WIPIP: Copyright: Infringement & Enforcement

McFarlin, Restoring Joint Authorship

We apply a separate accrual approach to © infringement: Petrella. But a one-time plain & express repudiation of joint authorship to a claim for accounting, Zuill, 9^th Circuit. Should we continue to do so? Chuck Berry & Johnnie Johnson disputed authorship but Berry’s name was the only one on the record—counts as an express repudiation, so he loses his chance to claim authorship. But if Petrella could assert claims 40 years later, why not Johnson?

Zuill’s rationales: (1) inequitable to let claimant wait in the weeds and then pounce—seems inconsistent with Petrella. (2) adverse possession by ouster, since © is like real property in that it lasts for a really long time. Flawed analogy? Ouster generally means sole possession of a tangible thing in exclusion of co-owner. Requires actual dispossession, not just declaration or failure to share profits. Stability of title has economic importance, sure, but so did Scorcese’s title to Raging Bull. How can you become an author of another’s work by prescription?

Should new claimants be able to reopen this, like Johnnie Johnson’s estate?
Glynn Lunney: what counts as an accrual of a cause of action? W/infringement, a new infringement. How does a claim of authorship accrue multiple times?

A: the claim accrues as an acclaim for an accounting upon the failure to pay profits. A new revenue source comes in; the failure to pay creates the new claim.

Lemley: test case where there’s a repudiation but no profits for five years. What should happen then? (He thinks the inconsistency is that Petrella is wrong.)

A: standing for declaratory judgment, but no bar to future suit. That’s an inconsistency—using declaration standing for claim and then putting a bar on the accounting.

RT: Evidentiary difficulties (which aren’t as pressing for Petrella type cases)? What about applying this to WFH?

A: courts are already dealing with that, in e.g. the Jack Kirby case, and yes, to be consistent you’d probably have to extend that to WFH claims.

Q: how does this affect termination rights?

A: also a big problem. Also exists w/infringement and separate accrual. Courts may subconsciously be anti-joint authorship and pro-sole authorship, even if it’s not coherent.

Smith, Looser Forms of Parody

Campbell initially defined parody for © purposes as commenting on the original work; if it has no critical bearing on the substance or style of the original composition, its claim to fair use diminishes. Some decisions didn’t let you target the author or the subject: Salinger v. Colting; Dr. Seuss v. Penguin Books; Kienitz v. Sconnie Nation. Split though b/c cases like Burnett v. Twentieth Century Fox allowed targeting of author or someone associated with the work. Targeting the subject of the work—generally involving a photo. WWE v. Big Dogs—courts generally found that to be satire but not parody; some cases push the line.

Then, Goldsmith twice said that parody targets an “author or work.” So, the questions: parody of what: what can a secondary work target? And what are “looser forms of parody”? (In discussion she suggests “String of Puppies” as a possibility.) Is it on a scale or spectrum? Is there something between parody and satire? Is it something that’s more effective with the borrowing albeit not strictly necessary?

Linford: parody v. satire as proxies for necessary v. not necessary? But how do you figure that out?

Newman: Barbie fair use cases are not really commentary on the expression of Barbie but commentary on the social meaning of Barbie that she had accrued over time. [I think that’s revealing of the vapidity of the demand that a parodist comment on the “work”—not all parts of the work are protected by copyright law. Just like dissecting a joke kills it, the plaintiff in a fair use case tries to break the parody/commentary down and say it’s not required for whatever the defendant is trying to say.]

Lemley: Ralph Nader Mastercard ad: the judge was motivated not to rule for Mastercard & accepted that this was a parody of sanctimonious merchants of high interest consumer debt, but that was clearly not the primary message Nader was trying to send. One question is what the standard of proof is; another related one is who the audience is—“may reasonably be perceived” suggests the (reasonable) audience should be consulted.

Comments note that Europe (wisely) doesn’t distinguish parody from satire.

Lunney: courts like to look reasonable and split the baby, which may explain the language distinguishing satire in Campbell.

Rub, Circumventing SCOTUS

Copyright law needs updating, but Congress is not doing it. Examining 21^st century opinions Eldred, Grokster, Golan, Kirtsaeng, Star Athletica, Aereo-- attracted many amicus filings, use in copyright casebooks, citations in law reviews, so we understand them as important. But lower courts don’t always do much with them.

Part I: Narrow interpretation cases: Aereo, Star Athletica. Aereo: volition doctrine could be on the chopping block, but the Court didn’t name it, and the Second, Fifth, and Ninth Circuits have subsequently ignored it while the dissent blessed volition (and worried about its future) and the SCT majority didn’t disagree—no impact on the volition doctrine’s development.

Star Athletica: can I draw it? Seems a very test to meet. Separability still has some teeth, in some courts, sometimes; some courts apply a low standard and some courts don’t. Courts use other filtering doctrines extensively to replace separability. This is the messiest.

Grokster: worried that SCT created an independent duty to filter. But the tech moved on and distribution models moved on. Turns out that Grokster didn’t do much. Inducement cases tend not to turn on failing to filter and looking for profit. Got filtering through business models [and suing Cox and other connection providers!]

Kirtsaeng: Court prioritized free movement of copies. But market segmentation is still here. Most © materials are distributed digitally. Second Circuit shut down secondary market in digital copies (ReDigi) and libraries too (Internet Archive). Price discrimination by right is still here nonetheless.

Eldred & Golan: No limit on Congressional power to expand copyright—but user groups got organized to press against expanding copyright in SOPA/PIPA. Legal power can exist without political power. Didn’t open floodgates to new legislation. [Though that’s perhaps b/c of point one: Congress can’t often get it together to act.]

Even most significant SCT decisions w/Ginsburg & Breyer exert only modest influence on broader trajectory of © law. Repeat players in ecosystem can bypass any disturbance to Force. © is incremental. 0.7 opinions/year can’t do much. Are we spending too much time focusing on SCT? Is this minimalism justified?

RT: Do you mean © law or © practice? You make claims about the broader trajectory of © law but a lot of your points are about © industrial relations. Likewise, effects of Star Athletica on registrations/C&Ds may be very different.

Lunney: If Grokster had come out the other way, would the market look the same today as it does or would it be radically different? I think it would be different. Eldred, likewise—if Lessig hadn’t brought the case, would there have been enough political focus to develop the political pressure against term extension?

A: sure. Maybe not overruling Sony was a message.

Lemley: maybe we’ve ignored cases we should have paid attention to—Petrella has completely reshaped copyright litigation by trolls, with big effects on substantial similarity doctrine in music cases as a consequence (as well as other things like the law developed around actors like Higbee). Fourth Estate, the registration case, has also had a big impact.

WIPIP: IP for the Larger World

Koo, De-Colonising Copyright Law

Is fair use even possible outside the US? If we want to export fair use, what is it we actually want to export? Many US academics many not think it’s the greatest idea—if we had a blank slate to redesign, what would we do?

Issues: © not fit for purpose in developing English-speaking Commonwealth countries—Caribbean, Southeast Asian. Issues with access—sometimes access is only possible through piracy. Single author doesn’t fit well with collaborative creative cultures—reggae music. Indian and African influences on Caribbean music; restricts innovation to current forms. What is considered original creation? Who is considered an author? Like US, law was traditionally imposed, but we continue to impose them on ourselves. Doesn’t reflect needs/lived realities. Cut and paste from UK or from international treaties. Lack of inclusion and lack of influence of these countries—may not even has existed as independent/as republics when these agreements were being negotiated.

TWIL (third world international law) or postcolonial approach? TWIL approach: attempt to destroy international law will seem impossible b/c of link to trade. But this framework is undemocratic and oppressive. How can the reformation take place?

Undemocratic: int’l treaties demonstrate a battle between have and have-not countries

Harms: ignores collective creative cultures, limits access to works, hamstrings innovation and cultural creative processes. Maybe not allowing students to photocopy at will, but maybe allowing museums and libraries to digitize.

Borrowing copyright concepts may simply amount to trading colonizers for imperialists.

Rosenblatt: mix of cultures in Trinidad & Tobago

A: Yes, so what does creation look like? Influence is everywhere; can be accused of infringement from other places?

RT: suggestion to leverage TRIPS?—ability to retaliate for non-IP related trade violations of the US, which are clearly going to feature strongly in the next 4 years—prior TRIPS rulings on online gambling/the US homestyle exception for small businesses allow other countries to retaliate including by suspending their IP laws w/r/t US IP. Why not allow students or libraries to photocopy US works at will?

Digital versus analog: access that is limited to countries that need it will either require strong digital walls or analog copies.

Do you think that designations of origin are better forms of IP? Madhavi Sunder/IP3

Is there a universalist end state? If so, then might want something that could be imperial/ you wouldn’t worry about being accused of infringement from outside.

A: wouldn’t necessarily be worried about a universal system if it worked well. Trinidad & Tobago is tourism-based; any system that allows more sources of investment/development would be good?

Designations of origin—not useful immediately, only if you’re known. Have a GI for a T&T steel band, but have to convince people outside that it’s worthwhile.

Irene Calboli: be provocative, go bold—don’t have to have all the details yet while you’re making the case for reform, rather than trying to mitigate.

Gebru, Cultural Appropriation as Passing Off

No authoritative definition, but common features: power imbalance, lack of understanding, harm of some sort, context matters. First mention of “cultural appropriation” in OMG Dolls case—though court didn’t like it.

Proposed taxonomy has two axes: is the symbol diffused or distinct; is the use noncommercial or commercial? Diffused: place-bound; legally recognized group; shared across different communities. Would only allow legal intervention with a commercial appropriation of a distinct symbol. Diffused and noncommercial: Justin Timberlake’s cornrows. Specific and noncommercial: Kente cloth used by congresspeople after George Floyd’s death. Diffused and commercial: Aunt Jemima. Specific and commercial: Navajo symbols used by Urban Outfitters, litigated by Navajo as TM case.

Passing off theory—extended to GI theories with “Greek Yogurt,” “Champagne,” etc.

Case studies: Jeep Cherokee. Is there collective goodwill? Yes, some signaling happening—trying to communicate meaning. Official name of the source group; distinct group w/place, centralized institutions, legal status. Easy case for framework.

Gucci’s use of turban: sacred product; market value?; other cultures have turbans, so is it unique—harder question.

Q: privileges centralized cultures—which bakes in a certain perspective. Why should we privilege that? The reason a culture is diffuse might be because of previous cultural violence, now immunized. Maybe that’s how it has to be. [The recent book by Carrie Lowry Schuettpelz, The Indian Card: Who Gets to Be Native in America is really good on this point.]

A: yes, it is a present day snapshot of what consumers think right now.

Q: then just be very transparent about that.

Buccafusco: Gucci seems like a pretty expressive company, so what’s the difference between Justin Timberlake’s dreadlocks and Gucci’s turbans? Is it just that Gucci is monetizing directly and Timberlake indirectly? Plus, there seems like there’d be a lot of food in your regulatable quadrant. Are you just reinventing GIs?

A: food might be too diffuse.

Rosenblatt: are you concerned at all with transformation? Also, what is a culture that can be appropriated? Subaltern subcultures like punks, some organized and some less so, can get appropriated.

Buccafusco, Masur, & Whalen, Measuring the Value of Distinctive Brands: Evidence from the Bordeaux Wine Market

Distinctive here means different from other marks, not well-known. Everyone agrees that branding is important. Chasse-Spleen: easier to find. Suggestive or arbitrary or fanciful but not in the “jumble of letters” sense. Question: to what extent do distinctive brand names help generate price premiums?

In many markets, we don’t see much congestion around the semantic core, and TM law keeps firms from clustering. But! The market for Bordeaux wines comes from the 18^th century, when TM law wasn’t doing much work. More than 5000 unique wineries, 150 million gallons of wine, largely homogenous products: red blends of Cabernet and Merlot. Most branding choices more than a century ago. Median price is $15/bottle, but some bottles sell for $1000s/bottle. 28% of producers share a virtually identical name w/at least one other producer. 150 with LaCroix in their name, including 6 Chateau LaCroix alone.

H1: distinctively named wines will command higher prices. H2: even after controlling for wine quality. H3: price differential for distinctive names will be higher for high-quality wineries than for low-quality wineries. Scrubbed la, de, des, chateau and computed pairwise similarity scores b/t each wine name and every other wine name. Measured similarity by nearest ten neighbors.

H1 supported: highly similar wines: $13.44 expected price. Highly dissimilar: over $27.

H2: assume a rating of 90, a median good score. 21.68 versus 25.02, so the price premium persists, about 15%

H3: low rating wines, difference is $2.21; high rating, difference is $9.59 both about 200% price difference

We don’t detect meaningful distance costs, that is, being too unique—but there aren’t any Chateau XZMOXO or the like in our datasets, so we might not see that.

We detect no price benefit for low priced wines that might have gotten a boost from similarity to high-priced neighbors. “Chateau LaTour Margot” not so good.

Why don’t they switch? Tradition? A lot are owned by multinationals, so why not?

Congestion is a problem, and TM should continue to push brands away from linguistic core

We also don’t have enough variation in quality data to identify effects of investments in quality on differently named types.

Fromer: Is it possible that having a similar name decreases incentives?

A: Even among the high end there are lots of very similar names. Very hard to tell; not making causal claims.

Calboli: are there registrations?

A: probably not. Certainly not in 18^th century.

Calboli: Would like to know whether logos help distinguish—crests of specific noblemen.

A: trying to pull, but there aren’t pictures in many circumstances.

Calboli: how often are there overlaps on a given menu? Distribution might differ.

A: Yes and no.

Q: does any law govern name changes? Champagne region has weird rules I know.

A: probably; also a ton of social pressure.

Calboli & Izyumenko, Role Models Matter: Surveying Gender Gap in Intellectual Property Teaching in Institutions of Higher Education

Inquiry will span US, Europe, Asia (where numbers of women are lower, especially in higher positions). Data collection and surveys.

Questions about data collection?

Mazzurco: extending the tenure clock as an issue: Women have to extend their tenure clock b/c if they take leave, they can’t write while they’re on parental leave b/c they’re taking care of a newborn; men often don’t take leave or if they do, they are able to write while they are on leave so it’s an extra benefit for them.

A: that may also affect pay.

Q: you should also ask the same questions of men to learn about whether there are differences in treatment/responses/perceptions.

WIPIP Panel 2B Copyright: Authorship, Ownership

Newman, Adoption as Authorship

Concept of being an author: personally generating all the sensory signals other humans will process as part of the work—comes into being because my mind decides to put it there and my body guides it. Certainly in authorship disputes between the person who generates the idea and the one who creates the detailed expression, the latter is favored. But then it gets more complicated. Setting up a shot versus clicking the button to take the shot: Sarony. What matters is whether you had a clear intellectual conception and you used tools to embody the expression. To be an author is to have a fully formed work in your head and transcribe it in some medium? But even that is a bad model of authorship usually. What happens is more: I generally know what I want to say, and engage in trial and error to see what I can get on paper that makes sense. It probably bears some relation to what I started with, but not identical. The fundamental act of authorship is getting to some point where you recognize some set of signals that you recognize should have communicative meaning that you adopt as a communicative act. Until adopted, it was just a set of signals; adoption makes it a communicative act. Alfred Bell’s famous dicta: defective musculature or clap of thunder can be adopted. Don’t want to limit it to only the final product you choose to publish—if you’re engaged in working, it’s inherently adoptive, whether or not that’s your final product. Jackson Pollock: if one of those, he didn’t like the result and chose to discard it, that canvas is not a work of authorship.

RT: Read Karen Gover, Art and Authority. You aren’t saying the core is adoption rather that it’s the union of conception and adoption – have to already be engaged in a process of creation, not just wandering down the beach looking for driftwood—Duchamp’s urinal, or adopting the Constitution or the Rifleman’s Creed as your own expression.

A: he does think picking up the driftwood is expressive but not eligible for copyright because it’s a preexisting fact, just like using AI and picking a result might produce expressive work that’s not created by you. [RT: then what makes your theory a theory of copyright and not a theory of art?]

Betsy Rosenblatt: introducing intent? What about private works?

A: publication isn’t important, but communicative intent is. You can adopt something as your unpublished work.

Buccafusco: you’re defining authorship, not originality. [I will note that Feist seems to conflate those two.] There are some cases of authorship that might not have originality.

Q: if you reject a bunch of photos as bad, are you an author of them?

A: you took the photos with the intent of making a work, so probably. There’s some sense in which the subsequent act of reviewing the works I’ve generated/caused to be generated and identifying which are satisfying should be regarded as important.

Q: fixation as a proxy for adoption, at least as of 1976? Compare to Hemingway common law copyright case.

Op den Kamp, First: Shifting Benchmarks in Film History, Copyright, and Archival Practices

Palmedo, Lutes, & Safner, The Demographics of Authorship in the United States

Video essay about Leland Stanford’s commissioning of Edward Muybridge to try to determine whether horses’ feet left the ground all at once during a gallop. Copyright claimed 1878 by Muybridge, but Stanford published The Horse in Motion in 1882 with Muybridge’s name left off title page, mentioned only as technical assistant. Royal Society in UK shut him out as a result. Stanford used photos as raw material, informational only.

Rosenblatt: Muybridge did achieve IP protection, just couldn’t capitalize on it as he wanted to b/c Stanford was so powerful. Is this a story about IP or about power? The power of narratives to swamp law?

Q: but was Muybridge really a lone author or was there real collaboration?

A: Stanford is able to produce witnesses who say he paid for everything even though there are no written documents—it’s about the greater tensions in his wealth (letting M live on his land for free, etc.). Though he knew for years that M was registering © and taking out patents on inventions.

Brent Lutes, Demographics of Copyright Registrations in the US

2011-2022 applications; 9 most registered types of works; registrations by individuals; using registrations per person per year by zip codes; geographic matching. When you control for education, effects of income on registration go away—so income was a proxy for education. Education also drives a lot of the racial/ethnic data. Urbanness is also important: population/housing density. 10% increase in urbanness increases copyright registrations 5.5%, not coming from numbers or income—probably an agglomeration effect. Age also matters too—older adults register more than younger adults, even controlling for education and income.

Raw correlations with racial/ethnic groups were significant; if there were educational and income equalities, the range would shift a lot, but Native Americans would still not be registering very much and multiracial groups would be registering a lot. More diverse areas are associated with more registrations, but we don’t know which way the causation flows. We also know that urbanness and diversity are correlated. Controlling for urbanness, still there’s a positive statistically significant relationship with diversity.

Karol, American Art's Little Copyright Secret: Why So Many 20th Century Artworks Are in the Public Domain and Why That Matters

Basic claim: most works were published and placed in public domain when first exhibited for sale in commercial art galleries with no notice and no restrictions on copying. We should presume, absent contrary evidence, that midcentury visual art shown in a gallery for sale is in the public domain unless the estate/foundation demonstrates otherwise. Limitations: American art before Jan. 1, 1978. So roughly 1930-1977. Example: image from an art show from a photographer who was in there—making copies—without restrictions.

Publication without notice terminated ©. Exceptions for limited publication. American Tobacco v Werckmeister 207 US 284 (1907), pre 1909: no general publication because bylaws of Academy, where work was exhibited, expressly prohibited copying.

Letter Edged in Black, ND Ill 1970: No restrictions on copying, thus work of sculpture is in public domain. Others, including state court cases, reason similarly.

But publication under the 1909 Act is notoriously outcome-driven—MLK “I Have a Dream” case example b/c courts often think that preserving © in canonical works is important.

Museums as interest groups in support which would help them digitized collections?

Courts should not worry about issues going forwards since this is only for pre-1978 works. But will publishers accept the truth?

Deborah Gerhardt: Why not go all the way to 1989, when notice was eliminated fully as a requirement? Also, it’s not just visual art! Film, other modalities.

WIPIP, UNLV: TM Protectability

Jeanne Fromer (with Beebe and Stein), An Empirical Picture of Trademark Law

We are running out of competitively effective word marks. What about images? Word marks dominate consistently over time, but numbers have increased in every category. Our definitions: images include image only, text+image, and stylized word marks. Live image marks over time keeps increasing, with a lot of text+image and a growing number of others.

Inadequacy of TM law: visual depletion and congestion; difficulty handling visual similarity in confusion analysis; difficulty handling visual distinctiveness in the sense of source identification.

Empirical questions: are we running out of visual marks? What are changes over time in classes? Applicant behavior?

2003-2023: image only, 200K office actions, image+text, 500K office actions. 79.1% of case files contain images.

Design search codes: 3 level taxonomy of 29 top level categories such as human beings, foodstuff, supernatural and other beings, and furniture; 157 second level categories, such as trees/bushes, cutlery, and bells; 1400 third-level categories, such as Dutch women. Shades of “those belonging to the Emperor.” All sorts of weird racial categories. (I wonder if this will be purged by the new administration.) Design search codes can be added by the PTO or suggested to be added/changed by applicants. Need to find more about the process, which seems quite informal.

In class 25, apparel, for all 2023 live marks, only 50 of the 1400 noncolor design search code categories are not claimed (e.g., Scotch women). Geometric figures & solids is pretty crowded, same with animals. 32 marks with images of a dove in class 25. When a word is taken, it’s taken; are these all different doves capable of coexistence? Also, image+text with image of dove is 74, and 16 word only marks.

Visual complexity: is number of design search codes per mark increasing over time? Is resort to geometric marks increasing or decreasing? Can we measure complexity with an AI model?

Likely confusion: McCarthy says there’s little in the way of guidelines to determine degree of visual similarity that causes LOC; no point in launching into long analysis, only thing to say is I know it when I see it; court case agrees.

Increasing 2(d) refusals over time—but that seems possibly to be based on text, not on the images, b/c examiners have difficulty finding similar images based on tools they have (her hypothesis)

Distinctiveness: Abercrombie for word marks, Seabrook for non-word marks. 2d Circuit continues to try to shove non-word marks into Abercrombie, but most other circuits use Seabrook. Abercrombie focuses on distinctiveness of source. Seabrook looks at distinctiveness from other marks or ornamentation—differential distinctiveness. Suggestion: we should look for both! Consider things that are generic/descriptive for the classes for which they have design codes (e.g., a carpet design code for carpets).

Jake Linford: Thinks of both Abercrombie and Seabrook as asking the same question of sending the consumer a signal of branding.

A: that may be a proxy, but they aren’t necessarily the same thing. Flowers have nothing semantically to do with apparel, but are used in fashion.

Deborah Gerhardt: it can do both, like red for strawberry flavor.

A: yes, absolutely. Just reads Seabrook differently.

Felix Wu: psychology literature on images and how much distance between images we should require—can that tell us anything?

RT: holistic v. sequential perception of images v. words.

Rachael Dixon: People do try to game the system all the time—claiming a cannabis leaf was a maple leaf, for example. There are no design codes for poop emojis.

Sari Mazzuco: There might be a lot of space for congestion if there’s a lot of thin protection, like a thinly protected stylized “O.”

A: yes, that might be a difference from words, like a bunch of text+image marks with a name + image of a rug for rugs. (I wonder if the rug image should then be disclaimed.)

Grynberg, The Paranoid Brand in American Politics

Misinformation and trust. Can marketing tell us anything useful? Not interested in specific sources like NYT, but in mindsets. Institutional trust v. cynicism. Faith in liberal institutional structures with self-correction mechanisms v. cynicism about information as power.

Marketing framework: How Brands Grow, influential book w/contested theses—brands grow by improving their mental and physical availability—does the brand come to mind when purchase is possible? Distinctivess in their model matters more than differentiation. True differentiation is hard absent IP which can create faux differentiation; consumers don’t care nearly as much about brands as marketers do. Thus distinctive brand assets, like brand names, logos, jingles etc. around which memory structures may form, are more important than actual product features. Important: category entry points—moment that product category is relevant, opportunity for brand to come to mind—marketer can target these entry points. E.g., people might eat candy when taking a break from work. Kit Kat marketing is built around “take a break.”

Any worthwhile application to information problems? Ideas as brands: “Government can’t do anything right.” What views are mentally available if there’s a line at the DMV?

Branding trust v. cynicism: “trust the science” v. “do your own research”

If differentiation isn’t so important: Both can fill the need of explaining the moment, framing read of a news source, providing a course of action, entertaining, etc. We “shop” from both mindsets. Institutions often act in a non-trustworthy way, meaning the paranoid view is sometimes correct.

Structural advantages for cynical brand: building reach is cheap: flooding the zone with shit; ease of tailoring to audience, emotion/outrage; ease of tailoring to whatever is happening; institutional supports. Decline of reported journalism and expense of real journalism. Suitability for short, high-volume consumption like social networks. Decline of gatekeepers.

What can the trust brand do? Targeting entertainment, education/civics, smoothing contacts with government like pre-filling tax forms as an anti-disinformation measure; understanding the need for volume/reach. Problem: Nuance complicates mental availability.

Does this perspective yield anything that is interesting or distinct from what’s in the ether?

Branding and the anti-democratic moment? Democratic systems are open to multiple sources of information and strong self-correction mechanisms. Populist view is that everything is about power. Closed systems are dictatorial. Populist branding activities are also organizing/control activities in an attention economy.

Q: maybe trust/cynicism isn’t the right dichotomy. Positive v. negative claims—reliability v. they’re bad is also in the marketing literature. Where is the position of rational ignorance for a consumer? Maybe now we start in a position of distrust and people look for reasons for trust, which is why Trump has fewer problems than Dukakis.

Dickson, X Doesn't Mark the Spot: When Name Changes Fail

89% of marketing emails in July 2024 still called it Twitter. Some of the most visited English language news sites in the world still use Twitter in their reporting. Other rejected name changes: The Willis Tower is still the Sears Tower; the Mario Cuomo Bridge is still the Tappan Zee; the Ronald Reagan National Airport is still National. Stadium name change rejections are also common. People are still mad about Macy’s buying Marshall Field’s and changing the name to Macy’s in 2006—protests continued to 2012 and beyond.

Why do companies change names? (1) bankruptcy/going out of business; (2) mark super racist; (3) merged/bought out; (4) poisoned/killed people; (5) terrorist group is using name of our company like mobile payment system ISIS.

Why resist? Neuroscience: stickiness, anchoring bias; nostalgia; local pride, fears of encroaching outside forces; sense of community; disapproval of person or entity related to name change.

Could companies actually retain rights to marks they haven’t been using in years based on consumers’ continuing use of these names? Public use doctrine for nicknames like Coke might help them, as in Coca-Cola v. Koke, even though Coca-Cola discouraged used of the name at the time due to cocaine connotations. Bud for Budweiser, VW Beetle got rights in Bug. Yankees got to stop “Baseball’s Evil Empire.” Even public use of VDS to refer to VCDS.

Can the public use doctrine overcome abandonment? Even when companies have actively discouraged use?

Many companies that have rebranded have managed to keep their registrations alive for years after abandonment with really sketchy/bad specimens: Twitter’s renewed in 2024; Washington football team renewed its old name with a specimen article about its past use. Marshall Field’s renewed with a picture of a sign on a building that didn’t even match the claimed mark; so too with National Airport.

Q: another reason/explanation: resentment of participating in someone else’s marketing campaign—especially if the stadium name changes every 3 years. (Also defends renewal of Washington team mark to prevent other people selling merchandise.)

RT: This set of examples is a really good illustration of Jessica Litman’s insight that we participated in creating value of TMs too. Indianapolis Colts case would say that when there’s no continuity b/t old and new marks, there’s no interest for the new owner to assert—today, I think we would consider that also in the register of Article III standing.

Linford: thinks that courts would find standing based on the idea that consumers would punish the old owner b/c the connection remains.

Irene Calboli: it’s different with X because reporters say (formerly Twitter) and that’s different from having people still carrying around Chanel bags in Russia even though Chanel no longer sells in Russia—those are different kinds of contexts that have to be recognized.

Q: contrast: what are the characteristics of name changes that do stick? How long do the changes take to stick?

NYC loses greenwashing case against Exxon and pals

City of New York v. Exxon Mobil Corp., --- N.Y.S.3d ----, 2025 WL 209843, No. 451071/2021 (N.Y.S. Ct. Jan. 14, 2025)

Probably not the last we’ll hear about this, but the court dismissed the City’s two consumer protection claims against defendants for: (1) misrepresenting the purported environmental benefit of their fossil fuel products, and failing to disclose the attendant climate change risks of these products, and (2) engaging in false and misleading greenwashing campaigns. Previously, the courts dismissed public nuisance, private nuisance, and trespass claims as preempted. See City of New York v. BP P.L.C. et al., 325 F. Supp. 3d 466 (S.D. NY 2018), aff’d City of New York v. Chevron Corp., 993 F.3d 81 (2d Cir. 2021). The court summarized its key holdings:

First, the City’s allegations that NYC consumers are climate conscious, yet are being misled by Defendants’ failure to disclose that fossil fuels cause climate change is not sustainable because the City propounds that the connection between fossil fuels and climate change is publicly known information. Second, the City has not sufficiently pled that Defendants’ alleged greenwashing campaigns, involving statements about clean energy and alternative energy sources, are “made in connection with the sale” of a consumer good (i.e., fossil fuel products) in NYC, as required under the CPL. The Court further determines that claims for statements that predate April 22, 2018 are time-barred.

The greenwashing allegations related to: (1) “product greenwashing” statements intended to mislead consumers as to the climate benefits of specific gasoline products without disclosing the adverse impacts of those products on the climate, and (2) “corporate greenwashing” statements intended to present Defendants as climate-friendly thereby inducing consumers to purchase their fossil fuel products. As an example of product greenwashing, BP advertises Invigorate, “an additive that BP describes on its website as better than ‘ordinary fuels’ that have problems like ‘increased emissions’.” Shell advertises the Shell Nitrogen Enriched Cleaning System and a line for its premium grade of fuel called V-Power Nitro+ Premium as “produc[ing] fewer emissions.” Exxon advertises that Synergy Diesel Efficient fuel is the “latest breakthrough technology” that helps consumers “[r]educe emissions and burn cleaner,” and “was created to let you drive cleaner, smarter and longer.” And lots more. The City argued that these statements were misleading “by emphasizing the climate-friendly benefits of the product without disclosing the material fact that the product still causes climate change despite the claims of reduced emissions.”

“New York courts have determined that where the plaintiff does not plead facts that the defendant alone possessed the purported material information, a reasonable consumer cannot have been misled.” The fossil fuel/climate change link is public, so consumers can’t have been duped by defendants’ failure to disclose.

Also, some of the alleged product greenwashing statements (I didn’t list them all) were puffery or not misleading in context, referring to keeping an engine cleaner, not the environment.  

As for the corporate greenwashing statements, they weren’t sufficiently alleged to be “made in connection with the sale ... or ... offering for sale ... of consumer goods or services.” The court thought that accepting the City’s interpretation—where brand advertising that makes consumers feel good about a seller counts—would render the “made in connection” requirement meaningless. Thus, “statements as to investments in clean energy resources, such as wind and solar, and alternative energy sources, such as LNG, hydrogen fuel cells, and biofuels,” weren’t actionable.  

The court thus didn’t reach defendants’ arguments that their statements were protected by the First Amendment. It did hold that government enforcement actions weren’t covered by the anti-SLAPP law.

GIGO? literal falsity and a remedy mismatch

InSinkErator LLC v. Joneca Co., No. 8:24-cv-02600-JVS-ADS, 2025 WL 250032 (C.D. Cal. Jan. 10, 2025)

InSinkErator, allegedly the world’s largest manufacturer of garbage disposals for home and commercial use (and to its shame, an entity that sued a TV show for dilution for showing a garbage disposal being used unsafely), sued its competitor Joneca for falsely advertising the horsepower of its garbage disposals and secured a preliminary injunction.

Joneca prominently claims that its garbage disposals are rated at 1/2, 3/4, 1, and 1 1/4 horsepower on its product packaging, as well as its promotional materials online and in brick-and-mortar retail stores nationwide. These garbage disposals tend to match the same horsepower advertised by InSinkErator on its disposals, but at a cheaper price. InSinkErator’s testing revealed results approximately 39% below the claimed 1 1/4 horsepower disposal, and 24% below the claimed 1 horsepower disposal; none of Joneca’s products allegedly produced the claimed horsepower.

Joneca didn’t deny the test findings, but argued that the recognized standard for garbage disposals looks only at input horsepower and not the output horsepower measured by InSinkErator. Thus, it argued that there was no falsity, because all of the tested samples met or exceeded the input-based horsepower rating.

The key question, then, was whether “horsepower” was unambiguous. If the court construed the question to be “what do consumers think ‘horsepower’ means?” maybe it would have required a consumer survey. But the court didn’t; it accepted testimony about industry standards, and thus finds literal falsity. Joneca’s expert relied on the Underwriter Laboratories compliance standard UL 430 Waste Disposers, which establishes a method for rating horsepower of garbage disposals on an input basis. But that was a safety standard, not meant to be used to measure horsepower, as confirmed by engineers at UL. The court was more persuaded by InSinkErator’s expert and sources such as the National Electrical Manufacturers Association (and others), which requires claims of horsepower on motors to be derived from the torque output by the motor. Ultimately, a court may determine literal falsity “based on its own common sense and logic interpreting the message.” See Edminston v. Jordan, 98 Civ. 3298 (DLC), 1999 WL 1072492, at *9 (S.D.N.Y. Nov. 24, 1999). “The general consensus among engineers, even if not specific to the garbage disposal industry, appears to be that horsepower is determined by mechanical output.”

InSinkErator also provided market research to show that consumers ranked horsepower as one of the top purchasing considerations for garbage disposals, as well as “retailer perspective” indicating that horsepower was “a key differentiating factor”—Lowe’s and Home Depot organize and advertise them by horsepower. “This signals that horsepower is an important—if not primary—distinction used by retailers to market to consumers.” That bolstered “the common sense impression that more horsepower means more efficiency.” Home Depot characterized higher horsepower disposals as “Heavy Duty,” and lower as “Light Duty” and said that “[t]he higher the HP, the better the disposal will run. Food waste will be ground into finer particles and you’ll have fewer jams,” while Lowe’s said that “models with higher HP motors have better sound insulation and run more quietly than basic models.”

And then, in the remedy, the court imposes only a disclaimer remedy that seems quite unlikely to work, and won’t actually correct for the misimpressions given how—as it has already explained—garbage disposals are marketed.

In setting out the injunction, the court states that “Joneca would be free to explain during retailer bids and sales presentations that its products have a certain horsepower input, or alternatively, to explain that InSinkErator’s AC induction motor design requires more output horsepower to provide the same level of performance as Joneca’s PMDC motor. Such is not a hardship, but rather the truth, as Joneca has described it.” But will it need to do so given the actual injunction?

The injunction bars “false and deceptive horsepower claims,” then says that “Any horsepower-related communications to retailers, wholesalers, or other third parties for the purposes of obtaining contracts for the sale of Joneca-made garbage disposal products will include a clear and conspicuous disclaimer stating: ‘Horsepower claimed on package does not indicate motor output or motor power applied for processing.’” But they’ll still be shelved in stores as 1 HP motors next to InSinkErator’s 1 HP motors, if I understand this correctly. (The order says Joneca can’t assist, etc. the continued display of false and deceptive claims in stores—are the general statements about HP on Lowe’s and Home Depot’s sites, or the stocking of the parties’ products side by side, encompassed in that?)  Even if the sticker is conspicuous, it seems at best contradictory with the store placement; will consumers then think that’s also true of InSinkErators? Making matters worse, if the motors on the parties’ products work differently, then they aren’t actually fully comparable just on horsepower, are they? What exactly is a consumer supposed to make of all this?

I’m left wondering: why not at least explain why the court didn’t require Joneca to label its product with what the court had just held was the only truthful measure of HP with respect to motors in this context—output?

annoyingly redacted opinion finds Block falsely advertised versus TurboTax

Intuit Inc. v. HRB Tax Gp., Inc., 2024 WL 5320392, No. 5:24-cv-00253-BLF (N.D. Cal. Dec. 3, 2024)

Intuit, which makes TurboTax and has had some advertising troubles of its own (hey, check out the IRS Free File program, for taxpayers with AGI of $84,000 or less and with many fillable forms for those with more), sued HRB (Block) for its advertising of a competing tax product, and succeeded in part.

TurboTax has three tiers: TT Do-it-yourself (DIY), Live Assisted, and Live Full Service. Live Assisted, the focus of this case, allows customers to prepare their tax returns largely independently, but it also provides “unlimited access to tax experts to help them with any questions that they may have,” among other features. (Live Full Service, by contrast, involves actually turning over all the taxpayer’s documents to a tax professional to prepare the return.)

Within TT Live Assisted, there are multiple individual products that a customer may select based “upon the level of tax complexity” of their situation. TT Live Assisted Basic might apply to a consumer with just a W-2 and no additional schedules. TT Live Assisted Deluxe is for a “slightly more complex” tax situation, e.g. “additional deductions and credits” or “mortgage interest.” Live Assisted Premium, “essentially includes all tax forms [and] schedules.” But all have tax expert assistance including “expert final review,” following a prompt asking whether the consumer wants to connect with an expert about their tax return.

Block has two tiers: Do-It-Yourself (DIY) and “File with a Tax Pro.” Within DIY, there are a further four tiers, including Free Online, Deluxe, Premium, and Self-Employed. DIY Free Online is geared toward simple tax returns and is free. DIY Deluxe is for consumers with more complex tax situations, such as those seeking to “maximiz[e] deduction and credits,” so it includes more tax forms. DIY Premium allows reporting of investment or rental income. DIY Self-Employed is for self-employed taxpayers who need to file a Schedule C.

DIY Deluxe had live expert help, artificial intelligence assistance, an automated accuracy review or error check, year-round support, and various guarantees, among other features. Separately, Block offers “Tax Pro Review” as an add-on, which allows “a DIY consumer, after they have filled out their taxes, the ability to send their tax return to a tax expert” along with their source documents, so that the tax expert can review, sign, and file the return.

Intuit challenged five of Block’s ad claims: (1) claims that Block’s products with expert and AI assistance features start at a lower price than Intuit’s products with similar features; (2) claims that Block’s paid DIY products are comparable to TurboTax Live Assisted; (3) claims that Block’s products with AI and expert assistance cost “[a]t least $54 less than TurboTax Live”; (4) claims that Intuit’s Live Full Service product “starts at” $169; and (5) claims suggesting that “5 million ‘TurboTired’ TurboTax consumers ‘switched’ to Block in 2023.”

For example, Block advertised: “Fed up with hidden fees? Make the switch to H&R Block with upfront transparent pricing.” TT challenged the middle tile’s claim that Block offered “expert help” “[s]tarting at $35” when Intuit’s “starting at” price for the same “expert help” was $0.

comparative ad

Also, relevant to claim (2), the ad compared a TurboTax Live Assisted product—Live Assisted Deluxe—with Block’s paid DIY products that don’t include a final expert review, which Intuit alleged was a material difference. TT Live and Live Assisted included guarantees that Block didn’t for its paid DIY products. Finally, Intuit, argued that Block’s products used chatbots to make it “incredibly difficult, if not impossible, to actually engage with an expert,” whereas TT didn’t.

For claim (4), Intuit dropped the price of Live Full Service to many customers at a starting price of $89, although in prior years the starting price had been $169; until it was contacted by Intuit regarding the inaccuracy, Block ran ads stating that the starting price for Intuit’s Live Full Service product was $169.

For (5), Intuit pointed to an email: “It’s Better with Block” that also included “TurboTired? Switch and save with Block” and concluded: “Join the 5 million+ who switched to Block last year.”

TurboTired/join the 5+million who switched ad

Intuit offered Professor Joel Steckel of the New York University Stern School of Business as an expert who conducted several surveys. He testified that respondents looking at Block’s home page—which displayed an advertisement similar to the challenged ads—believed that “there were at least as many features in the Block website and that the Block product costs less.” Based on another study, in combination with a review of academic literature, Dr. Steckel concluded that “Block’s conduct, which resulted in the perception of an equal or superior product at a lower price, could cause negative feelings regarding the pricing of TurboTax products and harm the TurboTax brand.” And a third study looking at the TurboTired ad led him to conclude that claims that “5 million+” people switched to using Block products “likely did influence ... consumers to switch to Block” because those consumers “would have understood that ... the 5 million-plus who switched to Block had all switched there from TurboTax.”

Block’s own expert, Hal Poret, critiqued these surveys and the related testimony, including use of controls.

Claims about expert/AI help: Intuit argued that Block “falsely claim[s] that its paid DIY products offering ‘expert’ and ‘AI’ assistance ‘starting at’ $35 were cheaper than Intuit’s product with expert and AI help.” These challenged ads were “literally false,” according to Intuit, because TurboTax Live Assisted Basic—which is free for certain customers—includes expert and AI assistance. Block responded that the point of the ad was not to compare the starting price for expert/AI assistance in any circumstance, but rather to compare Block’s DIY Deluxe product with Intuit’s TurboTax Live Assisted Deluxe product, and that the prices listed were literally true insofar as those were the products being compared.

The court found that Intuit’s reading of the ad was correct and that the ad was literally false by necessary implication. Block’s own witness testified that the bullet points listed on the relevant advertising tile pertained to various Block products, not just Block’s DIY Deluxe product: the tile mentions “[o]ptions for deductions, investors, and self-employed,” a statement that alludes to Block’s DIY Premium and DIY Self-Employed products.

Thus, it wasn’t credible that the ad was supposed to compare TurboTax Live Assisted Deluxe with Block DIY Deluxe based on “the tax situations that th[ose] product[s] cover” and “the tax forms that are available” in those products. The advertising tile clearly emphasized the availability of expert assistance—other than the $35 price, the most prominent text on the tile states “File your taxes with expert help.” And it said nothing about the specific tax forms available through Block’s DIY Deluxe product; instead, it alluded to multiple different Block products. “Block could easily have emphasized certain specific tax forms if indeed that was the basis for the price comparison, but it did not do so. Instead, it told customers about the starting price for Block’s products that include expert help. A viewer of this ad would readily recognize the ‘necessary implication’ that the TurboTax product it listed as a comparison was the lowest-priced TurboTax product with expert assistance.” The court therefore presumed actual deception as well.

The court also found likely success on materiality. (Here’s where harm causation gets tricky—since Intuit doesn’t directly benefit from anyone who uses the free product with expert assistance, and people who pay for TT because they mistakenly thought they’d get to use the free product are more accurately characterized as victims of false advertising rather than as beneficiaries, the “value” that Intuit gets here is actually at most “brand value” rather than the value of a truthful claim. We’re in a world where that’s enough, I guess.)

Steckel’s study of the ad at issue concluded that “respondents thought that there were at least as many features in the Block website and that the Block product costs less.” He also found that “price [was] extremely important,” and he also found that approximately one-third of survey respondents identified availability of tax expert assistance as important. He also summarized academic literature showing that “price comparisons ... increase[ ] the purchase likelihood of the brand making the comparison and reduce[ ] consumers’ intent to search for more information.” “In combination, Dr. Steckel’s findings support his conclusion that claims that tax expert assistance is available starting at a lower price through Block’s products are likely to affect consumer purchasing decisions, since a significant number of consumers are interested in expert assistance and a significant number of consumers also care strongly about the price of the product they select.”

Block’s critiques were insufficient; Poret primarily challenged the lack of a proper control group, which went primarily went to misleadingness/deception. And even without a proper control, the court wasn’t “persuaded that it should ignore Dr. Steckel’s finding that 25 percent of respondents who viewed the original advertisement thought it showed that Block’s products included comparable or more features than the comparator product.”

The court also found likely injury to Intuit, applying a presumption of injury when there’s direct competition and a tendency to mislead, as well as testimony of Intuit’s Director of Marketing Strategy of her belief  that the ads “absolutely were harmful” to Intuit, in the form of both reputational harm and economic harm and Steckel’s testimony that “Block’s conduct, which resulted in the perception of an equal or superior product at a lower price, could cause negative feelings regarding the pricing of TurboTax products and harm the TurboTax brand” and conclusions from the academic literature that “price comparisons ... increase[ ] the purchase likelihood of the brand making the comparison and reduce[ ] consumers’ intent to search for more information.”

To the extent Block was enjoined from claiming that expert and AI assistance “starts at” a lower price with Block than with Intuit, Block would likewise be barred from claiming that expert and AI assistance costs at least $54 less with Block than with Intuit, given that Intuit provides expert and AI assistance for free through TurboTax Live Assisted Basic, so such assistance is actually available for less with Intuit than with Block.

What about the claims comparing Block’s paid DIY products with TT Live Assisted? Intuit identified several putative material differences: (1) although both companies’ products offer “as-you-go” expert assistance, only TurboTax Live Assisted has the additional “expert final review” feature without additional cost; (2) this also allows a free upgrade for an expert to prepare, sign, and file the review; (3) TurboTax Live Assisted includes a guarantee that consumers will be reimbursed for any penalties assessed due to errors made by the tax expert who assisted the Live Assisted consumer; (4) TT’s access to live experts is easier.

Block argued that comparing the two was not misleading and that these putative differences were marketing gimmicks that weren’t significantly different; the vast majority of TT Live Assisted consumers, it said, didn’t get an expert final review, since they must take proactive steps to prompt the review process.

Lanham Act case law accepts an apples-to-oranges theory of falsity for comparative advertising when an ad “omits differences which would have been material to recipients.” The court found that Intuit’s feature was genuinely different from Block’s on expert final review, citing some redacted evidence. Its tools “enable Intuit’s experts to proactively identify any overarching concerns about consumers’ prepared returns.” Although both companies’ products permit unlimited question-and-answer with live experts, at the end of the process, an Intuit customer can request a final review in which the expert conducting the review proactively looks for issues and uses unique tools to help target any such issues. Block doesn’t have that “proactive” feature for its paid DIY products.

In addition, TT Live Assisted permits a tax expert to “complete, sign, and file” a consumer’s return on their behalf, while a Block consumer looking for a similar sign-and-file service must “pay the add-on fee for Tax Pro Review.” Although this free upgrade occurs in only a “tiny fraction” of cases (again, redacted), the court found that this was also a genuine difference.  However, the argued ease of access to expert assistance was not shown to be a genuine difference. Both products included “as-you-go” assistance from experts that can be reached using a “help button” from virtually any page of the tax preparation software experience. Both had live help via web chat, phone call, or screen share. Although Block’s web chat uses an “AI Assistant” to ask an initial set of questions before connecting a consumer to a live expert, the court was persuaded Block’s evidence and arguments showing that the exchange with the AI assistant was quite brief. And although some Block experts are located in India, they receive the same training and interact with consumers the same way regardless of their location.

Finally, Intuit’s argument that the parties’ guarantees were meaningfully different was mistaken.  

So, were expert final review and/or free sign-and-file used in a “tiny fraction” of cases material? The court indicated that materiality could be assessed in two ways: whether the omitted information was “ ‘likely to influence the purchasing decision’ of consumers,” generally demonstrated through use of consumer surveys, or whether “the defendants misrepresented an inherent quality or characteristic of the product.” While the “inherent qualit[ies] or characteristic[s]” of a product may sometimes be self-explanatory, any doubts as to what counts as “the very nature” of the product “must be addressed by evidence of why a consumer sought out a given product—i.e., the primary purpose(s) that drove their consumption activity.”

Expert final review was neither an “inherent quality or characteristic” of Live Assisted nor a “key product feature” going to “the very nature” of an online tax preparation product, unlike the way that “the amount of beef in a burger is an inherent quality or characteristic of a burger.” Evidence that a redacted percentage of Live Assisted consumers take advantage of the expert final review feature didn’t help. [Hmph.] “The Court is skeptical that a feature that must be affirmatively invoked—and if not invoked, is not experienced by the consumer—counts as part of ‘the very nature’ of a product.” There was no other evidence that the prospect of such review drove consumption. Evidence that consumers who used expert final review really liked it did not mean it was material to a purchase decision. Nor did Steckel study expert final review specifically. “[I]t is possible that consumers do not see a difference in value between the type of expert final review offered by Intuit and the as-you-go expert assistance offered by a live expert through either party’s products.” For the extraordinary remedy of a preliminary injunction, this was insufficient.

Similar problems hampered Intuit’s showing on the materiality of the free sign and file service, especially since Intuit doesn’t widely advertise this service, which requires “dig[ging] deep enough” online to even know that such an upgrade is available and “the fraction of individuals who are upgraded in this way is vanishingly slim.”

Claims that over five million consumers switched to Block, when only redacted [ugh!] did: Intuit argued that 5 million was the total number of new Block customers. Block added a disclaimer to that effect on its website after Intuit filed suit, but Intuit argued that it was insufficient. Block also argued that it discontinued any combination of this claim with the “TurboTax switcher” message so the claim was moot. The court disagreed, because voluntary cessation doesn’t moot a claim unless there’s no reasonable expectation that the wrong will be repeated. Here, Block only added a disclosure after the TRO hearing and that was just an asterisk linked to small text at the bottom of the page, not directly below the claim.

The court found likely success on falsity. The ad at issue necessarily implied that over 5 million people switched from Intuit to Block. The phrases “TurboTired? Switch and save with Block,” “Switch from TurboTax® now,” and “Join the 5 million+ who switched to Block last year” all appeared in the same content box within the email. Plus, even if it weren’t false by necessary implication, Steckel’s survey showed likely deception in more than 50% of respondents; even with the disclaimer language in the body of the email, Steckel found that 47 percent of respondents still came to the same conclusion.

Poret critiqued the survey by arguing that TurboTax and H&R Block are the “dominant names” in the field of online tax preparation, so people would just guess they’d switched from TT. But “Block has offered no case law supporting Mr. Poret’s conclusion that a net deception measurement of ‘10 to 20 percent or higher’ is necessary to show ‘enough evidence that an ad is misleading.’” Then there are redactions that make the discussion hard to comprehend, but seem to have something to do with Block’s intent. “In other words, Block itself has created relevant ‘noise’ that may lead respondents to believe the ‘5 million+’ switched language refers to people switching from TurboTax specifically, regardless of whether the specific iteration of the advertisement the respondents review says anything about TurboTax.”

Anyway, the court found that the ad was false, without need of a “net deception baseline (or a specific quantitative value thereof),” as informed by the court’s own “experience and understanding of human nature.” While the materiality burden was high, for a preliminary injunction, “Intuit has a slightly more forgiving burden for proving actual or likely deception.” Steckel’s testimony met this burden. “That a large portion of respondents were also confused by Dr. Steckel’s control version of the email does not change the fact that many viewers of Block’s advertising claim came away from it with the wrong conclusion.” [It just means the control also was deceptive!]

Materiality/injury: Block’s own redacted internal materials supported materiality. [What were they????] “Block clearly believes that advertising about switching to Block has in past years successfully encouraged consumers to make such a switch.”

Claims that TT Live Full Service started at $169: Intuit argued that Full Service was available at $89 to a redacted [!!] percentage of customers as “test pricing.” Block argued that its pricing team checked TT’s website and saw the $169 price and had no reason to believe that Intuit would change its prices in January. Block contended that it couldn’t be held liable “if Intuit is posting two different prices online” without disclosing that prices may differ in certain test markets.

Although false advertising is nominally strict liability, and although the strength of this argument as a matter of consumer protection is very hard to evaluate given the redaction (if the test pricing was available to 2% I’d feel very differently than if it was available to 75% of customers), the court was attracted to the mootness argument here to avoid the issue. Block’s witness testified that a Block manager checked Intuit’s website every day to validate the $169 comparison price. When Block was contacted by Intuit’s team about the $89 price, Block “put a process in place to update that content and correct the mistake on [Block’s] site,” and Block represented that it does not plan to run ads using an inaccurate starting price for TurboTax Live Full Service in the future. There were no circumstances “raising the specter of gamesmanship” here; this was just a mistake that had been addressed, and the court denied the request for an injunction as moot.  

For the claims that survived the other factors, there was a presumption of irreparable harm, which Block didn’t rebut, and “[e]vidence of threatened loss of prospective customers or goodwill certainly supports a finding of the possibility of irreparable harm.” Plus there was Steckel’s testimony that “Block’s conduct, which resulted in the perception of an equal or superior product at a lower price, could cause negative feelings regarding the pricing of TurboTax products and harm the TurboTax brand” and could “influence ... consumers to switch to Block.” Thus, Intuit was entitled to an injunction against Block ads (1) suggesting that the “starting” price for expert and artificial intelligence assistance is lower with Block’s products than with Intuit’s products, and (2) placing language about “5 million+” people having switched to Block in proximity to language about switching from TurboTax or other language inviting the inference that all 5 million+ people switched to Block’s products from Intuit’s products.

 

materiality survey is in--even with 20 industry employees as respondents

Multiple Energy Technologies, LLC v. Under Armour, INC., 2025 WL 82336, No. 2:20-CV-664-NR (W.D. Pa. Jan. 13, 2025)

MET sued Under Armour for multiple things, including false advertising, and here MET sought to exclude the testimony of Under Armour’s consumer survey expert Hal Poret, but the court allowed it to rebut MET’s survey expert Thomas J. Maronick and “to design and conduct a survey to test whether the relevant FDA claims influence consumer decisions to purchase Under Armour’s products that contain Celliant.” Poret would testify that his “survey utilized a classic experimental design consisting of a Test Group and a Control Group, each consisting of 300 unique respondents.” Participants assigned to both groups viewed three Under Armour web pages. The first two pages were identical between the groups. On the third page, however, the test group saw “Products powered by Celliant have been determined by the FDA to increase localized circulation, leading to faster recovery[,]” while the control saw “Products powered by Celliant can lead to faster recovery.”

test image: determined by the FDA to increase localized circulation, leading to faster recovery

control image: can lead to faster recovery

Respondents were then asked: “Based on the webpage you just reviewed, how likely or unlikely would you be to purchase apparel from the advertised product line?” They were offered eight options from “extremely likely” to “extremely unlikely[,]” and ending with “don’t know[,]” (order flipped for half). Then they were asked an open-ended question: “Please tell us all the reasons why you would be __________ to purchase the product we showed you?” Poret concluded that the FDA claim had no statistically significant influence on consumer purchase decisions.

The court found that the report and testimony were relevant and “fit” the case. It didn’t matter that he didn’t test for deception, since his opinion went to materiality, which was also at issue. He used Under Armour ads, changing only the allegedly false FDA claim, making it connected to the question at issue, and so his testimony would help the jury. “Any lingering issues with Mr. Poret’s survey design—like the fact that what influenced survey participants could have been a reference to ‘recovery[,]’—are not grounds for exclusion but fodder for cross-examination.” Alleged flaws in the survey design went to weight rather than admissibility.

MET argued that the control language, “Products powered by Celliant can lead to faster recovery[,]” was improper because it “removed the majority of the language contained in the FDA Claim”—including any reference to the FDA—“and substituted in a word not included in the original FDA Claim.” But it was the statement “that the FDA found the Celliant product benefitted the wearer” that was at issue here, so it wasn’t improper to remove the reference to the FDA. And the deletion of “to increase localized circulation” was defensible, as that language—stating what the FDA determined—was tied to the FDA claim in the test stimulus. Using “can lead to faster recovery” rather than “leading to faster recovery” wasn’t a material wording change; it went to weight rather than admissibility, as did Poret’s decision not to use funneling questions to confirm that participants reviewed the FDA claim language. “In fact, the open-ended question revealed that at least three respondents viewed the FDA claim and found that it impacted their likelihood of purchase.”

The court was also untroubled by his failure to exclude 20 survey respondents who were employees of companies making athletic apparel (including 5 of Under Armour), which does seem a bit dodgy, but that went only to weight. “MET and its expert can certainly explain MET’s issues with Mr. Poret’s analysis and why its survey expert’s opinion is better.”

statements about market conditions aren't about "nature, characteristics, or qualities" under 43(b)

Nexus Pharmaceuticals, LLC v. Long Grove Pharmaceuticals, LLC, 2025 WL 81877, No. 24-10444-MJJ (D. Mass. Jan. 13, 2025)

Nexus sued its competitor Long Grove under the Lanham Act, alleging that Long Grove made false statements about a shortage of fluorescein, a drug, which allegedly diverted consumers from buying Nexus’s fluorescein product and preventing Nexus from converting customers. In a rare interpretation of the “nature, characteristics, or qualities” language of §43(a)(1)(B), the court found that “market conditions” were not encompassed in that language, and thus Nexus failed to state a claim.

The FDA sometimes exercises “regulatory flexibility and discretion” to “help[ ] to alleviate a drug shortage and to ensure access to treatment options for patients in critical need.” Manufacturers authorized to sell an unapproved drug in shortage may normally continue doing so for a grace period after the shortage ends.

Fluorescein is a drug product used as part of a diagnostic angiography or angioscopy of the retina and iris vasculature, which enables X-ray-like images of veins. In early 2023, due to the previous manufacturer’s bankruptcy, the nationwide supply of fluorescein sodium injection became low. Long Grove bought the NDA and the remaining inventory from bankruptcy. Given the shortage, the FDA exercised its enforcement discretion to permit Long Grove to sell the old stock, and also required Long Grove to disseminate a “Dear Healthcare Professional” Letter, which the FDA also posted on its website, about the situation.

Later in 2023, Nexus received FDA approval for a generic version, and the FDA declared the shortage resolved.  Nonetheless, Long Grove continued to distribute and advertise its product with statements that a fluorescein shortage existed, despite Nexus’s protests.

The court declined to reach Long Grove’s FDCA preemption argument, because the challenged statement didn’t relate to either party’s product. Nexus didn’t like Long Grove discounting the price of its old product given its shorter expiration date, but Nexus didn’t allege that Long Grove made a false or misleading statement about the actual age of the fluorescein drug or the quality of the fluorescein drug itself. Statements about shortages relate to “supply and demand phenomena,” and “market conditions surrounding fluorescein that led FDA to exercise its enforcement discretion” rather than “any inherent quality or characteristic of either party’s fluorescein drug product.” Indeed, “[e]ven if Long Grove had stated … that fluorescein was ‘only available at Long Grove’ or ‘exclusively available at Long Grove,’ those more direct statements would still be insufficient because they do not relate to the inherent quality or characteristic of the product, as opposed to the market conditions (i.e., the existence or non-existence) of the product.’” [I’m not sure I’d go that far!] The court analogized to other cases holding that statements relating to a “marketing method” are unrelated to actual qualities or characteristics of products, e.g., “exclusive T.V. offer” made “for the first time on T.V.,” false use of the ® symbol, and false claims of legal entitlement to market a product.

are certificates of analysis and other technical specs commercial speech?

Sweegen, Inc. v. Manus Bio Inc., No. 8:24-cv-01757-JVS-DFM, 2024 WL 5317280 (C.D. Cal. Dec. 19, 2024)

Sweegen is one of the largest suppliers of non-GMO Rebaudioside M or “Reb M” sweetener, manufactured through bioconversion from stevia leaves. Its competitor makes NutraSweetM Reb M. Sweegen alleged that Manus falsely told its customers, mostly consumer packaged goods (CPG) companies, that its NutraSweet M was made through extraction or bioconversion from stevia, but Sweegen allegedly commissioned independent tests that show that Manus’s sweetener is not produced by bioconversion. Although Manus argued this was a typographical error, Manus allegedly continued to mislabel its product as stevia leaf extract on its promotional materials and product description statements.

Sweegen sued for violations of the Lanham Act and coordinate state law. Reasoning, dubiously to me, that Manus wasn’t engaged in commercial speech, the court grants the motion to dismiss.

Sweegen identified five types of documents: the Certificate of Analysis supplied to customers; an order confirmation describing NutraSweetM as stevia extract; Manus’s “Technical Specification”; the GRAS (Generally Recognized as Safe) Notification submitted to the FDA; and the Confirmation of non-GMO Ingredient Certificate; all of which stated that Manus’s NutraSweetM is “stevia extract” or made through bioconversion.

Under Ariix, LLC v. NutriSearch Corp., 985 F.3d 1107 (9th Cir. 2021), “commercial speech analysis is fact-driven,” and courts must “try to give effect to a common-sense distinction between commercial speech and other varieties of speech.”

Manus argued that these documents weren’t commercial speech because there was no economic motivation to induce purchases through them; they were “solely technical and procedural”—things like “a Certificate of Analysis or order confirmations are routine documents used in the ordinary course of business, provided after the purchase.”

Sweegen responded that these were still promotional in that they were used to convince CPG companies to purchase Reb M, “who in turn make the same misrepresentations to end-user consumers. The written materials are directly used by CPG manufacturers to claim that their product is non-GMO or made from stevia extract.” Although that would persuade me (except as to materials submitted to the FDA), Manus persuaded the court. [Note that even after Lexmark, Sweegen might have difficulty showing standing to sue the CPG manufacturers who are repeating the false claims on their own ingredient lists, even though that’s definitely advertising, given its reasoning on causation below—so the court’s reasoning may allow false advertising arbitrage.]

Ignoring that purchasers wouldn’t buy things that didn’t meet their standards, the court reasoned:

Common sense suggests that technical specifications, confirmation orders, and certificates are routine and informational. The “primary purpose” of a Certificate of Analysis is to confirm the contents of an order. Manus provides Technical Specifications primarily to inform buyers of acceptable labels for NutraSweetM. ... The argument that Manus’s CPG customers use the information from Manus’s materials to promote its Reb M as stevia extra is one step removed from finding that Manus provided the documents with the primary purpose of reaping economic benefit.

Anyway, even if these materials were commercial speech, the court wasn’t convinced that the purpose of the speech was to influence consumers to buy Manus’s Reb M or that it was sufficiently disseminated to the relevant purchasing public. Although the documents were integral to the sales, the court reasoned that Manus’s documents were not created to influence consumers to buy the product. And, though the facts seem to suggest a coordinated campaign, the court didn’t think they were sufficiently disseminated if they were only sent after purchase. (Although apparently the non-GMO certificate was a “one-off”, as was the GRAS notification to the FDA, which I agree deserves different treatment.) Perhaps this could be corrected by amendment: “The required level of circulation to meet this element may vary by industry but no additional facts are alleged to support that Manus’s materials were sufficiently disseminated. Furthermore, the Complaint does not mention who the ‘relevant purchasing public’ is and whether it includes the end-product users or just the CPG companies.” Plus, I would think that the certificates etc. would be important to potential repeat customers.

Sweegen did plead proximate causation since they compete for the same CPG clients.

Call for Papers: Harvard/Yale/Stanford Junior Faculty Forum, June 2-3, 2025

Request for Submissions

Harvard/Stanford/Yale Junior Faculty Forum

June 2-3, 2025, Harvard Law School

Harvard, Stanford, and Yale Law Schools are soliciting submissions for the 2025 Harvard/Stanford/Yale Junior Faculty Forum, to be held at Harvard Law School on June 2-3, 2025. Twelve to twenty junior scholars (with one to seven years in teaching) will be chosen, through a double-blind selection process, to present their work at the Forum. A senior scholar will comment on each paper. The audience will include the participating junior faculty, senior faculty from the host institutions, and invited guests. The goal of the Forum is to promote in-depth discussion about particular papers and more general reflections on broader methodological issues, as well as to foster a stronger sense of community among American legal scholars, particularly by strengthening ties between new and veteran professors.

TOPICS: Each year the Forum invites submissions on selected topics in public and private law, legal theory, and law and humanities topics, alternating loosely between public law and humanities subjects in one year, and private law and dispute resolution in the next. For the upcoming 2025 meeting, the topics will cover these areas of the law:

Administrative Law

Antidiscrimination Law and Theory

Constitutional Law—theoretical foundations

Constitutional Law—historical foundations

Criminal Law

Critical Legal Studies

Environmental Law

Family Law

Jurisprudence and Philosophy

Law and Humanities

Legislation and Statutory Interpretation

Public International Law

Workplace Law and Social Welfare Policy

A jury of accomplished scholars will choose the papers to be presented. There is no publication commitment. Harvard Law School will pay presenters’ travel expenses, though international flights may be only partially reimbursed.

QUALIFICATIONS: Authors who teach law in the U.S. in a tenured or tenure-track position as of the submission deadline (February 28, 2025) and have not been teaching at either of those ranks for a total of more than seven years are eligible to submit their work. American citizens or permanent residents teaching abroad are also eligible provided that they have held a faculty position or the equivalent, including positions comparable to junior faculty positions in research institutions, for less than seven years and that they earned their last degree after 2015. We accept jointly authored submissions, but each of the coauthors must be individually eligible to participate in the Forum. Papers that will be published prior to the Forum are not eligible. There is no limit on the number of submissions by any individual author. Faculty from Harvard, Stanford, and Yale Law Schools are not eligible.

PAPER SUBMISSION PROCEDURE: Electronic submissions should be sent to Rebecca Tushnet at rtushnet@law.harvard.edu with the subject line “Junior Faculty Forum.” The deadline for submissions is February 28, 2025. Remove all references to the author(s) in the paper. Please include in the text of the email your name, the title of your paper, your contact email and address through June 2025, and under which topic your paper falls. Each paper may only be considered under one topic. Any questions about the submission procedure should be directed to Rebecca Tushnet.

FURTHER INFORMATION: Inquiries concerning the Forum should be sent to Christine Jolls (christine.jolls@yale.edu) or Yair Listokin (yair.listokin@yale.edu) at Yale Law School, Rebecca Tushnet (rtushnet@law.harvard.edu) at Harvard Law School, or Norman Spaulding (nspaulding@stanford.law.edu) at Stanford Law School.

Christine Jolls

Yair Listokin

Rebecca Tushnet

Norman Spaulding

literal falsity might not matter with sufficiently sophisticated customers

G. W. Aru, LLC v. W. R. Grace & Co.-Conn., No. JKB-22-2636, 2025 WL 45827 (D. Md. Jan. 7, 2025)

I’m skipping most of the patent parts, though they are very much present in the case and interact with a falsity issue. The parties, GWA and Grace, compete in the manufacture and sale of carbon monoxide (CO)-carbon dioxide (CO2) combustion promoters, which are products used in the petroleum refining process. GWA alleged that Grace copied GWA’s patented combustion promoter technology and mounted a marketing campaign denigrating GWA’s products to customers.

A combustion promoter is a small particle used in fluid catalytic cracking (FCC), a process for refining crude oil into higher value products such as gasoline. Combustion promoters help convert CO into CO2, which is desirable because too much CO in an FCC unit can cause damage to FCC equipment (“afterburn”). CO to CO2 combustion promoters consist of a porous support particle, often made of alumina, impregnated with Group VIII noble metals (typically platinum or palladium). The noble metals are the active component in promoting the conversion of CO to CO2. GWA’s patent claims a combustion promoter that requires less noble metal to achieve the same level of CO combustion, using an “eggshell” distribution of noble metals instead of the traditional homogenous distribution. This is allegedly beneficial because noble metals are “very expensive,” and because it results in reduced emissions of nitrogen oxides (NOx), heavily regulated pollutants.

The challenged claims were made in a trade magazine for the petroleum industry; on a blog post on Grace’s website; and, sometimes with greater elaboration, in direct outreach to certain customers. There were (1) comparative performance claims; (2) lower NOx emissions claims; and (3) claims about noble metal on the outer surface of the combustion promoter particles.

For the comparative performance claims, there was no genuine dispute that the ads were literally false, and deception was presumed as a matter of law, but there were still disputes about materiality and injury, so a jury would have to decide liability. On the others, falsity and deception were also in dispute.

Comparative performance claims: Grace claimed that a customer trial showed that the usage rate for Grace’s product decreased by 62%64% compared to GWA’s (Grace told multiple customers that GWA was the comparator). Unfortunately for Grace, this was a “tests prove” claim, and the tests at issue undisputedly didn’t prove that. There were no data on afterburn. (I guess I’m the sole holdout treating data as plural.) And at most, the claims of 62/64% improvement were 52%/30%, respectively.

“Questions of who prepared the underlying data, what caused the errors, and whether a defendant knew the statements were false at the time, are of no moment to the question of falsity.” Grace cited Ony, Inc. v. Cornerstone Therapeutics, Inc., 720 F.3d 490 (2d Cir. 2013), for the proposition that “in a false advertising claim, it is relevant whether the alleged statements are fabricated or fraudulently created,” but that was inapposite. Ony involved “a peer-reviewed scientific journal and concerned an area of legitimate ongoing scientific debate.” “But here, there is no contention that the analysis of the data on which Grace relied for the comparative performance claims is the subject of legitimate scientific debate; on the contrary, it seems that the analysis is fairly straightforward for someone with the relevant technical knowledge. Moreover, Grace’s analysis was not published in a peer-reviewed scientific journal, but rather in a trade magazine and on its own website.”

NOx claims: Grace advertised that:

The greater the percentage of either palladium or platinum at the surface of the particle, the more accessible the metals are to provide an effective activity response. By incorporating a modified alumina, Grace’s optimised CO promoters (both platinum and palladium based technologies) can provide the same CO promotion activity at a lower metals level, with an additional benefit of lower NOx emissions. Based on this new technology, Grace has commercialized Optimized CPP, a low-NOx CO promoter that contains lower palladium levels while maintaining CO promotion activity.

GWA argued that these statements were literally false because Grace had no data supporting these claims. The court found a genuine dispute of fact on literal falsity. There was no express reference to testing; a reasonable jury could find that it wasn’t an establishment claim. It was not enough for GWA to argue that the data on which Grace relied were insufficient; anyway, there was a genuine issue of fact even on that. Grace argued that its “Optimized CPP” product uses less palladium and that its testing showed that decreasing the palladium level on the CPP additive resulted in lower NOx emissions. Even if that testing was over ten years old, that could still be supportive evidence.

Finally, the court noted that Grace did make more detailed, “tests prove”–style claims in follow-up email communication to certain customers. But the court wasn’t sure that such supplemental outreach constituted “commercial advertising or promotion”; there was a factual question on that for a jury.

Outer surface claims: Grace advertised:

The process Grace uses to incorporate palladium and platinum onto the combustion promoter naturally leads to a particle where the majority of the metals are located at the surface. However, the advanced alumina used for the optimised CO promoters results in an even higher proportion of the metals residing on the outer surface of the particle.

The advertisement then goes on to tout the advantages of that. In arguing literal falsity, GWA relied heavily on Grace’s statement in its amended answer that Grace “admits that its CP® CO to CO: combustion promoter is intended to have a uniform distribution of noble metal throughout the promoter.” At the preliminary injunction stage, the court found that Grace’s admission in its pleading supported a finding that the outer surface claims were likely to be literally false. But that wasn’t binding at the summary judgment stage:

If this case were simply a false advertising action, then Grace’s admission would conclusively establish the literal falsity of the “outer surface” claims. But GWA’s own claim for patent infringement complicates the matter. To prevail on its patent infringement claim, GWA must prove that Grace’s combustion promoter particle has a higher concentration of noble metals in the outer region of the particle as compared to the center. To prevail on the false advertisement claim, however, GWA must prove something that is close to the exact opposite—that Grace’s particles do not have a higher concentration of noble metals on the particle’s “outer surface.” There is nothing wrong with pleading in the alternative, but the very fact that GWA is intent on pursuing both theories suggests that summary judgment on the question of the distribution of noble metals in Grace’s products is premature.

To win its patent infringement claims, GWA argued that its testing showed that there was a higher concentration of noble metals in the “outer region” of Optimized CPP as compared to the center. But if that was true, “then there is at least some basis for believing that there is also a higher concentration of noble metals in the ‘outer surface’ of the particle. GWA argued that there was a meaningful difference between “outer surface” and “outer region,” but there was no clear explanation of “how one could distinguish the outer surface of a microsphere from the outer region.” “[A]lthough testing by GWA’s putative expert purports to show that there was no noble metal detected on the outer surface of the accused product, a reasonable jury could find that the testing is not conclusive, because the depth chosen to measure the ‘outer surface’ was somewhat arbitrary.” Given a crucial disputed issue in the case—whether Grace’s accused products have the kind of “eggshell” design claimed in GWA’s patent—it would be premature to resolve the issue in the false advertising part of the case.

What about materiality? There’s a circuit split on whether literal falsity also carries a presumption of materiality; the Fourth Circuit hasn’t weighed in, and the court assumed that materiality must still separately be shown. At the preliminary injunction stage, the court found that “cost efficiency” was likely to be material, and GWA provided testimony from industry professionals that all three claims were material. “A reasonable jury may well find this evidence convincing. But, Grace has produced countervailing evidence that tends to show that the relevant customers are sophisticated industrial firms that would likely do their own testing before implementing a new product. In short, whether Grace’s challenged statements were likely to influence the purchasing decision of the relevant consumers is a disputed factual question that the Court cannot resolve now.”

Nonetheless, because literal falsity doesn’t require evidence of deception, no further evidence that the ads deceived consumers would be required, which strikes me as logically inconsistent with the reasoning immediately prior; the whole literal/implicit falsity apparatus + materiality has developed into a formalism that is probably at this point more harmful than helpful to reaching just results.