Registration symposium at William & Mary, part 1

William & Mary Student Intellectual Property Society Symposium

A Right  to Register: A discussion of First Amendment Implications of the Trademark Registration Process

 

Overview: Dean Laura Heymann, W&M Law: TMs reduce consumer search costs.  TMs don’t exist in the abstract—have to be associated w/ a good or service.  Apple = TM for computers, not fruit.  In the US, right to use doesn’t depend on registration, but on qualifying use in commerce.  ® has many benefits, but you don’t have to register in order to claim rights. 

 

Susan Allen, USPTO: Not official views.  Examiner’s perspective on an application.  Application usually takes 2.8 months to be examined—about 480 examiners now.  Allowed = publication; denied = appeal to TTAB or abandoned.  Opposition also possible to TTAB after publication.  From the TTAB, can appeal to the district court or Federal Circuit.

 

Outside perspective: you’re taking lots of issues from all over and trying to figure out what bucket to put them in: a shoe design—©, TM, design patent.  Examiner is target of these issues and your job is to figure out which submissions qualify, over and over, like grading papers.

 

Example: DYKES ON BIKES.  Examine all the record, including dictionaries and internet.  Office Action attached dictionary definitions that said “dyke” was disparaging for lesbians. Note that Office is very busy and inter partes record will be very different—mostly looking at internet and making best judgment possible.  Is it completely subjective?  No.  Evidence is required, and examiners are trained to determine what’s refusal-worthy.  TMEP says senior or managing atty must consult on scandalousness refusal: always a review process for those.

 

Applicant responded with evidence of reclaiming the term.  Examining att’y issued a final rejection and applicant requested reconsideration/filed notice of appeal to TTAB.  The refusal was withdrawn.  Opposition occurred with publication; TTAB rejected the opposition on standing grounds; court of appeals agreed w/TTAB, so registration issued.

 

Examiners review 8-10 applications/day on average.  About 60% of TM employees do examining, and 6% of PTO as a whole.

 

Between Apr. 2008-Dec. 2013, 185 first actions for disparagement refusals, 42 final actions; 902 first actions for immoral/scandalous, 158 final actions.  2012 alone: 2071 first actions for deceptiveness; 224 final actions (though now we issue more warnings instead of first action refusals).  Most common 2(a) refusal is deceptiveness.  Most common issue is ID of goods making the mark deception.

 

Used to do a lot of refusals for definition of goods: if it says leather in the mark but the goods listed are all clothes, we now ask for amendment; if they don’t amend they are refused.

 

Immoral/scandalous: shocking to substantial component of general public.  PTO looks at the overall context, not just the applied-for mark.  TITMOUSE as mark for clothing with birds on it = ok; TITMOUSE as mark for computer mouse in the shape of a human breast = not ok.  THE SLANTS = material submitted with the application had all sorts of Asian references.

 

Commercial/noncommercial refusals: what’s the meaning of the matter, and is it likely to be disparaging/offensive to a substantial composite of the reference group, except with corporations because corporations can’t take offense.  KHORAN for wines: association of alcohol with Muslim religion.  SQUAW and SQUAW VALLEY = disparaging for clothes but not ski equipment.  Disparaging/scandalous: assessed by the views of the relevant group (general public or targeted group, depending) at the time of the application. 

 

Thomas Brooks, Holland & Knight: IP is more than patents—often a misconception that people have.  Washington team’s marks—long time registered, compared to In re Tam where the examiner denied registrations.  Can be challenges at any stage on several grounds.  Vast majority of applications fly right through.  Clients don’t like paying extra money for holdups with examination—many think it should be like going down to the courthouse to get a marriage license or dog license; since they’re using the mark, why aren’t they entitled to a registration?  Even big firms that understand the issues don’t want to pay extra.

 

Current cases: client trying to register VERSA for duct tape and other construction equipment.  VERSA TRACTION w/tagline cited against it, but it’s for surfboards; we argue that no one will confuse duct tape w/tape used by surfers.  Client wants CHUCS for clothing, and CHUCK TAYLOR from Converse is an issue. Another wants to move a Middle East chain using a surname, but surnames require secondary meaning.  Luchese cowboy boots: no problem w/new registrations b/c known, but every time we need a disclaimer that it’s a surname but has so much secondary meaning that it’s a mark.

 

Whether something brings a group into contempt or disrepute is subjective, and you have to make a judgment call. You can’t say no to your client forever. 

 

Words can be common in England/offensive here (fag for cigarette); offensive in UK/not so bad here (bloody for bad).  What about remaining Native American symbols on the register?  Land O’Lakes Native American; Sue Bee honey; Mutual of Omaha; etc.  It’s all contextual.  RED MAN chewing tobacco?  Famous in the field/big seller.  Not sure it would get through today, but registered.  A number of other registrations that may be offensive: NWA for the rap group (but its full name, no; never tried, as far as he can tell and many n-word attempts have failed, except for very old registrations that have been abandoned); DAGO RED for clothing; POLOCK JOHNNY’s restaurant; PUSSY POWER REVOLUTION for clothing. These might be gone in a few decades (actually my searches suggest DAGO RED and PUSSY POWER REVOLUTION are already gone).

 

Practical perspective: do you have the time and money for a fight on this?  Typical client doesn’t want this fight, and will generally turn away.  Many sports teams have moved away from Native American images, especially caricatures.  Even the Washington team has a plan for change if it has any sense. 

 

Domain names: no policing of those, even though there are a number of offensive ones out there.

 

Christine Haight Farley, American: COCKSUCKER denied registration, but GAMECOCK SUCKER allowed, as was BIG COQ, and COCK RUB.  A lot of criticism of the subjective nature of the determinations/inconsistent outcomes. 

 

What questions do we ask for scandalousness/immorality?  We ask in the context of contemporary attitudes. What was scandalous 50 years ago may no longer be scandalous—BUBBY TRAP for bras.  Judge in context of marketplace in context of goods described in application, from perspective of substantial composite of general public.

Disparaging marks: Fed. Cir. adopted TTAB test in STOP THE ISLAMIZATION OF AMERICA.  First determine the meaning of the mark: a religious or political meaning; either way it was disparaging to a substantial composite of Muslim-Americans.  Look at dictionary definitions; relation of matter to other elements of the mark; nature of goods/services; manner in which mark is used in the marketplace.  If that meaning is found to refer to identifiable persons, institutions, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. Context includes entirety of mark’s impression, expected commercial use, whether the secondary meaning supports primary meaning, time of application, views of population targeted.  Don’t consider identity of the applicant or intent of applicant.  Don’t consider audience/relevant consumers.

 

Context:  Sometimes context can provide offense or remove it. 

KHORAN: not disparaging in the abstract, but in context of alcohol.  JESUS JEANS?  The ads for the company are highly sexualized, but also play up the religious meaning in a deliberately provocative way.  JESUS JEANS registered in the US, then opposed an application for JESUS SURFED.  JESUS SURFED is an evangelical Christian clothing company, so it sought to cancel JESUS JEANS on disparagement grounds.  Tried to bring in the ads to provide context.  PTO doesn’t want to decide who really represents Christians.

 

SQUAW: disparaging term/version of a term that means vagina, according to Harjo; dispute over who gets to determine what the term means. Should it be reclaimed? Opposed?  Loretta Lynn dressed as an “Indian” for her album “Your Squaw is on the Warpath.”  “Squaw Bread”—said they didn’t mean to offend b/c it was just called “squaw bread”/they wanted to give credit to Native American origin.  Squaw Valley: ski location/sought marks.  Split decision because of the context of the goods.  Similar case: HEEB—magazine had a registration for the magazine, but applied for clothing, unhinged from the particular context of the magazine, it was found to be disparaging.  TTAB found it irrelevant that the applicant was Jewish or well-intentioned.  Relevant community was important.

 

DYKES ON BIKES is now the model for reclaiming terms. They submitted 400 pages of evidence proving that it wasn’t just intent to reclaim or good intent, but that the reclaiming had happened and now had positive connotations.

 

THE SLANTS: (No similar history of “Slants to Watch Out For”)  Context was the reason: it was Asian in context and the attempt to “own” the stereotype proved irrelevant good intentions and relevant connection to Asianness.  Their first specimens of use had Asian symbols, fonts.  The second application, after abandoning the first, included only specimens that didn’t have obvious “Asian” indicators—they were posters for concerts the Slants played at though not designed by the Slants.  Examiner looked at the older specimens too and still refused the registration.  Recent album: “The Yellow Album.”  Fed. Cir. recently reheard en banc. 

 

REDSKINS: First action against TMs brought in 1992; still ongoing.  Team wanted EDVa. because the trend in the Fed. Cir. didn’t look good.  NFL is footing the bill, so the team has limited incentive to stop just because it’s expensive.  Initial evidentiary problems: much the evidence didn’t go to the reference group, but to Americans generally.  Is less than ½ of the group finding it disparaging sufficient?  Her answer: yes, given what percentages are accepted in TM infringement cases.  Also, the evidence didn’t go to what Native Americans thought at the time the registrations issued.  Survey would have required a time machine!  Also, asked about offense instead of disparagement.

 

Dictionary definitions: again, they’re not from the right times. After 1966, “redskins” is a slur any time it’s used.  Suggests that over time, understanding of majority groups about how awful it was changed.  Actions that Native Americans took during the relevant time period—meetings w/team, organized protests, had a resolution, formal objections: that’s the most relevant.  Is it substantial?  Team said: just the leaders thought this, not the general population—can’t prove leaders represent the whole of the group.  That’s an impossible task.

 

Native American leaders met with the team president.  He knew as of 1972.  The Washington papers even ran a political cartoon about the meeting and protest.  Wasn’t unhinged from racial references also used w/ the team names. Team suggests now that the name change from Boston Braves honored a Native American head coach, but at the time they said that wasn’t the reason for changing the name and also he was not a Native American.

 

Owner George Preston Marshall was an unabashed racist; last team to integrate by far; set up a foundation for DC children, but said couldn’t be used for any support of racial integration. His wife came up with the theme song, which was the first team theme song; it is awful.

 

All REDSKINS applications not dealing with peanuts or potatoes have been refused since 1992.

Trademark infringement on hang tags is covered advertising injury

E.S.Y., Inc. v. Scottsdale Ins. Co., 2015 WL 6164666, No. 15–21349–CIV (S.D. Fla. Oct. 14, 2015)

Scottsdale insured ESY under a commercial general liability insurance policy, with coverage for advertising injury.  Exist, an apparel maker, later sued ESY for infringing its copyright and trademark in its Exist Shield Mark by using a “Liquid Energy Shield Mark” on labels and hang tags for its competing garments.  Exist further alleged that the use of the Liquid Energy Shield Mark was a false or misleading description of fact/false designation of origin, and that this also violated state law.

Advertising injury, under the policy, included:

d. Oral or written publication, in any manner, of material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services;

* * *

f. The use of another’s advertising idea in your “advertisement”; or

g. Infringing upon another’s copyright, trade dress or slogan in your “advertisement”.

“Advertisement” was defined as “a notice that is broadcast or published to the general public or specific market segments about your goods, products or services for the purpose of attracting customers or supporters....” There were exclusions for knowing violation of the rights of another as well as for infringement of “copyright, patent, trademark, trade secret, or other intellectual property rights,” but the exclusion didn’t apply to infringement in an “advertisement” of copyright, trade dress or slogan.

In order to have coverage, the insured has to show that an alleged violation “gave rise to an ‘advertising injury,’ ” and that “there exists a ‘causal connection’ between that injury and the ‘advertising activity’ undertaken by” the insured.

ESY argued that the underlying complaint alleged disparagement, which could result from a false comparison suggesting another brand is inferior. But the allegedly infringing similarity here didn’t make any express comparison, nor did the implicit reference dishonor or denigrate Exist: “imitation is not disparagement as there was no comparison suggesting Exist’s brand was inferior to Plaintiffs’.”  Though Exist alleged it suffered reputational harm by being associated with ESY, that just means Exist thought itself superior to ESY; it doesn’t mean that ESY allegedly suggested that it was better than Exist.

ESY’s arguments about “[t]he use of another’s advertising idea in your ‘advertisement,’ ” and “[i]nfringing upon another’s copyright, trade dress or slogan in your ‘advertisement’ ” fared better.  The insurer argued that the accused hang tags were part of the garments themselves, not advertisements.  The court disagreed.  Though something that was part of the product might not be an ad, the hang tags were attached to the garments but not part of the garments themselves.  They provided information and also “presumably had the additional function of attracting consumers to the garments themselves and to the brand more generally. If the hang tags’ only purpose was to provide information, they would not need such a particular aesthetic.”  Indeed, many products don’t have “fanciful” hang tags; instead they have labels “lest they detract from the product’s appeal. The hang tags here presumably did the opposite—they attracted the consumer.”  Given the rule that ambiguities are resolved in favor of coverage, “advertisement” was broad enough to cover the hang tags.

Did they hang tags allegedly use another’s advertising idea?  “[T]he Eleventh Circuit, applying Florida law, has construed the term to mean ‘any idea or concept related to the promotion of a product to the public.’ ” So, for basically the same reasons a hang tag is an advertisement, it is also an advertising idea, and the complaint was also fairly read to allege that the hang tags were trade dress. 

Further, the underlying complaint alleged copyright infringement, which was concededly covered.

Was there “a causal connection between [the advertising] injury and the advertising activity undertaken by” ESY?  Selling an infringing product isn’t enough to create a causal connection: the alleged misconduct has to be committed in an advertisement.  Again, that was what the underlying complaint alleged here.

The infringement exclusion didn’t bar coverage because it expressly carved out infringement in an “advertisement,” as here.  The knowing violation also didn’t apply because, though the underlying complaint alleged a knowing violation, the underlying plaintiff could recover without showing intentional infringement.  There can’t be a duty to indemnify without a duty to defend, and under the insurer’s logic that the allegations sufficed to trigger the exclusion, it could end up after trial with a duty to indemnify—if the underlying plaintiff showed liability for non-willful infringement—without having had a duty to defend. 

General involvement in app production doesn't defeat 230

Free Kick Master LLC v. Apple Inc., 2015 WL 6123058, No. 15-cv-03403 (N.D. Cal. Oct. 19, 2015)

 

Free Kick Master has a registration for “Free Kick Master,” and sued Apple, Google, and Samsung, alleging that they all offered downloads of an infringing Free Kick Master app or game.  Though framed as direct infringement, the trademark claims had to be understood as contributory infringement claims.  For services, contributory liability can attach to those who continue to supply a service to one known to be using it in an infringing manner, so long as the service provider is also shown to have ‘[d]irect control and monitoring of the instrumentality used by a third party to infringe....” Under this standard, Free Kick Master failed to allege facts showing Amazon/Google continued to supply their services to third-party app developers engaged in infringement after learning of that infringement; no facts even alleged that Amazon/Google knew that the apps and games were infringing until the lawsuit was filed.

 

Also, the state law claims, including the state law trademark infringement claim, were barred by §230 of the CDA because of the 9^th Circuit’s rule that the IP exclusion in §230 means federal IP.  Free Kick Master argued that it had alleged that Google/Apple had contributed to the alleged illegality by promising to promote the apps, approving the apps, ensuring that the apps worked as outlined and didn’t impair users’ devices, testing the apps for compatibility, and supplementing them with code.  But having content guidelines and rules, enforcing those rules, and providing technical assistance to developers was insufficient to lose §230 immunity.  Without an allegation that Amazon/Google were responsible for the infringing content—choosing the names, assisting or encouraging the infringing use of Free Kick Master’s mark, etc.—there was no claim. 

 

Samsung got out of the trademark infringement claim under the same theories, with even more attenuated connection to the third-party websites on which the allegedly infringing downloads compatible with its devices were offered.  The state law claims were dismissed as to Samsung because they were basically the same as the Lanham Act claims; Samsung apparently didn’t argue §230, perhaps because it’s not even providing relevant services.

Back to the Future: 9th Cir. reverses itself in Multi Time Machine

Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575 (9th Cir. Oct. 21, 2015)

 

Reversing itself (with amicus advocacy from, among others, yours truly), the panel now by 2-1 holds that Amazon should have gotten summary judgment for its practice of responding to searches for “MTM Special Ops” with other, clearly labeled watches, without explicitly stating that none of its results are for that exact product.  Because of the clear labeling of the results, “no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products”:

 

To whatever extent the Sleekcraft factors apply in a case such as this – a merchant responding to a request for a particular brand it does not sell by offering other brands clearly identified as such – the undisputed evidence shows that confusion on the part of the inquiring buyer is not at all likely. Not only are the other brands clearly labeled and accompanied by photographs, there is no evidence of actual confusion by anyone.

 

Sleekcraft isn’t a rote checklist, and different factors may be important in different circumstances.  In search engine cases, an additional factor is particularly important, per Network Automation: “the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.” By contrast, the multifactor test “is not particularly apt,” because it was developed for a different problem, “i.e., for analyzing whether two competing brands’ marks are sufficiently similar to cause consumer confusion.”  [Comment: I’ve rarely seen a better admission that IIC is a bad idea.  That “different” problem is called “whether there is trademark infringement.”]

 

But, the majority notes in a footnote, a panel can’t get rid of IIC.  So, let’s go to the argument that’s not about real infringement: MTM’s argument isn’t that Luminox and other competitors’ brands have confusingly similar marks, but rather that Amazon’s search page creates IIC, because the search results page displays the search term used – here, “mtm special ops” – followed by a display of numerous watches manufactured by competitors, without explicitly informing the customer that Amazon does not carry MTM watches.  The alleged confusion isn’t caused by competitors, but rather by the web page’s design. 

 

Still, setting aside the multifactor confusion test, ultimately the question is whether a reasonably prudent consumer is likely to be confused.  Here, evaluating the web page plus the relevant consumer was enough to answer that question as a matter of law.  Because “the default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace,” and because the watches at issue sell for several hundred dollars, reasonable consumers would be careful.

 

As for the webpage, even MTM agreed that clear labeling could entitle a defendant to summary judgment.  Here, the products themselves were clearly labeled to avoid any likelihood of IIC on the part of a reasonably prudent consumer.  There were even photos!

 

MTM argued that the use of the search term “mtm special ops” three times at the top of the search page might lead consumers to think that the products displayed were types of MTM watches.  But that’s silly.  I mean, “highly unlikely.”  None of the watches use “MTM” or “Special Ops,” and some of the products listed aren’t even watches, like Jerry Ahem’s book Survive!: The Disaster, Crisis and Emergency Handbook.  “No reasonably prudent consumer, accustomed to shopping online or not, would assume that a book entitled ‘The Moses Expedition’ is a type of MTM watch or is in any way affiliated with MTM watches.”  The same was true of the other results.  The standard, after all, is likelihood of confusion, not possibility.

 

MTM argued that Amazon needed to explain to consumers that it doesn’t sell MTM watches before offering alternatives.  But anyone who can read English could tell that Amazon sold only the listed products.  The results were “unambiguous – not unlike when someone walks into a diner, asks for a Coke, and is told ‘No Coke.  Pepsi.’”

 

MTM argued that factual disputes precluded summary judgment, but none were material.  “The likelihood of confusion is often a question of fact, but not always.”  The Ninth Circuit has reached similar results in false advertising cases where no reasonable consumer could have been fooled.  Anyway, consideration of the remaining Sleekcraft factors wouldn’t change anything. There was no evidence of actual confusion.  As for intent, the design of the webpage “indisputably produces results that are clearly labeled as to the type of product and brand,” so that too didn’t favor MTM. As for strength, “[e]ven assuming MTM’s mark is one of the strongest in the world – on the same level as Apple, Coke, Disney, or McDonald’s – there is still no likelihood of confusion because Amazon clearly labels the source of the products it offers for sale.”  Furthermore, Network Automation already said that the other factors were unimportant in an internet search case involving clear labeling and a high degree of consumer care.

 

Judge Bea, dissenting, would have sent the case to a jury on the hypothesized IIC about affiliation between MTM and Luminox et al.  (Would consumers think that MTM had formed relationships with all the brands listed?)  The dissent pointed out that other internet sites that didn’t sell MTM watches would give a “no results” result to the “mtm special ops” search, and seemed to think that was all Amazon should be doing too.  Maybe MTM wasn’t right that consumers might think it sold watch parts to Luminox as a result of Amazon’s search functions, but a jury should decide that. 

 

The majority, the dissent accused, implicitly added “at point of sale” to the “likely confusion” made actionable by the Lanham Act, and ignored “the possibility that a reasonably prudent consumer might initially assume that those brands enjoyed some affiliation with MTM which, in turn, could cause such a shopper to investigate brands which otherwise would not have been of interest to her.”  [Note the continued use of “possibility”—yet to avoid summary judgment MTM needed to offer evidence that a factfinder could use to conclude that this was likely, even if you buy the doctrine of initial interest affiliation confusion.] [Also, how would “no results for MTM special ops found, but try these watches instead” dispel the possibility of a suspicion that MTM had sold parts to or had some other affiliation with the brands listed?  As our amicus pointed out, “no results for MTM special ops, but what about MTM Black Cobra?” would be a perfectly sensible sentence.  The “no results” doesn’t address the postulated type of confusion.  I suppose Amazon could program in “no results for MTM special ops, but try these other completely unrelated, competing products with no affiliation with or parts-selling relationship to MTM,” but that seems even sillier.]

 

Network Automation was distinguishable because (1) it reversed a grant of a preliminary injunction, and (2) “the ‘diversionary’ goods were clearly labeled on the response page as ‘Sponsored Links,’ showing that the producers of those products were the ones advertising for themselves, not for the firm named in the search request.”  This second reason is pretty bold, since the empirical evidence is that consumers don’t know very much about the division between paid and organic results despite labels of that type, and also since firms often bid on their own trademarks anyway. 

 

“On this record, a jury could infer that users who are confused by the search results are confused as to why MTM products are not listed.”  [Again: not trademark confusion!]  And those confused users might “wonder” whether a competitor acquired MTM or was otherwise affiliated with or approved by it.  [Also, this would be true even if MTM watches appeared in the results.]  The risk of affiliation was especially great for a luxury brand, since “many luxury brands with distinct marks are produced by manufacturers of lower-priced, better- known brands—just as Honda manufactures Acura automobiles …, and Timex manufactures watches for luxury fashion houses Versace and Salvatore Ferragamo.” As for the Coke/Pepsi comparison, “[n]o shopper would think that Pepsi was simply a higher end version of Coke, or that Pepsi had acquired Coke’s secret recipe and started selling it under the Pepsi mark. [Why wouldn’t a jury have to decide that under the dissent’s theory?  Also, what makes the second possibility even relevant to trademark infringement?] 

 

Anyway, the real issue isn’t source confusion, it’s whether Amazon’s tactics caused IIC “by attracting potential customers’ attention to buy the infringing goods because of the trademark holder’s hard-won  reputation.”  [Hey, wait, what infringing goods?  At what point did Luminox watches start to infringe MTM’s rights?]  A jury could find IIC, not just mere diversion.

 

And here the dissent demonstrates one of the ways in which the multifactor confusion test has become more harmful than helpful: it contends that the majority erred in considering mark strength unimportant, because “[a] mark’s strength is a measure of how uniquely identified it is with a product or service, and therefore how deserving of trademark protection.”  But one quite persuasive point of Network Automation, not to mention New Kids and Rogers v. Grimaldi and parody cases like Chewy Vuiton, is that sometimes mark strength doesn’t increase the likelihood of confusion, because of the way that a strong mark is being used.  If we’re at all interested in being accurate about likely confusion, even if we’re committed to using circumstantial tests, then I don’t see why we should use a blanket rule that the stronger a mark is, the more likely confusion is no matter what the other facts are.

 

The dissent also was willing to treat Amazon’s intent as intent to confuse, because “MTM submitted evidence that Amazon vendors and customers had complained to Amazon because they did not understand why they received certain non-responsive search results when they searched for products that are not carried by Amazon.”  Amazon didn’t address the complaints by explaining how its search function worked (it also accounted for related searches and other aspects of consumer behavior).  Amazon did nothing to alleviate confusion, which provided “some evidence of an intent to confuse.”  [Again, it would be nice if everyone could remember that “confusion” is not “confusion in the air” but trademark confusion.  Intriguingly, the dissent doesn’t notice that these very complaints tend to disprove its initial interest affiliation confusion theory: customers understood that they were getting unrelated search results, rather than thinking that some hidden marketplace consolidation had taken place.]

Hand in glove: ICE and trademark seizures

More tidbits from my FOIA suit against ICE, including the revelation that they did indeed record at least one seizure of disparaging items, “Baltimore sucks” T-shirts.  (Other entries are suggestive, but too unclear to be sure what was seized without details.)  More to follow, but here’s a bit from the ICE Briefing Book on what it called its “NFL News Conference” held in early 2015, which triggered my lawsuit in the first place: 

The NFL news conference on anti-counterfeiting efforts will be co-hosted by Dolores DiBella, NFL’s Counsel. Also as in past years, invitations have been extended to a local CBP [Customs and Border Protection] representative and a local public safety official to have minor speaking roles at the press conference. The primary topic will be the harm to the public, economy and U.S. businesses posed by counterfeit tickets, merchandise and apparel. The event will include only NFL-credentialed media.

Apparently when you buy counterfeit NFL T-shirts, you're stealing American jobs.  How many licensed T-shirts are made in the US, again?

Transformative works of the day

R. Sumantri MS, from Indonesia, paints DC and Marvel superheroes juxtaposed with Asian folk and mythological characters. Here: Guan Gong vs. Iron Man, Nezha vs. Batman, and Guan Gong vs. Captain America from his China New Supreme Power series. Discovered via David Tan's chapter in Diversity in Intellectual Property: Identities, Interests, and Intersections, ed. Irene Calboli & Srividhya Ragavan.

Right of Publicity Workshop Part 3

Relationship to Copyright law/Relationship to Trademark law 

 

Dryer v. NFL will be argued to the 8^th Cir. challenged by retired NFL players to continued airing of programs recounting their exploits in actual games.  Survived a motion to dismiss.  After NFL settled a class action, moved for SJ and dct granted it. Every single defense we’ve discussed has been raised and was accepted: 1A based defense under C.B.C. fantasy baseball case; statutory/common law safe harbor for speech about sports; Rogers v. Grimaldi for TM claims lacking express false endorsement; equitable defenses.  © preemption is important in the 8^th Cir. b/c Ray v. ESPN found preemption when a pro wrestler said that ESPN violated his ROP by showing old footage of him wrestling. 

 

Good news/bad news: preemption is a likely win, but allows them to avoid 1A issues, so they won’t clarify the remaining issues.  When is preemption appropriate?  And what should be done with transformative use?  In ©, fair use is a 1A safety valve; under ROP, you shouldn’t be applying it to 1A-protected activity in the first place, so you don’t need transformativeness for the same purpose.

 

§301: if something is within the subject matter of ©, whether protected or not, and the state claim is equivalent of a © right—state a claim simply b/c someone is exercising rights of ©--then it’s preempted. ROP gets confusing b/c there’s confusion over what the subject matter is—the thing created by the user or the persona of the claimant, which is not protectable. Metaphysics: Toney v. L’Oreal—a model sues L’Oreal for putting her picture on a package and the court got tied up in whether the subject matter was photograph or face.  Conflict preemption as another alternative.

 

§301 is incoherent and therefore not tremendously valuable; it has this subject matter problem. Main thing it was supposed to do was to preempt common-law copyright, and it doesn’t even seem to do that.  Conflict preemption is therefore useful.  Used to look a lot bleaker. Now there are more cases finding preemption when there’s an authorized use at the front-end subsequently repurposed; courts now seem more likely to find preemption as a matter of constitutional avoidance. Problems exist: no initial permission for underlying work; expired contract/use exceeds terms of initial contract.

 

Permission as an issue: what do we mean by permission? Federal law may perhaps need to define what consent is for purposes of copyright preemption regardless of whether state law purports to require written consent for the ROP.

 

Marshall: followed Dryer surviving a motion to dismiss, b/c athletes didn’t expressly consent for their games to be shown on TV.  So what’s the role of consent?

 

We’ve struggled w/ the relevance of consent.  At some level, the case is premised on the notion that consent to do anything was coerced: an unfair deal/forced to sign deals if they wanted to play.  Consent is usually a Q of fact/can be vitiated by duress.  For purposes of © preemption, we’ve argued that it doesn’t matter.  When push comes to shove, it has to be the case that for purposes of © preemption these athletes have consented: they came to the field and knew they were being filmed. Whether that’s consent for purposes of common law may be different.  Though it’s argued as §301, it’s always felt more like conflict preemption: © defines how performances are to be protected; this is essentially a common-law © claim repled.

 

Why should consent matter to the preemption claim? 

 

When the underlying party has consented the problems of conflict preemption/goals of © are implicated.  Implied consent can be read broadly. 

 

Conflict as conflict w/©’s scheme for determining who an author is.  Consent may matter then if the person who consented would otherwise count as an author: so Zacchini may be in a different position than a single athlete or even a single actor in a larger production.  If the claimant is a person for whom it would make sense to ask “is this person an author?” then perhaps a ROP claim implicates © preemption questions, and that makes consent relevant.  If their performance or expressive configuration is fixed w/out consent, then what they have is functionally a common-law © claim; if it was fixed w/consent, then either © provides them an ownership interest or it doesn’t and either way there should be preemption.

 

They may also have a contract that limits/expands rights in various ways. The contract may or may not be valid, but even if you took the contract away, they still knew they were going to be filmed.

 

Consent is a separate case.  Finding of consent to woman on red carpet was not a preemption finding.  T3 case: preemption doesn’t depend on consent; you can license photos for which you own the ©.

 

Consent is fact-specific: who are you suing and what are the terms. Are you exercising a right to which you would normally be entitled? 

 

Fleet v. CBS: claimed their contracts didn’t allow the use of their images in the films. Court spoke in terms of consent for © preemption; then the © rights trump their rights of publicity.

 

What’s the linkage to ©?  If we don’t know what the ROP is for, then what it is/whether it is related to incentives is at least open to debate.  The argument that has proven more persuasive to some folks, including Posner, is © as brand management—an exclusive right to encourage efficient management of celebrity once achieved. Cal SCt explicitly relied on incentive theory in Saderup too in its decision to look to ©. Zacchini used © as analogy; states used it as analogy to get life +50 or +70 in states; to copy remedies such as disgorgement.  To the extent a ct finds them persuasive, it ought to be motivated to apply a more searching §301 analysis—paracopyright is exactly what §301 was supposed to get rid of.

 

But what if the ct says it’s incentive based, but the incentive is to do something other than create expressive works.  Then §301 isn’t obviously implicated.

 

Worst use of © analogy: transformativeness! No one can agree on what it is for ROP.  You can’t use the person to discuss the thing that made them famous?

 

It’s really about art v. tchotchkes.  Transformativeness does this, even if it’s stupid.

 

That’s how the case should have been decided, though it creates problems of its own: the New Life court got completely tangled in mugs v. calendars v. posters. But that would have been better than what we got. 

 

OK if correctly applied: the work is transformative, used for different purpose and effect [than what?  Than the celebrity? What is the purpose and effect of the celebrity?]  Relative value of the celebrity use is effectively the fourth fair use factor folded into transformativeness. 

 

But why do people buy biographies?  Court includes that as a class of protected works, but doesn’t explain how that works.

 

Might have been ok as articulated, but never used rationally or consistently.

 

How do you transform a name? Several courts have said you can’t.  And if you’re talking about a news photo, you can’t transform that if it’s just how the person looks.

 

Cal SCt started from the assumption that virtually all expressive works were protected, intended to be a pro-artist decision. 

 

Trademark: Would §43 cover everything that we agree is within the legitimate scope of the ROP as we think it is?  What are the risks/benefits of such a move?

 

There is a close match between this narrower version of ROP and §43(a)—Midler and White both also involved successful §43(a) claims.  There may not be a perfect match w/commercial speech, since TM is broader in the forms of confusion it prohibits.  Doesn’t always require, as it should, a strict invitation to engage in a commercial transaction.  For the most part, a lot of overlap.  What does that say about the risks/benefits/opportunities of thinking about TM?

 

The greatest potential benefit: convince courts to think more in terms of Rogers v. Grimaldi, if the purpose of the right is defined more narrowly and more like the purpose of TM—gives us a basis for balancing speech interests in a way similar to how the Rogers ct did it.

 

But TM has expanded so much; de facto existence of licensing market makes it plausible that cts would find false endorsement in many circumstances, especially merchandising—maybe that’s not so bad for courts’ anti-exploitation instincts, but leads us back down the rabbit hole. Does presence in video game imply endorsement?  Rogers is important, but then rests on a distinction between “expressive” works and other works.  And is incoherently applied in the U of Ala./New Life case.

 

Courts haven’t explicitly grappled with where Rogers applies—but where the sum and substance of the product constitutes the TM, a keychain or license plate holder, they don’t engage in Rogers, versus works that contain independent expression into which the TM is folded where they do apply Rogers. It’s rough and not explicit in the case law, but merch that consists of the TM isn’t even treated as expressive in TM law. 

 

If we did a §43(a) approach, would there be a policing requirement?  Could there be abandonment? 

 

If we limit the wrong sought to be protected, the endorsement should come from the celebrity itself and not from the estate—postmortem ROP is much harder to sustain. The move people make to get around that is to say that consumers believe that the estate licensed it, but that’s entirely circular.  People don’t think Coretta Scott King endorsed the statue; they may think she’s getting money, but that’s different.

 

But what about the category of non-false claims?  Paparazzi photos of celebrities drinking Coca-Cola—truthful ad that they drink Coca-Cola.  Courts won’t allow that campaign although it is 100% true. 

 

Cycles us back to 1A: dangerous constitutional ground if you try to prohibit that by state law.  Can make a good case that implicit endorsement should be actionable, but if you take away the misleadingness—make it absolutely clear that there’s no endorsement—the 1A should prohibit liability.  [Unless it’s commercial speech and the ROP still survives Central Hudson!]

 

[It says something disturbing about the current SCt that the comments so far largely assume that they are fine with animal crush videos, violent videogames that cause violence, and simulated child sex but we assume that they could not stomach a rule that didn’t give celebrities rights to control truthful commercial speech about them because that doesn’t give celebrities enough money/property rights.  Not something that I’m sure is wrong, but something disturbing.]

A fair amount of sentiment in the room that in fact the SCt will see the ROP as equivalent to the animal crush video law; SCt wouldn’t see it as an IP right because it’s a state right.  I don’t really see that conclusion as following given the Ct’s extreme respect for property rights created by the states.  Even the judicial takings case suggests that the Ct won’t let states cut back on the property rights they created.  Alvarez indicates that Justices across the spectrum believe in trademark rights, and I don’t think they’re just talking about the federal right.

 

Rogers: said that when you’re dealing w/Lanham Act you have to establish consumer confusion and ROP doesn’t require that, so there needs to be more 1A protection for that very reason. The Third Circuit turned that on its head, for no sensible reason.  We’re really giving celebrities a right of control, not a right of reward.

 

People do have a visceral reaction to advertising use versus expressive products.  But can’t think of a way to implement that distinction in a satisfying way.

 

A way to use TM to give some comfort to the Ct?  Haelan was justified b/c celebrities would feel deprived if they could no longer benefit from their endorsements. Given §43’s expansion over the years, there’s become much less of a need for that.  Complementary federal protection.

 

Does the expansion of stakeholders—people giving likes on Facebook as potential claimants—play into this?

Even if they cut back on commercial speech doctrine, SCt will find a way to deal with the false endorsement issue—maybe by using fraud.

 

If you use TM analogy, do you get postmortem rights/transferability?

 

It’s more of a justification—doesn’t mean we take all the rules for TM and transfer them over. [In fact, try a broader false advertising justification—then you don’t get postmortem rights and transferability at all.]  Make Rogers seem relevant by identifying the harm we’re trying to prevent as consumer deception, in which we have a ready-made test for expressive works that incorporate celebrity identities. If the harm is that somebody made money and the celebrity didn’t get paid, then Rogers won’t work.  But that won’t fit many of the suggested justifications for the ROP; the conclusion has to be that the 1A puts many of those justifications off limits.

 

One sign of how bad transformativeness is as a test is that putting Paris Hilton in an NCAA video game is easier to justify than putting an actual player in.

 

Rogers exists for a reason: needed something to allow people to use names/etc. in expressive works without vetoes.  Anybody who’s put a TM in a true expressive work w/o permission of owner has gotten a letter; there were lawsuits way back when where TM owners lost. But fundamentally they lost and courts said “no one would assume endorsement or sponsorship in this case.”  Today, where product placement is in 75% of works—that case doesn’t come out the same way without Rogers.  That’s why it’s important that Rogers is a standard that does not rely on an empirical test.  [Rogers rejected a consumer survey even accepting that it was well-conducted.]

 

The risk of TM world is that, if any connection is thought of as sponsorship/endorsement, then TM isn’t a limiting principle. SCt might not automatically treat Rogers as good law.  Rogers works as a bulwark against that by saying “if it’s artistically relevant, we don’t care if it’s confusing,” as long as you weren’t explicitly misleading.  But: If you look at TM as how the SCt has articulated it, they might not like Rogers.

 

Current Ct seems better on TM, though.  They might well be fine on Rogers. If they think of it as an IP question, much better that they think of it as TM than as ©!

 

Practical Issues (but not unrelated to principles)

 

How to frame the issue to the SCt: straightforward commercial speech case: not commercial speech and fails strict scrutiny.  That’s all that’s necessary.  Role of Rogers: one of our smartest appellate cts has already thought through the issue and gotten there; just clarifying relationship of Rogers to 1A.  [Why does the rump liability of Rogers survive strict scrutiny?]

 

Cite Stevens: not low value speech; standard interests cited are not present/not compelling/the right is not narrowly tailored to them. 

 

Logistical question: do you have to do that if you succeed in the doctrinal reframing? One thing the Ct could do is say strict scrutiny applies b/c it’s content based and send it back to the 9^th Circuit.  If it’s not commercial speech, 9^th Cir’s approach was wrong and strict scrutiny applies. Do you need to preemptively think up and defend against justifications?

 

Use Zacchini affirmatively as: the lower court misread Zacchini. Torturing it so badly so they end up w/ “it’s unprotected b/c it’s accurate.” 

 

How do you take on Zacchini?  Wrongly decided?  Distinguishes itself: a complete performance.  Narrowly tailored/compelling interest.  Ohio SCt used the words ROP, but that doesn’t mean that everything that includes the words ROP is Zacchini: a common law proprietary right in complete events. 

 

What is the right level of scrutiny that should have applied in Zacchini?  Good question! Now we know it’s content based; decided before SCt addressed the relationship between 1A and ©; need not address whether state common law © is treated the same way as federal ©, b/c it’s almost all preempted.  Even setting preemption aside, could say strict scrutiny applied and the nature of claim/interest differ and Ct needs to decide whether it would come out the same way, but it’s still nothing like EA v. Davis.

 

Path of easiest resistance: just distinguish Zacchini. 

 

What if the SCt doesn’t take this case? What’s next?  Only place for coherent nationwide rule is SCt.  Would need to find another case.  (Pirelli?)  Jim Brown case is now in the state court of appeals. 

 

What kind of case will plaintiffs look for?  Sympathetic Ps, like NCAA athletes.  Hurt Locker: ex-Marine?  You took his story/his life!

 

The problem is that the Ds are giant companies that make millions off the works. We need a D who’s a poor struggling filmmaker.  [SCt may be perfectly sympathetic to giant companies.]

 

Talk to the Ct about the creative process involved in making these games—creativity, skill, imagination.  Dryer, Sarver, Marshall: no court has gone so far as to treat movies like video games, so we never get to the SCt b/c the Ct doesn’t disagree with the cases and the movie companies oppose cert. Gutsy to not oppose cert and say it’s time to decide this issue. 

 

That didn’t work so well in Aereo.

 

There are sympathetic game companies.  Not every potential D—or every real defendant—is a big company/unsympathetic. 

 

Do they still think this is trivia that they’ve been forced by logic into protecting?  Very important not to make this sound as if we think the world is crumbling. 

 

Biopics: there’s no way to draw a line.  Videogames can be educational/used in training. Won’t just be trivial.  New form of interactive storytelling, not like merchandise.

 

If the Ct takes the case: what kind of amicus briefs? 

 

A good argument would focus on the fact that interactivity is not exclusive to video games: it’s part of reading, going to the movies; insofar as videogames are perceived as interactive, they are not different from anything else. Marshal the literature community in some form, the movie community.  Educators, history teachers.  Ken Burns?

 

Videogames with multiple levels, creative elements.  [That makes “transformativeness” look like an ok standard.] Better to have a realistic, complicated game.

 

Was Brown driven by perception of the material, or resentment of the California legislature caught up in anti-violence?  Predecessor cases like Kirby were fantasy; reality simulation games are losing, and those viscerally feel less like literature.  Should focus on why to protect reality-based games.  Biopic producers would produce a good brief.

 

Remarkably, there were no amicus briefs in Zacchini: Court took it as a sign that industry stakeholders just didn’t care. 

 

There is a risk that the Ct could backtrack on Brown. Must emphasize importance of throwing traditional expressive works under the bus. Brown is about speech regulation by the gov’t; they won’t have any trouble saying this is a different context.

 

Focus on the fact that there’s no principled difference b/t games and movies.

 

Educate the Court about the range of laws, the inconsistencies, the incredible breadth of what the states are doing.  Get facts in about reality of industry.  What you have is a national product that with the internet can’t be limited to certain states.  The state with the strongest ROP sets the rules for the nation.  Vast investment for motion pictures/need for predictability. 

 

EA takes many licenses—stadiums, NFL teams.  If the Ct rules in EA’s favor and uses Rogers, does that mean that it’s free for all for other competitors to use all these trade dress features of games?  [Yes, it should.]  Have the stakeholders thought this through?  EA games could be lower price/higher quality if it faced more competition from others who could use realism.

 

Some is copyrighted.  But EA was asked that at oral argument and it’s willing to take that result.

Right of publicity workshop part 2

How is the “right” to be reconciled with the First Amendment?  

 

Could be part of the vast universe of communication that isn’t protected speech: Fred Schauer’s writing.  Contracts aren’t protected by 1A, etc.  Could just be market behavior. That won’t work for ROP b/c so much of the regulated stuff is art.  [And commercial speech.]  Not low-value in SCt sense.

 

Next: explaining the tort involves subject matter restrictions, viewpoint restrictions, content restrictions—thus you get strict scrutiny and need a compelling state interest, narrowly tailored.  If it were judged this way, it couldn’t pass. There’s always a less restrictive alternative: to create a prize system for celebrities; create a compulsory license scheme.

 

Next: strict scrutiny is irrelevant to defamation torts.  Content-based, viewpoint-based, speaker-based.  1A applies to certain classes of expression and remedies.

 

Next: Double down on Zacchini and argue that the publicity tort is just like ©, an info production device/engine of free expression with built-in 1A exemptions and rules.  Not very persuasive; have to believe the purpose is info production and that’s not persuasive.  [Unless Zacchini is limited to its common-law copyright core where the right is one over his performance and not a right based on identity.] Also, not sure there’s a generally agreed-on 1A-friendly limits like idea/expression and fair use.  Grimaldi perhaps attempts precisely this: to graft onto the tort a set of things kind of like fair use (also see analogy to TM law). 

 

Next: this is secretly a privacy tort and no one knew about it.  Inequalities of power/need to trust another party can found fiduciary duty, and thus falls outside 1A.  Doesn’t think this works either.  If you think ROP is dignitary in part, maybe this works.

 

Next and his suggestion: based on commercial/noncommercial speech distinction.  Commercial speech doctrine treats certain classes of speech as unprotected entirely: false or misleading. To the extent ROP involves false or misleading attempts to hawk a product, this is just consumer protection law. But not all of ROP can be so described. (1) if not false/misleading, it either has to survive strict scrutiny or has to be classified as truthful commercial speech regulable under Central Hudson.  (a) He is falsely claiming I endorse his product—unprotected.  (b) Noncommercial use of name/likeness—protected.  (c) Most interesting: commercial speech but not purely misleading or false: Central Hudson, but until recently that gauntlet was easier to run and allowed state to engage in somewhat broader regulation than ordinary political/cultural speech would allow.

 

If rt limited to misleading commercial speech, overbreadth and prior restraint doctrine doesn’t apply, making existing law make sense.

 

That all made sense 5 years ago, but it’s Tony Kennedy’s Constitution and we all just live under it.  INS v. Sorrell put into Q the difference between the standard track for public discourse regulation and the commercial speech track—content-based and speaker-based restrictions = heightened scrutiny even for commercial speech. That really screwed things up, since commercial space is always content-based and speaker-based.  Sorrell didn’t touch the false/misleading v. nonmisleading commercial speech distinction, though, and as long as that’s in place it’s possible to justify a slimmed-down ROP.

 

How do you define commercial speech?  One Q is whether all forms of what Dogan & Lemley have called false endorsement to be a proposal to engage in a transaction.  If yes, then no problem.  If no (playing music at a political rally is allegedly false endorsement, according to many singers), then there is an issue. Would a ban on false political endorsement survive strict scrutiny?  I think yes.  Not pure consensus in the group.

 

Thin conception of ROP leaves false light and defamation on the table, as long as NYT v. Sullivan standard was met. 

 

When you limit the tort to false endorsement/no relationship to use of person’s likeness, courts just have a knee-jerk reaction to the need to compensate people for a wrong done. Has had judges say: if you follow Rogers v. Grimaldi, it eviscerates the right of publicity.  Which, yes.

 

What if there’s an advertising use where the person actually does use the product, but didn’t consent to the use of her picture for an endorsement.  Literally true: how does that come out?  Maybe the state can’t require more than a disclaimer under conventional commercial speech doctrine b/c it’s only “potentially” misleading rather than “inherently” misleading. 

 

How does Abdul-Jabbar come out? Truthful claim that Alcindor was the 3-time champ; ct says commercial context means audience believes there’s an endorsement.  It’s misleading, that produces a remedy, but it’s not clear whether the remedy is ban or disclosure. 

 

Tom Cruise avatar appears in the film without permission: that’s a different case though you can imagine an endorsement story. 

 

Rogers is not an ordinary false endorsement test from the perspective of nonconstitutional false endorsement law.  It explicitly rejects dependence on every source of evidence that courts traditionally consider in nonconstitutional false endorsement cases.  There is an error-avoidance rationale for this, but (1) that needs some justification in itself, and (2) it doesn’t explain the no artistic relevance prong, which is a rump unfair free riding justification. 

 

Commercial use is usually ordinary public discourse/strict scrutiny.  Commercial use doesn’t mean that we’re at commercial speech. 

 

Is disclosure enough?  That is a Central Hudson question.

 

A movie in which Tom Cruise is portrayed being himself seems like an easy case.  It’s only the Tom Cruise avatar playing another character that seems to drive courts crazy. 

 

Can a false endorsement turn something that isn’t otherwise commercial speech into commercial speech?  [Compare a standard false advertising claim: BMW funds a film in which BMW is shown, among other things, performing well and passing emissions standards.  Can a regulator challenge the factual representations made in the course of the otherwise 1A protected film? I think the answer is yes, though very few people in the room agree with me.  I’m also a fan of Rogers v. Grimaldi, though.  But I am willing to believe that false endorsement claims can satisfy strict scrutiny even for noncommercial speech (which Alvarez actually suggests).  Only Alvarez can save us.  Alvarez forces us to ask: Falsity over what? What harm does the falsity do?]

 

Suppose it’s a disparagement of someone else’s competing product in the BMW-funded film.  I think that’s still commercial speech, like Lexmark, but lots of people disagree with me.

 

Jewel v. OSCO: Judge said—yeah, on its face it’s a congratulatory ad, but the only reason they took this ad out was to promote their own products. If you’re using the commercial speech doctrine, we have to face the reality that corporate entities put their names on stuff to sell products, even if those products aren’t named in the ads.  Positive association w/BMW.  [Which is why falsity is such an important constraint on the regulator’s ability to act!]

 

Baseball cards: modern ROP starts with images on baseball cards. Packaged w/gum, but not advertising the gum.  That doesn’t seem like commercial speech to me under any test articulated.  But it also doesn’t seem to be possible to get to Haelan’s result and apply strict scrutiny.

 

NFL Films: gets a commercial benefit from producing its films, but fully 1A-protected despite its economic interest.  [I agree, but it’s not b/c no factual representation was being made.  It’s b/c the alleged falsity in Facenda wasn’t sufficient to justify gov’t intervention.  This is why I care about Alvarez: Alvarez tells us that falsity isn’t enough; the falsity has to do a certain kind of harm, which can be determined wholesale in some cases and retail in others, in order to justify regulation.  Facenda isn’t a problem because it treated films as a subject of regulation, but because it considered that the possibility of consumer confusion about whether Facenda endorsed NFL Films over and above having announced for the NFL for decades was significant enough to justify liability.  The harm to consumers, or to Facenda, from this purported confusion was not enough (not to mention not proven with nearly the certainty one would want before suppressing a message truthful on its face).]

 

Broad dissent on the assumption that commercial speech doctrine will remain as it is.  Kennedy may be wrong, but what he said was that content-based distinctions are presumptively unconstitutional and that speaker and content are both ways to get to presumptive unconstitutionality. [Which is why I think that the FDA and the FTC and the SEC are very much in danger from many of the theories we might advocate to get rid of the ridiculousness of the ROP.  There’s a reason that the SCt dismissed Nike v. Kasky as improvidently granted—you couldn’t write the opinion for Nike without clearly driving a stake through those regulatory agencies.  The Cal. SCt had the right idea about defining commercial speech through factual representations for purposes of false advertising law.  Though no one here agrees w/me.]

 

Is it plausible that there will be nothing left of the tort if the SCt abolishes the commercial speech doctrine? Or will we be left with the worst of both worlds—strong ROP because that’s a property interest, no FDA?

 

As a practical matter: We’re not going to end up with a world in which falsity in commercial ads is going to be treated as favorably as falsity in political ads. 

 

The real risk of applying strict scrutiny then is withdrawal of scrutiny from ROP in its entirety. 

If the real likelihood is being thrown into a category of its own, we need to look at whether there are internal limits on the ROP.  They could just say it’s not a new exception but an old one: Zacchini, Gay Olympics, copyright are all the same and all ok/exempt from the rest of 1A doctrine.

 

Uses that seem troubling to other people—worries about judges wanting to create some remedy.  So what can we think of that will be second-best?  [I think that may be unambitious, given that the defamation bar thought the same thing pre-Sullivan—of course there will be remedies for abuses!]  If we go with false endorsement, then most merchandising uses will be false endorsement.

 

Nobody knows what merchandise is after the 3 Stooges case.

 

Yes, but you can say that many instances of merchandising use involve a plausible claim of false endorsement—when marks are used as products, that implies endorsement, or at least (doesn’t believe that) courts have accepted that theory for pure use of image on T-shirts.  So as a practical limit, use of persona as intrinsic part of product is actionable b/c that causes confusion.  [So what’s left of Rogers after that?]  [This is why we need to think about the justification for Rogers as part of this inquiry!]

 

The key is framing Davis sympathetically, when the equities all seem to lie w/the other side for lots of people.  Frame these issues ex ante: censoring the depiction of history in realistic media, whether a video game or anything else. Consider a videogame about simulating elections: Should Dan Quayle or Hillary Clinton have the right to say no?   What about Manuel Noriega?  Right to control how anyone can experience the video game: practical problems—that’s a lot more attractive than “should we share the revenue after the fact?”

 

Functional products v. expressive works.

 

But a poster of Che Guevara is clearly an expressive work and courts throw it on the other side of the line.

 

Sure, Cal. SCt screwed that up with T-shirts.  A T-shirt is a functional product that may have expression on it; just b/c you could put expression on it doesn’t make it protected by the 1A.

 

But the cts have said that it’s unprotected even if  you put expression on it.  There’s a whole body of case law and instincts.

 

SCt doesn’t care about lower courts.

 

But it may care about instincts.

There’s a distinction from using a likeness in an expressive work (calendar) to advertise a car and we shouldn’t let them be mushed together. 

 

Baseball card and statue are only valuable as expressive works, whereas a T-shirt and a coffee mug have value aside from that.  Saderup didn’t like having T-shirts be sold so they made up a test to prevent that.

Average person would be comfortable with a rule that says “you can’t sell T-shirt w/Michael Jordan’s image on it w/o permission,” but sees value in video games.  If you bring people along to the result that these games can’t get made/can’t get made without private censorship, they’ll reject the ROP claim.

 

What if the SCt said, we can address that using eBay? Might just say that there are all sorts of situations where these images are paid for, and so we should just create a licensing regime.

 

No one would make such a game and await suit with no set price.

 

Compulsory licensing?

 

Licensing is still unfair treatment of video games v. biographies—no one would say that it’s ok to have a damages-only remedy for biographies.  We all agree on the truly historical expressive works.  The fact that people do make life rights agreements doesn’t mean they have to; some judges and in-house counsel seem to be under the misimpression that life rights agreements are required—but the practice of doing it risks building it into the law.

 

Doing it to eliminate risks. [But why doesn’t that mean that courts could reasonably say “get a license or do not make the movie,” as they do with copyright?  Going forward in a world in which everyone else gets licenses looks negligent.  Not that I agree with this reasoning but I understand why judges mistake the meaning of these agreements.]

 

Trying to figure out an answer to: “if we rule for EA, isn’t the T-shirt allowed?”

 

Lawyer can respond: “that’s not my case.”

 

Doesn’t think that will work; thinks an exception will be found for ROP, though own normative take is unlikely to be adopted by SCt. So we need to frame some built-in speech protections like speech.  Fiction is compelling but dangerous.  One problem was Davis disfavoring realistic portrayals—jeopardizes nonfiction.

 

We need to articulate something the SCt can adopt at least in broad outline if it doesn’t do the details. At least for realistic depictions, in noncommercial speech, X should be protected.  That are not exploitative.  [What does “not exploitative” mean?]  I like Rogers, but you could read ROP out of existence that way b/c everything is artistically relevant—which most of us like, but not everyone will. 

 

Many state statutes have language excluding from the scope of ROP the core 1A stuff. One could make an argument that, like fair use and idea/expression for ©, those are constitutionally required as an overlay and they have the advantage of existing in many states; it’s not totally foreign.  If those get strong enough through statutory analysis/constitutional avoidance, you narrow the problem even if you lose the tchotchke cases.

 

Hard time w/concept of constitutional overlay/privilege—looking at defamation etc., the only reason we have a constitutional overlay is b/c SCt decided that lots of speech was protected and came up with definitions of acceptable versions of the torts.  We always thought defamation etc. weren’t speech w/in 1A. This is clearly speech, not an unprotected category; what justifies a constitutional overlay?

 

Structurally the issue is a little broader—it’s not so much that these are nonspeech categories, but pragmatic view: certain forms of regulation are inevitable; we want privileges/overlays when courts think there’s something inevitable.  (1) we don’t need to say child porn is non speech to recognize that it will remain regulable. (2) libraries are going to engage in viewpoint based content selection; inconceivable not to do so. Island Trees: there’s an exception/overlay for partisan political viewpoint discrimination—a broader phenomenon than just defining things out of the 1A.

 

With this SCt, the one hot button issue is that they shouldn’t recognize a new category of unprotected speech—good for our side.

 

Hustler v. Falwell: we don’t need a new privilege/overlay, just a recognition that this is asked and answered by NYT v. Sullivan. You need a provably false factual statement (endorsement) that does harm; maybe intent to imply endorsement is also required.  All of these cases are about end runs around libel laws to control what people will say.

 

The problem w/fair use is that we don’t even know what it is we are fairly using. Still haven’t figured out the core of this right that’s worth protecting/allowing other to use.  Transformativeness test was from fair use, and it’s incommensurable.

 

Can ask for constitutional purpose, or purpose of the right.  If you say this is about false commercial speech as the paradigm case, then you would say that what Congress/state does in creating tort is to ensure the free flow of truthful info about sale and purchase of products; tort assists us in that purpose.  That’s not what a lot of people think the tort is primarily about, but it could be. Dignity/misappropriation/free riding version would be different. 

 

New state IP rights to identity in general—not ok.

 

Don’t advocate for less than what you want: strict scrutiny for everything, then strict scrutiny for noncommercial.

 

But Gay Olympics, ©, etc. may make that a dangerous pitch.

 

Does the pitch have to be, “you blew it in Zacchini” or “you need to cabin the acceptable result in Zacchini”? If the latter, you need a theory of the 1A under which the cabining works.