WIPIP 2022, Session 3 (ROP/TM, (c) fair use)

Emma Perot, Publicity Rights, Celebrity Contracts, and Social Norms: Industry Practices in the US and UK

Fenty v Topshop: Misrepresentation/passing off theories were successful for Rihanna in UK. Interviewed 78 lawyers in London, NY, SF, LA. Does it work differently in the US where there is a separate ROP? When, how and why would you seek permission to use persona. Influence of law, desire to contract, social norms. Industries: advertising, merchandising, movies/TV, and video games.

Results: fear of potential litigation motivates permission seeking even when free speech rules would likely allow the use, e.g. in movies. In UK similar nervousness, thinking that celebrity protection will grow. Deterrence and morality were both invoked—rightness was informed by the law. Where permission wasn’t sought it was either due to disregard or ignorance.

Desire to contract: contracts clearly define scope of rights. Even where permission not legally required, thought was better results due to advances in technology—social media influencing: the advertiser wants customized content. Movies: want access to info they wouldn’t otherwise have. Video games: want motion capture. So there’s a need to work w/the person for a better product/outcome in the long run.

Social norms: Backlash from fans if permission isn’t sought, and they’re the ones you are likely targeting. Permission-seeking also sends signals to other celebrities: this is a good company to work with. Celebrities may collaborate on designing the product.

Glynn Lunney: Examples in the US seem to fall under common regimes—what about where the law clearly doesn’t cover the use, such as use of a photo on the cover of a magazine when there’s reporting about the subject. Or time differences: in the 1950s where the rights were less established.

A: Interview basis made time hard to account for, but some lawyers did mention that things have changed a lot since the 1980s.

Jessica Silbey: Methodology chapter could be very good as an appendix. Sample contracts would also be great.

A: contracts were confidential but may be able to talk about standard terms. If anyone knows someone who would share a contract that would be great.

RT: Litigated cases about influencers might have the contracts as part of the record. I’d also be really interested in discussing the role of gender. The position of calling on an army of fans to defend you/your honor/your rights of control is interesting in terms of gender; also it may be that this happens to female celebrities more. Also worth contrasting cultural appropriation/ripping off designs from artists who aren’t celebrities—social shaming seems much more hit or miss for a noncelebrity even when a © claim would be plausible or even clearly right.

Andrew Gilden: how much does ROP matter when it mostly seems to implement passing off?

A: yes, it just seems like an even easier shortcut to a result that you could also get from passing off. UK lawyers may assess the evidence differently; they emphasize evidence of confusion, whereas US analysis of false endorsement just doesn’t impose a very high standard.

Gilden: could this be about pleading standards/surviving a motion to dismiss?

A: yes, this plays a role. Needs to think more about procedural aspects.

Betsy Rosenblatt: you don’t necessarily need a solution to have a successful book. Jessica Silbey’s book The Eureka Myth is great and what’s so effective about it is its focus on mismatches b/t norms and the law. Saying “this is what people do” compared to “this is the law” is very useful.

Bill McGeveran: interesting b/c privacy/data protection regimes are very different in the two regimes. Was there no overlap at all?

A: History differs a lot—US foundation for ROP was set much earlier.

Justin Hughes The Sub Rosa Rules of Copyright Fair Use

Two competing descriptions of fair use: (1) Vague, unpredictable, ad hoc. (2) Stable, predictable, coherent. What’s going on? You can cluster fair use cases. This is a version of (sub)rules emerging from standards and fits into a larger account of rules v. standards in law. We use rules when we think we need bright lines for predictability; when there are repeated fact patterns; and when we don’t trust ajudicators. We use standards when we anticipate unexpected fact patterns, want a lot of balancing of individual circumstances, and trust decisionmakers. Fair use in the statute is clearly a standard, which is even clearer when you look at other exceptions and limits, which are specific to rights, uses, and/or users. 107 is the only exemption that applies across the board.

Rules v standards is never a one time choice. Courts can take legislative standards and convert them to rules and vice versa. Fair use is a standard that can be used to generate rules for subsets of cases. The core of the norm remains a standard. Similar to the Fourth and Fifth Amendments—the Court has taken a legal standard and added judicially crafted rules to apply to particular repeated circumstances. Section 1 of the Sherman Act, saying that every combination etc. in restraint of trade is illegal. Sounds like a rule, but has turned into a standard in courts. From that standard, per se rules emerged along with rule of reason analysis. Fair use rules: parody; disability access; judicial proceedings; etc. Those are where fair use is stable, predictable, and coherent.

What are the characteristics of rule formation? Factors become less important or irrelevant, or reshaped. Case law dominates over statutory consideration of factors. Attorneys can advise clients confidently of what they can/can’t do. Rule formation is thus characterized by a dropoff in cases. Thus, intermediate copying for reverse engineering of software is now a rule. Sega v. Accolade, Sony v. Connectix=new rule. There weren’t followup cases from 2005-2017; only six cases cited those two cases and two of those were Oracle v. Google, because the rule was clear.

Critiques: it’s only a rule if you have an authoritative formulation. That’s a normative conclusion about what counts as a rule. Karl Llewellyn didn’t agree (nor did Posner). There are lots of rules that exist w/o single formulations and can even defy single verbal formulations.

Another counterargument: unlike antitrust, or 4^th or 5^th Amendments, courts say there aren’t rules. Will that be the first time you ever encounter a court doing something other than what it says it’s doing? In his concurrence in Campbell, Kennedy said that the common law method presumes that rules will emerge from the course of fair use decisions, which is exactly what’s been happening.

Courts may have misunderstood a bit of what Congress intended. The Campbell majority says “no bright line rules, Congress didn’t intend that,” citing to the legislative history. The leg history says that b/c of the variety of circumstances, that precludes the formulation of exact rules in the statute, which doesn’t prevent courts from doing it.

Transformative use: does that jeopardize the rule-forming nature of 107? No, b/c transformative use doctrine has already produced a searchable database rule. Evidence: when you get to TVEyes, the search function is completely unquestioned on appeal; Fox only challenges the “watch” function; it knows it can’t win on search and so gets a better chance of winning on watch by focusing on that.

Bill McGeveran: Reminds him of things Leval has said about TM law—evolution from standard to, effectively, rule. One problem in TM, and maybe in ©, is that cases are often not litigated; litigated cases are often odd in ways that make them stand out from day to day practice. It’s good to say that rules emerge from standards over time, but you have to have decisions for that to happen, and that’s a substantive concern about the process.

A: my claim that litigation goes away would have to be “litigation goes away when that’s the sole issue, but may be added when it’s secondary to a dispute or the parties are acting irrationally.” But you don’t need a SCt decision for the rule formation to happen.

McKenna: another analogy—Holmes/Cardozo colloquoy about the nature of negligence. Holmes says that over time generalist idea gives way to rules. Cardozo says every case is unique. How do you think about scope of rules and their stability over time? We fight over what are the essential features of the rule and what the boundary conditions are. Sony is an example of revising the rule about secondary liability b/c internet downloads have enough different features [RT: also revising the rule about noncommercial copying]. So how do we know when the rules are stable and what their boundaries are?

A: Many law academics take a holding and express it broadly, but practitioner would express it more narrowly. Don’t take our interpretation of Sony and say then it got cut back; what, after Sony, did lawyers advise their clients they could do? [But we’d have to know what that was, which we don’t unless we go back into the files of lawyers in the 1990s and 2000s.] A rule has a clear core and a vague penumbra; a standard is penumbra all the way through.

McKenna: but sometimes the core shifts.

Lunney: Grokster was clearly advised by its lawyers that Sony protected it, and won in the 9^th Circuit.

Rosenblatt: relation to customary norms, e.g. about transformative noncommercial use as okay. No court has ever held that a transformative noncommercial use is infringement. Why not? It’s possible that no court has ever encountered such a case. Where does that fit in?

A: he would not claim that as a rule—requires judicial development. Another indicia of rule formation: if you go to other countries and find that they have a codified rule to allow limit/exception that we cover under fair use, and if that country’s treatises on © refer to US cases to figure out what that rule covers, then what’s in the US is a rule.

Justin Koo: sees that with lots of fair dealing provisions being explained in fair use terms, e.g. in the Carribbean.

RT: I find the paper convincing but maybe most convincing about hindsight. Example of contested “core” from the paper—photograph copying—Hughes says there’s an emerging rule of no fair use, I think there’s an emerging rule of no fair use if your organization is primarily in the business of making and using photos, but fair use if talking about your own activities is how you mainly use photos and the photo is related to your own activities—I think the flood of 2020 SDNY cases bears this out. So the question I would ask is what we do with this insight? Ask judges to be more honest?

A: it’s about better understanding what fair use is, and by the way explains why we comply with Berne. Berne is ok with standards like the ones we have.