Gene Weingarten on false claims regarding war medals

It's not often I get to reference the great Gene Weingarten, but his column about the federal law barring false claims to have a war medal is actually up my alley. More on the First Amendment challenge.

Also, more Gene Weingarten: my favorite Style Invitational column ever, with metaphors so bad they're good.

Off-topic: avoid Best Buy's Geek Squad

Not the main reason posting has been slow, but my beloved tablet stopped working. I first took it to Best Buy, which couldn't fix it. That's sad, but it happens. What has soured me is the automated communication: both an email and a voicemail assuring me that my order was complete and ready for pickup. The latter, yes; the former, not so much. It's no fun to think your computer is fixed (the natural implication of "complete"; review Gricean implicature for more) and then find out differently. If a business can't be bothered to change its "come and get it" message to "we're sorry, but we've done all we can and we can't fix it," then that business doesn't need my patronage; what else are they sloppy about?

Well, maybe when I get an iPad things will look up.

Avatar remixed

So, there's this mainstream media trope, Mighty Whitey, where a white guy rescues the hapless natives from the other, bad white guys. At Political Remix Video, Jonathan McIntosh collects remixes that demonstrate the existence of this trope by matching video from Avatar with audio from Pocahontas, and vice versa, with bonus appearance from Dances with Wolves. It's ... pretty embarrassing, and I don't mean for the remixers.

Warning: if you follow the TV Tropes link, I am not responsible for how many hours you spend on the site.

No infringement of registered trademark, no cry

Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., -- F.Supp.2d ----, 2010 WL 668515 (D. Nev.)

The lead plaintiff, Hope Road, is a business owned by Bob Marley’s children, with registrations for BOB MARLEY in eleven classes of goods, including T-shirts, and a pending registration for MARLEY in clothing. Hope Road has registered itself as the owner of Marley’s publicity rights in several states, including Nevada. In 1999, Hope Road granted plaintiff Zion an exclusive license to sell T-shirts bearing Marley’s image; other licensed products include hats, posters, calendars, keychains, and towels. Zion’s license covers something between 300-500 different photos of Marley. For artistic reasons, some T-shirts have both Marley’s image and his name, but not all use the words and not all use the images. Plaintiffs have sent out about 400 C&Ds based on their Marley IP rights over the years.

Defendant Avela collects and restores entertainment-related art and images, licensing it for the retail market. The parties disagree about how plaintiffs and defendants initially interacted, though there was some discussion of a possible licensing arrangement that never materialized. Avela nonetheless licensed certain Marley images for use on clothing, some of which appeared at stores such as Target and Wal-Mart. The retailers used “Bob Marley” as part of the description of the clothing. The products, however, didn’t bear the words MARLEY or BOB MARLEY.

Plaintiffs surveyed T-shirt buyers, showing a control group a mock Avela T-shirt with an image of an unknown African-American male and a test group an actual Avela T-shirt with Marley’s image. Both shirts had an Avela neck label, stated that the designs were the property of one of Avela’s partners, and bore a 1976 copyright notice. Questions included “who the respondents thought made the t-shirt, whether the respondents thought the t-shirt makers received permission from anyone else to make the t-shirt, and whether the respondents thought the t-shirt maker produces something other than t-shirts.” Seventeen percent of the test group said Avela or its partner made the shirt, and 9% answered Bob Marley or the person on the shirt. In the control group, 22% answered Avela, and 2% answered Marley or the person on the shirt. On the permission question, of those who said that they thought someone else’s permission had been secured (an important qualification, see below), 37% said Marley or the person on the shirt in the test cell, and 20% gave that answer in the control cell. Some of the rest named retailers such as Hot Topic, and 29% of test/34% of controls said they didn’t know.

I’m fascinated by the grouping “Marley or the person on the shirt.” For those who can’t tell it’s Marley, Marley’s personality can’t be selling the shirt; if we cared about materiality, we’d have to exclude them.

Forty-one percent in the test group and 59% of the controls said that the maker didn’t need anyone else’s approval or had no opinion. Overall, 42% of the test group said Marley or the person on the shirt was the source or sponsor (these aren’t really the same thing as “permission,” though trademark owners have somehow convinced courts to overlook that), while 22% of the control group thought so. The expert concluded that there was 20% confusion.

Plaintiffs sued for trademark infringement and violation of the right of publicity.

The first question: what do plaintiffs own? They claimed common law rights in the name Bob Marley, a federally registered BOB MARLEY mark, and Nevada registered rights of publicity. But can they claim a mark in all depictions of Marley? Is his picture the equivalent of his name? If defendants used the Bob Marley name, is that a fair use?

Plaintiffs argued that their mark consists of any visual depiction of Marley. But every court to consider the issue has held that “there is no cognizable trademark in every single photograph ever taken of a famous person.” No reasonable person could believe that all images of a person originated with that person. Thus, the registered BOB MARLEY mark doesn’t equate to a trademark in any and all photos of Marley. Plaintiffs use hundreds of different photos of Marley on merchandise; no single picture represents a Marley mark equivalent to BOB MARLEY.

Plaintiffs then cleverly argued that a picture can be equivalent to a word mark, as in Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) where the Second Circuit held that Mobil’s flying horse symbol was infringed by the name Pegasus Petroleum. That may be true in some cases, but here it wasn’t: the pictorial equivalent cases are limited to “a true picture mark consisting of a single pictorial representation used repeatedly as an indication of origin.”

But plaintiffs argued that defendants used the BOB MARLEY mark in connection with advertising the products on websites and store signage. Defendants argued that they weren’t responsible for retailers’ uses and that any such use would be descriptive fair use.

The court agreed that there was no record evidence of defendants using the word mark, except for an unauthenticated document that appeared to be an internal sales analysis report, which would not count as a use as a source indicator and couldn’t cause any customer confusion because there was no evidence it was ever shown to a customer. (Hi, keyword search cases!) The court therefore did not need to resolve the descriptive fair use issue with respect to the registered mark.

On the right of publicity, defendants argued that plaintiffs waived their rights by failing to register until January 2006, more than six months after they learned of unauthorized uses in the state, and the statute requires registration within six months of an unauthorized use. Plaintiffs argued that this requirement only applies to each particular defendant’s use, and that there was a factual issue about when they learned of defendants’ use.

Nevada provides a life plus fifty term for publicity rights regardless of whether the person commercially exploited the right during life. Others can’t make commercial use of a person’s right of publicity without the written consent of the person or his/her successor in interest, absent exceptions not at issue here. Registration provides notice to potential users. If a successor in interest/licensee of a deceased person doesn’t register in Nevada, however, that entity may not assert any right against any unauthorized use that began before the application to register was filed. And, within 6 months of the date the successor in interest became aware/reasonably should have become aware of “an unauthorized commercial use,” it must register. Failure to register is deemed a waiver of “any right of publicity.”

So, does the statute require registration within six months of any unauthorized use, on penalty of permanent waiver, or are rights waived only with respect to that particular use? Without Nevada cases on point, the court started with plain language. A successor in interest “must” register within 6 months of becoming aware of an unauthorized commercial use; failure waives “any” right of publicity forever. “The statutory scheme fosters certainty in the claims surrounding publicity rights of a deceased person. It encourages early registration by prohibiting a successor from asserting rights against a use that began before registration. And it encourages registration upon learning of an unauthorized use by tying forfeiture of the right to a failure to register. The statute thus encourages registration both to protect successors’ rights, and to give potential users notice of prohibited uses.”

However, the registration requirement is only triggered by use in the state. The court found genuine issues of material fact about when plaintiffs first became aware of unauthorized Nevada use. This includes evidence of internet ads by Florida-based companies, which might or might not count as use “within” Nevada. The same questions also surrounded whether defendants’ use began before plaintiffs’ registration.

Defendants also argued that the statute didn’t apply to people who died before it was enacted. Application of the statute, plaintiffs contended, was both intended by the legislature and not retroactive here, given that defendants’ use began post-enactment. The court agreed that both the plain language and legislative history supported applying the law to any person, whether or not already dead when the law was enacted, and that this wasn’t retroactive.

The parties cross-moved for summary judgment on the §43(a) claims and were both denied. Caselaw suggests that a celebrity may assert an unfair competition claim where the defendant uses the celebrity’s persona to suggest false endorsement or association. The Sleekcraft factors shook out as follows: Marley is a well-known musician with strong recognition among the shirts’ intended audience. It’s not unusual for musicians to be featured on t-shirts, so Marley’s success as a singer is closely related to the t-shirts, and indeed one retail website called one of the t-shirts a “concert” t-shirt. Other t-shirts included song or album titles on the shirt, further tying the products to Marley’s reputation as a musician. The picture is one of Marley, and purchasers are unlikely to exercise much care in buying t-shirts. Though plaintiffs don’t use mass marketing retailers, the parties both use the internet to advertise and sell their products; they both displayed products at a particular trade show; and at least one retailer, Wet Seal, stocked both parties’ products before switching solely to defendants’ cheaper products. Plus there was the survey evidence of confusion.

The court still found genuine issues of material fact. Many of the survey results didn’t show confusion. Even of the group (59%) who said the manufacturer needed someone’s permission to make the t-shirt, only 37% said that someone was Marley or the person on the shirt. And the Ninth Circuit’s Franklin Mint case upheld a ruling that there was no genuine issue of material fact on likely confusion where Princess Diana’s image had appeared on a number of unauthorized products during her lifetime which she’d neither objected to nor endorsed. Here, there was conflicting evidence on Marley’s awareness of unauthorized use of his image on products like t-shirts during his lifetime. With a lot of unauthorized merchandise floating around, consumers might not be confused, but, after his death, the owners of the Marley rights have enforced their rights, making this case potentially distinguishable from Franklin Mint. (That’s even more circular than usual for these false endorsement cases!)

Finally, the defendants argued that false endorsement claims should be limited to the use of a likeness to endorse another product, not to the use of a likeness as part of that product. This should be true, but the court pointed out that Wendt, Franklin Mint, and other cases involved incorporation of a likeness into the product.

Subway ruling on failure to disclose/230

Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 WL 669870 (D. Conn.)

Sit back, because this is going to take a while.

Plaintiff (Subway) sued defendants (Quiznos and iFilm) for Lanham Act false advertising and state law commercial disparagement and unfair trade practices, arising out of an ad campaign including two national TV commercials and internet ads centering on Quiznos’ “double meat” line of sandwiches. (Oh, Buffy the Vampire Slayer, how I miss you.)

Quiznos aired a TV ad in September 2006 comparing its Prime Rib Cheesesteak sandwich to the Subway Cheesesteak, focusing on the message that the Quiznos version had twice the meat. The sandwiches were side-by-side on a tray and actual consumers commented: “one man, while looking at the sandwiches, states ‘meat, no meat.’ In another shot, two men are looking at the Subway sandwich and one says he can’t see any meat and after a search says ‘Oh, there it is I see it,’ while the other man says ‘it’s hard to find’ and ‘oh, there's a little.’ Another man, while comparing the two sandwiches, refers to the meat on the Quiznos sandwich as ‘busting out of the sub.’ The Commercial also contained frames consisting solely of text, which read: ‘Quiznos New Prime Rib Cheesesteak v. Subway Cheesesteak ... Only Quiznos has real Prime Rib. And more than 2x the meat.’”

Quiznos then partnered with iFilm to create the “Quiznos v. Subway TV Ad Challenge” at meatnomeat.com. It solicited people to create a video demonstrating “why you think Quiznos is better.” Quiznos posted four sample videos and contestant videos that complied with the rules.

In January 2007, Quiznos aired a second TV ad comparing its double meat Ultimate Italian to Subway’s Italian BMT.

Further on the Cheesesteak: According to Quiznos, the specifications for the Quiznos Prime Rib sandwich called for 5.0 ounces of meat, whereas the specifications for the Subway Cheesesteak sandwich called for less than 2.5 ounces of meat. To check the claim, Quiznos commissioned an independent expert, Restaurant Marketing Group (RMG), which concluded that the amount of meat in an average small Quiznos Prime Rib sandwich was at least twice that of the meat in the standard 6-inch Subway Cheesesteak sandwich. Quiznos also conducted an audit of its stores in the fall of 2006, and alleged that over ninety-four percent of franchisees were making sandwiches that contained at least 4.0 [sic] ounces of meat. Subway argued that Quiznos knew it was making false claims, based on an August 2006 field operations survey showing that 27.65% of the 651 sandwiches tested contained less than 5.0 oz. of meat, with 10.29% of the 651 containing less than 4.0 oz. of meat. A second survey in September 2006 at 39 Quiznos stores found that 74% of the stores made sandwiches containing less than 4.5 oz. of meat. Of 690 stores surveyed, 21.6% served Prime Rib sandwiches with less than 4.5 ounces, though this was still approximately one ounce more than the Subway Cheesesteak with double meat. Though the networks requested substantiation, Quiznos didn’t disclose these results.

Subway argued that it makes all sandwiches to order, including a double meat portion for an extra dollar. The Cheesesteak was available with either a 2.5 ounce portion of a steak, pepper and onion mixture—between 1.67 and 1.77 ounces of meat—or a 5 ounce/3.34-3.54 ounce portion. But the Quiznos ad used a single portion as a comparison, failing to disclose the more comparable sandwich. Moreover, the ad didn’t disclose the price; the Subway was $3.59 or $4.59 with double meat, while the Quiznos sandwich sold for up to $6.79. (Quiznos, however, argued that only 50% of Subway consumers even knew that double meat was an option, and at most 10% of Subway consumers ordered double meat.) Finally, Subway argued that it had discontinued the Cheesesteak at the time the ad aired, replacing it with a Steak & Cheese sandwich with 2.5 ounces of meat (single). While the ad was airing, the Cheesesteak was still being offered in a majority of Subway stores to get rid of remaining inventory.

After the surveys, Quiznos audited 4,370 stores and found that 44.14% of the Prime Rib sandwiches tested contained less than 5 ounces of meat, with 5.86% containing less than 4 ounces; ½ ounce deviation was allowed, so 4.5 ounces was acceptable. Quiznos ultimately terminated about 300 franchisees for failing to comply with the meat specifications for the Prime Rib. Two Colorado franchisees sued, alleging there was no real compliance standard in place an that enforcement was a sham driven by concerns over the Prime Rib ad. The court agreed with the franchisees, finding that the terminations were a charade “driven not by Quiznos’ genuine concern about whether its franchisees were making sandwiches to spec, but rather by its overriding public relations desire to be able to proceed with its national advertising campaign targeting Subway. But the public relations monster had to serve two masters-the action Quiznos took once it ferreted out non-complying franchisees had to look serious (otherwise what would Subway say?), but it couldn’t actually be serious, unless Quiznos was willing to lose a potentially huge number of non-complying franchisees, which it was not.”

Quiznos argued that the Cheesesteak ad was created using fair and accurate procedures, based on sandwiches orered from local stores by members of the production crew posing as ordinary customers, with independent third-party public notaries monitoring the procurement and filming. The notaries signed affidavits attesting that no one manipulated the sandwiches. But Subway witnesses testified that the Subway sandwich in the ad appeared “flattened or squished.” And the Quiznos stores were warned that someone from corporate would be there on the day the ad was filmed and that the Quiznos were “cherry-picked” from the available local options. Subway also offered a consumer survey showing that the Quiznos sandwich in the ad looked better than what customers got in stores and the Subway sandwich looked worse.

Further on the Ultimate Italian ad: the side-by-side comparison was the same. One man says: “If I ran out of gas in front of a Subway I would walk ten miles to get the Quiznos sandwich.” “In another vignette, two men are looking at the Subway sandwich and one states, ‘I don’t see any meat.’ The commercial also includes a person saying ‘the Quiznos is like stacked with a bunch of meat and the Subway sandwich is like when your kindergarten and your Mom throws some stuff together real quick.’” The text frames said, “Quiznos New Ultimate Italian v. Subway's Italian BMT. The Quiznos has 2x the meat,” with a disclosure: “Based upon average precooked weight, in an independent national sampling of Quiznos small Ultimate Italian v. Subway regular 6-inch Italian BMT (12/06). Sandwich prices differ.”

The sampling referred to found that the amount of meat on an average small Quiznos Ultimate Italian was twice that on an average Subway BMT sandwich; the specifications for the sandwiches called for 5 ounces and 2.25 ounces of meat respectively. Subway argued that this was false and misleading for similar reasons (the availability of double meat at Subway, and the fact that Quiznos offered a single-portion Classic Italian sandwich; the higher price of the Quiznos sandwich). Subway’s survey expert, Joel Steckel, concluded that the ad misled consumers to believe that the Subway BMT was more expensive than it actually is and that the two sandwiches were closer in price than they actually are.

Subway claimed that overall sales dropped approximately 4% after each ad.

Further on the internet contest: In late 2006, the public had the chance to “grab a camera and show us why you think Quiznos is better.” Prizes included a showing of the winning video on VH1, cash, a year’s supply of Quiznos, iPods, and so on. Quiznos created one of the sample videos (“Barbie Breaks, You Get What You Pay For,” which sounds like it raises other interesting issues), and reviewed and approved the other three, created by iFilm. Subway alleged that these were false and misleading too.

Subway also sued over the contestant videos, which were allegedly posted as they were submitted. But Subway claimed that defendants were responsible for the content, because it claimed ownership of all materials submitted under the contest rules. (This is ridiculous given §230: all websites will give themselves the right to use submitted material; that doesn’t affect whether the material was provided by another information content provider.) Subway also pointed to the requirements for entries, which demanded a video that “compares Quiznos to Subway and illustrates why Quiznos is better than Subway,” the similar judging criteria, and “Thought Starters” suggesting ideas such as “Double Meat.” The rules prohibited any “false or misleading statement, or any libelous, slanderous or disparaging statement regarding Quiznos or Subway, or of either companies’ products or services.” (You can see here why Eric Goldman says Roommates.com will often be a defense cite: those guidelines and suggestions don’t inherently require the submission of defamatory/disparaging content, so under Roommates Quiznos should be protected by §230.)

Making the move people who don’t like §230 always make, Subway argued that defendants “undertook the responsibility to review the contest entries, and had the ability to exclude entries containing inappropriate content.” Nonetheless, Subway contended, defendants posted videos with false, misleading, or disparaging statements about Subway. The sample video—not subject to §230—claimed that the Subway sandwich is “all bread” and used a “beauty shot” of a Quiznos sandwich to compare to a fake Subway picture; called the Subway sandwich “Lettuce Starve” and “Hunger Pain Inducing”; etc. Contestant videos were also objectionable: “a Subway sandwich portrayed as a submarine unable to dive because it does not have enough meat; two persons trying to decide where to eat and referring to Quiznos’ double meat as a deciding factor, thereby falsely implying that Subway has no double meat option; and a video depicting a sandwich ‘build off’ that explicitly states that Subway's sandwich has little meat and much less meat than Quiznos’ sandwich.”

First, the parties fought over Subway’s expert, whose survey backed up Subway’s claim that the Ultimate Italian ad was misleading because the sandwiches weren’t comparable in content or price and the prices weren’t disclosed. The mall intercept survey concluded that the ad led consumers to believe that the Subway price was higher than they’d otherwise believe and that the price was more comparable to Quiznos’ price than it actually was.

The test group saw the ad and the control saw a “beauty shot” of a Subway sandwich and a description from Subway’s menu. All respondents were asked to give the price they’d expect to pay, based on the ad and their knowledge of fast food. In the test group, the respondents, on average, opined that the Subway price was $4.91, with the Quiznos at $5.81. In the control group, the respondents averaged $4.48. (I think there’s an obvious medium problem here: the control should have showed a noncomparative TV ad.) The actual average current market price for the Subway was $3.84 ($5.08 for the Quiznos). The difference between control and test was $0.43, and the test group perceived a $0.90 gap between the parties’ sandwiches when the actual gap was $1.24 (though we have no control for the perceived gap; to get that, we’d at least have needed beauty shots/descriptions of the Quiznos sandwich in the control group).

The Second Circuit favors admitting surveys, with objections going only to their weight unless their probative value is substantially outweighed by danger of unfair prejudice or confusion. The court found this survey relevant. It goes to consumer perception of value. If the two products seemed to cost the same, consumers might have been misled into thinking they’d get better value for their money. (As an exercise, Google either party’s name and “you get what you pay for.” It seems that the perception that Quiznos is pricier is fairly broadly shared, and that’s not necessarily bad for Quiznos.) So, the ad was arguably misleading because it omitted information explaining the price difference.

All I can say here is: Subway’s lawyers did a good job. There are lots of omissions in every ad, necessarily. One ordinarily doesn’t have to disclose matters not inherently related to the attribute one is touting: if you’re featuring quality, you don’t have to explain that your product costs more, though you would have to disclose quality-related things that might otherwise mislead consumers. Likewise, if you’re featuring cheapness, you don’t have to explain that your quality is at the low end, though you could have to disclose if your unit pricing actually meant that consumers were likely to spend the same total amount as they would on the competitor’s product.

Though the ad here said nothing about cost, consumers apparently made inferences about cost based on a quality/amount comparison—they inferred that the Quiznos would cost more—but they underestimated the differences. Questions: what then should Quiznos have disclosed, in Subway’s view? Given the result, “prices differ” isn’t going to work, but does Quiznos then have to conduct an average price survey before advertising about amount of meat? Is the underestimation material to consumers? Would any comparative ad touting Quiznos over Subway without disclosing prices have produced similar results?

This last question to me is why the absence of a control for Quiznos makes the survey very troublesome. Once consumers are induced to compare Subway and Quiznos, they may well be operating on assumptions not contained in the ad. The control group didn’t make that comparison; I would think that the only reliable result from the Survey is the Subway-Subway difference, and not the Subway-Quiznos gap. So the court was wrong to accept Steckel’s conclusion that the ad creates a perception of greater price comparability. Steckel argued that his control tested what consumers were likely to think without comparisons, but that means he was, without meaning to do so, testing the effect of any comparison on consumer judgments, not testing the effect of this particular allegedly misleading comparison. If consumers can lawfully be told “Subway has an Italian sandwich, and Quiznos does too; we at Quiznos think ours is better,” then one must test the effect of the more meat representations here, not the effect of being asked to compare. Again, once consumers are thinking comparatively, they will be thinking differently and that may induce them to change their price estimates—moving the anchor, in effect—regardless of what the ad says. The question of controls is a separate issue from whether the ad should be deemed to make any implicit representations about price.

Subway, however, succeeded in persuading the court that the ad might have been comparing apples and oranges, and thus needed to disclose more differences. The survey’s flaws were not so egregious that its prejudicial effect outweighed its probative value. The court even accepted the lack of a “don’t know” option because Steckel opined that “don’t know” “is often a cop-out to prevent people from doing the hard work in ... making some logical conclusion[,]” and that, “in this particular design, it would also encourage guessing in the control, and that would minimize any difference between test and control.” (There are cases to the contrary; I can see both sides of the argument, but without controlling precedent this ruling just makes surveys more vulnerable to what the court thinks the right result is.)

On to the merits: the court denied summary judgment. The Cheesesteak ad did not make establishment claims, because it didn’t purport to rely on any tests. So Subway had to show falsity; Quiznos responded that its claims were true: the Quiznos sandwich actually contained two times as much meat as the standard Subway sandwich. The court found numerous issues of material fact. The Quiznos audit raises questions about the “two times” claim, since 27.65% of 651 franchises failed to meet the 5 ounce standard, and 10.29% made sandwiches with less than 4 ounces of meat. In later tests, 74% of stores made sandwiches with less than 4.5 ounces, and a comprehensive survey showed that 44.14% of Prime Rib sandwiches contained less than 5 ounces, with 5.86% containing less than 4 ounces. (Incidentally, how do Subway stores do by this standard? Doesn’t Subway have to show that its franchises do better? If they are also subject to variation, Quiznos may still be delivering 2x the meat.) Moreover, the court found even these results highly questionable, given that another court deemed the process a “charade.”

The court also found that there was a material question of fact about the 2x meat claim because Subway offered a double portion of meat for an extra $1. (How to square this with the survey results, which seem to indicate that consumers understood the comparison?) Quiznos knew about the Subway option but opted to air an ad “comparing a sandwich it had specifically designed to contain a double portion of meat to a Subway sandwich with a single portion of meat.” Moreover, the Subway sandwich depicted in the ad had actually been discontinued while the ad was airing and replaced with the Steak and Cheese, which did contain at least 2.5 ounces of meat. So a reasonable jury could conclude that the ad was literally false.

Quiznos argued that this couldn’t constitute literal falsity, because the ad was ambiguous. But the unambiguous message was that Quiznos’ product contains at least twice the meat of Subway’s product. This was reinforced by the “men on the street” commentary that the Subway had “little meat” or “no meat.”

Unlike the Cheesesteak ad, the Ultimate Italian ad made establishment claims. Thus, it could be proved false by showing that the supporting study was not sufficiently reliable. Again, there were genuine issues of material fact, centered on the availability of a Subway double meat option.

With respect to the Cheesesteak ad, the extrinsic evidence of deception was an internet survey of 97 consumers, which found that the Quiznos Prime Rib sandwich “looked better” in the ad than what consumers had experienced, while the Subway Cheesesteak sandwich “looked worse.” The court found the survey relevant to Subway’s claim that the ad made Subway’s sandwich look less appetizing than what customers experienced, because it asked consumers whether they believed that the sandwiches shown “accurately depicted” what the sandwiches would look like if ordered. (Doesn’t that question disprove misleadingness/prove puffery, if consumers think the ad doesn’t depict reality?) The survey was not so flawed that its probative value was outweighed by the risk of prejudice or confusion. So: genuine issue of material fact on whether the ad misled about the appearance of the sandwiches.

Likewise, with the Ultimate Italian ad, “a reasonable jury could conclude that the omission of pricing information was misleading and deceptive to consumers because consumers were misled to believe that the two sandwiches were similarly priced but the Quiznos sandwich had more than twice the meat and thus was a better value,” or “that viewers were misled by Quiznos' failure to compare more comparable sandwiches.” Quiznos had its own survey, which found a “more meat” takeaway without a price message, but that just creates an issue for the jury.

Subway also argued that the internet contest violated the Lanham Act: (1) it was advertised as a “meat-no meat comparison,” claiming that Subway’s product had little or no meat; (2) Quiznos claimed superiority over a materially different product; (3) it solicited videos depicting Subway’s product as having no meat; (4) it compared Quiznos’ product to a discontinued Safeway product. (Except for (3), framing the issues this way seems to plead around §230: to the extent these claims can be resolved without looking at the user-generated videos, no problem. (3) might also be resolved by looking only at the solicitations, but do those count as “advertising or promotion”?)

“Viewing the Contest in its entirety,” the court found genuine issues of material fact. For example, the contest used the domain name meatnomeat.com, which is arguably a literal falsity because it “clearly implies” that a Subway sandwich has no meat. (Or perhaps it’s puffery.) Without extrinsic evidence, Subway will have to argue literal falsity to prevail against the contest. The four sample videos “designed to shape” the submissions also make no meat/less meat claims. Defendants argued that no reasonable consumer would have been deceived by these representations, but that’s for the jury.

Defendants argued that the sample videos and contestant videos weren’t “commercial advertising or promotion.” The samples weren’t commercial speech made for the purpose of influencing consumers to buy Quiznos’ products, but rather examples of how consumers could enter the contest, and they were only available to an extremely narrow range of viewers who went to the contest pages, and thus not disseminated sufficiently to the relevant consuming public. The court found these arguments unpersuasive. The contest was designed to influence consumers, and was part of an integrated Quiznos campaign; the ads were available to anyone with internet access, and thus sufficiently disseminated. Plus Quiznos posted the winning submission on VH1 and on a Times Square billboard.

Okay, but what about the contestant videos? §230 seems like the big barrier. Subway argued that defendants “went beyond the role of a traditional publisher” by “soliciting disparaging material” and “shaping the eventual content.” (Um, soliciting material and shaping content is what traditional publishers do. I know that’s hard to remember!) The court found that the critical inquiry was whether defendants merely published information provided by third parties or instea were “actively responsible for the creation and development of disparaging representations about Subway contained in the contestant videos.” Publishing includes reviewing, editing, altering, and posting content. The court held that it was unclear at this stage whether defendants had exercised the role of a traditional publisher.

Unless there are allegations that Quiznos or iFilm inserted disparaging content into submissions, it’s not unclear. What further facts do we need? The court relied on a 2004 case holding that a website goes beyond the traditional publisher’s role by actively encouraging, instructing, and participating in consumer complaints, such as by encouraging consumers to take pictures for posting on the website. As a result, the site “incurred responsibility for the information developed and created by consumers.” As I’m sure Eric Goldman will shortly elaborate, this is not a mainstream view of §230; the general question is: who provided the unlawful content? Otherwise a news site with a comments section asking people to provide their opinions—imagine a site with an editorial stance that occasionally asks leading questions, like, say, Fox—could be liable for defamatory comments.

Here, the court reasoned, defendants invited contestants to submit videos on the theme “why you think Quiznos is better.” Somehow the domain name meatnomeat.com is also relevant for implying that Subway has no meat. And the sample videos are also relevant because they arguably contain false representations. “Whether the Defendants are responsible for creating or developing the contestant videos is an issue of material fact, best submitted to the jury after viewing all of the relevant evidence.” A reasonable jury could conclude that the defendants “actively solicited disparaging representations about Subway and thus were responsible for the creation or development of the offending contestant videos.” Being responsible for the creation or development of offending content is sufficient for liability.

Naturally, the state-law consumer protection/unfair competition claims also survived.

This year's IP/Gender

American University Washington College of Law’s

Program on Information Justice and Intellectual Property, Women and the Law Program, and Journal of Gender, Social Policy & the Law
present
IP/Gender: Mapping the Connections

Gender and Invention

Friday, April 16, 2010

9:00 am – 5:00 pm

Washington College of Law, Room 100

4801 Massachusetts Avenue, N.W., Washington, DC 20016

Registration: www.wcl.american.edu/secle/registration

Webcast: http://www.wcl.american.edu/pijip/webcast.cfm

Christine Haight Farley
Associate Dean and Professor of Law, Washington College of Law
Welcome

Ann Shalleck Professor of Law and Director Women and the Law Program Washington College of Law

&

Michael Carroll Professor of Law and Director Program on Information Justice and Intellectual Property Washington College of Law

Opening Remarks

Gendered History– 9:30 am -11:30 am

Dr. Rayvon Fouché Associate Professor of History University of Illinois, Urbana-Champaign

&

Sharra Vostral Associate Professor, Gender Studies and History, University of Illinois, Urbana-Champaign

Selling Women: Lillian Gilbreth and Gendered IP

Annette I. Kahler

Director, Center for Law & Innovation, Albany Law School
Examining the Right to Exclude: Historical, Social, and Economic Perspectives on Women and Invention

Dan Burk

Chancellor’s Professor of Law, University of California, Irvine

Comments

Gendered Doctrine – 11:30 am -12:30 pm

Kara W. Swanson

Associate Professor, Earle Mack School of Law, Drexel University
Merry Widows: Egbert v. Lippman and the Corset as Patented Technology

Ann Bartow

Professor of Law, University of South Carolina School of Law

Gender, Innovation and Inventorship: Every Patent Tells a Story

Shubha Ghosh

Professor of Law, University of Wisconsin Law School

Comments

Gendered Goals: Luncheon & Keynote – 12:30 pm -2:30 pm

Joshua Sarnoff

Professor of the Practice of Law, Washington College of Law
Introduction

Zorina Khan

Associate Professor of Economics, Bowdoin College

What Do Intellectual Property Rights Promote? Innovation Among Women Inventors in the 19th and 20th Centuries

Gendered Production– 2:30 pm -4:30 pm

Bernardita Escobar

Instituto de Políticas Públicas‐ Expansiva UDP, Santiago, Chile

Women and Science Production in Developing Countries: Chile in the 1990‐2008 Period

Dr. Shlomit Yanisky Ravid

Head of the Comparative Legal Research Center, Faculty of Law, Ono Academic College, Israel
Patents and Gender: The Exclusion of Women Inventors from IP Rights

Laurel Smith-Doerr

Associate Professor of Sociology, Boston University

Gendering Science, Gendering Ethics: The Intersecting Production of Knowledge, Gender and Ethics

Mario Biagioli

Professor of the History of Science, Harvard University

Comments

Closing & Adjournment

Victoria Phillips

Professor of the Practice of Law, Washington College of Law
Closing Remarks

Trademark problem of the day

Stonyfield Farm's YoTube. Particularly interesting in this light is what Google first tries to give you upon searching for "YoTube Stonyfield," though it will actually search for "YoTube" if you insist, at which point Stonyfield's site is the top result. Bonus: using autocomplete, type "YoTube" then, after a space, some other letter, and see whose fans can't spell.

I think Google's automated compensatory measures decrease the likelihood of confusion, by making sure you have to take affirmative steps to reach Stonyfield. I'm sure, however, that it would be easy to find a good trademark lawyer to say the opposite.

This also makes me think about how, for big brands, it's hopeless to try to see in any comprehensive way what's going on with your brand. What, are you going to set a Google Alert for YouTube? (Would YoTube show up on such an alert, anyway?)

Product placement in ads

Apparently it's a problem--at least when the services being placed violate the NFL's guidelines for Super Bowl ads.

NYIPLA student writing competition

Details here.

Not quite harassthem.com

Mashable's story on PleaseRobMe.com strikes me as a fascinating teaching example. Judge Kozinski thought that harassthem.com would not be entitled to section 230's immunity because of its extensive participation in the creation of unlawful content. How would he deal with this site's aggregation of Twitter feeds from people who indicate they aren't at home? Does it matter that the site claims (and I have no reason to disbelieve) that it's trying to educate people about the vulnerabilities they create with such messages?

Does presence on the market indicate FDA approval?

Mutual Pharmaceutical Company, Inc. v. Watson Pharmaceuticals, Inc., 2010 WL 446132 (D.N.J.)

Earlier litigation between the parties in the C.D. Cal. Watson sells colchicine, a therapeutic compound in use for more than a century to treat, among other things, gout and, more recently, pseudogout and Familial Mediterranean Fever (FMF). Mutual sells a colchicine product, COLCRYS, recently approved by the FDA as an orphan drug with a 7-year exclusivity period for marketing COLCRYS for the treatment of FMF. Mutual alleged that Watson makes an “unapproved prescription drug” containing colchicine as its sole active ingredient, and advertised its product in competition with COLCRYS.

It’s unclear whether defendants’ product requires FDA approval. It’s an old drug and wasn’t required to go through the current review process. Mutual alleged that defendants use several advertising channels, including price lists, wholesaler ordering systems, pharmacy computers, and websites. (I assume this allegation is designed to deal with the earlier court’s skepticism that any of the acts at issue constituted “commercial advertising and promotion.”). Mutual further alleged that defendants supply “misleading, obsolete, and/or incomplete information” about their unapproved colchicine products to those channels. Pharmacists and buyers allegedly believe that all prescribed drugs identified on price lists and wholesaler ordering systems are safe, effective, and FDA-approved, so by listing their products, defendants “knowingly and willfully communicate to relevant consumers that their products are safe, effective and FDA-approved.” (I think this is a fascinating question: It does seem quite likely that the default assumption today is that all drugs are FDA-approved. Consumers just don’t know that much about the various loopholes and grandfather provisions in the law. If we therefore protect consumers’ expectations, advertising law would eliminate the loopholes enacted decades ago to protect drugmakers’ expectations. So which policy should control? See more below!)

Defendants moved to dismiss the common-law unfair competition count because California only recognizes passing off as common-law unfair competition; the court agreed. They also got rid of the “unfair” prong of the allegations under section 17200 of the California Business & Professions Code, which requires an act that would violate antitrust law.

Defendants further moved to dismiss the entirety of the complaint on the grounds that it was within the FDA’s primary jurisdiction. But the complaint was not brought under the FDCA. Rather, it sought redress for implied falsehood under the Lanham Act. Defendants argued that this was an impermissible end run around the regulatory process, trying to create an FDA approval requirement for colchicine where none exists.

This type of argument—that implications about FDA approval/safety arise naturally from a product’s mere presence on what is generally a heavily regulated market—strikes at the heart of distinctions courts have tried to make between enforcing the Lanham Act and enforcing the FDCA in advance of FDA action. Unsurprisingly, the case law says a lot of possibly conflicting things.

Here, the complaint alleged affirmative misrepresentation of FDA approval status, along with false and misleading representations on product inserts and labels. “Whether these statements are false and misleading to relevant consumers is not a matter reserved for the FDA, but a matter that falls within the jurisdiction of this Court.” Though defendants argued that the relief sought would take their product off the market because they’d affect every single marketing channel, the court concluded that the relief sought was narrow: “the cessation of alleged false advertising that implies FDA approval of defendants’ products which are not FDA approved.”

A lot here rests on what is sufficient to “imply” FDA approval. The court held that the complaint sufficiently alleged that the presence of defendants’ product on price lists and at drug wholesalers creates confusion. Moreover, it alleged that “[s]urvey evidence demonstrates the inaccurate perception of relevant consumers that pharmacy computer systems ... perform a gatekeeper function by displaying only those drug products that have been approved by the FDA.” So resolving the complaint wouldn’t depend on any FDA rules or regulations.

But that’s not really the point of the conflict preclusion argument: the point of the argument is that the structure of the FDCA is designed to ensure that colchicine may lawfully be sold without FDA approval, and to the extent that implicit representations occur merely by being on the general price list etc., the courts can’t prohibit that without also taking the products off the market and defying the structure of the FDA. (Explicit misrepresentations of FDA approval are not troublesome in this way.) I think this argument may be correct, but that protecting consumers against deception is also an important policy goal. Here, given that the approved and unapproved products appear to be identical, I would find the FDCA to be a trump, but if there were health or safety issues I’d probably go the other way. It comes down to this: do we think that old drugs really are safe and effective (or at least as safe and effective as the FDA process can guarantee), such that time is a good substitute for FDA approval? And what do we do with the fact that FDA approval isn’t just material to consumers, it’s a background assumption with which they approach any drug on the market?

Regardless: motion to dismiss denied.

Claims of typical results not puffery

Walter v. Hughes Communications, Inc., -- F.Supp.2d ----, 2010 WL 366639 (N.D.Cal.)

Plaintiffs sued on behalf of a putative class of 80,000 California consumers who bought satellite internet services from Hughes that were allegedly significantly slower than advertised. Despite specific representations of speeds consumers could expect “up to,” which varied between peak and off-peak times, and despite having different pricing plans for different speeds, Hughes allegedly didn’t deliver the “up to” speeds or even close. Its ads touted the speed of its services, for example claiming that its connections were “up to 30x faster than dial-up,” and allowed users to “[f]lip through Web pages like turning the pages of a book” and “[d]ownload large files in minutes, not hours.” The website also stated that speed would depend on a variety of factors and was not guaranteed. Its service plan described “up to” and “typical” times, but plaintiffs alleged that Hughes instead delivered consistently slow and spotty service falling “woefully” short of the typicality claims.

Moreover, Hughes allegedly capped data transfers from heavy users and blocked P2P connections; though it said that a small percentage of subscribers who exceeded the threshold would suffer a temporary speed reduction, in fact, a large percentage of subscribers allegedly experienced lengthy shutdowns, sometimes days long, if they exceeded the threshold. Plaintiffs also complained about the termination fees imposed when, disgusted, they gave up on Hughes.

Initially, the court found that California law applied despite the contract’s Maryland choice of law provision, based on California’s public policy of affording extra remedies, including punitive damages and injunctive relief, to consumers in consumer protection cases. Intriguingly, the court reasoned that “[t]he fact that Maryland law, by and large, forbids the same conduct as California’s consumer protection laws actually undermines Hughes’ argument, because Maryland companies would presumably not be required to alter their behavior to conform to both sets of laws.” No Holmesian bad men need apply!

The next issue was whether plaintiffs stated a claim under the UCL, FAL, and CLRA, which the court found they did sufficiently to satisfy the heightened pleading requirement of Rule 9(b). Even with a number of vague and conclusory statements, there were also detailed, mutually supportive allegations plausible enough to survive a motion to dismiss. Hughes argued that its claims were mere puffery. Though the presence of clear and unambiguous language making it unlikely that a reasonable person would be deceived can justify dismissal, the general rule is that whether claims are deceptive is a question of fact that can’t be decided on a motion to dismiss.

Here, the allegations called into question Hughes’ representations, considered in light of representations about “typical” speeds. Hughes offered “hard, measurable quantities” that couldn’t be characterized as mere puffery, and plaintiffs alleged that they were often unable to reach even the “typical” speeds, and that off-peak speeds were as slow as the advertised “typical” speeds. Even with Hughes’ disclosures that it didn’t guarantee any particular or average speed, a jury could find that its representations were deceptive.

Hughes also argued that plaintiffs failed to plead actual reliance, because they cited recent representations and ads but they’d signed up years ago. But plaintiffs met their burden for pleading reliance even without identifying the particular ads or representations on which they relied. Each plaintiff alleged reliance on Hughes’ representations, which, roughly described, were comparable to the more recent representations, which were alleged with greater particularity. The court was willing to infer that Hughes’ representations have been consistent in certain material respects for the last several years. This was sufficient to provide Hughes adequate notice of the claims against it. The court dropped a cf. to the Tobacco II Cases, 207 P.3d 20 (Cal. 2009) (“[W]here, as here, a plaintiff alleges exposure to a long-term advertising campaign, the plaintiff is not required to plead with an unrealistic degree of specificity that the plaintiff relied on particular advertisements or statements.”). Though plaintiffs’ pleadings were less particular about Hughes’ allegedly illegitimate use of its data transfer cap, and about allegations that Hughes intentionally oversold its services by signing up more clients than it had the bandwidth to support, the court saw no harm in permitting plaintiffs to proceed with those arguments as potential explanations for plaintiffs’ experiences; they weren’t independent causes of action.

The court did, however, dismiss the allegations related to the termination fees because they didn’t sufficiently detail how the fees are applied in practice. The only specific allegation—about one customer subject to a $300 fee—didn’t support the general allegation that Hughes imposed a $400 termination fee regardless of the damages it actually suffered, which would constitute impermissible liquidated damages. Nor did plaintiffs sufficiently explain why the fee was procedurally (hidden or unexpected) or substantively unconscionable (shocking the conscience or harsh and oppressive). A $300 fee was less than two months’ worth of service, and plaintiffs didn’t allege that providing the service was costless. However, the court reserved the question of whether the termination fees might also be cognizable as damages.

A pizza ad a lawyer could love

Domino's defines puffery for us! Way to turn a loss in court into a win for marketing.

The Soul of Creativity

This part of the semester is always tough for me, so I can't give you a full-scale review of Roberta Kwall's new The Soul of Creativity (Google books) (Amazon), though I hope to do so eventually. Kwall sets out an account of creativity as spiritual and author's rights as fundamentally moral, recognizing the intertwining of their personalities with their works. It's a very well-done argument though on a lot of issues we are in sharp disagreement. A policy-oriented chapter on creating a moral rights law for the US is on SSRN if you want a sample of the book. Recommended reading for anyone with an interest in moral rights, or the respect accorded authors.

Goodnight for Twilight unofficial collectors' guide

Summit Entertainment, LLC v. Beckett Media, LLC, 2010 WL 147958 (C.D. Cal.)

Summit owns copyrights and trademarks associated with Twilight and New Moon, the movies. Beckett sold two "fanzines" (labeled unofficial collectors' guides, and not corresponding to my idea of a fanzine, but ok) reproducing numerous images from the films, along with trademarks and promotional images related to the films. In particular, Summit alleged that the fanzines used Summit’s stylized Twilight trademark on their covers; contained unauthorized reproductions of photos, including photos not available from Summit’s website and photos altered in violation of the site’s terms of use; contained removable posters and images of trading cards that were also unauthorized reproductions of Summit’s works. Covering the internet bases, Beckett also featured one of the fanzine covers on its Facebook pages and attempted to auction the printing plates for the covers on eBay.

Summit had little trouble with its copyright and trademark claims, apparently with little dispute from Beckett. Of note: the court rejected Beckett’s argument that Summit’s website gave Beckett permission to use many of the images. Beckett didn’t show likely success on that defense, as was its burden, most notably because it couldn’t explain the use of photos not present on the website. Moreover, the license here didn’t allow alterations of the photos (the terms of use said that users “will not edit, alter or modify any of the Content without Summit's prior written approval”), and Beckett altered them, exceeding the scope of the license.

On trademark, the court accepted Summit’s argument that it owned a valid, protectable mark in a stylized, block-lettered TWILIGHT, and Beckett displayed a virtually identical mark in the fanzines, including on the outside front covers and pull-out posters. Moreover, Summit has licensed its mark for a “seemingly endless” list of goods, including posters, which both indicated the strength of the mark and the relatedness of the goods. In the absence of opposing evidence or argument, the court found likely success on the merits.

The court then presumed irreparable injury for both causes of action, despite Beckett’s argument that it had voluntarily ceased the troublesome activities, recalling the fanzines, terminating the eBay auction, and removing the offending cover image from its Facebook page. But as of the day Beckett’s opposition was filed, the fanzines were still “widely available” in retail stores and over the internet. Thus the dispute was not moot. Then, the balance of hardships followed: if an injunction was wrongly denied, Summit’s copyrights and trademarks are “at risk of being devalued,” while granting an injunction would just force Beckett to keep doing what it said it would (cease all offending activity). And there’s a public interest in vindicating copyright rights and avoiding confusion.

The court did agree with Beckett’s objection to the scope of the requested injunction, which would cover fair use as well as foul. Thus, any injunction needed to make express allowance for §107 fair use, and also needed to define Summit’s marks expressly, especially if any marks other than the stylized TWILIGHT were to be covered.

HT Eric Goldman; further discussion here.