Mark Bartholomew, Publicity Rights After Warhol
Risk that courts will apply Warhol to ROP cases, but transformativeness
is the only element in the ROP defense as defined by the California SCt rather
than a multifactor fair use test. This could make commerciality more important,
given the Court’s focus on commerciality in identifying transformation. Cal SCt
said that commerciality wasn’t important; this could be a substantial change.
Before 2023, Warhol himself was a super-precedent, cited by Cal SCt and others:
he was so important to art that of course his works must be protected.
“Nihilistic” 1A doctrine unconcerned with policy or
normative claims, after Elster. Elster tells us to look for a
tradition of a particular speech regulation; deals with publicity-like
interests in propertizing identity. JDI also suggests looking for track
record [really? It seems just to announce a conclusion to me—confusion provides
all that’s necessary to protect speech]. Transformativeness has a track record
that can be evaluated. One criticism: not protective enough of speech
interests. He thinks it’s pretty protective—Tiger Woods case, Barbara Kruger,
Noriega Call of Duty case. But is it inconsistent/vague? Video game cases
involving college sports—for the most part, video game cases have gone in favor
of game makers; 2013 cases were just conservative (in nonpolitical sense)
courts getting used to a novel form of art, despite SCt’s instruction—the problem
isn’t transformativeness itself.
Eric Goldman: Stuck on first move of accepting that
importing transformativeness was a good idea in the first place. © and ROP are
different things.
Rothman: Right that Warhol will have reverberations
in ROP cases where the jurisdiction uses transformativeness. Transformativeness
is only one of many 1A approaches in the context of ROP defenses. Maybe Warhol
will just harm transformativeness as a defense in the ROP tout court and we’ll
see other defenses. [The uncertainty of Rogers, a major alternative,
also plays in here.] B/c we only looked at transformativeness in ROP cases, we
rejected defenses where the underlying work doesn’t alter the person’s identity
or appearance—that looks really wrongheaded as a dividing line.
RT: One reason transformativeness differs is that © involves
a work to work comparison. To transform a work into another work is not the
same thing as taking a person and … putting them into a work of some kind;
courts divide on whether you have to alter a person’s appearance or put them
into a different context. [This is related to Rothman’s point that things like
newsworthiness—which is not the same thing as transformativeness—are also 1A
defenses.]
Michael Carroll (co-author Peter Jaszi), Campbell at 30: A
Retrospective Appreciation
Part of a series based on the history of fair use. Warhol’s
callback to Campbell’s parody/satire discussion and other treatment have focused
new attention on how to interpret Campbell. In context, Warhol’s bark is worse
than its bite. Focus on arguments made by lawyers. Congress endorsed an
incompletely theorized agreement w/o contents of fair use being defined. There
is no theory of fair use, and no agreement on principles, in early fair use
cases like Sony. The briefing reflects that. Sony deals with four
factors in one paragraph. Harper & Row decides the case in O’Connor’s
discussion of the common law right of publication, and the factors don’t do any
work in the case. The briefing by the parties is not different.
Campbell is the first time the Court considers the
four factors as providing a statutory test and tries to establish a methodology.
In Campbell, Leval is barely mentioned in the briefs; Acuff-Rose calls
attention to the article at oral argument b/c Leval recants his view on the
value of some quotes. Rehnquist: doesn’t Leval also say you should withhold
injunctive relief? Acuff-Rose says no; Rehnquist says: you want the sweet
without the bitter. The basic analysis comes from Souter’s chambers, and it’s a
bit of a black box. Oral argument and correspondence indicates Justices had
read Leval’s article and welcomed his general theory while quibbling over the
edges. Souter understands parody and satire as subsets of a larger set of
criticism.
Recharacterized after Warhol: should not be significantly
limited. The goal of Campbell was to adopt a general analytical
framework that could be used beyond parody v. satire; the distinction is used
to focus on the user’s reasons for the use. The analysis accepts that a range
of reasons will justify use. Parody/satire is not a targeting limitation or
requirement for a fair use; it illustrates why the user needs to explain the
reason for the use. Post-Campbell case law mostly focuses on additional reasons
for use beyond satire, which is why parody/satire drops away. Warhol’s callback
is there to illustrate that “further purpose” or “different character” needs an
explanation, nothing more.
The cert pool memo paraphrased QPs as focusing on commercial
use, including Rule of Evidence 301 and presumption against commerciality.
Parody as a form of social criticism; whether © owner has protected interest in
market for parodies even if there’s no competition with any existing parodies
of the original work. O’Connor proposed reformulating the QP as whether the
commercial parody was fair use. This was the first time the Court addressed
fair use as the sole question (Harper & Row was also about
copyrightability), and one without a constitutional overlay in a QP.
After oral argument, all nine vote to vacate; 3 to outright
reverse; Kennedy argued for a presumption in favor of parody, with a pretty
strict definition of parody. Souter resisted, explaining that some works may
not be parody in their entirety and there could be pure parody or mixed, and
criticism without a touch of irony.
Industry advocates asked the Court to roll back Campbell in
GvO and Warhol, but the Court doubled down on transformative use,
which is to the public’s benefit for the range of uses that it permits.
Q: why is Souter so thoughtful in correspondence but not in
the written opinion?
A: it’s still a parody case. As the courts start to see
other user stories, they find the general framework helpful in evaluating the
specific user story. It’s crazy how explicit the logrolling is—as long as we
think they’re not dead wrong, we need their vote on this other case so we’ll
make the requested change.
Rachael Dickson, Administrative Discrimination in the
Trademark ID Manual
The TM ID manual is a searchable database of over 64000
acceptable IDs for goods and services. Strict requirements for goods/services
identifications to ensure proper appraisal: specific, definite, clear and
precise. They do update levels of definiteness required over time—software used
to basically allow “software,” but that’s not true anymore. You can suggest new
additions to the ID manual via email; they’re processed more quickly than anything
else at PTO, within a week usually. ID/Class also makes their own modifications
to update IDs to conform to Nice Classification system (PTO usually requires
more definition than Nice).
Benefits of ID being in Manual: Lower application filing
fees--$100/class. In the future, that will change to $200/class. You get a lot
of guidance on what IDs are acceptable and faster examination. Potentially less
back and forth between applicant/officer. Response times are so bad now that
you want to minimize back and forth. There’s also a legitimacy impact; in 2010,
some cannabis IDs were accidentally added to the manual and filings went up;
went back down when IDs removed. Also true for other goods/services, such as “sex
therapy,” “gay community,” “sex toys,” IUDs; condoms.
PTO also benefits from IDs being in the Manual, in
efficiency and faster examination.
Evidence of discrimination: Customizable/broad (clothing featuring
X, medical services); unusual: “toy figures in the form of a potato”; “financial
evaluation of alpaca fiber.” Missing IDs: medical services relating to abortion
or contraceptives, sterilizations, gender-affirming medical services, sex or
contraceptive education; proctology; other goods/services relating to sex/sexuality.
Various contraceptives and sex toys were added significantly after the Manual
went online; IUDs were added only in 2009. Adult magazines, adult films, etc.
Sex therapy only added in 2024. But prostitution services in Nevada are in
there! There have been federally lawful cannabis goods/services since 2018 with
very specific chemical definitions. Traditional hemp goods are in the manual,
but not cannabis.
May be related to immoral/scandalous refusals (now not allowed).
It does continue the PTO’s decades-long pursuit of “purification” or prudishness
or fear of Congress.
There are no evident standards for which IDs get refused.
Sometimes decline to add things that are already covered. A pro se applicant
wouldn’t know that “medical services featuring X” is available for abortion and
would have to pay extra. They may look at applicant demand (but see demand for
cannabis). They suggest that the goods/services have to be per se lawful, but
that’s clearly not true. Her experience: suggested medical services in the
nature of providing abortions, but that was refused because of the fill in the
blank option, but there are nearly 100 such specific services including “medical
clowning” already in the Manual. Similar refusals for drugs, sex ed on similar
grounds with similar other IDs.
For cannabis, they said that things requiring further inquiry
into lawfulness weren’t eligible, citing gambling and prostitution and other
things that are definitely in the Manual. NFTs can violate securities law but
there’s no lawfulness refusal there.
7 IDs had Christian in them; PTO added some for Jewish and
Muslim religious ceremonies.
This is going to become a bigger problem as higher fees go
into effect. They should make public standards instead of private standards
that are violated all the time.
Goldman: Anarchy! There’s a financial cost to the anarchy
creating legal friction. Why is the PTO creating this huge database of
classifications? Other gov’ts create their own databases—why is this one so bespoke?
A: good question! Wanted to have a useful resource for
applicants and didn’t realize implications of leaving out goods and services.
Jessica Silbey: Ari Waldman has written about “checking the
box” for gender & identity questions—those lists accrete over time and get
sticky/don’t change. Institutional systems/categorization. Danah boyd has
written a really interesting article about census data—how to be both
totalizing and efficient.
Rothman: Maybe the problem is—why do we need such specific
IDs? That seems to open the door to lots of administrative work and discrimination.
And if they had more general categories, do we really need medical clowning as
an ID. Does the elimination of Chevron alter this?
A: They like having definite IDs so it helps you understand
likely confusion. If you just claim “software” then there can be huge
conflicts. Don’t know about Chevron—the ID manual isn’t even a
regulation, just referred to in TMEP.
RT: If you have relative examination, and not just refusal
on absolute grounds, you really need to know the scope of applicant/registrant
services. And if you accept things that aren’t in the Manual, you’ve already
accepted some openness, so you might as well get it right. I wonder about an APA challenge—there is
clearly Article III standing if you have to pay extra money.
Q: There’s a benefit on the administrative side and a cost
to the user—how do you weight those?
A: Given size of Register, the specific IDs are so useful to
evaluate risk that we shouldn’t take those away—it helps applicants as well as examiners.
(Examiners sometimes won’t accept Manual and require more definition; also the
fill in the blanks options can be abused.) We could reshuffle classes some but
we shouldn’t discriminate against sex/abortion.
Zaneta Robinson, The Likelihood of Confusing AI
Trademark law and language death: languages are dying around
the world. 300-600 languages may be gone by the end of the century. And there
are a lot of registrations. Should not apply doctrine of foreign equivalents in
many circumstances—rebuttable presumption against translation if the
similarities are only connotative. Presumption should be rebuttable using
evidence from corpus linguistics.
Q: Examiners shouldn’t be using Google Translate in the first
place, since it’s bad!
A: Paper gets into that—evidentiary rules for examiners
allow use of online databases or websites, so they’ll use Google Translate.
Rosenblatt: for a dying language, it’s unlikely to be
translated anyway—so is this really part of the problem for dying languages?
A: Examiners have an opportunity to say that confusion is
unlikely, but there can be problems. Office Actions are where the bad stuff is,
not TTAB. Nigerian client may have trouble—due to the increasing use of African
languages in the US, may be considered a common language.
Question I didn’t get time to ask: I think there might be different
issues with non confusion refusals (geographic descriptiveness)—I’m thinking of
the MOSKOVSKAYA decision where the Fed Cir is skeptical that English speakers
would recognize it as a Moscow-formative. How would a presumption against
translation work when the underlying words are generic or descriptive for the
goods/services? A risk of cultural appropriation?
Betsy Rosenblatt, Schedule A Pleading, Trademark Overreach,
and the Role of E-Commerce Platforms
Starts w/overreaching Schedule A lawsuits against a fan artist
making Sherlock Holmes fan art. Not a counterfeiter. Not acting in concert with
others named. The registrations aren’t for the relevant goods. Eric Goldman and
Sarah Burstein have written about Schedule A litigation as trolling. Often the
complaint is so redacted that the alleged infringer can’t find out what the
accused marks are; the host sites like Etsy/Redbubble just take whole store
down and freeze accounts. This could have been a C&D to the cite, under eBay.
Then there’s the ransom: to get unfrozen, pay us a significant amount. NDIll in
particular is open to this even though these lawsuits are civ pro nightmares.
They don’t satisfy Twiqbal because they don’t examples; there’s no
evidence of jurisdiction; no use of int’l service of process; joinder is all
wrong; sealing and redaction is unjustified; lack of inclusion of platforms is
unjustified under Rule 19 and they should be included parties; default means
none of this is ever adjudicated. The complaints are full of xenophobia—how bad
Asians are.
INFORM Act should make this all unnecessary—TM owners said
that they don’t know who the sellers are, but INFORM requires this information.
Q: Why NDIll?
A: some companies found the vein, starting with what may
have been marginally legit albeit corner-cutting claims against counterfeiters.
Posts
No comments:
Post a Comment