Panel 6: Unanticipated Consequences of New Technologies and Practices

29th Annual BTLJ-BCLT Spring Symposium: Origins, Evolution, and Possible Futures of the 1976 Copyright Act

Jennifer Urban, UC Berkeley Law (Speaker and Moderator)

Daniel Gervais, Vanderbilt Law: Copyright act as undergirding licensing architectures for AI. © rights are inert without exchange. A reproduction right is sterile if the transaction costs of licensing exceed the value of any license. Ghost architecture of the statute: the licensing machinery built around it by antitrust enforcement/courts, and extended by subsequent legislative initiative. Why a mix of compulsory licenses, court-supervised blanket licenses, CMOs, and congressionally sponsored organizations? Reflects judgments about when markets will work to create licensing regimes on their own and when they won’t.

Congress understood that certain uses would produce market failures if left entirely to the private system—difficulty of advance licensing millions of daily transactions, supervising individual uses. Compulsory licenses are not concessions to users at the expense of rightsholders; they are a mechanism to have market activities occur when otherwise they’d be unlikely to occur at all—tech would be frozen out of the market or rightsowners would be uncompensated. ASCAP, BMI, SESAC allowed for licensing without compulsory licensing.

The initial compulsory license was created to prevent monopolization, not to subsidize record companies. The streaming eras revealed some weaknesses, including “address unknown” filings to the Copyright Office, demonstrating a systemic breakdown. The MMA in 2018 tried to address that failure with a mandatory administrator of a blanket license, reducing the loophole and creating a matching database to find authors & deal with unclaimed royalties.

SoundExchange is neither voluntary nor a traditional intermediary—does not require opt-in. The compulsory license is one half of the architecture. The other is voluntary licensing in text & images, showing judicial calibration of licensing market. This played out with the CCC and fair use litigation—the early fortunes of CCC were modest without a judicial determination that licensing was important. Texaco (2d Cir. 1994) changed that landscape by holding that systematic copying of journal articles was not fair use.

AI is a stress test b/c of the scale of reproduction beyond any existing licensing system. International system: no national licensing scheme can avoid the possibility of arbitrage. The licensing system is starting to respond for high-value sources like NYT. CCC has expanded to cover AI uses. Other countries are introducing AI specific licenses. Voluntary arrangements can try to fill that space even before legislation.

History in US: incremental expansion of compulsory license as scale increases. American experience counsels against using a levy to respond: AHRA’s statutory royalty on digital audio recording devices and blank media seemed designed well but the tech passed through the market like a comet.

How can a system built on territoriality deal with cross-border content? Reciprocal agreements, through voluntary licensing. Each adaptation is slower and imperfect but it does happen. AI: most demanding test b/c of scale, speed, and international complexity.

Matthew Sag, Emory Law: Nonconsumptive uses. © is built on the metaphor of the printing press. Copyright provides incentives to authors whose works would otherwise be reely copied on first publication. Thus, reproduction is the locus of exchange b/t reader and author, where the toll can be imposed. But what if there are no readers?

We have seen a series of copy-reliant technologies—search engines, plagiarism detection, machine learning, generative AI. They necessarily copy works but usually don’t deliver prior original expression to any human reader. This issue wasn’t anticipated in 1976, even if AI authorship clearly was.

Should hidden intermediate copies be permissible if no one ever reads them? Tension b/t 2 intuitions—copying (the technical act) is infringement versus copyright’s purpose is to protect expression communicated to audiences—consider how we judge substantial similarity, or give rights over public performance.

His solution: nonexpressive use is fair use. When he started, he mostly had software reverse engineering in mind, then plagiarism detection and Google Books. Gen AI produces outputs that might compete with human-made expressive works, which changes the politics entirely, if not the law.

Courts have generally held that technical copying is fair use when the copying isn’t communicating to the public. Bartz & Kadrey both found model training to be highly transformative fair use; Ross Intelligence disagreed and currently under review by 3d Circuit. If that case goes the other way, it may be on narrow grounds related to the 4^th factor.

Where is this heading? Courts have done a pretty reasonable job with the nonexpressive use cases. But we don’t have to rely on courts. Netcom: an analogous issue; court did a great job recognizing insanity of holding infrastructure providers liable for passive passthrough, and articulated volitional conduct requirement. Congress also stepped in and gave us 512, modeled on Netcom but more predictable than the volitional/nonvolitional conduct line. A functional Congress could provide additional clarity.

To that end: proposes revising 107 to recognize that copying works to extract unprotected information or enable nonexpressive computational functions is highly transformative—not fair use b/c there should be room for courts to evaluate the whole picture.

Lots of people perceive licensing as a solution for LLM training. ASCAP is amazing, efficient, but they don’t pay anyone a check for less than $100 or direct deposit for less than $1. It works b/c the authors w/ works of negligible value don’t get paid. But we have no way of tracing which individual works are important to the system. We’d have to divide revenues among a lot of people, not just songwriters, book authors, but everyone who ever posted on social media or commented on Stack Overflow. That’s billions—a very large sum of money divided by billions turns into a lot of transaction costs. You could still send checks to large content owners, but those are precisely the folks who can do deals w/large companies. This would just be a tax system. If you want to tax LLMs and redistribute $ for worthy causes, that’s a great idea, but tax!

Rebecca Tushnet, Harvard Law School: And now for something completely different!

When I started my career writing about fan fiction, which involves fans writing, for example, the further adventures of Kirk and Spock from Star Trek or Mulder and Scully from the X-Files, people in the legal community were often surprised that I cared—wasn’t this a bunch of infringing derivative works? Now, when I talk about fan fiction, people in the legal community are often surprised that I care because noncommercial fanworks seem obviously transformative and fair, or at least obviously not going to come under legal threat. Chloe Zhao directs movies for Marvel and talks about her fan fiction; the actress who plays Dr. Javadi on The Pitt says that her character is a regular girl and gives as a key example that she’s on AO3, which she expects you to know means the Archive of Our Own. My students have never known a world in which fan fiction was hard to find. I’m more pleased to be in the latter situation, but it does make me feel a bit old! And given that noncommercial fanworks were not on the radar of the drafters of the Copyright Act—even if some of them almost certainly knew about science fiction fan culture—my placement on this panel makes sense.

A bit about my relationship with fanworks: a founder and presently co-chair legal committee of the Organization for Transformative Works, or OTW. Mission, to support and defend noncommercial fanworks, explicitly framed as transformative both in the legal copyright sense and in the broader sense of being different in exciting ways. One of the ideas was that we’d try to show up in the rooms where it happens to give fans a voice in policy and legal discussions as creators, the way the EFF does for general internet freedom.

Today, the OTW’s Archive of Our Own hosts over seventeen million fanworks—works based on existing media. We’re a Library of Congress American heritage site. The OTW also supports a wiki, Fanlore, dedicated to fan-related topics; a peer-reviewed open-access journal named Transformative Works and Cultures; and a legal advocacy project to help protect and defend fan works from legal challenge and commercial exploitation. The OTW routinely submits amicus briefs and policy comments to courts, legislatures, and regulators regarding copyright, trademark, and right-of-publicity issues.

One of our most longstanding projects has been seeking and obtaining exemptions from 1201 for noncommercial remix videomakers—vidders or fan editors. Our exemption currently allows noncommercial remixers to rip clips of video from DVDs, Blu-Ray and streaming video in order to make their own transformative works.  In the 1201 exemption process the Copyright Office perceives its job to be narrowing your requested exemption as much as possible. Still, we showed that noncommercial fan videos were regularly fair use and that 1201 hampered fans’ ability to make those fair uses. We’ve obtained renewal of those exemptions several times.

Some lessons:

First, there is no substitute in the modern state for organizations that can speak the language of regulation. Citizens must organize or they will be ignored. But a small group of people can effectively do that! Very few of the more radical anti-copyright, anti-capitalist people who think the OTW is a liberal (derogatory) organization are in this room, but I think we’ve had a productive effect on the overall conversation that includes them.

Second: It is not good for everyday practices to get fundamentally out of sync with formal law. If the everyday practices are acceptable and even good, the formal law ought to recognize that, and we can use fair use to do so.

There are those who say that fanworks are tolerated infringement. Some of those people are probably in this room. This is at best an argument that the formal law sweeps way too broadly under any justification you want to give for copyright rights—yes, the main “tolerators” are big conglomerates, simply because as we heard yesterday they’re the source of most of the widely disseminated for-profit copyrighted works we have today, but there’s a reason that even the individual authors who say they oppose fanworks haven’t actually sued over noncommercial fanworks.

In addition, the “tolerated infringement” argument is a profound indictment of statutory damages specifically. If damage to the exclusivity in a copyrighted work is both infringed by a noncommercial, nonreproductive work and subject to up to $150,000 in damages, that damage ought to be bad, not just an annoyance. Pam Samuelson has always had the right of it and we heard yesterday various forms of agreement with her position that statutory damages have been harmful to the rest of the copyright scheme.

Third and More broadly, noncommercial fanworks are good because they offer a distinct field for creative endeavors, separate from the copyright-enabled commercial system. They are both artisanal and widely distributed, making them an important alternative form of expression. Noncommercial works are fundamentally different in the aggregate from commercial works. They can be Poetry; 100-word drabbles; short stories; 20,000 word stories; million-word stories; other things there’s not much commercial market for. This is part of what makes fanworks worth preserving and protecting: they are part of the background of a thriving modern creative ecosystem.

Noncommerciality complicates questions around blanket licensing: don’t want money, don’t want to participate in the commercial system.

In addition and relatedly, fan cultures have a long connection to queer writing: fan fiction is inherently about difference/the fact that the story could be different/possibility—encourages both repetition with difference and experimentation, which allows some people to open themselves to various possibilities in the rest of their lives. If you want to cry about the power of creativity, read the stories we collected for our submission to the NTIA’s inquiry into the legal framework for remixes: the power of making stories and other creative works within a community that is excited to hear everyone speak has literally saved lives.

Beyond its transformative effects on people, noncommercial fandom is a huge boon to creativity generally. Professors Andrew Torrance and Eric von Hippel have identified “innovation wetlands”: largely noncommercial spaces in which individuals innovate that can easily be destroyed by laws aimed at large, commercial entities, unless those individuals are specifically considered in the process of legal reform.   Their description fits remix cultures well:

The practice of innovation by individuals prominently involves factors important to “human flourishing,” such as exercise of competence, meaningful engagement, and self-expression. In addition, the innovations individuals create often diffuse to peers who gain value from them …. 

Innovation requires that individuals have rights to make, use, and share their new creations, collaborating with others to improve them, as remix authors do.  Given the small scale and limited resources of most individuals, “[a]nything that raises their innovation costs can therefore have a major deterrent effect.” 

Things I have personally been around for: the adoption of curated folksonomy/AO3-style tags in publishing. New story types and tropes: five things that never happened for exploring different scenarios for characters that together illustrate something about the fan author’s view of the characters; the fan-invented “omegaverse” tropes about humans with certain animalistic characteristics.

If you forget about noncommercial works in your creativity policy, you enable the destruction of vital diversity and seed corn for the next generation.

Finally, a coda with another view of internationalism: The US was at the time of the OTW’s founding, nearly twenty years ago, the only place we could count on a strong and flexible fair use defense. This has somewhat changed, including by adoption of fair use in several other jurisdictions, Canada’s noncommercial user-generated content exception, and most recently by greater European flexibility on pastiche, but fair use’s impact is still really notable. American hegemony meant that we didn’t even need a term like “the Brussels effect” for the effect of American fair use and safe harbor laws, but it really did seem like the internet was another American territory. That’s changing, more every day, but we are probably going to miss it when it’s gone.

Jennifer Urban: In-formalization, term extension, and orphan works. Although there was a near-consensus and energy to address it, c2004-2015, efforts were ultimately not a rousing success.

Orphan works: policy questions are related to your sense of who is an author & what authors generally want. Orphan=owner can’t be identified and someone wants to make use of a work in a manner that requires the owner’s permission. 76 Act increased the number of orphan works by removing the formalities.  Widespread agreement thus on the definition and scope of the problem

Solution space: limitations on remedies of injunctive relief, especially when a significant amount of original expression was added; limitations on damage remedies (US proposals); statutory exceptions (EU directive w/r/t making available and reproduction rights); compensation to later-appearing © owners (reasonable compensation, extended collective licensing).

Conditions on relief: proposed: reasonably diligent search; identify use as orphan work on the use itself (notice requirement); register use, potentially with waiting period before use; takedown/stop use upon appearance of © owners; pay compensation to later-appearing owner; provide attribution to later-appearing owner; categorical limitation on type of users (e.g., EU © Directive: educational, library, & public heritage institutions & public broadcasters).

Why so complicated? Different uses are different: archive/library digitization are sensitive to search costs; takedown on notice is more feasible; licensing fees may be prohibitive at scale. Derivative works/smaller scale: more extensive search may be more feasible but takedown/removal not feasible and injunctive relief is prohibitive. Where you were willing to compromise depends on where you sit.

Similarly for copyright owners, © owners like photographers/illustrators were worried they’d be hard to find & usually don’t need to use orphan works themselves. Filmmakers are easier to find and more likely to want to use orphan works.

Limited effectiveness: administrative/centralized licensing adopted in Canada, Japan, Korea, Hungary, UK—fewer than 1000 licenses total by 2015 since 1999. Expensive, not productive. [CASE Act looks better than that!]

2021 EU directive followup found very limited use of EUIPO database and very limited use overall by most eligible organization. 70% of entries in database registered by British Library, and number dropped hugely after Brexit. Lots of complaints about strict search requirements.

Fair use case law also developed to allow a lot of the big data uses; a risk management question. People worried about orphan works protection cabining fair use, even with a savings clause, and that slowed momentum.

Where are we now? Substantial strides in digitization of Office records, which is helpful. But records remaining are in the “sour” spot of 1945-1978. Later-appearing © owner can still register and then sue. Risk aversion is still an issue. Gatekeepers for small creators, libraries—people making decisions about risk aren’t necessarily fully economically rational but have practical effects. Same things with fair use. Occasionally, courts have considered market unavailability in the fair use analysis, but that brings in gatekeepers/risk aversion, leading to “clearance required” policies. And the definition of an orphan work is that it can’t be cleared.

AI raises similar but maybe harder problems.

Urban to RT: how does AI training compensation come into this?

A: it’s incommensurable. It’s like offering me payment after I had you over for dinner at my house. There’s nothing immoral about restaurants but that’s not the kind of relationship I was seeking.

Q about 103(b) and fanworks: if they're fair use, then 103(b) doesn't come into it. Fan authors sometimes worry about commercial misappropriation: they have a copyright in their fair use fanworks, so they can try to shut down unauthorized commercial uses, and they also aren't responsible for such unauthorized uses. Goldsmith even makes this a bit clearer by establishing that the analysis goes use by use; a fanwork created for noncommercial purposes is fair regardless of whether deliberate monetization by the creator would be unfair.

Urban to Sag: how does international nature of training affect this?

Sag: the international scene is quite complicated. Peter Yu & Sag survey the global scene—different jurisdictions take very different approaches, but each trying to (1) make a pathway for legal text data mining, (2) have some protections for © owners. What you see is difference in regulatory style. EU is far more prescriptive in DSM directive. There’s clarity there; some others go further than fair use, but may require, e.g., not just noncommerciality but affiliation w/a library or university. People who think we can put the genie back in the bottle are likely wrong, but even if that’s what you wanted to do, a lot of this activity is portable—you can go to other jurisdictions to train. And that fact of int’l competition should be recognized. Hard to see how a licensing system or tax & redistribution system could work on an int’l basis. We don’t have the political competence to do it here on a national basis, but they might be able to do it in the EU. Only a handful of jurisdictions have TDM protections, but it’s 52% of the world’s GDP. The fact that we allow it in the US isn’t an outlier among our peers.

Gervais: voluntary licensing can deal with crossborder issues. Collective or individual licenses can say something like “parties don’t agree on current scope of fair use” but contracts can manage that risk up to a point, waiting until there’s more coherence in the courts.

RT: maybe we should bring Kalshi in and just use prediction markets. [joke!]

Urban: if there’s nobody to pay, then the orphan works schemes involving collection don’t support the © system.

Q: about licenses b/t major copyright owners and AI companies: will they narrow the scope of fair use?

Sag: I don’t think those licenses should narrow the scope of fair use, though the editor of the Atlantic did say that he entered into one such license to prove the existence/validity of the licensing market. A few notes: most of the licenses, as far as he can tell, are not just for AI training but for retrieval-augmented generation—the economics and copyright implications of sending an AI agent onto the web and assemble them into a report are quite different from the AI training cases and it makes sense to license that activity. Mostly they’re licensing access, which you can see most easily with Reddit, which doesn’t own © in content but charges $60 million/year for firehose access. That’s fine, though it shows need to update robot.txt protocol, but they don’t prove that licensing is a general training solution. We’ll see more of those licensing deals and they’re good, but hopes courts don’t jump to “market for training.”

Litman to Sag: instead of amending fair use to presume training highly transformative, consider moving away from fair use and avoid “transformative,” which attracts additional political, emotional, religious opposition that you don’t need.

Commemorating 50 Years of the 1976 Copyright Act, Stanford Law School

The Copyright Act at 50: Evolution and Impact

Shira Perlmutter

Copyright Act took a long time, with input from lots of interest groups and attention to detail—hundreds of contending and overlapping interests were involved. Hard to imagine this process today. Desire to avoid need for constant amendment/future-proofing. But did they do enough? Didn’t create a general right to exploit the work publicly, which would have obviated the need for continued parsing the scope of each right, like public performance.

Some changes over time, most prominently the DMCA. More than codifying common law principles; tech-specific obligations. Less durable as business models evolved; might have unexpected consequences in Cox. [Hunh? Cox is not a DMCA case.] 1201: some provisions are highly detailed and technical, and outmoded. But the rulemaking process is flexible and fair-use based and has produced new exceptions. Allows © owners to rely more securely on TPMs, enabling the celestial jukebox. Fair use has also played a critical role as a flexible judicial tool. The bones are solid, even with AI.

Q: registration requirement is tough on creators. Can’t get protection [statutory damages] before infringement.

A: You can register—the issue is remedies.

Chris Sprigman: why do you think that it was ill-considered to add to fair use that unpublished status isn’t dispositive?

A: b/c courts had already walked back their overreading of unpublished status. Worried about accretion of more specific language in a statute that’s supposed to deal with rapid change. [Seems like a levels of generality issue; unpublished seems general enough to be robust.]

Sprigman: it’s always good when Congress talks back to the Supreme Court.

Laura Heymann: say more about moral rights?

A: A patchwork in the US; would love to see Dastar reversed and some additional protections provided.

Q: how to design AI training licensing framework?

A: Doesn’t have proposal but thinks it would be possible; easier in areas w/high value works. Small low value works w/authors who aren’t organized are harder. At some point there may be a statutory solution building on experience in the private sector with making a licensing system work.

Tyler Ochoa: Cox v. Sony?

A: Personal views! Shocked at how short the decision was and how little thought there seemed to be about the implications. Threw out decades of © law quickly w/o analysis. Repercussions well beyond the facts. Congress clearly intended to continue the separate treatment of © contributory liability from patent and aiding and abetting liability. [Don’t you know that only Supreme Court cases count? My line on this: “This is easy and you are all stupid” is a poor way to think in drafting most Supreme Court decisions.]

Do We Need a New One? William Fisher

Statute has grown by accretion, not revision, and only when there can be agreement by major stakeholders. Hypothesis: useful to start fresh. Draft from Oren Bracha, William Fisher, Ruth Okediji, and Talha Syed. A couple of points: Limit scope of adaptation right. Reproduction right/substantial similarity is almost overlapping with it, but matters when there’s no reproduction. Independent of exclusive rights of © owner, wants to have rights attached to, at least initially, authors rather than owners—right to attribution, generously defined, and to integrity, narrowly defined. Shorter duration. Compulsory licenses not just for music covers but for educational uses.

Sprigman: Why is remuneration for authors the first principle? The Court has said that’s a means to an end. Why not “vibrant creative environment”?

A: order isn’t meant to connote hierarchy, but worth thinking about. Utilitarianism isn’t the only goal; fair treatment of artists is also a goal.

Q: like the use of lessons from laws around the world. Was that a reason to delete statutory damages, which aren’t available in many places around the world?

A: there are well-known specific defects in the US system of statutory damages. The substantial range for willful infringement per work becomes bizarre & punitive. There are workable models that would function more like liquidated damages in contracts. The functions of augmented damages, including incentives to bring suit, could be adequately performed by enhanced damages for abusive positions (doubling) and attorneys’ fees. Fees should be more likely for small creators and less likely for deep pocketed plaintiffs.

About Face: Deepfakes and the Misuse of Copyright Madhavi Sunder

Denmark is granting © in a person’s face to combat deepfakes. Incentives/progress/access aren’t just buzzwords but the raison d’etre of our law. But roughly a decade ago, things began changing, not just b/c of AI: using © as a tool to redress noneconomic social harm: safety, protection, dignity, reputation.

Denmark goes beyond using © to serve non © ends/do an end run around 230, as past proposals in the US have done (thanks for the shout-out) to expanding the scope of © beyond what it should cover.

Denmark’s amendment covers life of the author+50 years and protects all natural persons against digitally generated images of personal characteristics. Limitations for caricature, satire, parody, criticism of power, social criticism, etc. But this would cover foreign nationals as well. Includes a takedown right. Drafters suggest that the new right is not really copyright but personality right, and the law should be changed to be officially called the “Copyright, etc. Act.” [It’s ©, Jim, but not as we know it!] Attribution and integrity for authors is not the goal; broad dignity harms to individuals, society, and democracy.

EU is considering whether to adopt a similar proposal. US may be heading in a similar direction—Jennifer Rothman identifies convergence between ROP and ©. Digital replica report by Copyright Office suggests new laws are needed.

Faces and voices aren’t authored in the way © has traditionally required; we allow soundalikes. However, some people (Balganesh, Gilden) suggest that © has always had concerns with dignity. Likewise, the Court allowed photographers to own © in depictions of faces. This tension raises charges of unfairness, as in Moore v. University of California. Descendants of enslaved people can’t claim ownership of daguerrotypes of their ancestors; Prince, who decried ownership of his name and music, becomes the subject of a photographer’s © claim at the Supreme Court. Surveillance: your face belongs to us. The issue about face is not whether property, but whose property.

IP and blackface: Jim Crow was a minstrel character—“love and theft” of black dances and bodies—loved and despised, coveted and expropriated. Elvis painstakingly listened to recordings of Black artists on repeat so he could copy them, and Tennessee then called its voice ROP law the ELVIS Act—irony! Digital replicas are the next frontier. Abba has created a concert featuring digital replicas of their younger selves; they sang and danced in motion capture suits with monitors and cameras everywhere. This show will last as long as people will pay to see it.

Sunder’s about-face: She criticized the goal of efficiency in © and argued for considering other interests like semiotic democracy. Is this the same thing? No. © can’t be everything everywhere all at once. Doctrinal coherence matters. Doctrinal collapse b/t © and privacy has structural harms including threats to the rule of law. © is too consequential and long-lasting and easy-to-get to be careless about; statutory damages and notice and takedown are big deals.

© is about authors, whether you’re a high protectionist or low protectionist. In an age where we’re all curated online, we should have a low threshold for protection, but not create mutant copyrights far from the real thing.

Cathy Gellis: Implications for national treatment?

A: will think about it—interested in whether we’re replicating it for ourselves.

Lemley: is the right alienable in Denmark? © as a regime is usually about being able to sell rights.

A: all premised on consent.

Quasi-copyright and the Copyright Act, Rebecca Tushnet

My focus here is on 1201 and 1202. My argument is that their evolution in the courts shows something about the workings of the legal system and the incentives of both plaintiffs and judges.

As most of you know, 1201 prohibited circumvention of access controls and trafficking in technology that circumvented rights controls or access controls, with a variety of statutory exceptions that are essentially too complicated to be used, and a provision for allowing additional temporary exceptions after Copyright Office rulemaking, but only for the direct access control circumvention provisions not for the trafficking provisions, so you have to both have an exemption and somehow get the technical capacity to use the exemption which is illegal for someone to give you.

Tony Reese wrote a great article explaining the benefit to the copyright owner of characterizing a technological protection as an access control rather than a rights control – no individual circumvention is allowed in the absence of an exception– thus in every case, copyright owners plead that a TPM is an access control, and courts have uniformly accepted this characterization—so this supposed four part scheme of access and rights controls, direct circumvention and trafficking, quickly became a two part scheme involving only access controls. Rights controls immediately lapsed into desuetude.

Because of how broad 1201’s access control provision was it initially seemed to offer copyright owners broad new rights. This was especially important for manufacturers of machines that happened to have software in them—providing compatible products, for example, could be reframed as violating access controls. However, in two prominent decisions courts—using interpretive methodologies that would probably not be adopted today—interpreted 1201 to try to prevent its use to control markets that aren’t really based on the value of the copyrighted works; the major cases are perhaps tenuously based in the statutory language but they probably do track what Congress thought it was doing.

These two decisions, Chamberlain and Lexmark, dampened the appetite among many non-copyright-reliant manufacturers to use 1201 to try to control repair and resale. There’s a real case to be made that 1201 has importance for phones and apps, but it’s no longer a big part of copyright litigation.

In addition, the rulemaking process proved so exhausting that the Copyright Office decided to streamline it for existing exemptions. And because the trafficking provisions only cover traffickers, not customers of traffickers, people with exemptions use circumvention software they got from elsewhere and we all just generally ignore the issue in the exemption process. I would suggest that, at least for the time being, we’re no longer in a legal innovation phase with 1201.

Meanwhile, 1202 litigation has exploded. 1202 covers knowing removal of copyright management information that facilitates infringement or provision of false CMI, and although there were always a few cases about it, it has been discovered in the last decade—as causes of action sometimes are because lawyers are innovative—and gained new prominence in cases like the AI training cases. 1202 doesn’t require registration in order to get statutory damages and so questions about what constitutes removal of CMI or the relevant intent are actively being litigated. Pam Samuelson and her coauthors have written a good article about the arguments, but I just want to point out that lawyers have done exactly what they’re good at: pushing the boundaries of the law in order to achieve interests for their clients even when the more obvious claim—like copyright infringement—won’t work for copyright-specific reasons.

Given this increased use, it’s not surprising that we see countervailing theories attempting to limit the growth of 1202 cases. One court even recently dismissed a lawsuit brought under 1202(b)(1) against ChatGPT on Article III standing grounds—under the TransUnion case, 1202 can’t constitutionally authorize a private cause of action for internal CMI removal that goes no further—plaintiffs didn’t allege any actual harm beyond the removal of CMI in the training dataset, so they didn’t have standing to seek damages, and they didn’t plausibly allege that a substantial amount of their creative expression would appear in future results, so they didn’t have standing to seek injunctive relief.

I have some broader thoughts about this incredibly abbreviated account, based on Carol Rose’s classic article, Crystals and Mud in Property Law: Fools and scoundrels are the bane of the law because they make it unpalatable to follow the most natural understanding of a clear rule. Hard edged rules written into law—like the prohibition on circumventing access controls—predictably lead scoundrels to abuse their fellow citizens, as in Lexmark and Chamberlain, and subjects fools to disproportionate liability, especially where statutory damages are involved. Courts then understandably push back, inventing equitable limits and turning a clear rule into something more muddy. But muddy rules are expensive to navigate and create their own set of problems.

In Carol Rose’s story about real property law, legislatures eventually intervene to create a new and different clear rule designed to solve the problems created by existing fools and scoundrels under the previous regime. This works for a while and then the infinite creativity of humans, both good and bad, produces new fools and new scoundrels.

I think Rose’s story has key lessons for copyright. (1) Future proofing is something of a myth. It’s worth trying, because immediate obsolescence when a few facts about the market change is not good—I’m looking at you, vessel boat hull and mask works protection and 512(b)—but the idea that you can set and forget a law ignores the fact that lawyers and judges are human beings—at least for now—and human beings are collectively really good at finding ambiguity or opportunities for arbitrage.

(2) If we face a situation where we don’t trust that the legislature will intervene, or can intervene productively, then things get a lot harder. When that’s combined with a judicial approach to statutes that focuses on the dictionary meaning of specific words rather than an appreciation for the structure of the legislation and the context in which the legislature was operating, scoundrels are likely to prosper and fools are likely to be abandoned to their fates. I don’t have solutions but I am predicting a long roll in the mud.

Lots of interesting comments; I think both the legislative process (actual deliberation) and judicial concepts of the role (neither entirely free to disregard the statute in favor of the common law/equity nor laser focused on individual words in isolation from the structure and purpose of the law as a whole) need change from where they are.

Tony Reese pointed out that the Copyright Office testified in the legislative history that many things were "clear" but didn't need to be in the statute--should we revise to make those things explicit? I think the issue w/that is the fools/scoundrels problem--one reason you might not write out the exact wording is that you can't foresee what will happen when clever lawyers get their hands on it directly and treat a principle as a rule. This is a classic content moderation problem! 

WIPIP, BU Panel 1: Trademark Theory and Practice

Trademarks, Functionality, and Competition (Glynn Lunney)         

Came in late; 3d Circuit is not a good circuit for trade dress (11.8% success for claimants, almost always on functionality (71% of wins)). 5^th Circuit at the other end—50% success, functionality only successful as a defense 20% of the time.      

Functionality is a trump card, not a balancing test. Problem: Inwood test is dicta; the real problem the Court saw was failure to defer to dct on factual finding, but the dct applied the standard “is the feature an important ingredient in the commercial success of the product?” and that’s the Pagliero standard. And dct should only get deference if it didn’t make an error of law. Functionality is for non-branding purposes. Morton-Norwich isn’t beneficial to consumers; we need more attention to whether there is competition and less to whether it is “fair” by avoiding copying of attractive features/role of incentive to create design should be irrelevant.

Err on the side of functionality; just b/c some trade dress may be nonfunctional doesn’t mean we should analogize from Coca Cola bottle to trade dress generally. 5^th Circuit wrongly reverses the hierarchy of the Lanham Act.

Beebe: why not go further and adopt Easterbrook’s approach: if it does anything other than indicate source then no protection?

Lunney: if there’s only one consumer who wants it for its shape alone, that’s a little troubling—average/reasonable/ordinary consumer is a standard construct.

Tertiary Meaning (Sari Mazzurco)                

Concept: Distinctiveness that is cultural and especially indigenous that should trump TM distinctiveness. Genericness/secondary meaning both ask about what the primary meaning is: the producer or the product. Failure to function doesn’t have a uniform test but PTO does ask whether something serves only as an expression of a concept/sentiment and is widely used by third parties so it wouldn’t be perceived as a source indicator for the goods concerned.

Each test applies awkwardly to symbols that are significant to cultural groups. Imagine that Hermes began using a traditional pattern from kente cloth on its bags. Kente cloth is used in rituals, has spiritual/cosmological significance. Hermes could use the coercive power of the state to try to bar those uses even if the third parties are using the pattern in a manner consistent with its cultural purpose. Relevant public for genericness and secondary meaning is likely consumers; F2F looks for wide use by third parties. West Africans likely wouldn’t represent a big enough percentage of those groups.

Meaning-making is a social practice, always emergent and conceptual, rarely universal, never subject to exclusive control—always negotiated and contested, with power dynamics at play. Source distinctive meaning can vary across time and contexts. But people might not silo meaning across groups. And people might fight over meaning in TM context: Matal v. Tam. Groups have asymmetric power—dominant groups have more ways to establish their preferred meaning. Ability to leverage coercive power of state helps. If Hermes wants to establish secondary meaning for a kente pattern, it has many tools to do that, including TM’s privileging of source-identifying meaning.

Conclusions: include cultural groups in relevant public for genericness/secondary meaning; consider cultural meaning in F2F determinations; cultural groups should receive priority even when a third party is first to “use” the mark in concept; recognize that noncommercial uses by cultural groups are outside the scope of trademark law.

Felicia Caponigri: how does the cultural meaning of Hermes bear on this?

RT: (1) Adapt doctrine of foreign equivalents analog: can use for 240,000 people in the US!

(2) Cost-benefit analysis underlies the DFE and other TM doctrines: you consider the interests of the smaller group more significant if they’d lose something significant like a coherent existing meaning and the rest of the public has no particular need for the symbol. Fire cider genericness case; otokoyama for sake; bond-OST for cheese.

(3) Noncommerciality mess: selling kente cloth for cultural uses would not be noncommercial; Hermes would not target the wearers in the US, but the sellers/importers.

21st Century Trademark Surveys (Rebecca Tushnet)

Surveys are a mess; routinely criticized as missing the point and also dispositive in some key cases especially involving free speech issues. Budweiser Oily, JDI.

Repetition of questions: source, business affiliation, again and again—prompting respondents to answer positively.

One survey asked three times what people thought of aluminum as an antacid ingredient until the third question yielded 45% of people who thought that aluminum was bad for them. The court gave the survey little weight. Johnson & Johnson-Merck Consumer Pharms. Co. v. SmithKline Beecham Corp., 960 F.2d 294 (2d Cir. 1992).

Compare L & F Prods. v. Procter & Gamble Co., 845 F. Supp. 984, 996 (S.D.N.Y.1994) (repeating questions “also serves the purpose of clarifying otherwise-ambiguous first responses by probing the implications of previous answers”), aff’d, 45 F.3d 709 (2d Cir.1995), with Am. Home Prods. Corp. v. Procter & Gamble Co., 871 F. Supp. 739, 748 (D.N.J.1994) (excessive probing undermined credibility of survey evaluating arguably implicit messages).

Lack of definition: asking why do you say that is not the same thing as what do you think affiliation means

Lack of clarity about what the statute means: statute uses affiliation to mean two different things in the same section
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association: here, association is something that can be either true or false, thus confusing or nonconfusing

(c) association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark—here, association refers to mental processes and the association is not false; the consumer really does think about Nike when seeing Nikepal 

Ideas: training module; don’t repeat but have choose as many as apply; include an option “this is about the trademark owner” –other thoughts?

Jake Linford: pilot study on tarnishment: we did for a screener try to define tarnishment—lost 1/3 of respondents. We had tried to define it on our own terms—why not use the statute? Part of the work is defining the term.

Lisa Ramsey: Informational uses of TMs/comparative advertising. Expressive: parody, satire. Decorative: colors, shapes. Does this use provide information? [not sure that’s as helpful b/c courts don’t care, they just care about the confused subset]

Laura Heymann: should the survey question think about the harm at the heart of this: when we ask these questions are we trying to figure out solely what consumers think or what they do? [again, minimum change principle, though I appreciate the larger project of course—but consumers are really bad at telling you what affects their behavior so materiality might not be best assessed in a confusion survey]

Lunney: how much do you think controls help? [not much b/c of tendency to elaborate]

Is Teflon really any good?

Caponigri: context of surveys—Instagram might differ.

Stacey Dogan: depends on what affiliation confusion is.

RT: I think this is much easier than you might think. Affiliation specifically is a term of art across many statutes. I don’t love Chief Justice Webster, but we’re in a period where he’s very influential.

Education, Wealth, and Weird Trademark Surveys (Jake Linford with Justin Sevier)             

In the US, and perhaps systematically among scholarly studies, our studies are WEIRD (Western, Educated, Industrialized, Rich, and Democratic). We are undersampling low-education and low-income consumers and not sufficiently correcting for the undersampling. Most surveys don’t even report education or wealth.

Hypothesis: lower education consumers are more likely to be confused. But it might matter either way. In our study of tarnishment, there is directionally a burnishment effect but the sample size is so small as to create a lot of noise.

A null effect is also potentially interesting.

Is wealth as important as education? May be easier to measure one thing than two. Eventually will look at litigated surveys.

[RT: WEIRD usually describes the population: this is implicit in your not challenging whether we’re oversampling Westerners, industrialized, democratic (though political orientation might be increasingly important). Linford: yes, but we are undersampling education/wealth.

Compare surveys among educated consumers: doctors/pharmacists? Luxury goods]

Caponigri: we need the relevant population

Roberts: correcting for those things might be wrong depending on the product

Q: Does dilution have a corollary with considering sophisticated consumers? Or is a dilution survey different in who it should target?

Trade dress protection study: Higher education: the more likely you are to prioritize competition; lower education: more likely to prioritize protecting status.

Heymann: is that a function of the survey format v. actual behavior in the market—the survey context/this is a test that I have to get right/this is like an educational experience? Less experienced with the environment the survey is creating.

A: a fair question, but don’t want to presume.

Lunney: how much do surveys really matter? Judges like them if they agree w/judges’ preconceived outcomes.

A: sure. We have been making claims as we run surveys that they might tell us something about how TM law is or isn’t working; if none of us are asking the right people, then we have to change our claims.

Conspicuous Consumers, NYU Engelberg Center

Welcome and Keynote: Nancy Mahon, SVP, Global Corporate Citizenship & Sustainability, The Estée Lauder Companies

Interesting talk; I learned that UK consumers respond well to claims that a product decreases the company’s carbon footprint, but US consumers aren’t interested in that and want to know about the effect on their own carbon footprint.

Sustainability in the Eye of the Beholder

Rochelle Dreyfuss, Engelberg Center on Innovation Law & Policy, NYU School of Law (moderator)

Anna Tischner, Jagiellonian University in Krakow: European TM law can override sustainability despite EU’s attempted commitment to carbon neutrality. Hermes won a case against an atelier that incorporated scarves into new clothes. But her research shows consumers understand that refurbished etc. goods have qualities not reflecting on the TM owner. Need more space for this. British case didn’t allow refurbishment to convert devices to electric, but only b/c the advertising was confusing—which is correctable, and thus perhaps a positive sign.

Maggie Chon, Seattle University School of Law: Discussed certification marks as ways to build consumer trust/purchase interest. Issues: standards represented by certification mark can be opaque; hard to figure out what they really require. Also, certifications can compete and have different standards—consumers aren’t equipped to figure out which “fair trade” marks are more stringent or less stringent.

Jessica Silbey, Boston University School of Law: Project w/Mark McKenna on interviews with designers: insist on design as a process, not an outcome; they want to unify form and function; and they consider themselves human-focused, oriented to solving problems. In the sustainability context, they want to act as moral entrepreneurs. Coherence, minimalism, sustainability, accessibility, and inclusivity are goals—coherence and minimalism seem aesthetic but they’re also about avoiding material waste. The last three are considerations they think necessary for good designs/progress: the ability for everyone to use the design. E.g., designing for an insulin pen that will actually be used (many people don’t take their meds). OXO dustpan designed to be used by all kinds of hands.

Aaron Perzanowski, University of Michigan Law School: Right to repair and sustainability—appliances, electronics, vehicles need fixing; can that be done outside authorized channels? Firms have strong incentives to assert control over repair process, which can be incredibly lucrative. Fixing cracked phone screens is $3 billion/year in US alone. Expensive repairs also drive new device purchases. 150 million mobile phones are discarded per year; 60 million metric tons of e-waste a year. About 70% of toxic waste in US landfills is e-waste. DMCA as a big problem; 1201 exemptions allow repair of, e.g., tractors, but no one is allowed to distribute a tool to others to do this, so farmers better be good programmers.

Patent law can also be an issue, as can individual component parts covered by utility or design patents, giving power over price and availability. Especially problematic given incredibly low standards for design patent—big uptick in auto parts as well as home appliances. Fed Cir did away with longstanding test for obviousness of design patents in GM v. LKQ; what that means in long term is not yet clear but could mean fewer low value design patents. Trade secrets are also an issue, but claimants can’t usually defend them—the info is generally ascertainable through simple reverse engineering. We don’t need to respect your wishes not to disclose info just b/c you’d make more money if you kept it to yourself.

TM too (already covered by other speakers). Biggest problem here is importation—exhaustion. But TM law prevents “material differences” and courts are much too eager to find such differences—a difference in warranty; existence of phone support (even for ball bearings). Nominative fair use does a good job in its lane, though.

So far we’ve passed right to repair laws covering 100 million people in US, including in California. Also worked on National Defense Authorization Act to get right to repair requirements in any purchase DoD makes.

Tischner: EU design law has a repair clause for spare parts. This allows independent manufacturers to make & sell parts that reproduce a protected design as long as it’s genuinely for repair. The real tension comes from TM law, not design law—the design law exception doesn’t apply horizontally across IP, so companies use TM to block repair and control markets. Surveyed professionals: saw logo on repair part as description of part, not indication of origin. TM law is also normative, but results of our and similar empirical studies should inform TM policy.

Q: do designers think about repair?

Silbey: They think about durability.

Perzanowski: there’s a tradeoff b/t durability and repairability, which we need to recognize and educate about. Sometimes the market recognizes this, as for cars. Not so much whether it’s designed for repair but who gets to do the repair there. Consider relatively direct regulatory intervention in design: mandating user-replaceable batteries on consumer electronics, for example. If Apple was required by law to make a swappable battery, it would probably do a really good job, but it won’t if it’s not forced to; we’ve already seen this work with USB-C.

The Consumer Scientist

Chris Morten, Engelberg Center on Innovation Law & Policy, NYU School of Law (moderator)

Fran Visco, National Breast Cancer Coalition: created a science education program for patient advocates: how to analyze clinical trials, interpret statistical information, understand the cell cycle—important for determining endpoints.

Hilary Koch, Advocate for people living with diabetes: continuous glucose monitors existed, but couldn’t be monitored remotely—advocates like Koch created an open source solution for this. Likewise, devices didn’t talk to each other; created open solution for that. Able to sleep through the night for the first time in 10 years! Huge improvement in diabetes management. Non-FDA approved device was better than anything on the market b/c patients came together to make it themselves. Everyone had to make it themselves (adding software to FDA-approved devices) to avoid FDA [and 1201?]. But someone was available to provide advice 24/7. Now there’s an FDA approved device to talk to other devices, and one reason is b/c of the earlier patient-based devices. Non-approved devices are also still out there and ahead of the FDA-approved devices thanks to patient scientists.

She also had a really interesting discussion of how each patient’s experience is different and they’re experts on their own experiences and need more control: women want information on how their menstrual cycles affect them and want to be able to press a button on their device to flag this; many hospitals don’t allow insulin pumps, but today’s insulin pumps take care of everything and this rule makes diabetics terrified to go into hospitals for other issues.

Steve Woloshin, Dartmouth Geisel School of Medicine: patients are often underrepresented in product design, testing, and regulatory approval. Communication with patients to understand what the products (tests, devices, drugs) do and how to use them is vital but it’s often an afterthought. DTC ads: oversight is spotty and they aren’t required to tell you how effective they are. Covid home test kits example: Although they did test the instructions, which was good, they didn’t test whether people understood what results they were getting—have to use Bayes’ law to understand the chance that you’re infected, given a positive or negative test result. It’s easy to get wrong and the instructions didn’t explain it at all. Empirical tests showed that 33% of people in a high risk group (symptoms, exposed to someone with determined covid) would not understand the risks of a negative result. Were able to reduce that to 14% with revised instructions, and to decrease unnecessary quarantine decisions. An untested communication can be as dangerous as an untested drug.

DTC ads: Billions of dollars spent on them; people see 9 drug ads/day. But they overstate benefits/downplay harms/overstate certainties. There’s a lot of opportunity to make ads better but the system is reactive/slow. FDA announced that it will revisit DTC ads. Dozens of warning letters about ads, largely b/c visual messages were allegedly misleading (take this drug and you’ll be able to climb mountains). Good start, but tip of iceberg. Basic problem: ads fail to tell consumers how well the drug works. Often unclear what outcomes the drug treats, or even conditions. Quantify the outcome! Same for common serious harms.

Current regs say you have to discuss benefit, but benefit just means indication under current rules—so if you say “decreases cholesterol” you’re done. But does that affect your chance of having a heart attack? Does it cut it in half from 2% to 1%? Something else? Nothing in current regs about quantifying benefits or harms; nothing about pretesting ads for accurate communication. Should have a drug facts box like a nutrition facts box.

Charles Duan, American University Washington College of Law: standard IP incentive theories don’t explain open source innovations here, which involve huge amounts of effort donated to the community. People who change their diets to improve their health are also experimenting on themselves—self-motivation is very important. Need to think about how to regulate open source devices, where there isn’t a wealthy drug company behind them.

IP Rights as a Signal to Consumers

Jeanne Fromer, Engelberg Center on Innovation Law & Policy, NYU School of Law (moderator)

Chris Cotropia, University of Richmond School of Law: Do patent claims matter to consumers? No, not really. There’s a false marking provision in patent law that seems to think that they might. Patent is more about communication between competitors/producers, less about consumers. Patent’s justification: Incentive for invention, and for commercialization. Get the new, useful, nonobvious thing created and produced. But can communicating to consumer create a direct feedback effect?

Notice statute: can’t get patent damages unless infringer has notice. Can be actual, or constructive by marking the patented product. The audience is not the consumer, but competitors. False marking statute, though, has consumers in mind—can’t mark product as patented or patent pending if that’s not true; initially empowered qui tam actions. Theory was a consumer oriented theory—that there was potential harm to the consumer. Lots of people engaged in false marking b/c they had, e.g., plastic molds; the patent would expire and they’d keep using the molds. Entrepreneurial lawyers started suing; then AIA changed the law to require competitive harm from the false marking. So, what information are consumers getting from the patent marking?

Study by Alexander Billy & Neel Sukhatme: convinced drugstores to let them enhance marking on actually patented products in some drugstores and not others; they found essentially a perfect null effect. Tried again on Mechanical Turk with vignettes and found the same null effect. Do find that “patented” label leads survey respondents to think that the product was more innovative; didn’t translate into willingness to buy. Another study, Gavin Milczarek-Desai & Derek E. Bambauer: showed ads, some said patented, patented pending, Consumer Reports supports, or nothing, and found no variation, but “patent pending” may have a slight effect on reported willingness to buy. His own study: crowdfunding campaigns. Found same (lack of) effect. Patent label didn’t change success right, but “patent pending” had higher success rate. In lab, people are 2x as likely to invest in a project that says “patent pending” as opposed to “patented” or nothing. Consumers are just looking at the products and deciding if they want to buy. Why might “patent pending” be different? Might seem even more innovative—haven’t even had time to get a patent yet! But we don’t know.

Jacob Noti-Victor, Cardozo Law: Copyright side—copyrights are also not strong signals to consumers. There may be a theory that the © next to a work confers legitimacy, but hasn’t seen empirical studies. Maybe video game industry achieved some legitimacy by using ©? But we do know that consumers don’t know what © means when they see it.

©’s human authorship requirement and effects of AI: enabled or even manufactured consumer-facing signals of things consumers do care about, such as authenticity. There’s no authorship for computer generated works as such—long tradition of not recognizing nonhuman authorship. Trickier when there’s a human and an AI system. Human prompting isn’t sufficient for human authorship, CO says, even with detailed prompt engineering/iterative prompting. Office based this on a reading of the law and the mechanics of the technology—there’s too attenuated a connection b/t the prompt and the final output; the prompter can’t predict or conceptualize the expressive output—there’s no requisite causation/connection b/t idea and expression. Like Chapman Kelly garden case where 7^th Circuit says a garden is too unpredictable to be ©able. But there can be protection for human selection, coordination, and arrangement of AI products—curatorial decisions around AI content, not AI content itself; will be thin copyright.

Office’s choices here are coextensive with consumer preferences for process: preferences tied to the means of production and not solely to the output. Fair trade coffee. Consumers are more likely to want to buy non-AI work; this isn’t just squeamishness but ethical priorities and desire for authenticity that affects consumer decisionmaking especially in aesthetic contexts. Authenticity can have dark sides, but it’s also a way to acknowledge the social role of art and its role in moral identity/self-identification.

Office requires disclaimers of AI generated material. Registration potentially provides info to consumers. Could be a good record, assuming copyright claimants are telling the truth. But more can be done.

Mark McKenna, UCLA School of Law: Most obvious way IP rights might signal to consumers is by being a marketing tool: claimant advertises it has an IP right to show the product is meritorious or unique compared to other products, and that might work even w/o a clear idea of the content of the right. The patent evidence is interesting; maybe there’s an analogy here to how some colleges publicize percentage of faculty w/terminal degrees and others don’t feel the need to do so; maybe at the top end, producers assume you know they’re innovative (Apple) and don’t prioritize patents.

GIs: could also publicize the characteristic of a good as being (supposedly) geographically  unique.

What about feedback loops where existence of rights feeds back into scope of rights? TM: b/c those rights depend on consumer understanding, but consumer understanding can be shaped by their beliefs about what law allows/requires. The existence of rights depends on consumer understanding, b/c it determines whether there’s been trademark use, or secondary meaning to make it a TM; the scope of rights depends on consumers’ beliefs about what others are allowed to do. The rules on secondary meaning give a lot of weight by actions taken by putative owner to claim the existence of rights: creates incentives to publicize claims—the nature of putative mark’s presence in ads matters a lot. Matters even more when the claimed matter is complex; courts will often condition protection on “look for” advertising—to call it out from the background noise.

Claims of rights in relation to certain kinds of uses of TM can also shape consumer understandings in ways that turn out to affect legal scope. This is true at the retail level—particular uses of a particular mark, like NFL’s assertion of extremely broad rights in “Super Bowl” TM. Threatens bars, churches, community organizations that advertise they’ll (legally) show the Super Bowl. Even if there’s no suggestion of sponsorship other than the use of “Super Bowl.” These are paradigmatic nominative fair uses and shouldn’t be w/in the scope of the NFL’s rights, but the NFL has been unbelievably successful with these threats, so most references are to “the Big Game,” which itself is both cause and effect of consumer beliefs. But by the same logic, NFL can claim rights in “the Big Game.”

This effect can also work at the wholesale level—entire categories of uses like merchandising—50 years ago no one thought universities had the sole right to use university marks on T-shirts. Madison, like every other college town, was full of T-shirts featuring UW marks, some of which predated UW’s own use on t-shirts. But a major campaign branded these as counterfeits; leveraged relationship with university bookstores to control major apparel companies. Strategy seems to have worked; many people now believe the law requires university permission even though no one thinks the university is responsible for the quality of the t-shirts. PTO even made up the “secondary source” rule: use on the front of a T-shirt functions as a mark if the mark is known in some other setting. Created ©-like rights in anything related to them, justified by reference to the consumer understanding they’ve created. Can also be used for, e.g., mid-century modern design—association of design w/designer can be leveraged into “source” claims for the actual furniture.

Consumer understanding can be shaped, and some claimants are well situated to do so and have strong incentives to do it; but we shouldn’t hand over the game to claimants.

Rebecca Tushnet, Harvard Law School

I decided to frame my part of this panel as “can claims of IP rights mislead consumers in a way that triggers general advertising law?” I’m going to start with two requirements of false advertising law that don’t generally apply to IP rights. First, federal false advertising law targets only false or misleading statements in “commercial advertising or promotion.” This is probably not a big barrier for the kinds of claims at issue here, but it’s worth keeping in mind: use instructions, as discussed in the previous panel, might not be advertising (though it likely depends on the product). Second, materiality: to be actionable, a false or misleading statement has to be the kind of statement that is likely to affect consumers’ decisions, as opposed to TM law, which doesn’t require materiality for infringement.

As we already heard, materiality is often a problem in litigating alleged IP-related falsehoods, including false patent marking – most of the time, consumers don’t really care about patent rights. In addition, a Supreme Court case, Dastar v. Twentieth Century Fox, limited the scope of the federal Lanham Act in a way that turns out to be relevant to IP-related signals. That case interpreted the language barring any "false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion ... as to the origin ... of  goods" to mean only references to physical origin, rather than the source of ideas or expressions embodied in a product.

Lower courts have subsequently held that Dastar limits the scope of federal false advertising law b/c representations about IP rights aren’t representations about physical origin; thus, falsely stating or implying that your music is properly licensed does not constitute a false representation covered by the act. Courts also interpret many state consumer protection laws to be coextensive w/the Lanham Act, though it’s possible to argue that some are broader. There is also a limiting case where the representations are not just about IP rights but also state or imply facts about the physical product: Crocs, Inc. v. Effervescent, Inc., No. 2022-2160 (Fed. Cir. Oct. 3, 2024).

Crocs sued competitors for patent infringement; defendant Dawgs counterclaimed for false advertising about the characteristics of the primary material Crocs uses to make its footwear products, a material it promoted as the “patented,” “proprietary,” and “exclusive” “Croslite.” But “authorship, like licensing status, is not a nature, characteristic, or quality, as those terms are used in Section 43(a)(1)(B) of the Lanham Act.” By contrast, “here, the false claim that a product is patented does not stand alone. Dawgs presents allegations and evidence that the falsity of Crocs’ promotional statements is rooted in the nature, characteristics, or qualities of Crocs’ products.” So the question will generally be whether the statement about IP rights conveys a factual claim about the more tangible characteristics of the good (or service) at issue.

Finally, I want to introduce as an additional framing point that law, including product liability law, often doesn’t require TM licensors to take responsibility for their products even when consumers might expect that and even when the TM probably drove the sales—arguably false advertising should not accept this result. Example: Troncoso v. TGI Friday’s Inc., 2020 WL 3051020 (S.D.N.Y. Jun. 8, 2020)

Troncoso purchased a bag of snack chips labeled “TGI Fridays Potato Skins Snacks,” mistakenly believing the chips to contain real potato skins given that the restaurant chain TGI Fridays sells a Potato Skins appetizer that includes the flesh and peel of the potato. But, even though the TGIF branding is probably what led consumers to have a lot of their expectations about the product, and even though the court found that the product was plausibly deceptive, the trademark owner was off the hook. The court said: “TGIF may be liable for that misleading labeling under GBL §§ 349 and 350 and principles of common-law fraud only if it engaged in making the misleading labeling.” The allegation of licensing “does not suggest that TGIF was involved in any aspects of the labeling beyond its own trademark, which Plaintiff does not allege is misleading”

It’s an example of IP rights—the right to license the mark to others—as false signals. I’ll end with a potentially contrasting case: Puma v. Wal-Mart Stores East, LP, No. A-1-CA-38023, 2022 WL 3221810, -- P.3d – (N.M. Ct. App. Aug. 9, 2022) The Pumas alleged that defendants violated the New Mexico Unfair Practices Act based on their purchase of a Black & Decker-branded coffeemaker.

Based on Black & Decker’s reputation, the Pumas thought the coffeemaker would be better than the lower-priced store brand and paid more for it as a result. However, Black & Decker did not in fact design, manufacture, distribute, or warrant the coffeemaker. The district court, after a bench trial, found that defendants’ conduct constituted an “unfair or deceptive trade practice.”

Thus, the presence of the trademark plus the absence of any disclosure on the product or the advertising could deceive reasonable consumers about either (1) the relationship between Black & Decker and Applica; or (2) that the product was in fact a product of Applica, rather than of Black & Decker. The court pointed out that the name, “Black & Decker 12 Cup Programmable Coffeemaker” “emphasized that the ‘Black & Decker’ name was an important characteristic of the Coffeemaker; these statements tended to deceive a reasonable consumer, and Defendants knew or should have known that potential purchasers of the Coffeemaker would likely regard information about the Coffeemaker being a Black & Decker product as material.”

The court emphasized that it was not holding “that the use of a trademark by a licensee pursuant to a trademark licensing agreement by itself constitutes an unfair or deceptive trade practice,” or that individual or widespread licensing was “per se irrelevant” to the inquiry. Nor was evidence of the quality of the licensed product “per se irrelevant.” Rather, the court of appeals was simply holding that the Lanham Act did not govern the UPA claim, “and that, under the circumstances of this case, Defendants’ knowing and willful use of ambiguity as to material fact, which tended to deceive a reasonable consumer, constituted an unfair or deceptive trade practice.” I tend to believe we’d be better off if we held TM owners more clearly to their bargain—when they license in order to make a product more attractive, we should recognize that the TM is helping to sell the licensed product and thus hold them jointly liable for quality.

IPSC: Closing plenary: DOGE; the First Amendment (me!); and the 50th anniversary of the Copyright Act

David Schwartz (Northwestern Pritzker School of Law), Christopher Cotropia (The George Washington University Law School), DOGE Days at the USPTO? Evidence from a Natural Experiment in Administrative Reform

PTO provides some employees w/union protections and others not. As soon as DOGE hits, nonunion staff productivity goes way down, while examiner productivity remains constant. Admin has acknowledged patent examiner union; did not try to enforce return to office mandate.

Staff makes sure drawing is sufficient and application has all necessary parts. There’s a lot of activity; staff does more than examiners—total nearly 53% of events while applicants represent about 30% (necessary activity before next step is triggered for someone else), and examiners do the rest. There’s a strong correlation b/t how busy examiners are and how busy staff is. Relatively parallel trends.

But after DOGE, activity dropped—not because people were fired/left although examiners dropped by 1% and staff dropped by 5%; result holds even normalized by employee—a 40% drop in productivity for staff and nothing significant for examiners.

What if threat of tariffs spooked applicant behavior? Checked for that; enormous PTO backlog makes unlikely, but maybe it could delay responses to OAs. Even when we sample to just account for things where applicant delay won’t matter, same results.

Implications: significant costs from admin reforms like DOGE. Abrupt intervention in administrative state that created a lot of uncertainty & ambiguity. Unappreciated benefit of benefits of unions/job security: unions are accused of resisting change. Will be studying longer term effects as well.

We didn’t look at quality, but we did look at whether they changed the mix of things they did (maybe initial responses are easier) but they didn’t.

Rebecca Tushnet (Harvard Law School) History and Tradition in First Amendment Intellectual Property Cases

I’m going to skip over as much IP doctrine as I can make myself ignore on the theory that most of you know at least some of Zacchini, Eldred, Golan, Jack Daniel’s, and Elster. I’m going to focus on trying to draw connections between the First Amendment IP cases and what we might expect from seeing history and tradition as a method expand to more of the First Amendment.

The news is not good. “History and tradition” as constitutional theory is originalism unconstrained by textualism. Unlike in the Second Amendment context, where the Court has reasoned from things earlier regulators didn’t do to strike down gun regulations today, in “history and tradition” First Amendment law the Court has reasoned by broad analogy to allow new speech restrictions.

This is not a result of politicization, even if the adoption of the method is politically driven because originalism wasn’t getting the right results. It is the result of the impossibility of using history and tradition without a theory of how to make good analogies from the past to the present. History and tradition thus does not meaningfully constrain Justices even in low-political-salience areas like copyright and trademark.

Most discussion of the risks of Bruen-izing the First Amendment has so far focused on the risks of reviving speech controls in their historical form such as blasphemy, obscenity, and unfettered defamation law. The IP story shows that it’s worse than that: it is fully possible to appeal to history and tradition to further expand control of speech beyond historic limits. At a bare minimum, the considerations present in other modes of free speech reasoning—the considerations involved in tailoring regulation to regulable harm—remain necessary even when consulting history and tradition.

As Richard Fallon noted, the strict scrutiny test “evolved simultaneously in a number of doctrinal areas” by the 1960s and quickly came to “dominat[e] numerous fields of constitutional law.”  Strict scrutiny as a standard means that the government must show that its actions were “narrowly tailored” to further a “compelling government interest,” and that they were the “least restrictive means” to further that interest. In First Amendment cases, it is usually strict in theory and fatal in fact.

Not too long ago, the Roberts Court seemed destined to use strict scrutiny liberally to invalidate many government speech regulations. The court struck down campaign finance laws, privacy laws, and anti-animal crush video laws, and in 2015, the Court announced that strict scrutiny would apply to all content-based regulations, including noncensorious regulations like those of a city trying to specify which signs can go where and for how long. But, the composition of the federal courts has changed, and the Supreme Court is clearly open to throwing out decades of precedent.

In the Second Amendment case Bruen v. New York, the Supreme Court held that only gun restrictions that met a stringent historical compatibility test would be allowed. But judges are rarely trained historians, and history tends not to speak in one voice. Reflecting some of the resulting problems, in a followup case, Rahimi, a majority of the Court reiterated that its test did not require a “historical twin,” but rather a “historical analogue.”

To understate matters, it is not yet clear what constitutes a sufficiently close analogy. One possibility is that the analogy is sufficiently close when the Court tells us it is. But that’s not law.

Any serious attempt to apply history and tradition as a legal standard has to grapple with the well-known challenges of analogical reasoning. And unfortunately the IP cases do not suggest that the Court will be able to do so.  The unifying factor in the First Amendment IP cases is their reliance on history and tradition to uphold a speech restriction whose contours had been substantially expanded from those known when the Constitution—or the Fourteenth Amendment—was adopted.

In the gun cases, the Court begins with the presumptive coverage of gun rights (the people have such rights, for self-defense) and then looks for whether history approves of the challenged limits on those rights. In the First Amendment IP cases, the Court does not begin with the presumptive coverage of “the freedom of speech,” but rather with the historical compatibility of intellectual property claims with free speech. This sets up the result: new IP rights are also fine.

In Zacchini, for example, the Supreme Court consistently characterized the conflict as one between the television station’s First Amendment rights to report news and the performer’s interest in his “entire act,” the latter of which was equivalent to a well-recognized common-law copyright claim.  Lower courts then immediately disregarded the Court’s analogy and started approving almost anything called “right of publicity.” But Common-law copyright in an entire performance is very different from controlling any mention or evocation of an identity. Bruen-type attention to the right of publicity’s different subject matter (what Justice Thomas called the “how” of regulation) and justifications (what he called the “why” of regulation) compared to copyright could have helped limit overreaching claims.

More recently, the Court used history and tradition to reject two First Amendment challenges to new copyright legislation. Rather than analyzing whether these changes were speech regulations subject to intermediate or strict scrutiny, the Supreme Court reasoned that term extension and creating federal copyrights where none had previously existed were both things Congress had done before, so no additional First Amendment analysis was required. 

As long as Congress acted within the “traditional contours” of copyright, the Court told us, its acts required no further scrutiny. But what are those traditional contours, since we know after Eldred and Golan that those contours don’t include “a work’s term of protection is the term specified when it was created” or “a work in the public domain stays in the public domain”? Copyright’s subject matter, covered rights, and scope of what constitutes infringement of a right have all expanded dramatically since the Founding. I should note that I don’t generally oppose these expansions; my argument is instead that the thing we call copyright is very different from what the Framers called copyright, so saying that their copyright was consistent with the freedom of speech doesn’t tell us an awful lot about our copyright without a theory of how to compare theirs to ours even if “the freedom of speech” remains constant.

The Court did identify fair use and the idea/expression distinction as key traditional contours of copyright. But Congress has passed laws that cut sharply back on fair use in the digital context. Lower courts both before and after Golan have said it’s constitutional to prohibit “circumvention” of digital access controls even if that makes many fair uses impossible. If your only guideline is “traditional contours” and there is a history of contracting freedom to use copyrighted works, then it’s difficult to tell when the traditional contours have been unconstitutionally reshaped.

Even more recently, trademark law has seen the same untethered use of history and tradition. In Jack Daniel’s, the court essentially reasoned that, because trademark law is historically grounded, source-identifying uses that cause deception must not be part of the speech historically protected by the First Amendment.

But there are even worse problems with the analogy to founding-era trademark than there are with analogizing to founding-era copyright, given the lack of a substantive federal registration system until the mid-20th century, the vast expansion of subject matter, and the vast expansion of what constitutes infringement, not to mention the invention of dilution.

Then, in Vidal v. Elster, most of the Justices appealed to history and tradition as supporting the names clause that bars registration of a living person’s name without their consent. But the cracks in history and tradition were finally noticeable even to them: Should the analysis be at the level of the purpose of having a trademark registration system? A registration system needs to make content based distinctions to function. Does that mean that any content-based regulation is ok? That would allow Congress to, for example, deny registration to any trademark that made reference to birth control or abortion. That’s a very broad analogy.

Justice Thomas’s opinion for the Court relied on the long tradition of providing unfair competition protection to names in tort lawsuits brought by the person whose name it is, as well as of allowing people to use their own names in commerce even when someone else has already used that name in a line of business. That is, “a tradition of restricting the trademarking of names has coexisted with the First Amendment … Though the particulars of the doctrine have shifted over time, the consistent through line is that a person generally had a claim only on his own name.”

This is mostly true, but unhelpful: First, the reference to “trademarking” a name is ahistorical because, historically, trademarks arose from use in commerce. “Trademark” wasn’t a verb. The registration system is not the same thing as allowing a private right of action for name confusion. This is a clear example of how the history and tradition approach expands judicial freedom—Justice Thomas didn’t even seem to notice that he was generalizing from individual private infringement suits to a government-run registration system that bars certain registrations even in the absence of private opposition.

Second, even if we accept the jump between private tort claims challenging specific uses and a statutory restriction on registration, that common-law history has an obvious link with Section 2(a), the prohibition on false association. Section 2(c) goes further—its only independent utility is when it applies to a mark that wouldn’t falsely suggest a connection. Barring registration of DEMOCRATS AGAINST ELON MUSK doesn’t seem like it’s going to facilitate source identification. This is especially true given the difference between registration and actual use: Even without a registration, Elster can (for now) sell his TRUMP TOO SMALL T-shirts, thus inflicting the same source- or reputation-affecting consequences on the world.

Bruen directed courts to consider whether new gun regulations were sufficiently analogous to past ones in the “how” and the “why” of their burden on a law-abiding citizen’s right to armed self-defense. By contrast, in Elster, Justice Thomas’s opinion ignored both the how of past regulations—through infringement claims—and the why—fraud prevention instead of protection for a free-floating interest in personality.

Justice Barrett’s concurrence was attentive to this gap. As she wrote: “[T]he Court’s evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause.” The ability to cherry-pick a few cases out of the historical record allows for a lot of manipulation, especially in a common-law nation where there is no such thing as an unbroken, consistent line of cases.

The majority approach has both a timing problem and a conceptual problem. For timing, why is the late-19th and early-20th century important when it was neither the Founding nor immediately around Reconstruction? Conceptually, Barrett wrote: “[T]he Court never explains why hunting for historical forebears on the restriction-by-restriction basis is the right way to analyze the constitutional question.”

A key issue is that the founding era had comparatively few laws and more reliance on judicially recognized causes of action than we do now. In common law adjudication, even when judges articulated general principles, they were applying them to particular facts, so limiting principles that weren’t presently relevant in the case before them were often omitted from discussion. Perhaps more importantly, the analogy between the historical caselaw and a statute would have to come from identifying the rule emerging from the caselaw and comparing it to the statute. And any grouping of cases to give a “rule” has to have an underlying theory of what unites these cases: a classic level of generality problem. “Historical cases were about protecting rights when names were used as source-identifiers” is one theory, but so is “historical cases were about protecting rights when names were used deceptively as source-identifiers,” which creates a different baseline.

History and tradition is probably going to play a bigger role in future First Amendment cases, as this year’s Paxton v. NetChoice decision upholding age verification requirements for certain websites signals.  In Paxton, the Court used a history of regulating minors’ access to obscene-for-minors speech to identify a legitimate state interest in identity verification legislation. But website age verification is unlike brick-and-mortar age verification because it can potentially be saved for government review or exposed to hackers (something that just happened with the identity verification for a women-only app, Tea and its male competitor TeaOnHer), and it is very expensive, as opposed to the very low marginal cost of checking IDs in a store staffed by humans.

The broader lesson is that a law’s overbreadth, underbreadth, and harms compared to the alternatives for achieving the government’s interests are necessary considerations, but ones not facially addressed by history and tradition. History simply doesn’t supply its own analytic framework, and “sufficiently close analogy” is not all that helpful.

The flabbiness of history currently works differently for different constitutional rights. Most of the work of the history and tradition test in Second Amendment law comes from what legislators didn’t do—they didn’t regulate guns in particular ways. In the First Amendment context, by contrast, courts have extrapolated from private rights courts and legislatures granted in the past to allow them to grant new and expanded private rights in the present for similar reasons. Anti-gun regulation judges can dismiss inconvenient past examples of gun regulation as misunderstandings. Pro-IP rights judges can seize on outlier cases, or simply use the general justifications for IP rights expressed in past cases and treat them in isolation from the countervailing considerations that formerly limited those rights.

The expansion of relevant evidence beyond text to any practice (or nonpractice) of legal regulation aids in the project of judicial freedom: In such a vast corpus, who could deny that there must be some errors and misunderstandings in there? At the same time, judges can dismiss inconvenient past limits on IP rights as matters of legislative grace, and can always find at least some expansive descriptions of the private interest at issue, which then justifies further expanding the scope of the right.

The manipulability of levels of generality in defining an interest grounded in history and tradition requires more legal tools than are currently on display—and those tools cannot be found in “the past.” They require interpretation and judgment.

Therefore, although the tiers of scrutiny may be shaky for various reasons, the concerns they implement will not go away. In the First Amendment, those animating concerns include: worry about government suppression of views it doesn’t like, whether by viewpoint-based laws or laws that in practice discriminate against particular viewpoints; related worry about government’s ability to identify when speech actually causes harm rather than just causing upset; not unrelated but separate concerns about overbreadth and underbreadth, where poor targeting of a regulation may reveal bad motives or just unwarranted discrimination against certain kinds of speakers when other speech causes the same harm but remains unregulated.

One useful question is whether a speech restriction matches well to the putative harm it addresses. If its harm-prevention claim relies on an extended causal chain that could be interrupted by other factors, or is unpersuasive as a justification for the law at issue because of the amount of harmful speech it leaves untouched or the amount of harmless speech it suppresses, then we should identify a constitutional problem.

That is, considerations of fit—usually considered as part of the second and third prongs of strict or intermediate scrutiny—cannot and should not disappear even if the “compelling government interest” and “substantial government interest” standards are replaced by a test that requires the government interest asserted to be recognized by US history and tradition. Indeed, tailoring concerns are likely the only way to evaluate whether newly enacted laws are consistent with a history and tradition of allowing some speech regulations and not others. Historical analogies can start us off, but we will still need to ask about tailoring and alternatives.

Zacchini, the right of publicity case, could even offer us a potential model if we took the historical analogy seriously as a limit on what lawmakers can enact, as in the Second Amendment context. After all, there were reasons why common-law copyright in unfixed performances didn’t prevent most reporting about what people said or looked like.  Better still though would be to take on directly the project of identifying the relevant government interest and the extent of a regulation’s impact on speech that ought to be protected.

[very good questions I didn’t get a chance to write down, sorry! Among others, Mark Lemley suggested a Bruen-type approach: if they didn’t do it before, they can’t do it now. There’s a lot of debate in the broader con law literature, but I think it’s probably more important to make sure that the competing interests are defined at the same level of generality—freedom to choose nonconfusing marks, for example, instead of freedom to use someone else’s name in a nonconfusing way, if you’re going to describe “source indication” at a very high level of generality as a justification for the names clause.

Jake Linford asked whether the relatively recent historical pedigree of strict scrutiny gave me any pause. No. First, I carry no brief for strict scrutiny as such; European congruence and proportionality also provide tools to address causation/harm/tailoring issues that history & tradition can’t alone address. Second, there is a difference between a constitutional commitment and how that constitutional commitment is implemented. NYT v. Sullivan is a good example—defamation was well known as a legitimate cause of action, but its dangers were also well known and the SCt thought we’d learned enough about them to put new procedural barriers in place. Another example I didn’t mention is the Miranda warning—when we know that specific problems recur, we can change our implementation of the constitutional guarantee even as the guarantee remains the same.]

Elizabeth Townsend Gard (Tulane University Law School), Zvi Rosen (University of New Hampshire Franklin Pierce School of Law), 50 Year Review of the 1976 Copyright Act

Gard is new EIC of J of © Society; looking back on 50 years and forward to next 50 years b/c Next Great © Act seems unlikely. Doing interviews w/prominent scholars/lawyers/legislators. We want to take a snapshot of © in 2026, so engagement is welcome; there’s going to be a conference at GW in Oct. 2026. Younger scholars encouraged. Copyright Society Research Guides: for scholars to use.