WIPIP session 6: IP Theory

Andrew Gilden, Talking Pleasure in IP

Courts and advocates are skeptical of value of pleasure; when they want to honor it, they reframe it as something else, like social justice. Joy of producing/consuming can be important motivation for activities, though, so exploring how courts deal with it in IP is important.

Expected to find a lot of talking around the topic of pleasure, but surprised to find a lot of hostility to, especially, defendants’ enjoyment of their own conduct.

Graham v. Prince: “Prince testified his purpose was simply to ‘make art’ and ‘have fun’”—rejecting fair use, repeatedly emphasized in opinion.

Axanar/Star Trek case, defendants repeatedly talked about their fandom and how they wanted to celebrate their love of Star Trek.

Harry Potter Lexicon: “Perhaps b/c [D] is such a Harry Potter enthusiast, the Lexicon often lacks restraint in using Rowling’s original expression”

Salinger v. Colting: “60 Years’ plain purpose is… to satisfy Holden’s fans’ passion”:—trying to make fans think differently is ok, but enjoyment is not.

D urges SAT readers to satisfy their cravings

By contrast, opposition to or detachment from the work helps: gritty retellings, where D “found the world depicted in much popular culture baffling and alienating”; Carious: “Prince doesn’t have any real interest in what another artist’s original intent is”; Elf not on the Shelf sought to knock the Elf “off its perch.”

Plaintiffs who lose are also described as fun-loving: loving Tolkien, loving Tiger King enough to tattoo it, etc.

End product: incentive to make up BS stories of why you’re creating and what your relationship w/the work was: SAT claimed to be “critical,” Disney porn claims to emphasize the transition of teenagers to childhood to manhood; VIP claims it’s about reflecting on the role of dogs in our lives.

Scholarship says that pleasure and joy aren’t accounted for in economic theories of IP, or buried in welfare analysis, but he’s seeing more than that: hostility to joy. If you admit to having fun (or are suspected of having fun) that weakens your case. Intellectualize your motives, tap into your childhood trauma, find a critique, focus on the pain. Rewards disingenuousness or overintellectualization. Concerning that the winning human experience is dissent, critique, opposition instead of joy. Gets the market failure explanation for protecting parody and dissent, but the flipside is that joy and pleasure become commodities owned by IP proprietors. E.g., members of frats and sororities “get so excited when they pledge” and “want stuff” related to their new organization, or DC Comics v. Towle, where “by Towle’s own admission, most of his customers were fans who ‘usually know the entire history of the Batmobile.’” Intellectual pleasure is commoditized or perhaps morally suspect (if unauthorized). Pay for your pleasure or shut up about it.

Betsy Rosenblatt: pleasure has been considered morally suspect a lot; combating that is a great goal b/c there’s a justification in IP theory for why pleasure is a reasonable constitutional goal. Giving pleasure can found patentability; use that! “Nobody but a blockhead ever wrote except for money.” Argument for change to factor 4, that growing a market/market benefits should matter.

Irene Calboli: Irina Manta’s hedonic TM paper might be a useful contrast. Define pleasure for us—parody can be pleasurable and is a big defense. Moralistic? Guns ‘R Us is ok, but sexual expression is riskier. We protect some hedonism in TMs as status symbols in letting people show off (pleasure in domination is more protected than fun in equality?).

A: pleasure is a positive subjective experience in response to a stimulus. Quite broad. Agree that parody is fun, but it’s not really the profile it gets in the case law. A parody is critical, oppositional, political. Wind Done Gone: Alice Randall was a big fan, but also had a lot to say, and only part 2 of that mattered.

Andrew Ventimiglia: signs of pleasure/aesthetic questions: are they reflected in opinions of judges themselves? Religious freedom cases—judges seem to take joy in being amateur theologians; do you see judges evidencing joy in aesthetic evaluations w/o admitting they do so. See in © around religious texts, channeled texts (angelic authorship)—judges are clearly having a good time b/c of the nature of the dispute.

A: yes, Axanar tells a lot of Star Trek jokes while it imposes liability on fans.

Sonia Katyal: what are the functions of pleasure? Body of law around aesthetics of pleasure—©, camp, [adult dancing]. Then there’s commodification of pleasure. Then there’s the way that criminal law connects w/pleasure—what does the law do with the experience of pleasure? S&M cases are fascinating in thinking about consent and criminality.

Q: natural law tradition; basic value of play. Play would seem to be fundamental, and should trump derived rights.

Zahr Said: Sunder’s From Goods to a Good Life—does seem like there are two levels of pleasure: the fan’s level, pleasure in production, consumption, experience of community; the other at the judge’s level, and could engage with affect theory—judicial opinions systematically devalue not only women’s enjoyment, pleasure, and creativity, but there’s also a real disdain for affect and anything that feels pleasure-forward. Many of these judges come from English/social science background and learned that critique was the right, masculine way of approaching the world; being soft and affect-based was wrong.

Consider also jury instructions: how do we talk to juries about this?

Terry (Taorui) Guan, Collaborative Protection of IP: the Case of China

Proposed by central gov’t, 2021, experimenting now. Objective to enhance IP protection; pressure from US. Involves both gov’t and non-gov’t entities, including social organizations and educational institutions. Idea: collaborative model offers more effective IP protection, especially in countries like China where the capabilities of courts and right holders are relatively limited.

Conventional approach is court-centric, with relatively limited customs support, as in US. Administrative remedies: injunction; civil compensation; some criminal penalties. ITC will stop infringing goods at border. In Chnia, courts have limited resources, knowledge, and capability, as do rights holders. High procedural costs in time and money, insufficient remedies. So: facilitating collaboration to share information and resources, using law and policy as the framework for repeated collaboration, with gov’t entites playing a leading role: providing guidance and instruction to private actors, social organizations, and educational institutions.

Courts/admin entities provide remedies to rights holder and information sharing between courts and agencies to apply standards; courts also provide guidance through issuing typical and guiding cases; agencies provide direct instructions to nongovernmental entities. Individuals can join volunteer programs for IP holders and technical experts like retired patent examiners can offer consulting to courts and agencies. Operators—ecommerce platforms, wholesale markets, trade exhibitions—can offer information, consulting to rights holders and introduce preventative measures and private enforcement measures like scrutinizing products before exhibit and removing infringing products promptly. Agencies can scrutinize material to discover infringing products before put into use in public funded construction projects.

Social organizations: IP protection centers funded by gov’t can provide info to rights holders; notaries/appraisal institutions; industry associations can serve members and establish IP litigation funds for impecunious members.

Educational institutions can provide courses/training to staff, provide info center in libraries.

This model can be more effective. Instead of a court-centric model, a pluralistic system can be better at protecting intangible property by increasing accessibility, diversity, and timeliness of remedies.

Challenges: interest divergence: ecommerce platforms may not want to alienate merchants; institutional costs.

For an incentive-based regime, this gives us more levers to affect incentives by different kinds of enforcement, adapt to geographic areas/innovator communities/commercialization scenarios. China now has IP centers in industrial zones to enhance innovation clusters. Adds complexity; adds cost for regulated entities.

Jeanne Fromer: say more about specialized courts in China, as a way to provide more robust enforcement. Fromer & Amy Adler wrote about online shaming as enforcement—ambivalent, because it provides some benefits—cheaper, quicker than traditional legal system, but lacks legal protections against baseless claims or internalization of the costs of extending IP too far. Talk more about costs of moving outside courts.

A: China is trying hard to provide better judicial enforcement; collaborative protection is an add-on. Only specialized courts in a few places. Judges in other areas may not be as professional. Improving judiciary might not be sufficient.

Marketa Trimble: A critic of the Chinese system might argue that this looks like making gov’t influence or instruction more legally binding. An IP owner might not want to enforce—does this mean that the gov’t can exert pressure on the business to enforce even when it doesn’t want to do so?

A: the majority of measures don’t compel enforcement, but administrative agencies may automatically enforce rights if they receive reports.

Jeremy Sheff: any concerns about compliance w/TRIPS and other international agreements in terms of role of administrative agencies?

A: TRIPS requires minimum standards, and China complied long ago. US complains: laws on books are ok, but enforcement sucks. China now is trying hard to raise enforcement levels.

Q: “collaborative”—is it a public private partnership? In the US and Europe there is a strong collaborative tradition in private systems—patent pools, cross-licensing, geographical indications. Confidential terms, but educational institutions and collaboration exist. What you’re adding is top down control. The role of the state is what’s unique. Here we’d have a separation of powers problem. We have collaboration; it’s the gov’t driven collaboration that seems distinctive. [We have a bunch of that too—cf. jawboning; PTO and NTIA try to get people together to make deals.]

A: agreed.

[RT: Guiding cases is really fascinating concept. How big a role do they play: do IP protection centers instruct people who consult them on the guiding cases? Relationship to rules v. standards? Rules may offer more comfort and confidence to nonlawyers. But rules have well-known costs as well—consider how the balance differs when a court is deciding between a rule and a standard and when a nonjudicial institution is deciding. Even if the nonlegal institutions focus on rules, should the courts still be using standards when a judicial dispute develops?]

Jyh-An Lee, Non-Market Approach to IP

North/South debates over things like one size fits all, access to medicine, commercial piracy. New type of disagreement relevant to US-China trade. Market economy v. nonmarket economy approach to IP: China’s trading partners, esp. US, argue that China’s state-led IP practices and practices have distorted the market and harmed China’s trading partners. Principal beneficiaries are Chinese companies moving up value chain at expense of trading partners.

But what is this nonmarket approach? Examples: policies facilitating illegitimate access to foreign companies’ IP. Forced tech transfer, mandatory joint ventures, trade secret divulgation in exchange for admin approval—non-IP policies lead to access to IP. USTR has objected for years.

Another example: policies prioritizing creation, acquisition and enforcement of IP by Chinese companies. Antisuit injunctions: China’s different approach to standard-essential patents, imposing injunctions globally, on all parallel cases. US was first to grant anti-suit injunctions, but now China is with a different scope. Foreign right holders are concerned that anti-suit injunctions favor domestic companies over foreign patent holders. High level political/judicial authorities have cited these as example of court “serving” the “overall work” of the CCP and the Chinese state.

State-backed acquisition of equity and tech: systematic  investment in and acquisition of US companies by Chinese companies, including by having Chinese banks provide financing.

Subsidies for patent and TM filing, including subsidizing TM filings in US.

Social credit system: expanding to IP. Could use them for schools, bank loans, and also as punishment for willful patent infringement.

US has no idea how to respond; this is no longer the decade old “this is a country of piracy!” narrative. Treaty w/China; resort to WTO (US forced China to abolish discriminatory licensing rules, but tariffs were struck down; pending dispute about anti suit injunctions initiated by EU). Ally with trading partners; domestic legislation w/r/t, e.g., TM applications. Effect so far is very limited.

Special 301 report: not a theoretically robust critique so it’s easy for China to fight back. IP itself is a government intervention. China is doing something different from the past: following international IP rules, buying American IP, just as US companies have done in the past. If you criticized Chinese patent filing and TM registration, Chinese response was: you fund universities for innovation and then they file for patents; what’s the difference? [See also: 1201 and 1202!]

Claim is that IP is just part of the nonmarket economy. State capitalism: hybrid economy. Strong national government for commercial success. Maybe TRIPS provisions on subsidies can help navigate these tensions.

Q: in the US, we treat IP liability as strict/not a moral question; China views it as immoral, w/effect on social credit. Is there a bigger philosophical divide on what IP is for?

A: still trying to figure out own viewpoint. Social credit system is problematic, but in terms of IP itself he’s not sure. A private credit score might also reflect adjudicated liability for infringement. Internationally, the strategy creates costs on trading partners: unfair. Domestically, you can see rent-seeking behavior, e.g., subsidies for patent & TM filings that exceed cost of filing. $300 (approx.) to file in China, but you can get $800 for that.

Trimble: is there a public reaction?

A: favorable: gov’t is promoting these things as good for citizens, self-determination, national pride. Most criticism of social credit comes from overseas.

Rosenblatt: what would happen if the US took these approaches? Thinks it would fail horribly, but why?

A: also a puzzle. Professors said market economies were always more efficient, but nowadays there seems to be a debate.

RT: Zero interest rates may have more to do with the US results over the past decade than our innovation policy; likewise, if Chinese banks are forced to lend, then that may be the key policy. It would be useful to know what happens if this can’t go on forever.

Jeremy Sheff, A Heap of IP: Vagueness in the Delineation of IP Rights

Connecting philosophical literature on vagueness to literature on claiming on IP. Vagueness is a pervasive concern across IP mainly for reasons of notice. Patent law’s central concept of claiming is about avoiding vagueness; doctrines of equivalence, indefiniteness. ©’s claiming rules: especially subject to critique on notice grounds. TM: registration as providing notice, but also the problem of unregistered trade dress.

Sources of vagueness: IP rights are categorical and composite. The property in IP is invariably a category of possible things. Also, the category is composite: membership is evaluated extensionally by reference to elements of the thing, even where the category was initially defined centrally (patent) or by exemplar (protectable features of © work).

Vagueness in at least two ways: (1) what’s within the category and what is outside—what is the boundary? (2) how does this determination depend on the elements used to define the category?

(1)   is a qualitative vagueness familiar to lawyers: vagueness that arises from natural language, e.g., no vehicles in the park. We are skeptical about rules framed in language are capable of predicting their application across all things. Structurally similar vagueness arises with non-word symbols like images, see Tushnet.

(2)   Category membership evaluated by the reference to elements is also vague in a quantitative way: soritical vagueness: the Sorites Paradox—how many grains can you take away before there’s no heap? Cf. The Ship of Theseus. Quantitative vagueness: at some point, elements present or absent lead to something being within or without a category.

These two forms of vagueness can interact. It’s possible that elements are themselves vague, as in the question of what a patent claim or limitation covers. Are some elements necessary and/or sufficient to establish category membership? Is the necessity/sufficiency of any one element dependent on the presence/absence of any other element? Examples: dueling “wine by style” store cases—if there’s blond wood but no backlighting, is there a trade dress problem; if there’s backlighting but black walls, same question.

Philosophical responses: (1) epistemic humility, there’s a sharp boundary, but it’s unknowable.

(2)   Non-bivalence—there’s a range of cases neither satisfying or failing the predicate—a tertium quid. But lawyers can’t rely on either to decide cases.

Responses to qualitative and quantitative vagueness differ. Qualitative: precisify: change natural language (healthy level of X) to quantifiable technical meaning (Y PPM of X).

Another possibility: look at practices of the community and see what they do.

IP law allocates authority to particular interpretive communities, and different forms of IP privilege different interpretive communities: Patent, PHOSITA; copyright, public/audience; TM, consumers.

PHOSITA: all-elements rule seems to avoid quantitative vagueness, but qualitative is still a problem.

Copyright (juries)—get to decide w/essentially unlimited discretion on substantial similarity.

TM: actual consumers and surveys as key evidence, perhaps w/judicial supervision of evidentiary quality.

Normative implication: vagueness will always be with us, so pay attention to who gets to resolve it. Allocation of interpretive authority reveals the values, by IDing the privileged communities, of an IP regime. Patent: a system for producers and experts. ©: a democratic system, common-sense morality (jury). TM: solicitude for consumer susceptible to expert psychological manipulation by marketers.

Lingering puzzle: interpreters from outside the privileged interpretive community: we give the final authority to people outside that community. Judge is in charge of claim construction; bleeding of expert testimony on copying into substantial similarity; judges and survey experts constructing imagined consumer in TM.

Fromer: in patent, there’s often not good language to describe new things, which contributes to the problem. In ©, there’s often resistance by artists to discuss what their work is; they feel the work should speak for itself—the pathway of the law helps find a way out but underscores vagueness. In TM, registration and the two lenses of TM law—registration often stops mattering when you get to court. McKenna and I wrote a bit about this in Claiming Design. In Taco Cabana, court lets P get away with defining the trade dress in the way that most helps it win—not the actual colors used, but “a vibrant color scheme.” If consumers are to be sovereign, courts have to remember this through every step of the game, and giving the consumer space means giving consumer control over defining what the mark is.

A: note that © doesn’t really care about the artist. [I would argue that this is true until you get to the jury, where the artist comes to the fore—both Kat von D and Andrew Lloyd Webber won cases that are good examples of this. The artist is part of what the public, in the form of the jury, evaluates.]

Laura Heymann: vagueness in the rule v. vagueness in application of rule. Jury gets told what it can and can’t consider/do, which also affects whether they think their task is vague.

A: yes, you can get a judgment vacated if the instructions are bad, but you can’t get it vacated by arguing they didn’t follow the instructions.

Boyden: there’s not really an interpretive community for what counts as substantial similarity.

A: we could give the question to expert artists in the field; giving it to the person on the street indicates who we think the communities are. [Heymann says: but see VARA, work of recognized stature]