Santa Clara IP Conference: Where Do We Go From Here?

Moderator: Edward Lee, Santa Clara Law

BJ Ard (copyright), University of Wisconsin Law School

© is often displaced by contract and other regimes in sectors—scaling it up or down would produce minimal impact. Consumer copying for example is often solved by non-© solutions: Spotify changed things, as did rise of cloud-based services which meant people had less to share. Content ID can block fair use but does allow lots of uses that otherwise wouldn’t be fair. Even big-budget productions, like video games, don’t rely on © to deter second-comers but on features that are costly to duplicate, actors/TM/ROP protection, sequelization. It’s not that this sector is representative but hybrid relations that are only partly ©-governed exist across the board. Copyright owners use licensing models to overwrite © provisions. Streaming services continue this trend w/no need for legal enforcement b/c access is built into the system.

© is the only policymaking place where concerns about AI are actually being aired, but © can’t stop AI; big © owners are going to license. Given that © isn’t doing as much work in its traditional domains, we shouldn’t expect it to do work in these new domains. Asking it to solve labor issues, market concentration, privacy is likely to fail.

Colleen Chien (patent): AI’s effects on search for examination; AI can also identify potentially infringing products. AI tools used to digest evidence and make predictions. As we see platforms start to make their own IP infringement determinations, we might find them “good enough” w/o need for lawyers. Discussed need for human review—need to figure out.

Camilla Hrdy (trade secret), Rutgers Law School

Trade secret law is different from other IP; often not defined until mid litigation where you perform “identification,” the law of which is in chaos. California wants you to identify the secret before discovery; courts had maybe been converging on that but the 9^th Circuit said no, the Defend Trade Secrets Act has a different standard—not reasonable particularity but sufficient particularity; other circuits say different things. Lack of clarity on fundamental initial issue. What does it mean to keep something secret? Not clear; jury left on its own. What does it mean for a secret to be readily ascertainable? In California, the most important trade secret jurisdiction, there isn’t a requirement of lack of ready ascertainability—even if you could perform reverse engineering in 8 hours you can still be liable for getting it from an employee. NJ has the same rule. Lots of lack of clarity about workers’ high level knowledge and experience—lots of courts think that asking about that is the same as asking whether something is generally known in the field. Not clear about what it takes for a secret to have independent economic value—lots of courts just look at whether you invested in the information. We need more people thinking about trade secret law! People need to talk to practitioners. We don’t know enough!

Keith Robinson (patent), Wake Forest University School of Law

Uncertainty around what counts as invention. Mental conception doesn’t really match with the evidence we look for (documentary: notebook, emails, other records). Identifying a problem rarely matters. Even a highly specific articulation of a problem is typically insufficient unless paired w/ a concrete solution.

Jennifer Rothman (right of publicity), Univ. of Pennsylvania Carey Law School

Identity thicket: overlapping rights. People have been registering marks in names/likenesses for a while; current focus on Matthew McConaghey is perplexing to her (and me). But we might highlight how rights are being separated out w/potentially different controllers and licensees. There used to be a lot more distinction b/t people using name as business name/putting it on goods/services. But now the Lanham Act and states protect use of names, voices, and images as marks, at least if we are commercializing them in some way. The PR stunt of the registrations is more interesting: he has a deal for use of his voice as a voice clone that can speak multiple languages—it’s a way to market his deal. False advertising law is also relevant to these uses. © is also relevant and maybe is less peripheral than Ard said. Are digital replicas uncopyrightable? Unclear! There are pending registrations. If registrable, can there be multiple registrations of a digital replica as you can have multiple registrations of photos of a person? If so, what’s infringement? We’ll see people leveraging © this way more. © one’s personality or “character” bible in the same way people © scripts. Music industry has already made © claims that using similar voices is infringing.

At the federal level Take It Down is about intimate images; No Fakes is also under consideration to regulate digital replicas generally. There’s so much going on: that’s the identity thicket. And one person might not control all these rights; rights conflicts are possible, raising serious concerns about a human-centered approach. Compare to EU approach, focusing on concerns about the underlying person being depicted and secondarily on the public.

Capitol Hill: not clear what will happen, if anything. But it won’t help matters very much b/c unlikely to preempt the thicket that already exists. And won’t address concerns about transferring rights away from underlying person, or about deception licensed by the underlying person. Considering model state ROP law to address more of these issues, especially transferring someone’s own name, likeness etc away from them—has seen SAG realize this is a problem. Might see more of an appetite for repealing CDA 230; shifts in tech to build guardrails; we might see shifts in preferences for authenticity—hopes for the renaissance of theater.