Preserve challenged ads/social media posts after receiving a C&D or risk sanctions

Nutrition Distribution LLC v. Pep Research, LLC, No. 16CV2328-WQH(BLM), 2018 WL 3769162

 (S.D. Cal. Aug. 9, 2018) (magistrate judge)

A spoliation/false advertising issue.  “While Defendants produced some social media documents, the production did not include Facebook or Twitter posts relating to the illicit products identified in the complaint.” For a finding of spoliation, a party must show that “(1) the party with control over the evidence had an obligation to preserve it at the time of destruction; (2) the evidence was destroyed with a ‘culpable state of mind’; and (3) the evidence was relevant to the party’s claim or defense.”

After plaintiff’s demand letter and complaint, which identified the products and ads at issue, defendants had an obligation to preserve relevant posts on their social media sites.  There was evidence of a culpable mental state, where a deponent responded to a question about whether the deleted posts had anything to do with this lawsuit, with “It’s possible. Actually, it was -- I think it had more to do with any copycat companies, law firms like yours trying to file the same frivolous lawsuit.” When asked about deleting posts related to marketing one of the products at issue, he responded, “I have the right to do whatever I want to do with my Facebook account, regardless of a lawsuit or not.” His declaration that no posts were deleted intentionally for purposes of litigation/post-filing was inconsistent with his deposition testimony and unsupported by evidence. Destruction after notice/negligence is sufficent to be culpable.

Finally, the evidence indicated that the deleted evidence was relevant to the claims as it “include[d] advertisements, photos, marketing, and misleading statements at issue in this action.” There was prejudice, because the plaintiff only has some Facebook and Twitter posts, not all of them.  The appropriate sanction was an adverse inference instruction that “the social media posts deleted were false advertising of products that compete with Plaintiff.”  Monetary sanctions were unnecessary given such an instruction.

IPSC session 5

Session 5: Copyright

Michael Carroll, The Law of Musical Borrowing: A concept of © distinctiveness is implicit in how we talk about substantial similarity.  Who decides this? It’s supposed to be the consumer: ordinary observer/intended audience. Both TM and © are trying to figure out what’s going on in the mind of the consumers. Distinctiveness plays a role in how juries/cts conceive of the work, and it becomes troublesome.  Similar to Bohannon’s idea of © harm/© dilution and criticism of the Dr. Seuss case but more basic/using TM distinctiveness as a reference point.

A coherent theory of © infringement analysis: you have to flip the filtration step; start w/idea that the author came to a world full of nonoriginal elements as preexisting materials. Originality is when they take that mix and do something original to the author; how do we know when they’ve done that? When we can distinguish what they’ve done from the background. It’s a bit Lockean.  It’s the elements of the work the audience attributes to the author.

If that’s about the work in suit, then you compare the accused work and look for the same elements.  If there is similarity, then is it substantial? This isn’t extrinsic/intrinsic, but it’s the decision framework we implicitly offer when we tell a jury to compare.  Postmodern: not what the author thinks the work is, but what the jury thinks.

In music infringement, there is a difference from other works. Value in popular works is in what’s distinctive, and there can be distinctiveness w/o originality.  A distinctive/original voice, not just someone who can sing on pitch.  A je ne sais quoi, but highly desired. Data still can’t predict success—either there’s something about the hook, or there’s payola.  “Closing Time”: The distinctiveness comes from your hammered-in memory even though the chord progression is common.  James Brown’s scream at the opening of “I Feel Good”: distinctive, but is it original expression?  No.  But from if value, then right perspective, you’re definitely taking value from Brown’s recording.  6^th Circuit/Bridgeport cases are the worst offenders here.  Bridgeport v. UMG: finds infringement in bow wow wow gimme yo gimme yay, Atomic Dog.  Blurred Lines case is the same thing, even though the court excluded the sound recording from the evidence. 

Fishman’s proposal is to judicially tailor scope of composition © to limit protection for nonmelodic originality. Carroll prefers strengthening the role of limiting doctrines, particularly idea/expression, scenes a faire, and de minimis use.  This avoids over-attribution of distinctiveness to nonmelodic elements of a composition.  He thinks Blurred Lines was troubling but an outlier.  If we’re going to live in a world of experts, experts will have to get better at describing scenes a faire in particular to the court.

The kind of claim he dislikes: the defendant repeated the same word/phrase I did and that’s infringing.  In these cases, courts turn out to prefer fair use (he’d prefer short words/phrases exclusion, de minimis use, lack of substantial similarity in the whole work).  Jimmy Smith Rap case (jazz is the only real music)/Last Poets (party and bullshit).  Don’t even bother with the belt and suspenders!

Zahr Said: “distinctive” does different thing in different places—misused in character cases all the time; it can play a TM role.  Are you stuck w/that word?  You identified a way of defining originality w/more discipline. Jury instructions are doing that in a pretty good way but using the word “original” which is confusing—can you find something that’s not a term of art elsewhere?  Using distinctiveness for infringement seems to be TM-like—in the bow wow wow case, they’re protecting more of a TM interest than a © interest and using “distinctive” entrenches that problem.  [Differentiation?]

Justin Hughes, Actors as Authors

Clearly, a number of dramatic performances cross the threshold for copyrightability [or at least the works in which they are fixed do].  Still, this isn’t set in the case law, allowing Google v. Garcia arguments to be made about how actors aren’t authors unless they have creative control over the script/performance (as Garcia allegedly did not).  Hasn’t been squarely raised b/c of WFH.

© Office compedium lists 10 elements of a motion picture that may be sources of authorship, one of which is performance: “the acting, speaking, singing, or dancing in a motion picture.” Courts have occasionally recognize this in deciding other issues like other authorial claimants and ROP claims/preemption of such claims by ©.

Performers really do think they’re artists/creators.  So do directors, except David Mamet.  Actors ad lib a lot more than you think, including Bogart’s “Here’s looking at you, kid,” DeNiro’s “You Talking to Me,” and Thor: Ragnarok [Also Wonder Woman’s great scene b/t Diana and Steve in the boat].  Like jazz improv, where the fixation is occurring simultaneously. But what do you do when there’s no ad libbing?  Are you as comfortable finding copyrightable expression added to the script?  It may be the case that it needs to be viewed as a zero-sum game.  Leeway given by directors is much greater in AV works than it is in theater where there’s lots of time for rehearsal.  Standard challenge: joint authorship doesn’t mean equal shares are required given the common law model.

Q: hard time explaining why athletes are different.

A: don’t follow a script, and are in a goal-oriented activity that is not a narrative activity; maybe dancing is the closest. Improvisational dance v. baseball game—gut feeling is there’s a difference, but Goldstein thinks no.

Samuelson: do the contracts b/t motion picture cos and actors speak to this possibility of authorship?

A: yes.

Beebe: © in public persona, once fixed?  Kim Kardashian, Barton Beebe, etc. seems like they could all make claims.

A: don’t need to solve persona; that seems like style—you can © every performance w/o being able to © persona. [That seems to finesse the problem of derivative works.]

Matt Sag: Clint Eastwood—is he a coauthor of the film or the author of a little subwork?

A: there’s © in the dailies, of which the motion picture is built. If financing stopped on the film and all they had was boxes of dailies, those are subject to ©. Garcia could more credibly have claimed joint authorship in the daily, then integrated into the larger work. That raises other interesting problems. Not sure that answers the Q.

Jim Gibson: you say author, but you really mean source of original creative expression, given that it might be a WFH. Sound engineers, record producers?

A: those are recognized as authors—SoundExchange is paying them and the Music Modernization Act will codify their right to payment.

Tim McFarlin, Tear Down the Stairway? Copyright Injunctions and the Public Interest

Partial contributions are of concern: if the contribution has audience appeal, perhaps that bears on authorship. If audience impact is important to authorship, where else might it affect doctrine?  Data-driven authorship is an example, and audience’s role in IP infringement (Fromer/Lemley).  What about eBay and the public interest factor in injunctive relief?

Discussion of suppressive motives & their relation to injunctions.

To what extent is nature/genesis of derivative work relevant? Willfulness, percentage of infringing content, whether it’s close to fair use.  Gilden argues that a stronger injunctive remedy may lead to more fair use findings, whereas courts may be more willing to find infringement if injunctions are rare.  If they are rare, do we get compulsory licensing case by case? If not, are we unfairly advantaging artist/works with a track record like Hitchcock over ones with out?  Do we define the public interest in the same way across different kinds of IP?

Q: stronger laches doctrine?  Could play into remedy.

Rosenblatt: if you focus on the audience, don’t you risk content discrimination/Bleistein problems?

A: true: hard to measure something’s classic status.

Rosenblatt: that’s not relevant; just consider how long it’s been out.

Van Houweling: Tasini raises concerns about recency—the articles might be recent but might still make holes in the record if removed.

Said: Stairway to Heaven is a weird example b/c credit was also at issue—Salinger v. Colting is a more interesting example of an enjoined then unenjoined non-classic.  What kind of First Amendment stand do you want to take?

IPSC session 4

Session 4: Old and New Theories of IP
Shyam Balganesh, The Common Law of Copyright

Censorial copyright claims: motivated by non economic, dignitary concerns, and the author/creator’s principal objective is expurgatory—to prevent the work from circulating publicly. These claims have existed from the origins of Anglo-American copyright. We treat them as illegitimate b/c of incentives myopia. This exists w/in the moral rights paradigm, the right of withdrawal/repentance right. In one jurisdiction, author has to purchase copies at lowest available price. During 1965 © revision study, they considered withdrawal right & said it was absurd, though they were aware it existed. 

Pope v. Curl, 1741, private letters published. Real theorizing in 1818, Gee v. Pritchard: analogous to revenge porn, correspondence b/t husband & wife about illegitimate child.  © grants injunctive relief even though this isn’t about encouragement of learning: legit interest and injunction granted.  Similar in Prince Albert v. Strange, 1849, sketches by Prince & Queen somehow acquired, again injunction granted. Folsom v. Marsh discusses Gee & why letters should be protected.  Woolsey v. Judd, NY 1855, discusses interests beyond just works of literary merit that ought to be protected. Clear recognition of necessary balancing: public interest; what if the party to whom letter is directed needs to publish to vindicate himself; etc.  Salinger v. Random House: an account that builds on the early cases, very much a censorial claim. Michaels v. Internet Ent. Gp., 1998, attempt to put it into terms of statute that is facially neutral in terms of its theory.  Doe v. Elam III, 2018, revenge porn case with $6 million award: © may be an imperfect fit, but it has always played this role.

Not claiming that these claims ought to flourish and blossom or extend into new domains. Recognizing them as a distinct category allows us to grapple w/the underlying concerns that accompany this category, the First Amendment primary among them. [It is not clear to me that many people have missed this point under current doctrine, but ok.]  Harm produced through expression: can be copyright harm, or other harm, e.g., defamation.  W/in copyright harm, there are also distinctions: appropriative harm (market or even non-market terms per Drassinower); in situ reputational harm (integrity rights: the harm is to the work, not to the individual in any other distinct way); and disseminative harm (harm from public circulation of the work)—the harm is really 106(3) distribution.  The author’s inability to exercise the right to exclude is seen as an infraction of the author’s autonomy.  The idea of right to exclude starts having resonance w/in the censorial claims—overtone of Hegelian personality interests, which has been misapplied in many other © situations. The conduit through which Hegel conceives of authors rights comes through property.

There’s also an authorship interest here. The connection b/t the creator and expressive work is critical to these claims. Author’s personality/dignity. [But see Monge—what is going on there? It is just as censorial/privacy-based.]  Distinct between 106A moral rights: the harm isn’t in the work as such but through it—the dissemination of the work is what generates the harm, not the existence of the work.  [How does that work with the attribution right?]

Recognizing these as distinct analytically allows us to better police them from a 1A perspective. We might validly draw from other censorial claims: defamation, false light—no strict liability; actual proof of harm needs to be shown for recovery, no presumptive damages/punitive damages.  [How is this different from saying © isn’t for these kinds of claims.] Could do this directly or through expanded fair use—nature of the work could accommodate this.

Joe Miller: Reconceptualize Harper & Row through this lens. Congress’s modification of the law post-Salinger about unpublished works arguably makes your approach harder [I would say less persuasive].

A: yes: conflated right of first publication and right of withdrawal. [Further discussion makes clear that he doesn’t think there’s been conflation by Congress but rather what he calls a partial recognition that the moral interest for unpublished works is distinct from the moral interest for withdrawal, but I think he believed that the availability of injunctive relief was sort of a withdrawal right, with which I disagree.] Distribution & publication were replacement categories from old acts.  Q is whether the same interest carries over to published work, and he doesn’t think that distinguishing published from unpublished makes sense.

Andrew Gilden: Scientology case where guy tried to withdraw work in order to screw with Scientology.  There’s an effort to acknowledge the economics of withdrawal, but differently.

Q: constitutional basis for the incentive theory, but not for this. Older English cases may be interesting for common law history but that’s not necessarily what Art. I sec. 8 cl. 8 allows.

Uri Hacohen (and Peter Menell), Unjust Endorsement: Tiger Woods endorsed Stanford Financial, revealed as Ponzi scheme.  Advertiser’s challenge is to overcome consumer skepticism. Distraction/stealth to overcome resistance; also endorsers and other mechanisms.  Early endorsements were mostly in print.

Changes: scale; people famous for being famous. Fake follower, reviews, likes, news.  Strategies have expanded online: distraction, stealth, repetition, exploiting connections/children etc.  This is troubling, but regulation is limited.  Norms remain of limited effect and endorsers don’t seem constrained by norms; rather they’re competing for income.  Other relevant considerations include social surveillance, public health from overconsumption.

Deception is easy.  Endorsement disclosures are somewhat regulation. But there should be a private right of action/class action remedy. Whistleblower immunity/rewards per SEC.  Endorser liability should be seriously considered.  Disgorgement/punitives as remedies. Higher standards for disclosures—for doctors, medical product manufacturers have to disclose any payments or other transfers of value to physicians or teaching hospital. Patients can see that, b/c doctors now fear to take drug money. If they take money and don’t disclose, they risk public sanctions. Should have the same disclosures for other endorsement relationships, available to consumers and IRS and social media; FB and Instagram could use technological tools to ensure this information surfaces.  Morality and social industry norms need to change in this direction.  Anti-tobacco public service ads as a model: funded from tobacco tax.

Jeremy Sheff: There’s fair amount of evidence about ineffectiveness/counterproductivity of disclosure; evidence of compliance will be misread as evidence of credibility, as in health supplements market where consumers interpret the “not endorsed by the FDA” statement as meaning “the FDA has checked this and allowed us to say this.” [Also a licensing effect on disclosers.]

A: we are advocating a registry. Consumers who want to look can. This is about cognitive limitations around consumers; don’t say there’s no justification for trying to educate consumers [fortunately that’s not what Sheff said]. We want to help consumers understand that Captain Crunch isn’t their friend—kids have cognitive limitations. [And the evidence is that those limitations are hard to overcome with disclosure; it might be that a ban on cartoon endorsers for kids is the best solution.] Tobacco campaigns have studied this issue extensively.  W/social media, we have to be especially concerned w/how our brains are being influenced, and the FTC is overwhelmed now.

Irina Manta: if endorsers say something they know is incorrect, more people would be fine with liability, as opposed to having duty to investigate on the part of the endorser.

A: Sure, duty to investigate. Whether Stanford’s endorser knew or not, he got $8 million and a lot of people invested in a Ponzi scheme. That money should go back into the pot for victims; he was unjustly enriched.  More punitive when they knew or should have known. But esp. for bankruptcy we should look at moral responsibility and have him disgorge.  [I like it.  Much more likely to have an effect on behavior than disclosure; it operates on the incentives of the endorsers directly.]

Manta: there might be a temporal element—if it was 10 years ago he endorsed, different.  Will be difficult to assess when they knew.

A: changing the cultural environment.  If Beyonce takes $50 million from Pepsi, she needs to accept her part in what Pepsi is doing. 

Irina Manta, Explaining Criminal Sanctions in Intellectual Property Law

Common & civil law are the usual/historical actors in IP; criminal sanctions have tended to involve force, only more recently expanding to lots of nonforcebased harms. One justification has been analogy to theft.  Generally no danger to safety of owners, other harms of theft.  If not theft, what is IP infringement? Perhaps vandalism—reduction rather than elimination of value; owner can sell/license; in rare cases (Banksy) can increase value. Another analogy: trespass.  Criminal sanctions for IP are generally higher than for vandalism offenses with the same value reduction. IP owners should accept the limitations on the property analogy, which are that not all property crimes cause the same kinds of harms and justify the same kinds of sanctions.

Why is there no patent crime?  Litigation is very expensive, and patent registrations are by far the hardest/most expensive to obtain and confer greatest power to exclude. But: registrations are often invalidated; patents are complex; willfulness is an issue.  Purposeful patent infringement represents a very low percentage of overall patent infringement; recent tech has had a much larger effect on ©/TM infringement than on patents. Goods that are patented and pirated are often already sold with counterfeit TM as well, so there’s no need there.  Thus the costs of criminal sanctions in patents would be greater than in TM/© and the benefits lower. 

Daniel Hemel: SEC is a good analogy—securities fraud is like counterfeiting.  FDCA violations: related to what you’re saying about pharma—there’s separate criminal sanctions for that.

Q: given the differences in actors, you might say more about criminalization against corporations v. against individuals. For patents, you might talk more about the actual costs, what a trial would look like [if there weren’t a plea], gov’t expertise v. relevant private parties.

Peter Menell, The Use and Misuse of Intellectual Property Kinship: IP isn’t a monolithic term—we spend a lot of time dealing w/channeling doctrines; it’s a key role for cts even though it’s often not spelled out in the doctrine itself.  Examples where it is: Idea/expression; useful article; functionality.

Mistake introduced by Sony v. Universal.  We ought to keep in mind that patent and copyright are pretty different regimes, merely linked sequentially in constitutional text. Design patent is much closer to © and shouldn’t cover functional elements—this is a big mistake that needs to be corrected.

Functional analysis of IP kinship: utility patent is an only child.  There may be some cousins (API copyright; design patent) but the point is that this is a family with a single child.  Don’t want other children treated the same—utility patent supremacy principle.  But some of the other issues, like tax, sure, it’s a family with lots of kids—w/r/t treating the asset of IP similarly, sure.  Likewise bankruptcy.

Interpretive issues: courts often fall back on historic kinship when it doesn’t work very well.  Sony: does patent’s blanket immunity for any dual use tech make sense for ©?  He doesn’t think so—there are too many differences b/t what they seek to promote (tech v. art), whether complements provide systemic threats to the system, etc. 

Kirtsaeng: int’l exhaustion.  Wiley wanted to say it had the right to import under §602.  Kirtsaeng: first sale means it’s lawfully made under this title (in accordance w/the © Act).  Ginsburg’s dissent is compelling, even if you agree with the Court’s normative result.  Patent version of that case a few years later: Roberts appeals to similarity of patents and ©, but doesn’t attend to footnote about the differences b/t them and throws caution to the wind. 

eBay: draws on © law, even though prior © cases always gave injunctions; prior SCt cases like Tasini had just talked about how you could deny them.  Then people applied it to TM law.  We should have been more contextual.  [I think this is about anti-patent exceptionalism in the SCt, not about kinship—note that this is the first time he’s mentioned TM since the first slide with a bunch of other things that also aren’t mentioned. The remedies language in the statutes are similar b/c that’s what federal remedies language tends to look like—see also Winter, which TM and © courts have also looked at but which is about environmental law.]

We use metaphors as shortcuts b/c IP is hard and a lot of the statutes are terse and court-elaborated.  Our SCt doesn’t have consistent ways of interpreting anything, so historic kinship can organize votes; Congress doesn’t get around to fixing things.  This is slopply, lazy, distorted, and path dependent.

We could learn a lot from comparing and contrasting. Utility patent spends a lot of time on claim construction. Should be more careful w/design patent. Let’s learn. Bratz litigation: persuaded DCt to hold essentially a Markman hearing on ©.

Joe Miller: SCt briefing: does it shed light on the degree to which the adversary process invites thoughts in kinship terms or not?

A: this is how I get research projects—look at the lawyers’ choice of argument. Sony made this argument routine. SCt doesn’t want to learn this rich complexity. We should demand more of our highest court. [But that’s not about eBay, is it, where the transfer to TM is in the lower courts?]

[My Qs] It’s also about ROP—he talks about Saderup in the paper.  [And I definitely think that Saderup is a terrible idea.  But it can’t be about a historic kinship insofar as the connection b/t © and ROP was invented in Zacchini.]

Kristelia Garcia: given the differences b/t music, books, etc. would you go so far as to say there should be book copyright, music copyright, etc.?

A: we’re the scholars: that’s our job where appropriate.

IPSC: keynote

Keynote: The State of IP Scholarship – Rebecca Eisenberg

When she began, patent scholarship in the academy was minimal.  Early 1980s, CAFC creation prolonged the ghettoization of patent law, even though the field was poised for greater integration into the legal system as law firms began to see the potential. Fed. Cir.’s early years provided targets for scholarly commentary, but wasn’t interested in legal scholarship. Not that motivating to write for them and be ignored.  Consolidation also meant that 1980s didn’t see many patent SCt cases. So not clear who the audience was for it, and doctrinal scholarship was out of fashion; interdisciplinary scholarship was considered more intellectually serious.

Early years after Bayh-Dole: people starting to get interested in patent law because it was in their way; scientists encountering the patent system and worried about its impact on traditional practices/norms/scientific exchange. They became an important audience and source of info on emerging problems. They didn’t have many other places to turn, so that worked out well for her research agenda/scholarly impact.

Matters are much better today: recognized that IP is important subject; our problem is one of abundance/figuring out what to say against the backdrop of prior art.  Not a fan of articles that make the claim “this article is the first to …” perhaps b/c she’s the benighted old guard, but also b/c it’s distortionary of our framing. We should be in conversation w/each other rather than w/2d year law review editors.  [Yep. Also, there’s nothing new under the sun; I don’t believe in originality, just better and worse (in context) ways of saying something.]  She was looking for predecessors and anybody saying something remotely similar, not trying to stand out in an empty field.  Rigorous backgrounds in other fields=improvement—serious training equips high level interdisciplinary work. That’s raised the standards for what counts as good interdisciplinary work.  New sources of data, analytical approaches—rigorous empirical work asking good questions are more interesting/useful than what used to exist.

Also, good doctrinal scholarship remains important, b/c IP law is really important and we need scholarship to guide and criticize doctrinal developments. Growing SCt interest in patent law in recent years has been helpful in drawing attention.  And a lovely shoutout to legal blogs that help link practitioners and scholars.

New law profs used to start teaching w/o having done much writing; had to figure out how to become legal scholars on the job. Other fields would scoff at amount of necessary writing. Now there’s fellowships and other backgrounds that mean publications are often substantial.  Fellowships do create a challenge for people who can’t afford to live on a fellowship salary for a year and then move a family, disproportionately women. [I think the change here is not necessarily to the field’s benefit, and other parts of the university still scoff and will continue to do so.] However, the old system placed inordinate weight on law school grades, law review, and clerkships; especially people from science backgrounds that reward terse writing could have struggles with that. Also, interesting stuff happens in practice, and future scholars should be able to immerse themselves in that environment before they start, then pause and reboot in academic life. Our productivity is now great, though it’s possible to have too much of a good thing; if you write a lot you tend to get better at it.

IP advantage: new problems and issues are constantly coming at us.

Comments by: Jorge Contreras: Economists like to name concepts after themselves: Coase theorem, Schumpeterian innovation. We’re more modest; only judges get these intellectual vanity plates. Still, theories can be intricately linked w/scholars who bring attention to them, such as Lessig’s code as law and Eisenberg: in 1998, she coauthored an article w/Michael Heller which brought to the biomedical and legal academies the notion of the anticommons, drawn from Garrett Hardin’s tragedy of the commons.

Predicted anticommons in biotech didn’t materialize, but why?  Eisenberg & Heller had recommendations, and NIH implemented them as early as 1999, not as requirements but as recommendations. Other market changes have undoubtedly had effects—changes in the patent system relating to biomedical discoveries, such as utility and inability to patent sequences with unknown function, as well as §101 eligibility cases.  If the anticommons didn’t emerge, why do we still care?  It’s b/c the anticommons risk and theory is incontrovertibly correct.  Striving to prevent it from happening is policymakers doing their jobs.  The effects of the doctrinal change of the sort in Mayo is probably an accident and not likely to recur. The fundamental premise of excessive fragmentation of rights leading to underuse of resources persists. Similarly, her insight on blockages seems correct: they’re more likely to occur when innovation requires an affirmative step, like getting an organism from someone, rather than when the burden is on the owner to sue—situations of practical excludability.

Michael Mattioli: Lovely tribute to Eisenberg as mentor from his time as a fellow.

Arti Rai: Similarly lovely tribute, with emphasis on Eisenberg’s contributions to IP and health law.

Tejas Narechania: Ditto, with IP and administrative law/institutional analysis.

Moderator: Molly Van Houweling

IPSC session 3 (trade secret then copyright)

Session 3:

Trade Secrets, Courtney Cox, Can the Law Force You to Lie? The Use of Deceptive Precautions to Protect Trade Secrets

Reasonable measures to protect the secret are generally required. Should you have to engage in deception, or deceptive misdirection (answering a related question but not what was asked, or answering partially as if it were fully) to be reasonable?  Lying/misinformation can cause real harms to others, if they rely on your representation to do something, and there are dignitary harms in being lied to/treated as an object.  Concerns about trust: if everyone lies when it’s convenient, then representations become incredible.

Companies do in fact lie to protect trade secrets.  E.g., putting out that security officers are listening at the local bar.  Or putting in a deliberate error in a map to identify copiers.  How I Met Your Mother: to protect the finale, they mislabeled scripts/casting calls; Game of Thrones films fake scripts so the cast doesn’t necessarily know what will be shown.  Cisco found source code distributed (disgruntled employee) and rather than attracting attention via takedown it seems to have posted a bunch of different fake versions; this is designed to wear people out and get them to think it’s all fake.

There’s philosophical debate over how to define a lie. Some people bake into the concept the idea of wrongfulness, but she doesn’t want to do that: she means intentional assertions of fact that aren’t true. A lie can be deceptive, if it imparts the false belief.

Some of these techniques are definitely cheaper than demand letters/hiring a lawyer. Thus they could count as reasonable measures, alone or in combination with techniques.  But: (1) doctrine of unclean hands—you shouldn’t be able to get legal relief based on conduct that is itself inequitable/wrongful, which is often about deception; (2) risk of harm to others; (3) general distaste for misrepresentation; (4) immorality of lying no matter what. If trade secret is the codification of commercial morality, then it shouldn’t include this.

Harm: suppose a screenwriter thinks they’ve been hired to write a finale for Game of Thrones, and they therefore give up lucrative other opportunities. Is this relevant harm?  Should we compare this to other precautions that they should have taken?  You’re allowed to have guard dogs; if the guard dogs are unreasonably vicious, then the remedy is tort law.  Thus, torts should provide the remedy rather than being incorporated into trade secret law.  [Query whether there’s any scenario in which the screenwriter hasn’t contractually waived all rights here.]

Bottom line: yes, there is at least a not insignificant set of deceptive practices that should be okay/not actionably deceptive or unclean hands; there may be a subset that are required.  She would not draw the line at corrective, post-disclosure deception.  Car manufacturers: road tests of a new innovation, protecting from corporate spies with cameras. So they use car disguises: cardboard covering the innovation, or making it look like some other innovation was being tested so that it wouldn’t be properly identified.

Q: gov’t lies all the time, for (they think) good reasons—informants, cooperating witnesses, interrogation. Is there a salient difference b/t gov’t lying and gov’t rewarding lies through policy? Compelled speech considerations: posits that gov’t should never force someone to lie through doctrine even if lying is ok when chosen.  Reactions?

A: There is reason to think gov’t can do what civilians can’t, but that doesn’t cover the whole logical space of actions.  Rewarding might not be enough to compel—you don’t have to claim trade secret protection, but if you want to do so, you have to engage in speech, just as you would to get a professional license of many kinds.

IP and Creativity

Sean Pager, Much Ado About Norms

Issues w/suboptimal norms: if there’s not sufficient communication, people may think norm is popular even though everyone else only goes along b/c they think it’s a norm too—drinking a lot on college campuses, for example.  Became a norm b/c of a vocal minority. Powerful people can also impose norms against the true internal desires of most.  Ellickson’s Shasta farmers are all white men occupying lands stolen from Indians and often exploiting Latino workers.  How seriously should we take these concerns in IP norms?  This is a question worth asking.

One example: People have written about Nollywood, the Nigerian film industry, as a negative IP space. Early on, Nigerian filmmakers used lead time to make money before piracy overtook them; new tech has changed that.  Social norms/marketers guilds have replaced that with a de facto exclusivity norm. That meets the paradigm of social norms solving a gap in IP law, but is it an optimal norm?  He says no. Would be better off with a formal IP system. Guilds often discriminate ethnically, by gender, etc. Filmmakers want a formal system but have been politically blocked by the clout of the marketers—norm-locking.

Chris Sprigman: how important is it to the norms literature whether norms are efficient?  Varies across the literature. Rothman has work on this. Some is descriptive and also attempts to account for why the norms lead to the production of certain types of content and not others. Could categorize this literature in your discussion.

Jennifer Rothman: Lisa Bernstein has some work on this in merchant norms.  Inherent biases in relying on norms based system—pay equity and hiring; informality of the system can reify principles of discrimination. Not well described in the IP context w/r/t these norms.  That would be a meaningful intervention.

Rosenblatt: “good” and “efficient” are not the same thing. I could reasonably be accused of being overoptimistic about norms, but good v. destructive/counterproductive/discriminatory/otherwise suboptimal are different things. Effective governors of behavior, beneficial governors of behavior, good substitutes for law: these are different things from when norms are efficient. 

A: would also add: good/efficient for whom or for what?  [See Glynn Lunney on this Q in IP law generally, not on norms.]

Q: interesting work on architecture—fan fiction sites where the sharing models are designed by women, v. FB where all the creators of the sharing features are men.   [missed the name, want to know it!]

A: link there b/t code as law and norms as law.

Q: identify situations where formal law has replaced norms, or where there is demand to codify norms. Could happen for different reasons: norms might be suboptimal, or somebody lobbies to impose costs on someone else. Transitions are revealing situations.

Andres Sawicki, The Law of Creativity?

Lots of different models of creativity. Law’s traditional model: works are public goods, need incentives.  Categorization: (1) Motivational. Focus on the individual; psychology; motivation for creative behavior. (2) Environmental. Individual behavior isn’t the primary determinant; there’s a lot of serendipity, fortuity, unexpected results, play; what matters is the sociocultural environment in which the individual environment and so we should focus law on opportunities for serendipity.  There’s surface tension, so to speak—the agents operating in these models look very different. Homo economicus is completely unrecognizable in ordinary life; in the creativity models, we have rich portraits of humans operating in recognizable contexts.  There’s also tension in the role of IP law for the models. IP is central to the operation of the model in public goods conception, not so much with the others.  (1) and (2) tend to bash the rational actor’s lack of realism. 

Can we resolve this tension?  Respectable realism, from philosophy of science. There are lots of useful ways to look at a given phenomenon depending on what you’re interested in.  All models are wrong but some are useful, and it’s with that in mind that we should choose our models.

Could also abandon model realism more generally.  Model realism is an important natural sciences issue—are there “really” subatomic particles just because we can make/verify predictions that come from positing their existence?  As legal scholars we don’t need a grand unified theory, or to posit unique differences b/t intrinsic and extrinsic motivation, we just need to know what we want to do. What are we using these models for?  Generating testable predictions is something we want from models.  But we can also make interpretative uses: looking at hypothetical situations.  Models can also be built from the ground up, used as slightly more abstract representations of reality in order to organize our thinking/our world—that’s going on w/some of the models in the literature/critique of public goods model.  There’s no right way to do this.

Jeremy Sheff: Epistemological roots of those philosophical schools matter—American pragmatists, for example. When rubber hits road on doctrine, will intersect w/Legal Realism in important way b/c of the epistemological commitments in philosophy of science and how they map to Legal Realism.

A: His point is that we’re not there yet. Entirely possible that all these models and maybe more will provide useful insights. [Some pluralism about realism?  That would be a fantastic title, I think.]

Sheff: that’s a very pragmatist idea, but there are limits on how far a pragmatist take on epistemology can take you. If it’s about how our community defines truth, then the interest shifts to the definition of our community.

Christopher Sprigman, The Second Digital Disruption: Algorithms & Authorship in the Adult Entertainment Industry

First digital disruption: rise of content distribution on the internet—Napster disrupted the music industry. Now, with porn, content builds brands to sell other stuff: just as with Amazon, its video content is an inducement to get people to sign up for Prime.

Mindgeek started w/ rise of YouTube: pornographic user-uploaded videos. Destroyed the mom & pop outlets. Large financial backing enabled Mindgeek to use piracy to drive down the value of the mom & pop outlets and then buy them up.  Camming has stabilized as an experience good, hard to knock off—like monetizing live music performances.  There’s an enormous custom market now.

But the next thing that happens is Mindgeek’s dominance. Now that they control so much production and distribution, user data comes back to them, allowing them to kick off the second digital disruption centered on data-driven creation, if this is a harbinger of what is coming from Netflix and Spotify and Amazon: to shape the way content is presented and even made.  Netflix made House of Cards because their data told them that a group of consumers they wanted to court would like a BBC-like political show and would like Kevin Spacey.  What picture you see when you see a tile for The Crown is based on your responses to past ads for shows. Amazon is following in Netflix’s wake, greenlighting content and then strangling it in response to data. Spotify is interested in computer generated music.

Data changes the risk of failure. More data: maybe able to create fewer risks.  Can also indirectly address the risk of success (which is piracy).  Entities that engage in data driven creation tend to be big and to have an all you can eat model, which makes piracy less important. We might be able to have less copyright and get the same investment incentives because the risk of failure is less (so the incentive needs to be less) and the risk of piracy is also less.

Moral intuitions about copyright: labor theories.  Consumer preferences and choices might start to be understood as part of the contribution to the “work” that is produced. One model: The creator brings something to humanity, like Prometheus bringing fire: that myth is hard to sustain with data driven creativity. The creator is watching the watched, who are then watching their reflections.

Sheff: I should hate this trend, but not sure about what’s the problem.  (A: Feels manipulative.) Even if it is in this iterative way, you still need experiments: you need an A and a B for your A/B testing.  You don’t reach an equilibrium. Data driven model can’t seem to capture that.

A: lots of research tries to pin this down. Newness plays relatively modest role—we tend to like things that are a little bit new but not a lot. Not that different from what we actually like, but we just tell ourselves a story about what we like that doesn’t match with our real enjoyment.  He thinks of fashion: often the constant churning of the same stuff. Hard to make judgments about whether fashion is more or less creative than other fields. These Qs are above his pay grade.

[Jon Ronson’s The Butterfly Effect influenced my thinking here. Camgirls and customs are the opposite of algorithms: this story you’re telling is not really about algorithmic creation but about the immiseration of the middle class, where Mindgeek makes all the money and we’re back to cottage industry for everyone else.  Note that this content is mostly functional, and the average stay on the site is ten minutes; they don’t think they can give guys more orgasms or longer ones, do they?  So what is the data being used to shape content for? There are good reasons rooted in the structure and incentives of the firm why they might want to use the algorithms to direct the creation of porn and tell people that they are making better porn as a result, but it’s not obvious why this tells us about creating things that have more degrees of freedom/some aim other than producing an orgasm.  So, for example, I’m pretty sure a lot of big companies would prefer AI performers instead of cattle/actors [who might, you know, end up being Kevin Spacey]. But I also have a strong sense that AI performers won’t work for some significant subset of porn consumers, to whom it is important that a woman do something for them. I could be wrong about that, though.

Relatedly: Cui bono: and what is the relationship of who benefits to the content of what is produced? When I was growing up guys didn’t expect to come on our faces, and at least the reporting tells me that things have changed.

A: [partial] Interpretive qs are beyond my pay grade. [But if you’re telling us to draw conclusions about creativity from this example, that’s what you’re getting paid for.  We are privileged white people and some topics might not be our topics to publicize and pioneer the discussion on.] The paper is about a phenomenon of which the adult industry is the best exemplar, but Netflix and Spotify are part of the story. Camming and customs are happening and have nothing to do with data. We’re trying to show you where Mindgeek came from and our fundamental story about how the use of data may transform industries [but if you’re only telling half the story about what the industry is, then is that a useful account? It seems a lot like talking about work without talking about domestic, unpaid labor].

Rosenblatt: consider the things toddlers like to watch on YouTube—it’s not what you think. Normatively may be unclear/different.

Lemley: old enough to remember when cable was going to replace TV with ads b/c of the new business model.  In fact, it just gets layered on top of the existing revenue generation model. Fine w/normative suggestion that we should be fine w/piracy but as a practical matter, the business model is likely to be “here’s a new way to make money.” [Relatedly, dialing down on copyright dials down the only lever that the people in cottage industry production may have, which has serious distributional consequences.]

A: risk of failure going down changes incentive structure, and risk of success going down has indirect effects, suggesting recalibration could be appropriate.

Lemley: differential benefits for big producers which are the only ones who can do this at the necessary scale.  Small producers lose out.

A: this is what people accuse Mindgeek of having done—used piracy to drive down value of companies they acquired. TW/AT&T merger: TW made argument that they needed to be able to hook up to digital distribution in order to target ads/shape content and avoid competitive disadvantage w/Amazon and Netflix; the judge totally bought it.  Data now becoming more salient in creation of content: that’s a fundamental story. Whether this is good or bad is a new set of questions. Sounds like new issues of platform dominance, as w/FB.  That may be indeed what we’re facing. May make sense to oppose it and do something about it but we have to identify it first.

Immiserating the middle class: FastCompany CEO wants lots of middle class musicians, not people earning millions a year.  Self-serving vision but not normatively worse than opposite. Artists do benefit in surprising ways: bands on tour use Spotify data not only to decide where to tour but also what songs to play in what cities. In equilibrium, we should expect artists to do better at identifying and finding their audiences.

IPSC session 2

Session 2: IP History and Theory,

Stephanie Bair, IP Inequality

Artists and innovators are not equally distributed. Rich people are more likely to acquire IP rights than poor people; whites than minorities in the US; males than females.  Theoretical lens: income inequality. Children from high-income families are 10x more likely to apply for a patent than children from low income families, even controlling for educational achievement. Only 18% of inventors were women. Brauneis/Oliar on ©.  Income inequality has similar race/gender aspects, and both IP and income inequality contribute to concentration of wealth in the hands of a few. Some people think income inequality is good b/c it encourages risk-taking.  Is the same true of IP inequality?  No, it doesn’t hold water b/c IP is already structured as an optional incentive system. If you want financial and status benefits, you can create something; what’s not required to serve this incentive function is relativity or inequality in the system itself—having more IP than others is not what’s driving the system.

IP isn’t a perfect proxy for innovation, so there could be IP-related reasons for disproportionate participation in the formal IP system. Financial, cultural, value-based reasons. Or they could be disproportionately innovating in areas of IP that aren’t protectable, like social innovation. They could be denied IP rights at higher rates due to explicit/implicit bias, and there’s some empirical evidence of this in patent. Stereotypical male conception of innovation.  There is also a true innovation gap—people from certain groups are innovating at suboptimal levels.

Role of exposure to other inventors/innovators—exposure to such a mentor increases likelihood that person from underrepresented group becomes an inventor.

Psychology literature: Circumstances of poverty bias decisionmaking away from types of thought processes that lead to creative breakthroughs.  Effects of past chronic stress on explorative v. exploitative thinking—when people experience the world as harsh and unfair, people stick to what they know rather than exploring new options. Problematic from creativity perspective. Also, dichotomy b/t habit based and goal based decisionmaking. Chronic sleep deprivation, linked to poverty and racial subordination, contributes to habit based decisionmaking, which also hinders creativity. Even if IP system is fair and open, hard to respond to its incentives.

[Woolf’s A Room of Her Own.  Time and leisure and space, mental and otherwise, are in short supply when people are overburdened with care work/survival work.]

Jeremy Sheff: Effects of poverty on lived experience of individual poor people: if I don’t make a living, I won’t eat and my kids won’t eat.  Don’t need psychology to explain the absence of the capital/time required for innovation.

A: this is additional to the explanations like that one.  Chetty study specifically found financial barriers to entry weren’t as important as one might have hypothesized in that if those barriers were absent but there wasn’t a mentor, it didn’t matter as much.  [People from poorer backgrounds who can make high incomes often feel pressure to do so to support others/justify the sacrifices made to get them there; perhaps a mentor can direct that in the direction of innovation.]

Sean Pager: note that new innovation/creation from underrepresented groups may fill gaps that need filling, rather than more of the same.  Role of incubators set up by interest groups etc.?

Copyright, Andrew Gilden, Copyright’s Market Gibberish

Cases like Nunez and Bond v. Blum reject privacy as something w/in scope of market analysis. Other cases where Ps resist sale for any reason, like Salinger, reason that though Ps don’t want to sell these rights now, they might in the future, so there’s market harm; or they’ve sold similar photos/rights in the past and so have market-based rights now. Cases about political opponents: P isn’t allowed to say there’s market for headshots used by opponent, but Don Henley is allowed to presume a market for political licensing of his songs. Weirdly large body of caselaw about religious disputes: Lerma/Scientology.  Worldwide Church of God: P able to stop splinter group from using founder’s highly racist views—no financial interest in the work or interest in selling it, but court hypothesizes there’s still economic value to defeat fair use.

Does not want to require actual/foreseeable harm to P’s market interests. Not possible to rigorously separate market and emotional reasons. There are distributive problems w/ economic only view—advantages those with track record of success in the market, like Salinger. [Though that doesn’t have to be the case if you use traditional, reasonable or likely to be developed as a standard.] Slicing apart economics and emotions have a disproportionate impact on women, minorities, and the poor, whose injuries are less likely to be valued highly (or at all) in monetary terms.  “Coddling artistic vanity” is a gendered concept w/no place in the © system. Author’s right to change “his” mind and eventually sell a sex tape; courts use “his” and not “her” in this framing.  Courts should instead openly and explicitly discuss the interests that they are actually weighing.  Basis in the statutory text: effect on the potential market for, or value of, the copyrighted work, stated in the disjunctive.  Video Pipeline: © isn’t just about monetary compensation.  We have developed a good taxonomy of defendants who should be allowed to copy and not a good taxonomy of plaintiffs who should be able to assert nonmonetary interests.

Likely pushback: expand © in problematic ways.  He thinks it will help reign in abuses and censorship. We can distinguish between privacy and autonomy and online business reviews or efforts to suppress political opponents.  In cases where courts do openly discuss privacy/religious interests, they do so to deny claims, so expansion of © comes from opacity.  If courts can be open and explicit about noneconomic interests, so can parties, which means that remedies can be tailored to those interests.

Annemarie Bridy: Longstand policy choice not to have moral rights in ©.  Your argument seems to be that courts are backdooring this through market harm, so let’s just embrace it. Normatively I would be inclined to hold the line and criticize the cases. © is looking for public benefits and that generally happens through markets/dissemination, so we should keep that.

A: don’t take a strong stance on what the balance should be, saying that the cases are wrongly framed as market interests v free speech rather than surfacing the conflict. [Shouldn’t the criticism then be that the cases making up fake market interests shouldn’t do that?] He doesn’t think there should be a cause of action for mutilation/distortion, but actual copying cases should consider the motivation behind the invocation of ©. There’s no way to distinguish economic/emotional motivations.

Bridy: but isn’t that what the fair use factors are for, testing for the right motivation in asserting a 106 claim?  If you aren’t experiencing harm under 107, you shouldn’t win.

A: but you can’t actually police that because of the market language that non-market Ps are able to use.  We can’t draw those lines.

Q: Why not tell these Ps that they should bring privacy claims if they have privacy interests, not © claims?

A: then we have to ask why they don’t—it’s b/c of weaknesses in those cases. [But why does that mean it should matter to the fair use analysis?]  Selective access to privacy protection through © is the worst of all worlds.

[Yeah, I have the likely pushback. Allowing “value” to mean “nonmonetary value” creates what I call the “Centerfold” problem: I may feel bad that you made a critical, fair use, and the work may now feel contaminated to me, but I don’t believe that the law should weigh that against fair use.]

Dustin Marlan, Unmasking the Right of Publicity

Protecting the internal dimensions of the person is generally considered the role of privacy, not publicity rights. Jerome Frank’s conception was very influential.  Now a hydra-like right, merchandising, endorsement, and “impressment.” Similar to intrusion upon seclusion, false light, etc. in terms of privacy categorization, but what caused this bifurcation between economic interests and personhood/privacy interests? What is the persona—“mask”—for publicity rights? Might be based on Franks’ own conception of a self split into the private true self and the public false self which is constructed and commodified.  Haelan was the first recognition legally of the persona as an assignable, alienable right independent of the right of privacy.  Frank had been psychoanalyzed and recommended it to his colleagues; wrote about psychological concepts of the law in which judges were father-substitutes making the pretense that law was clear and precise.  He was a fact-skeptic, believing that uncertainty in judicial process resulted not just from uncertainty in law but uncertainty in judge’s perception of facts—law varies w/judge’s personality.

Consider other concepts of the self that better integrate privacy and publicity: Julie Cohen’s postliberal approach to the problem of selfhood is relevant to both: subjectivity emerges gradually, shaped but not determined by surroundings, situated within relationships, practices and beliefs. Celebrity as a mask that eats into the face (hey, I wrote a thing about that)—may be impossible to distinguish them in the way the law now presumes.

Shyam Balganesh: wonders whether other stuff in Frank’s life was more important than his earlier book—Frank himself was very clear about his academic persona versus his judicial persona.

Copyright, Christopher Yoo, Are Ideas Independent from Expression: Implications of Linguistics and Cognitive Science for Copyright

Sapir-Whorf: language structures our worlds, determines our actions, constrains our thoughts. Steven Pinker believes that we think in mentalese: we have a concept of blue that is independent of the word for blue.  Even though Korean treats blue and green the same, Pinker thinks there’s something innate, as does Noam Chomsky who posits a universal grammar and that language/acquisition can be studied out of context.  “Colorless green ideas sleep furiously” is grammatically correct even though it is meaningless—there’s an inherent structure.  Another version of language is agglutinative, with verb at end and particles changing the meaning, like Finnish, Hungarian, Korean, Japanese—another major form that just happens to manifest in different parts of the world b/c there are a limited number of ways to structure language.  Now: renaissance of interest in Sapir-Whorf—studies of directional languages/thinking.  Huge controversy about which way causality runs.  Inuits have multiple words for snow, but the number is in dispute and they need them. 

Implications for ©: Paramount v. Axanar—unauthorized Star Trek prequel; Paramount asserts © in Klingon as a language.  Natural languages aren’t copyrightable, but what about constructed languages that originated from a creative work but are now spoken by people? Axanar case says it’s a jury question. Sapir says language is an agreement b/t people to communicate on certain terms. Doesn’t have to be formal agreement, but genericide is an example: by practice we use thermos to mean a thing.  Tolkien’s estate asserts © in Elvish but doesn’t assert rights in noncommercial uses.  See also Esperanto, Loglan, Na’avi, Dothraki.  Loglan is a constructed language to test the Sapir-Whorf hypothesis, to see if they thought differently when using it; creator asserted © to stop others from using, which seems self-contradictory.

Wikipedia and Aboriginal languages: Tasmanian palawa kani is an attempt to synthesize fragments of 12 extinct indiginous languages and promote its use. Wants to set rules on who can use it, claiming under UN Declaration of Human Rights of Indigenous Peoples, not copyright. Raises how shared language can define a community. Wikipedia rejected request for removal.

Oracle v. Google: can’t © overall computer language, but a specific computer program can be. Where is API in that scheme?  Fed. Cir. reversed two jury verdicts saying it was ok. This is about levels of generality/taxonomies.  Reminiscent of Nichols v. Universal Pictures; EU came out the other way.

Other implications: right to speak a particular language; importance of gendered speech.

Pam Samuelson: how would you rule on computer languages developed in order to become “lingua” of that community versus things that are more artistic such as Klingon? What tool do you use? She thinks of language as system with structure & component elements.

A: the way statute is drafted excludes all that. We have a generality problem. He would draw the line at functionality. Similar to transformative use—now w/database cases it’s about making creative works more useful rather than more/differently creative.  Tolkien’s Elvish: Kind of like laches—once you let it loose in the world, other people should be able to use.

Justin Hughes: Malaysian/Ba’ahasa was a pidgin/trading language for coastal peoples, built into a language—this seems like a functional purpose.

Betsy Rosenblatt: you talk about genericide; we don’t protect systems b/c we think they’re functional. To the extent that it’s a communication tool, it’s functional even if it is expressive in the origin. So wouldn’t draw a line b/t Klingon and Java b/c they are both building blocks.

A: Coders say code is beautiful but most of them don’t do that in their daily work.  Klingon was designed by linguists.