A Celebration of the Work of Wendy Gordon, part 3

Death in Copyright: Remarks on Duration by Abraham Drassinower, University of Toronto Faculty of Law

What would a rights based account of duration look like?  Really about death, not duration. Patents have a fixed term; trademark registrations also persist for a specific amount of time before renewal is required.  © is life plus 70 (US) and 50 (Canada)—the number isn’t the same for all works.  Something other than number alone goes into the determination, which is death of the author.  What is it about © that summons mortality so deeply into its substance?  History is one answer, but not of as much interest to him.  Does the concept of mortality fit © in a distinctive way?

His proposal: The idea of independent creation contains the idea that the author is a mortal being; the theory of originality is already a theory of duration. Works as messages: communications from the living.  Not an owned object but an expressive act. Duration affirms the specificity of the length b/t author and work as copyright subject matter. B/c author and work are inseparable, the death of the author must signal the death of the right.

Commentary by Paul Gugliuzza, Boston University School of Law

Original 14 year term seems to have come from the first patent statute, which itself was double the usual apprentice term.  There’s no reason to think any of this was socially optimal for incentives [or otherwise].  And it’s gotten longer and longer b/c of © owners’ political power.  Drassinower isn’t looking for social optimality, which is a pretty impossible Q in the abstract anyway.  But US law isn’t animated solely by moral rights; suggest engaging other analytical modes, especially given the provocative nature of the claim that © should be cut back a lot compared to where it is.  Utilitarian arguments for extending some © beyond death, if not for life + many decades.  Older authors might need incentives; predictability of ensuring some duration beyond perhaps a few days. 

Talha Syed: we can resist various moves, including that independent creation requires inseparability of author from work.  We could also say that conceptual integrity in the system isn’t important: we can have independent creation and an unrelated term.

Drassinower: takes independent creation to be fundamental to what we think © is and is for.  That’s why he wants to use it to look at other parts of the system. 

Litman: earlier US terms did look at whether the author lived past a certain time for renewal term/ownership.

The Restitutionary Impulse and IP “Origin Stories” by Rob Merges, Berkeley Law

Experimental psych confirms Gordon’s insights about intuitive power of “reap where you haven’t sown” trope. Even little kids have intuitions about ownership of ideas.  Important pattern in IP law: creation or extension of common law protection due to restitutionary impulse/ “felt necessities.” Restitutionary impulse starts young: children apply ownership principles to some ideas, though not to common words. Kids by age 5-6 don’t like copying as much as they like original drawings, and they especially don’t like falsely claiming credit.

Felt necessity: economic hopes of a less confident, service oriented economy have switched to knowledge goods.  Demsetzian version of property rights: over time, property rights develop in response to growing (relative) value of intangible assets and cost-justified ease of defining boundaries. There’s a political, economic story of limitations and exceptions, whose creation can also be told in Demsetzian terms; IP rights create victims who can lobby too. 

What’s happened over decades with restitutionary impulse?  Federal dilution law; progression from common law to statutory right of publicity and almost inevitable call for federal uniformity; federal trade secrets law. 

Haelan as a moment of creation: they tried to create an exclusive right to a player’s image through contract, which couldn’t be done just by waiving the player’s privacy rights as to the chewing gum company.  It has to be done with a new right.  The alienability was at the heart of the new right. 

Restitution is a substitute for the market; sometimes comes from failed market transactions. Property is instead about creating markets: standardized bundles of rights that are easy to transfer.  Restitution is reactive and property is generative: corrective justice seeks to restore a status quo, while new property rights deviate from the status quo. Market transactions can be based on a bundle of rights more easily than on a bundle of duties.

Commentary by Bob Bone, University of Texas at Austin School of Law

Gordon is a value pluralist, and this helps with her affinity for the common law, where judges grapple with various values.  Principles may incubate in common law, though they can also come from statutes. Public choice makes it messy. Hard to say anything general about creation of IP rights.  Maybe original idea is some kind of moral insight, but they eventually get driven closer to property rights over the long run.

Intuitions about ownership are socially contingent in large part.  [Everybody eats, but different cultures find different foods appealing/disgusting.]  Plagiarism: Merges slides pretty smoothly between copying and failure to give credit, but kids seem more interested in the latter: the opportunity to give authors credit for their work, which would lead to an attribution right rather than a restitutionary claim.  Deeper Q: why follow moral intuitions? Some of them are bad!  How do we determine the lower level, more specific principles entailed by moral intuitions?  One way might be to look at the common law to see how some principles check others.  But common law is affected by other factors too; we can look elsewhere.

Q: sometimes children are mean and manipulative; they may make ownership claims as a matter of self-interest, but that doesn’t tell us what we should be doing.

Dreyfuss: EU trade secrets directive: is it property and will it therefore be controlled by human rights law? That’s a big difference b/t relational rights and property.

Q: fannish community opinions on ©: attribution and fairness are the norms; social contract idea—authors should allow fans to engage in certain types of noncommercial creative work. Moral rights concepts.

[A couple of thoughts, overlapping with the others: Glynn Lunney’s piece for this conference is all about responding to the restitutionary impulse. The YA book The Girl Who Owned a City represents a good example of one of the problems: the book doesn’t mean to do so (it’s supposed to tout Objectivism) but it demonstrates the impulse to claim ownership of that which is not new, but which was news to you and thus feels like “yours.”  Relatedly (since the book is about kids who have to recreate society after all the grownups die), maybe what kids think is a starting point in need of a justification since we are in fact supposed to be socializing them.  Indeed, kids do a lot of copying that isn’t even noticed as copying: trace the letters to learn how to write; instruction where we have students watch then do, which is to say copy, then teach, which is to say have others copy you; perhaps this can often be distinguished as processes v. outputs, but copying letters is copying outputs, not just tasks. We could say that in those situations copying is clearly valorized, but we then have to figure out why the valorization doesn’t carry over.]

Common Law Conceptualism in Intellectual Property by Shyam Balganesh, University of Pennsylvania Law School

Gordon as conceptualist who attempts to organize analysis/reasoning around discreta analytical devices that serve a simplifying role w/in relevant context. Takes legal doctrine and reasoning seriously as a mode.  Different categories of conceptualism: formalists (e.g. Joseph Beale) who thought that legal concepts had their own immanent normative logic which gave definite answers to cases. Realist conceptualism (Frances Bohlen, Wesley Hohfeld): legal doctrines as grounding for decision making but not “closed”: legal concepts could be deployed towards social ends, but they meant something. Neoconceptualist—Gordon is somewhere between a realist and a neoconceptualist. Not wedded to a singular methodology.  She adopts the Hohfeldian set for copyright, but is willing to read normative criteria into their working, and is skeptical of normative essentialism (unlike traditional neoconceptualists).  Suggests move from copyright to copy-privilege: move from P to D. Privilege is subsidiary: it needs protection by a “right” of some kind that allows the exercise of the privilege. W/o a right, there is no no-right/duty to not interfere w/the privilege.  Privileges of ownership, similarly, aren’t protected in the absence of a right to exclude.

Implicit moves: the owner’s entitlement also becomes a privilege, not just a right. Right to exclude is replaced by exclusivity as a continuum.  Questions the property/copyright analogy, boundaries, thingness. Evaluative turn: focus on entitlement structure leads to an evaluation of the utility of property analogies. It reveals copyright’s conflation of harms and benefits and the move from property to unjust enrichment.

Legal structure of © is not contingent—see Drassinower—there are some basic principles that make ©  mean something. These legal concepts allow © to accommodate a plurality of normative considerations. This may be messy in practice, but it is true. Our search for purity should not lead us to oversimplify.

Challenge of copyright conceptualism: ©’s unique challenge is its legislative origins.  It is not a creature of common law.  Conceptualism is not the same thing as textualism: looking for analytical logic underlying the text.  An idea acquires meaning through usage within a context or domain, not through fiat. Thomas is wrong in Star Athletica to leave behind all normative logic underlying the text of the statute and to say that we begin & end with the raw text of the statute.

Commentary by Talha Syed, Berkeley Law

Conceptualism begins as the search for necessary and sufficient conditions for the use of a word/term—the hunt for essences. 50s/60s: turn to essences/family resemblances.  Third version: capture ordinary uses for good enough work (HLA Hart). The problem, in any form, is the attempt to fix meaning; there is always, inevitably, an unargued for smuggling-in of a normative conclusion. This is what gave conceptualism a bad name.  Hohfeld says rights are definitionally relational: there are no rights on a desert island. He’s building an idea.  Entitlements implicate different interests in different contexts: a use privilege and a right to exclude are different.  The unbundling just follows from analyzing the issue before you. The tools are normatively neutral: focal points for positive/normative analysis, and immensely useful nonetheless. If you’re thinking about law, you’re thinking about social relations and there’s always burden/benefit, entitlement/disentitlement, and the interests vary by context and purpose and it would be odd to bundle them together and act as if answering one question answers them all.  This is a Copernican revolution, and Gordon brings it to ©. Nonrivalry is a constitutive feature of IP versus intangibles. This is the driver of Gordon’s harmless free riding: prima facie, using a nonrival resource doesn’t harm others w/r/t nonpecuniary harms. That’s a conceptual move.

Copyright Practitioners and Copyright Scholars by Jessica Litman, University of Michigan Law School

Gordon was one of 9 women teaching any IP course at any accredited law school when she began teaching. Then as now the spectrum of views on IP was wide. © lawyers saw each other as a priestly elite, and debated essential but hypothetical questions under the new 1976 Act, like “if you build a sandcastle below the high tide, is it fixed?” Then as now, the © bar was essentially a plaintiff’s bar. Genuinely shocked and dismayed when courts or Congress disagree w/their ideas of how to do things.  There were insiders and outsiders, real lawyers and those who research/practice but don’t count.  Litman worked on Gordon’s foundational Columbia LR article on fair use as market failure as a law student! [Happy coincidence exclamation point mine.]  Fundamentally theoretical work, not “practical,” but nonetheless of great relevance and potential utility to practicing lawyers.

Today, the relationship b/t academics and practitioners is more fraught; tech has brought more money at stake and new tech has also made hypotheticals more realistic. Entry of new players w/significant financial and political clout, which caused old lawmaking patterns to not work so well any more. Previously, if certain groups agreed w/each other, Congress would enact it; upstart groups could be maneuvered around or bought off.  That stopped working when the new entrants came to the table w/more economic and political resources than the quote unquote core copyright industries. 

© rhetoric has been overheated (Boston Strangler = VCR; HathiTrust as Plessy v. Ferguson) but seemed like an escalation to Litman.  Maybe it’s just the age of Trump and that’s how we do now.   Too simple to blame the rift on the fact we don’t agree; most lawyers get that other lawyers hold opposing views, and she didn’t see this problem 40 years ago.  The way legal scholars think about © versus how practicing lawyers and lobbyists think have diverged enough that we’re not speaking the same language. 

One important milestone of divergence: 1984, when Reagan Admin and State Dep’t were keen to join Berne; asked Irwin Karp to get together w/Authors League of America, Authors Guild predecessor, to write a report indicating that only minor, uncontroversial changes would be necessary to adhere to Berne. Claimed that American law already amply protected moral rights through contract, state statutes, unfair competition/TM law.  This argument was a lie.  The best anyone could say at the time was that it was just barely colorable, but no one actually believed it.  © professors were divided about whether accession was a good or bad idea.  Request for their comments put joiners into awkward position—it seemed like the only feasible path to accession, but lying about the law is not in the job description.  We see law differently! We are subject to wishful thinking, but we’re also trying to discover the law rather than to make it up. Some comments enthusiastically supported Berne adherence but disagreed with the report’s description; some kept heads down; some submitted carefully drafted comments that avoided discussion of the touchy parts.  The gambit left an unpleasant taste.

Inflection point 2: runup to the DMCA.  1993 discussions: © owners were reluctant to involve Congress in changing © at all, b/c only last year AHRA had been enacted and Congress had insisted on allowing consumers to make noncommercial copies of recorded music. Wasn’t unimaginable that it would do the same for digital files. Yet © owners spoke candidly about difficulties of current system, especially sound recording industry. Hilary Rosen (RIAA) insisted that w/o public performance right there was no means to assert control over unauthorized performances online b/c transmissions were performances. Bruce Lehman asked “can’t you treat that as distribution of copies,” and industry reps replied they’d thought of that, but first sale was a problem. If authorized transmissions are distributions of phonorecords, then the authorized recipients could redistribute them.  So they needed a public performance right. Lehman and his staff pursued a different tack—they wrote a report claiming that © law already covered almost everything the © owners wanted.  This time law professors didn’t wait to be asked, and spoke up to contest the distorted view of current legal doctrine. It didn’t matter much; academic opposition barely affected the law’s enactment, but in the ensuing 3 years, supporters of the Lehman approach managed to persuade each other to develop message discipline. That message discipline has been on display in subsequent efforts to persuade USTR, Congress, White House to get on board—“rogue websites,” value gap, etc.  It’s an effective strategy, and it’s hard to say it’s immoral from a policy perspective, but it’s not what academics do or like.  It’s an important and respected lawyerly tool but not a scholarly one: message discipline is inimical to us, whose norms look for the new and different.  That means that professors could mess the message up if anyone listens to us, which has produced a bunch of “stay in your lane” instructions to avoid advocacy, amicus briefs, etc.

Does it really matter? Instead of one priestly tent, we have two tents populated by different priestly tribes?  Yes, it’s worth addressing.  Professors have been sidelined in law reform arena and limited in our influence on regulation, compared to patent for example.  That has costs, as in the MMA which was written to be unreadable. Even if we did read it and had stuff to say, no one listened, so why put yourself through that? The law we got includes naked wealth transfers from composers and independents to big three labels, and it’s much worse for our not being meaningfully involved.  Sure, some have hooked up with new intermediaries, but many of us have things to say to the “core copyright industries.”  Gordon’s work is not about tech issues, but about fundamental justifications.

Commentary by Justin Hughes, Loyola Law School, Los Angeles

Disagree on moral rights. He believes that the © lawyers opining then believed they were lying—but they weren’t public international law scholars.  (It turns out that complying with Berne on moral rights, like complying w/ int’l law more generally, is a lot easier than you might think based on what Berne seems to say.)  Marrakesh: didn’t recognize the earlier account of the treaty negotiation process. A lot of the treaty’s prose is his, as chief negotiator.  It is true that very early on, the deal was to take the MPAA out. He did that deal. The Holy See didn’t play a pivotal role, but it addressed the EU, not the Latin Americans.  In fairness to PK, he was repeating hearsay b/c PK didn’t participate; Gigi Sohn was very politically savvy and knew PK could help best by staying out, as could Google. The acrimony b/t © and “anti-©” [my quote marks] people was so strong that disinterest was better than participation. 

The game is a rough one at this point.  Ask yourself what you expect of yourself and what you expect of others. The rules are different for social media than for amicus briefs.  Some people [I am one of them; Hughes is not] signed on to an MPAA ad against the ROP law proposed in NY; if you signed on to that, you are political fair game.  We need to spend more time thinking about the rules of engagement for ourselves, including conflicts/appearance of conflicts, which law professors often discount.  The Oracle study: there was a lot wrong with it, but we need to spend more time as a community talking about disclosure and what constitutes conflicts of interest.  Arti Rai and I have had to disclose everything to serve in government, which is the cost of service [unless you belong to this Administration], and not everyone in this room would be willing to do that. 

We don’t spend enough time talking to people outside our tent.  It’s scholarly malpractice to write about something where people are alive and you don’t talk to them, e.g. how the PTO works, but we’ve separated ourselves so much that we are treated as outsiders. Spend more time talking to practitioners and interview them, as Silbey does.  The only way you’re justified writing only on the paper record is if everyone involved is dead. [This strikes me as an interesting thing to say right after we’ve just heard so much about conceptualism; I don’t actually have to interview Tam or his lawyers to write about the implications of Tam, so I take Hughes to be making a narrower complaint about when people write about the political economy of decisions, particularly legislative decisions.]

Yen: For some of us, this seems like our parents’ fight—CSUSA has been perfectly welcoming to academics. Don’t poison what can be done going forward.

Litman: the current barrage of abuse is less than a year old, so it’s not old news. [I would also point to the rhetoric at the 512 roundtables, which is less bad than the incidents Litman describes but not exactly welcoming.]

Feld: He’s done telecom and other fields, but IP is clearly much more poisonous than his comparatives.

A Celebration of the Work of Wendy Gordon, part 2

Harmless Free Riding by Wendy Gordon, Boston University School of Law
 (Additional related drafts from Wendy: Time and Intellectual Property After Coaseand Proximate Cause in the Law of Copyright: Linking Liability to Incentives)

Common law imposes penalties on those who harm much more readily than it requires people to avoid benefiting without payment; very few duties to help and lots of duties not to harm.  Foregone benefits don’t receive the same weight as harm done—which means that “do no harm” is not the same thing as “maximize wellbeing.”  Special deference to harm may be hardwired. We’re more “rational” when computing potential benefits.

When it comes to IP, this common law preference seems largely eliminated b/c most IP is about increasing productivity, rewarding beneficial behavior rather than penalizing risky behavior. Damages include lost sales but also lost licensing fees—internalizing lost benefits.  Don’t require harm to be proven. Particularly notable in TM: “if value, then right.”  Expansion in © liability too—now, for example, no economic motivation is required for criminal infringement.

What is “harm”?  Add up everything that people have rightfully (e.g., exclude stolen goods; removing those doesn’t cause harm), including things that they might not have a “right” to but do benefit from.  To harm is to cause a setback to a rightful interest. There should be a presumptive liberty to act in a way that’s not harmful, though that presumption can be overridden (and I think she also endorses vice versa: there should be a rebuttable presumption against causing harm).  Right wing libertarians think that only physical harm matters and only harms to people with entitlements to property matter, but she considers more kinds of harm relevant.

Foreseeability is a big issue with harm.  The clearest harm is diversion of current customers; the next version is copying but making money in a market you’re willing to exploit; least likely is where someone reaches a market you couldn’t have exploited or even licensed given privacy/transactional concerns.

Ultimately: thinks you have a weak obligation to pay for benefits you’ve received as long as you’re not made worse off (can pay out of the benefits you received), an obligation that can be overridden by other sufficient concerns.

Why do judges not care about harm? One reason might be that anyone else’s benefit—harmless free riding—is a source of inequality or envy.  Maybe envy is legally important because envy is a big driver of capitalism, for good and ill. Maybe judges ignore harm/benefit because they think of IP as a benefit-based field so all the usual constraints are off. Maybe judges don’t like free riding because it’s a threat to democracy when it means people don’t vote or don’t pay their taxes. 

It would be hard to persuade courts to tolerate harmless free riding, but we should try, and that will be easier if we understand why courts don’t like it.

Commentary by Rochelle Dreyfuss, NYU School of Law & Fred Yen, Boston College Law School

Dreyfuss: T-shirt cases: there is a premium for a T-shirt with a team name on it.  The surplus has to go somewhere, and the judge sees the team v. the guy selling the t-shirt and it’s not a surprise that the judge chooses the team. The court doesn’t see the guy as standing in for the public and the surplus being dissipated into the public.  Courts don’t like institutional litigation b/c they think they’re distorting—school busing, for example, pits particular groups against each other—but they don’t notice that IP cases are institutional litigation.  Courts can’t tell that surplus is being diverted from the public; they can’t tell whether the price is competitive, which would require several different producers competing to sell team t-shirts.  The same is true w/failure to appreciate the public domain, which looks like the place stuff goes to die. 

Need to vividly expose the courts to the public for whom the D stands, though that didn’t work w/composers etc in Golan and Eldred.  Patent cases: laws of nature aren’t patentable even if we know who discovered them—the benefit to the public is a cost to the creator.  Breyer gave an ode to the public domain: patents can discourage research, force people to avoid potentially good ideas. His concern about follow on invention hasn’t fully extended to other forms of IP. Why? Amicus briefing? Greater obviousness that progress depends in tech on using the work of others? Is romantic authorship an easier sell than heroic inventorship? Does patent’s other requirements (shorter term, examination, public disclosure) emphasize the public interest? Is the lure of new stuff enough to get judges to tolerate free riding?

Adverserial distortions could be minimized if potential users intervened, but we don’t observe that kind of intervention. If D wins, others will win anyway (nonmutual estoppel) so why bother?  That free riding is tolerated—why do courts allow it? 

Yen: Foreseeability is a real challenge when one wants to use negligence and similar concepts. It’s not a static concept in tort; it runs on a dynamic world in which things become foreseeable. If it happened, it can seem foreseeable that it would and will in the future happen.

What if we took “if value, then right” as seriously as possible?  Consider the ultimatum game. You must make a proposal to split; if you offer too little and the other person says no, you both get nothing. The rational amount to offer is a penny, but you can’t do that. Empirically, it’s closer to 30-40%.  There’s a connection here to a windfall from a potentially valuable unforeseen use of IP.  Suggests that society is in fact comfortable w/idea of windfall benefits but we would rather forego them unless there’s some sharing of the windfall in some way.  Could apply to the secondary user but also could apply to the people who end up owning valuable IP.

Envy but also respect is at issue.  A reasonable offer is a sign of respect. [I’m thinking of the work showing variations in the ultimatum game based both on demographics and on perceived desert through specific performance on a task.]

If we give rights every time there is value in a litigation, then we don’t necessarily correct a distributional wrong, because we’ve never asked the P whether she paid off all the people she borrowed from (though we may come closer in patent with examination etc.).  We could even let Ds seek offsets.

Gordon: patent law is not necessarily about corrective justice: since copying isn’t required, patent doesn’t trigger the idea of but-for contact w/P’s work, D’s work would’ve looked different.  That’s another thing that may protect patent from the dynamic she identifies more than ©.  Once causation is involved, it is vulnerable to expansion of what counts as causation.

Loren: narrative also matters: the expectation that things that are valuable must be owned. [But see things like the ability to read: processes or behaviors are often not subjected to the same logic.] Judges see themselves as authors; the © pull is stronger in that they’re less likely to be inventors.

Bone: Custom may also have a strong normative pull. Don’t need a harm/benefit distinction.

Hughes: idea of gleaning/leaving for gleaners (from Bible; appears in paper) is a double edged sword. In the tradition, it’s not inconsistent with ownership—ownership is required before you can have a duty or injunction to share with others.

12:00pm   Acquired Functionality by Pam Samuelson, Berkeley Law

At the heart of her work: functionality is almost as difficult as harm.  Gordon, in How Oracle Erred, deals w/functionality as limit on ©.  Gordon drew on Baker v. Selden’s explanation/use distinction. Copyright protects explanations; need a patent to control uses.  Oracle isn’t complaining about books that reproduce & explain the Java API, only about use of parts of the API to enable Google & Java programmers to write code. API is a tool for creation of new works of authorship—it is functional—and © should enable rather than forbid it. Likewise, Lotus wasn’t going after people using the command hierarchy in books about Lotus 123; it was going after competitors using the command hierarchy for functional purposes to enable interoperability so consumers could continue to enjoy the benefits of their investments in macros.

Pure Baker: © is never available for functional designs. Congress created two exceptions: software & architecture—but still recognized that functionality limits the scope of © protection in such works.  But what does functionality as a limit mean? Functionality can come from merger over time as users make investments in using a program. There’s more than one lens to look at Lotus.

There are many things born functional; channeled to patent/trade secrecy. After Star Athletica there’s less channeling, but still: if they’re inextricable from intrinsic utilitarian function, they’re not ©able.  Most ornamental designs for (as opposed to designs on) articles of manufacture in design patents would fail this test (or be too abstract to protect, as w/the beveled edge).  Various scope rules serve as functionality limits: bookkeeping forms, temperature recording charts, designs depicted in drawings not giving the © owner of the drawing any rights in making the design as depicted.

Indicia of functionality from case law: mechanically derived; dictated by function; systematic or methodical organization; necessary to objective or task; conformance to rules, logic; efficient design; incidental to carrying out tasks or processes (ABA claimed © in bank transfer numbers); constrained by health/safety concerns (SmithKline case about drug instructions where the generic drug was FDA required to use the same language on the label as the non-generic version; Bikram Yoga); Industry standard; affecting cost, quality, or effectiveness of design (trademark: Traffix). Fed. Cir. has a terrible functionality rule for design patents and used to have the same rule in trademark.  Some cases do recognize merger of function & expression in software: necessary for interoperability in game platform, accepted by Fed. Cir.  This is true even though the first programmer had choices about how to create the game in the first place. It was a constraint on games that wanted to interoperate: the merger occurred after the firstcomer’s choices.  Lexmark: had choices about printer software for cartridges, but Static’s chips couldn’t operate in the cartridges without the Lexmark code.  That is merger over time.  CONTU report recognized this issue as well.

Other examples of acquired functionality: Veeck v. Southern Building Code: once the city adopts a building code, the choices go to zero; there is no other way to express what the law is, so posting the code is noninfringing on merger grounds.  SmithKline: FDA approved wording, similar result.  Beck/Merritt Forbes—jury could decide that contract language/bond document was functional: if you want limitation on liability to work, it has to be written in a specific way, especially if a court has approved the language. Merger is one of the relevant doctrines but functionality is a useful label.

Could we be more precise about distinguishing expressive creativity and functional creativity, the latter of which should be channeled into patent/trade secret?  We can look at synonyms for expressiveness and functional creativity.  CAFC has to be wrong in saying functionality requires that there be no other way to do the thing, because utility patents routinely identify prior art ways of performing the same function.

Also occurs in trademark law: Inwood Labs.  Initially the colors of drugs may have been arbitrary/nonfunctional, but over time they assist patients in identifying medications and reducing anxiety over a switch to generic alternatives; useful to pharmacists in sorting drugs to fill prescriptions.

Gordon wrote about restitutionary impulses that create risks of overprotection, witness CAFC’s idea that Google just has to be made to pay for its use of the API. Free riding can be a good thing: 9 million Java programmers have invested in learning that API and created millions of programs that run on Android and other Java platforms. The Lockean proviso should limit IP rights: “enough and as good” must be available to subsequent creators; Sun promulgated the Java API to be widely used and endorsed distinction between no-© interfaces and © protectable implementations. When intellectual creations become standards, the public’s interest overrides the initial creator’s interests.

Commentary by Rebecca Tushnet, Harvard Law School

I assume I was asked to comment right before lunch because I talk fast.  Also perhaps because I have notes for a paper that has the exact same title as Samuelson’s, except my paper was going to be about trademark. And this amusing coincidence signals something important about the topic: it is about channeling between different IP doctrines. Functionality is our most well articulated (which doesn’t mean well implemented) channeling doctrine, and it is important across the areas of ©, TM, design patent, and utility patent.  Samuelson asks us to distinguish between expressive and functional creativity as a way to distinguish the distinctive subject matters of copyright and patent respectively, which might also help us think about different types of functionality in TM.

Functionality as a matter of necessity: link should make us think of various fair use tests that sometimes frame the issue as whether the defendant took more than was necessary, both in © and TM.  I’ve been a critic of the tendency to shove all tough issues into fair use, but the correspondences signal the presence of a pattern that needs to be handled by some protective doctrine: functionality as a separate doctrine focuses us on the desirability of channeling a claim into a specific IP regime, while a fair use defense in TM or © holds out the prospect of overlapping rights in the subject matter at issue in at least slightly different circumstances.

Lexmark poem hypothetical is the perfect example of necessity derived from previous unnecessary choices: the poem didn’t need to be the password that opened a lock, but having become so, the claimant’s own choices rendered the defendant’s necessary. Ties into Gordon’s important work on how some copyrighted works can change the communicative environment enough that a subsequent creator feels compelled to respond. That is, the Lockean proviso about having as much and as good left over is applied to a dynamic world, in which what’s left over changes depending on what the author created.

Implications for TM? TM already recognizes acquired genericity—a term like aspirin can enter the public domain as the name of a kind of thing, rather than a brand name, when the public uses it as the name of the thing.  Genericity and functionality are very similar and perhaps identical ideas: some things are preserved for public use even if that means some rump amount of confusion among people who think they’re privately owned.  Acquired functionality would be no different from this kind of genericity.

Samuelson’s work shows us that neither expressive nor functional creativity should be protected by TM, since both © and patent are separate regimes with different demands and constraints.  Specifically: With Betty Boop in the public domain, the creativity involved shouldn’t itself be allowed to serve as a source identifier for things on which Betty Boop appears—we see this handled various ways in the case law, from using Dastar to nominative fair use to the idea of aesthetic functionality to the idea that a song can’t serve as a trademark for itself but rather would have to represent some separate product or service in order to be a valid mark.  TM is going to confront this more often as well-known works resume entering the public domain. 

Expired © as one example of acquired functionality in TM; Terracycle in recycled Coke bottles is another: it’s functional because Coke comes in bottles of a certain shape, but it doesn’t have to be that way in alternate universes with the same rules of physics and even the same humans that we have here.

Functionality requires us to ask questions about timing.  Not all of Samuelson’s examples of functionality in TM are acquired over time—maybe better to say result of conscious decision: Inwood v. Ives, the functionality of a known capsule color is definitely acquired; the black motor that looks smaller because it’s black (Brunswick v. British Seagull (Fed Cir 1994)) isn’t acquired functionality in the same sense: it’s functional because of larger patterns of human perception which were known or knowable before the trade dress was initially adopted. Hot pink just couldn’t have served the same function if the original producer had chosen that color instead, whereas the Inwood colors were chosen initially with a fair amount of freedom. Justin Hughes has offered an interesting idea of aesthetic functionality that depends on whether a consumer preference preexists the development of the challenged design. His idea of functionality would encompass the black motor but not, without some further tweaking, the Inwood v. Ives capsule color for that reason.  Hughes adds in the idea that matching can be functional—a larger preference for things that match can justify finding certain kinds of designs, mainly but not always color, functional, at least as applied to durable goods. You need more than that to get Inwood v. Ives capsule color functionality, because pills aren’t durable goods, and a general human preference for consistency might not be hugely helpful in distinguishing the shape of the Coke bottle from the color of a pill.  And yet it seems hard to deny evidence that consistent pill color and shape improves medication compliance as relevant to the functionality of pill color and shape for generic versions of name brand medicine.

Broader question about Counterfactual reasoning: what are you allowed to change about the world in order to assess whether other choices were possible for the defendant?  Maybe not decisions of third parties like Boeing or a golf association that makes the rules for what equipment has to be shaped like. SmithKline/Drug labeling: FDA rules that mandate the adoption of identical language: a rule operating on all parties regardless of what choices were initially available before the P entered the market. Counterfactual moment as when the D seeks to enter the market because it’s the D’s conduct that interests us and that raises questions of harm and benefit.

Vetter: under this analysis, would translation into Braille for nonsighted access count as acquired functionality?

Samuelson: imagined it as using something exactly; adaptation is worth thinking about.  Are all things that constrain aesthetic choices functional? Not ready to say that, but the more constraining, the more likely it is to be functional.

Lunney: should functional mean the same thing across different areas of IP?  Utility patent has a different history than PGS works in ©.  Disagrees with RT that genericity is for words and functionality for symbols—the words Merry Christmas on a ribbon aren’t generic, they’re functional. [I guess I’d say that there is no difference in meaning or implications for TM law as between the two terms of art except that one is usually applied to words and occasionally symbols while the other is applied to trade dress/design, and to the extent that there is differential legal treatment of generic v. functional I don’t think there should be.]

Gordon: something can be both a fact and functional (that is, the content of the law). 

Samuelson: happy to say it’s merger, but calling the law a “fact” isn’t persuasive to a lot of people.

A Celebration of the Work of Wendy Gordon

A Celebration of the Work of Wendy Gordon, Boston University School of Law
A Cover Note from Wendy

Workshop Schedule

Intellectual Property Harms by Jessica Silbey, Northeastern University School of Law

From book focusing on the idea of progress in IP law, with more interviews w/people in creative industries. Is it just more IP?  What IP is today has shifted dramatically from past concepts.  Uses of IP in various ways, including using the patent act to remove inventors from a patent when a relationship has failed when that provision of the Patent Act contemplated adding them.  IP is grounded in fundamental interests/values: equality, privacy and its evolution, distributive justice, harm.  The book considers equality and privacy in the case law and looks at concepts of justice/harm.  Many harms are not about individual injuries but about systemic dysfunctions, though usually conceived of as individual (pirates, trolls, greedy companies).  Cases about volition and intentional inducement: individual motivations and bad actors. But what we might hear as individual harms/abuses are in fact descriptions of failing, dysfunctional institutions: poisoned barrels, not bad apples.  Hard to see in our everyday life. Imbalanced, corrupted by incumbency bias, plagued by breakdown of civility norms—not foregone licensing fees, zero-sum contests. The critiques are about bias, imbalance, structural disadvantage. A moral critique of how IP should function.  Precarity: late stage capitalism produces insecurity and vulnerability around the uneven distribution of cultural and economic resources; insecurity about future.  Feelings of belonging are about identity/difference rather than about a shared fate, and that’s what she’s hearing in the interviews: this isn’t a story just about IP but about late stage capitalism and the naïve promise of technolibertarianism.

Interviewees: patentees are cynical about it; the system enables and even incentivize forms of nonphysical assault.  It’s about men spraying testerosterone.  Interviewees predict who will win based on characteristics of the parties: Ps identify the “weak links” in a change—who can survive “squeezing”—the language of coercion.  Many use “feudal” or “rapacious.” And this infects the quality of the work they do.  A system where the rewards aren’t proportionate to who’s doing the work and how: e.g., an archive gets a collection of photos for free and then insists on large fees—ineffective competition and market restriction. We should talk about the values embedded in IP and how they’re being achieved: a shared fate is a good way to think about what progress ought to mean for IP.

(Accompanying Book Synopsis: Against Progress: Intellectual Property and Fundamental Values in the Internet Age)

Commentary by Mike Meurer, Boston University School of Law

Silbey’s previous book challenged IP as incentive story. Public debate now includes lots of sociopolitical issues such as diversity and nationalism, esposing debates about progress that are no longer centered around economics/incentives. The Patent/© clause of the Constitution isn’t helpful in figuring out what to do b/c there’s not enough from the Founders to interpret. Graham v. John Deere & Feist talk to us about the rationales—utilitarian even if not entirely incentive based—but Silbey is really interested in propertarian concepts of IP, not incentive/economic accounts; lots of economists are not propertarians.

Many interviewees feel screwed by the system, but there are other examples of successful collaboration/openness—The Knockoff Economy.  There is sharing at conferences, e.g. open source/AI (except Apple).  Informal “research exception” for genetics researchers who just ignore existing patents.  Precarity is a problem in low tech and high tech—not limited to knowledge economy or US. Decline in labor’s share of value/productivity divergence. The solution probably isn’t changes in IP; employment and labor law would be an area for intervention; policies that speed diffusion of new tech, perhaps by essential facilities doctrine.

Bob Bone: how do you distinguish between the harm and the cause of the harm?

Silbey: answers have to be interpreted.  Filmmaker complains that she can’t get access to photos and the $ demanded doesn’t even go to the photographer!  Have to attach meaning to that narrative, and have to justify explaining that as a result of systems and not individuals.

Q: IP is not autonomous, but the project may be too big if it’s about malaise/social breakdown. [Although if nothing will help authors without bigger changes outside of IP, that seems like a fact worth knowing.]

Copyright Jumps the Shark: The Music Modernization Act by Lydia Loren, Lewis & Clark Law School
Gordon has written about © as tort; the MMA can’t be justified on tort theories. It’s a complex licensing deal worked out by industry insiders to fix (in several senses) aspects of music licensing.  Added 24,072 words to the Copyright Act, which was 33,759 words in total in 1976.  The Musical Work Modernization Act is the bulk, largely in §115, which is now 18,324 (up from 2742 words).  Mechanical copies of musical works and “covered activities” for purposes of a blanket license.  Blanket/compulsory licenses reduce transaction costs.  Streaming previously didn’t create a mechanical copy; now it is considered to do so for certain circumstances—created a transaction cost and then solved it (though the problem started in ratesetting proceedings).  An interactive stream is a digital phonorecord delivery, so a mechanical license is needed, so a blanket license comes to the rescue.

Harm v. benefit: harm matters to most people on a moral level; prohibitions against doing harm are deeply embedded whereas not paying for a benefit is iffier.  To have any moral bite, harm must mean something other than a benefit not achieved.  What is the harm the MWMA seeks to remedy? The right to be paid for mechanical copies created in the course of streaming.  But it was a public performance before, and still is, and musical work owners got paid for that—they just wanted to be paid more, and now they’ll get paid for the public performance and for the mechanical copy.

Another possible harm: unequal treatment of different creators.  Sound recording © owners were getting more money!  This is subjective distress: harm comes from someone you see as similarly situated getting treated better.  So what would keeping authors at the core of © look like?  Title II of the MMA is the Classics Protection and Access Act, dealing with pre-72 sound recordings.  Now they have federal rights, though not federal ©.  Rights not to the performing artists, but to whoever owned the reproduction right in the sound recordings under state law, and that’s the record labels. Fails Gordon’s standard for expanding © by granting rights to non-authors who disseminate works: it should be in aid of authorial creativity.

Another violation of authorial preeminence: MMWA covers royalties collected for “unmatched works.” Collected, but not owed to an artist. After 3 years, if uncollected, the statute says they should be given to matched © owners—allocated to the owners of the most popular works, furthering inequality in the music industry.  Statute says “equitably” distributed to known © owners (which most people assume mean distributed by market share); can’t do anything creative like providing health care to session musicians or fund arts in schools.  Only if there’s a side deal will money flow to the artists.

Equality and fairness: for musical works, interactive streaming is now a mechanical copy, license set under willing buyer/seller standard; noninteractive: not a mechanical copy, no license needed. For sound recordings, we don’t know about interactive streaming and there’s a statutory license for noninteractive streaming. So in fact there’s no equity in any of this treatment. And when you add in nondigital transmission it gets worse! For musical works there’s PROs subject to antitrust supervision because they have a public performance rights, but sound recording © owners get nothing.  Each type of treatment is different.

There is also not equity as between pre and post 72 sound recordings.  One place where it’s equal: digital payments to performing artists for non interactive streaming royalties: the statute prevents diversion to the labels.  For post 72 artists, for noninteractive streaming, there are no requirements whereas the pre 72 artists get direect payments.  (Note that many of these pre 72 artists are dead; the money will go to the heirs or the labels.)  Pre 72 artists have no termination rights, and post 72 artists may.

Commentary by Greg Vetter, The University of Houston Law Center

Theme: mischaracterization of creators’ interests by disseminators in their advocacy. Why is this area so reliant on Congressional writing of licensing schemes?  Is it about which industries focus on creators more than disseminators?  E.g., theater/performing arts is creator focused and software is disseminator focused.  Why is music (and broadcasting) so overly dependent on congressional codification versus movies, books, news, etc. [I’d add in market concentration among disseminators—without that, there’s less legislative pull]. Software has its own private licensing systems (FOSS). More generally, why is it so industry-specific compared to patents, which is a much more unitary system?  Patent people use © as an example of why we don’t want industry specific patents given all the rent-seeking.

Even with the inequity, is getting licenses for orphan works a net win for transaction costs? [Compared to what? If there’s a no-right situation, then there’s no holdup either way.]  The issue is possible state law protection—standardization from that could have benefits.

Loren: true, the standardization from state rights was a benefit.

Litman: a couple of bombs hidden in the text: one of the reasons to say the pre-72 works weren’t “©” was to deny a termination right, and also another was that many state laws didn’t require written transfer of © interests, so lots of record labels don’t have to demonstrate that they actually own the rights—that’s cheating. With MWMA, the major labels all have direct deals with the streaming services—so the statutory license is really covering independent/self-publishers, but the result is that the organization gets to collect and keep the royalties, even though pretty much all the royalties are from other people’s music. No academic had any input into this bill at all, as far as she can tell. 

Hughes: paper should make more clear that digital photorecord delivery was already messed up. Now that Spotify etc. permit tethered downloads, there really is a copy, so it’s less messed up than it was. Given that we were already in that mess, when you couldn’t identify the owner, you filed a Notice of Intent w/the Office, and Spotify & Pandora & Amazon & Google filed 25 million of those. They don’t have to pay until the © owner comes forward.  Isn’t this a little better, because at least some of the money will go to the artists? If the database is good, the unidentified works will shrink.

Loren: there’s definitely some things that are better, but we should see how the whole thing works. Has her doubts about whether the unmatched works will shrink a lot.

Chris Sprigman: NOI issue was a response to the inability to match sound recordings to underlying compositions, an inability that has been going on for a century.  Blanket license: you can think of the payment to popular © work owners as a penalty default; independent labels presently provide very bad data to streaming services. Majors do a better job. Maybe this is a stick to get independents to provide better data; if it doesn’t work, their money will get given to someone else, and maybe that’s not an outrage.  Data need to be shared not hoarded.  [He disclosed: he represents Spotify.]  International standard recording codes and international standard musical works codes are really badly matched.  Congress is resolving a public goods problem with a penalty default. Not the most kind hearted response, but one with a purpose.

Hughes: Spotify did propose sending the orphan $ to the arts/musicians; it got shot down.

Traditional Knowledge in the Image of Private Law by Ruth Okediji, Harvard Law School

AKA Locke, the Bible, and Wendy: Lessons from Marrakesh: Gordon’s A Property Right in Self-Expression has been one of Okediji’s guiding stars in thinking about int’l ©.  There’s a lack of clarity in Locke’s treatment of the right to exclude.  The sphere of liberty excludes other claim rights, but doesn’t resolve conflicts between spheres of liberty. Liberty is a right of everyone; it doesn’t permit hierarchy.

The public domain has a heavy burden: tool of choice for policy arguments about the appropriate limits of IP: distributive justice; misalignments b/t economic incentives to create and distributional results; access to knowledge for downstream innovators.  Global context: effects of the incentive argument and public domain argument on human development needs of the global South.  Human progress/flourishing as motivation force behind IP protection, but limitations & exceptions don’t go to the needs of the Global South. Treating the public domain as property can also do damage; our doctrinal tools are too limited to counter the influence of property rights as one of the principal tools.

Implications for traditional knowledge, where law is silent but there is a conflict. Public domain advocates, and incentive advocates, often treat access to TK as a good thing. But takes intellectual capital from vulnerable communities: our theories essentialize the nature of creativity; reorients society around commodifying practices.  Nondiscrimination as a principle in the public domain is a fallacy like colorblindness in antidiscrimination law.  The notion of the public domain as a place for more & more goods to consume is impoverished—we need to challenge the notion of what it means to flourish in human society.

For Locke, liberty is mandatory—it has a social, relational benefit and not just an individual one.  Stewardship is the concept for thinking about individuals who are operating rationally and autonomously but in a community. 

Tacking Locke/Gordon/the Bible seriously would require a fundamental change in limitations and exceptions.  We think of L&Es as things we’re forced to do; reluctant to recognize constraints on property rights. Dominant treatment is that L&Es are discretionary; property rights are supposed to be certain and so it’s ok if L&Es are uncertain.  Voluntary codes encourage payment.  Inconsistent w/Lockean idea that speaking, remixing, creative play shouldn’t be left to the discretion of the state or institutions that facilitate access to public goods.  Like telling kids they don’t have to learn to read if they don’t want to. Our L&Es emphasize civil/political liberties and not community [hey, I wrote something about that].  They are discriminatory (treatment of hip hop in music) and emphasize the economic/material and not the social. Human rights are less prominent than they ought to be.

Uncompensated L&Es in the Berne framework are centered around liberties. Some reinforce subject matter boundaries, such as news of the day. But states can decide whether to give © to official texts and works of applied art. Need to address different kinds of users, larger scale of use (including by gov’ts), and cost of bulk access to works. Need to deal w/formal and informal customs & practices that don’t have the certainty that we demand of “legal” rules.

Marrakesh Treaty: not perfect, but it works.  Mandatory exception; freedom to cross national boundaries, not just institutions but person to person; recognition of “the least of these”; incentives to structure institutions that enable human flourishing. Right to property corresponds to obligations arising from property.

Commentary by Harold Feld, Public Knowledge: Lobbyists can’t usually just hand bags of money to politicians; they need to create narratives to justify their interests. MPAA almost killed Marrakesh Treaty at the last minute; there’d been a deal to exclude visual works and they wouldn’t oppose, but MPAA reneged on the deal at the last minute, demanding language to protect © owners from the blind: they didn’t like the narrative that there are rights and public interest considerations sufficient to displace what MPAA believed was fundamental right of ownership.  A compelling and simple story to the contrary—fundamental values can trump this right, as in real property—is terrifying to them. What changed things: the Pope and Stevie Wonder.  The Pope sent an official papal embassy & told them “thou shalt not put a stumbling block before the blind,” and Stevie Wonder told the delegates that they should do this.