Notice and Notice Failure at BU, panel 5

Lydia Loren – Fixation as Notice in Copyright Law

 

3 different roles: (1) protectability; (2) infringement—reproduction etc. require fixation; (3) preemption—no preemption for unfixed works.  What kind of a notice function might fixation play in each area?

 

Statutory definition: fixed when its embodiment is sufficiently permanent/stable to be perceived, reproduced etc. for a period of more than transitory duration. Copies are material objects (other than phonorecords) in which a work is fixed by any method now known/later developed. 

 

Protectability: Early cases: AV works can be fixed in software.  Recently: Kelly v. Chicago Park District, wildflower garden wasn’t fixed/copyrightable.  Garcia v. Google: performer didn’t fix performance under her authority.  Kelly says: “the law must have some limits”—authorship is a concern as well as fixation.  The real barrier to fixation is essential, not temporal—the garden may continue season to season but its nature is dynamic change.  Garcia: the creator of the film fixed the performance; Garcia played no role in the fixation.

 

Infringement cases are about digital copies.  MAI gives us RAM copies as physical embodiments, but Cablevision says there’s a duration requirement and partial, constantly overwritten (after seconds) buffer copies don’t qualify.

 

What is this really about?  Decisions reflect underlying instinct about a type of notice: crossing boundaries into something eligible for copyright protection/remaining in state-law eligible area.  Entering into something that qualifies for a type of infringement liability. Tangibility and its relationship to markets.  Fixation demonstrates intent to exploit the work in the market: either the market for a single copy or the market for copies.  Laura Heymann made this argument a while back: what kinds of works are worth protecting, can be engaged w/as commodities rather than experiences—by a person who is more consumer than audience. A work that is not a thing has difficulty becoming an article of commerce.  Infringement: sufficiently stable to interfere w/markets.

 

If fixation is notice, the audience for the notice that’s relevant in copyrightability is the author: you’ve now created a thing.  When it’s an encounter w/a fixed work (infringement), the authorship in that fixed work may be protected, the audience is others.  Says nothing about the scope of copyright, just about the potential/something in the contents of the fixed work is or may be copyrightable.  Copyright owner also gets notice that someone might have created something that interferes w/their market.  Both copyrightability and infringement have limits.

 

One should not take infringement fixation cases to talk about copyrightability fixation cases.  Even in the legis. history, Congress discusses White-Smith v. Apollo, an infringement case rather than copyrightability in its discussion of mistakes.  In copyrightability, we are ill served by a focus on durational permanence of minutes v. seconds.  Sand castles built below the high tide line; ice sculptures in hot places.  Authorial intent of creation of an exploitable copy should matter, which affects our analysis of bridal bouquets and tweets.  We should use our instincts to say that digital ephemera isn’t fixed enough—it’s a RAM copy, but still not eligible.

 

Fred Von Lohmann, Google: Notice to whom? In many of the papers there is an issue of audience. Loren suggests that fixation is notice to creators, notice to users, and perhaps notice to lawmakers/courts.  Garcia makes real the feature of fixation as focusing creators on a single moment in which we can determine who is the author.  At least that gives us a time to pay attention to—not the 3 months in the studio before that, or the idea a year before.

 

Unfixed infringements? Why do we think a derivative work can be infringing without fixation? Why do we allow unfixed public performances to be infringing? [Tony Reese has eloquently explained why you shouldn’t be able to combine derivative work + public performance right in this way, though unfixed public performances can be infringements of an original work.] 

 

Sufficiently stable to be exploited: does that work?  Has that ever worked?  Vine, Periscope, other new live streaming tech.  The organizers of a boxing match didn’t think they were organizing an event too evanescent to be exploited.  If fixation was intended to be a marker of that which had market value and that which didn’t, how do we deal with tech eroding the line.  Performances as things for which the door was adequate protection: you charged audiences to attend.  That’s not new—the rest of the fixation definition has the NFL clause, allowing © in broadcast of live events where there is a simultaneous fixation.

 

Other attack: nonpersistent copies: what do we do about copies that are brief, but create value—machine learning; Shazam app that can ID music—lots of reproductions, briefly, to extract metadata.  Have already seen legal friction along that frontier. What’s too evanescent to be exploited?  European approach in InfoSoc directive: introduce a concept of “no independent economic significance.”  Moved focus away from formal Q of fixation towards a more market-oriented definition. 

 

If we think fixation is so important, is there some limit on when it can be cast aside? This goes to the preemption question.  There is an exit opportunity for lawmakers: they can go to the Commerce Clause to evade the Copyright Clause; states can legislate on unfixed works.  What does it mean if lawmakers can treat fixation as optional?  Does that mean that fixation has to be part of a bargain that lawmakers make?

 

Peter Menell – Economic Analysis of Copyright Notice

 

In land, notice is a magic bullet: inform people in advance of rights and boundaries—a really good focal point for notice generally. Land is geographically unique, can be physically inspected and marked.  Recordation—reinforced by tax rules etc.  Controlled boundaries: you know what acts will interfere w/it.  You typically can preclear whatever problems you might encounter—real estate developers don’t put much at risk of expropriation b/c they get the zoning board to back this up.  Wasn’t always so perfect, but nearly so.  [Except for mortgage securitization and Ibanez problems which most of us have agreed to ignore, because banks must own something.]

 

Copyright and real estate are different b/c of building and borrowing as key feature of creativity. Notice deals w/discrete issues: (1) tracing—what governs a work you might interact w/; (2) scope—where are the things in a protectable work that you are free to use, such as ideas/tropes/facts?

 

Tracing: consider “Happy Birthday to You.” There isn’t a geographically unique resource but multiple copies; marking is optional and would be done at earlier time, with possibly unknown changes; recording isn’t required; even if it was still valid, there are unprotected regions within boundaries; no effective preclearance institutions such as opinion letter from Copyright Office.

 

Tracing: there is a magic bullet solution.  Today we have tech that is capable of doing this on a massive scale.  You can scan images that aren’t even that close and find them.  We now have a perfect magic bullet system in Content ID.  (!)  If we rewrote the Copyright Act today, we could use this system.  What you’re marking w/these technologies is the work itself, and there’s nothing preventing everyone from digitizing & enabling everyone else to find the work. Voids all problems of geographic/int’l disparity.  Unique global identifier: a concept that exists in computer science.  Failure to mark could limit remedies.

 

Digital ID safe harbor act: propose that © owners should be encouraged to make a digital deposit, in which works are archived into a searchable public archive.  Cumulative creators can search via contentID.  If no match, then no statutory damages available.

Scope would remain a problem; there is no magic bullet: the New Yorker New Yorker’s eye view of the world versus the Moscow on the Hudson poster.  Grateful Dead case in which reproducting posters is fair use when used for historical value and not expressive value.  When judge learned that Bill Graham Archives was being abusive in its demands, concluded it was fair use.  Why not have algorithms decide this too?

 

We should have up-front insurance.  Registry/quiet title, with preclearance institutions. Promote bargaining through licensing. One problem is that no one has to respond when a license is requested. A good citizen should have to respond.  If someone makes you a reasonable offer and you don’t respond—you should pay atty fees if you later sue.  PROs like ASCAP and ContentID are helping.  The solution doesn’t have to be perfect.  Compulsory licensing would also be good.

 

Substantive law: fair use—judges are better at saying “play nice” than trying to figure out the four factors. (RT: Who decides niceness? When it comes to whether someone who is not in a position of power has been “playing nicely” with a powerful person’s work or even just negotiating in good faith, I am reminded of Dale Spender’s observation: “The talkativeness of women has been gauged in comparison not with men but with silence. Women have not been judged on the grounds of whether they talk more than men, but of whether they talk more than silent women.”  Look at what happened to 2 Live Crew and Alice Randall in the lower courts, for example.)  

 

Remedies: Injunctive relief should be limited to exact copies—law is moving in that direction anyway.  Don’t shut down a billion dollar brand because it may have started w/two misappropriated names, as Kozinski said in Mattel v. MGA.  No disgorgement if someone has altered the work, v. piracy—just fair monetary. Statutory damages should also be limited to piracy.  (Is Bill Graham Archives an example of piracy? They were selling the posters, along with a package of other information?)

 

Wendy Gordon: much is plausible and convincing, esp. on tracing v. scope.  Intuitive reactions aren’t necessarily wrong. When you’re dealing w/ a question that can’t be solved with notice, like scope, then trying to make notice externalities less destructive by changing the remedies makes sense.  But digital watermarking doesn’t convince, b/c she suggests that would disqualify the unsearchable.  Orphan works problem: a lot of the time it’s the kind of ephemera that would never be watermarked now.  Buying into a larger question if you imagine making watermarking mandatory would solve notice problems.  Need for a new device to protect certain kinds of privacy (I was thinking about revenge porn as he was talking but Gordon has identified many other elements of the problem).

 

Transaction costs are meaningless in the abstract; must always be judged by the value of the transaction.  5 minutes to ask for permission may be significant if it gives you only a moment’s pleasure.  When you use real estate as an analogy, you’re dealing with something that has high value in many senses, including long term economic value. A dangerous model for ©, which serves many goals for people often producing things of little commercial value.  Recording requirements may be excellent for a land parcel, but not for the ephemera that make up orphan works or diaries.

 

Oren Bracha – Copyright Accidents (coauthored with Patrick Goold)

 

Judge Young said: It’s your duty and right as academics to pursue the ideas you think are right, even if they aren’t yet supported by judges and legislatures.

 

Copyright accidents: e.g., using an old photo in a documentary; using publicly licensed code “tainted” by proprietary code; including an “orphan” book in a digitization project. Should they be treated differently than any other infringement? 

 

All of them ex ante are risks, which only materialize ex post.  In other areas, we tend to treat such cases differently than cases involving more than ex ante risk, such as certainty of transgressing on some protected interest.  [Aren’t examples one and three examples of certainty of transgressing, with uncertainty about whether the owner of the interest cares in the slightest or even knows they are the owner?  As Henry Smith has said, you don’t need to know who owns the car you encounter on the street to know it’s not your car; but here the object you encounter is unlikely to be as valuable as a car.] Standard answer in ©: strict liability (though this hasn’t always been so). 

 

In tort cases, we often consider the ability to bargain/ability to solve the problem through markets instead of the law when parties impose risks on each other.  Market won’t take care of © problems because the boundaries of the rights are elusive; the legal status of the work is uncertain; the owner’s work is unknown and preferences uncertain; the owner’s identity may itself be unknown. These are issues of notice failure.  Bracketing in this paper the issue of legal uncertainty (is this fair use or not?).

 

The problem is one of reciprocal nature: Coase, The Problem of Social Cost.  If it’s a bilateral conduct issue, then look for cost effective prevention.  As would-be infringer: People can invest in search to find the owner, the copyright status, etc.  Or you could not create what you’re making, avoiding the risk entirely. But there are also many things © owners can do to decrease risks of accidents: registering ©, recording transfers, affixing notice.  Registering w/Content ID.  If user offers well-publicized opt-out, then use it.  Going after a third party if the third party is enabling lots of such uses. Strict liability gives optimal incentives to injurer to invest in prevention; but it doesn’t give any incentives to the victim/owner to invest in prevention.  Negligence gives them both optimal incentives.

 

What to do? If there is perfect Content ID, then we have perfect external means to solve the problem and don’t need to worry.  But he doubts this will happen any time soon.  A negligence element in the prima facie case?  Negligence proxy rules? Incorporate into fair use?

 

Fred Yen: Not all of these are really accidents. One can come across an orphan work, such as a digital photo (clearly taken after 1978)—hard to call going ahead and using it even after reasonable attempts to find the owner “accidental” infringement.  You don’t know if the owner will discover it/care, but not an accident. 

 

Legal accidents and negligence is a complicated topic, which Bracha doesn’t purport to address, but the line between fact and law is itself unclear: the D may think she’s only borrowing the facts but find out she’s taking protectable expression, or vice versa.  Sometimes these are treated as factual questions.

 

But it’s not always the case in tort cases that a defendant is allowed to rely on efforts of employee to avoid accidents—often true w/publishers dealing w/authors; publishers have staff and expertise.  Negligence might not let them evade liability.

 

Fault: there’s a reason we often start teaching torts w/intentional torts—there is an intuitive understanding.  It’s the later torts that get hard v. walking up and punching a person in the nose.  When we discuss the object of intent that can give rise to a battery, we ask what does the plaintiff reasonably find offensive: a punch in the nose, which everyone understand. What would be the analog in ©—full copying?  What about a not-well-known acquaintance giving me a hug—is that reasonably offensive?  Might be equivalent of copying a few pages for use in class.  Incidental bump on the subway?  Might be similar to ephemeral use.

 

There are various forms of intent courts sometimes accept as dividing line between faulty and not faulty: intentional touch (intent to copy p’s work); intent to touch in a way a reasonable person would find harmful or offensive, regardless of subjective intent (Nation’s publication of quotes from Ford’s memoir before the memoir was publication); intent to touch in a way D subjectively understands P will find offensive (piracy).  Maybe a publisher who genuinely believes there’s no unlicensed material used in a book simply lacks intent to touch/copy.  Time-shifting: maybe P thinks it’s offensive but we understand why individual people wouldn’t agree/understand.  Posting an entire short poem on a website to express your own thoughts—is that subjectively ok even if we understand why a reasonable person would be offended?

 

Privilege: in a torts model, you’d encounter public necessity and private necessity. These also come into our intuitions.  Transformative value/fair use.  Public necessity, we don’t ask you to pay; private necessity: you do have to pay for the damage you cause—Texaco or maybe even orphan works.

 

Gordon: what you’re describing wouldn’t be treated as negligence in the common law.  If I do a good faith search and make a factual determination about the boundaries of my land, if I’m wrong I’m still a trespasser.  I will have to disgorge profit I make.  There’s lots of historical questions about why a good faith belief in erroneous facts should trigger trespass liability, but that’s the pattern.

 

You assume strict liability means there will be no internalization of precautions, b/c P can always sue, but everything’s reciprocal. If a class of people isn’t liable, they might nonetheless be bribed by the other side (consumers willing to pay more for a safer product)—even after strict liability consumers may be willing to pay more for safety they won’t have to sue over, despite their legal entitlements.

Orly Lobel: Agency letter—safe haven if you tried but made missteps?  Computerized ways of dealing w/some issues—could we have tech of crowdsourcing to do the analysis? Ratings and reviews?

 

Menell: Perceived by many as property rights; I think of them more as regulatory and I’d like © to be seen as capable of admin adjustment and fine-tuning. DMCA anti-circumvention safe harbors is done in regulatory setting. B/c we never have perfect scope knowledge, we should have these other types of adjustments.  Crowdsourcing—trying to estimate what a jury would do after litigation; no more acceptable to © owners.  Agency might work better, but can’t be perfectly solved.

 

RT: Q for Loren: tell me why this distinction between fixation analyses depending on whether copyrightability or infringement is at issue is ok w/the statutory language.  And are either of them fit for use in preemption? 

 

Loren: other examples where terms turn out to mean different things in different context—willfulness for statutory damages/criminal liability; derivative works for protectability/infringement.  Doesn’t like that but might be something worth living with.

 

RT: Q for Menell: What is the basis for the claim that Content ID is perfect?  Matching problems in part b/c as we heard yesterday from Viacom’s GC they fear deliberate attempts to evade (not open and notorious use) so the algorithm is not written in the way you want what you are calling Content ID to be written.  This is evident already in the example you show: two different recordings being identified as the same despite visually apparent differences; they were clearly broadcast on different channels with different additional materials and it’s quite possible that the claimant only has a claim in the chyron despite using the rest of the image to create the digital fingerprint to identify what it is that they have a claim to; separately, there are ownership claiming problems, where the existence of “orphans” creates a massive squatter problem—like fake liens filed by right-wing citizens.

 

Menell: [the initial burden would be on the would-be user:] anyone who wants to be part of system would deposit stuff into the database. People could run scans against this. That would tell you whether any matches occur.  Doesn’t solve tracing problems.  At least if you’re Ken Burns you get some data.  Maybe we need separate protection for private materials. Anyone who wants to put materials out into the world has to register those works.  If you didn’t also go into a very low cost registration option, others would be able to use.  Clear out a lot of tracing problems.  (And create them when trolls register zillions of photos they find online that they think won’t be registered by anyone else … as Gordon says, this isn’t land.)

 

Von Lohmann: When I hear tort, I think insurance.  Many of these solutions come back to “fix statutory damages.”  If this is really a problem of statutory damages, aren’t these solutions only solutions in the margins?  The first-order problem is really remedies.

 

Bracha: still the Q of who should get insurance, the plaintiff or the defendant?  But yes, remedies are a huge part of the problem. 

 

Q: why not apply Bracha’s analysis to patent as well?

 

Bracha: there is some writing in this vein.  Trespass in patent might be different.

 

Gordon: though trespass does operate where the trespasser has done everything he can but was wrong.

 

Henry Smith: the temptation is to load more things into the recording system.  Liens, easements, etc. What about people who want to add in limited permissions.  Raises a contractual boilerplate problem—touch and concern is the policing device in land. But once you’ve got something for tracing people will want to load on all this additional info.  (Carol Rose's fabulous Crystals and Mud in Property Law talks about this overloading and the effects on notice/predictability.)

 

Menell: content ID is a bit like that—allows people to specify CC, etc.  (Hunh?  Allows you to specify whether YouTube will run ads, whether claimant will allow others to monetize their channels if they use Content ID’d chunks, but I am not aware it supports CC.) We’ve reached a tech stage where we’re capable of making the work itself the way of solving notice. No longer geographically/tied to a specific copy. Then you layer responsibilities onto it—e.g., you have to maintain contact info.  Would we want maintenance fees? 

 

Gordon: why do you think the magic bullet will work?  How do I determine whether a painting infringes another painting—it’s only the digital versions that can be traced and many infringements aren’t digital.

 

Menell: can do it for music; digitization is getting better.  Architectural works: architect will have to submit photo. But mostly people are suing over AV works and music.  But if we were sitting down w/technologists, we could say it’s not going to be that hard a problem.  (See xkcd on this issue.)  Easy to add photos, text, film—99% of what’s commercially significant.

 

Jane Ginsburg: Fixation performs the notice function of letting everyone know what the work is.  But you may have conflated the work with the fixation.  The fixation tells us what the work is.  But for the sand castle, ice sculpture: those are works. They happen to be incorporeal.  The tide washing away/sun melting doesn’t take them out of copyright b/c they’ve been fixed in a tangible medium of expression through photographs, which prove they’re perceptible for more than transitory duration. Once we know that the work exists, that’s enough even if the original instantiation disappears.

 

Loren: sure, photo can fix. But what’s a transitory duration?  Courts are saying that perception isn’t the only requirement. There’s a durational component.

Notice and Notice Failure at BU, Panel 4

Orly Lobel – Enforceability TBD: From Status to Contract in IP and Human Capital Law

 

Noncompete agreements: used to blur lines of IP regimes, make it harder to tell what is owned/ownable.  Trade secret lawsuits are used in anticompetitive ways, to put startups out of business.

 

Amazon’s standard contract: during employment, “employee will devote employee’s entire productive time, ability, attention, and effort to furthering Amazon’s best interests” … amazingly broad.  Innovation assignment contracts don’t care about definition of IP; they list everything, whether patentable or not, copyrightable or not, reduced to practice or not, trade secrets, confidential business information, know-how, etc.  NDAs are equally capacious.

 

New empirical study: 34% of employees asked to sign noncompete after they accepted the job; large majority have no negotiation/bargaining is rare; electronic contracts with pop-up notifications to “accept” all terms—“cubewrap”; handbooks, policies, manuals containing noncompetes.

 

80% didn’t know the state law; majority didn’t know if noncompetes were enforceable; actual signing wasn’t more likely to occur in enforcing states than nonenforcing; even among CEOs, 60% in California were required to sign noncompetes.

 

Notice is important: but we have lots of rules that have to be available to employees.  (Cue discussion of disclosure literatures.)

 

Hot moment for reform: complete ban in California; Mass. bill (unsuccessful so far). Dozens of state statutes restrict assignment clauses.  Some jurisdictions differentiate between high salary earners or tech v. other industries—Hawaii banned noncompetes in tech industry; MOVE Act would ban noncompetes for low-paid workers.  Statutory notice requirement: 2007 Oregon law requires 2-week advance notice or an adequate salary raise when the employer introduces a noncompete; MOVE Act would also require employers to disclose noncompete restrictions.

 

Would notice help?  Traditionally: Employment contracts are vague, open-ended. Sides prefer flexibility inherent in evolving relationship. Actual terms unfold over time; not presented at point of entry. Relational opportunism. Unknown facts: Q about what knowledge is secret, what’s been developed, what competition looks like, employee’s plans and options, training, skills.  Law notice is interlocked w/fact notice.  Courts considering reasonableness consider reasonableness at the time of drafting of contract plus everything that happened since.

 

James Bessen: Most of the discussion about notice/notice failure is about regulators/administrative agencies that fall down on the job somehow; here we see private actors having an incentive to obscure notice.  Harm to wages is one negative aspect of noncompetes; drags on innovation is another aspect.  Reduce’s employee’s incentive to invest effort in training. 

 

Typewriter’s success was delayed for decades until keyboards were standardized, at which point it made sense to invest in learning how to type. Changed that industry and role of women more generally. This pattern repeats over and over again: those issues are related to portability of skills. Social value of large, trained workforce goes beyond particular employers/employees.

 

Lawsuits over noncompetes has tripled over past few years—litigation pace is increasing.

 

R. Anthony Reese – Reforming Termination Formalities

 

Termination of post-1978 transfers requires complicated formalities. How clearly does the law notify the would be terminator of how exactly to accomplish termination? In the law as usable, or as window dressing?  If the former, we want the law to be clear.  If the latter, the hoops should be very hard to jump through.  Second, termination causes a change of ownership of some copyright rights—how well do formalities provide notice to others of the changes that result? 

 

Fairly complicated: identify party/parties entitled to terminate and their shares; calculate time period in which termination can occur and choose a valid effective date; calculate when advance notice can be served; identify the party/parties who must be served; properly draft and serve a termination notice; timely record the termination with the Copyright Office.

 

Timing of notice is timed based on the execution of the grant, and when that was can be hard to find—undated grants; oral grants of nonexclusive licenses; implied in fact grants of nonexclusive licenses—the brawling, boisterous world of facts. 20-30 years later, can you figure out the date on which the oral license was granted/the conduct of the parties gave rise to the nonexclusive license/the check was endorsed?  What about grants in yet-to-be-created works?  Are they completed when signed or when the work was created, and when did it finish being created? CO takes the view that it’s not completed until the work and its © come into existence.  How easy will determining that be?

 

Even if you have the simplest case: a signed, dated agreement for an existing work—there’s still a question about what the “end of 35 years from the date of execution of the grant.”  The legislative history contradicts itself.  Transfer of Sept. 2, 1987: does the window open Sept. 2, 2022?  Sept. 3, 2022?  Or, puzzlingly, Sept. 1, 2022?  Legislative history mentions Sept. 1 and Sept. 2 in the same paragraph.  Luckily, you can pick a date that’s not right at the beginning if you know that’s a problem.

 

We could (1) allow terms to run to the end of the year, as w/duration; (2) allow judicial reformation: judge could pick a valid date; (3) not close the termination window, letting them pick a new date.

 

Service of notice on the grantee or grantee’s successor in title. Which does that mean? Does the serving party get to choose? Unclear.  Judicial interpretation limited. Even if we can identify who’s served, we have to find that person.  The grantee doesn’t have to tell the terminating party about any subsequent transfer.  Here, there is some guidance from CO: service is ok if you do a reasonable investigation, if there’s no reason to believe there’s been a transfer then you can serve a grantee by first class mail to the last known address.  If you have reason to believe there’s been a transfer you serve the transferee.

 

What about notice to the person whose rights are being terminated and to the world at large?  If a grantee is really interested in notice, they can record at the CO.  If they don’t, we may feel less sympathetic to them.  As for the rest of the world, notice must be recorded at the CO.  May be the first time there’s any entry on the public registry about this work.  (How often is that true for the works that are now terminated?)  But there’s no requirement of any contact info for the terminating party.  Also it need not identify w/specificity the rights that have been recaptured—must specify the grant, but can say “publishing agreement,” and we won’t know the content.

 

Could (1) require contact info to be included; (2) encourage identifying w/particularity rights claimed, though terminating party may not know what they are.

 

Alfred Chueh-Chin Yen: Extreme act of gov’t paternalism.  There are any number of doctrines outside termination that exacerbate problems of notice failure Reese identified: work for hire doctrine for example; contract will say it’s a WFH but if not you assign anyway. Or you may be the joint author and get a contract that says you acknowledge you don’t have authorship rights. These are both ways of getting people not to terminate. Not only do the doctrines themselves create ambiguities, but the contracts make ambiguities worse.  Ordinary author will not have the sophistication Reese has brought to bear.  The termination provisions are thus backwards; termination should automatically happen, whenever.  The acquiring party is better equipped to figure out what’s going on than an individual author. 

 

Second solution: judicial. If we understand these measures as ways to get people to drop termination rights, we can have courts reject them.

 

Mark Lemley: Notice fatigue.  (I feel it too.)  Does notice solve anything? We’ve placed a lot of faith in notice, which can be ineffective, maybe merely because of cumulative effect of all these notices.

 

[RT: My comments on Lobel’s paper were the same as Lemley’s:  Compare to wage theft: overt violation of the law, like inclusion of noncompete clause in California.  Notice in this sense has the classic problems of disclosure.  Lauren Willis: incentives to avoid providing effective notice of the rights of the consumer (or the employee).  Instead of trying to educate employees further, especially given the fluidity that Lobel identifies, what about actual enforcement with penalties—deterrence is the real goal.]

 

Lobel: This is a big issue. On the particular issues I’ve been thinking about: notice about the terms of the contract—if you’re signing a significant agreement, there is value in inducing awareness of its provisions.  (But how do we do that?)  Employees in many circumstances can ask questions about the provisions.  Also, if what you sign isn’t enforceable, that’s effective.  Experimental study: people reported that they wouldn’t even consider a job offer when they sign restrictive covenants—needed a much higher raise to consider it than a control group. But once they learned the covenant wasn’t enforceable they behaved like the control group. But if a “reasonable” restriction was enforceable that wouldn’t help them much.

 

Kate Darling: what if termination is a terrible answer to the starving creator, not because of paternalism, but because 35 years later is a terrible time to renegotiate/create a holdup situation (unless they set their works free).

 

Reese: normatively I’d prefer a reversion system where renewal happened automatically—either the work goes into the public domain or it gets renewed and the rights return to the author.  It’s not implausible to conclude that the continuing value of the work comes more from the author than the publisher; in many cases people make these contracts when they have a difficult time valuing their work.  If the statute required ongoing royalty payments, we might feel comfortable saying that you could transfer rights away forever.

 

But if termination is window dressing, we should just remove it.  Make a good deal or suck it up, rather than pretending that you’ll have another chance.  (Termination as the disclosure of copyright transfers?)

 

Q: similarities b/t noncompete contracts and confidentiality agreements?  Most trade secret law goes against former employees.  But contractual provision just says “stuff that you learned is confidential if valuable” and there’s no notice about what’s protected—difficult problem to solve because how do you specify it in advance?

 

Lobel: problems in espionage prosecutions—courts and juries may just accept that what companies say is confidential is so: companies stamp “confidential” on everything.

 

Loren: recognized that valuation is difficult before exploitation; not paternalism to allow revaluation.  Another notice problem: we get these assignment contracts that say they’re in perpetuity/not terminable. But they are.  You need to know these things aren’t enforceable!

 

Reese: so we need to get info out to authors.  Guilds can help.  Of the 8000 terminations studying, a lot of them are music, and a lot use forms provided by the songwriters’ guild.  Authors’ Alliance, etc.—sites to tell authors/successors that this is available, notwithstanding anything in the contract that says it’s not terminable.

 

Bone: Limit termination to higher value works.  Is that wrong

 

Reese: some of this is a problem that it’s technical; another problem is that it is badly drafted and ought to be better; another problem is that the relevant facts are long-ago and far-away—look at the amount of digging required to answer (or not answer) questions about the Happy Birthday copyright—might want to tie rights to dates that are more obviously discoverable.  Modern possibilities for termination might make us nervous about termination as a screen—if academics are terminating transfers to release them, and if we make termination difficult as a screen, they’ll be screened out so it only happens for blockbuster songs and we don’t get the CC releases we want.

 

Litman: Low-value works are exactly the ones that should be terminated b/c the current proprietor lacks incentive to make them available b/c they’re low value and might compete w/ high value newer works; author might have more incentive to make them available.  Public may get better access.

 

Q: Notice window opening isn’t a huge issue b/c you can pick any time w/in a five year window. Shoot for day 5 to be sure.

 

Gordon: Speaking as someone who practiced copyright law—termination notices are incredibly ambiguous all the way through.  Empirical implications: assume that incentivewise, there’s no effect on the amount of money they’re willing to pay, what then?

 

Reese: on average, value for women ought to be higher b/c women live longer and we’re now measuring by life plus.  You could disprove the proposition that a lump sum price really represents value over the full length of the copyright term—lots of confounding factors.  Not aware of anything but publishers’ anecdotal statements that they’re interested only in the short term.

Notice and Notice Failure at BU, panel 3

Pamela Samuelson – Notice Failures Arising from Copyright Duration Rules

 

Agrees w/ other expressions of concern about notice failures in copyright—here she focuses on notice failures related to the long duration of copyrights.  More information about work’s © status was available with fixed duration. Life plus models took over for understandable reasons.  But then you need lots more complexity, including means for determining the death of obscure people—only 37 people have registered death dates with the CO.  (These are people who died.)

 

Extended collective licensing? Fair use is better. What about tax incentives to devote work to public domain?  Promising idea.  Rights reversion: get more people to terminate transfers and then, esp. for scholarly authors, dedicate it to public domain or put it under a CC license.  Institutional policies for open access, also a good thing. But how do we get some sort of registry of when authors died so we can then at least try to calculate their terms?  Not enough incentive for any one institution, but possibly crowdsourcing. 

 

Extended collective licensing

 

Tun-Jen Chiang – Trolls and Orphans

 

Trolls: appear in patents after an investment has been made.  Orphans: in ©--use would be valuable but author can’t be found. Implication: not being able to find © owner is itself problematic.  Holdup by patent trolls is problematic because you make fewer investments in useful technologies, though you can’t tell which specific patent holder will hold you up.  Orphan: parent is permanently gone, and gone for no specific reason.  If that’s the situation, Copyright Office suggests that the solution is for the user to search, and to create a registry of users that would facilitate search.  That could work if search costs are feasible, which they probably aren’t.

 

But there are other solutions to holdup problems.  You could prevent ex post assertion of rights through a liability rule standard.  Laches as a solution to the orphan works problem—could work quite well (if not for the SCt).

 

Commentators: David Olson: Real presence of a moral rights approach reflected in life plus system.  Instead of “keep working” it’s “author should be able to live off work she did when she was 20,” not a utilitarian view.  As for “orphan works,” Chiang seems to want to change the name—Loren suggested “hostage.”  Dangerous works—bastard works?  Troll works?

 

For patents, the issue is not just surprise but lack of deterrence.  Large competitor in the field is constrained by mutually assured destruction.  What’s the frequency w/which inventors who obtain patents do holdups?

 

Michael Meurer: We usually think that people in the industry are problems when we think about standard setting organizations—Rambus, for example.  But Chiang’s message is about the language of orphan v. troll.  Need more evidence of how language makes a difference, perhaps in the political arena—arguments being made in policy arenas.  (Orphans needing to be cared for by someone.)  Can we show how language makes a difference?  (I wonder if the George Lakoff/Frank Luntz line of political discourse/punditry can teach us something about that.)

 

Both parties need to be involved in search: Chiang’s message. Calculate where we should expect more and from which party. Similar to questions of gatekeeper liability/ISPs. Who is in the best position to monitor? Same Qs about responsibility for monitoring/matching is important in many areas of the law.  Stolen art also provides another example.

 

Chiang criticizes Copyright Office’s putting burden of search on user—they seem to be looking at this as a holdup/surprise problem, though.  So somewhat sensitive to holdup concerns.

 

Bargaining: sometimes parties don’t show up to bargaining directly b/c they’d like to push issue to legislature or executive. Google Book Search, perhaps.  Sony’s issues with Digital Audio Tape—© owners managed to push the issue into Congress. In Europe, pushed into parliament and the result was a tax, both for photocopying and for videos. Not clear whether this is more democratic or more corrupt.

 

Peggy Radin: Rhetorical capture—the word cybersquatting was invented; took an asset that was unknown and allocated it to TM owners as soon as it was “born.” So that was successful. Doesn’t like the word holdup because that may just be the normal practice of competition/exploiting a resource that I own that is valuable. Is it wrong to buy up land that I think will quickly become valuable because of development?  Isn’t that just savvy?

 

Chiang: I agree that labels matter.  Economic theory provides enough content to what is wrong w/the behavior. Not simply buying up farmland. Buying up farmland, knowing that someone else will be using it, not knowing that you own it.

 

Radin: why is that morally wrong?

 

A: after the investment has already been made by the third party, who has assembled a bunch of different components. It doesn’t matter if it’s morally wrong; it’s economically problematic.

 

Radin: but some of the things called holdup are just distributional issues.

 

Meurer: Chiang’s paper discusses this—the economists who came up with this are simply looking at contract difficulties where ex ante complete contracting is difficult/impossible. The holdup notion, at least before law profs got hands on it, had no moral judgments.

 

Radin: so let’s use the economist’s notion.  If we can’t get the efficient result because of holdups, that’s one thing, but if we have other situations it’s another—becoming confused in the public sphere.

 

Meurer: Chiang’s paper helps us moves in this direction: we should be looking at behavior, not status. 

 

Bracha: usually two problems w/holdups: one of them is surprise after sunk costs.  Another is the necessity of a particular resource for a particular project that can’t be designed around, and then it’s worse if there are many of them (stacking problem). 

 

Chiang: Is it a problem if we have uses which the owner is not inclined to give permission even if you didn’t have surprise/info problems: All rights allocations could be known and negotiations wouldn’t go through.  That’s not the problem we’re interested in at this conference—it’s just an issue of allocation of rights.

 

Olson: You can always have trouble when you’re trying to assemble resources—someone can decide to behave strategically.

 

Chiang: short-term rentals—no incentive to improve the property even if that would be good for society.  That’s hold-up without surprise—if you improve the property then your rent will increase.  That’s a different problem from the troll/orphan problem he’s trying to name.

 

Olson: we’re talking about rent-seeking and that’s bad because free market transactions require free exchange; rent-seeking is when someone figures out how to extract money without giving something of equal value to the buyer.

 

Radin: but all markets have rules—you are making assumptions about what the rules are, and you should just make it explicit.

 

Olson: having you over a barrel: making you an offer that you wouldn’t have taken if you’d been given the information beforehand.

 

Samuelson: Orphan works folks see the edge case as the late-arriving author, but that’s not the main issue, which is that there are a lot of culturally and historically valuable resources that are not being made available, and you either really don’t know who the author is or really can’t find them. It’s an institutional risk assessment. While there’s risk assessment on the patent side too, want to put in the record that orphan works is not as similar as Chiang’s paper suggests.  There’s a dimension of the long term of © that also plays a role. Patents will at least expire at some point, much faster than ©, especially since we can’t easily know death dates.

Wendy Gordon: Cousin to the hold-up problem is lock-in. Many managers are taught how to create lock-in—how to surprise their suppliers or customers or other entities with relationships that in fact make it difficult for them to switch to more efficient/desirable entities.  Has potential for an independent ground of defense in IP suits, such as in Oracle v. Google. 

 

Bone: If something’s an orphan work, then shouldn’t we just treat it as in the public domain?  Why spend all this energy?  Won’t impair incentives to consider it in the public domain—if you don’t want work to be orphaned, keep using it.

 

Samuelson: we could, as a policy matter.  There are true orphans but also concerns for being respectful of ©.

Notice and Notice Failure at BU part 2

Annemarie Bridy – Three Notice Failures in Copyright Law

 

Challenge of making online copyright enforcement meaningful. Notice is intimately connected to justice: usually required (except with strict liability).  Failures to appreciate its necessity/failures to appreciate its sufficiency.

 

Uncertain: the construct of red flag knowledge in the DMCA.  No notice: lack of notice in seizure of domain names under criminal © law.  Naked notice: in preliminary injunctions against nonparty service providers in pirate site cases.

 

Purpose of DMCA safe harbors was certainty for ISPs in the face of evolving secondary liability in cyberspace.  In practice, years of litigation have clarified the test to be part subjective/part objective. Does the service provider have subjective knowledge of facts that would give objective knowledge of infringement to a reasonable person.  Red-flag knowledge as a safe harbor disqualifier can preclude summary judgment; undermines certainty of notice and takedown framework; creates risk for ISPs and encourages proactive takedowns outside the DMCA checks and balances.

 

The fix: make actionable knowledge under the DMCA synonymous with the knowledge that comes from receipt of compliant knowledge.

 

Notice failure #2: PRO-IP Act added asset seizures and forfeitures to remedies available in criminal © cases. Get an in rem arrest warrant for the domain name, w/o notice to registrant—civil forfeiture even if gov’t never charges or proves an underlying crime.  2010-2013, FBI/DOJ/ICE went after 1700 domain names.  Tend to get active around the holidays.  Megaupload, 2012, actually accompanied by an indictment.  Sept. 2015: ShareBeast.

 

Notice failure under both 1^st and 5^th Amendment, which requires notice and opportunity to be heard before property seizure, unless exigent circumstances exist where property could be moved before seizure.  Domain names aren’t movable property, though the content to which they provide access is. Seizing a domain name does nothing to prevent underlying content from being moved.  First Amendment also requires notice and opportunity to be heard before a seizure of expressive property—if the gov’ts reason for seizing expressive property is to take it out of circulation (as opposed to evidentiary).  Domain names are expressive property b/c they provide a gateway to vast repositories of speech.

 

The fix: apply the correct legal standard and provide notice and an opportunity to be heard; more than probable cause. Pending legislation would increase the burden of proof for all covered crimes, including ©, though it may not go anywhere.

 

Naked notice: Site-blocking TROs and PIs purporting to enjoin search engines, payment processors, ad networks, domain name registrars and registry operators if they have notice of the injunction under the All Writs Act. These are improper.  Due process, separation of powers issues.  Only nonparties so closely identified w/the defendant that their interests can be considered to be represented can be bound—notice and a finding that the nonparty was in active concert w/defendant in the illegal conduct—aiding and abetting. Arms’ length provision of tech services to infringers is not active concert.

 

Michael Fricklas, GC of Viacom: Most of what we do doesn’t happen in cases—negotiated outcomes in disputes; our decisions on what to put on the air. Some failures are litigated, and others aren’t.  Every area of the law has some level of uncertainty.

 

Copyright’s strength is that you don’t need gov’t support—a plebiscite every day where people decide what to watch and what to pay.  In that context, courts have been struggling with importance of certainty, but in the cases Bridy addresses, what we’re doing day to day doesn’t constitute a notice problem at all. The targets of our enforcement efforts have no doubt about infringement.  Even injunctions against nonparties aren’t serious b/c the courts are asking only for an administrative act.  Not finding that nonparties have violated copyright law (though they might be if they continue to provide services after an adjudication of infringement).

 

Last year we took down 1.8 billion pieces of content, with 100 million IP addresses.  If we made a mistake you can email us and don’t need to wait for counternotification on YouTube. We can’t do fair use analysis at this volume.  So we took simpler rule: we care mostly about entire/substantial part of content posted w/o alteration.  Not interested in mashups.  Viacom uses fair use every day: Jon Stewart and Stephen Colbert—we get sued a lot. 

 

Certainty isn’t the most important value embodied in the DMCA.  Also: balance interests of © owners and ISPs by creating strong incentives for them to cooperate in dealing with infringement.  Red flag knowledge is a boundary case.  We spent way too much money on YouTube case, but the court was basically thinking about who were the good guys and bad guys.  Court didn’t understand problems with notice and takedown—no one has to notify us where they’re posting; people can do all sorts of things to hide from automatic detection; ISPs will limit how much you can search, and will hide the source of the infringement for a fee.  Senate anticipated some of these issues (heh), striking the right balance with red flags.  ISPs not required to make discriminating judgments, but seeing an obviously pirate site may be all that’s needed.  Doesn’t mean they’re liable, but that the safe harbor no longer applies.  Actual knowledge will also disqualify you.  The cases have said that vicarious liability still exists if there’s intent to infringe. 

 

Notice cases in SCt were about due process, not about boundary of copyright—SCt says due process is flexible and requires the protections demanded by the situation. Balances private interests w/administrative costs imposed on gov’ts interest and risk and probable value of additional safeguards.  1700 seizures of domain names, but only 2 problems.  Don’t forget the obvious cases, where people have full-fare information about what they’re doing.  Megaupload: indictment says they knew they were infringing.  Seizing a bank account from a bank doesn’t require that the bank was involved in a conspiracy.  (Ok, that wins for most misleading analogy, since the seizure of the domain names (bank account) is precisely done b/c the “bank” (registrant) is a wrongdoer.)

 

Joseph Liu – Notice Failure, Fair Use, and the Limits of Property: Literature discusses fair use uncertainty (and counterliterature, including from Pam Samuelson, discusses how that may be overclaimed).  Questions about validity of © are typically not at issue b/c of low © standard; issues of ownership can be troublesome given length of © and transfers, but not generally implicated by fair use disputes; the one area where there is potential notice failure is the Q of clearly delineating the boundaries of the entitlement.  Even here, one might ask whether notice failure adds much to our discussion, b/c issue is not so much metes and bounds of particular © as with patent, but rather w/the structure of © law itself. Uncertainty may be only that caused by standard and not rule.

 

Core is relatively well-defined: generally can’t make large numbers of full copies and sell them w/o permission, or make major motion picture based on film. But at the boundaries there is uncertainty.

 

Information burden isn’t evenly distributed. Larger/more sophisticated parties can mitigate more easily by seeking custom legal advice or by bearing transaction cost of licensing. Unsophisticated parties have trouble getting either.  Tech changes have exacerbated disparities because fair use used to be less relevant to the general public—personal use and other ways of engaging with © works and more directly subject to ambiguities. Core and periphery have shifted.

 

Dealing w/uncertainty: more best practices? Again, less available to the public.  Ask market/tech to cure—costless licensing/technological fences that specify what people can do. But © owners’ troubling tendency to fence in what they don’t own weighs against that.

 

What if instead of trying to clarify the boundaries, particularly for less sophisticated parties, we considered alternative frameworks for liability?  Ask whether fair user had adequate notice of the boundaries of the entitlement—for an unsophisticated party the answer will often be no.  © for general public bears little resemblance to property as clear rights with robust transactional markets.  Confront notice failure directly: try to conform standards to people’s expectations/negligence or tort approach.

 

Jessica Silbey: Sidestepping incentive talk and focusing on the way that © affects us all; notice doesn’t necessarily work for us but on us. How does the fair user understand the scope of property rights? How does the fair user understand what © is for?  The second question gets to a similar place, but framing can teach other lessons.  From property/markets to culture/fair, creative practices—creator in the community.  Many creators she talked to have high tolerance for copying because everyone borrows; they demand a high standard for originality, reciprocally. If they find unfair copying, they want attribution and proportional remuneration—profit-sharing or even nominal, dignitary fee.  Do they think about fuzzy boundaries? No, but every day © users tolerate a less than perfectly understood system, largely by intuiting rules that are misaligned with the © system. They believe that infringement and damages incorporate reasonability determinations.  It would make sense to base fair use on reasonability determinations.  Copyright owners do not have rights where fair users do; fair use is the baseline. 

 

Samuelson: Molly van Houweling has a similar project—also, what do you think of Tim Wu’s “tolerated use”?

 

Liu: van Houweling’s work on new servitudes is important for tracing rights/impact on unsophisticated parties.  Thinking more expressly about distributional impacts—empowers certain people to do more, which may be an important value independently.  On tolerated uses: still grappling with that. One response to this is that maybe we don’t need to worry about unsophisticated users b/c we deal with that through underenforcement/no one sues individuals. I resist that b/c it’s so clearly second-best solution to problems w/actual standard; fuzziness and underenforcement might not match up.  Custom and toleration might affect the fair use line.

 

Orly Lobel: continued discussion of distributional effects from previous panel.  Sophisticated/unsophisticated creators; developed/less developed countries; employer/employee. It’s not just repeat players and institutional planners shaping the substance of the law and notice can counter that; they also will be shaping notice itself/what notice is.  When we consider over/underdeterrence, consider the expressive function of law in general.  The psychological effects of the FBI warning.

 

Liu: copyfraud/addressing misinformation might be part of a solution. Copyright Office could play an educational rule on what people can and can’t do.  Copyright ombudsperson: role to look after the public interest.

 

Litman: Implicit in all 4 talks was that their either should be or already is an unacknowledged mens rea requirement for © infringement.  If that’s right, what ought it to be.

 

Fricklas: take into account there’s misinformation on both sides—users think they can post a whole work if they comment on it.  Intent may apply more to intermediaries than initial infringers.  Suppose my search finds a 100% complete match—how do I do a mens rea analysis w/o a complete collapse of the system? Mens rea can be important, but sometimes res ipsa loquitor. 

Bridy: we want a higher standard for secondary liability—should it be higher for direct infringement as well?  It’s not always so obvious what’s obvious to a reasonable person; the edge cases are what lead to the super-expensive litigation.  YouTube case settled w/still opened questions; Veoh got litigated into bankruptcy; Vimeo might give us some more info if the Second Circuit ever decides it. I favor more certainty—rules over standards. So that would drive me to higher mens rea. 

 

Silbey: intent to copy v. intent to harm—unreasonable position to say that people should have to not intend to copy to avoid infringing; most copiers intend to copy.  I would want a harm requirement instead. People who think they’re not doing anything wrong are applying a harm standard.

 

Liu: on effective mens rea standard: my sense is when it comes to whether bad faith is an element, Beebe found it generally wasn’t. Should be: tricky.  Not willing to go that far.  For unsophisticated, modify standards/remedies?

 

Bridy: sophisticated = proxy for knowledge.

 

RT comments on Bridy’s paper: red flag as unworkably uncertain.  Strikes me as an overstatement, given litigation outcomes and the current persistence of competition.  A slightly different diagnosis, and one that might point to competition policy for help: When you get big, you have to cut a deal w/big studios/music companies or go out of business because they will litigate you to death.  Also: Consider Joe Singer’s interesting argument that in property, standards can be more predictable than highly complex rules.  One reason his argument is relevant is that the incentive to litigate is huge in this context—the content cos behave as if it’s bet the company litigation and the ISPs know it is—and thus rules may be no better because compliance with rules is so often debatable.

 

Bridy: rules around notice and takedown isn’t unworkably complex—rules can become unworkable. But there’s less litigation about what a compliant notice is, but she thinks the law has become clear (not sure I agree) whereas “obvious to a reasonable person” is going to be a jury question.

 

Ginsburg: you could have more notice—in Europe, a closed system.  Fair use is more flexible which is why some in this room advocate for it. Desire for more certainty = careful what you wish for.

 

Liu: certainly there is the persuasive argument that clarity and open texture of fair use may trade off.  But he’d like to raise the freedom of movement.

Notice and notice failure at BU: panel 1

Graeme Dinwoodie – Trademarks and Commercial Reality: registration systems/use systems; Industrial policy/consumer protection and registered/unregistered affect notice, but not sure how much compared to patent.  Costs of inadequate notice may not be as great.  Efforts to ensure adequate notice need to be balanced w/other objectives.

 

EU has first to register; US (alone in world) has first to use system.  Different historical view of registration. Pre-Lanham Act, clear that registration merely confirmed common law rights.  Conventional wisdom about current state of law is that’s still true, but that should be questioned—now confers some substantive rights. If registration is notice of anything, is it notice of legal rights or of something else?  Does it constitute rights or reflects them?  In EU, the registration defines the rights.  Primary value on public notice.  Unfair competition is national, by contrast.

 

Evolution means convergence in regimes, though. Unfair competition & TM have always accommodated some consumer protection goals and some industrial property/market structuring goals. 

 

Even if registration is only signpost, should be as accurate as possible. Registration is not the only way of providing notice: the use requirement provides notice, especially secondary meaning requirements.  Actual use may be as effective as notice as registration, depending on how the rights are structured.  It doesn’t work as well when the rights extend to dissimilar products (e.g., dilution). Actual and constructive notice can work together—the register may help you figure out what the mark actually is, particularly w/non-word marks.

 

Distinguish notice of existence v. notice of scope.  Beebe’s studies on applications that are abandoned—astronomically high.  Huge amount of deadwood even in the US use-based system.  EU has the problem of submarine marks.  The problem in TM is scope is determined in two ways that make it hard for register to be helpful: metric is external to the register, consumer understanding, which is also dynamic/evolving.

 

In Europe, graphic registration requirement does some work.  Applied to bar registration of something we could easily recognize in practice: purple as the predominant element of a package for chocolate; UK court considered “predominant” too vague. Forced Cadbury to use passing off, with higher proof requirements, causal nexus, more proof of reliance/damage.

 

In the US: from 20^th c. and now, we’ve assimilated §32 to §43.  Should we revisit that question of whether the unregistered mark requires more proof before asserting rights.  Two areas in particular: trade dress. Defensive registration?  Australia allows you to say ‘I’m not using this mark in this area, but if someone else does, I will make a dilution claim.’

 

Barton Beebe: how does notice affect the dynamics of the opposing interests Dinwoodie identified, such as industrial policy/consumer protection.  This topic demands a comparative approach between registration-based and use-based.  What about Canada’s weird hybrid system?  One of the most shocking extensions granted by registration is nationwide priority, even if you are really only using the mark in NY.  US also has an examination system that considers both absolute (scandalous, descriptive) and relative (likely confusion) grounds for refusal. European system is more rubber-stamping; no relative examination. But how rigorous is the US review?  Fromer and Beebe are working on that.

 

Distinction between reactive and proactive functions of TM law.  Should TM be structured reactively to protect whatever consumer understanding develops, or proactively seek to structure the ways in which consumers shop/producers sell, and thus order how the economy functions?  Key question Dinwoodie has asked.  How do constraints associated w/notice affect that?  Registration is signpost, not fencepost; it must be thus if the existence/scope of TM protection informed by consumer understanding (instead of TM law operating on consumer understanding).

 

We have to accept that TM law is reactive in nature, Dinwoodie suggests. Notice compels us to recognize that.  In comparison to the Europeans, the US use-based system is especially reactive.  Perhaps now we can recognize that notice might be one of the main policy levers by which TM policy can inform consumer understanding.  [Would like to hear more about that.]

 

Can it be said that the Europeans, w/more formal approach to TM, are ultimately presenting a more proactive system?  Is this a good thing?  Reaching out into the economy a bit more.  Industrial policy orientation in EU is greater.

 

Little points: In TM context, to what extent is PTO’s TESS the main resource for notice, versus Google? What is the effect of massively indexed online databases? Our concept of notice was formed in the offline context.  False positives are a big deal there.

 

Irony Dinwoodie identifies: EU is giving European-wide rights, but political events/multilingual nature suggest this might not be totally appropriate: use in one country gives you rights all over.  Whereas in the US, use in NYC gives you rights to the nation, but that is appropriate.  Here the American use-based system is inconsistent w/ how we approach geography; European system is also.

 

Jessica Litman – What Notice Did

 

Most scholarship on © notice talks about role dividing what’s protected by © from what’s in the public domain.  Some writers think notice’s function in moving works to public domain is great, others that it’s terrible.  Also may have distorting/shaping effects on other parts of copyright law.

 

Existence of notice prerequisite may have allowed US to tolerate broader sphere of potentially copyrightable subject matter. 

 

Rule that notice had to accurately name the © owner created enormous pressure on courts to find that the person named in the © notice was actually the owner, in order to avoid forfeiture.  Since this is peculiarly w/in control of publisher, © notice tended to name publisher; led courts to figure out how author had transferred her © to the publisher, even when she hadn’t. Their innovations have stuck with us, messing up the law even now that the justification is gone.

 

Only tiny number of maps and charts were registered, less than 1%. In 1802, Congress sensibly required that small number of works that did claim protection to include a notice.  1820s-30s = court decisions require strict compliance w/formalities.  1850s: no court had squarely held that statutory language about assignment in presence of two witnesses required a writing, but then it came up in a case about a license to publish a medical book.  B/c author saw the notice, can be inferred that he transferred the rights.  Before a © was registered, author could part w/right w/o any written agreement—writing requirement only kicked in after registration. Seemed to be motivated by third parties’ arguments that copyright were void b/c the person named in the assignment had never secured a written assignment. The parol transfer doctrine took on a life of its own, though, and thus in Parton v. Prang, landscape painter sold painting, which was resold to lithgraph publisher who made lithographs and registered ©. Parton argued he’d never transferred the copyright, but the court said no writing was required for transferring © in an unpublished painting; transfer of painting is transfer of © in the absence of express reservation: could presume that owner of unpublished work automatically acquired right to © it in his name.  By end of century, this was “well-settled” according to Eaton’s treatise.

 

SCt adopted this reasoning.  In one case, defendant said that copyright in cookbook written by a woman was invalid b/c she had no right to transfer it (she was married); the SCt implied her husband’s consent/endorsement to transfer. Then courts invent work for hire doctrine out of whole cloth when there isn’t evidence even of an oral agreement.

 

What about making sure the publisher prints the author’s name in the notice and registers the copyright in her name?  Harriet Beecher Stowe & Oliver Wendell Holmes Sr. both had serials published in the Atlantic, registered in their name, but Atlantic included © notice in its own name in the issues in which the serials were published.  If the Atlantic owned the ©, then Stowe and Holmes forfeited their rights by putting notice in the wrong name when they published the full book; but if Stowe and Holmes owned the ©, then the Atlantic put the works in the public domain by publishing them with the wrong notice.

 

Ultimately, Congress responded trying to fix this; but courts didn’t change course—courts kept applying the presumptions to unpublished works, finding parole transfers on little or no evidence.

 

Not a matter of pro-publisher and anti-author. Instead, courts were trying to preserve © from forfeiture.  Author-unfriendliness was an accident of path dependence.

 

Jane Ginsburg: Author-unfriendliness is another nasty effect of the notice requirement.  Effects on recordation requirement as well—must record transfer of federal ©, but the gambit she described involved a transfer of a common-law ©, so there was nothing to be recorded. Our recordation system has many problems; Litman has identified this one in addition.

 

Doesn’t think we should have mandatory notice at risk of losing copyright or author’s right. But current problems exist even for voluntary notice.  We now have a system of divisible ©.  But divisibility can mean that any ambiguity should be construed against transfer and remains w/author.  That has possible unfortunate effects on notice: how do you know who owns which rights?  If the basic notice doesn’t specify which rights the notice-giver owns, can have trouble.

 

Imagine: A work is created but not published before 1978. There’s a transfer agreement for the rights in that work.  In 1978, unpublished works get vested w/federal ©.  Is the grant of rights in that work subject to termination under §203?  It’s not §304-terminable, which is based on the renewal term. How do you date the grant of rights?  One could argue that the relevant date is not the pre-1978 agreement, but the date federal © came into being, Jan. 1, 1978—making termination possible as of 2008.  Potentially good news for an author, but the clock is ticking—only until July 1, 2016 to serve a timely notice of termination. If there’s anyone in this situation—granted rights in unpublished work before 1978—act quickly!

 

Ruth Okediji – Form versus Function in The Berne Convention's Notice Regime: Reclaiming the Public's Interest in the International Copyright System

 

Since 1908, int’l © framework eschewed formalities.  Art. 5 of Berne: enjoyment/exercise of rights shall not be subject to any formality.  Protection in the country of origin is governed by domestic law.  Specific goal: protect works in countries other than that of the author; not inherently anti-formality.  Didn’t address how foreign authors might prove compliance/ownership/authorship.  Historically didn’t eliminate all formalities: Art. 11: it will be sufficient (in absence of proof to contrary) to put name on work in customary manner; if pseud/anon, publisher would be deemed owner (in the absence of other proof)—deemed to be notice to public of another’s claim of right. Art. 7: articles from newspapers/periodicals could be reproduced, unless there was printed notice to the contrary.  Art. 9: unpublished musical work: could indicate on title page that author rejected public performance.

 

So notice was a big deal until 1908.  Then the practical effect in most countries was to eliminate most formalities; maintaining them for domestic authors would have led to political backlash in many countries.  Political/pragmatic sense: formalities had fallen out of favor in many Euro. countries. But formalities served so many functions and had such a long/storied history in Europe; struck by relative ease w/which this article got rid of this significant institution.

 

Notice = important part of human society. Indigenous communities had forms of notice. Notice/property rights have a strong historical link.

 

In fact, notice is alive and well, but hidden/dispersed in different functions.  Formalities are not neutral, and neither is notice—cf. Litman’s paper. Across countries/authorial classes.

 

Lack of notice burdens limitations and exceptions; just as L&E do lots more work because of lack of notice.

 

Global enforcement regime will compel/justify a return to formalities. In the absence of int’l rule for notice, we’ll end up with costly forfeitures/greater burdens than notice itself caused.

 

Berne Act had formalities of its own, and current iteration allows for some formalities.  Esp. for exercise of L&E.  Original Berne Convention was directed at facilitating crossborder exchange, but allowed national reservations to tailor solutions. Of all the formalities we don’t see retained, most important to ©’s goals is notice.  A point of intimacy b/t authors and the public.  Public relies on notice; notice facilitates transactions; channeling function b/t fair and permitted etc. uses.  Notice should also be considered a fundamental right of the public. Can also facilitate rights across countries—where authors from other countries claim that American authors have lifted melodies, etc.

 

Not always benign.  In developing countries, elimination of formalities was particularly disruptive of authorial class formation—notice and other formalities were abolished to destroy the rights of local authors.  1934 decree forbade filming in French African colonies without prior authorization; Africans were precluded altogether from producing films, and often restricted from viewing films. French officials were to maintain strict vigilance over stray Europeans w/photographic equipment wandering to remote corners of a colony.  African authors denied opportunity to register in their own names.  In art, local authors couldn’t register works of art in the UK, France.  The first real orphan works: they didn’t exist for purposes of colonial law, thus freely available for appropriation. They also killed irrepressable authors, which didn’t help.

 

Also distorted the notion of ©. Infringement is rampant in developing nations not b/c of culture of theft but b/c ingrained notion of boundaries has never been built into the authorial etc. classes. 

 

Hidden culture: notice abounds in technical rules in the enforcement space. 

 

Berne: no bar on notice for domestic authors; notice from users; on making protection for TPMs contingent on notice; etc.   But we need to address differential burdens on new authors, poor authors. 

TRIPS art. 41: members shall ensure enforcement procedures available (mandatory); procedures must be fair and equitable; can’t be unnecessarily complicated or slow.  Art. 43: Have to present reasonably available evidence to support claims.  So agencies/enforcers look for some easy to process form of evidence—and that’s formalities.  Thinks you can’t comply w/TRIPs w/o some sort of formalities. But doing it through trade law is a bad way.  High-cost way for users; high-cost for finding authors.  Benefits of formalities are unavailable at the exact time they’d be most beneficial—before suit. Then resurrected at enforcement, when most costly for authors/users.

 

At the end of the day, shouldn’t tiptoe around Berne. If we think formalities are problematic, global enforcement makes them even more so. Need notice’s benefits w/o defects—nothing wrong w/asking authorial class to play a role in ensuring that © system serves its functions.

 

Jane Ginsburg: Original Berne convention cut back significantly on formalities; situation before was that, to the extent that one country would protect the author from another, it may have been necessary to first publish in that country, conform to its formalities; generally it didn’t work. Initially it was sufficient to comply w/country of origin’s formalities, but that proved too difficult in practice.

 

Finds reading of TRIPs problematic: incorporates and makes enforceable Berne norms apart from moral rights.  Yes, you still have to prove your claims, but that’s not a reintroduction of mandatory formalities.  As to notice being good, yes it is, but what are the consequences if one doesn’t provide it?  Berne’s art. 6bis on moral rights provides for attribution—right to claim authorship.

 

Ginsburg on Dinwoodie: difficulty of ascertaining scope of TM through notice comes down to the two things Dinwoodie identifies: consumer perception and the dynamism thereof. Could you make notice track scope? Maybe a strictly enforced rule of speciality: the only rights you have are the goods/services listed in the registration. That wouldn’t work b/c it would destroy dilution (so sad!) but also b/c it doesn’t map onto reality, which results in the EU situation, where you have TM rights + lots of pressure on domestic unfair competition regimes to absorb the shock to the protection of consumers that would be the consequence of a system in which the registration corresponded to the scope of the TM.

 

Lydia Loren: © papers have unintended consequences as their themes—unintended consequence of requiring notice, then of eliminating notice.  Given the return of the repressed formalities, © owners should want more transparency about what the formality requirements are.  Reform of int’l agreements?  Any chance of that?  [That’s why they want the mythical Copyright Hub/celestial jukebox]

 

Okediji: when you speak w/authors in developing countries—they are working w/out registration and judges are saying ‘how do I know you’re the author?’  They want documents.  So to avoid the requirements of Berne, they’re showing up in regulations—that you only hear about when you file a complaint.  One country formed a collective society; had to create a registry just for the purposes of the lawsuit.  Striking disparity of regimes—South Africa differs from Zambia differs from Brazil. So a US author wanting to assert a claim in these countries will face the same situation she did 100 years ago.  That’s worse than a minimal notice requirement in int’l law. We can avoid problems of overenforcement, but the notice requirement is back at the most inopportune time.

 

Ginsburg: Berne has an answer for foreign authors. Countries demanding registration is contrary to art. 15.  Shall, in the absence of proof to contrary, be regarded as author and entitled to institution of proceedings if name appears on work in traditional manner.

 

Okediji: but if your name isn’t on it, then what?  People are downloading; they circulate without info.  One case where three people each claim to be the author.  The courts are entirely focused on enforcement—they just want to make the system work.  One country asked for access to the US CO’s registry; that won’t help.

 

TJ Chiang: What do you mean by formality?  To have standing in court, you need to produce an instrument?  Or, to file a claim, you need to comply with FRCP?  Okediji seems to treat those as formalities, though he wouldn’t have traditionally thought of them as Berne formalities.

 

Okediji: To the extent that courts/admin tribunals are asking for proof of ownership, that goes too far and is clearly a formality. 

 

Gordon: TM is a notice regime for the physical world: consumers see identical machines, pills—only the TM tells them which of these surfaces can be relied on to come from a reputable maker. TM helps markets in physical goods work.

 

TM has expanded well beyond this notice function, borrowing legitimacy in areas where lawsuits bring dubious advantage.  Does this interfere w/classic function of TM to specify origin of makers.

 

Dinwoodie: answer may be different in Europe/US. There are different forms of dilution.  Blurring is potentially on the edges of the same justification, esp. in Europe where we have a narrower conception of confusion. Tarnishment is doing something very different.  No need for it in the US. 

 

RT: Beebe said notice might be one of the main policy levers by which TM policy can inform consumer understanding. Say more?

 

Dinwoodie: might depend how high in the hierarchy of values you think notice comes in TM.  Maybe it’s very low.

 

Beebe: §2 could be a place where we do a lot of our policy work.  Through the registration standards, we allow certain conduct to occur or not in the market; consumers then adjust their expectations through that. Our registration doctrine affects firm conduct which then affects consumer protection.

 

Dinwoodie: Maybe think of the potential issue of running that to §43(a)—do you need to preempt causes of action that rely on unregistrable marks.

 

Bone: Firms strategically respond to consumers; consumers in a certain sense act strategically, or at least responsively, by appropriating marks. What we miss in proactive/reactive is that we live in between those two. Commercial reality is the product of all those interactions.

 

For Litman: You’re saying the doctrine favors the ©/owner over the public, but © was a statutory exception to the common law.

 

Litman: the public’s not there. The court has the parties before it. Once courts upheld the ©, courts imposed all sorts of conditions on the publisher to exercise its rights for the benefit of the author; that then died out in the 1920s when they forgot why they were giving rights to the publisher.

 

Bone: strict compliance requirements had something to do with the deviation from the common law.