Gender & IP, Panel 1 Q&A

Ann Bartow: Deere case involves the infantilization -- gaying up -- of a masculine icon. Does the analysis work a different way when the brand identity is masculine?

Farley: She wants to distinguish between “brand” generally – brands that qualify for dilution protection – and individual brands. Main proponents of dilution protection represent “masculine” brands, but are still using the metaphor to Congress that their brands are vulnerable to predation. The metaphor can be flipped in individual cases when a masculine brand is feminized by a competitor. (I have a collection of Marlboro parodies; almost none of them involve feminization or sexualization, except for the Brokeback Mountain one.)

Burk: The right of publicity also might create similar issues – slash fiction, etc.

Diane Zimmerman: Defamation can be further unpacked – presumed damages was a special doctrine of slander, not defamation generally. There were three exceptions where you can presume damages – the idea was that these were especially serious harms and we didn’t want to disfavor slander as we did in the ordinary case.

Farley: Sure, but women who could prove they lost marriage proposals could recover without using the exception. It’s women who lost dinner invitations who had to rely on the presumption.

My comment: Perhaps ironic that Farley now uses the comparison with defamation of women to say that this isn’t really a big deal. Feminist critiques of tort law, as Burk mentioned, have emphasized recognition of relational, non-market harms as legitimate.

Farley: Brands are putting themselves in situations that should weaken them, but aren’t – they’re spreading to many products, changing over time. If dilution law is supposed to fix a meaning and keep it in control, TM owners’ activities are deliberately weakening that control but asking for legal protection so no one else can do it.

Me: What’s the difference between that and “an unchaste women can’t be raped”?

Farley: For brands, that’s not justified. (I entirely agree. That we should take account of non-market harms and harms that have been denigrated because they’ve primarily been suffered by women does not mean that we should take account of every possible perceived harm. Brands aren’t women, because they’re not people. They have no moral claim to relational protections. I shouldn’t break a person’s leg; I have no such obligation to a chair.)

Radin: Capture of rhetoric – tarnishment, piracy, property – is a way to win a battle through labels. The gendered way of characterizing brands is a form of rhetorical capture. Also, law and economics analysis can produce similar results in a very masculinized way.

Farley: Dilution doesn’t pull any heartstrings; there’s been a lot less judicial resistance to tarnishment, which has that rhetorical capture. A lot of successful blurring cases involve misappropriation, but we didn’t adopt that characterization of dilution in law. We’ve imported it a bit from abroad.

Josh Sarnoff: Can we think about incentives/patents as quid pro quo in relation to Burk’s and Silbey’s papers?

Silbey: In the case she discussed, the attorneys were actually accused of malpractice from putting the wrong people on the patent – distorting the proper incentives.

Separately, one thing that drives Silbey crazy about tarnishment cases is that judges find it so obvious what’s tarnishing about Debbie Does Dallas when the Dallas Cheerleaders are already heavily sexualized/gendered. The fact that they find it so obvious shows gender ideology at work, and we should work to force them to justify themselves.

Burk: The legitimacy of commodifying some kinds of sex, but not other kinds – you can’t sell sex, but you can sell Cheerleaders posters. Victor’s Little Secret is bad, but Victoria’s Secret Angels are fine.

Farley: Because there’s no foundation for dilution, it invites that sort of analysis.

Silbey: There is a there there – ideologies of gender and power. From the dominant perspective, Victor’s Little Secret is worse than Victoria’s Secret Angels. We need to make our decisionmakers admit what they find acceptable and what they don’t.

Q: Women students have said: they shop at VS all the time, and they see VS’s messages about women and sex as very different from the messages sent by Victor’s Little Secret.

Q: Rape law – reputation shouldn’t be part of it, but it is the case that “good” women are protected where “bad” ones aren’t. One kind of woman needs to be protected, and therefore another kind needs to be abandoned.

Farley: Dilution works by protecting a brand whatever she’s wearing. (And again, that makes me think better of dilution. But it’s the metaphor – brand as person, specifically woman – that is generating that sympathy, which is its evil power.)

Q: Also a reaffirmation of whiteness in these cases.

Bartow: Back to Dallas Cowboys – this isn’t a case about the Cheerleaders as a product, but about the Cowboys – the brand the court was worried about was the Cowboys, that people might think they had slutty cheerleaders. It was about a masculine brand!

Farley: Absolutely, this was about a male owner’s property.

Silbey: Of course, gender ideologoy is always there when we discuss men.

Gender & IP, Panel 1

Ann Shalleck, WCL, introductory remarks: We have to change the conference name to “mapping the connections.” As Google reminds us, there are lots of ways to map territory. These papers point out connections that seem obvious once they’re identified; what’s amazing is that the gender aspects have remained suppressed for so long. Dan Burk, for example, discusses the gendered characteristics of the isolated inventor and the isolated invention. Jessica Silbey uses concepts of origin myths – think of “conception” and realize this has something to do with gender, which she explores through narrative theory. Christine Haight Farley looks at trademark law’s concept of branding as feminine, and the analogies between dilution and the 19^th century tort of damaging women’s reputations, which was a tort for violating a property right of the man who controlled the woman (husband, father).

Dan Burk, Minnesota, Do Patents Have Gender? Earlier version summarized here. He begins with the light bulb, invented by Edison, one of the most iconic inventors in the mythos of innovation. Edison was working in an incredibly crowded field of prior art. People were using most or all of the elements he combined in the light bulb. But we never hear about that in the iconic narrative. We also know that Edison had an enormously skilled staff – physicist/mathematician, self-taught scientist, master craftsman, Swiss mechanic (without whom Edison shut down the office), electrician, others. And there were others involved – a lawyer who worked on the patent, found financing, managed personnel, saw the potential of electric lighting, lobbied government for tax breaks, etc. Without his input, the light bulb wouldn’t have existed, but he’s not an inventor.

None of this fits with the legal fiction of the PHOSITA, which defines both the inventor and the invention – an inventor is by definition a person of extraordinary skill in the art, who saw something that wouldn’t be obvious. Compare to the feminist critiques of the “reasonable person” in tort law, who is actually the “reasonable man” (who kills over adultery, lets you drown even when saving you wouldn’t be risky, and is autonomous and separate). Feminist tort standards emphasized responsibilities, communities, standards of care.

Thinking of PHOSITA in the same light, the same assumptions are built in. The inventor is in splendid isolation from everything but a rarefied conception of prior art, without Edison’s interactions with lots of people, including those working on the same problem. PHOSITA seeks to overcome the prior art, not to rely on it.

Feminist concepts challenge patent’s ways of knowing, encouraging us to look at situated knowledge and at IP responsibilities rather than just IP rights. This could go beyond patent misuse to other obligations to the community, recognizing both the contributions of the inventor and the contributions of the community.

Jessica Silbey, Origin Myths: The Mystical Beginnings of Intellectual Property Law: This was a great presentation, much enriched by the interaction between the oral portion and the complementary/contrasting images on the slides. My written summary can’t do it justice.

Silbey offered a cultural analysis of IP – IP can be understood by means of a narrative explanation for the structure and justification of IP, built in part around gendered heuristics. That the heuristics are unspoken and understood makes them powerful. The gender ideology is implicit and behind the scenes, and it’s also not the whole story, but it’s related to systematic disadvantages.

Julia Levy’s story: This begins with a patent arising out of collaboration between Mass General Hospital & another hospital and a small Vancouver biotech firm, creating a new drug for treating macular degeneration. It’s a multibillion-dollar drug now sold by Novartis. It’s photosensitive, activated by light – it only activates when you shine a laser light on the affected body part. The inventors assigned ownership rights to institutions. Levy’s company wanted exclusive rights, and the company QLT was going to pay a royalty. MGH made a deal, but the other hospital didn’t, and sued. Because the parties were joint owners, each could make and sell the product without the others’ consent, so the other hospital had to show that QLT wasn’t legitimately on the patent. And that meant showing that Julia Levy, of QLT, wasn’t a real inventor.

Task: tell a story how Levy was a joint inventor who shared in every aspect of the invention. But in a world of collaborative research, in which people contribute without working in a lab together, the world is changing. Inventors aren’t solo mad scientists. How can patent law recognize these realities? The judge and jury might be preoccupied with the mad scientist, even though the patent law has been amended to reflect modern realities. The “a-ha!” moment that only a single person can experience – “conception,” the formation in the mind of an idea – also a gendered concept. Reduction to practice is important, but the mental event is key – this is an origin story. But what of labor? (Here she refers to the reproductive sense as well.)

Origin stories explain where we come from and give us guidance about where we go. IP laws exist to glorify moments of authenticity, discovery, etc. As litigators, Levy’s lawyers needed to give a mythical origin to the drug in her mind.

Origin story here: When Julia was a young girl growing up in British Columbia, she spent summers playing in cow parsley, and noticed that her skin was more susceptible to sunburn. She discovered the oil was photosensitive. When she became a biochemist, she wondered if its properties could be used in medicine. When her mother developed macular degeneration, she searched for ways to treat it by targeting the small blood vessels of the eye, and combined the concepts. She was a real inventor.

Most origin stories are political, describing how societies or communities came into being and naturalizing certain heirarchies. Origins essentialize, making identity permanent, unalterable and eternal. Levy’s story is also political – justifies a particular hierarchy of people. It legitimates what would otherwise be perceived as inequities in putting her on the same patent as people who labored for years on operationalizing the insight into a drug that could actually treat patients. She contributed to only two claims of a patent with more than a dozen. The hospital’s claims of exploitation and unfairness can only be rejected by finding Levy to be more entitled to rights.

The hospital also signed statements under oath of shared inventorship – like a marriage contract. The argument here is that if bad things happen (like women being more likely to be poor, and children with single mothers living in poverty), that’s a natural result of an equal starting point. Just because the hospital expected better – just because it was a small teaching hospital that trusted the big biopharm company to treat it right – is no reason to intervene on its behalf. The hospital lost its common-law claims of fraud and coercion. This is one aspect of origin stories: they tend to disguise the violence at the beginning of a relationship.

The origin myth of IP is also a myth of citizenship – rights go only to the special who deserve them. In patent, an inventor; in copyright, an author; in trademark, a person who produces more choice for the consumer. But this naturalizes a system of power relations, where consumers are not free from the marketplace, even as the origin story makes us think that we’re freely engaging in unmanipulated transactions.

Consider who benefits from recent changes in IP regimes. First-to-file proposal for patent (big pharma), term extension (Disney), dilution (big TM owners). More naturalization of power? We need to investigate the justifying stories and the heroes of those stories.

Christine Haight Farley, The Feminine Mystique of the Brand in Trademark Law Today: Here’s my report on her earlier talk at Thomas Jefferson. The object of TM law’s protection is changing – from the product/service to the brand. The brands are the product – or even the cultural identities associated with the brands. And the brand is feminine.

Summary of her underlying argument: Dilution law is radical and wrong. Shifting from protecting the consumer to protecting the brand goes along with a shift from tort to property, with lots of costs to speech and competition. There’s no real harm that needs to be addressed.

So why would we have a radical change in TM law without a real threat? Because TM owners cried that their valuable brands were vulnerable to the attentions of bad actors.

In defamation law, people are generally required to put a dollar value on harm to their reputations. If people can do that, why can’t brands, which are valued all the time? Yet in dilution cases, companies can’t put a dollar value on harm suffered – Farley says it’s because they haven’t actually suffered any harm (e.g., Pentium processors have suffered no harm from Pentium real estate). There has been an exception to the defamation rule: historically, women couldn’t prove economic harm from defamatory statements about chastity, so the law didn’t make them do so.

Victorian premises of that tort map on very well to dilution. Women are vulnerable; brands are vulnerable. Women’s reputation is men’s valuable property, just as brands are valuable property. The value of the reputation was in purity, which carries over to brands today – purity of meaning, unencumbered social meaning. The harm to women wasn’t market-based but relational and associational, and that’s what brand managers argue now about dilution injuries. Harm is inevitable: if you talk about a woman’s chastity, you harm her; if you create associations with a mark, you harm it.

Marks are in fact very strong – they have strong legal protections without dilution, and they have very high values. But they aren’t invincible.

One irony: treating overly sexed brands like Victoria’s Secret as Victorian prudes. They’re ubiquitous, but you can’t touch them. They’re selling sex, but you can’t buy it. Lots of dilution cases involve sexually offensive uses – “lewd, immoral and unacceptable,” according to Starbucks in its attack on the “Consumer Whore” parody.

AU’s Washington College of Law, 4th Annual IP/Gender Symposium

Introductory remarks by Margaret Jane Radin, Princeton University: She was always uncomfortable with “Women and the Law,” thinking that gender issues should be broadly integrated into the curriculum. Today, the “Unmapped Connections” between gender & IP may be more mapped than when this symposium started, but there are still many exciting insights to come.

Five areas explored by today’s papers: (1) IP and the feminist approach to law teaching/gender in the curriculum. (2) IP and feminist cultural iconography – the cultural reification of “femininity” and the propertization that undergirds the gender heirarchy. Trademark is particularly on point in cultural iconography. Mattel has contributed, perhaps unwittingly, to a lot of feminist analysis.

(3) IP as it affects women in traditional societies and developing countries, because of their existing position – a potential for disempowerment as well as empowerment. Many modes of women’s creativity don’t lend themselves to individualistic identification of sole authors. (4) An unmapped field: IP and women’s modes of perception and communication. Do women actually have different modes of thought and creativity? If so, is it cultural? Neurological? Should we care? Anonymous creation isn’t eligible for IP in current forms. IP’s emphasis on the visual could also affect the gender of IP rights.

(5) IP and feminist philosophical methodology – individualistic “versus” relational, logic “versus” narrative, and so forth. Radin thinks that feminist philosophy is related to the American pragmatists like Dewey. If we talk about IP this way, we start to question concepts like “the author” versus cooperative creation, PHOSITA, “the invention” in an inventor’s head versus cooperative evolving innovation. Questions of “plain meaning” of statutory text in patent law also have gender implications.

Finally, these papers reflect feminist political activism – consciousness-raising, community-building, inclusion rather than exclusion.

ACLU v. Gonzales

Two notes about the opinion:

1. The court relies in part on the unlikelihood of many prosecutions actually occurring under the law, because it's just not that important compared to other Justice Department priorities, to determine that COPA will not be more effective than less restrictive alternatives (finding of fact 30). I don't recall seeing an enforcement-frequency test for effectiveness before; I'm not sure how the court should weigh it if Justice crossed its heart and swore to enforce the law; and the reasoning seems inconsistent with the basic chilling effect argument that gets the law struck down.

2. Another novelty, this one presaged by earlier opinions in the case: COPA covers all minors under 17, which means that material could be banned if it's obscene and lacks value for 5-year-olds. The court acknowledges that the Supreme Court upheld similarly worded restrictions on face to face transactions. But the court discounts those cases because, at the Kwik-E-Mart, the chilling effect is lessened by the fact that it's easy to screen out the youngest kids for whom the most is obscene. But on the internet nobody knows you're a 5-year-old, so the chilling effect of restrictions on internet speech is much greater.

This reasoning seems much more solid than point 1, and yet I wonder about "the internet is different" rationales -- even when they favor First Amendment claims. Does this mean that it's okay to prosecute comic book store employees for handing out free comic books to kids, because they should have known better? Not all free speech takes place on the internet -- and internet access is far from universal.

Self-promotion

Because really, what's a blog for?

Gone in 60 Milliseconds: Trademark Law and Cognitive Science, 86 Texas L. Rev. (forthcoming 2007). Email me if you want a copy of the current version.

KinderStart v. Google dismissed

Eric Goldman posted about the KinderStart dismissal. He will have more to say, but I wanted to do my “news for storage jars” version about the false advertising aspects of KinderStart’s claim against Google. KinderStart alleged that false statements to consumers and the SEC were part of Google’s anticompetitive conduct; the court found that the complaint’s allegations didn’t overcome the presumption that false statements have a de minimis effect on competition in an antitrust context. Google’s statements that its search results were objective, the court thought, “almost by definition cannot be ‘clearly false’” and would be more readily understood in the context of Google’s promise that it does not accept compensation for placement in results.

Although KinderStart wasn’t specifically given leave to amend its complaint to add the new Lanham Act claims, the court considered them on the merits. As I suspected, KinderStart lacked standing to complain about Google’s representations of objectivity. It alleged harm from Google’s manipulation of search results, not from Google’s claims of objectivity. (I would explain it slightly differently – its harm was suffered as a website, not as a search engine competitor who lost customers because Google fooled people into thinking that it was a better search engine than KinderStart.) Moreover, the court found that representations about PageRank are not made in “advertising or promotion” as required by the Lanham Act.

KinderStart’s state unfair competition claims suffered similar fates. Aside from allegations of unfairness and deception that duplicated the rejected federal claims, KinderStart failed to identify any way in which Google’s AdSense agreements were deceptive. The agreements wouldn’t lead anyone to believe that participation in AdSense would prevent removal from search results or downgrading of PageRank.

Finally, the court rejected KinderStart’s defamation and libel claims based on Google’s assignment of a PageRank of zero to KinderStart’s site, allegedly a representation that the site was worthless. The court accepted Google’s characterization of PageRank as opinion. From materials incorporated by reference in the complaint, it was clear that Google does not represent PageRank as an algorithmic fact untouched by human intervention. Moreover, because KinderStart didn’t adequately allege malice, Google was entitled to immunity under the common interest privilege. That privilege allows Google to communicate information at the request of an interested person, as long as it does so without malice. To see a PageRank, a user must install Google’s toolbar (or have it installed for her), activate the PageRank feature, navigate to a particular website, then rest her cursor on the PageRank icon on the toolbar. Under those circumstances, Google’s provision of PageRank is a response to a request from an interested person. (Back when I used the toolbar, I recall PageRank displaying automatically, but I’ll accept that’s not the current configuration.)

Sweetness and power

Merisant Co. v. McNeil Nutritionals, LLC, 2007 WL 707359 (E.D. Pa.)

This case about sugar substitutes raises a variety of significant issues, from equitable defenses to the proper use of surveys.

Merisant makes artificial sweeteners, including Equal, NutraSweet and Canderel (the international version of Equal). Equal is made with aspartame, dextrose and maltodextrin. McNeil makes the artificial sweetener Splenda, made with sucralose, maltodextrin and dextrose. Sucralose begins with sugar, then replaces three of eight hydroxyl groupings on the sucrose molecule with three chlorine atoms. Splenda doesn’t contain unaltered sucrose.

Makers of artificial sweeteners have attempted to avoid using certain language, such as the term "artificial," that may convey negative taste or health safety concerns. Instead, the industry uses the term "no-calorie sweetener"; some manufacturers position their products as “like” sugar, by using images and words to evoke sugar in their ads.

McNeil has spent $235 million from 2000-2006 to develop Splenda’s brand identity capitalizing on Splenda’s sugar origins. Thus the catchphrases “Made from sugar, tastes like sugar” on product packaging and “Made from sugar so it tastes like sugar” on individual serving packets, a slogan repeated in all TV and print ads. Perhaps because of this positioning, Splenda is now the top-selling no-calorie sweetener in the US.

Merisant was aware of the taglines since Splenda’s September 2000 launch, but it didn’t conduct any research about whether the slogan was misleading. Instead, it raised informal concerns with McNeil through correspondence arguing that the tagline was inherently false and misleading because it implies a more natural origin and because there’s no causal relationship between the original sugar molecule and the resulting sugar-like taste of sucralose. McNeil rejected Merisant’s concerns, responding that Splenda had never been promoted as “natural.”

In fall 2004, Merisant concluded that Splenda’s marketing was likely to cause consumer confusion and sent a letter to the Better Business Bureau’s National Advertising Division. Rather than responding directly, McNeil filed a complaint in Puerto Rico seeking a declaratory judgment that its advertising was legitimate. Through procedural maneuvers, that led the parties to this court. Merisant alleged false advertising under the Lanham Act and Pennsylvania state law. Specifically, Merisant claims that (1) “made from sugar” is literally and impliedly false; (2) “made from sugar so it tastes like sugar” is literally false and misleading; (3) the implied claim that Splenda is natural is misleading; and (4) the implied claim that Splenda contains sugar is misleading.

The court refused to grant summary judgment in favor of McNeil based on laches. The Lanham Act has no limitations period, so courts borrow from coordinate state statutes, here Pennsylvania’s consumer protection law, which has a limitations period of six years. Because Merisant sued within the limitations period, McNeil bore the burden of showing inexcusable delay and prejudice. There were reasons one could find both. Four years is a significant amount of time in this context, especially for a large company launching a new product; a four-year delay could be severely prejudicial. Yet Merisant also had evidence in its favor. It might not have been obvious that consumers were deceived at first; McNeil’s advertising eventually dropped the initial qualifier “but it’s not sugar”; Merisant was not the direct target of comparative advertising and had less reason to act than if it had been targeted. Moreover, of the $235 million McNeil spent promoting Splenda, $110 million was spent after Merisant began its suit. Merisant wasn’t bound to rush to court in the early stages of a product promotion, when it wasn’t clear what McNeil’s ultimate ad strategy was and when it might not have been clear that consumers were deceived.

Moreover, consumer protection concerns could tilt in Merisant’s favor. Though there’s no argument that Splenda is unhealthy or unsafe, it’s important to consumers to know whether the foods they buy contain sugar or are “natural.” And deliberate attempts to deceive consumers could also disqualify McNeil from a laches defense. There was some evidence from which a jury could conclude that McNeil intended to deceive, including an independent consultant’s description of McNeil’s “carefully considered decision[]” to “position[] Splenda as ‘not artificial.’” McNeil also stopped testing whether consumers received the message that Splenda was not artificial “for legal reasons,” which could lead to a negative inference.

Given all these uncertainties, it was for a jury to decide whether Merisant’s delay was inexcusable and McNeil was prejudiced.

McNeil argued that “made from sugar, tastes like sugar” is literally true, unambiguous, and not capable of being misleading. It made the usual claims that Merisant’s survey questions were leading, which the court refused to accept at this stage, and also invoked the pernicious rationale of Mead Johnson Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000), that surveys shouldn’t be used to define words, here “from” in “made from sugar.” Mead, among other things, invites confusion over whether there’s some sort of intent standard in Lanham Act false advertising cases, distinguishing “factual propositions that are susceptible to misunderstanding” from statements “designed to mislead.”

The amended Mead opinion at 209 F.3d 1032 (7th Cir. 2000) backtracks from this standard, but doesn’t quite do the job. Notably, the district court here didn’t cite the amended opinion in Mead, but only quoted the “designed to mislead” language that was amended out. The court went on to hold that “[t]he decision whether to follow Mead Johnson may turn on whether ‘made from sugar’ is merely ‘misunderstood’ or whether it was deliberately designed to be misunderstood and, hence, to mislead.” Given that Mead Johnson isn’t binding in any event, the court could look to the superseded language, but it should acknowledge that’s what it’s doing – and should explicitly address why it’s abandoning the usual Lanham Act rule that intentionally misleading conduct is not required.

McNeil’s position was that a consumer couldn’t interpret “made from sugar” and “tastes like sugar” as “is sugar.” Analogously, a survey couldn’t be used to prove that “Made in America” is misleading because it’s perceived by consumers as meaning “made by well-compensated union workers.” But, the court reasoned, there could be a legitimate dispute over whether Splenda was “made in America” if the sugar cane used was grown in Louisiana but then shipped to Mexico for conversion into Splenda, then returned to the US for packaging. Though McNeil had strong arguments about what “made from sugar” couldn’t mean, it was less convincing about what it could mean to consumers, specifically whether they could be misled about the naturalness of the “making.” If either (1) McNeil acted intentionally, or (2) consumers were confused about more than the meaning of “from,” then the court would decline to follow Mead.

McNeil also raised an affirmative defense of unclean hands, alleging that Merisant had engaged in similar marketing techniques to emphasize its products’ “natural” components. The key examples: For Equal, Merisant highlights the fact that aspartame is made “by joining two amino acids naturally found in wholesome foods like milk, meats and grains,” which are “foods we eat every day.” For NutraSweet, Merisant claims that “unlike saccharine, NutraSweet is the sweetener your body treats naturally.” For Same with Sugar (available in Puerto Rico), Merisant uses packaging that states “made with sugar” and uses images of sugar cane fields even though, McNeil argues, sugar serves only as a bulking agent.

The unclean hands defense requires clear, convincing evidence of egregious misconduct that injured the defendant and that has a close nexus to the subject of the plaintiff’s action. McNeil was hampered by its insistence that its advertising, as well as Merisant’s, was just legitimate product positioning, which made it hard to argue that Merisant’s conduct was “egregious.” As the court pointed out, unclean hands “is not a mere ‘they did it too’ defense, but instead serves as a shield against a plaintiff's claims when the plaintiff has engaged in ‘egregious misconduct.’” Moreover, McNeil’s key examples of Merisant’s advertising claims were in fact true. For example, Same with Sugar is composed of 97.5% real sugar, and thus “made with sugar” is not misleading.

The court excluded evidence of Merisant’s outside-US conduct, based on McNeil’s resistance to discovery on McNeil’s outside-US conduct; if it’s irrelevant to one side of the case, it’s irrelevant to the other. But it did comment that Merisant’s Mexican “Canderel Nature” was likely to be understood as meaning “natural” even though “nature” isn’t a Spanish word. The Spanish word for “nature” is “naturaleza,” and for “natural” is “natural.” Even without evidence, the court expected that the average Spanish-speaking consumer would associate “nature” with the Spanish equivalent. By Merisant’s logic, it could sell an artificial sweetener in Mexico called “Sugar” or one in the US called “Azúcar” (sugar) without being misleading. This, the court felt, overlooked the “shrinking” world in which a nation’s consumers often use more than one language. (Trademark deals with this problem through the doctrine of foreign equivalents, which is usually used to prevent registration of terms that are generic in foreign languages, but would also apply to terms that are deceptive in foreign languages.)

In any event, the court found that the nexus between Merisant’s conduct and its claims were too attenuated to apply unclean hands. The entire artificial sweetener industry wants to avoid the perception that its products aren’t natural, but Merisant’s claims were specifically that McNeil’s ads are misleading because they lead consumers to believe that Splenda contains sugar or is more natural than competing products. “There is a difference between highlighting the ‘natural’ aspects of a product and actually attempting to imply (falsely) that a product is, in fact, natural or made from an ingredient found in nature.” Thus, it granted summary judgment against McNeil’s unclean hands defense, though McNeil might be able to present the relevant evidence for other purposes, such as damages.

Advertising injury policy coverage for counterclaims?

Landmark American Ins. Co. v. Ray, 2006 WL 4092436 (W.D. Tex.)

The Scooter Store sued Ray, who was doing business as the Scooter Warehouse, for trademark infringement and dilution and false designation of origin. Ray counterclaimed for trademark infringement and false advertising, and won a substantial settlement. (Apparently the Scooter Store advertised a “free scooter,” but the actual terms made this unlikely, and FBI and IRS investigations into the Scooter Store’s practices “changed the tone of the [settlement] negotiations.”) Ray also notified her insurance company, since her policy covered “advertising injury,” and the insurer agreed to provide a defense subject to a reservation of rights, preserving its ability to raise coverage defenses. Ray had retained her own counsel, and the insurance company was content to provide second-chair support. After the underlying litigation ended, Ray sought reimbursement for her attorneys’ fees.

The court found in her favor for fees accrued after the insurer was given notice of the claim. Because the insurer offered to defend pursuant to a reservation of rights, Ray was entitled to choose to defend the suit personally, with the insurer liable for her attorneys’ fees, although Ray’s failure to explicitly reject the offered attorney was troublesome. The insurer’s designated attorney spent most of his time reviewing the other attorneys’ work, and he did not dispute Ray’s attorney’s role as lead counsel. Thus, the court found that the insurer’s behavior was inconsistent with a rejection of any obligation to pay Ray’s attorney.

The real issue, then, was how much the insurer had to pay. Ray argued that the insurer should pay essentially all the fees, since the offensive and defensive issues of who, if anyone, was an infringer were substantively and strategically interrelated. The court agreed in part, finding that the insurance company had to pay all the pure defense-related fees – only a few hours’ worth – and half of the other fees that could not be allocated to the false advertising claims (as all the expert-related fees were). The insurer argued that the award should be offset by Ray’s settlement with the Scooter Store. But, since the court didn’t award any fees related to the counterclaim, it refused to find any setoff amount.

Nationwide coupon settlement upheld in cold sore case

Intervention, Inc. v. Avanir Pharmaceuticals et al., 2007 WL 772889 (Cal. App. 1 Dist.)

This was an appeal by an objector to a settlement of a false advertising class action based on the claim that Abreva, a cold sore medication, cut cold sore healing time in half. The settlement gives $1 million to independent, non-product-related cold sore research and provides 50 million vouchers combining a $3 discount coupon for Abreva with a rebate offer on the purchase price, up to $6.50, of Tums antacid. The coupons will be distributed through newspapers, valid for two years, and may not be accompanied by advertising touting Abreva’s effect on the duration of a cold sore or by phrases like “try Abreva” directed at recruiting new users. Attorneys’ fees were $1.2 million. The objector argued that certification of a nationwide plaintiff class was illegitimate, and that the settlement was inadequate. The court of appeals affirmed.

The case was aggressively litigated through multiple demurrers, motions to strike, and amended complaints. Discovery was extensive, including depositions of class representatives, nine of defendants’ key employees, and over 50,000 pages of document production. Settlement discussions took about a year.

The court of appeals found that California was a proper forum to adjudicate nationwide class claims because the product was developed in California and the challenged research was conducted by Avanir, a company incorporated and located in California. Many of the ad claims, including press releases, emanated from California. The objector argued that another defendant (GlaxoSmithKline), based in Pennsylvania, was the primary wrongdoer. But the class complaint named them both and made substantial allegations of wrongdoing against both. Avanir developed the medication and conducted the relevant clinical studies. The defendants jointly agreed on the marketing plan and press releases.

As to the substance of the settlement, the court of appeals found no abuse in discretion from the trial court’s finding that it was fair, adequate and reasonable. A presumption of fairness operated: the negotiations were conducted at arm’s length, assisted by a mediator, and concluded after extensive discovery; class counsel was experienced in class action litigation; and there was only one objector out of a nationwide class estimated to exceed one million. Moreover, the trial court found that the coupon provided a benefit to class members who’d be otherwise difficult to identify and reach. The $1 million research fund was a significant benefit to the class, given that cold sores often recur. The settlement didn’t provide injunctive relief, but the relevant ads had been off the market for years, and the court of appeals agreed that there was no reasonable basis to believe that defendants would resurrect an old campaign based on a decade-old study that had been publicly criticized in litigation.

The opposer, perhaps relying on research revealing very low rates of coupon and voucher usage, argued that direct restitution should have been provided instead. But it would have been extremely difficult to find the class members, given that Abreva sells for less than $20 and that consumers would have to have kept records back to 2001 to qualify for reimbursement. Administration costs would overwhelm direct consumer restitution, so the “modest” benefits of coupons and rebates would be more economically feasible. It’s also true that coupon settlements can work as ad campaigns for defendants, but “win-win” settlements aren’t per se unreasonable, and the settlement here seeks to minimize the promotional effect of the vouchers. In addition, the $1 million research fund benefits the class. The objector argued that the harm to the class came from advertising misrepresentations, not from cold sore outbreaks. But the misrepresentations were about scientific research, and thus independent research is related to the class claims. (Except that the settlement-fund research can’t be product-related, so … not exactly.)

Patry on My Fair Ladies

William Patry has a blog post about my article My Fair Ladies here, making several points worth discussing. To begin with, he notes that “[t]he availability of fair use for sexually-themed works has had a mixed reception in the courts,” describing a number of cases – including DC Comics Inc. v. Unlimited Monkey Business, Inc., 598 F. Supp. 110 (N.D. Ga. 1984) [typo of 1994 in his post, which is why I mention it] – that predate Campbell and reject fair use in infringement claims against sexually themed parodies. Campbell, of course, rests its finding of potential transformativeness precisely on the criticism of the woman/women described in the songs and the sexual longings of 2 Live Crew, which Justice Souter imputes to Orbison as well.

I absolutely agree that there is a time element at work: the trend of favoring sexual criticism over other criticism is only a few decades old, and is probably connected to other aspects of the overt sexualization of American society. (There used to be a dispute over whether obscene works were copyrightable, a dispute now resolved in pornographers’ favor.) What my article discusses is the current situation – the fact that today, sexualization of a less overtly sexual work is the easiest and most reliable route to a finding of transformativeness, though it’s not impossible to do it other ways.

Patry takes issue with my characterization of the successive Koons cases – before Campbell, Koons lost two cases (he didn’t transform String of Puppies or his sculpture of Odie), then recently won a case in which he copied a fashion photo and put it into a painting. Post-Campbell, his situation is plainly better, even though his explanations for why he copied are virtually identical in all three cases. I find it especially striking that Koons described the woman’s legs in the photo as “nobody’s legs in particular,” and that the courts accept this characterization of an image of the female body as freely appropriable, whereas pictures of cute dogs are “somebody’s” – the copyright owner’s. Patry thinks the result is explainable on other grounds, because Koons mixed and matched images from lots of sources in the recent Blanch case rather than simply creating a three-dimensional sculpture from a single source and changing the colors, as in the earlier cases. Given the oft-cited rule that no infringer can excuse an infringement by showing how much he didn’t copy, and that transformation into sculpture did require some artistic and conceptual judgments, I am not persuaded.

But the broader point is this: one can, as courts have, find explanations that don’t explicitly rely on sexualization to justify fair use conclusions in the recent cases. But you look at the major transformative fair use winners – the ones we talk and write about, the ones in our casebooks – and you see and hear a lot about women’s bodies. Look at the transformative fair use losers – Dr. Juice, Michael Moore, Honda’s James Bond commercial – and you don’t. A feminist analysis suggests that something more than the formal reasoning in the cases is at work.

Minor point: Patry finds it significant that, in Mattel, Inc. v. Pitt, 229 F. Supp.2d 315 (S.D.N.Y. 2002), “a very sexualized take-off on Barbie,” “the parodist was a woman and the judge was a woman.” I don’t. Women can see criticism in commentary on other women’s bodies, and artists like Judy Chicago represent other women’s bodies all the time. That a female judge found transformativeness in sexualization shows that sexualization is now a readily accepted route to fair use, which is the same thing that male judges’ findings show. The question that led me to write the piece was “Why are so many of our canonical fair use cases about women’s bodies?” I think “why aren’t there more female judges?” and “why aren’t there more female artists/defendants in copyright cases?” are related questions, but they aren’t mine here.

Do you care where your basketball came from?

Baden Sports, Inc. v. Molten, 2007 WL 703394 (W.D. Wash.)

Baden developed and patented a new game-quality, cushioned basketball. Baden alleged that Molten introduced several basketball models into the U.S. market that copy Baden's patented technology.

Molten advertises its technology as its own innovation, using terms such as “new design,” references to a prominent Italian design company, “innovative proprietary Dual-Cushion technology,” and “[t]echnology that only Molten can create,” which Baden alleged are false claims. Moreover, Baden alleged that Molten imports its balls into the United States without marking the country of origin, constituting a misrepresentation of geographic origin.

Molten moved to dismiss Baden’s Lanham Act claims. Molten argued that it did not copy Baden's technology; rather, its dual cushion technology is an outgrowth of designs Molten developed in the 1960s and 70s. Molten also argued that Baden's patent is invalid because of prior art. The court recognized these as factual issues for further development. Molten then argued that “innovative” and “proprietary” are mere puffery, but the court refused to decide the issue on a motion to dismiss. Given that the main issue in the case is whether Molten infringes Baden’s patent, the subsidiary Lanham Act claim that Molten’s technology is really Baden’s innovation could not be resolved at this stage.

Molten balls ordered through a prominent online store with which Molten has a relationship – the FIBA online store – are concededly not marked with a country of origin. Molten argued that Fan Avenue, a French basketball vendor which rents website space from FIBA, purchases and imports Molten basketballs to Europe, where there are no country of origin marking requirements, and then, in turn, offers those unmarked basketballs for sale over the internet to purchasers throughout the world. Molten argued that the duty to mark falls on the importer, who is the consumer in the case of the FIBA store.

The Tariff Act requires every imported foreign product to be marked to indicate country of origin. But Baden’s claim is under the Lanham Act: failure to mark balls that end up in the US is misleading. Although there’s no affirmatively misleading claim, only an omission, a number of courts have concluded that the omission of a geographically descriptive term is actionable under the Lanham Act in these circumstances. Given the Tariff Act, a failure to mark acts like an affirmative representation of US origin. (Can this be presumed material? My answer is yes because of the Tariff Act and the motivations for it, and the intriguing question is whether the presumption can be rebutted, even though it's illegal to fail to mark foreign origin.) Thus, the court refused to dismiss the claim, but noted that Molten’s responsibility for the misrepresentation remained to be litigated as it neither distributed nor imported the balls directly to the US.

When Lanham Act violations aren't "advertising injury"

Federal Insurance Co. v. Symons Corp., 2007 WL 689679 (Cal. App. 1 Dist.)

Symons lost a large Lanham Act false advertising case, also involving state trade secrets claims. The Lanham Act claims involved misrepresentations of the strength, weight, and relative usefulness of Symons products as compared to its competitor’s. The jury awarded what the judge determined were duplicative damages, so the judge entered an award of $13 million.

Symons sought indemnification under its advertising injury policy. The trial court denied its claim, and the California court of appeal affirmed. The relevant policy defined advertising injury to include “[o]ral or written publication of material that ... disparages a person's or organization's goods, products or services,” or (2) “[m]isappropriation of advertising ideas or style of doing business.” Symons argued that (1) the Lanham Act claims involved disparagement of the competitor’s products, and (2) misappropriation of trade secrets that included marketing information constituted misappropriation of advertising ideas or style of doing business.

The court rejected both arguments. First, in determining a duty to indemnify, a court does not look at the nature of the insured’s conduct that caused the lawsuit, but rather at whether the judgment was entered on a theory actually covered by the policy. Not all negative comments about a competitor or claims of product superiority constitute disparagement, and the Lanham Act is written in the disjunctive, covering false (positive) claims about one’s own products as well as false (negative) claims about competitors’ products. Thus, the jury could have predicated its verdict on a finding that Symons falsely represented its own products. Symons did not meet its burden of showing that judgment was entered on a theory actually covered by the policy.

Second, nothing in the jury’s trade secret verdict necessarily covered misappropriation of advertising ideas or style of doing business. Four of the five allegedly misappropriated trade secrets covered product design or manufacture, while the fifth covered “marketing information, inlcuding … bottom-line cost information”; the jury found misappropriation of all five, but nothing in its verdict showed a causal link between the misappropriation and Symons’s advertising activity.

Takeaway message: Not every advertising injury is an “advertising injury”; insurers will define that term as narrowly as possible, and especially like to exclude core Lanham Act claims for an advertiser’s false representations about its own product.

Another version of My Fair Ladies

You can also find My Fair Ladies on my site, here.

[Edited to reflect that the login requirement at BePress was accidental and has been corrected.]

My new article on fair use and feminism

New publication: My Fair Ladies: Sex, Gender, and Fair Use in Copyright, 15 Am. U. J. Gender, Soc. Pol’y & L. 273 (2007).

Salon's sports writer on the NFL's "Big Game" trademark

King Kaufman has some sensible things to say, though he disclaims any legal expertise.

All I know about the Superbowl is that Sci-Fi didn't show a new episode of Battlestar Galactica that Sunday night because of it, which is already enough to earn my enmity. I await Wal-Mart's opposition to the registration with interest.