v. Curl, 1741, private letters published. Real theorizing in 1818, Gee v. Pritchard: analogous to revenge porn, correspondence b/t husband & wife about illegitimate child.  © grants injunctive relief even though this isn’t about encouragement of learning: legit interest and injunction granted.  Similar in Prince Albert v. Strange, 1849, sketches by Prince & Queen somehow acquired, again injunction granted. Folsom v. Marsh discusses Gee & why letters should be protected.  Woolsey v. Judd, NY 1855, discusses interests beyond just works of literary merit that ought to be protected. Clear recognition of necessary balancing: public interest; what if the party to whom letter is directed needs to publish to vindicate himself; etc.  Salinger v. Random House: an account that builds on the early cases, very much a censorial claim. Michaels v. Internet Ent. Gp., 1998, attempt to put it into terms of statute that is facially neutral in terms of its theory.  Doe v. Elam III, 2018, revenge porn case with $6 million award: © may be an imperfect fit, but it has always played this role.

Not claiming that these claims ought to flourish and blossom or extend into new domains. Recognizing them as a distinct category allows us to grapple w/the underlying concerns that accompany this category, the First Amendment primary among them. [It is not clear to me that many people have missed this point under current doctrine, but ok.]  Harm produced through expression: can be copyright harm, or other harm, e.g., defamation.  W/in copyright harm, there are also distinctions: appropriative harm (market or even non-market terms per Drassinower); in situ reputational harm (integrity rights: the harm is to the work, not to the individual in any other distinct way); and disseminative harm (harm from public circulation of the work)—the harm is really 106(3) distribution.  The author’s inability to exercise the right to exclude is seen as an infraction of the author’s autonomy.  The idea of right to exclude starts having resonance w/in the censorial claims—overtone of Hegelian personality interests, which has been misapplied in many other © situations. The conduit through which Hegel conceives of authors rights comes through property.

There’s also an authorship interest here. The connection b/t the creator and expressive work is critical to these claims. Author’s personality/dignity. [But see Monge—what is going on there? It is just as censorial/privacy-based.]  Distinct between 106A moral rights: the harm isn’t in the work as such but through it—the dissemination of the work is what generates the harm, not the existence of the work.  [How does that work with the attribution right?]

Recognizing these as distinct analytically allows us to better police them from a 1A perspective. We might validly draw from other censorial claims: defamation, false light—no strict liability; actual proof of harm needs to be shown for recovery, no presumptive damages/punitive damages.  [How is this different from saying © isn’t for these kinds of claims.] Could do this directly or through expanded fair use—nature of the work could accommodate this.

Joe Miller: Reconceptualize Harper & Row through this lens. Congress’s modification of the law post-Salinger about unpublished works arguably makes your approach harder [I would say less persuasive].

A: yes: conflated right of first publication and right of withdrawal. [Further discussion makes clear that he doesn’t think there’s been conflation by Congress but rather what he calls a partial recognition that the moral interest for unpublished works is distinct from the moral interest for withdrawal, but I think he believed that the availability of injunctive relief was sort of a withdrawal right, with which I disagree.] Distribution & publication were replacement categories from old acts.  Q is whether the same interest carries over to published work, and he doesn’t think that distinguishing published from unpublished makes sense.

Andrew Gilden: Scientology case where guy tried to withdraw work in order to screw with Scientology.  There’s an effort to acknowledge the economics of withdrawal, but differently.

Q: constitutional basis for the incentive theory, but not for this. Older English cases may be interesting for common law history but that’s not necessarily what Art. I sec. 8 cl. 8 allows.

Uri Hacohen (and Peter Menell), Unjust Endorsement: Tiger Woods endorsed Stanford Financial, revealed as Ponzi scheme.  Advertiser’s challenge is to overcome consumer skepticism. Distraction/stealth to overcome resistance; also endorsers and other mechanisms.  Early endorsements were mostly in print.

Changes: scale; people famous for being famous. Fake follower, reviews, likes, news.  Strategies have expanded online: distraction, stealth, repetition, exploiting connections/children etc.  This is troubling, but regulation is limited.  Norms remain of limited effect and endorsers don’t seem constrained by norms; rather they’re competing for income.  Other relevant considerations include social surveillance, public health from overconsumption.

Deception is easy.  Endorsement disclosures are somewhat regulation. But there should be a private right of action/class action remedy. Whistleblower immunity/rewards per SEC.  Endorser liability should be seriously considered.  Disgorgement/punitives as remedies. Higher standards for disclosures—for doctors, medical product manufacturers have to disclose any payments or other transfers of value to physicians or teaching hospital. Patients can see that, b/c doctors now fear to take drug money. If they take money and don’t disclose, they risk public sanctions. Should have the same disclosures for other endorsement relationships, available to consumers and IRS and social media; FB and Instagram could use technological tools to ensure this information surfaces.  Morality and social industry norms need to change in this direction.  Anti-tobacco public service ads as a model: funded from tobacco tax.

Jeremy Sheff: There’s fair amount of evidence about ineffectiveness/counterproductivity of disclosure; evidence of compliance will be misread as evidence of credibility, as in health supplements market where consumers interpret the “not endorsed by the FDA” statement as meaning “the FDA has checked this and allowed us to say this.” [Also a licensing effect on disclosers.]

A: we are advocating a registry. Consumers who want to look can. This is about cognitive limitations around consumers; don’t say there’s no justification for trying to educate consumers [fortunately that’s not what Sheff said]. We want to help consumers understand that Captain Crunch isn’t their friend—kids have cognitive limitations. [And the evidence is that those limitations are hard to overcome with disclosure; it might be that a ban on cartoon endorsers for kids is the best solution.] Tobacco campaigns have studied this issue extensively.  W/social media, we have to be especially concerned w/how our brains are being influenced, and the FTC is overwhelmed now.

Irina Manta: if endorsers say something they know is incorrect, more people would be fine with liability, as opposed to having duty to investigate on the part of the endorser.

A: Sure, duty to investigate. Whether Stanford’s endorser knew or not, he got $8 million and a lot of people invested in a Ponzi scheme. That money should go back into the pot for victims; he was unjustly enriched.  More punitive when they knew or should have known. But esp. for bankruptcy we should look at moral responsibility and have him disgorge.  [I like it.  Much more likely to have an effect on behavior than disclosure; it operates on the incentives of the endorsers directly.]

Manta: there might be a temporal element—if it was 10 years ago he endorsed, different.  Will be difficult to assess when they knew.

A: changing the cultural environment.  If Beyonce takes $50 million from Pepsi, she needs to accept her part in what Pepsi is doing. 

Irina Manta, Explaining Criminal Sanctions in Intellectual Property Law

Common & civil law are the usual/historical actors in IP; criminal sanctions have tended to involve force, only more recently expanding to lots of nonforcebased harms. One justification has been analogy to theft.  Generally no danger to safety of owners, other harms of theft.  If not theft, what is IP infringement? Perhaps vandalism—reduction rather than elimination of value; owner can sell/license; in rare cases (Banksy) can increase value. Another analogy: trespass.  Criminal sanctions for IP are generally higher than for vandalism offenses with the same value reduction. IP owners should accept the limitations on the property analogy, which are that not all property crimes cause the same kinds of harms and justify the same kinds of sanctions.

Why is there no patent crime?  Litigation is very expensive, and patent registrations are by far the hardest/most expensive to obtain and confer greatest power to exclude. But: registrations are often invalidated; patents are complex; willfulness is an issue.  Purposeful patent infringement represents a very low percentage of overall patent infringement; recent tech has had a much larger effect on ©/TM infringement than on patents. Goods that are patented and pirated are often already sold with counterfeit TM as well, so there’s no need there.  Thus the costs of criminal sanctions in patents would be greater than in TM/© and the benefits lower. 

Daniel Hemel: SEC is a good analogy—securities fraud is like counterfeiting.  FDCA violations: related to what you’re saying about pharma—there’s separate criminal sanctions for that.

Q: given the differences in actors, you might say more about criminalization against corporations v. against individuals. For patents, you might talk more about the actual costs, what a trial would look like [if there weren’t a plea], gov’t expertise v. relevant private parties.

Peter Menell, The Use and Misuse of Intellectual Property Kinship: IP isn’t a monolithic term—we spend a lot of time dealing w/channeling doctrines; it’s a key role for cts even though it’s often not spelled out in the doctrine itself.  Examples where it is: Idea/expression; useful article; functionality.

Mistake introduced by Sony v. Universal.  We ought to keep in mind that patent and copyright are pretty different regimes, merely linked sequentially in constitutional text. Design patent is much closer to © and shouldn’t cover functional elements—this is a big mistake that needs to be corrected.

Functional analysis of IP kinship: utility patent is an only child.  There may be some cousins (API copyright; design patent) but the point is that this is a family with a single child.  Don’t want other children treated the same—utility patent supremacy principle.  But some of the other issues, like tax, sure, it’s a family with lots of kids—w/r/t treating the asset of IP similarly, sure.  Likewise bankruptcy.

Interpretive issues: courts often fall back on historic kinship when it doesn’t work very well.  Sony: does patent’s blanket immunity for any dual use tech make sense for ©?  He doesn’t think so—there are too many differences b/t what they seek to promote (tech v. art), whether complements provide systemic threats to the system, etc. 

Kirtsaeng: int’l exhaustion.  Wiley wanted to say it had the right to import under §602.  Kirtsaeng: first sale means it’s lawfully made under this title (in accordance w/the © Act).  Ginsburg’s dissent is compelling, even if you agree with the Court’s normative result.  Patent version of that case a few years later: Roberts appeals to similarity of patents and ©, but doesn’t attend to footnote about the differences b/t them and throws caution to the wind. 

eBay: draws on © law, even though prior © cases always gave injunctions; prior SCt cases like Tasini had just talked about how you could deny them.  Then people applied it to TM law.  We should have been more contextual.  [I think this is about anti-patent exceptionalism in the SCt, not about kinship—note that this is the first time he’s mentioned TM since the first slide with a bunch of other things that also aren’t mentioned. The remedies language in the statutes are similar b/c that’s what federal remedies language tends to look like—see also Winter, which TM and © courts have also looked at but which is about environmental law.]

We use metaphors as shortcuts b/c IP is hard and a lot of the statutes are terse and court-elaborated.  Our SCt doesn’t have consistent ways of interpreting anything, so historic kinship can organize votes; Congress doesn’t get around to fixing things.  This is slopply, lazy, distorted, and path dependent.

We could learn a lot from comparing and contrasting. Utility patent spends a lot of time on claim construction. Should be more careful w/design patent. Let’s learn. Bratz litigation: persuaded DCt to hold essentially a Markman hearing on ©.

Joe Miller: SCt briefing: does it shed light on the degree to which the adversary process invites thoughts in kinship terms or not?

A: this is how I get research projects—look at the lawyers’ choice of argument. Sony made this argument routine. SCt doesn’t want to learn this rich complexity. We should demand more of our highest court. [But that’s not about eBay, is it, where the transfer to TM is in the lower courts?]

[My Qs] It’s also about ROP—he talks about Saderup in the paper.  [And I definitely think that Saderup is a terrible idea.  But it can’t be about a historic kinship insofar as the connection b/t © and ROP was invented in Zacchini.]

Kristelia Garcia: given the differences b/t music, books, etc. would you go so far as to say there should be book copyright, music copyright, etc.?

A: we’re the scholars: that’s our job where appropriate.