Thursday, August 18, 2011
New research with tarnishment implications
This forthcoming study suggests that (1) consumers are highly resistant to bad information about their favorite brands because they treat those brands as an extension of themselves, undercutting the theoretical foundation for tarnishment, but also that (2) there's a sort of personhood interest in brands given that many of us define ourselves through brand identification. I've always thought of this as the Centerfold theory; your self-concept may depend on the behavior of some other person (or in this case, entity), but that still doesn't give you a right to control that other person.
Wednesday, August 17, 2011
Forthcoming article
Rebecca Tushnet, Worth a Thousand Words: The Images of Copyright Law, Harv. L. Rev. (forthcoming 2012). The draft is available at SSRN or at Georgetown's Scholarly Commons. Comments are highly welcome.
As a side note, my publishing contract requires me to take down the draft after the final version is published, and wait for a year before I post the final version elsewhere (it will be immediately available on the public internet at the law review's site, so I don't find that troublesome, though presumably taking it down interferes with SSRN statistics).
Supreme Court of Canada doesn't like TM surveys
This short piece on SSRN, Emir Aly Crowne et al., Living Alavida Loca: A Masterpiece of a Decision, reports the court's position that it will ordinarily be all but impossible to replicate the reaction of the reasonable consumer with an imperfect memory in a hurry, so surveys should ordinarily not be admitted. The court also endorsed initial interest confusion, at least when the confusion is only remedied by further research (as opposed to being immediately dispelled).
Beer thick as ... water?
HT Mark McKenna: what to do when a beer claims that bottle caps float on its head, which turns out to be true ... but also true of other beers and of water? The post's author concludes that this is puffery. But why does the advertiser make the claim?
One last whirl: court makes potentially significant state law ruling
LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2011 WL 3510889 (N.D. Ill.)
LG lost most of its false advertising claims against Whirlpool, but the jury found in favor of LG on its Illinois UDTPA claim. The court denied LG’s motion for a permanent injunction and attorneys’ fees, and Whirlpool moved for judgment as a matter of law on the IUDTPA claim, which the court here granted. LG failed to show that Whirlpool’s advertising occurred primarily and substantially in Illinois, as the court found was required by the law. Evidence of a nationwide course of conduct without evidence of Illinois-specific conduct doesn’t trigger the IUDTPA.
Shouldn’t LG at least be able to suppress that false advertising which occurred in Illinois? I find it hard to believe that you couldn’t bring an IUDTPA claim on behalf of Illinois consumers against ads in Illinois. The court said that a non-consumer plaintiff could sue under the IUDTPA if it established “that the challenged advertising occurred primarily and substantially within the state.” The only sensible way to read this, especially since the distinction between consumers and nonconsumers seems to have little relevance here, is that a plaintiff could sue over (challenge) the Illinois component of a national ad campaign. The court also said that it couldn’t issue a nationwide injunction based on a violation of state law, apparently willing to hold that in a Lanham Act false advertising case the coordinate state claim couldn’t generally be maintained—this would substantially diminish the value, where present, of adding such claims. (Consider, for example, the consequences of this ruling when a state law has minimum damages or automatic fee provisions for prevailing plaintiffs.)
Here, LG didn’t introduce evidence of Illinois ads or Illinois damages, only that Whirlpool had a business relationship with Kenmore (Illinois HQ) and sold dryers in Illinois. Despite the precedent of numerous cases allowing nationwide IUDTPA claims by competitors (I think uniformly joined with Lanham Act claims, as is standard), the court said that none of them had decided this issue.
LG lost most of its false advertising claims against Whirlpool, but the jury found in favor of LG on its Illinois UDTPA claim. The court denied LG’s motion for a permanent injunction and attorneys’ fees, and Whirlpool moved for judgment as a matter of law on the IUDTPA claim, which the court here granted. LG failed to show that Whirlpool’s advertising occurred primarily and substantially in Illinois, as the court found was required by the law. Evidence of a nationwide course of conduct without evidence of Illinois-specific conduct doesn’t trigger the IUDTPA.
Shouldn’t LG at least be able to suppress that false advertising which occurred in Illinois? I find it hard to believe that you couldn’t bring an IUDTPA claim on behalf of Illinois consumers against ads in Illinois. The court said that a non-consumer plaintiff could sue under the IUDTPA if it established “that the challenged advertising occurred primarily and substantially within the state.” The only sensible way to read this, especially since the distinction between consumers and nonconsumers seems to have little relevance here, is that a plaintiff could sue over (challenge) the Illinois component of a national ad campaign. The court also said that it couldn’t issue a nationwide injunction based on a violation of state law, apparently willing to hold that in a Lanham Act false advertising case the coordinate state claim couldn’t generally be maintained—this would substantially diminish the value, where present, of adding such claims. (Consider, for example, the consequences of this ruling when a state law has minimum damages or automatic fee provisions for prevailing plaintiffs.)
Here, LG didn’t introduce evidence of Illinois ads or Illinois damages, only that Whirlpool had a business relationship with Kenmore (Illinois HQ) and sold dryers in Illinois. Despite the precedent of numerous cases allowing nationwide IUDTPA claims by competitors (I think uniformly joined with Lanham Act claims, as is standard), the court said that none of them had decided this issue.
Monday, August 15, 2011
Entry-level applicants: post your work publicly!
I've said before that entry-level applicants should post their work publicly as much as possible. At times I will take advantage of one-click access (SSRN, BePress, personal site) to something listed on the FAR form to read it, when I might not go through the rigamarole of HeinOnline, given that I have ~600 forms to get through. I'll go through logins and search forms once I've had at least one of my colleagues agree you're interesting based on the FAR form, but wouldn't you rather have me say I read your piece when I bring you up in the meeting? And I'm highly unlikely to email you to ask you for your draft, even if you tell me to do so on the FAR form--it's awkward in a variety of ways unless we've already decided we want to meet you.
I was therefore interested to see that the advice from a former Chicago articles editor was the same: putting the piece out there is only to your benefit in terms of getting published.
I will admit that I don't do the same for my early drafts--but I do try to summarize my talks, and I am also not trying to stand out of a stack of applications.
Appeals court orders certification on sunblock claims
Gaston v. Schering-Plough Corp., 2011 WL 3452398 (Cal.App. 2 Dist.)
Gaston appealed the denial of class certification in his UCL/CLRA/fraud claims over the labeling of Coppertone Sport SPF 30 Sunblock; the claims centered on the idea that “sunblock” promised total protection but failed to deliver. The court of appeals reversed.
After rejecting a FDA preemption argument, the trial court turned to substance, first rejecting the argument that restitution would equal the purchase price of the sunscreen, and instead plaintiffs would need evidence of the dollar value of the impact of the challenged claims.
Gaston submitted the declaration of a marketing expert, Eli Seggev, who conducted a survey finding that over 90% believed that the term “sunblock” meant protection from UVA, not just UVB, and that 90% of those believed that the product “blocked” UVA rays. Likewise, over 87% believed that “waterproof” included UVA protection, and over 85% thought the same about “ultra sweatproof.” More than 80% would choose a product with UVA protection over one without and would pay 15% more for it. Out of a list of 8 factors, including protection from sunburn, the most important factor influencing purchase was protection from the sun's harmful rays. Defendant submitted a declaration from another marketing expert criticizing the survey; this expert’s work has been excluded by a court.
Gaston testified that he read the labels and was misled by the sun protection, waterproof, and sweatproof claims.
The FDA didn’t have any specific UVA labeling requirements, but recognized the importance of UVA information to consumers. In 1999, the FDA determined not to put “sunblock” in its sunscreen monograph because it was concerned that the term “will be viewed as an absolute term which may mislead or confuse consumers into thinking that the product blocks all light from the sun.” It had similar concerns about “waterproof,” proposing “water resistant” instead. In 2001, the FDA issued a stay of its final rule (though it recently announced new OTC requirements).
The trial court denied the motion for class certification based on the predominance of individual questions of fact on reliance, causation, deception and injury. Prop. 64 doesn’t require absent class members to prove actual reliance and damages, since no class would ever be certified under that standard. But the presumption of reliance didn’t apply to Gaston’s CLRA and fraud claims. (The court did find that numerosity, ascertainability, typicality, and adequacy of representation were present.)
UCL class certification requires common questions on (1) whether a defendant's act or practice is unlawful, unfair or fraudulent, and (2) the amount of money a defendant may have acquired by means of those acts that must be restored to the class. There must be a well-defined community of interest among plaintiffs. The trial court found that restitution would require a highly individual assessment of causation given the UCL's standing requirement subsequent to Proposition 64.
But, given Tobacco II, it was error to say that a plaintiff must ultimately prove that all class members relied on, were deceived by, and suffered damages as a result of the alleged misrepresentations. UCL relief is available without individualized proof of deception, reliance, and injury. The trial court found that reliance was highly individual because the depositions of the class plaintiffs showed various reasons for buying the product, and because survey respondents intepreted the terms differently. But a fraudulent business practice under the UCL is one that is likely to deceive; Gaston argued that the survey and the FDA’s conclusions demonstrated that likelihood.
The court of appeals ruled that the question of how much money was unlawfully acquired from the class was subject to common proof about the difference between what the class paid and the value of what it received (which the survey suggested was a 15% premium).
The analysis under the CLRA is similar, though relief is specifically limited to those who suffer damage, making causation a necessary element of proof. Classwide causation may be established by materiality: “If the trial court finds that material misrepresentations have been made to the entire class, an inference of reliance arises as to the class.” Though the misrepresentations here were uniform, the trial court found they weren’t material because the five named plaintiffs relied on the misrepresentations to varying degrees, different segments of the survey placed different premiums on the various misrepresentations on the bottle, and the survey respondents interpreted the terms on the bottle differently and attributed different meanings to those terms.
Gaston argued that the question was whether the claims were material to a reasonable person as a matter of law and constituted a significant factor in purchases. He further contended that the evidence had shown this, even if there was variation in the degree of influence and the precise meaning given to different claims. The survey respondents consistently ranked UVA protection as the most important factor. “The fact a defendant may be able to defeat the showing of causation as to a few individual class members does not transform the common question into a multitude of individual ones; plaintiffs satisfy their burden of showing causation as to each by showing materiality as to all” (citation and quotation marks omitted). This was true even if some plaintiffs didn’t read the label and considered other factors in making their decisions.
The court of appeals concluded that “[t]he same labeling misrepresentations were made to all class members who purchased the Product, and the Survey indicates that the labels were a significant factor in their purchasing decisions. Thus, the labeling claims were material to a reasonable person, and the court should have applied the presumption of reliance as a matter of law.”
Proof of damages: the trial court thought it would have to be different for each consumer, who might not have read the label. “Each member need not prove he or she relied on the label as such reliance is presumed because the same misrepresentations were uniformly communicated.” If the appropriate measure of damages is the difference between what the class paid and the actual value, restitution will require only a simple calculation.
“Accordingly, plaintiff alleged common questions of law and fact under the CLRA and fraud claims.” Given the district court’s other findings, the class action would be superior as a matter of law. This isn’t like Wal-Mart Stores, Inc. v. Dukes, because here “uniform misrepresentations were made and injury depends on the reasonable person standard and not on the reasons for particular purchasing decisions.” Remand for an order certifying the class.
Gaston appealed the denial of class certification in his UCL/CLRA/fraud claims over the labeling of Coppertone Sport SPF 30 Sunblock; the claims centered on the idea that “sunblock” promised total protection but failed to deliver. The court of appeals reversed.
After rejecting a FDA preemption argument, the trial court turned to substance, first rejecting the argument that restitution would equal the purchase price of the sunscreen, and instead plaintiffs would need evidence of the dollar value of the impact of the challenged claims.
Gaston submitted the declaration of a marketing expert, Eli Seggev, who conducted a survey finding that over 90% believed that the term “sunblock” meant protection from UVA, not just UVB, and that 90% of those believed that the product “blocked” UVA rays. Likewise, over 87% believed that “waterproof” included UVA protection, and over 85% thought the same about “ultra sweatproof.” More than 80% would choose a product with UVA protection over one without and would pay 15% more for it. Out of a list of 8 factors, including protection from sunburn, the most important factor influencing purchase was protection from the sun's harmful rays. Defendant submitted a declaration from another marketing expert criticizing the survey; this expert’s work has been excluded by a court.
Gaston testified that he read the labels and was misled by the sun protection, waterproof, and sweatproof claims.
The FDA didn’t have any specific UVA labeling requirements, but recognized the importance of UVA information to consumers. In 1999, the FDA determined not to put “sunblock” in its sunscreen monograph because it was concerned that the term “will be viewed as an absolute term which may mislead or confuse consumers into thinking that the product blocks all light from the sun.” It had similar concerns about “waterproof,” proposing “water resistant” instead. In 2001, the FDA issued a stay of its final rule (though it recently announced new OTC requirements).
The trial court denied the motion for class certification based on the predominance of individual questions of fact on reliance, causation, deception and injury. Prop. 64 doesn’t require absent class members to prove actual reliance and damages, since no class would ever be certified under that standard. But the presumption of reliance didn’t apply to Gaston’s CLRA and fraud claims. (The court did find that numerosity, ascertainability, typicality, and adequacy of representation were present.)
UCL class certification requires common questions on (1) whether a defendant's act or practice is unlawful, unfair or fraudulent, and (2) the amount of money a defendant may have acquired by means of those acts that must be restored to the class. There must be a well-defined community of interest among plaintiffs. The trial court found that restitution would require a highly individual assessment of causation given the UCL's standing requirement subsequent to Proposition 64.
But, given Tobacco II, it was error to say that a plaintiff must ultimately prove that all class members relied on, were deceived by, and suffered damages as a result of the alleged misrepresentations. UCL relief is available without individualized proof of deception, reliance, and injury. The trial court found that reliance was highly individual because the depositions of the class plaintiffs showed various reasons for buying the product, and because survey respondents intepreted the terms differently. But a fraudulent business practice under the UCL is one that is likely to deceive; Gaston argued that the survey and the FDA’s conclusions demonstrated that likelihood.
The court of appeals ruled that the question of how much money was unlawfully acquired from the class was subject to common proof about the difference between what the class paid and the value of what it received (which the survey suggested was a 15% premium).
The analysis under the CLRA is similar, though relief is specifically limited to those who suffer damage, making causation a necessary element of proof. Classwide causation may be established by materiality: “If the trial court finds that material misrepresentations have been made to the entire class, an inference of reliance arises as to the class.” Though the misrepresentations here were uniform, the trial court found they weren’t material because the five named plaintiffs relied on the misrepresentations to varying degrees, different segments of the survey placed different premiums on the various misrepresentations on the bottle, and the survey respondents interpreted the terms on the bottle differently and attributed different meanings to those terms.
Gaston argued that the question was whether the claims were material to a reasonable person as a matter of law and constituted a significant factor in purchases. He further contended that the evidence had shown this, even if there was variation in the degree of influence and the precise meaning given to different claims. The survey respondents consistently ranked UVA protection as the most important factor. “The fact a defendant may be able to defeat the showing of causation as to a few individual class members does not transform the common question into a multitude of individual ones; plaintiffs satisfy their burden of showing causation as to each by showing materiality as to all” (citation and quotation marks omitted). This was true even if some plaintiffs didn’t read the label and considered other factors in making their decisions.
The court of appeals concluded that “[t]he same labeling misrepresentations were made to all class members who purchased the Product, and the Survey indicates that the labels were a significant factor in their purchasing decisions. Thus, the labeling claims were material to a reasonable person, and the court should have applied the presumption of reliance as a matter of law.”
Proof of damages: the trial court thought it would have to be different for each consumer, who might not have read the label. “Each member need not prove he or she relied on the label as such reliance is presumed because the same misrepresentations were uniformly communicated.” If the appropriate measure of damages is the difference between what the class paid and the actual value, restitution will require only a simple calculation.
“Accordingly, plaintiff alleged common questions of law and fact under the CLRA and fraud claims.” Given the district court’s other findings, the class action would be superior as a matter of law. This isn’t like Wal-Mart Stores, Inc. v. Dukes, because here “uniform misrepresentations were made and injury depends on the reasonable person standard and not on the reasons for particular purchasing decisions.” Remand for an order certifying the class.
Even specific allegations of bad intent don't defeat insurer's duty to defend
AMCO Ins. Co. v. Inspired Technologies, Inc., --- F.3d ----, 2011 WL 3477188 (8th Cir.)
3M sued Inspired for false advertising of Inspired’s Frog Tape/claims about 3M tape under the Lanham Act and Minnesota state law. (Seems likely related to this suit.) Inspired tendered defense to AMCO, and the lawsuit settled. AMCO sought a declaration that it owed no duty to defend or indemnify because of its policy’s knowledge of falsity exclusion from the advertising injury coverage. The district court agreed, and the court of appeals reversed.
3M alleged that Inspired’s ads depicted 3M’s tape in false and deceptive ways, including a doctored “Actual Photo,” videos purportedly demonstrating poor performance by 3M that actually didn’t represent equal stresses applied to the parties’ products, and tests that weren’t reliable or typical. 3M included a claim for enhanced damages under the Lanham Act due to Inspired’s willfulness, and in response to interrogatories it said, for example, “It is apparent that, rather than use an ‘actual photo’ of 3M tape, ITI manipulated a tape image by, among other things, replicating a photo to create a repeating pattern. Such replication could only occur through intent to deceive.”
The court of appeals rather easily concluded that the district court erred by failing to recognize that, under Minnesota law, a duty to defend all claims exists when any one claim arguably is covered by the policy's language. It was not error to look at the interrogatory answers, even though duty to defend is generally determined by the allegations of the complaint. The complaint isn’t controlling when actual facts within the insurer’s knowledge clearly establish the existence or nonexistence of a duty to defend. Interrogatory answers are sworn and admissible to the extent allowed by the FRE, so it was okay to look at them. However, it was error to conclude that the answers triggered the knowledge of falsity exclusion. The answers on which the court relied didn’t reflect alleged knowledge of falsity as to all the purportedly unfair ads. 3M discussed the purported “actual photos,” but there were other claims in the case, including unreliable testing, which could have been intentional or merely negligent. (Or, I should add, merely wrong.)
To prevail, a Lanham Act plaintiff need not prove knowledge of falsity. “The district court thus focused on some of the conduct alleged to prove the claim rather than the global claim itself.”
3M sued Inspired for false advertising of Inspired’s Frog Tape/claims about 3M tape under the Lanham Act and Minnesota state law. (Seems likely related to this suit.) Inspired tendered defense to AMCO, and the lawsuit settled. AMCO sought a declaration that it owed no duty to defend or indemnify because of its policy’s knowledge of falsity exclusion from the advertising injury coverage. The district court agreed, and the court of appeals reversed.
3M alleged that Inspired’s ads depicted 3M’s tape in false and deceptive ways, including a doctored “Actual Photo,” videos purportedly demonstrating poor performance by 3M that actually didn’t represent equal stresses applied to the parties’ products, and tests that weren’t reliable or typical. 3M included a claim for enhanced damages under the Lanham Act due to Inspired’s willfulness, and in response to interrogatories it said, for example, “It is apparent that, rather than use an ‘actual photo’ of 3M tape, ITI manipulated a tape image by, among other things, replicating a photo to create a repeating pattern. Such replication could only occur through intent to deceive.”
The court of appeals rather easily concluded that the district court erred by failing to recognize that, under Minnesota law, a duty to defend all claims exists when any one claim arguably is covered by the policy's language. It was not error to look at the interrogatory answers, even though duty to defend is generally determined by the allegations of the complaint. The complaint isn’t controlling when actual facts within the insurer’s knowledge clearly establish the existence or nonexistence of a duty to defend. Interrogatory answers are sworn and admissible to the extent allowed by the FRE, so it was okay to look at them. However, it was error to conclude that the answers triggered the knowledge of falsity exclusion. The answers on which the court relied didn’t reflect alleged knowledge of falsity as to all the purportedly unfair ads. 3M discussed the purported “actual photos,” but there were other claims in the case, including unreliable testing, which could have been intentional or merely negligent. (Or, I should add, merely wrong.)
To prevail, a Lanham Act plaintiff need not prove knowledge of falsity. “The district court thus focused on some of the conduct alleged to prove the claim rather than the global claim itself.”
Saturday, August 13, 2011
IPSC session 8
Invention/ Teaching
Eric E. Johnson, University of North Dakota School of Law, Intellectual Property and the Incentive Fallacy
IP is nonexcludable and nonrival. Presumption that people need incentives. Rejected by controlled experiments, empirical historical research, etc. There is inherent motivation to engage in creative and innovative activity and share that without the necessity of external incentives. The theory behind the public goods idea of “promoting the progress” needs to be replaced with post-classical economics. We know more about physics than we did in the 18th century; likewise economics.
Note that history of copyright is not one of promotion, rather of aid of censorship; letters patent were designed to provide monopolies (and promote tech transfer from other countries). The d’etre came before the raison. Copyright and patent theory formed from what was left after destroying royal monopoly/censorship.
Research: reward effects in experiments show that tangible rewards (IP, government awards) have a substantially negative effect on instrumental motivation. People lose excitement and vitality. Wasn’t talking about IP specifically, but is a psychological truth. Compensation doesn’t solve a problem in this account, it is a problem. People want to engage in activities because they are interesting and evolving. Art Institute of Chicago: extrinsic motivation was negatively correlated with career success 20 years down the line.
Kind cite to my piece on noneconomic motivations. Public goods problem is not the general condition. Large capital investments are no longer needed to publish. Stock photo market has changed: prices have collapsed, and now you can get a stock photo for $.14, and photographers get only a portion of this—cannot be explained by classical theory. Many are intrinsically motivated to create. One guy received $30 for having his photo appear on the cover of Time.
Exceptions to the classical rule now swallow the rule. Innovation and creative production will generally flourish without external incentives, though there are exceptions.
Big problem: the problem of the firm—large organizations working together to create creative products. Even there, except for a few industries, IP doesn’t have much effect.
Prescriptions for scholarship: A general appeal to the public goods problem commits a fallacy. We cannot expect that more rights means more stuff. For policy: copyright and patent should be sunsetted to the extent they’re based on incentive theory. We should look at industries/situations case by case.
Q: how do people create and earn enough to live on through creating, as opposed to during their free time? He grew the most as a musician when he was doing it professionally, when he could invest. Well-meaning amateurs aren’t enough.
A: that ought to be the default. It may be that industries need incentive effects.
Grimmelman: noncommercial systems can flourish without copyright, but how do we get animation studios? Voluntary creativity is easier in a world with copyright than vice versa.
A: copyright and patent create losses as well. Individual opt-out is not enough.
Grimmelman: then individual content will just outcompete the paid stuff—the amateurs undercut the professional photographers.
A: putting aside whether competition covers the losses incurred by copyright/patent, there is a crowding out effect. Compensating people can decrease their motivation to engage. (I thought there was some evidence that the kind of compensation matters, which has serious implications for patronage v. copyright.)
Q: lots of people engage in amateur sports but they’re better at it if they get paid. I pay to run in the Boston Marathon, but we should still seek to compensate people at the high quality end.
A: he agrees, and he can’t say we’d get all we wanted without copyright. But the belief that creative works require external incentives is just false. Yes, people need to eat, but a lot of people who create art for free do eat. (Look at me!)
Q: some things can be done in spare time, and some can’t.
A: agrees, and his point is that we’ve regarded the public goods problem as the central truth, but it’s not.
Q: lost first mover advantage in the digital environment.
A: yet amateur digital content is exploding.
IP Clause and 1st Amendment
David Ardia, University of North Carolina - Chapel Hill School of Law, Speech Unjoined
Libel plaintiffs have long been allowed only monetary remedies, not injunctions. Injunctions are presumptively unconstitutional as prior restraints. Is this true/good doctrine today? Recent decisions by lower courts have approved injunctions, and this is particularly important for online defamation. Concludes that limited injunctive relief may be appropriate for fully adjudicated matters of private concern found to be defamatory—challenges in structuring a remedy that would be effective.
Prior restraint: prior to what? Consensus appears to be that the doctrine is primarily implicated when the restriction is imposed prior to public dissemination. Some scholars say you have to distinguish between prior and subsequent sanctions, others say the First Amendment is just as concerned with subsequent punishments. Subsequent punishments can dissuade speech as well. But it feels different. A free society prefers to punish the few who abuse the liberty rather than throttle people generally.
Not retracing ground excellently covered by Lemley & Volokh in their article on preliminary injunctions; he wants to think about permanent injunctions. How the doctrine should function: partially litigated prior restraints (preliminary injunctions) never allowed in defamation cases. Fully litigated prior restraints presumptively unconstitutional—Near v. Minnesota said something like troop movements would be an exception. Partially litigated post-publication restraints are likely unconstitutional, though there’s little precedent. But fully litigated post-publication restraints are where the questions are; the Supreme Court has never weighed in.
Problems of overbreadth or underinclusiveness. Even if drafted well, there’s leakage—other blogs might pick up the statement. Time and context also affect whether something is defamatory. Procedural protections for criminal/civil sanctions are less—an enjoined party is collaterally barred from challenging the underlying law, so they can’t defend the statement, only deny saying it.
California SCt held that a narrowly tailored injunction against particular continuing course of speech was acceptable (woman making claims about a bar across the street from her, that it served minors and hosted prostitutes).
Pretty good argument that speech online is irreparable. Echoes of defamation persist. Many defendants are judgment-proof, at least that’s what people believe, though it’s not clear what the empirics are. Old case: plaintiff’s argument that it should get an injunction because the defendant was destitute was rejected.
Liability is disaggregated online, both through publisher/distributor liability and through §230. All of this makes it difficult to think about effective remedies.
Solution: Injunctive relief should be permitted in some cases after final judgment. Relates to matter of private concern (wouldn’t apply to public figures); narrowly tailored; injunction is reparative; no collateral bar rule in enforcement proceedings; no injunctions directed at future speech like “obey the law” or directed at broad subject matter.
Should it be applicable to third parties? Without that, it might not be effective. But with that, it creates significant problems. RipoffReport won’t take down your content even if you ask/even if it’s been found defamatory.
Heymann: How would narrow tailoring work? Isn’t that just a game of whack-a-mole? Is there a substantial similarity analysis?
A: this is often an issue; courts do put an injunction in “similar” terms, but his proposal wouldn’t cover that. Injunction can only require removal, not bar repetition.
Felix Wu: with such a narrow remedy, what’s the harm in applying it to third parties? If we’re worried about speech interests of public at large, then it’s not really going to matter who you apply this injunction to.
A: that’s more or less where he comes down. But implementation is a challenge. Often p sues and d defaults. P goes to online host with default judgment. His §230 study suggests that most hosts take that material down. But what do you do if the host won’t? If the incentive for the p is to sue in a remote jurisdiction, do we allow default judgments to count here? His tentative answer is no.
Ramsey: Third parties should never have monitoring duties. Put the burden on plaintiff to notify third party.
A: General knowledge, already taken care of by §230. Notice of a judgment can be very important for an intermediary, though: onus on plaintiff to notify as to the exact words; this allows d to evade.
My q: why exclude public figures/substantially similar statements? Why would either of those things be entailed by the considerations you focus on? Why not be willing to put liability on the individual (including for saying substantially similar things) and then not put duties on the intermediary? If you say the intermediary could be liable for failing to remove content, you are either saying that (1) the circumstances described satisfy the malice requirement as to the intermediary; perhaps notice of the judgment means the intermediary satisfies the malice standard, which is a possibility, or (2) malice is no longer required.
A: That is the key issue.
Marc H. Greenberg, Golden Gate University School of Law, Comics, Courts and Controversy: A Case Study of the Comic Book Legal Defense Fund
The project is under revision; will look at copyright termination and derivative works issues, including Roy Lichtenstein’s appropriation of romance comics from the 1950s and later deal-cutting with the copyright owners.
Definitional: calling the material comics. A vast majority of the material isn’t funny. First comic books in the US were bound versions of Sunday funnies. This is important because it set a concept/tone in public perception that these are literary works for kids, meaning we should scrutinize them to make sure they’re not bad for kids.
Better term: sequential art. Telling stories through visual/sequential medium. Error in definition led us to suppressing horror comics. Appealing to audience of 10-year-old boys (do we know this from any reliable empirics? People make those claims about anime/manga in the US, ignoring all the women/girl fans). Error in attributing juvenile delinquency to comics because delinquents, like all other kids, read comics.
Comics Code suppressed horror, other things. 1960s gave rise to underground comix, with a lot of explicit sex. Art Crumb, Art Spiegelman, etc. Were prosecuted as obscene works. This led to the foundation of the Comic Book Legal Defense Fund. Cases brought against comic book dealers threatening them with hard time. Christopher Handley case: described as traditional geek who lives in mom’s basement; his hobbies are church and reading manga. He read hentai (explicit sexual comics with young girls). He ordered some. Despite Stanley v. Georgia, saying you have the right to have obscene materials in your own home, it’s not lawful to transport the obscenity to your home. You have to create your own obscenity!
Postal inspector was tipped off, opened the package, and Handley was arrested under the PROTECT Act. This came after the Ashcroft case invalidating the virtual child porn offenses (not featuring real children). Congress passed a new law saying that if you have a obscene graphic depiction that appears to be children engaged in sex, you can get 5 years for a first offense. Handley argued Stanley v. Georgia, but the court said he was transporting it. How do you know the children are under 18? They are a drawing, not an 18-year-old dressed to look 15. It’s a drawing. Unsuccessful on a motion to dismiss. Handley plea bargained to 6 months in prison, 1200 manga seized (7 were the subject of prosecution). CBLDF is concerned about First Amendment implications.
Obscene materials are not protected under the First Amendment, so prosecution argues that all it needs is some justification for going forward. But is obscenity really outside the First Amendment? If we can’t define it with certainty, we can’t say it’s outside the First Amendment. Also, the causal link to harm simply isn’t there. Study after study concluded that, if anything is harmful, it’s violence. But the SCt says that violence is okay. Should back off from prosecuting when there is no person involved.
Ramsey: gateway drug—if people like graphic depictions, they might go to actual child porn. Can’t the government decide to ban the gateway?
A: The counter is the catharsis effect—presence of this material, particularly when you don’t exploit any humans, provides a way to prevent actual conduct. In Japan, which has a high concentration of violent explicit sexual material in cartoons, has one of the lowest rape rates in the developed world. State by state comparisons in the US also find no correlation—no evidence of causation from the presence of this material.
Hughes: Why not download it?
A: you can do that. CBLDF is now defending a case where a guy had material on his laptop and was crossing the border.
Q: politics—this is a way of scoring easy points. What’s the political economy?
A: right, we don’t have an effective lobby of producers of graphic sexual material. Courts are the only recourse. If what we’re really talking about is something we find socially disturbing, we fine it/put the seller out of business. The penalties are so disproportionate, especially in graphic cases not involving photographs.
Hughes: why doesn’t the CBLDF advise comic book artists to establish a character log with an age given? Equivalent to the filed ID in porn.
A: difficulty in contrast to live models is that ID proves something with live models. With graphics it becomes a jury question. This came up in one of the cases: jury was instructed to use its own perception.
Hughes: courts should give weight to authorial intent.
Rosenblatt: one of the cases—the images depicted were of a well-known character who’s 3000 years old.
A: but the reaction of the prosecutors has been “it looks like a child.”
And that’s it. Thanks to the organizers for another great event!
Eric E. Johnson, University of North Dakota School of Law, Intellectual Property and the Incentive Fallacy
IP is nonexcludable and nonrival. Presumption that people need incentives. Rejected by controlled experiments, empirical historical research, etc. There is inherent motivation to engage in creative and innovative activity and share that without the necessity of external incentives. The theory behind the public goods idea of “promoting the progress” needs to be replaced with post-classical economics. We know more about physics than we did in the 18th century; likewise economics.
Note that history of copyright is not one of promotion, rather of aid of censorship; letters patent were designed to provide monopolies (and promote tech transfer from other countries). The d’etre came before the raison. Copyright and patent theory formed from what was left after destroying royal monopoly/censorship.
Research: reward effects in experiments show that tangible rewards (IP, government awards) have a substantially negative effect on instrumental motivation. People lose excitement and vitality. Wasn’t talking about IP specifically, but is a psychological truth. Compensation doesn’t solve a problem in this account, it is a problem. People want to engage in activities because they are interesting and evolving. Art Institute of Chicago: extrinsic motivation was negatively correlated with career success 20 years down the line.
Kind cite to my piece on noneconomic motivations. Public goods problem is not the general condition. Large capital investments are no longer needed to publish. Stock photo market has changed: prices have collapsed, and now you can get a stock photo for $.14, and photographers get only a portion of this—cannot be explained by classical theory. Many are intrinsically motivated to create. One guy received $30 for having his photo appear on the cover of Time.
Exceptions to the classical rule now swallow the rule. Innovation and creative production will generally flourish without external incentives, though there are exceptions.
Big problem: the problem of the firm—large organizations working together to create creative products. Even there, except for a few industries, IP doesn’t have much effect.
Prescriptions for scholarship: A general appeal to the public goods problem commits a fallacy. We cannot expect that more rights means more stuff. For policy: copyright and patent should be sunsetted to the extent they’re based on incentive theory. We should look at industries/situations case by case.
Q: how do people create and earn enough to live on through creating, as opposed to during their free time? He grew the most as a musician when he was doing it professionally, when he could invest. Well-meaning amateurs aren’t enough.
A: that ought to be the default. It may be that industries need incentive effects.
Grimmelman: noncommercial systems can flourish without copyright, but how do we get animation studios? Voluntary creativity is easier in a world with copyright than vice versa.
A: copyright and patent create losses as well. Individual opt-out is not enough.
Grimmelman: then individual content will just outcompete the paid stuff—the amateurs undercut the professional photographers.
A: putting aside whether competition covers the losses incurred by copyright/patent, there is a crowding out effect. Compensating people can decrease their motivation to engage. (I thought there was some evidence that the kind of compensation matters, which has serious implications for patronage v. copyright.)
Q: lots of people engage in amateur sports but they’re better at it if they get paid. I pay to run in the Boston Marathon, but we should still seek to compensate people at the high quality end.
A: he agrees, and he can’t say we’d get all we wanted without copyright. But the belief that creative works require external incentives is just false. Yes, people need to eat, but a lot of people who create art for free do eat. (Look at me!)
Q: some things can be done in spare time, and some can’t.
A: agrees, and his point is that we’ve regarded the public goods problem as the central truth, but it’s not.
Q: lost first mover advantage in the digital environment.
A: yet amateur digital content is exploding.
IP Clause and 1st Amendment
David Ardia, University of North Carolina - Chapel Hill School of Law, Speech Unjoined
Libel plaintiffs have long been allowed only monetary remedies, not injunctions. Injunctions are presumptively unconstitutional as prior restraints. Is this true/good doctrine today? Recent decisions by lower courts have approved injunctions, and this is particularly important for online defamation. Concludes that limited injunctive relief may be appropriate for fully adjudicated matters of private concern found to be defamatory—challenges in structuring a remedy that would be effective.
Prior restraint: prior to what? Consensus appears to be that the doctrine is primarily implicated when the restriction is imposed prior to public dissemination. Some scholars say you have to distinguish between prior and subsequent sanctions, others say the First Amendment is just as concerned with subsequent punishments. Subsequent punishments can dissuade speech as well. But it feels different. A free society prefers to punish the few who abuse the liberty rather than throttle people generally.
Not retracing ground excellently covered by Lemley & Volokh in their article on preliminary injunctions; he wants to think about permanent injunctions. How the doctrine should function: partially litigated prior restraints (preliminary injunctions) never allowed in defamation cases. Fully litigated prior restraints presumptively unconstitutional—Near v. Minnesota said something like troop movements would be an exception. Partially litigated post-publication restraints are likely unconstitutional, though there’s little precedent. But fully litigated post-publication restraints are where the questions are; the Supreme Court has never weighed in.
Problems of overbreadth or underinclusiveness. Even if drafted well, there’s leakage—other blogs might pick up the statement. Time and context also affect whether something is defamatory. Procedural protections for criminal/civil sanctions are less—an enjoined party is collaterally barred from challenging the underlying law, so they can’t defend the statement, only deny saying it.
California SCt held that a narrowly tailored injunction against particular continuing course of speech was acceptable (woman making claims about a bar across the street from her, that it served minors and hosted prostitutes).
Pretty good argument that speech online is irreparable. Echoes of defamation persist. Many defendants are judgment-proof, at least that’s what people believe, though it’s not clear what the empirics are. Old case: plaintiff’s argument that it should get an injunction because the defendant was destitute was rejected.
Liability is disaggregated online, both through publisher/distributor liability and through §230. All of this makes it difficult to think about effective remedies.
Solution: Injunctive relief should be permitted in some cases after final judgment. Relates to matter of private concern (wouldn’t apply to public figures); narrowly tailored; injunction is reparative; no collateral bar rule in enforcement proceedings; no injunctions directed at future speech like “obey the law” or directed at broad subject matter.
Should it be applicable to third parties? Without that, it might not be effective. But with that, it creates significant problems. RipoffReport won’t take down your content even if you ask/even if it’s been found defamatory.
Heymann: How would narrow tailoring work? Isn’t that just a game of whack-a-mole? Is there a substantial similarity analysis?
A: this is often an issue; courts do put an injunction in “similar” terms, but his proposal wouldn’t cover that. Injunction can only require removal, not bar repetition.
Felix Wu: with such a narrow remedy, what’s the harm in applying it to third parties? If we’re worried about speech interests of public at large, then it’s not really going to matter who you apply this injunction to.
A: that’s more or less where he comes down. But implementation is a challenge. Often p sues and d defaults. P goes to online host with default judgment. His §230 study suggests that most hosts take that material down. But what do you do if the host won’t? If the incentive for the p is to sue in a remote jurisdiction, do we allow default judgments to count here? His tentative answer is no.
Ramsey: Third parties should never have monitoring duties. Put the burden on plaintiff to notify third party.
A: General knowledge, already taken care of by §230. Notice of a judgment can be very important for an intermediary, though: onus on plaintiff to notify as to the exact words; this allows d to evade.
My q: why exclude public figures/substantially similar statements? Why would either of those things be entailed by the considerations you focus on? Why not be willing to put liability on the individual (including for saying substantially similar things) and then not put duties on the intermediary? If you say the intermediary could be liable for failing to remove content, you are either saying that (1) the circumstances described satisfy the malice requirement as to the intermediary; perhaps notice of the judgment means the intermediary satisfies the malice standard, which is a possibility, or (2) malice is no longer required.
A: That is the key issue.
Marc H. Greenberg, Golden Gate University School of Law, Comics, Courts and Controversy: A Case Study of the Comic Book Legal Defense Fund
The project is under revision; will look at copyright termination and derivative works issues, including Roy Lichtenstein’s appropriation of romance comics from the 1950s and later deal-cutting with the copyright owners.
Definitional: calling the material comics. A vast majority of the material isn’t funny. First comic books in the US were bound versions of Sunday funnies. This is important because it set a concept/tone in public perception that these are literary works for kids, meaning we should scrutinize them to make sure they’re not bad for kids.
Better term: sequential art. Telling stories through visual/sequential medium. Error in definition led us to suppressing horror comics. Appealing to audience of 10-year-old boys (do we know this from any reliable empirics? People make those claims about anime/manga in the US, ignoring all the women/girl fans). Error in attributing juvenile delinquency to comics because delinquents, like all other kids, read comics.
Comics Code suppressed horror, other things. 1960s gave rise to underground comix, with a lot of explicit sex. Art Crumb, Art Spiegelman, etc. Were prosecuted as obscene works. This led to the foundation of the Comic Book Legal Defense Fund. Cases brought against comic book dealers threatening them with hard time. Christopher Handley case: described as traditional geek who lives in mom’s basement; his hobbies are church and reading manga. He read hentai (explicit sexual comics with young girls). He ordered some. Despite Stanley v. Georgia, saying you have the right to have obscene materials in your own home, it’s not lawful to transport the obscenity to your home. You have to create your own obscenity!
Postal inspector was tipped off, opened the package, and Handley was arrested under the PROTECT Act. This came after the Ashcroft case invalidating the virtual child porn offenses (not featuring real children). Congress passed a new law saying that if you have a obscene graphic depiction that appears to be children engaged in sex, you can get 5 years for a first offense. Handley argued Stanley v. Georgia, but the court said he was transporting it. How do you know the children are under 18? They are a drawing, not an 18-year-old dressed to look 15. It’s a drawing. Unsuccessful on a motion to dismiss. Handley plea bargained to 6 months in prison, 1200 manga seized (7 were the subject of prosecution). CBLDF is concerned about First Amendment implications.
Obscene materials are not protected under the First Amendment, so prosecution argues that all it needs is some justification for going forward. But is obscenity really outside the First Amendment? If we can’t define it with certainty, we can’t say it’s outside the First Amendment. Also, the causal link to harm simply isn’t there. Study after study concluded that, if anything is harmful, it’s violence. But the SCt says that violence is okay. Should back off from prosecuting when there is no person involved.
Ramsey: gateway drug—if people like graphic depictions, they might go to actual child porn. Can’t the government decide to ban the gateway?
A: The counter is the catharsis effect—presence of this material, particularly when you don’t exploit any humans, provides a way to prevent actual conduct. In Japan, which has a high concentration of violent explicit sexual material in cartoons, has one of the lowest rape rates in the developed world. State by state comparisons in the US also find no correlation—no evidence of causation from the presence of this material.
Hughes: Why not download it?
A: you can do that. CBLDF is now defending a case where a guy had material on his laptop and was crossing the border.
Q: politics—this is a way of scoring easy points. What’s the political economy?
A: right, we don’t have an effective lobby of producers of graphic sexual material. Courts are the only recourse. If what we’re really talking about is something we find socially disturbing, we fine it/put the seller out of business. The penalties are so disproportionate, especially in graphic cases not involving photographs.
Hughes: why doesn’t the CBLDF advise comic book artists to establish a character log with an age given? Equivalent to the filed ID in porn.
A: difficulty in contrast to live models is that ID proves something with live models. With graphics it becomes a jury question. This came up in one of the cases: jury was instructed to use its own perception.
Hughes: courts should give weight to authorial intent.
Rosenblatt: one of the cases—the images depicted were of a well-known character who’s 3000 years old.
A: but the reaction of the prosecutors has been “it looks like a child.”
And that’s it. Thanks to the organizers for another great event!
IPSC session 7
Fair Use and the Web
Michael D. Murray, Valparaiso University School of Law, What Is Transformative? An Explanatory Synthesis of the Convergence of Transformation and Predominant Purpose in Copyright Fair Use Law
His perspective comes from teaching art law as well as copyright. Didn’t think fair use was a terrible morass, but following Sag, Netanel, Beebe, and Samuelson, wanted to look at court of appeals cases from a different perspective. His question: is transformativeness one part of factor one, or does it work on all four factors? He thinks it’s the latter—transformative works are fair. Outlier cases are hard to reconcile, but wants to bring them in.
There has to be a change in predominant purpose from the original to the copy. Change in content; function (search engine cases); meaning, message, genre, or recontextualization (Blanch v. Koons); comment and criticism. What doesn’t work? If you allow the valuable, creative expression of the original work to shine through in the second work—this explains Gaylord v. Postal Service, Dr. Seuss Enters., Salinger v. Colting. If you allow the value of the first work to shine through then you’re not transformative. If you overwhelm it with new creative expression then you can still allow it to be seen—Naked Gun 33 1/3 case, Blanch v. Koons. You can’t repackage the valuable expression of the original in a new context/genre/medium but with a similar function or purpose. (I don’t get how this is more than a restatement of a conclusion; looked at from different aesthetic perspectives, the original shines through or not in the Pretty Woman case, Perfect 10, and cases on both sides.) In Gaylord, the photo’s purpose was to memorialize and celebrate Korean War veterans, as was the sculpture’s. (But purpose is not creative expression. In fact, we have extensive doctrine about what’s special and creative about photographic representations of 3-D objects.)
Q: is this helpful? To the questioner, the message in the Dr. Juice book overwhelmed the style because the Simpson murder trial was so disgusting. In Liebovitz, you see Demi Moore’s body and Leslie Nielsen’s head—this standard seems so subjective.
A: but the art was Dr. Seuss’s eye-catching style. You can still appreciate the creative work of Dr. Seuss, even though the meaning and genre differ. (Isn’t this also true of the riff in 2 Live Crew’s Pretty Woman? Or the seductive gleam of the legs in Blanch’s photograph?)
Samson Vermont: consider expression that the copyright owner is likely to create and expression it’s not. Perfect 10/Google: odds were nil that Perfect 10 was going to use images as reference tools in search engine. Change in purpose is not enough; has to be change copyright owner is unlikely to make.
A: Agrees.
Vermont: not clear how factor 2 can be boiled down to transformation.
Haochen Sun: what about the value of nontransformative use? Kind cite to my piece on the value of copying. What’s the consequence for nontransformative uses if we pay so much attention to transformation?
A: There’s a culture of self-expression/self-actualization, but he doesn’t think that the cases are working out that way. Even with a First Amendment purpose, you have to fit the criteria.
Eric Johnson: he tells his students that the most important part of the phrase fair use is “fair.” This is really about drilling down into the analytical framework of fairness, fleshing out the intuition in a way that can be evaluated by onlookers. Do you think your perspective fits with that or are you saying something else?
A: the idea is the First Amendment value of creating new expression. If that’s fairness, that’s borne out by the case law.
Tracy Reilly, University of Dayton School of Law, Good Fences Make Good Neighboring Rights: The German Federal Court Rules on the Digital Sampling of Sound Recordings in Metall auf Metall
Digital sampling is physical replication for use in another song: implicates the musical work as well as the sound recording. Is this legitimate art or theft? Most folks fall where she does, that there is a middle ground. Now sampling equipment is cheap. Sound recordings need incentives: record companies need to recoup their costs of production/promotion.
Led Zeppelin, When the Levee Breaks, 1971: they rented a mansion reported to be haunted in the middle of England. The resulting drum sound is immediately recognizable to a fan. (I’m interested in the language of recognizability given earlier discussions of trademark concerns creeping into copyright and vice versa.) Enigma’s Return to Innocence sampled the drum portions of the recording. This song remains widely sampled, often without a license.
Exclusive rights in US law are limited by fair use as well as by the de minimis defense, except in courts following the Sixth Circuit’s Bridgeport decision which eliminated the de minimis defense for sound recordings. Any sampling without permission is a per se taking. “Get a license or do not sample.” German court picks up on this theme: “Even when a small part is sampled … the part taken is something of value.”
German notion of neighboring rights: not copyright for sound recordings; not considered to be intellectual creations. Granted sometimes to performers but more usually to producers/technical folks responsible for tech/financial contributions. Kraftwerk v. Moses Pelham. Kraftwerk’s Metall Auf Metall was sampled by defendants’ Nur muir. Supreme Court said even if the core of the song hadn’t been taken, the partial reproduction interferes with the rights of the producer of the phonogram. Quality or quantity of plaintiff’s song is irrelevant. There’s a market out there for even the smallest snippets of recordings.
Strange twist: just as Bridgeport held that fair use could apply, the German court said the concept of free use could also apply if satisfied. Bridgeport gave no guidelines on how fair use should be treated in the sampling context, but Kraftwerk gave some odd/impossible guidelines: free use is a defense unless the defendant could reproduce the sounds from the plaintiff on its own or unless the d sampled a recognizable melody. How do we test this in a court? Do we test d’s talent? Financial wherewithal? Bad precedent, because the more unique a sound is, the more likely the d can have a free use defense. (Why is that bad?) Recognizable melody constraint is better—she’d like to propose a refinement of fair use for sampling: to prevail on a defense, d must prove transformativeness but also that p’s song is not recognizable to an average layperson. That would be a proper balance. (Why? What makes sound recordings different from works produced by other successful artists?) Famous artists should be compensated when others use recognizable sound recordings?
Matt Sag: New book by Kembrew McLeod on dysfunctional sampling market in the US—you can’t clear multiple samples, even with millions of dollars and six months to do it.
A: not having enough money to buy the sample doesn’t mean the market doesn’t work.
Sag: but these are also transaction costs.
A: flip side: Pink Floyd, Led Zeppelin, intentionally want to keep their techniques obscure and don’t want to license. They have that right to avoid dilution. People will pay if they have enough money.
Justin Hughes: Sampling problem may go away with tech. You no longer have to rent a castle to reproduce that sound if you have a gifted ear. Real argument that for all the ink spilled, it’s just going to go away as a matter of tech. One great sound engineer per studio.
A: True. Problem is that there are tracks that are hard to replicate, created in analog, and there’s still a market.
I asked my questions in parentheses above.
A: because sound recording copyrights have limits that other works don’t—no performance rights. Thus any part taken is economically viable. (This is like the statement in Eldred that term extension was balanced by letting small businesses play the radio for free. These are different people affected differently. Suppressing x’s expression doesn’t compensate y. Nor does this distinguish sound recordings in Germany, where there are performance rights in sound recordings, nor increasingly where there are digital performance rights even in the US. And, of course, the “economically viable” idea is entirely circular, especially in cases like Bridgeport where the sample is not recognizable.)
McGeveran: if you think it’s ok to imitate really well, then why is recognizability important?
A: because people can’t actually imitate/recreate the sound. There’s a reason sound recording rights are different, and thus any reproduction is a violation. (Those two sentence halves don’t have a logical relationship. The reason sound recording rights are different in the US are historical, and in Germany, as she pointed out, theoretical—the thought is that they aren’t intellectual creations in the same way as musical works, and while we might think that justification is bunk, it doesn’t mean that a reproduction of any fraction of the work is logically entailed in either version of the right.)
Exhaustion and License
Christopher Newman, George Mason University School of Law, “What Exactly Are You Implying?”: Rethinking the Legal Basis for Implied Copyright Licenses
Courts often say in passing that a license is a contract, often a contract not to sue. We get arguments over implied contracts whether they’re implied in fact or in law. He thinks this is wrong. It’s not contract but property. The grant of a license may serve as consideration; a licensor may bind herself contractually not to revoke a license; the actions that result in a license may serve in the creation of a written instrument that memorializes the agreement; but the license itself is a form of property. This doesn’t result in radically altering case law, but it would clean up some confusing/muddy reasoning. May also allow us to tackle more difficult problems later.
First step: what is the distinction between transfer of property interests and contract? Economists: Contract is a means by which we transfer property rights. Lawyers: contracts are means by which we enforce promises. If I promise to transfer property rights and renege, you don’t get the property right as a matter of law. Even if we provide specific enforcement, I will be ordered to perform the specific rituals resulting in transfer of title. Moreover, I can transfer title without a contract. I can even give stuff to you! Conversely, I can’t use contract to alter the rules by which property is transferred. I can agree with Yvette that whenever I wave my hand over something it becomes Yvette’s, but that won’t be recognized as binding on third parties.
This has important implications for first sale, but he’s not going there right now. The question whether a given transaction transferred title, though, can’t be simply answered by contract law.
What is a license? A grant of privilege that is product of your baseline right to assign use of an owned resource.
Is it proper to characterize a bare license as a property interest? Traditional property doctrine denied this because licenses are presumptively revocable at will, and property rights should be good against the world. Only license by deed would be a property interest.
Hohfield: we should regard every privilege to use as an interest, just varying in characteristics. He goes further: even a revocable license gives rise to irrevocable alterations in the landscape of possible in rem claims. Even revocable licenses are not retroactively revocable. If I act while I have a license, my actions under that license will be forever immune to your attack.
If you thought a license was just a contract not to sue, the analysis would be different. The grantor would simply be under contract promising not to sue, even though I could in principle be held liable. Suppose I commit a material breach of the contract resulting in termination: if my earlier acts are within the statute of limitations, you should be able to sue for acts while license was in force. But no one has ever thought this is how license law should work. This is one reason why a license isn’t really just a promise not to sue.
Most licenses are granted by means that objectively manifest intent to permit use. Relevant law is federal for copyright. Thus proper for federal courts to develop federal common law of implied copyright licenses, which they mostly do, though occasionally they worry about contract. Field v. Google: posting content without metatags is an objective manifestation of intent to allow caching. In no sense did the parties have a contract. The license was revocable at will, but the only proper means was to use the metatags.
Thornier cases: author creates and delivers work for parties’ use and agreement fails to address copyright. Effects v. Cohen: a bit divided on the nature of the license. Sounds like a property paradigm at first—Effects created a work, handed it over with objective manifestation of intent that d use it. But then footnote characterizes this as implied in fact contract. That would suggest that objective manifestation of intent wouldn’t be the issue, but rather meeting of the minds. And that’s led courts to hold that there can be no nonexclusive license where parties tried to create exclusive license but failed to make it written, and thus we’re left with no license at all. This leads to messy tap dancing. Better result: failure to comply with §204 defeats exclusivity, but does not affect objective manifestation of consent to use—First Circuit has the best approach to this, doesn’t care about subjective intent.
Why is the implied license in Effects irrevocable? Court’s answer is unsatisfying. Contract paradigm: we’re willing to imply a grant, but we’re not willing to imply a condition precedent of full payment of consideration. If this is an implied in fact contract, we should at least consider whether this was a condition precedent. One-sided ratchet if conditions precedent can never be implied. Better way: traditional common law of licenses. Historical common law, only two ways to make license irrevocable—one by deed, and another by incident to some other valid grant of a property right. If you grant rights to a haystack on your land, you can’t then deny right to enter the land to take it away. Analogy to Effects: delivery of specifically ordered work product. Once we’ve agreed that a particular delivery with an understood purpose is a grant, then it makes sense to say you can’t defeat the purpose of the grant through arbitrary revocation.
Grimmelman: doesn’t state law also govern other means of transferring, like gifts? Symbolic delivery plus acceptance might be the right frame.
A: Easy answer (will do more) is to do choice of law analysis. Intangible right created by federal law = look at federal law.
My reaction, which is not well formed: it seems to me there’s been a similar move in real property (e.g., MERS) for property owners to decide that they want to opt in to contract principles and out of traditional property transfer principles, as part of a status-to-contract move. It hasn’t worked well, but it’s certainly been tried. Is this project about conceptual cleanliness or is there something substantively wrong with a system that treats property as if it were contract? (E.g., consequences to third parties as a result of agreeing to ignore the property rules.)
Daniela Simone, University of Oxford, Copyright or Copyleft? Wikipedia as a Turning Point for Authorship
Not clear that Wikipedia contributors meet standards for joint authorship. Wikipedia’s community culture supports the idea of a common design among contributors, and in the UK there’s no requirement to prove intent, but it’s hard to prove collaboration without intent to work together. Should we infer intent from voluntary creation of work in an environment emphasizing interactivity (editability) as is clear with Wikipedia? Must reflect skill, judgment, creativity to be copyrightable, though the contribution itself need not be copyrightable. Software tester wasn’t joint author despite time and technical contributions, because work was more like proofreading than authorship. Following this reading, editing/resolving disputes are unlikely to count as the right kind of labor. Contribution also has to be more than merely trivial, which would exclude small contributions. Unlikely/uncertain that some Wikipedia contributors would be considered joint authors of pages to which they contribute.
Licenses police authorship/Wikipedia’s notion of collective creativity/non-authorship. Anyone may copy/modify text under appropriate circumstances—attribution, though commerciality is allowed. Such licenses are prevalent, but few cases on their validity. Federal Circuit has held enforceable as contracts, though she doesn’t find that persuasive given problems with consideration. Best seen as bare licenses rather than as a foundation for a breach of contract claim.
Wikipedia doesn’t fit neatly within copyright law’s conceptions. It’s not even a work capable of being finished. Copyleft can alleviate this uncertainty in practice. Culture of sharing relies on and is partly constituted by copyleft, but the legal effect and desirability of such licenses are unclear. Authorship and ownership are separated in Wikipedia in the name of greater good in a way they aren’t in copyright law. Seems to undermine instrumental justifications for copyright law. Is this something copyright just need not concern itself with? (Though Wikipedia demonstrably needs to worry about copyright!) Remains to be seen whether copyright will be stretched over time to cover Wikipedia, or whether Wikipedia will help rewrite meaning of authorship.
McGeveran: isn’t contract required? Is this a problem of copyleft license?
A: she’s cautious about copyleft licenses because of ambiguities, but yes, some agreement-based solution is required.
McGeveran: is the Facebook solution better?
A: no, not as a rule.
Betsy Rosenblatt: this is an IP-negative space because everyone’s part of the community. If we took the community away, would there be something copyrightable left behind? The platform might own it, no one might own it, or someone might own it but it’s hard to figure out who. What’s your take?
A: someone potentially owns it but it’s hard to figure out who.
Rosenblatt: then useful analogy is screenwriting, where authorship is difficult to figure out but they do it anyway; WGA arbitration can decide whose contributions mattered for purposes of credit.
Glynn Lunney: if you’ve contributed enough, you might be a joint author of every page. Or just the entry you worked on. Or you’re not a joint author but you have copyright in your contribution. US law probably would take the last option, since we don’t like the joint author default rules of equal shares.
A: wouldn’t it be too small to be a work?
Lunney: not in the US; almost anything will qualify. So which of those three is best?
A: her argument is that Wikipedia doesn’t need copyright, so she doesn’t want to pick.
Michael D. Murray, Valparaiso University School of Law, What Is Transformative? An Explanatory Synthesis of the Convergence of Transformation and Predominant Purpose in Copyright Fair Use Law
His perspective comes from teaching art law as well as copyright. Didn’t think fair use was a terrible morass, but following Sag, Netanel, Beebe, and Samuelson, wanted to look at court of appeals cases from a different perspective. His question: is transformativeness one part of factor one, or does it work on all four factors? He thinks it’s the latter—transformative works are fair. Outlier cases are hard to reconcile, but wants to bring them in.
There has to be a change in predominant purpose from the original to the copy. Change in content; function (search engine cases); meaning, message, genre, or recontextualization (Blanch v. Koons); comment and criticism. What doesn’t work? If you allow the valuable, creative expression of the original work to shine through in the second work—this explains Gaylord v. Postal Service, Dr. Seuss Enters., Salinger v. Colting. If you allow the value of the first work to shine through then you’re not transformative. If you overwhelm it with new creative expression then you can still allow it to be seen—Naked Gun 33 1/3 case, Blanch v. Koons. You can’t repackage the valuable expression of the original in a new context/genre/medium but with a similar function or purpose. (I don’t get how this is more than a restatement of a conclusion; looked at from different aesthetic perspectives, the original shines through or not in the Pretty Woman case, Perfect 10, and cases on both sides.) In Gaylord, the photo’s purpose was to memorialize and celebrate Korean War veterans, as was the sculpture’s. (But purpose is not creative expression. In fact, we have extensive doctrine about what’s special and creative about photographic representations of 3-D objects.)
Q: is this helpful? To the questioner, the message in the Dr. Juice book overwhelmed the style because the Simpson murder trial was so disgusting. In Liebovitz, you see Demi Moore’s body and Leslie Nielsen’s head—this standard seems so subjective.
A: but the art was Dr. Seuss’s eye-catching style. You can still appreciate the creative work of Dr. Seuss, even though the meaning and genre differ. (Isn’t this also true of the riff in 2 Live Crew’s Pretty Woman? Or the seductive gleam of the legs in Blanch’s photograph?)
Samson Vermont: consider expression that the copyright owner is likely to create and expression it’s not. Perfect 10/Google: odds were nil that Perfect 10 was going to use images as reference tools in search engine. Change in purpose is not enough; has to be change copyright owner is unlikely to make.
A: Agrees.
Vermont: not clear how factor 2 can be boiled down to transformation.
Haochen Sun: what about the value of nontransformative use? Kind cite to my piece on the value of copying. What’s the consequence for nontransformative uses if we pay so much attention to transformation?
A: There’s a culture of self-expression/self-actualization, but he doesn’t think that the cases are working out that way. Even with a First Amendment purpose, you have to fit the criteria.
Eric Johnson: he tells his students that the most important part of the phrase fair use is “fair.” This is really about drilling down into the analytical framework of fairness, fleshing out the intuition in a way that can be evaluated by onlookers. Do you think your perspective fits with that or are you saying something else?
A: the idea is the First Amendment value of creating new expression. If that’s fairness, that’s borne out by the case law.
Tracy Reilly, University of Dayton School of Law, Good Fences Make Good Neighboring Rights: The German Federal Court Rules on the Digital Sampling of Sound Recordings in Metall auf Metall
Digital sampling is physical replication for use in another song: implicates the musical work as well as the sound recording. Is this legitimate art or theft? Most folks fall where she does, that there is a middle ground. Now sampling equipment is cheap. Sound recordings need incentives: record companies need to recoup their costs of production/promotion.
Led Zeppelin, When the Levee Breaks, 1971: they rented a mansion reported to be haunted in the middle of England. The resulting drum sound is immediately recognizable to a fan. (I’m interested in the language of recognizability given earlier discussions of trademark concerns creeping into copyright and vice versa.) Enigma’s Return to Innocence sampled the drum portions of the recording. This song remains widely sampled, often without a license.
Exclusive rights in US law are limited by fair use as well as by the de minimis defense, except in courts following the Sixth Circuit’s Bridgeport decision which eliminated the de minimis defense for sound recordings. Any sampling without permission is a per se taking. “Get a license or do not sample.” German court picks up on this theme: “Even when a small part is sampled … the part taken is something of value.”
German notion of neighboring rights: not copyright for sound recordings; not considered to be intellectual creations. Granted sometimes to performers but more usually to producers/technical folks responsible for tech/financial contributions. Kraftwerk v. Moses Pelham. Kraftwerk’s Metall Auf Metall was sampled by defendants’ Nur muir. Supreme Court said even if the core of the song hadn’t been taken, the partial reproduction interferes with the rights of the producer of the phonogram. Quality or quantity of plaintiff’s song is irrelevant. There’s a market out there for even the smallest snippets of recordings.
Strange twist: just as Bridgeport held that fair use could apply, the German court said the concept of free use could also apply if satisfied. Bridgeport gave no guidelines on how fair use should be treated in the sampling context, but Kraftwerk gave some odd/impossible guidelines: free use is a defense unless the defendant could reproduce the sounds from the plaintiff on its own or unless the d sampled a recognizable melody. How do we test this in a court? Do we test d’s talent? Financial wherewithal? Bad precedent, because the more unique a sound is, the more likely the d can have a free use defense. (Why is that bad?) Recognizable melody constraint is better—she’d like to propose a refinement of fair use for sampling: to prevail on a defense, d must prove transformativeness but also that p’s song is not recognizable to an average layperson. That would be a proper balance. (Why? What makes sound recordings different from works produced by other successful artists?) Famous artists should be compensated when others use recognizable sound recordings?
Matt Sag: New book by Kembrew McLeod on dysfunctional sampling market in the US—you can’t clear multiple samples, even with millions of dollars and six months to do it.
A: not having enough money to buy the sample doesn’t mean the market doesn’t work.
Sag: but these are also transaction costs.
A: flip side: Pink Floyd, Led Zeppelin, intentionally want to keep their techniques obscure and don’t want to license. They have that right to avoid dilution. People will pay if they have enough money.
Justin Hughes: Sampling problem may go away with tech. You no longer have to rent a castle to reproduce that sound if you have a gifted ear. Real argument that for all the ink spilled, it’s just going to go away as a matter of tech. One great sound engineer per studio.
A: True. Problem is that there are tracks that are hard to replicate, created in analog, and there’s still a market.
I asked my questions in parentheses above.
A: because sound recording copyrights have limits that other works don’t—no performance rights. Thus any part taken is economically viable. (This is like the statement in Eldred that term extension was balanced by letting small businesses play the radio for free. These are different people affected differently. Suppressing x’s expression doesn’t compensate y. Nor does this distinguish sound recordings in Germany, where there are performance rights in sound recordings, nor increasingly where there are digital performance rights even in the US. And, of course, the “economically viable” idea is entirely circular, especially in cases like Bridgeport where the sample is not recognizable.)
McGeveran: if you think it’s ok to imitate really well, then why is recognizability important?
A: because people can’t actually imitate/recreate the sound. There’s a reason sound recording rights are different, and thus any reproduction is a violation. (Those two sentence halves don’t have a logical relationship. The reason sound recording rights are different in the US are historical, and in Germany, as she pointed out, theoretical—the thought is that they aren’t intellectual creations in the same way as musical works, and while we might think that justification is bunk, it doesn’t mean that a reproduction of any fraction of the work is logically entailed in either version of the right.)
Exhaustion and License
Christopher Newman, George Mason University School of Law, “What Exactly Are You Implying?”: Rethinking the Legal Basis for Implied Copyright Licenses
Courts often say in passing that a license is a contract, often a contract not to sue. We get arguments over implied contracts whether they’re implied in fact or in law. He thinks this is wrong. It’s not contract but property. The grant of a license may serve as consideration; a licensor may bind herself contractually not to revoke a license; the actions that result in a license may serve in the creation of a written instrument that memorializes the agreement; but the license itself is a form of property. This doesn’t result in radically altering case law, but it would clean up some confusing/muddy reasoning. May also allow us to tackle more difficult problems later.
First step: what is the distinction between transfer of property interests and contract? Economists: Contract is a means by which we transfer property rights. Lawyers: contracts are means by which we enforce promises. If I promise to transfer property rights and renege, you don’t get the property right as a matter of law. Even if we provide specific enforcement, I will be ordered to perform the specific rituals resulting in transfer of title. Moreover, I can transfer title without a contract. I can even give stuff to you! Conversely, I can’t use contract to alter the rules by which property is transferred. I can agree with Yvette that whenever I wave my hand over something it becomes Yvette’s, but that won’t be recognized as binding on third parties.
This has important implications for first sale, but he’s not going there right now. The question whether a given transaction transferred title, though, can’t be simply answered by contract law.
What is a license? A grant of privilege that is product of your baseline right to assign use of an owned resource.
Is it proper to characterize a bare license as a property interest? Traditional property doctrine denied this because licenses are presumptively revocable at will, and property rights should be good against the world. Only license by deed would be a property interest.
Hohfield: we should regard every privilege to use as an interest, just varying in characteristics. He goes further: even a revocable license gives rise to irrevocable alterations in the landscape of possible in rem claims. Even revocable licenses are not retroactively revocable. If I act while I have a license, my actions under that license will be forever immune to your attack.
If you thought a license was just a contract not to sue, the analysis would be different. The grantor would simply be under contract promising not to sue, even though I could in principle be held liable. Suppose I commit a material breach of the contract resulting in termination: if my earlier acts are within the statute of limitations, you should be able to sue for acts while license was in force. But no one has ever thought this is how license law should work. This is one reason why a license isn’t really just a promise not to sue.
Most licenses are granted by means that objectively manifest intent to permit use. Relevant law is federal for copyright. Thus proper for federal courts to develop federal common law of implied copyright licenses, which they mostly do, though occasionally they worry about contract. Field v. Google: posting content without metatags is an objective manifestation of intent to allow caching. In no sense did the parties have a contract. The license was revocable at will, but the only proper means was to use the metatags.
Thornier cases: author creates and delivers work for parties’ use and agreement fails to address copyright. Effects v. Cohen: a bit divided on the nature of the license. Sounds like a property paradigm at first—Effects created a work, handed it over with objective manifestation of intent that d use it. But then footnote characterizes this as implied in fact contract. That would suggest that objective manifestation of intent wouldn’t be the issue, but rather meeting of the minds. And that’s led courts to hold that there can be no nonexclusive license where parties tried to create exclusive license but failed to make it written, and thus we’re left with no license at all. This leads to messy tap dancing. Better result: failure to comply with §204 defeats exclusivity, but does not affect objective manifestation of consent to use—First Circuit has the best approach to this, doesn’t care about subjective intent.
Why is the implied license in Effects irrevocable? Court’s answer is unsatisfying. Contract paradigm: we’re willing to imply a grant, but we’re not willing to imply a condition precedent of full payment of consideration. If this is an implied in fact contract, we should at least consider whether this was a condition precedent. One-sided ratchet if conditions precedent can never be implied. Better way: traditional common law of licenses. Historical common law, only two ways to make license irrevocable—one by deed, and another by incident to some other valid grant of a property right. If you grant rights to a haystack on your land, you can’t then deny right to enter the land to take it away. Analogy to Effects: delivery of specifically ordered work product. Once we’ve agreed that a particular delivery with an understood purpose is a grant, then it makes sense to say you can’t defeat the purpose of the grant through arbitrary revocation.
Grimmelman: doesn’t state law also govern other means of transferring, like gifts? Symbolic delivery plus acceptance might be the right frame.
A: Easy answer (will do more) is to do choice of law analysis. Intangible right created by federal law = look at federal law.
My reaction, which is not well formed: it seems to me there’s been a similar move in real property (e.g., MERS) for property owners to decide that they want to opt in to contract principles and out of traditional property transfer principles, as part of a status-to-contract move. It hasn’t worked well, but it’s certainly been tried. Is this project about conceptual cleanliness or is there something substantively wrong with a system that treats property as if it were contract? (E.g., consequences to third parties as a result of agreeing to ignore the property rules.)
Daniela Simone, University of Oxford, Copyright or Copyleft? Wikipedia as a Turning Point for Authorship
Not clear that Wikipedia contributors meet standards for joint authorship. Wikipedia’s community culture supports the idea of a common design among contributors, and in the UK there’s no requirement to prove intent, but it’s hard to prove collaboration without intent to work together. Should we infer intent from voluntary creation of work in an environment emphasizing interactivity (editability) as is clear with Wikipedia? Must reflect skill, judgment, creativity to be copyrightable, though the contribution itself need not be copyrightable. Software tester wasn’t joint author despite time and technical contributions, because work was more like proofreading than authorship. Following this reading, editing/resolving disputes are unlikely to count as the right kind of labor. Contribution also has to be more than merely trivial, which would exclude small contributions. Unlikely/uncertain that some Wikipedia contributors would be considered joint authors of pages to which they contribute.
Licenses police authorship/Wikipedia’s notion of collective creativity/non-authorship. Anyone may copy/modify text under appropriate circumstances—attribution, though commerciality is allowed. Such licenses are prevalent, but few cases on their validity. Federal Circuit has held enforceable as contracts, though she doesn’t find that persuasive given problems with consideration. Best seen as bare licenses rather than as a foundation for a breach of contract claim.
Wikipedia doesn’t fit neatly within copyright law’s conceptions. It’s not even a work capable of being finished. Copyleft can alleviate this uncertainty in practice. Culture of sharing relies on and is partly constituted by copyleft, but the legal effect and desirability of such licenses are unclear. Authorship and ownership are separated in Wikipedia in the name of greater good in a way they aren’t in copyright law. Seems to undermine instrumental justifications for copyright law. Is this something copyright just need not concern itself with? (Though Wikipedia demonstrably needs to worry about copyright!) Remains to be seen whether copyright will be stretched over time to cover Wikipedia, or whether Wikipedia will help rewrite meaning of authorship.
McGeveran: isn’t contract required? Is this a problem of copyleft license?
A: she’s cautious about copyleft licenses because of ambiguities, but yes, some agreement-based solution is required.
McGeveran: is the Facebook solution better?
A: no, not as a rule.
Betsy Rosenblatt: this is an IP-negative space because everyone’s part of the community. If we took the community away, would there be something copyrightable left behind? The platform might own it, no one might own it, or someone might own it but it’s hard to figure out who. What’s your take?
A: someone potentially owns it but it’s hard to figure out who.
Rosenblatt: then useful analogy is screenwriting, where authorship is difficult to figure out but they do it anyway; WGA arbitration can decide whose contributions mattered for purposes of credit.
Glynn Lunney: if you’ve contributed enough, you might be a joint author of every page. Or just the entry you worked on. Or you’re not a joint author but you have copyright in your contribution. US law probably would take the last option, since we don’t like the joint author default rules of equal shares.
A: wouldn’t it be too small to be a work?
Lunney: not in the US; almost anything will qualify. So which of those three is best?
A: her argument is that Wikipedia doesn’t need copyright, so she doesn’t want to pick.
Friday, August 12, 2011
IPSC session 6
Trademark Theory and Empirical Work
Barton Beebe, New York University School of Law, Is the Trademark Office a Rubber Stamp?
What proportion of TM registration applications result in registration? How do they vary by filing basis, type of mark, country of origin, type of applicant, class of goods? What proportion result in publication? What proportion proceed directly to publication without any intervening PTO action? How did applications fail? Dataset from 1884 to 2010, 6.2 million observations with 135 variables. For applications filed before 1981, dataset appears to include only successful applications.
About ¾ of use-based applications made it to registration, 1/3 ITU applications made it to registration. Overall, .68 for use-based applications for certification marks compared to .75 for TMs. Reversed numbers for ITUs: collective TMs/service marks did better than average, but absolute numbers are low.
Country of origin: other countries tend to do better with use-based and ITUs than US entities (maybe related to sophistication of foreign filers and expense of foreign filing). Individuals tend to fare worse (.65 v. .74 for use, .27 v. .37 for ITU). Clothing and telecom did relatively badly, with similar numbers. Overall publication rate for all applications, 1981-2007: .76. This is true both for use-based and ITU-based applications. Uniform level of PTO acceptance.
How many went directly to publication without intervention by the PTO? Use-based applications about 15%; higher for ITUs, 21%. Not sure what’s going on there.
How applications failed: data set doesn’t provide information on grounds for rejection, but does provide final status code. Abandoned: 90% through failure to respond or late response. 1.3% were abandoned after ex parte appeal. 5.2% express abandonment. Use based, 24.1% failed before publication; of the published ones, 2.3% failed before registration suggesting successful opposition but we don’t know why. ITU: 24.0% failed before publication; 51.5% of those published failed before registration, mostly for failure to file statement of use.
Why aren’t applicants filing more borderline applications? Common-law protections; if you fail at the PTO you are truly out of luck, whereas if you’re up against a bad-faith defendant a judge might be more sympathetic.
Q: can you distinguish between inherent and acquired distinctiveness?
A: something is wrong with the coding in the data; 2(f) is not as well coded as he’d like, but he can go back.
Hughes: direct publication—could it be foreign applicants, or families of TMs? If McDonald’s applies for another TM, the examiner might send it directly to publication. Effect of TM attorney?
A: Hasn’t looked at whether 44(e) goes directly to publication more often, but can check. Attorney data is a big mess, but would be useful to look at it.
Brauneis: there’s more to object to in a use-based application—the specimen, the description.
A: will eventually be able to filter out technical objections like that.
Jake Linford, Florida State University College of Law, Controlled Transformation and the Alchemy of Trademark Protection
Change over time: moving in and out of genericity; modernization of a mark that changes how it looks—then there’s a question of when you get priority. Splitting the market: Sunkist for fruit and Sunkist for vegetables agreed that they could coexist—when Sunkist bread comes along, the court thought that the agreement meant that the mark couldn’t be a problem for bread.
Language shifts: Lexeme-->shift in application-->polysemy (multiple different meanings, though perhaps related)-->homonymy (two terms that look and/or sound the same but don’t mean the same thing, no/know). Polysemy is a little slower in terms of comprehension than homonymy—it's easy for consumer to distinguish know and no in context. Natural move of words that are coined is to polysemy—the generic word for X is the market leader; it gets two meanings. In Haiti, klowoks is the name for bleach, etc. The conceptually strongest mark according to Abercrombie thus has the biggest risk of becoming generic.
By contrast, an arbitrary mark like Apple is likely to become homonymous. If this is right, fancifcul marks are more subject to genericide than arbitrary or suggestive marks. Descriptive marks are also more likely to go through a polysemous shift.
Trademark transformation as adverse possession? But we actually treat the mark owner as an adverse possessor of language—the owner reaches out to take ownership, but we require actual use, open and notorious use, hostile (require ownership claims), exclusivity, and continual possession—TM owner as semiotic squatter.
Hughes: One metric you didn’t mention is the length of the TM in relation to the length of the generic category. Xerox is one syllable shorter than photocopy. Aspirin became generic because no one wants to say acetylsalicylic acid. So make sure your mark isn’t too convenient compared to the generic category.
A: makes intuitive sense; would have to go to literature. (FDA regs also affect this for drugs, putting the long form in the public eye, even if the public eye refuses to read it.)
Irina Manta: Stephen Carter talked about adverse possession.
A: some people incl. Carter have talked about junior user as adverse possessor, briefly, but he thinks talking of the mark owner that way might be of use.
Heymann: C&D letters—TM owners are trying to push people off.
A: less comfortable with thinking of public as adverse possessors. Public uses are open and notorious, but a lot of public uses that tend to create genericness are not uses in commerce. Junior uses are not actually the source of much genericity.
William McGeveran, University of Minnesota Law School & Mark P. McKenna, University of Notre Dame Law School, Trademark Defenses That Aren't
Confusion test isn’t working. Often in TM cases other values besides consumer confusion are on the line. Primarily: competition and free speech. It should be clear that these are enough to allow uses of a mark despite the presence of otherwise actionable confusion: KP Permanent explicitly so holds. But we know how infrequently a court actually makes that ruling. Courts are more comfortable declaring that the facts don’t constitute confusion, by fiat, rather than saying “confusion notwithstanding.” Consider the KP Permanent remand in which the 9th Circuit rams confusion back into the analysis. Similarly with Grupo Gigante: court wants to adhere to territoriality principle, but can’t stomach the resulting potential confusion so develops its own famous mark exception.
TM lacks true independent defensive doctrines equivalent to necessity in tort. Perhaps functionality/territoriality qualify, but normally defensive doctrines turn into a different lens to examine confusion: genericism, nominative fair use, first sale, aesthetic functionality.
Why does that happen? Possible explanations: Courts have difficulty comparing two difficult-to-quantify abstractions. Property ownership mindset buttresses courts’ confusion focus. Plaintiff faces a greater disadvantage from losing, where defendants are stand-ins for general more diffuse values. Courts don’t like to innovate in common-law fashion as they used to, so they want a multifactor test. They worry about cancelling a mark, which they consider a radical step. Confusion runs through other doctrines with other rationales and so they become accustomed to them.
What might we do? Courts get less entangled in consumer perception when they look at cases in more general terms—rather than considering whether this particular d needed this particular use when they ask more categorically whether this type of dispute implicates particular value. Significant improvement in First Amendment cases over past decade by shift from “alternative avenues” question to Rogers v. Grimaldi. Don’t ask about need to use the mark, but about whether this is the sort of use that qualifies for special First Amendment solicitude.
Functionality: ask whether the feature is abstractly functional. Nominative fair use: Tabari, where Kozinski comes back and says that the third factor about sponsorship or affiliation needs to be downgraded—the first thing to do is to protect the defendant where use is nominative. Ask courts to look at the alternative value first before running to the confusion inquiry. As a bonus, this can reduce costs because these inquiries are likely to be cheaper.
Remedies: sometimes the defendant should just win. In reality, even the strongest trump doesn’t/shouldn’t result in triumph no matter what kind of confusion results. Core passing off injury v. penumbral post-sale, initial interest, etc. confusion. Remedies short of a complete ban on using the mark would be more appropriate for the latter. Blinded Veterans case: genericism is a defense, but there may be disclosure remedies for common law passing off. Tabari: the real importance of the third factor is the opportunity for the plaintiff to show core passing-off confusion, subject to possible injunctive remedies short of a full ban. Wallace Silversmith case on functionality: there’s a finding of functionality but a recognition that unfair competition could still have a role.
Grimmelman: courts have been unmoored from traditional confusion values (dilution, initial interest confusion, etc.)—can we do something about that?
McKenna: what’s happened is that courts have hid behind calling it confusion. If courts were better at bounding confusion, defenses would be less necessary.
Lemley: sounds like we need a TM use doctrine! Boundary-setting: these things don’t go into confusion analysis. Whether it’s psychological or burden of proof-oriented, it could lead people to rethink this. Is this unique to TM law or is it something about defenses? Fair use gets a decent amount of play in copyright infringement; trade secret law has reverse engineering—how do we think about these things when we’ve determined that you’re culpable in the first place.
McGeveran: yes, and necessity outside IP. (Ellerth/Faragher defense to sexual harassment cases comes to mind too.)
McKenna: structurally, the way to advance the agenda is to get courts to think about these issues separately.
Q: sounds like an attempt to generate more common-law defenses but the common-law cause of action has been statutorily appropriated. If you could get the court to think “tort” instead of “property,” maybe that would help.
McKenna: maybe we’re going to try to come up with new defenses. Right now we have defenses that don’t work; we’re not asking courts to create them out of thin air. Courts have not been afraid to innovate in expanding rights. Congress came in and layered on, but courts have innovated in only one direction.
Ramsey: empirical work by Neil Netanel: a judge’s consideration of transformative use made a finding of fair use more likely. Even raising the issue and forcing the court to think about it can help.
McKenna: courts recognize the values, but almost always find them swamped by confusion—even after Traffix, you find courts wanting to rely on competitive need. They usually conclude that there’s a confusion harm first and then face pressure to stop it.
Lisa P. Ramsey, University of San Diego School of Law, What the United States Can Learn From Australian Trade Mark Law
Taking speech into account in actual legislation. Australia has a TM use requirement and no dilution; categorical exclusion for comparative advertising; something like our descriptive fair use; and they have a threats action, allowing suit over a groundless threat of TM infringement.
Hesitate before we make all laws the same; use nations as laboratories: is dilution working in the US? Is there a big problem of blurring/tarnishment in Australia? Attorneys’ fees go to the winner in Australia; there is document discovery but not depositions/interrogatories; may be differences in litigation culture that affect lawsuits. But we can still try to find lessons.
Use as a TM means use of a sign as a badge of origin/designation of source. There are some cases to the contrary—one case found that repeated references to a mark might serve as a designation of source. Use as a mark would have some certainty at the extremes. Some contextual analysis may be required. “Chill out” on a T-shirt was an exhortation to relax, not a use as a mark. But some uses on a T-shirt might be use as a mark.
Some say that Australia does have a dilution provision (well-known marks) but she disagrees.
Q: is Australia moving towards a US system of stretching the rationales of confusion to get to results that favor plaintiffs? Recent case involving Paul Hogan.
A: Bilateral trade agreement with US: Australia agreed to move towards harmony, but isn’t required to add dilution as some other trade agreements provide. There is going to be influence, but should the default be to protect TM owners or the public interest? One argument against TM use is that it might protect future bad uses; but Ramsey would say that then the legislature can come in and cover the bad activities.
Barton Beebe, New York University School of Law, Is the Trademark Office a Rubber Stamp?
What proportion of TM registration applications result in registration? How do they vary by filing basis, type of mark, country of origin, type of applicant, class of goods? What proportion result in publication? What proportion proceed directly to publication without any intervening PTO action? How did applications fail? Dataset from 1884 to 2010, 6.2 million observations with 135 variables. For applications filed before 1981, dataset appears to include only successful applications.
About ¾ of use-based applications made it to registration, 1/3 ITU applications made it to registration. Overall, .68 for use-based applications for certification marks compared to .75 for TMs. Reversed numbers for ITUs: collective TMs/service marks did better than average, but absolute numbers are low.
Country of origin: other countries tend to do better with use-based and ITUs than US entities (maybe related to sophistication of foreign filers and expense of foreign filing). Individuals tend to fare worse (.65 v. .74 for use, .27 v. .37 for ITU). Clothing and telecom did relatively badly, with similar numbers. Overall publication rate for all applications, 1981-2007: .76. This is true both for use-based and ITU-based applications. Uniform level of PTO acceptance.
How many went directly to publication without intervention by the PTO? Use-based applications about 15%; higher for ITUs, 21%. Not sure what’s going on there.
How applications failed: data set doesn’t provide information on grounds for rejection, but does provide final status code. Abandoned: 90% through failure to respond or late response. 1.3% were abandoned after ex parte appeal. 5.2% express abandonment. Use based, 24.1% failed before publication; of the published ones, 2.3% failed before registration suggesting successful opposition but we don’t know why. ITU: 24.0% failed before publication; 51.5% of those published failed before registration, mostly for failure to file statement of use.
Why aren’t applicants filing more borderline applications? Common-law protections; if you fail at the PTO you are truly out of luck, whereas if you’re up against a bad-faith defendant a judge might be more sympathetic.
Q: can you distinguish between inherent and acquired distinctiveness?
A: something is wrong with the coding in the data; 2(f) is not as well coded as he’d like, but he can go back.
Hughes: direct publication—could it be foreign applicants, or families of TMs? If McDonald’s applies for another TM, the examiner might send it directly to publication. Effect of TM attorney?
A: Hasn’t looked at whether 44(e) goes directly to publication more often, but can check. Attorney data is a big mess, but would be useful to look at it.
Brauneis: there’s more to object to in a use-based application—the specimen, the description.
A: will eventually be able to filter out technical objections like that.
Jake Linford, Florida State University College of Law, Controlled Transformation and the Alchemy of Trademark Protection
Change over time: moving in and out of genericity; modernization of a mark that changes how it looks—then there’s a question of when you get priority. Splitting the market: Sunkist for fruit and Sunkist for vegetables agreed that they could coexist—when Sunkist bread comes along, the court thought that the agreement meant that the mark couldn’t be a problem for bread.
Language shifts: Lexeme-->shift in application-->polysemy (multiple different meanings, though perhaps related)-->homonymy (two terms that look and/or sound the same but don’t mean the same thing, no/know). Polysemy is a little slower in terms of comprehension than homonymy—it's easy for consumer to distinguish know and no in context. Natural move of words that are coined is to polysemy—the generic word for X is the market leader; it gets two meanings. In Haiti, klowoks is the name for bleach, etc. The conceptually strongest mark according to Abercrombie thus has the biggest risk of becoming generic.
By contrast, an arbitrary mark like Apple is likely to become homonymous. If this is right, fancifcul marks are more subject to genericide than arbitrary or suggestive marks. Descriptive marks are also more likely to go through a polysemous shift.
Trademark transformation as adverse possession? But we actually treat the mark owner as an adverse possessor of language—the owner reaches out to take ownership, but we require actual use, open and notorious use, hostile (require ownership claims), exclusivity, and continual possession—TM owner as semiotic squatter.
Hughes: One metric you didn’t mention is the length of the TM in relation to the length of the generic category. Xerox is one syllable shorter than photocopy. Aspirin became generic because no one wants to say acetylsalicylic acid. So make sure your mark isn’t too convenient compared to the generic category.
A: makes intuitive sense; would have to go to literature. (FDA regs also affect this for drugs, putting the long form in the public eye, even if the public eye refuses to read it.)
Irina Manta: Stephen Carter talked about adverse possession.
A: some people incl. Carter have talked about junior user as adverse possessor, briefly, but he thinks talking of the mark owner that way might be of use.
Heymann: C&D letters—TM owners are trying to push people off.
A: less comfortable with thinking of public as adverse possessors. Public uses are open and notorious, but a lot of public uses that tend to create genericness are not uses in commerce. Junior uses are not actually the source of much genericity.
William McGeveran, University of Minnesota Law School & Mark P. McKenna, University of Notre Dame Law School, Trademark Defenses That Aren't
Confusion test isn’t working. Often in TM cases other values besides consumer confusion are on the line. Primarily: competition and free speech. It should be clear that these are enough to allow uses of a mark despite the presence of otherwise actionable confusion: KP Permanent explicitly so holds. But we know how infrequently a court actually makes that ruling. Courts are more comfortable declaring that the facts don’t constitute confusion, by fiat, rather than saying “confusion notwithstanding.” Consider the KP Permanent remand in which the 9th Circuit rams confusion back into the analysis. Similarly with Grupo Gigante: court wants to adhere to territoriality principle, but can’t stomach the resulting potential confusion so develops its own famous mark exception.
TM lacks true independent defensive doctrines equivalent to necessity in tort. Perhaps functionality/territoriality qualify, but normally defensive doctrines turn into a different lens to examine confusion: genericism, nominative fair use, first sale, aesthetic functionality.
Why does that happen? Possible explanations: Courts have difficulty comparing two difficult-to-quantify abstractions. Property ownership mindset buttresses courts’ confusion focus. Plaintiff faces a greater disadvantage from losing, where defendants are stand-ins for general more diffuse values. Courts don’t like to innovate in common-law fashion as they used to, so they want a multifactor test. They worry about cancelling a mark, which they consider a radical step. Confusion runs through other doctrines with other rationales and so they become accustomed to them.
What might we do? Courts get less entangled in consumer perception when they look at cases in more general terms—rather than considering whether this particular d needed this particular use when they ask more categorically whether this type of dispute implicates particular value. Significant improvement in First Amendment cases over past decade by shift from “alternative avenues” question to Rogers v. Grimaldi. Don’t ask about need to use the mark, but about whether this is the sort of use that qualifies for special First Amendment solicitude.
Functionality: ask whether the feature is abstractly functional. Nominative fair use: Tabari, where Kozinski comes back and says that the third factor about sponsorship or affiliation needs to be downgraded—the first thing to do is to protect the defendant where use is nominative. Ask courts to look at the alternative value first before running to the confusion inquiry. As a bonus, this can reduce costs because these inquiries are likely to be cheaper.
Remedies: sometimes the defendant should just win. In reality, even the strongest trump doesn’t/shouldn’t result in triumph no matter what kind of confusion results. Core passing off injury v. penumbral post-sale, initial interest, etc. confusion. Remedies short of a complete ban on using the mark would be more appropriate for the latter. Blinded Veterans case: genericism is a defense, but there may be disclosure remedies for common law passing off. Tabari: the real importance of the third factor is the opportunity for the plaintiff to show core passing-off confusion, subject to possible injunctive remedies short of a full ban. Wallace Silversmith case on functionality: there’s a finding of functionality but a recognition that unfair competition could still have a role.
Grimmelman: courts have been unmoored from traditional confusion values (dilution, initial interest confusion, etc.)—can we do something about that?
McKenna: what’s happened is that courts have hid behind calling it confusion. If courts were better at bounding confusion, defenses would be less necessary.
Lemley: sounds like we need a TM use doctrine! Boundary-setting: these things don’t go into confusion analysis. Whether it’s psychological or burden of proof-oriented, it could lead people to rethink this. Is this unique to TM law or is it something about defenses? Fair use gets a decent amount of play in copyright infringement; trade secret law has reverse engineering—how do we think about these things when we’ve determined that you’re culpable in the first place.
McGeveran: yes, and necessity outside IP. (Ellerth/Faragher defense to sexual harassment cases comes to mind too.)
McKenna: structurally, the way to advance the agenda is to get courts to think about these issues separately.
Q: sounds like an attempt to generate more common-law defenses but the common-law cause of action has been statutorily appropriated. If you could get the court to think “tort” instead of “property,” maybe that would help.
McKenna: maybe we’re going to try to come up with new defenses. Right now we have defenses that don’t work; we’re not asking courts to create them out of thin air. Courts have not been afraid to innovate in expanding rights. Congress came in and layered on, but courts have innovated in only one direction.
Ramsey: empirical work by Neil Netanel: a judge’s consideration of transformative use made a finding of fair use more likely. Even raising the issue and forcing the court to think about it can help.
McKenna: courts recognize the values, but almost always find them swamped by confusion—even after Traffix, you find courts wanting to rely on competitive need. They usually conclude that there’s a confusion harm first and then face pressure to stop it.
Lisa P. Ramsey, University of San Diego School of Law, What the United States Can Learn From Australian Trade Mark Law
Taking speech into account in actual legislation. Australia has a TM use requirement and no dilution; categorical exclusion for comparative advertising; something like our descriptive fair use; and they have a threats action, allowing suit over a groundless threat of TM infringement.
Hesitate before we make all laws the same; use nations as laboratories: is dilution working in the US? Is there a big problem of blurring/tarnishment in Australia? Attorneys’ fees go to the winner in Australia; there is document discovery but not depositions/interrogatories; may be differences in litigation culture that affect lawsuits. But we can still try to find lessons.
Use as a TM means use of a sign as a badge of origin/designation of source. There are some cases to the contrary—one case found that repeated references to a mark might serve as a designation of source. Use as a mark would have some certainty at the extremes. Some contextual analysis may be required. “Chill out” on a T-shirt was an exhortation to relax, not a use as a mark. But some uses on a T-shirt might be use as a mark.
Some say that Australia does have a dilution provision (well-known marks) but she disagrees.
Q: is Australia moving towards a US system of stretching the rationales of confusion to get to results that favor plaintiffs? Recent case involving Paul Hogan.
A: Bilateral trade agreement with US: Australia agreed to move towards harmony, but isn’t required to add dilution as some other trade agreements provide. There is going to be influence, but should the default be to protect TM owners or the public interest? One argument against TM use is that it might protect future bad uses; but Ramsey would say that then the legislature can come in and cover the bad activities.
IPSC session 5
Trademark-Copyright Theory
Jacqueline D. Lipton, Case Western Reserve University School of Law & John Tehranian, Southwestern Law School, Derivative Works 2.0
Copyright v. right of publicity in treatment of derivative works: addressed very differently. Right of publicity protects transformativeness more strongly—you are far more able to make a painting of Tiger Woods or mock the Winter Brothers in a comic book. If you reuse fictional characters, you’re typically infringing. Ironic that real people get less protection than fake ones.
Henley v. Devore: emblematic—increasingly courts use fair use as a doctrine of necessity, with no independent First Amendment check as there is in right of publicity, and “commercial” is defined incredibly broadly, so the use of a song parody in a political ad was nontransformative and commercial.
Another example: crowdsourced production of Star Wars remake. Star Wars itself can be seen as a derivative of other existing things in popular culture. How should we think about reuse? Commercial/noncommercial seems to be important—online mashups are fair use, whereas Star Wars Uncut is a major work that could be released, though the editor hasn’t made any money from it. Lucasfilm basically seems to be reserving its rights to pounce if it wants. We could revisit the emphasis on commercial use with specific reference to derivative works; we could add an intermediate liability option where statutory damages would be off the table.
Comment: encourage you to take the middle ground, because most of the literature seems to endorse one side or another (free use or permission always required). Greater void in literature on the middle ground. (I think this is not an accurate description of the literature. Plenty of people say that there should be an intermediate stage in which payment is required but control not allowed, as with the right to cover musical works; the problem on which these proposals run aground is implementation. Terry Fisher made some relatively serious attempts at figuring out implementation, but doing so makes obvious the political problems. Plus the Supreme Court has said twice that this solution is available under existing law as a matter of remedies for infringement, as the literature is also keen to point out, but courts don’t want to implement it in the average case because they tend to think that one side is the bad guy and one the good.)
Comment: go beyond law reform; talk about possible business models/practices in the industry.
Tehranian: YouTube involves a model where the labels accept that this stuff is going to get created, and they might as well get paid. Content ID.
Ramsey: international obligations? Also, should we treat all derivative works the same? Are sequels the same as stuffed animals?
Tehranian: intermediate liability proposal would move from property to liability. Derivative works would make you a joint author with the original creator, and would have to split profits 50/50, ensuring that the original creator gets paid if you do. Parties could make their own deal.
McGeveran: What’s the connection between crowdsourcing and derivative works? Most of what you said would be true of one derivative maker as with a cooperative crowd.
Lipton: true; the crowdsourcing case studies allow us to think usefully about derivative works.
Laura A. Heymann, William & Mary Law School, A Name I Call Myself: Creativity and Naming
Choosing a name leads to a sense of ownership; copying can feel like a transgression. When you name yourself, say for an online environment, you’re often trying to send a message, leading to questions of authorship and authenticity. Creating a name is a part of performativity—hip-hop performers rarely perform under their given names. CB users choose names.
People want credit for the act of creation. Even renaming can be a “reboot.”
Courts occasionally mention naming as creative--Gaiman v. McFarlane suggests that naming was part of making a character distinctive, and some courts have used copyright-like language of creativity when talking about TM and the Abercrombie spectrum: “Security Center” required only a modicum of creativity which was one reason it wasn’t strong.
Recognizing and validating the creative interest in names tends to show up in whether a community allows people to choose their own names, and whether duplicate names are allowed even when there’s no impersonation or fraud. E.g., the master roster in roller derby prohibits duplicates even when geographic areas are distinct. Less organic models don’t recognize creativity: Google+ requires you to choose a name that is not too creative. Second Life requires an account name, but allows a changing display name that can overlap with someone else’s display name. Anger and frustration born of these policies is not about trademark or privacy—if that were so, the service could assign names/numbers. The concern is that naming says something about us, and so we want to choose.
Lessons: nascent communities—social networks, virtual worlds, etc.—should give attention to this interest in microcreativity. Value of observing how these communities deal with microcreativity tells us something about what motivates creativity in an environment where we’re pretty sure that it’s not about economics, but about other motivations such as identity.
Jessica Silbey: you talk about creativity and attribution; what about the relational aspect to naming—not just uniqueness, but relation to community. Although the names are unique to a person, they’re always building on someone else—choosing a name for your kid or playing on a famous name in your skate name. Transgression to relation with community is an important part of that when a name is “stolen.”
A: Absolutely.
Q: there’s genealogy/loyalty/continuity interests too—if you’re in the British royal family, name choices are limited.
A: a certain community may value limits. That has expressive value too.
Q: unusual names for children that are protectable as TMs—Facebook, Lex Luthor. What about them?
A: Sure, there are Lexuses out there. Communities are crossing. She doesn’t want to say that’s not creative—you definitely want to convey something by naming your child Lexus (or Kal-El!). That’s not anomalous, but does represent a community conflict. Twitter: various communities had no problems with people using a celebrity name as their handle, but then “the real” Tina Fey had to distinguish herself. She thinks impersonation is a separate issue, but even when there’s no impersonation we still have problems of creative conflict.
Amanda Compton, Charleston School of Law, N.I.G.G.A., Slumdog, Heeb, and Dyke: Reconsidering Disparaging Trademarks in a Post-Racial Era
Some people (she is not endorsing this) argue that we’ve reached a post-racial area, and also a post-sexist/sexual orientation era, which might indicate that certain terms should now be registrable.
What does the Lanham Act seek to accomplish with prohibiting disparaging marks? Sometimes it’s offense to a particular group, sometimes about attacks on them and sometimes about associating them with a product with which they would not want to be associated. Relationship tests (does the person/group have a relation to the product), rights of privacy, and multifactor tests have all been used; the multifactor tests are hard to apply. One problem is the one-person bottleneck: a single examiner will decide, though s/he will also look to external evidence. Doubts should be resolved in favor of the applicant but they aren’t always, especially if they aren’t represented by counsel. Result: wild swings.
Rejected: THE BIG HEEB BREWING COMPANY for beer; N.I.G.G.A. for clothing; SQUAW for some items; JAP for clothing; WHITE PRIDE for a variety of goods and services. Accepted: SQUAW VALLEY for ski clothing. Suggests that if you use the term as your trade name you do better. (I thought the SQUAW VALLEY case was decided as it was because it had geographic meaning distinct from its disparaging meaning as applied to these goods and services, but the overall point about unpredictability is quite valid.) N.I.G.G.A. was rejected though filed by a black comedian; this variant does not necessarily have the same meaning within the black community when used by a member as the very similar but highly offensive word I won’t write. If it’s been appropriated in a positive way it shouldn’t be rejected on disparagement grounds.
WHITE PRIDE rejected as disparaging to nonwhites. But Black Pride and La Raza marks are allowed registration—what’s the difference? (I’d say it’s about power. But I should definitely use WHITE PRIDE as a teaching example; disparagement is very difficult to teach.)
HEEB for magazines allowed; also DYKE TV; DYKEdolls for dolls with a very suggestive design.
Drawbacks of the ban: denies people the benefits of registration, though the marks can be used; prevents reappropriation; frustrates post-racialism; First Amendment issues.
Q: How helpful are statements about postracialism? Such broad statements about our current area don’t seem accurate or helpful.
A: She doesn’t personally agree with those statements, but if that’s the direction we want to move in, we need open discussion. Maybe we do want to allow certain products to invite discussion. We can still remove the mark from the marketplace, but that should be via consumer decisions. Or petitions to cancel by people who are harmed by the registration.
Ramsey: agrees that it’s inconsistent, and it would be great to have certainty, but there’s also a First Amendment argument against registering these marks. If they are in fact expressive (reappropriative) uses, then other people can’t use the marks in the same ways.
Rosenblatt: we see inconsistency in what gets registered, but that may be the application of the test rather than the prohibition. Courts should be looking at the mark plus the use in connection with the particular goods/services. What do we mean by protecting consumers? A lot of times the mark is offensive to a reference group that’s not the target consumer. If you’re the target consumer, you may not care about the harm to the non-target consumer.
McKenna: Incoherent area of the law because everyone grossly overemphasizes registration. Refusal doesn’t take the mark out of the market—still enforceable. If we had the courage of our convictions we wouldn’t enforce the law at all against such unregistered marks.
Me: There are a couple of cases that suggest that a mark not registrable because it’s disparaging is also not enforceable on public policy grounds (though McKenna pointed out that the courts that say that the prohibition on registration is constitutional say that it is because unregistered marks are still protected), so it’s a little more confused than that. Students don’t like disparagement—they don’t want to apply the test to deny marks, but they also don’t think it’s unconstitutional. We seem to want the prohibition to exist for expressive/symbolic reasons and then not apply it. Is it really a good idea to have a system on the books or should we just get rid of it? Should we have a situation unique to disparagement where it’s the one thing the examiner shouldn’t ever determine on his/her own?
A: Yes, she thinks the consumer should decide.
Viva R. Moffat, University of Denver Sturm College of Law, The Copyright Professor as Reader: Unauthorized Sequels, Copyright Law, and Trademark Concerns
Starting point: rethinking copyright as TM cases. Salinger v. Colting as an example. How do we tell which retellings are infringing? Is it really possible to distinguish Pride and Prejudice and Zombies from Mr. Darcy Takes a Wife? She read a bunch of these--Jane Eyre and Wide Sargasso Sea, King Lear and A Thousand Acres, and so on.
What is the interest of the author? What does the author want and what should the author be able to get? JK Rowling was asked if she was going to write a sequel, and she’s said she was done with Harry Potter. She said “it’s my baby, and if I want to take it out and play, then maybe one day I will.” Reflects a certain natural rights/moral rights line of reasoning. Salinger rejected a movie because he saw his novel as a novel and only that: absolute property rights. Salinger’s estate settled: the book can be sold outside the US, but the settlement agreement bars Colting from using the title “Coming Through the Rye,” which says something about the estate’s interest. He can’t dedicate the book to Salinger. These are moral rights/affiliation concerns.
Copyright promotes balance between incentives and public interests/access. Would TM principles do a better job? Suppose Colting’s book is clearly marked as an unauthorized sequel. There is clearly similarity in the titles/books. Intent to capitalize on Salinger’s goodwill? No intent to confuse, per disclaimer. Salinger would not win a TM claim. Assuming he did win, the finding of confusion would satisfy the author’s legitimate interests. Confusion in the marketplace may substitute for the effect on the market inquiry in fair use. Confusion makes effect on the market likely. If people aren’t confused, highly unlikely that the market for authorized derivative works would be affected. TM would better promote the copyright balance in this context: unauthorized retellings of novels. Possible broader application, to characters more generally and Harry Potter Lexicon.
My thoughts about Rowling’s quote: (1) Rowling is very supportive of fanworks in general, so she’s not all that wedded to a traditional copyright conception of natural rights, though TM might coincide with her view. (2) If you did that to an actual baby (or in other ways asserted absolute rights over that baby) you’d be arrested. Actually the TM idea that rights require use might have something to say about the common work = child analogy too; having a child requires you to take care of it.
Ramsey: Initial interest confusion might be of use here. A lot of cases involve potential confusion about the source of expression. Star Wars Uncut: you might think that Lucas is the source, but further inspection would dispel any such notion. (Harry Potter and International Relations, anyone?) Some people say that this is actionable, but others say you have to look at the content to figure out if there’s anything actionable.
A: She’s not necessarily thinking that current TM doctrine has the right answers, but that TM principles might be better for this area. She doesn’t want dilution, certainly. Could incorporate TM principles into the fair use inquiry.
Said: Jeannie Suk’s note on orginality has a lot on retellings. In so many of the litigated cases, the monetizable uses already involve TMs. So are you only talking about cases in which TM isn’t already implicated, or a larger set?
A: she’s starting with the smaller set, but there may be more general implications. Maybe they’re already in the cases, but maybe we should do more channeling: all you can bring is a TM claim.
Heymann: what if the sequel is good and satisfying even if it’s not from the author? TM and copyright think somewhat differently about nonexistent but theoretically possible markets.
A: Might not be perfect substitutes. (I’d think that would be the point. Being satisfied and being fooled are two different things, and we might use the difference to define the market to which the copyright owner is entitled and the market to which it is not, as a way out of the well-known circularity problem.)
Jacqueline D. Lipton, Case Western Reserve University School of Law & John Tehranian, Southwestern Law School, Derivative Works 2.0
Copyright v. right of publicity in treatment of derivative works: addressed very differently. Right of publicity protects transformativeness more strongly—you are far more able to make a painting of Tiger Woods or mock the Winter Brothers in a comic book. If you reuse fictional characters, you’re typically infringing. Ironic that real people get less protection than fake ones.
Henley v. Devore: emblematic—increasingly courts use fair use as a doctrine of necessity, with no independent First Amendment check as there is in right of publicity, and “commercial” is defined incredibly broadly, so the use of a song parody in a political ad was nontransformative and commercial.
Another example: crowdsourced production of Star Wars remake. Star Wars itself can be seen as a derivative of other existing things in popular culture. How should we think about reuse? Commercial/noncommercial seems to be important—online mashups are fair use, whereas Star Wars Uncut is a major work that could be released, though the editor hasn’t made any money from it. Lucasfilm basically seems to be reserving its rights to pounce if it wants. We could revisit the emphasis on commercial use with specific reference to derivative works; we could add an intermediate liability option where statutory damages would be off the table.
Comment: encourage you to take the middle ground, because most of the literature seems to endorse one side or another (free use or permission always required). Greater void in literature on the middle ground. (I think this is not an accurate description of the literature. Plenty of people say that there should be an intermediate stage in which payment is required but control not allowed, as with the right to cover musical works; the problem on which these proposals run aground is implementation. Terry Fisher made some relatively serious attempts at figuring out implementation, but doing so makes obvious the political problems. Plus the Supreme Court has said twice that this solution is available under existing law as a matter of remedies for infringement, as the literature is also keen to point out, but courts don’t want to implement it in the average case because they tend to think that one side is the bad guy and one the good.)
Comment: go beyond law reform; talk about possible business models/practices in the industry.
Tehranian: YouTube involves a model where the labels accept that this stuff is going to get created, and they might as well get paid. Content ID.
Ramsey: international obligations? Also, should we treat all derivative works the same? Are sequels the same as stuffed animals?
Tehranian: intermediate liability proposal would move from property to liability. Derivative works would make you a joint author with the original creator, and would have to split profits 50/50, ensuring that the original creator gets paid if you do. Parties could make their own deal.
McGeveran: What’s the connection between crowdsourcing and derivative works? Most of what you said would be true of one derivative maker as with a cooperative crowd.
Lipton: true; the crowdsourcing case studies allow us to think usefully about derivative works.
Laura A. Heymann, William & Mary Law School, A Name I Call Myself: Creativity and Naming
Choosing a name leads to a sense of ownership; copying can feel like a transgression. When you name yourself, say for an online environment, you’re often trying to send a message, leading to questions of authorship and authenticity. Creating a name is a part of performativity—hip-hop performers rarely perform under their given names. CB users choose names.
People want credit for the act of creation. Even renaming can be a “reboot.”
Courts occasionally mention naming as creative--Gaiman v. McFarlane suggests that naming was part of making a character distinctive, and some courts have used copyright-like language of creativity when talking about TM and the Abercrombie spectrum: “Security Center” required only a modicum of creativity which was one reason it wasn’t strong.
Recognizing and validating the creative interest in names tends to show up in whether a community allows people to choose their own names, and whether duplicate names are allowed even when there’s no impersonation or fraud. E.g., the master roster in roller derby prohibits duplicates even when geographic areas are distinct. Less organic models don’t recognize creativity: Google+ requires you to choose a name that is not too creative. Second Life requires an account name, but allows a changing display name that can overlap with someone else’s display name. Anger and frustration born of these policies is not about trademark or privacy—if that were so, the service could assign names/numbers. The concern is that naming says something about us, and so we want to choose.
Lessons: nascent communities—social networks, virtual worlds, etc.—should give attention to this interest in microcreativity. Value of observing how these communities deal with microcreativity tells us something about what motivates creativity in an environment where we’re pretty sure that it’s not about economics, but about other motivations such as identity.
Jessica Silbey: you talk about creativity and attribution; what about the relational aspect to naming—not just uniqueness, but relation to community. Although the names are unique to a person, they’re always building on someone else—choosing a name for your kid or playing on a famous name in your skate name. Transgression to relation with community is an important part of that when a name is “stolen.”
A: Absolutely.
Q: there’s genealogy/loyalty/continuity interests too—if you’re in the British royal family, name choices are limited.
A: a certain community may value limits. That has expressive value too.
Q: unusual names for children that are protectable as TMs—Facebook, Lex Luthor. What about them?
A: Sure, there are Lexuses out there. Communities are crossing. She doesn’t want to say that’s not creative—you definitely want to convey something by naming your child Lexus (or Kal-El!). That’s not anomalous, but does represent a community conflict. Twitter: various communities had no problems with people using a celebrity name as their handle, but then “the real” Tina Fey had to distinguish herself. She thinks impersonation is a separate issue, but even when there’s no impersonation we still have problems of creative conflict.
Amanda Compton, Charleston School of Law, N.I.G.G.A., Slumdog, Heeb, and Dyke: Reconsidering Disparaging Trademarks in a Post-Racial Era
Some people (she is not endorsing this) argue that we’ve reached a post-racial area, and also a post-sexist/sexual orientation era, which might indicate that certain terms should now be registrable.
What does the Lanham Act seek to accomplish with prohibiting disparaging marks? Sometimes it’s offense to a particular group, sometimes about attacks on them and sometimes about associating them with a product with which they would not want to be associated. Relationship tests (does the person/group have a relation to the product), rights of privacy, and multifactor tests have all been used; the multifactor tests are hard to apply. One problem is the one-person bottleneck: a single examiner will decide, though s/he will also look to external evidence. Doubts should be resolved in favor of the applicant but they aren’t always, especially if they aren’t represented by counsel. Result: wild swings.
Rejected: THE BIG HEEB BREWING COMPANY for beer; N.I.G.G.A. for clothing; SQUAW for some items; JAP for clothing; WHITE PRIDE for a variety of goods and services. Accepted: SQUAW VALLEY for ski clothing. Suggests that if you use the term as your trade name you do better. (I thought the SQUAW VALLEY case was decided as it was because it had geographic meaning distinct from its disparaging meaning as applied to these goods and services, but the overall point about unpredictability is quite valid.) N.I.G.G.A. was rejected though filed by a black comedian; this variant does not necessarily have the same meaning within the black community when used by a member as the very similar but highly offensive word I won’t write. If it’s been appropriated in a positive way it shouldn’t be rejected on disparagement grounds.
WHITE PRIDE rejected as disparaging to nonwhites. But Black Pride and La Raza marks are allowed registration—what’s the difference? (I’d say it’s about power. But I should definitely use WHITE PRIDE as a teaching example; disparagement is very difficult to teach.)
HEEB for magazines allowed; also DYKE TV; DYKEdolls for dolls with a very suggestive design.
Drawbacks of the ban: denies people the benefits of registration, though the marks can be used; prevents reappropriation; frustrates post-racialism; First Amendment issues.
Q: How helpful are statements about postracialism? Such broad statements about our current area don’t seem accurate or helpful.
A: She doesn’t personally agree with those statements, but if that’s the direction we want to move in, we need open discussion. Maybe we do want to allow certain products to invite discussion. We can still remove the mark from the marketplace, but that should be via consumer decisions. Or petitions to cancel by people who are harmed by the registration.
Ramsey: agrees that it’s inconsistent, and it would be great to have certainty, but there’s also a First Amendment argument against registering these marks. If they are in fact expressive (reappropriative) uses, then other people can’t use the marks in the same ways.
Rosenblatt: we see inconsistency in what gets registered, but that may be the application of the test rather than the prohibition. Courts should be looking at the mark plus the use in connection with the particular goods/services. What do we mean by protecting consumers? A lot of times the mark is offensive to a reference group that’s not the target consumer. If you’re the target consumer, you may not care about the harm to the non-target consumer.
McKenna: Incoherent area of the law because everyone grossly overemphasizes registration. Refusal doesn’t take the mark out of the market—still enforceable. If we had the courage of our convictions we wouldn’t enforce the law at all against such unregistered marks.
Me: There are a couple of cases that suggest that a mark not registrable because it’s disparaging is also not enforceable on public policy grounds (though McKenna pointed out that the courts that say that the prohibition on registration is constitutional say that it is because unregistered marks are still protected), so it’s a little more confused than that. Students don’t like disparagement—they don’t want to apply the test to deny marks, but they also don’t think it’s unconstitutional. We seem to want the prohibition to exist for expressive/symbolic reasons and then not apply it. Is it really a good idea to have a system on the books or should we just get rid of it? Should we have a situation unique to disparagement where it’s the one thing the examiner shouldn’t ever determine on his/her own?
A: Yes, she thinks the consumer should decide.
Viva R. Moffat, University of Denver Sturm College of Law, The Copyright Professor as Reader: Unauthorized Sequels, Copyright Law, and Trademark Concerns
Starting point: rethinking copyright as TM cases. Salinger v. Colting as an example. How do we tell which retellings are infringing? Is it really possible to distinguish Pride and Prejudice and Zombies from Mr. Darcy Takes a Wife? She read a bunch of these--Jane Eyre and Wide Sargasso Sea, King Lear and A Thousand Acres, and so on.
What is the interest of the author? What does the author want and what should the author be able to get? JK Rowling was asked if she was going to write a sequel, and she’s said she was done with Harry Potter. She said “it’s my baby, and if I want to take it out and play, then maybe one day I will.” Reflects a certain natural rights/moral rights line of reasoning. Salinger rejected a movie because he saw his novel as a novel and only that: absolute property rights. Salinger’s estate settled: the book can be sold outside the US, but the settlement agreement bars Colting from using the title “Coming Through the Rye,” which says something about the estate’s interest. He can’t dedicate the book to Salinger. These are moral rights/affiliation concerns.
Copyright promotes balance between incentives and public interests/access. Would TM principles do a better job? Suppose Colting’s book is clearly marked as an unauthorized sequel. There is clearly similarity in the titles/books. Intent to capitalize on Salinger’s goodwill? No intent to confuse, per disclaimer. Salinger would not win a TM claim. Assuming he did win, the finding of confusion would satisfy the author’s legitimate interests. Confusion in the marketplace may substitute for the effect on the market inquiry in fair use. Confusion makes effect on the market likely. If people aren’t confused, highly unlikely that the market for authorized derivative works would be affected. TM would better promote the copyright balance in this context: unauthorized retellings of novels. Possible broader application, to characters more generally and Harry Potter Lexicon.
My thoughts about Rowling’s quote: (1) Rowling is very supportive of fanworks in general, so she’s not all that wedded to a traditional copyright conception of natural rights, though TM might coincide with her view. (2) If you did that to an actual baby (or in other ways asserted absolute rights over that baby) you’d be arrested. Actually the TM idea that rights require use might have something to say about the common work = child analogy too; having a child requires you to take care of it.
Ramsey: Initial interest confusion might be of use here. A lot of cases involve potential confusion about the source of expression. Star Wars Uncut: you might think that Lucas is the source, but further inspection would dispel any such notion. (Harry Potter and International Relations, anyone?) Some people say that this is actionable, but others say you have to look at the content to figure out if there’s anything actionable.
A: She’s not necessarily thinking that current TM doctrine has the right answers, but that TM principles might be better for this area. She doesn’t want dilution, certainly. Could incorporate TM principles into the fair use inquiry.
Said: Jeannie Suk’s note on orginality has a lot on retellings. In so many of the litigated cases, the monetizable uses already involve TMs. So are you only talking about cases in which TM isn’t already implicated, or a larger set?
A: she’s starting with the smaller set, but there may be more general implications. Maybe they’re already in the cases, but maybe we should do more channeling: all you can bring is a TM claim.
Heymann: what if the sequel is good and satisfying even if it’s not from the author? TM and copyright think somewhat differently about nonexistent but theoretically possible markets.
A: Might not be perfect substitutes. (I’d think that would be the point. Being satisfied and being fooled are two different things, and we might use the difference to define the market to which the copyright owner is entitled and the market to which it is not, as a way out of the well-known circularity problem.)
IPSC session 4
Empirical Work
Jamie Lund, St. Mary's University School of Law, An Empirical Examination of the Lay Listener Test in Music Composition Copyright Infringement
Musical work: melody, rhythm, harmony and lyrics, as understood from the 19th century by music publishers who wanted the same treatment as publishers of books.
Jury is asked to listen to the recordings but decide based only on the musical work, not on the performances in the recordings. 178 participants. Chose songs from Carey v. Swirsky (where Carey initially won summary judgment but the 9th Circuit reversed for a jury determination, so it was a middle-of-the-road case) and Gaste v. Kaiserman (where it was an extreme example of similarity and the plaintiff won at trial and won on appeal).
Half of the groups heard the pairs played similarly. Half heard them with different performance aspects—vocal phrasing, genre, orchestration are possible, but for the experiment they chose tempo, key, orchestration (what instruments, how many), and style (genre). Listen here. People who heard them played similarly and were asked to rate the similarity on a 1-5 scale gave 4.6 rating on average, while the ratings were substantially lower in the different performance style condition. Given the legal definition of substantial similarity and asked whether the two works were substantially similar, 38 in the similar performance style said yes, 6 said no; 7 said yes and 39 said no in the different performance style condition.
Gaste: Performance was still significant, though the works were highly similar. Performed similarly were rated 4.4, differently 3.07 (more similar than not). But there was a smaller effect of performance, and with a jury instruction for substantial similarity, 40 people said yes and 4 no on whether the works were substantially similar; in the different performance situation 36 people said yes and 10 said no. This suggests that there’s only so much you can do to game the system with a different performance.
Q: Did people hear the songs back to back?
A: Half were told to compare the songs; after the jury instruction they were told to pretend they were mock jurors, and they even had deliberations. People talked about their feelings about the songs.
Q: prior familiarity—if you know “Feelings,” it would be a basis of comparison as you heard the other song. Did you exclude based on past familiarity?
A: we asked people if they knew the song. Out of 178, 10 said they knew any of the songs. We didn’t back them out; not clear they’d get excluded from a jury either. That’s why she left them in.
Q: is it strange that the similar performance condition results were the same for both sets of songs?
A: Maybe. Some people possibly thought they were being gamed and thought there had to be some trick going on/trying to figure out what was being tested. But that also probably happens in litigation.
Grimmelman: any possibility of playing jurors multiple versions to help them appreciate composition v. performance? Also, are things you’re calling performance really properly classed as the composition, when you have the composition as embodied in the performance?
A: Multiple versions is a possible solution. Expert jury would be another possibility, but that’s hard. Another option: let’s have a special verdict form. Another: allow expert testimony on substantial similarity, contrary to the current test in many circuits. As for composition/recording: she used Nimmer’s definition; courts have tossed a lot of things about; maybe we should include some of these factors that come in now that people “compose” on tape in the definition of composition but there are practical barriers—interference/overlap with the sound recording right. I Will Always Love You was originally written in country style; defining composition copyright narrowly actually expands rights in covers.
Q: Did you poll people before deliberation as well as after?
A: We didn’t see a statistically significant swing between asking them 1-5 and after the jury instruction/deliberation. Might be able to test different jury instructions. (I think that didn’t answer the question; sounds like they didn’t ask individual jurors their reactions to hearing the definition, though I think that’s also less important given that deliberation is a part of what actually happens. This is significant work.)
Andrew W. Torrance, The University of Kansas School of Law, Design Beauty In The Eye Of The Judicial Beholder
Design patents are understanding. Law covers visual designs in various ways: design patent, TM, copyright, publicity, mask works. Tested ornamentality requirement in design patent—hypothesis was that ornamentality means attractive. Data: population of all the design patent cases coded by result—invalidity, no invalidity but no decision of infringement, and valid and infringed. Used human subjects to gauge attractiveness of designs covered. Conclusion: ornamentality may once have meant aesthetically attractive, but no longer so.
Darwin had theories about aesthetic preferences—might be functional/organizational: A human should find something beautiful because paying attention to it would have been advantageous in the environment of evolutionary adaptation—sexual aesthetics. Environmental cues regarding landscape (see Buccafusco presentation). Skill aesthetics: items may demonstrate desirable skill of the maker.
Design patents: there used to be an explicit requirement that the design be aesthetically pleasing.
Attractiveness, as coded by students, didn’t appreciably rise. But pleasing designs were increasingly found invalid and ugly designs less and less often were found invalid—that is, pleasing designs lost their advantage versus ugly designs. No difference in attractiveness of not invalid but not infringed. Nor with valid and infringed. As you move forward in time, the lines converge, and there appears to be no advantage to being aesthetically pleasing.
1982: Federal Circuit went to work on the aesthetically pleasing requirement and knocked it down, saying that “ornamental” just meant that the design couldn’t be the sole product of functional considerations. Empirical evidence may have detected evolution of design patent doctrine.
Future work: whether different generations evaluate what’s attractive differently; whether different fields of law behave differently.
Comment: confound might come not just because different age cohorts think differently but because they think differently over time; 1982 reactions might have been different.
Comment: novelty: maybe beauty’s been done and now ugly seems new and ornamental.
Comment: litigated cases may be different in attractiveness as they are in other features.
Torrance: move away from aesthetics on grounds that people can’t agree on what’s aesthetic. Judging functionality may also be highly subjective, but they may have been searching for greater objectivity.
Hughes: finally judges are taking Holmes’ admonition in Bleistein seriously. Arguably no one ever applies for a design patent unless it’s aesthetically pleasing to someone. (I’m not sure why that would be true—there are reasons to protect yourself against competition to apply for a design patent, and EU actors sure seem to use it for nonaesthetic reasons.) Design protection in the UK starts historically with calico prints, which is about aesthetics even if it’s not formally part of the standard.
A: courts do talk about saleable value. People will want to buy it.
IP Litigation and Theory
Nahoko Ono, Visiting Scholar, Columbia Law School, Secured Transactions in IP
UNCITRAL legislative guides on secured transactions (security interest, including mortgate or pledge), modeled after UCC Chapter 9; covered personal property in general, including IP, but not real property. In Japan, the civil code covers what in the US would be the UCC, property, contracts. Not so many patents in Japan (like the US, Japan has a history of wanting to be able to copy other nations’ tech). Many Japanese patents, like US ones, are not used, and mostly they’re used in intercorporate functions.
Why? Patent and copyright transaction related provisions were illogically inserted into the Civil Code, which (under the influence of German law) presumed tangible property and possession. The 1959 patent act was too detailed.
Supreme Court decision in 2006 showed Japan’s continuing troubles. P bank loaned to X with a pledge on X’s patent, duly requested JPO for registration. X assigned the patent to Y, then Y to Z. JPO registered the assignment first by mistake. JPO later adjusted the registration but was defeated by Z.
US has its own problems: where do you file? Berne Convention issues—do you need to register in order to perfect a security interest? UNCITRAL solution: general in principle, but an existing specific registry has priority.
Conclusion: don’t regulate recordation strictly; Japan has had a bad experience. For developing countries, the Japanese model is probably not helpful. Recording should be minimal about what has to be disclosed.
William Gallagher, Golden Gate University School of Law, The IP Law Disputing Process: Strategic Enforcement of Patent, Trademark, and Copyright Claims
Most IP enforcement occurs outside the legal system. Talking to lawyers (which has limitations of its own as compared to the IP owners themselves); they are accessible and we know lots about what lawyers do in almost every other area of law—divorce, white collar defense, prosecutors. We know that most disputes aren’t litigated, so empirical studies of case outcomes are inherently limited. If we worry about chilling effects, we have to worry about nonlitigated disputes—both for free speech and competition.
Almost 200 lawyers in the project—qualitative study with semi-structured interviews. How do you select targets, what factors influence enforcement and settlement decisions. There are repeat player advantages, especially if they are going after individual one-shot users of the legal system—trying to flesh out what that means in IP. Is there over-enforcement? How effective is resistance to allegedly improper enforcement? 90% of the time a C&D works, so what does that look like and what makes resistance effective when it happens? Varies by industry; movie industry doesn’t like suing fan sites. Rewards from aggressive patent enforcement are different from rewards from copyright/TM enforcement.
Lisa Ramsey: how do you avoid getting the idealized version?
A: ask very specific questions about what they did most recently, what they said, what they did this morning, etc.
Ramsey: who will talk to you?
A: virtually 98% response rate. Lawyers are self-important and they are happy to be asked.
Me: Culture clashes with lawyers from other countries? (British lawyers, in my limited experience, have a very different communication style from US lawyers that probably leaves both sides feeling hard done by, since two aggressive communication styles are even worse than one.)
A: didn’t get that, but did get people talking about culture clashes with those awful NY lawyers or those awful LA lawyers.
Q: use of automated systems to detect infringement?
A: didn’t capture that in interviews. Did ask them to list the forums in which they worked, but might not have followed up appropriately to dig that out.
Jamie Lund, St. Mary's University School of Law, An Empirical Examination of the Lay Listener Test in Music Composition Copyright Infringement
Musical work: melody, rhythm, harmony and lyrics, as understood from the 19th century by music publishers who wanted the same treatment as publishers of books.
Jury is asked to listen to the recordings but decide based only on the musical work, not on the performances in the recordings. 178 participants. Chose songs from Carey v. Swirsky (where Carey initially won summary judgment but the 9th Circuit reversed for a jury determination, so it was a middle-of-the-road case) and Gaste v. Kaiserman (where it was an extreme example of similarity and the plaintiff won at trial and won on appeal).
Half of the groups heard the pairs played similarly. Half heard them with different performance aspects—vocal phrasing, genre, orchestration are possible, but for the experiment they chose tempo, key, orchestration (what instruments, how many), and style (genre). Listen here. People who heard them played similarly and were asked to rate the similarity on a 1-5 scale gave 4.6 rating on average, while the ratings were substantially lower in the different performance style condition. Given the legal definition of substantial similarity and asked whether the two works were substantially similar, 38 in the similar performance style said yes, 6 said no; 7 said yes and 39 said no in the different performance style condition.
Gaste: Performance was still significant, though the works were highly similar. Performed similarly were rated 4.4, differently 3.07 (more similar than not). But there was a smaller effect of performance, and with a jury instruction for substantial similarity, 40 people said yes and 4 no on whether the works were substantially similar; in the different performance situation 36 people said yes and 10 said no. This suggests that there’s only so much you can do to game the system with a different performance.
Q: Did people hear the songs back to back?
A: Half were told to compare the songs; after the jury instruction they were told to pretend they were mock jurors, and they even had deliberations. People talked about their feelings about the songs.
Q: prior familiarity—if you know “Feelings,” it would be a basis of comparison as you heard the other song. Did you exclude based on past familiarity?
A: we asked people if they knew the song. Out of 178, 10 said they knew any of the songs. We didn’t back them out; not clear they’d get excluded from a jury either. That’s why she left them in.
Q: is it strange that the similar performance condition results were the same for both sets of songs?
A: Maybe. Some people possibly thought they were being gamed and thought there had to be some trick going on/trying to figure out what was being tested. But that also probably happens in litigation.
Grimmelman: any possibility of playing jurors multiple versions to help them appreciate composition v. performance? Also, are things you’re calling performance really properly classed as the composition, when you have the composition as embodied in the performance?
A: Multiple versions is a possible solution. Expert jury would be another possibility, but that’s hard. Another option: let’s have a special verdict form. Another: allow expert testimony on substantial similarity, contrary to the current test in many circuits. As for composition/recording: she used Nimmer’s definition; courts have tossed a lot of things about; maybe we should include some of these factors that come in now that people “compose” on tape in the definition of composition but there are practical barriers—interference/overlap with the sound recording right. I Will Always Love You was originally written in country style; defining composition copyright narrowly actually expands rights in covers.
Q: Did you poll people before deliberation as well as after?
A: We didn’t see a statistically significant swing between asking them 1-5 and after the jury instruction/deliberation. Might be able to test different jury instructions. (I think that didn’t answer the question; sounds like they didn’t ask individual jurors their reactions to hearing the definition, though I think that’s also less important given that deliberation is a part of what actually happens. This is significant work.)
Andrew W. Torrance, The University of Kansas School of Law, Design Beauty In The Eye Of The Judicial Beholder
Design patents are understanding. Law covers visual designs in various ways: design patent, TM, copyright, publicity, mask works. Tested ornamentality requirement in design patent—hypothesis was that ornamentality means attractive. Data: population of all the design patent cases coded by result—invalidity, no invalidity but no decision of infringement, and valid and infringed. Used human subjects to gauge attractiveness of designs covered. Conclusion: ornamentality may once have meant aesthetically attractive, but no longer so.
Darwin had theories about aesthetic preferences—might be functional/organizational: A human should find something beautiful because paying attention to it would have been advantageous in the environment of evolutionary adaptation—sexual aesthetics. Environmental cues regarding landscape (see Buccafusco presentation). Skill aesthetics: items may demonstrate desirable skill of the maker.
Design patents: there used to be an explicit requirement that the design be aesthetically pleasing.
Attractiveness, as coded by students, didn’t appreciably rise. But pleasing designs were increasingly found invalid and ugly designs less and less often were found invalid—that is, pleasing designs lost their advantage versus ugly designs. No difference in attractiveness of not invalid but not infringed. Nor with valid and infringed. As you move forward in time, the lines converge, and there appears to be no advantage to being aesthetically pleasing.
1982: Federal Circuit went to work on the aesthetically pleasing requirement and knocked it down, saying that “ornamental” just meant that the design couldn’t be the sole product of functional considerations. Empirical evidence may have detected evolution of design patent doctrine.
Future work: whether different generations evaluate what’s attractive differently; whether different fields of law behave differently.
Comment: confound might come not just because different age cohorts think differently but because they think differently over time; 1982 reactions might have been different.
Comment: novelty: maybe beauty’s been done and now ugly seems new and ornamental.
Comment: litigated cases may be different in attractiveness as they are in other features.
Torrance: move away from aesthetics on grounds that people can’t agree on what’s aesthetic. Judging functionality may also be highly subjective, but they may have been searching for greater objectivity.
Hughes: finally judges are taking Holmes’ admonition in Bleistein seriously. Arguably no one ever applies for a design patent unless it’s aesthetically pleasing to someone. (I’m not sure why that would be true—there are reasons to protect yourself against competition to apply for a design patent, and EU actors sure seem to use it for nonaesthetic reasons.) Design protection in the UK starts historically with calico prints, which is about aesthetics even if it’s not formally part of the standard.
A: courts do talk about saleable value. People will want to buy it.
IP Litigation and Theory
Nahoko Ono, Visiting Scholar, Columbia Law School, Secured Transactions in IP
UNCITRAL legislative guides on secured transactions (security interest, including mortgate or pledge), modeled after UCC Chapter 9; covered personal property in general, including IP, but not real property. In Japan, the civil code covers what in the US would be the UCC, property, contracts. Not so many patents in Japan (like the US, Japan has a history of wanting to be able to copy other nations’ tech). Many Japanese patents, like US ones, are not used, and mostly they’re used in intercorporate functions.
Why? Patent and copyright transaction related provisions were illogically inserted into the Civil Code, which (under the influence of German law) presumed tangible property and possession. The 1959 patent act was too detailed.
Supreme Court decision in 2006 showed Japan’s continuing troubles. P bank loaned to X with a pledge on X’s patent, duly requested JPO for registration. X assigned the patent to Y, then Y to Z. JPO registered the assignment first by mistake. JPO later adjusted the registration but was defeated by Z.
US has its own problems: where do you file? Berne Convention issues—do you need to register in order to perfect a security interest? UNCITRAL solution: general in principle, but an existing specific registry has priority.
Conclusion: don’t regulate recordation strictly; Japan has had a bad experience. For developing countries, the Japanese model is probably not helpful. Recording should be minimal about what has to be disclosed.
William Gallagher, Golden Gate University School of Law, The IP Law Disputing Process: Strategic Enforcement of Patent, Trademark, and Copyright Claims
Most IP enforcement occurs outside the legal system. Talking to lawyers (which has limitations of its own as compared to the IP owners themselves); they are accessible and we know lots about what lawyers do in almost every other area of law—divorce, white collar defense, prosecutors. We know that most disputes aren’t litigated, so empirical studies of case outcomes are inherently limited. If we worry about chilling effects, we have to worry about nonlitigated disputes—both for free speech and competition.
Almost 200 lawyers in the project—qualitative study with semi-structured interviews. How do you select targets, what factors influence enforcement and settlement decisions. There are repeat player advantages, especially if they are going after individual one-shot users of the legal system—trying to flesh out what that means in IP. Is there over-enforcement? How effective is resistance to allegedly improper enforcement? 90% of the time a C&D works, so what does that look like and what makes resistance effective when it happens? Varies by industry; movie industry doesn’t like suing fan sites. Rewards from aggressive patent enforcement are different from rewards from copyright/TM enforcement.
Lisa Ramsey: how do you avoid getting the idealized version?
A: ask very specific questions about what they did most recently, what they said, what they did this morning, etc.
Ramsey: who will talk to you?
A: virtually 98% response rate. Lawyers are self-important and they are happy to be asked.
Me: Culture clashes with lawyers from other countries? (British lawyers, in my limited experience, have a very different communication style from US lawyers that probably leaves both sides feeling hard done by, since two aggressive communication styles are even worse than one.)
A: didn’t get that, but did get people talking about culture clashes with those awful NY lawyers or those awful LA lawyers.
Q: use of automated systems to detect infringement?
A: didn’t capture that in interviews. Did ask them to list the forums in which they worked, but might not have followed up appropriately to dig that out.
IPSC session 3
Copyright Subject Matter
Olufunmilayo B. Arewa, University of California, Irvine School of Law, Writing Rights: Performance, Creativity, and Copyright’s Visual Bias
Classical voice in the 19th century was a lot like jazz as we think of it now—more mixing, improvisation by singers. Copyright’s assumptions about the locus of creativity look to the writings, but most people’s experience of music focuses on musical performance.
Songwriters are not very visible today. Composers are visible in classical music, but the songwriter is like the composer prior to the late 19th century, when people went to opera to see the performers, who were the locus of musicality. Diane Warren, most successful songwriter of our era, is unknown though she’s a Grammy winner, wrote Solitaire (Laura Branigan), I Don’t Want to Miss a Thing, How Can we be Lovers (Bolton), etc.
We often assume notation is objective and neutral because it’s written. Part of this is the reality of music technology when music became subject to copyright: it had to be written down when there were no persistent means of auditory reproduction. But we’ve had a systemic written bias that favors composers over performers.
Sound recording copyright: not until 1972; fixation disfavors improvisation. Performers often get neighboring rights, not full copyright. First performers can’t control future performances under the mechanical license for musical works.
Implications: rise of singer/songwriters, or people who do get songwriting credits at least. If Celine Dion sings your song, she gets songwriting credit. Think of music as we experience it: oral tradition comes in. Most music filed at Copyright Office doesn’t reflect what’s actually performed.
Billboard charts: number of songs written by performers have grown steadily. This does reflect the perfomer-artiste, but also the recognition that copyright benefits composers so performers insist on songwriting credit. Shapes people’s decisions about credit.
Visual bias: notation focused, assumes that notation is the authoritative source of music and that composition is the locus of creativity in music. This is not true across genres.
Newton v. Diamond: unique performance elements found only in sound recording. Court thinking in dichotomous ways about performance and composition; the visual bias reflects the assumption that protectable results come from standard rendition of written work. This is not true. Newton is the right outcome for the wrong reason.
Three sources of visual bias: historical, cognitive, and linguistic/semiotic. Historical: sacralization of classical texts. Prior to late 19th century, there was more improvisation and change. Changing classical music became anathema; performers lost the ability to change the music. That significantly deadened the classical tradition. Leads to declines in audience participation. Aria insertion: opera diva would come out on stage and sing an aria of her choice. Verdi hated this so much he started to insert provisions in his contracts banning it, and by the end of the 19th century composers had the power to prevent this.
Cognitive: musical notation is incomplete representation of what we hear; written music is not neutral, but disfavors certain elements of music; favors melody and harmony over rhythm, which is almost impossible to notate. Music is partly oral in almost every tradition.
Implications: think about visual bias and how it influences our judgments of infringement. Nonvisual forms of reproduction are now the norm. Music is created in performance and reduced to written composition later. Think internationally: greater recognition for performer’s rights.
Q: countervailing force—fair use is generally nonexistent for sound recordings. Is that compensation for the bias?
A: She doesn’t think it’s compensation, because fair use doesn’t work well in the nonvisual world. A lot of fair use music cases are about text/lyrics (Campbell) not music. De minimis use does address some of this, but not fair use music cases.
Betsy Rosenblatt: is this a visual bias or a fixation bias?
A: both. What courts say about music shows broad belief that written music is an authoritative representation. If we want copyright to protect living traditions, we have to understand how they actually work.
Q: do we want to give more to performers?
A: as between composers and performers the allocation is off, even if we’ve overpropertized.
Q: raises the question of whether performers would be the ones to benefit from a change.
A: that’s a broader question about copyright generally.
Ann Bartow, Pace Law School, Copyright Law and the Commoditization of Sex
This is a scary and dangerous piece. Copyright is not required for works that are not useful and that do not promote the progress of science/useful arts. First Amendment law has never precluded a decision to keep harmful works out of copyright’s subject matter—we say works that are substantially similar to existing copyrighted works/unauthorized derivative works are harmful and thus they don’t get copyright protection.
Courts used to say that porn wasn’t copyrightable. She doesn’t think that porn should be copyrightable. We’d still have porn, just as we’d still have other creative works without copyright. But lots of pornographers use copyright extensively, and they’re a whole lot better at extracting money than the music industry because of the power of shaming: someone who downloads 1000 Britney Spears songs has no taste, but someone who downloads a hundred porn films, especially if they suggest racial or other taboos, is really threatened in his social existence if that were publicized. Thus, there’s big pressure to settle.
Content-neutrality: copyright is not content neutral, ever: definition of derivative works isn’t content neutral, and neither is fair use.
Really clear: the harm she is talking about here is harm to performers, period. She is not talking about users. People get hurt/coerced making movies, and distribution continues the harm. Proposal: identify harmful porn and prevent it from taking advantage of copyright. New kind of registration: have the Copyright Office make an initial determination of works with live human performers and make a call. Pornographer can offer proof of voluntariness. If people were being harmed, then registration could be denied/cancelled. Opposition proceedings: if performer said there was a problem. This would also be a defense to infringement claims. (Not sure how well this would work for the people subject to shaming sanctions.)
This would incentivize keeping better records and not relying on subcontractors.
Many pornographers don’t care about copyright. But there’s still an expressive value in having the government look for harm. Also, copyright performs a structural role in commoditizing sex—the Marriott makes a bunch of money from selling access; Google and Yahoo make a bunch of money from porn, though with a complicated relationship to copyright.
The law is: a generally illegal act of buying and selling sex becomes legal when there’s a camera in the room, at which point the First Amendment kicks in. Porn is significantly linked to sex trafficking, and even when “voluntary” it’s heavily linked to economic coercion. It’s also dangerous.
My Q: I’ve been reading a lot of work by my colleague Robin West, who offers a critique of voluntariness/the absence of coercion as hiding from us the costs of sex that is not coerced but that the person—the woman—having it does not want. This proposal seems to valorize consent in circumstances where consent might not match harm. See also Perfect 10, which gets detailed contracts not just consenting but transferring models’ rights of publicity.
A: Bartow would be willing to consider economic coercion, as when the pornographer addicts a woman to heroin or even knows she’s addicted.
Christopher Buccafusco, Chicago-Kent College of Law, Making Sense of Intellectual Property
Koosh ball: copyrightable sculptural work or patentable? IP dichotomizes the human senses, so appeals to certain senses count as one type of work. Touch, smell, and taste are lower; sight and sound are higher. This distinction has been undermined by recent work in social sciences, aesthetic theory. We should make distinctions based on aesthetic theory rather than randomly as the courts seem to now.
How do we distinguish value? Chair v. painting of chair. Painting of chair looks good, chair itself feels good. What’s the difference between the one (clearly the subject of copyright) and the other (clearly the subject of patent)? Copyright cordoned off the types of products that appeal to the senses of sight and hearing—visually or auditorially stimulating are presumed appropriate; appeals to other senses are likely to get utility patent protection. Fabrics, garments, sex toys, ergonomic and kinesthetic devices are for patents.
Deviant cases: people trying to get the wrong type of protection—Koosh ball denied copyright because of its tactility; visually pleasing user interfaces are not patentable (too subjective, though patent is entirely comfortable with things like “smooth feel”). And then we have design patents, which patent prefers not to think about at all.
Where we find dichotomies we tend to find hierarchies. Copyright is the high. The function of visual v. tactile pleasure. A toy model of an airplane allows children’s minds to wander, but there’s nothing “functional” about inspiring imagination. But the tactile feel of the Koosh ball is functional because it inspires physical pleasure. Associations with the body/constraint are non-copyright.
Recently, this tradition has been challenged by modern aesthetic theory as well as cognitive and evolutionary psychology, haptic communication, culinary communication. All senses are processed in the same region of the brain. Everyone understands why we like bacon and ice cream—evolutionary perspective; but there are reasons to think the same is true of what we think of as aesthetic preferences, visually and auditorily. Artist and social scientist surveyed people around the world to find what they liked in paintings. Americans like blue, landscapes, wild and domestic animals, historical figures. In Finland, the same things. Kenya, the same. What people hate in paintings: modern painting. Preferences are adaptive.
Payoff for IP: think about a unity of the senses when it comes to IP, specifically with respect to copyright law. Treat appeals to senses the same: any communication of ideas, emotions, or pleasures to any sense in such a way as to create an original work of authorship, it’s an appropriate subject for copyright law. Rollercoasters: plausibly copyrightable. Food, yoga positions. Don’t do away with separability—there are substantial components of functionality in these as well. In the process, we want to get stuff in the right basket. Copyright for roller coasters may not do the world much good, but it’s for economic or moral reasons, not for the reason that riding is functional and looking at a painting isn’t.
Q: Extending copyright to roller coasters and food and yoga would be bad for society, even if it would be consistent. Doesn’t this show how bad the system is?
A: might be the case.
Mark McKenna: had me until you confessed we still need functionality. If copyright and patent aren’t really separate, what is the point of functionality? What lines will it draw?
A: Agnostic on that. (But what does it mean to be functional?)
McKenna: but what is the functionality you have in mind and how does it differ from what happens now?
A: drug you might take to lower your cholesterol v. drug you might take to create exciting series of hallucinations. Might express emotions, pleasures, ideas, but the cholesterol drug doesn’t.
My Q: but if pleasure is adaptive, then it’s the same as taking the cholesterol drug so you don’t die. This suggests something about copyright and incentives: do we want to incentivize modern painting? Why would adaptive pressures have an obvious payoff for copyright policy? We like bacon but it’s not necessarily good for us at the level we are currently able to consume it at.
My comments: There are fractal components to the hierarchy: use of visuals in patent law. Other work on the legal denigration of pleasure (v. aesthetics, which are important)—Amy Adler has some good stuff, Susan Reid.
Q: TM?
A: TM treats the senses as second-order phenomena: helping you buy stuff. Copyright and patent want more stuff. So TM doesn’t have to care about the value of smell itself, whereas copyright and patent think of that.
International and Human Rights
Elizabeth A. Rowe, University of Florida Levin College of Law, If the Dress Fits, Hire Him: Exploring the Intersection of Intellectual Property and Employment Discrimination Law
1970s: Southwest Airlines dubbed itself the “Love Airline,” and had a predominantly male passenger base, so chose a sexy image. Flight attendants (and ticket counter people) were in all their ads about “spreading love all over Texas,” etc. Go-go boots and hot pants were the outfit. 1981: Southwest was sued by men who weren’t being hired for these jobs. One of Southwest’s defenses was its corporate image, and women did feminine better than men did. Court was not amused; pick a new image if you need to. Southwest has rebranded.
But this is still an issue. Hooters girls; Hooters briefly ran Hooters Air. Playboy Bunnies: very strict requirements. Dallas Cowboy Cheerleaders. Only certain people fit in this uniform. Why can’t a man claim the right to be hired as a cheerleader?
What has changed in the last 30 years in employment law? Employer would need legitimate, nondiscriminatory reason to refuse to hire. Courts are looser over time over what counts as a “business necessity.” Is IP as good or better an excuse as some of these reasons? Appearance codes: courts widely recognize that employers have a right to dictate how you look when you come to work—uniforms, makeup, hair—subject to very few exceptions. Authenticity: someone with the “real” ethnic background. Consumer privacy: it’s ok for female patients to have female nurses. In general, employment law is employment at will: the employer doesn’t need a reason. Also restrictive covenants favor the employer—employment is at will, but employer can bind the employee to keep him/her from competing and the employee doesn’t get much if anything in exchange.
IP has also expanded a lot in the past 30 years. Not just in the law but in the way businesses think.
Olialia Empire: entire marketing strategy is to use platinum blondes to market various things. Creating a resort in the Maldives staffed only by blondes.
Q: the decision to discriminate predates the IP. Wouldn’t judges be able to tell that?
A: that won’t always happen. Lots of situations where people try to figure out “how are we going to sell our wings/clothes” and then find the policy.
My Q: I think that answer is describing exactly this process: you decide to discriminate in order to build a brand. So the discrimination precedes the IP (the short-shorts aren’t inherently distinctive, for one thing, so the discrimination necessarily precedes the development of secondary meaning).
A: there are evidentiary issues about what your policy was. (I think they’d be easier if they were matters of branding v. matters of somehow not hiring any men.)
Market definition matters; if you’re selling air travel, you can’t sell it with discrimination. But the potential defense is: men feel better when they’re on the plane surrounded by women in go-go boots, so we’re selling nicer air travel. (I feel like discrimination law answered this, though not perfectly well, and that adding IP on the other side of the balance really doesn’t help.)
Q: so could we set a boundary—trade dress covers the uniform, but you have to design a uniform for guys?
A: TM office doesn’t evaluate trade dress for whether it’s discriminatory. Employment law is the area of the law that cares. One of her research questions is whether IP should care.
Olufunmilayo B. Arewa, University of California, Irvine School of Law, Writing Rights: Performance, Creativity, and Copyright’s Visual Bias
Classical voice in the 19th century was a lot like jazz as we think of it now—more mixing, improvisation by singers. Copyright’s assumptions about the locus of creativity look to the writings, but most people’s experience of music focuses on musical performance.
Songwriters are not very visible today. Composers are visible in classical music, but the songwriter is like the composer prior to the late 19th century, when people went to opera to see the performers, who were the locus of musicality. Diane Warren, most successful songwriter of our era, is unknown though she’s a Grammy winner, wrote Solitaire (Laura Branigan), I Don’t Want to Miss a Thing, How Can we be Lovers (Bolton), etc.
We often assume notation is objective and neutral because it’s written. Part of this is the reality of music technology when music became subject to copyright: it had to be written down when there were no persistent means of auditory reproduction. But we’ve had a systemic written bias that favors composers over performers.
Sound recording copyright: not until 1972; fixation disfavors improvisation. Performers often get neighboring rights, not full copyright. First performers can’t control future performances under the mechanical license for musical works.
Implications: rise of singer/songwriters, or people who do get songwriting credits at least. If Celine Dion sings your song, she gets songwriting credit. Think of music as we experience it: oral tradition comes in. Most music filed at Copyright Office doesn’t reflect what’s actually performed.
Billboard charts: number of songs written by performers have grown steadily. This does reflect the perfomer-artiste, but also the recognition that copyright benefits composers so performers insist on songwriting credit. Shapes people’s decisions about credit.
Visual bias: notation focused, assumes that notation is the authoritative source of music and that composition is the locus of creativity in music. This is not true across genres.
Newton v. Diamond: unique performance elements found only in sound recording. Court thinking in dichotomous ways about performance and composition; the visual bias reflects the assumption that protectable results come from standard rendition of written work. This is not true. Newton is the right outcome for the wrong reason.
Three sources of visual bias: historical, cognitive, and linguistic/semiotic. Historical: sacralization of classical texts. Prior to late 19th century, there was more improvisation and change. Changing classical music became anathema; performers lost the ability to change the music. That significantly deadened the classical tradition. Leads to declines in audience participation. Aria insertion: opera diva would come out on stage and sing an aria of her choice. Verdi hated this so much he started to insert provisions in his contracts banning it, and by the end of the 19th century composers had the power to prevent this.
Cognitive: musical notation is incomplete representation of what we hear; written music is not neutral, but disfavors certain elements of music; favors melody and harmony over rhythm, which is almost impossible to notate. Music is partly oral in almost every tradition.
Implications: think about visual bias and how it influences our judgments of infringement. Nonvisual forms of reproduction are now the norm. Music is created in performance and reduced to written composition later. Think internationally: greater recognition for performer’s rights.
Q: countervailing force—fair use is generally nonexistent for sound recordings. Is that compensation for the bias?
A: She doesn’t think it’s compensation, because fair use doesn’t work well in the nonvisual world. A lot of fair use music cases are about text/lyrics (Campbell) not music. De minimis use does address some of this, but not fair use music cases.
Betsy Rosenblatt: is this a visual bias or a fixation bias?
A: both. What courts say about music shows broad belief that written music is an authoritative representation. If we want copyright to protect living traditions, we have to understand how they actually work.
Q: do we want to give more to performers?
A: as between composers and performers the allocation is off, even if we’ve overpropertized.
Q: raises the question of whether performers would be the ones to benefit from a change.
A: that’s a broader question about copyright generally.
Ann Bartow, Pace Law School, Copyright Law and the Commoditization of Sex
This is a scary and dangerous piece. Copyright is not required for works that are not useful and that do not promote the progress of science/useful arts. First Amendment law has never precluded a decision to keep harmful works out of copyright’s subject matter—we say works that are substantially similar to existing copyrighted works/unauthorized derivative works are harmful and thus they don’t get copyright protection.
Courts used to say that porn wasn’t copyrightable. She doesn’t think that porn should be copyrightable. We’d still have porn, just as we’d still have other creative works without copyright. But lots of pornographers use copyright extensively, and they’re a whole lot better at extracting money than the music industry because of the power of shaming: someone who downloads 1000 Britney Spears songs has no taste, but someone who downloads a hundred porn films, especially if they suggest racial or other taboos, is really threatened in his social existence if that were publicized. Thus, there’s big pressure to settle.
Content-neutrality: copyright is not content neutral, ever: definition of derivative works isn’t content neutral, and neither is fair use.
Really clear: the harm she is talking about here is harm to performers, period. She is not talking about users. People get hurt/coerced making movies, and distribution continues the harm. Proposal: identify harmful porn and prevent it from taking advantage of copyright. New kind of registration: have the Copyright Office make an initial determination of works with live human performers and make a call. Pornographer can offer proof of voluntariness. If people were being harmed, then registration could be denied/cancelled. Opposition proceedings: if performer said there was a problem. This would also be a defense to infringement claims. (Not sure how well this would work for the people subject to shaming sanctions.)
This would incentivize keeping better records and not relying on subcontractors.
Many pornographers don’t care about copyright. But there’s still an expressive value in having the government look for harm. Also, copyright performs a structural role in commoditizing sex—the Marriott makes a bunch of money from selling access; Google and Yahoo make a bunch of money from porn, though with a complicated relationship to copyright.
The law is: a generally illegal act of buying and selling sex becomes legal when there’s a camera in the room, at which point the First Amendment kicks in. Porn is significantly linked to sex trafficking, and even when “voluntary” it’s heavily linked to economic coercion. It’s also dangerous.
My Q: I’ve been reading a lot of work by my colleague Robin West, who offers a critique of voluntariness/the absence of coercion as hiding from us the costs of sex that is not coerced but that the person—the woman—having it does not want. This proposal seems to valorize consent in circumstances where consent might not match harm. See also Perfect 10, which gets detailed contracts not just consenting but transferring models’ rights of publicity.
A: Bartow would be willing to consider economic coercion, as when the pornographer addicts a woman to heroin or even knows she’s addicted.
Christopher Buccafusco, Chicago-Kent College of Law, Making Sense of Intellectual Property
Koosh ball: copyrightable sculptural work or patentable? IP dichotomizes the human senses, so appeals to certain senses count as one type of work. Touch, smell, and taste are lower; sight and sound are higher. This distinction has been undermined by recent work in social sciences, aesthetic theory. We should make distinctions based on aesthetic theory rather than randomly as the courts seem to now.
How do we distinguish value? Chair v. painting of chair. Painting of chair looks good, chair itself feels good. What’s the difference between the one (clearly the subject of copyright) and the other (clearly the subject of patent)? Copyright cordoned off the types of products that appeal to the senses of sight and hearing—visually or auditorially stimulating are presumed appropriate; appeals to other senses are likely to get utility patent protection. Fabrics, garments, sex toys, ergonomic and kinesthetic devices are for patents.
Deviant cases: people trying to get the wrong type of protection—Koosh ball denied copyright because of its tactility; visually pleasing user interfaces are not patentable (too subjective, though patent is entirely comfortable with things like “smooth feel”). And then we have design patents, which patent prefers not to think about at all.
Where we find dichotomies we tend to find hierarchies. Copyright is the high. The function of visual v. tactile pleasure. A toy model of an airplane allows children’s minds to wander, but there’s nothing “functional” about inspiring imagination. But the tactile feel of the Koosh ball is functional because it inspires physical pleasure. Associations with the body/constraint are non-copyright.
Recently, this tradition has been challenged by modern aesthetic theory as well as cognitive and evolutionary psychology, haptic communication, culinary communication. All senses are processed in the same region of the brain. Everyone understands why we like bacon and ice cream—evolutionary perspective; but there are reasons to think the same is true of what we think of as aesthetic preferences, visually and auditorily. Artist and social scientist surveyed people around the world to find what they liked in paintings. Americans like blue, landscapes, wild and domestic animals, historical figures. In Finland, the same things. Kenya, the same. What people hate in paintings: modern painting. Preferences are adaptive.
Payoff for IP: think about a unity of the senses when it comes to IP, specifically with respect to copyright law. Treat appeals to senses the same: any communication of ideas, emotions, or pleasures to any sense in such a way as to create an original work of authorship, it’s an appropriate subject for copyright law. Rollercoasters: plausibly copyrightable. Food, yoga positions. Don’t do away with separability—there are substantial components of functionality in these as well. In the process, we want to get stuff in the right basket. Copyright for roller coasters may not do the world much good, but it’s for economic or moral reasons, not for the reason that riding is functional and looking at a painting isn’t.
Q: Extending copyright to roller coasters and food and yoga would be bad for society, even if it would be consistent. Doesn’t this show how bad the system is?
A: might be the case.
Mark McKenna: had me until you confessed we still need functionality. If copyright and patent aren’t really separate, what is the point of functionality? What lines will it draw?
A: Agnostic on that. (But what does it mean to be functional?)
McKenna: but what is the functionality you have in mind and how does it differ from what happens now?
A: drug you might take to lower your cholesterol v. drug you might take to create exciting series of hallucinations. Might express emotions, pleasures, ideas, but the cholesterol drug doesn’t.
My Q: but if pleasure is adaptive, then it’s the same as taking the cholesterol drug so you don’t die. This suggests something about copyright and incentives: do we want to incentivize modern painting? Why would adaptive pressures have an obvious payoff for copyright policy? We like bacon but it’s not necessarily good for us at the level we are currently able to consume it at.
My comments: There are fractal components to the hierarchy: use of visuals in patent law. Other work on the legal denigration of pleasure (v. aesthetics, which are important)—Amy Adler has some good stuff, Susan Reid.
Q: TM?
A: TM treats the senses as second-order phenomena: helping you buy stuff. Copyright and patent want more stuff. So TM doesn’t have to care about the value of smell itself, whereas copyright and patent think of that.
International and Human Rights
Elizabeth A. Rowe, University of Florida Levin College of Law, If the Dress Fits, Hire Him: Exploring the Intersection of Intellectual Property and Employment Discrimination Law
1970s: Southwest Airlines dubbed itself the “Love Airline,” and had a predominantly male passenger base, so chose a sexy image. Flight attendants (and ticket counter people) were in all their ads about “spreading love all over Texas,” etc. Go-go boots and hot pants were the outfit. 1981: Southwest was sued by men who weren’t being hired for these jobs. One of Southwest’s defenses was its corporate image, and women did feminine better than men did. Court was not amused; pick a new image if you need to. Southwest has rebranded.
But this is still an issue. Hooters girls; Hooters briefly ran Hooters Air. Playboy Bunnies: very strict requirements. Dallas Cowboy Cheerleaders. Only certain people fit in this uniform. Why can’t a man claim the right to be hired as a cheerleader?
What has changed in the last 30 years in employment law? Employer would need legitimate, nondiscriminatory reason to refuse to hire. Courts are looser over time over what counts as a “business necessity.” Is IP as good or better an excuse as some of these reasons? Appearance codes: courts widely recognize that employers have a right to dictate how you look when you come to work—uniforms, makeup, hair—subject to very few exceptions. Authenticity: someone with the “real” ethnic background. Consumer privacy: it’s ok for female patients to have female nurses. In general, employment law is employment at will: the employer doesn’t need a reason. Also restrictive covenants favor the employer—employment is at will, but employer can bind the employee to keep him/her from competing and the employee doesn’t get much if anything in exchange.
IP has also expanded a lot in the past 30 years. Not just in the law but in the way businesses think.
Olialia Empire: entire marketing strategy is to use platinum blondes to market various things. Creating a resort in the Maldives staffed only by blondes.
Q: the decision to discriminate predates the IP. Wouldn’t judges be able to tell that?
A: that won’t always happen. Lots of situations where people try to figure out “how are we going to sell our wings/clothes” and then find the policy.
My Q: I think that answer is describing exactly this process: you decide to discriminate in order to build a brand. So the discrimination precedes the IP (the short-shorts aren’t inherently distinctive, for one thing, so the discrimination necessarily precedes the development of secondary meaning).
A: there are evidentiary issues about what your policy was. (I think they’d be easier if they were matters of branding v. matters of somehow not hiring any men.)
Market definition matters; if you’re selling air travel, you can’t sell it with discrimination. But the potential defense is: men feel better when they’re on the plane surrounded by women in go-go boots, so we’re selling nicer air travel. (I feel like discrimination law answered this, though not perfectly well, and that adding IP on the other side of the balance really doesn’t help.)
Q: so could we set a boundary—trade dress covers the uniform, but you have to design a uniform for guys?
A: TM office doesn’t evaluate trade dress for whether it’s discriminatory. Employment law is the area of the law that cares. One of her research questions is whether IP should care.
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