IPSC Breakout Session #1

Too much to choose from; I prioritized things that were new to me.

Mark Bartholomew, A Right to Be Left Dead

If we can create new works in a dead author’s style after they’re gone and create conversations with them (including loved ones) after gone, and populate new entertainment with dead actors, isn’t that something new? NY State created a postmortem right of publicity specifically for computer-generated likenesses; Louisiana did so too. IP Subcommittee on AI: was a lot about whether we need a national ROP to deal with this. Wants to focus on the relevance of death.

How do other areas of law treat relevance of death? Map onto 3 main rationales for ROP.

Dignitary interests: false light, IIED, privacy typically expire w/person. There is some exception for actions immediately surrounding death or moment of burial. Death closes things off.

Consumer protection: laws meant to protect consumers, death doesn’t matter—Princess Diana’s image on collectible plates—TM claim was maintainable. So too w/false advertising. Makes sense b/c consumer protection law’s goal is information safety and not vindicating rights of decedent.

Property law: somewhere between all and nothing. Decedent’s operative intent to extinguish property right—when you bury people w/jewelry by their choice, no estate tax; it just disappears. Body parts. Forced share laws for spouses. To fix suboptimal postmortem allocations.

Need and precedent: how is AI being used to reanimate people? One use is grieving: used to create a chatbot w/specific person corresponding to a past entity. Advertising: false endorsement potential. Actors’ strike is in part about who controls past performances if they’re being used to populate new media productions? Great deal of variability in postmortem ROP. Okla and Indiana give 100 years, potentially infinite in Tennessee. Entertainment: stronger ground to articulate right in performances; incentive story makes more sense for this than for other invocations of right of identity. Stare decisis: can we really fight this any more?  We can at least fight how we structure the rules of postmortem ROP when it’s only found in about half the states.

Solutions: better ways to articulate postmortem wishes, including a way to abandon postmortem publicity rights. Putting it in a trust like Robin Williams did might not be enough—might be fiduciary duty to use it commercially.

Duration: goal is to recreate original; the right shouldn’t extend long past death, because the key is generational change/asserting difference from previous one is a key mechanism.

Prior exploitation requirement? Need to have used identity commercially during life in order to trigger postmortem right. Death is a demarcation point in many circumstances; we should have a mechanism for free use for research and other purposes for most people who didn’t have opportunity to commercially leverage persona during life.

Fred Yen: why analyze things through interests of dead person at all? Couldn’t we look at it through the interests of the living? Grief trolls—sending a person messages from deceased loved ones would be IIED; copyright can handle performances, collective bargaining can handle digital models in Hollywood. There’s lots of reasons to keep the dead from having too much influence over our lives.

Mark McKenna: many recent issues over use of personality after death would have been unanticipated during their lifetimes. How practical is it to imagine needing affirmative steps to anticipate those uses? Why not just a set of defaults?

[My thoughts: Intro sounded to me like classic anxieties over what currently seems like realistic tech of representation—putting words in mouth that never said happened in written word, in print, in image, in cartoon, and there have been repeated moral panics about how everyone will perceive these as real/deceptive; we just keep resetting our expectations.]

Consumer protection/TM: why would ordinary consumers care about consent of estate or believe there was unified control? And why would endorsement of estate equate to endorsement of celebrity in consumer’s mind? Assumptions skipped over in TM/false advertising analysis.]

Lucas Osborn, Christianity & IP

Core: creation, Fall, redemption, restoration. Genesis: G-d said, “Let us make man in our image, after our likeness. And let them have dominion over … all the earth.” Humans are categorically different from other animals and have some special relationship to G-d, our creator; we have a purpose in the world. Thus, we are created with creative tendencies/desires to create.

But all is not well because of the Fall. We also have a tendency to sin. The legal construct we use for that is the wealth maximizer, who maximizes their own happiness. We also sometimes act irrationally b/c our reasoning is messed up. Nonetheless there is still goodness in the world. That can map onto behavioral law & economics. We will not always act justly or see correctly what the just thing is to do.

Humans will generally not create at maximum potential or create things for the common good or use creation in a just way—incentives may be able to intervene here. Example: drugs that are overpriced; but even within Christian worldview, fallen humanity may require attending to incentives.

Deborah Gerhardt: Tree of knowledge is part of the Fall. Jewish theology sees this as opportunity to do good, to choose good or evil, a maturation of knowledge. We wouldn’t need rules if there was no difference.

Jeremy Sheff: Spread of knowledge—evangelical perspectives may differ from nonevangelical. Catholic tradition about authority over congregation/knowledge is very different. Control over text is part of some traditions, along with control of knowledge that might conflict with or comment on the text. Can you separate those issues from the theological issues? IP is as much about distribution of knowledge as it is about creation.

Dustin Marlan, Trademark Disclosure

TM registration requires disclosures just as patent does: undertheorized. First use/use in commerce date, drawing of mark, goods and services, owner, domicile.  Why? Protecting brand investment and consumers?

The TM bargain: registration can be made in a form prescribed by the Director, so there’s some statutory flexibility if we think policy justifies it. Specimens: one per class, as currently required.

Benefits: nationwide right of priority, evidence of validity/exclusive ownership, right to police imports, incontestability after 5 years, symbolic benefits like ®. Constructive notice to the public is often thought of as good, but it can put the claimant on the radar (as trade secrecy is an alternative to patent)—people could find you and send you a C&D; admissions could be detrimental in later LOC analysis, e.g. conceding to a disclaimer; might want to file in a jurisdiction without disclosure like Trinidad & Tobago to avoid tipping off the market; icky mark or brand could be unpalatable to the public.

Could TM disclosures be tweaked to make them more consumer-friendly? TESS is a mess. Could it be more consumer-friendly to allow more comprehensibility to the lay public?

RT: not sure that disclaimers ever matter to future rights, but collateral estoppel/B&B is a big deal now, as is the loss of potential defenses after Jack Daniels. Also I’m not sure that you can ever make registration an engine of consumer protection b/c people never look up classes, first use date, etc.

Justin Hughes: analogy to patent applications—written description and enablement are quite different. Classes/goods and services might be the closest analogy to metes and bounds.

Mark McKenna: natural to think about goods & services as description of claim in a world where the claim is for a word mark; the boundaries were clearer for Nike. But many other applications are less clear for what they are, and we need more rules around that. Courts don’t follow PTO rules about dotted lines; they aren’t careful about what the mark consists of or comprises, especially to get to inherent distinctiveness. That’s where disclosure rules need the most attention: definition and relation to what courts are going to do with the registration.

Alex Roberts: Different reasons to choose not to use system—stealth registrations in T&T are different versus “we define trade dress when we choose to sue over near copies”; Mattel enforces a lot against pink but doesn’t register it so it doesn’t have to define a specific color.

Bartholomew: Registration is optional, not mandatory as with patents; is this the right number of sweeteners to encourage people to register?

Hughes: could compare cases where they narrow the claim of the TM registration v. narrow the claim of the patent—Maker’s Mark case where they have a registration for a wax seal but claim only red.

McKenna: and the reverse, where they register narrowly but claim broadly.

Matthew Sipe: connection here with Katyal’s project where public doesn’t get everything it needs for full agency in consumption.

Elizabeth Townsend Gard: people don’t register color as trade dress—interesting to consider why not. Same with word marks—they register standard word mark when color is an important part of what they’re doing.

Lorelei Ritchie, is this generic :( ?

Consumer perceptions need evidence—surveys, declarations, dictionaries. Consumer perceptions change over time. Can a generic term be ungenericized? After Booking.com, maybe it can be because consumer perception is key. Evidentiary standard is not standardized. Merely descriptive=immediately conveys information about feature, function, or characteristic. But generic? The thing being named, or if it’s a key aspect or subgroup, which is where we start running into problems.

Possibilities: allow acquired distinctiveness for any asserted mark; require acquired distinctiveness for any asserted mark (requires legislative modification). Should TM registration be w/o much examination? Allow people to file claims and then go from there.

Another: expand consideration of a “mixed record” where there is some generic and some nongeneric use. Many people use “google” to mean “use Google.” Could expand on that more.

Legal standard: preponderance in inter partes case; ex parte move towards preponderance. She argues that they should go the other way: clear and convincing for everything. Why? Because generic terms get no protection. Should look for abandonment and fraud where we have a higher burden of proof. Consider preclusion as well. W/genericness, we are talking about the same thing, so preclusion would be appropriate.

Unprotectable generic terms should be precise, like apple for fruit (note that this is a subset). Not a key aspect or subgroup. “Apple candy” is not generic for candy, it’s just a flavor/key aspect. Should be descriptive.

Relevant consumer: perceptions can determine commercial strength but the inputs are often the same as for conceptual strength—dictionaries w/lower-case references. Keep up with the culture by considering social media. Evolving norms of communication and branding both have no punctuation/capitalization: lululemon.

Hughes: Agrees that generic means thing: “highly descriptive” doctrine should be used to moderate this problem for things like apple candy. Relevant consumers for determination of genericness should be different for more narrow descriptiveness group of consumers. Singer was recaptured from genericity, as was Goodyear (probably).

McKenna: disagree w/Hughes b/c categories aren’t found in nature. Is diet soda a category or a subgroup? It’s market definition. Is apple candy a thing? That has no abstract answer. In favor of calling more generic: once you introduce secondary meaning, you’ve told defendants that the case will cost hundreds of thousands or millions, whereas genericity is more easily managed. Before Booking.com there was the competitive need test and that’s why failure to function has had a resurgence.

Roberts: Nike just got SNKRS w/vowels removed—that’s the Booking problem.

RT: [I agree on the subgroup issue: soup spoon; car is a subset of vehicle; apple for fruit is a subgroup; key aspect may be another way of saying market-defined subgroup.

Spectrum of descriptiveness/ “highly descriptive” category will likely defeat your attempt unless you take more steps to put that off limits too.

Clear and convincing: basis in statutory text? There’s a common-law case for treating fraud differently but I don’t see that for abandonment or genericity; the “harsh consequence” is the natural consequence of choosing a generic term. (Not to mention that these days you can still get unfair competition protection under §43(a), which is not the case for patents.)]

Deborah Gerhardt, Trade Dress Edges

Where does trade dress begin and end? The definition expanded far beyond packaging/display. Color, product design. This matters b/c we’re supposed to apply functionality for trade dress, and we often use Seabrook for distinctiveness, whereas there aren’t many disclaimer practices for trade dress and there are for word marks. So there are doctrinal differences.

Possibilities: (1) Trade dress a subset of TM (based on the statutory language in 1127); (2) partially overlapping (Two Pesos, where text might be included in some trade dress; INTA view of overall look and feel without functionality); (3) Restatement view of distinct categories. But do you have to apply functionality analysis if there’s a word involved?

PTO doesn’t use this categorization—it uses text, design, sound, etc. Traditional/nontraditional is also unhelpful and does no doctrinal work.

Tyler Ochoa: we call functionality genericity when it applies to word marks. [Not sure that’s entirely true—the AOL “you’ve got mail” case is functionality more than genericity.]

Trade dress got overexpansive; Two Pesos got cut back in Wal-Mart in particular with the tertium quid versus product configuration/packaging.

A: in sound marks we do see genericity and functionality merging—alarm sound.

RT: Consider substantial similarity—it’s the standard for everything in © but we recognize that different genres may require different analysis. Choral music requires experts to tell you what might count as similarity of expression in choral music, etc. The value is in finding patterns and so I’m comfortable with being in the subset box (1).

Betsy Rosenblatt: willing to go further—there are lots of words that are informationally functional and should be denied registration for that reason for relevant goods/services.

Roberts: what’s inside the “trade dress” circle? Are sounds and smells trade dress, or are they something else?

[Things that can be inherently distinctive v. things that can’t be as another important line?]

Sheff: identify where the distinction matters—functionality, maybe; inherent distinctiveness not available for product design; practical relevance: defining the unregistered trade dress is a big part of the job for §43(a)—even though there may not be a doctrinal issue it is a very practical one where we fight over how specifically we have to claim features.

A: Impetus: some sound marks are treated like text, and others like product design—analytically unsatisfying. Rules for registering text don’t work well.