gray market material differences must come from products/warranties, not supply chain alone

Toyota Motor Sales, U.S.A., Inc. v. Allen Interchange LLC, 2025 WL 465815, No. 22-cv-1681 (KMM/JFD) (D. Minn. Feb. 11, 2025)

This discovery dispute says some interesting things about gray market goods. “This lawsuit involves claims and counterclaims between competitors selling Toyota parts to Toyota dealers in the United States.” Toyota objected to Allen’s importation and sale of Toyota parts in the United States. “Most parts in Toyota vehicles do not have aftermarket substitutes from independent third parties.… Toyota allegedly sells parts in the U.S. at significantly higher prices than the prices charged by other Toyota entities elsewhere in the world.” Arbitrage thus occurs.

Allen maintained that the parts it sold bore the same part numbers and were identical in design, function, and quality as Toyota parts that are intended for sale in the U.S. market. Toyota claimed that the parts have material differences from the “genuine” parts it sells, such as the absence of a manufacturer-backed warranty, the shipping of the parts, and the handling of “outdated” parts.

Toyota sought evidence about Allen’s supply chain and argued that this was relevant to showing material differences in the parts. “[A] material difference is a difference that a consumer would find relevant in deciding to purchase one item over the other, and courts have established this to be a low threshold.” The main alleged material differences were differences in warranty coverage and differences in “supply chain and/or quality control measures.”

The court accepted Allen’s argument that material differences have to relate to the products themselves (which could include warranty coverage). Toyota argued that if “Allen plans to argue that the Toyota Branded Parts it sells are covered by some type of ‘Manufacturer Warranty’ as advertised to the consuming public, Toyota is entitled to know what warranties, if any, are offered by Allen’s suppliers.” “But the Court does not see how Allen’s suppliers would have any documents relevant to whether Allen provides a warranty to its customers.” The potential warranty sources were Allen, its customers, or Toyota itself. “Suppliers merely divert the parts from an authorized Toyota supply chain to Allen, and whether the warranty that Toyota provides with its parts is valid is entirely up to Toyota and how the language of its warranty addresses parts acquired through the gray market.” Thus, the information Toyota sought about supplier warranties was irrelevant.

In addition, the court concluded, “supply chain differences or differences in quality control measures in and of themselves” can’t be a material difference:

Certainly, supply chain or quality control differences could cause material differences between parts, but material differences in the products must be observed in the products themselves. The Court does not recognize the validity of a claim of material difference that is premised solely upon differences in the processes by which parts are made, supplied, checked for quality, etc., but without a resultant detectable difference in the product itself. For the purposes of false advertising claims, the issue that the parties must address is whether there are material differences between the products, not why any such differences may exist. Any material differences that result from differences in these processes can be discovered by inspecting and testing the parts themselves.

In addition, the court declined to require Allen to produce documents seeking “All communications to or from [Allen] mentioning, involving, relating to, or otherwise concerning counterfeit automotive parts since January 1, 2016, to the present,” and “All documents Defendants reference or rely on in determining whether or not the TOYOTA BRANDED PARTS sold by Defendants are or are not counterfeit.” Toyota argued that these documents are relevant to Allen’s counterclaim challenging the veracity of Toyota’s statements to dealers that counterfeit parts are often intermingled with gray market parts. And it argued that a 2018 email to a Toyota employee stating that counterfeit headlamps were delivered to Allen from a company in Dubai provided further support for its position.

Allen argued that counterfeiting wasn’t at issue in this case (filed in 2022, after Toyota received the email). The court agreed. “The logical chain from an email alleging that Allen once received a delivery of counterfeit headlamps to relevance to this case about gray market parts is a long one, in which Toyota’s argument skips multiple important links… That Allen questions the veracity of Toyota’s intermingling statements does not create sufficient relevance to open discovery in this case to counterfeit parts. All Toyota has shown the Court is that Allen probably, once, took delivery of counterfeit headlamps.”

delay bars ROP/Lanham Act claims when Facebook use was open and plaintiffs were aware of lots of unauthorized use

Davalos v. Baywaych Inc., 2024 WL 5344434, 752 F.Supp.3d 416, No. 21-11075-NMG (D. Mass. Sept. 30, 2024)

The caption seems to be a typo, but it’s one of the many right of publicity etc. cases by models against adult clubs that used their images in online ads. The defendant here gets summary judgment on laches.

The four images in dispute were posted on defendant’s Facebook page between August, 2013, and November, 2015. Plaintiffs sued in 2021. The court certified a question to the Massachusetts Supreme Judicial Court:

Under what circumstances, if any, is material publicly posted to social media platforms “inherently unknowable” for purposes of applying the discovery rule in the context of defamation, right to publicity, right to privacy and related tort claims?

The SJC answered:

Claims for defamation, violation of the right to privacy, violation of the right of publicity, and related claims that arise from material posted to social media platforms accrue when a plaintiff knows, or reasonably should know, he or she has been harmed by the defendant’s publication of that material. Given how “vast” the social media universe is on the [i]nternet, and how access to, and the ability to search for, social media posts may vary from platform to platform and even from post to post, that determination requires consideration of the totality of the circumstances regarding the social media posting, including the extent of its distribution, and the accessibility and searchability of the posting. The application of the discovery rule is therefore a highly fact-specific inquiry, and the determination of whether plaintiffs knew or should have known that they were harmed by a defendant’s post on social media must often be left to the finder of fact. If, however, the material posted to social media is widely distributed, and readily accessible and searchable, a judge may determine as a matter of law that the discovery rule cannot be applied.

Among other things, the SJC thus clarified that the “inherently unknowable” standard for the discovery rule is, under contemporary law, more accurately stated as a “knows or reasonably should know” standard.

The state tort claims were governed by a three-year limitation period. Under the discovery rule, a statute of limitations is tolled and will not begin to run until “[T]he plaintiff discovers or with reasonable diligence should have discovered that (1) he has suffered harm; (2) his harm was caused by the conduct of another; and (3) the defendant is the person who caused that harm.”

What a plaintiff knew or should have known is generally a fact question, but the burden is on the party asserting the discovery rule to demonstrate that an action is timely.

Plaintiffs here either stated that they were either unaware of the Facebook posts at issue until their attorney brought the posts to their attention in 2021 or could not recall how they became aware of the posts. Without information about how many people actually viewed the Facebook page at issue/the specific posts and without information about likes or shares, it was impossible to determine how widely circulated they were. Even wide circulation itself would not inherently prevent the application of the discovery rule. But, relatedly, there were not allegations the posts were ever concealed, kept secret, or restricted. “In fact, the purpose of the posts as advertisements for Club Alex indicates that they were meant to be circulated, not hidden, and plaintiffs offer nothing to rebut that inference. Even if the posts were in some way restricted and not readily accessible to plaintiffs, moreover, that would not be sufficient in and of itself to excuse plaintiffs’ failure to discover them.”

Most importantly:

[T]he facts leave no doubt that plaintiffs, all of whom license their images as part of their profession, had good reason to know that people were misappropriating their likenesses on social media. Indeed, plaintiffs have all been involved with numerous lawsuits related to other instances of misappropriation in the years following Club Alex’s posts. Plaintiffs were able to discover and act upon misappropriations in other cases and offer no reason why these posts were any different or less discoverable than others. … [T]he frequency with which plaintiffs have had their likenesses misappropriated renders reliance on the discovery rule suspect.

A footnote referred to Meta’s “facial recognition technology that, at all times relevant to this case, could have aided in such searches.”

True, social media is vast, with more than 350 million images uploaded to Facebook each day in 2013, but “[t]he fact that the allegedly misappropriated posts occurred amid a vast sea of Facebook posts does not … render plaintiffs’ lack of knowledge objectively reasonable. Nor is the fact that the posts may have required more than a perfunctory search to locate on Facebook enough to invoke the discovery rule’s protections.” Thus, there was no genuine dispute of fact on tolling the limitations period, and the state law claims were time-barred.

Lanham Act claims: instead of a limitations period, the Lanham Act uses laches, generally borrowing the most relevant state law limitations period to determine whether laches is presumed or not.  Plaintiffs argued that laches shouldn’t apply to deliberate infringement, but only the Second Circuit agrees. Other circuits consider deliberate infringement to be merely one factor in considering when to apply laches, a rule that “better align[s] with the equitable nature of laches than the Second Circuit’s brightline test.”

Here, the parties didn’t dispute that the most analogous statute of limitations is drawn from the Massachusetts Consumer Protection Act, with a four-year limitations period. Thus, laches was presumed. Laches requires: 1) a lack of diligence by the non-moving party in asserting their claims and 2) prejudice to the party asserting the defense. Plaintiffs failed to create a material dispute about reasonable diligence, for the reasons given above. “The only substantive piece of evidence plaintiff has proffered to the contrary is an affidavit of a legal secretary who claims that successful image searches can take ‘days or weeks to complete,’ but that does nothing to explain why an over eight-year delay is reasonable here.” The court again pointed to plaintiffs’ “host” of other lawsuits. “[T]he extent to which plaintiffs’ likenesses have allegedly been misused is sufficient to put them on notice.”

And for prejudice, the original club owner died in 2018. “Had plaintiffs brought their claim sooner, that individual would have had the opportunity to present potentially salient details about his intent and the likelihood of confusion the images may have caused.” Also, plaintiffs relied on a 2023 survey; defendants argued that, if plaintiffs had sued earlier, “it would have been possible to assess this issue based on potential clientele at the time the posts were made rather than a decade later. That deterioration in the face of delay is precisely the kind of prejudice the First Circuit has found to be meaningful.”

Given the totality of the circumstances, the court found laches even assuming the infringement was willful. A claim brought more than eight years after the final Facebook post was such a “lengthy” delay that it was easier to find prejudice.

Dastar bars claim against allegedly false copyright/licensing claims used to extract money from public domain works

McKenzie v. Artists Rights Soc., Inc., 2024 WL 4803870, --- F.Supp.3d ----, 2024 WL 4803870, 22 Civ. 1619 (JHR) (S.D.N.Y. Nov. 15, 2024)

McKenzie is an art publisher that worked with the late artist Robert Indiana to create and produce two images: one called “LOVE” and the other, “HOPE.” In the 1960s, the LOVE image “gained global popularity through display on commercial products, paintings, and outdoor sculptures,” all published without notice and thus in the public domain. 

LOVE sculpture, Wikimedia

HOPE sculpture, Wikimedia

In 2007, Plaintiff and Indiana created the HOPE image, “similar to the LOVE image,” which began competing with the LOVE image. Indiana didn’t claim copyright in the HOPE image either.

Nonetheless, Indiana entered into two contracts with a defendant-linked entity, Morgan, in the 1990s, pursuant to which Indiana purported to convey to Morgan all “copyright, trademark, and other rights” in LOVE—in addition to “the exclusive right to reproduce, promote, and sell” the LOVE image, “produce and fabricate,” own, and sell sculptures of LOVE, and the purported right to sue for copyright infringement of the LOVE image.

McKenzie alleged that “Defendants well knew” and “certainly know now” that LOVE was not, in fact, protected by copyright. Nevertheless, “Defendants ... combined together for at least two decades to fraudulently represent that they had and still have a copyright on the LOVE image” and engaged in false licensing to the tune of millions of dollars, harming plaintiff, which is authorized to “produce and market the HOPE [i]mage” and “is in direct competition with the LOVE image.”

The RICO claims failed because they were RICO claims (and untimely).

Lanham Act: McKenzie alleged that Defendants made false representations (1) in violation of § 1125(a)(1)(A), by claiming that “Morgan and ARS ow[n]ed the copyright to the LOVE image,” and (2) in violation of § 1125(a)(1)(B), by claiming “that ARS was authorized to license said copyright.” Neither survived Dastar. Cognizable misrepresentations regarding the “origin of goods” under § 1125(a)(1)(A) “refer[ ] to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.”

Although Dastar is about authorship, it also applies to claims “for false representation of ‘affiliation’ between the author and a distributor of communicative products,” even if through “a false assertion of license.” That was the essence of McKenzie’s complaint: Defendants “deceive[ ] the general public and the relevant market” that they have a copyright to LOVE—i.e., that Indiana (or his estate) provided them with the right to license products bearing the LOVE image.

What about false advertising? “Statements about whether a defendant has the right to use or distribute a work are not considered material ....” Thus, there was no actionable misrepresentation.

Even without that, Lexmark barred the claim. To allege causation, McKenzie pled that “HOPE and LOVE, as images, have no other competition than each other.” In addition, McKenzie alleged that defendants’ use of “the false copyright assertion in relation to its many licenses of the LOVE image has greatly enhanced the revenues derived from the LOVE image, and made it appear more valuable than the HOPE image given its supposedly copyright-protected status and the extensive public visibility it has acquired.” But McKenzie failed to allege that “consumers [e.g., potential licensees] were deceived by the fraudulent [copyright]” and “also that that deception” is what “led consumers to ‘withhold trade’ ” from McKenzie.

Plus, laches barred the claim.  Although “[i]n general, the defense of laches is not raised in a motion to dismiss[,] .... in certain circumstances, when the defense of laches is clear on the face of the complaint, and where it is clear that the plaintiff can prove no set of facts to avoid the insuperable bar, a court may consider the defense on a motion to dismiss.”

Although McKenzie averred that he “was unaware of the fraudulently concocted use of a false assertion of a ‘copyrighted’ LOVE image until ... February 25, 2020,” when one defendant was deposed in connection with a separate lawsuit, other allegations—including that, since 1999, defendants made “repeated” and “continuous” false assertions of copyright—undermined this position. He admitted that, “[b]efore the Hicks deposition [in 2020], [he] had seen the public advertising, observed that the large auction house and others all referred to the LOVE image as being copyrighted to Morgan and thus he believed ... that LOVE was copyrighted to Morgan.” At some point prior to Indiana’s death, he “notice[d] that virtually the entire artworld was marketing the LOVE image with the assertion that it was subject to a Morgan ‘copyright.’ ” He also alleged that, in 2007, thirteen years before the 2020 deposition, “Indiana would not authorize” him to produce a LOVE portfolio because Indiana “believed that Morgan had a copyright on the LOVE image based upon Morgan’s fraudulent representations to him that they had acquired one through his agreements with them.” Thus, he “knew” “or should have known” of any Lanham Act claim by no later than 2007. “The copyright registration status of the LOVE image was publicly available information that Plaintiff could, and ultimately did, uncover on his own.”

Thus, the delay in filing suit was inexcusable, and McKenzie didn’t rebut the defendants’ claims of prejudice based on their having continuously licensed LOVE since 1999 and the loss of evidence due to Indiana’s death.

literal falsity can exist even if there's a strained "truthful" reading

Kopp Development, Inc. v. Metrasens, Inc, No. 1:21cv1216, 2025 WL 371303 (N.D. Ohio Feb. 3, 2025)

Metrasens and plaintiff KDI compete in the market for ferromagnetic detectors, used to detect magnetic items (such as iron) on a person’s body or clothing before the person enters a room containing an MRI scanner. In 2018, Metrasens purchased a Kopp Ferralert Solo unit from a third-party located in Singapore and provided it, along with a Metrasens Ferroguard Screener unit, to a company called Intertek Testing & Certification. Intertek then issued a test report identifying the units by serial number and photos. The report concluded that “[t]he results of the testing showed that the Metrasens Ferroguard Screener had a significantly higher detection rate than the Kopp Ferralert Solo across the range of typical target objects.”

Metrasens then created a summary, which said in relevant part:

Ferromagnetic detection systems (FMDS) are not all the same. In an independent testing-laboratory comparison of 570 presentations of 9 typical risk items, there was a significant difference in the probability of items being detected, with Ferroguard Screener detecting 96% of presentations for the complete risk-item set, compared with 75% probability of detection for Kopp Ferralert Solo.

...

KEY FINDING

For smaller risk-Items, Ferroguard Screener proved significantly more effective at detecting threats to patient and staff safety and operational performance (94% of risk items detected) than the Kopp Ferralert Solo (56% of risk items detected).

...

TESTING METHOD

- Independent testing-laboratory  

- Standard, new, 2018 FMDS patient screening systems …

There were also comparative charts.

KDI’s owner testified that the Ferralert Solo unit that Intertek tested was an early prototype from when the product was first released in 2012, and that KDI had made several improvements to the Ferralert Solo product since 2012. In late 2020, KDI told Metrasens that the Intertek unit tested was an “old” version. Metrasens responded that it was unable to confirm the manufacturing date but offered to resubmit the products if KDI provided evidence that current versions were modified/upgraded. KDI responded that, if Metrasens hadn’t confirmed the manufacturing date, it objected to the claim that it tested “Standard, new 2018 FMDS patient screening systems.”

Previously, the court held that there was a genuine issue of material fact as to whether Metrasens’ advertisements proximately caused KDI to lose business from the University of Pittsburgh Medical Center, one of KDI’s existing customers, which also created a genuine factual issue on corresponding tort claims.

Although it excluded KDI’s proposed expert on damages, the court concluded that KDI could try to show evidence of damages with reasonable certainty at trial, including by showing the dollar value of the specific lost sales to UPMC or other sales evidence.

Here, the court addresses additional briefing it sought on when a presumption of money damages could apply.  Deception and injury are both components of causation. Notably, “the sort of proof of these elements a plaintiff must show varies depending upon whether damages or injunctive relief is sought.” Where the “rigorous” requirement of literal falsity is met, deception may be presumed; otherwise “[t]here must be evidence that a ‘significant portion’ of the consumer population was deceived.”

For injury, a plaintiff must generally prove damages, but they may be presumed in cases of willful deception where the plaintiff was the target of comparative advertising. And it is a rebuttable presumption. The court expressed some doubt that this presumption only applies to literal falsehoods—since it’s about the injury component, it doesn’t obviously require literal falsity if there’s willfulness & deceptive comparative advertising—but the parties assumed it to be the case, and anyway this was a literal falsity case.

Literal falsity: Metrasens argued that it didn’t outright say that the unit was made in 2018, just bought in 2018 and not used (new), which was true. But in context, “the meaning of the challenged statement is not ambiguous.” “[A]ny reasonable consumer of MRI screeners would interpret the statement ‘standard, new, 2018 FMDS patient screening systems’ as meaning that the KDI product involved in the testing was (1) standard; (2) new; and (3) manufactured and sold by KDI in 2018.” Although it quoted the (really misleading, ironically) Seventh Circuit statement that a literally false statement is “bald-faced, egregious, undeniable, or over the top,” the court explained that Metrasens was not required to explicitly state the date of manufacture to engage in literal falsity. In context of a guide allowing hospitals to compare the performance of the competing products on the market, “new, 2018” could not reasonably be interpreted to mean purchase date.  

However, whether this was true was a disputed factual question. KDI’s witness testified that he could identify it as a 2012 prototype because of its color and serial number. On the other hand, (1) Metrasens bought the KDI Ferralert Solo “on the open market as per a customer could have bought it;” (2) the model number of the KDI Ferralert Solo that Metrasens bought matched the model number of the KDI Ferralert Solo that was being sold at the time; (3) the price that Metrasens paid for the Ferralert Solo fell within the market price range for that product at the time; and (4) the box, packaging, and instruction manuals of the KDI Ferralert Solo purchased by Metrasens were “pristine.” The jury would have to decide. Presumption of damages: KDI argued that literal falsity plus comparative advertising, without bad faith, sufficed to presume damages. There’s logic to this—it’s not the bad faith that makes the damage so much more likely, it’s the direct comparison! But the court disagreed because it read the precedent to require literal falsity, bad faith, and comparative advertising.

KDI also argued that Metrasens acted with “recklessness amounting to willfulness” when it (1) purchased the Kopp Ferralert Solo product despite knowing that the supplier “had been known in the past to provide old stock;” (2) “willfully put out an ad” saying that the KDI product was a “Standard, new, 2018” model “with no support to label it as such”; and (3) decided to “keep up the campaign and continue to publish after express notice that the message was literally false.”

Even if Metrasens purchased the KDI Ferralert Solo without verifying the manufacture date and despite knowing that the supplier had provided “old stock” in the past, its witness testified, at length, to the many reasons why Metrasens reasonably believed that the KDI Ferralert Solo it purchased for Intertek’s testing was, in fact, KDI’s current 2018 model. This too created a jury question.

ambiguity over who was first African-American bourbon distiller in Kentucky dooms false advertising claim

Victory Global, LLC v. Fresh Bourbon, LLC, 2025 WL 366626, No. 5:21-62-KKC (E.D. Ky. Jan. 31, 2025)

After dealing with a motion to dismiss, the court now grants summary judgment in this case brought by one African American-owned bourbon seller against another.

Victory operates as Brough Brothers, which claims it was the first “African American owned bourbon distillery in the Commonwealth of Kentucky,” with the requisite licenses to operate a distillery by September 2020. By December of that year, it had distilled bourbon and filled its first bourbon barrel in a leased Kentucky facility. Brough Brothers alleged that Fresh Bourbon falsely advertised that Fresh Bourbon is the “first black-owned bourbon distillery in Kentucky,” and made other related claims. Fresh Bourbon didn’t lease a facility until early 2022 and did not obtain the required federal and state licenses to operate a distillery until September 2022. It began distilling its product at this facility in late 2022.

However, Fresh Bourbon submitted evidence that, in 2018, its representatives were “distilling” bourbon that it sold under the name “Fresh Bourbon” at Hartfield & Company Distillery in Paris, Kentucky, even though it didn’t own or operate its own distillery and could not legally have done so.

Challenged statements: 1) Fresh Bourbon was the “first black-owned distillery in Kentucky”; 2) Fresh Bourbon is the “[f]irst black-owned bourbon distillery coming to downtown Lexington” (not shown to be false); 3) “There had been no African Americans producing bourbon that weren’t slaves” until Fresh Bourbon did it; 4) Fresh Bourbon is “the first bourbon developed grain to glass by African Americans in the state of Kentucky”; and 5) Fresh Bourbon employed Kentucky’s “first African American Master Distiller in Kentucky since slavery.”  

Fresh Bourbon argued that it didn’t say that it was the “first black-owned distillery in Kentucky” but that it was “considered by the Commonwealth of Kentucky to be the first black owned distillery in Kentucky,” given Kentucky Senate Resolution No. 176, which stated, “The Fresh Bourbon Distilling Company is considered to be the first black-owned bourbon distillery in Kentucky.” An online news article made the “first black-owned distillery” statement, but not quoting any Fresh Bourbon representative, and Fresh Bourbon wasn’t shown to have used the article in any marketing. Thus, the actual statement wasn’t literally false, given the Senate resolution, even if the resolution was drafted by Fresh Bourbon’s representatives.

For the “producing” and “developing” statements, Brough Brothers argued that Fresh Bourbon’s “minimal contributions” to producing bourbon at Hartfield couldn’t constitute producing or developing bourbon. The court, however, found the statements “at least ambiguous as to the degree of involvement of the actor.” And the owner and master distiller of Hartfield testified that Fresh Bourbon representatives were eventually engaged in all aspects of the bourbon-making process, eventually had “free reign in the building,” did “everything” in the bourbon-making process without anyone from Hartfield present, and mashed and distilled the bourbon. The statements at issue didn’t claim to have a distiller’s license and permit. Plus, Brough Brothers’ own expert testified that it was “impossible to verify” whether Fresh Bourbon representatives were the first African Americans to make bourbon since slavery.

Similarly, the statement that Fresh Bourbon employed Kentucky’s “first African American Master Distiller in Kentucky since slavery” was “either ambiguous or an opinion, which cannot be the basis for a Lanham Act false advertising claim.” Apparently “Master Distiller” has no set definition. Brough Brothers’ own expert testified that the term has no “legal definition” and is “basically” a matter of opinion.

Even assuming that Brough Brothers had shown falsity, it still failed on materiality. Even with literal falsity, materiality must be shown.

If a company makes a literally false statement, then it can be presumed that the consumer who receives the statement was deceived. But whether that statement had any bearing on the consumer’s buying decision is a different issue…. For example, if a company advertises that its shampoo was manufactured in New Jersey, but it was actually manufactured in Pennsylvania, then it can be presumed that consumers were deceived about where the product was manufactured. But whether the place the shampoo was manufactured means enough to influence consumers’ buying decisions requires some evidence.

The fact that both parties used “first black-owned distillery” in their marketing campaigns was insufficient. Materiality “requires factual evidence concerning the relevant consumer market and the perspective of the potential customer in that market.”

State law claims also failed.

materiality surveys may not need controls

In re Keurig Green Mountain Single-Serve Coffee Antitrust Litig., No. 14-MD-2542 (VSB), 2025 WL 354671 (S.D.N.Y. Jan. 30, 2025)

This is a ruling on 19 motions to exclude expert testimony in this case, which is mostly an antitrust case; I will focus only on some false advertising-relevant rulings.

Keurig sought to exclude Hal Poret’s testimony, offered primarily for the purpose of showing that Keurig statements misled consumers into believing that its 2.0 Brewer worked only with Keurig’s K-Cups, and to provide an additional basis for one plaintiff’s false advertising damages expert, to rely on when estimating Lanham Act damages resulting from Keurig’s incompatibility statements.

The court started with a presumption favoring the admissibility of surveys. Poret didn’t test the exact language Keurig used, but that wasn’t fatal.  Although surveys “must ‘be designed to examine the impression presented to the consumer,’ ” “there is no obligation that the survey use the exact language challenged, or mirror the advertising conditions exactly.” Instead, Poret interviewed consumers about “what they did and why,” addressing the broader question of why consumers had not purchased competitor’s single-serve cups. His choice not to show the allegedly misleading ad campaign didn’t render the entire survey unreliable, since his methodology was well accepted in the survey field.

It was also not fatal that the survey lacked a control group. “Control groups are not the universal and inflexible requirement of survey research as Keurig seeks to portray them.” They’re useful when the survey is trying to determine the source of attitudes or beliefs or behaviors, or to “test directly the influence of [a] stimulus” such as a commercial. But “a control group may not be necessary if the risk of simply recording pre-existing values is not as great. For example, “a control group is not required for a survey that purports only to understand what developers perceive as relatively more or less important factors in their decision-making process.” That was the case here.

Likewise, Keurig’s arguments that the questions were biased and leading were insufficient to affect admissibility. The questions were closed-ended, but that can be legitimate. Certain respondents were asked to choose from a list of reasons that they did not purchase unlicensed pods. Some of these choices favored plaintiff’s position (e.g., “I heard or read that the Keurig 2.0 brewer works only with Keurig brand or licensed pods”) but some did not (e.g., “I prefer the taste of Keurig or Keurig-licensed brands.”). “Determining consumers’ preferences on these kinds of clearly defined alternatives is the kind of task for which close-ended questions are frequently more appropriate.”

The court also rejected the criticism that the universe was unrepresentative because Poret “imposed near-equal age distribution within his sample survey,” creating an underinclusive universe of respondents whose ages matched neither the population of Keurig users nor the population of the United States. The survey population of interest was Keurig 2.0 Brewer owners, which was appropriate.

Another plaintiff expert was Sarah Butler, who was offered to testify both on Keurig’s testing of competitor cups and her own surveys. Keurig objected to the first, because it argued that her “training is in consumer surveys, not laboratory testing of physical products.” But she was qualified to opine on whether Keurig’s comparisons between K-Cups and competitive cups adhered to “specific research standards and methodology.” Butler was an expert on survey research, market research, sampling, and statistical analysis. Her evaluation related to research standards and methodology generally, and not merely to “product testing,” and thus she was qualified to opine on whether the methodology of a research study allows for statistically valid conclusions to be drawn. Her non-survey testimony concerned whether the cup testing conducted by Keurig followed “generally accepted research standards for comparative product tests—such as objectivity, sufficient sample size, use of control groups where appropriate, and testing protocols—necessary for reliable statistical analyses,” and therefore aligned with her experience, training, and expertise.

As for her surveys—one of home users and one of out-of-home users like office users—the court also allowed them. For the home users, Butler made adjustments to the control group to ensure that “respondents who had previously been exposed to Keurig’s false advertising campaign were controlled for.” In devising her survey, Butler noted her concern that “the rates in the Control group may be driven by past exposures to statements made by Keurig about the unreliability of Competitive Cups.” “Mitigating the impact of preexisting beliefs on survey feedback is a sound objective in survey research. Indeed, failure to control for the impact of preexisting beliefs can render a survey unreliable.” Where a control group without preexisting beliefs is unavailable, “social scientists sometimes employ statistical weights or adjustments to the control groups. … Given the threat that preexisting views pose to survey validity and the broad use of far more intensive methods of control group weighing in modern econometric methods, I do not agree with Keurig that there is no scientific justification for Ms. Butler’s modification of the control group.”

For the out-of-home group, Keurig argued that there was no control group at all, but that survey targeted “individuals responsible for beverage supplies or contracts with beverage suppliers for their office or business location to evaluate the impact of Keurig’s relationships with Distributors[ ] on purchasing behaviors in the Away-From-Home Market.” Thus, it didn’t seek to test the impact of a particular stimulus or statement on these individuals, and a control group wasn’t as necessary.

Keurig also objected to questions in the first survey that it argued created a false dichotomy between “licensed” and “unlicensed” pods as well as the use of words like “unapproved” that it deemed biased, along with stronger warranty language than Keurig itself used. Keurig’s rebuttal expert conducted a survey along its proposed lines which yielded substantially different results.

The court disagreed. Keurig’s own materials used “unapproved,” so it was fair to ask consumers about that, and the other questions didn’t suggest answers in an impermissibly leading way. Although there were differences between “affecting” a warranty and “voiding” a warranty, “none are so strong that exclusion of the survey is warranted or that it becomes more likely than not that Ms. Butler’s opinion is unreliable. Although Keurig’s survey produced different results, this is to be expected—surveys conducted in different ways produce different results.” Cross-examination was the remedy.

The court also rejected sample-based criticisms of the second survey, noting that samples don’t have to be perfect.

Keurig also criticized the use of “recall-based measures” (i.e., questions about past purchasing decisions) in the first survey, on the grounds that “[i]t is widely recognized that recall-based measures do not yield reliable responses.”  “[R]ecall bias, which recognizes the potential for inaccurate responses due to fading memories over time,” is a known issue with survey reliability. But that went to weight rather than admissibility. And asking about aggregate decisions over a long term is less problematic than asking about very specific things. Likewise, adding an “I don’t know” option can mitigate the problem, which was done.

WIPIP: Copyright: Incentives and the Digital Age

Tang, Creative Labor in the Age of Platform Capitalism

Theories of expressive work and creativity: lead to idea that AI training itself is not a © problem b/c it doesn’t use work expressively. Past idea: digital creativity enhances autonomy by giving individuals greater roles in authoring their own lives. When people are creative, making new things out of old things, become producers, they exercise and perform freedom and become the sort of people who are free. Semiotic democracy.

This model is challenged by paradigm shift in digital creation. From early days of YouTube—hotbed of amateur creativity—to current situation of rightsholder synergy. “Collaborative model” in which “rights holders” and “online creators” are partners in sharing viral profits. YouTube’s ContentID, along with Meta and TikTok, allows users to take bits and pieces without themselves needing to pay. This changes how we think about digital creativity on the internet. Those autonomy arguments are actually no different than autonomy arguments made by Uber, Postmates, and other gig economy companies—greater flexibility for a bohemian lifestyle. But we know that’s not true. Creators relied on TikTok for their livelihoods—Uber drivers are subject to algorithmic black box whims; YouTube doesn’t make its monetization/demonetization policies public. At best, platforms are oligopolistic for creators.

Platforms have always gathered that meaning-making expression into data; made it clear when they changed TOS to make it explicit that they were using data to train generative AI. The analysis of the datafication of creative works can learn from privacy scholarship, which has asked: how does privacy law evolve from dignitarian individualistic notions focusing on noneconomic invasions for the era of mass privacy invasions through gathering data en masse?

Q: historically, the vast majority of artists have failed. Maybe the platforms make things better [or don’t make things worse] by allowing artists to find their audiences.

A: consider TV writers negotiating for uses of AI.

Rosenblatt: This is part of a story of precarity; sounds like freedom but isn’t—gig economy analogy is convincing. What does this do for ©? TV writers—that’s WFH. The one thing these creators have is ©, and what good does it do them? Very little. YouTubers have © but it doesn’t seem to be relevant. Is there something else we should be doing?

A: all these arguments—the payments would be minimal, it would be too hard to track all the uses—have been made in privacy, so we could look there. WFH: challenge to the idea of the inextricable link b/t work and the author.

Lunney, Incentives and Music Composition

Fundamental premise of ©: more rights means more $ for righsholders means more creative output. This paper is looking at music composition: does revenue increase output? Does revenue increase number of composers? RIAA shipment data in constant dollars—going back to 1962. Steady climb; 80s recession and recovery; Napster/filesharing decrease until 2015, back to the early 60s level, and then starts to rise again. ASCAP etc. payouts also have to be considered for composers, and there we see a steady increase rather than sharp drops, with a few blips. With both taken into account, you still see a filesharing effect, but not quite as drastic as for recording revenues (and not much recession effect).

What happened to composers? Hot 100: a relative measure of quality rather than absolute, since it’s competing with the current alternatives. More money means fewer top hits rather than more contenders. For absolute measures of quality, looked at decay over time. The 90s (high revenue period) songs did worse than expected. The low-revenue 2006-2015 period is where people are still listening to the songs today. Can control for various variables including teenage population and revenue is still uncorrelated or negatively correlated with revenue.

Superstar composers: only 2 from the 1990s, many more from other lower-revenue decades. So more money is associated with fewer and lower quality hit songs, fewer first appearance songwriters, and fewer superstar songwriters. Next steps: more data, looking for varied output based on quality of hit, and revisiting assumption of equal shares of songwriting credits.

Rosenblatt: what the trends are in publishing deals—are the deals better/worse/different/360? Industry practice has changed considerably over that period.

A: good question, but his core question is does more © yield more music? Why it does or doesn’t is an interesting Q but not his main one.

Fromer: Movies: Blockbusters are often perceived as less creative; gatekeeping around who is allowed to produce them—is there anything like that dynamic here?

A: certainly gatekeeping on the artist side. Harder to tell on the publishing/composing side. We hear about artists being taken advantage of. [We definitely hear about composers forced to share credit with performers in order to get the song recorded by them.]

Fromer: Artists wanting to work with a particular hitmaker may matter.

A: we’re increasing the number of composers on average in a hit song, for sure.

Q: some songs are on the Billboard 100 forever.

A: sure, it’s not a perfect measure of quality, but that’s why I also look at whether it’s still being streamed years later.

Q: another possibility: look at # of DMCA takedowns to measure popularity/quality.

Cathy Gellis: did the Copyright Act of 1976 coming into effect have any relation to what happened to spike revenue in 1978? But also note that the “filesharing collapse” was also correlated with the collapse of record stores, which wasn’t just about filesharing but was also about the prices record companies were charging to record stores that made them unsustainable.

A: hard to explain 1978. But you’re right, there’s a lot going on. And only looking at Hot 100, so there may be other things going on, although the music industry is highly skewed to the top.

Q: Number of composers being added: people are preemptively adding composers w/similar style b/c of fear of Blurred Lines type lawsuits.

Pager, Copyright's Extended Duration as Feature not Bug

Most valuable works may struggle before they are recognized as valuable—Van Gogh died penniless. Moby Dick, Citizen Kane were commercial failures. Art from marginalized communities may take time to be recognized.

Publishers will only invest in works that they think will pay off fast if © term is short. Does that mean © needs to last 100 years? Not arguing for any particular term. But could play with a variable term. Return to a renewal term—option. That would allow mainstream iconic works to renew, which would be bad; could couple it with some sort of revenue cutoff, so the works that have had returns on their investment can’t renew.

RT: Renewal restrictions: as far as I know most blockbuster movies have technically lost money; so how would that work?

A: could go by box office/gross.

RT: What about the naïve economic model here? The midlist is already gone from publishing with life + 70—publishers are already not investing in works that will pay off over 20 years, even with that very long term.

A: you might take more risks on an unknown if you think there’s more money around.

RT: what does that have to do with the term? Your time horizon is still going to be 1 year. [See also “I’ll be gone, you’ll be gone.”]

Jake Linford: you’re really telling a desert story not an incentive story: this person deserves a reward and we need to create some sort of system to give them a reward.

Tang: there’s tons of data that the industry is becoming more risk-averse and more winner-take all, not willing to tolerate failure, despite its concentration (because of its concentration?). [Cory Doctorow and Rebecca Giblin say that the way to deal with the bully taking your kid’s lunch money is not to give your kid more lunch money; this is a statement about © rights.]

WIPIP: Innovation policy

Michael Burstein, The Law of the Direction of Innovation

Foundational texts: NBER Rate and Direction of Inventive Activity, and revisited. But we need to ask: what innovation should we prioritize? What innovation, by whom, and for whom? These are contestable subjects of political choice. Health law scholars have started to ask why so many me too drugs instead of novel therapeutics; trying to generalize from these questions.

Positing two axioms representing conventional wisdom in law & business: (1) entrepreneurial activity, mediated by price signals and supplemented by exclusive rights, is the best way to establish the direction of innovation. (2) private ordering of innovation policy takes place largely in the absence of legal structure; law’s role is only to ensure that IP facilitates adequate price signaling.

This is wrong in a few ways. Startups direct innovative efforts towards funders’ interests—structured by VC incentives. Incumbent firms are influenced by corporate rules. Covenants not to compete matters. That’s all not just price. Even if was just price, IP doesn’t mediate price in a vacuum; IP makes choices. Market demand also doesn’t equal social demand/value of innovation. Gov’t funding remains an important tool of innovation policy.

How do we get an innovation ecosystem w/striking disparities in investment/development of tech that we see today? VC investment is mostly in IT and consumer-oriented stuff. Silicon Valley has become optimized to produce those kinds of innovations. Crypto, but not encryption from same underlying tech base. Crypto has low capital requirements, low barriers to entry. Encryption is deep tech, w/long and uncertain regulatory cycle/demand, but potentially much greater social value.

We’ve had different innovation systems over time—Bell Labs, corporate R&D.

One goal: challenge notion that innovation is part of market alone and not part of legal choice.

Gaps in literature to fill: economic literature has some useful modeling, but doesn’t explain mechanisms by which economic incentives actually arise. Innovation ecosystems may be described, but each part of ecosystem is molded by various laws, private law and public law. In law, we tend not to see the ecosystem as deserving of integrated study—we tend to atomize each piece.

Law influences direction by structuring relationships among firms, individuals, and markets (VC contracts are an example: generally applicable law rather than innovation specific); by delineating entitlements (creation/enforcement of legal rights or creating space for nonmarket innovation); creating or limiting markets—shaping demand (export controls that limit the addressable market for certain tech); subsidizing investments, generally through gov’t spending or the equivalent (gov’t grants).

Harder cases: corporate governance—that shapes both individual firms/people as well as markets as a whole. R&D tax credits; gov’t procurement—both a subsidy and market-making. Regulation—can prohibit and can structure what people can do, and direction of innovation responds in kind. IP may operate across modes. Delineating entitlements and subsidizing investments by overcoming public goods problems, but also shapes market, e.g. by identifying what’s protectable and unprotectable and by shaping licensing law.

Sapna Kumar: how does the model handle goods that more closely resemble public goods than private goods, like new antibiotics and vaccines for infectious diseases less common in the US now (but might be in the future). Infrastructural goods might be different.

A: the market paradigm tells us the underproduction problem is bigger with such goods, so it wouldn’t surprise him if things like regulation/gov’t procurement play a bigger role there.

Rosenblatt: people are uncomfortable with value judgments: which technologies are value-promoting and which aren’t.

Kumar, Scientific and Technical Expertise after Loper Bright

Her impression: majority fundamentally misunderstood intertwining of sci/tech expertise w/statutory interpretation. Lessons we can learn from patent litigation about how judges acquire needed knowledge about technical issues. Proposal: funding neutral experts for appellate courts for complex administrative law cases.

Loper Bright: Judges must independently interpret statutes. Judges must exercise independent judgment when they interpret ambiguous statutes; adopted very narrow version of Skidmore deference—can’t defer to agencies but can look for persuasiveness, doesn’t seem different from being persuaded by a party or amicus. Claimed holding based on APA, but framed decision w/in Art. III arguments—invoked Marbury twice.

Many prominent scholars claim lots of deference is left, but her own view is that lots has changed. Courts are forbidden from deferring. LB might exacerbate politicization for judges. Some judges may try to improperly defer. But what about judges who try to faithfully follow LB—what is a deference-free system of interpretation?

Patent has some lessons! District judges struggle to understand complex sci/tech, which contributes to patent cases being time-consuming. They cope by relying heavily on expert tech tutorials, technically trained clerks, tech-trained magistrate judges, and neutral experts for complex cases, sometimes special master or technical adviser. How does the CAFC cope? Expertise of the judges themselves, and technically trained law clerks.

We don’t have any of that for APA situations. No means for parties providing tech tutorials; appellate courts have few technically trained clerks; page limits on briefs and non-tech trained lawyers make it hard for judges to learn what they need; no means for hiring neutral experts at appellate level.

Neutral expert proposal has been floating around for a bit: Breyer & Leventhal, JJ, both proposed. Common in other countries, EU and England. Best of both worlds—independent judgment of judges & access to reputable info on sci/tech.

Implementation: Congress could fund it up front (unlikely); appellate courts could do this on their own and bill parties for cost (is this allowed?). Experts would explain background sci/tech, not opine in law. Give teachings in written form, subject to party response. Goal to prevent overreliance and opacity, while preserving adversarial system. Patent system suggests that this can work. This isn’t a substitute for Chevron, but it’s something.

RT: Could an appellate ct send to dct for this purpose?

A: would take amending the APA.

Burstein: can appellate courts appoint special masters?

A: seen conflicting things—need more research into their inherent authority.

Jacob Sherkow: there are original APA actions in the dct—those could have experts.

Q: generalist judges are always coming into situations they don’t know anything about—music, reinsurance markets, complex family situations, how do ski resorts work. That doesn’t mean anything you said is wrong. But why is science special?

A: dct often plays a filtering role.

Q: problem where you can’t find an expert who isn’t in one camp or another—an interest in advancing (or not) large hadron collider projects. Maybe you need to hire 2-3 with different ways of looking at the same thing.

A: that’s true.

WIPIP: Copyright: Infringement & Enforcement

McFarlin, Restoring Joint Authorship

We apply a separate accrual approach to © infringement: Petrella. But a one-time plain & express repudiation of joint authorship to a claim for accounting, Zuill, 9^th Circuit. Should we continue to do so? Chuck Berry & Johnnie Johnson disputed authorship but Berry’s name was the only one on the record—counts as an express repudiation, so he loses his chance to claim authorship. But if Petrella could assert claims 40 years later, why not Johnson?

Zuill’s rationales: (1) inequitable to let claimant wait in the weeds and then pounce—seems inconsistent with Petrella. (2) adverse possession by ouster, since © is like real property in that it lasts for a really long time. Flawed analogy? Ouster generally means sole possession of a tangible thing in exclusion of co-owner. Requires actual dispossession, not just declaration or failure to share profits. Stability of title has economic importance, sure, but so did Scorcese’s title to Raging Bull. How can you become an author of another’s work by prescription?

Should new claimants be able to reopen this, like Johnnie Johnson’s estate?
Glynn Lunney: what counts as an accrual of a cause of action? W/infringement, a new infringement. How does a claim of authorship accrue multiple times?

A: the claim accrues as an acclaim for an accounting upon the failure to pay profits. A new revenue source comes in; the failure to pay creates the new claim.

Lemley: test case where there’s a repudiation but no profits for five years. What should happen then? (He thinks the inconsistency is that Petrella is wrong.)

A: standing for declaratory judgment, but no bar to future suit. That’s an inconsistency—using declaration standing for claim and then putting a bar on the accounting.

RT: Evidentiary difficulties (which aren’t as pressing for Petrella type cases)? What about applying this to WFH?

A: courts are already dealing with that, in e.g. the Jack Kirby case, and yes, to be consistent you’d probably have to extend that to WFH claims.

Q: how does this affect termination rights?

A: also a big problem. Also exists w/infringement and separate accrual. Courts may subconsciously be anti-joint authorship and pro-sole authorship, even if it’s not coherent.

Smith, Looser Forms of Parody

Campbell initially defined parody for © purposes as commenting on the original work; if it has no critical bearing on the substance or style of the original composition, its claim to fair use diminishes. Some decisions didn’t let you target the author or the subject: Salinger v. Colting; Dr. Seuss v. Penguin Books; Kienitz v. Sconnie Nation. Split though b/c cases like Burnett v. Twentieth Century Fox allowed targeting of author or someone associated with the work. Targeting the subject of the work—generally involving a photo. WWE v. Big Dogs—courts generally found that to be satire but not parody; some cases push the line.

Then, Goldsmith twice said that parody targets an “author or work.” So, the questions: parody of what: what can a secondary work target? And what are “looser forms of parody”? (In discussion she suggests “String of Puppies” as a possibility.) Is it on a scale or spectrum? Is there something between parody and satire? Is it something that’s more effective with the borrowing albeit not strictly necessary?

Linford: parody v. satire as proxies for necessary v. not necessary? But how do you figure that out?

Newman: Barbie fair use cases are not really commentary on the expression of Barbie but commentary on the social meaning of Barbie that she had accrued over time. [I think that’s revealing of the vapidity of the demand that a parodist comment on the “work”—not all parts of the work are protected by copyright law. Just like dissecting a joke kills it, the plaintiff in a fair use case tries to break the parody/commentary down and say it’s not required for whatever the defendant is trying to say.]

Lemley: Ralph Nader Mastercard ad: the judge was motivated not to rule for Mastercard & accepted that this was a parody of sanctimonious merchants of high interest consumer debt, but that was clearly not the primary message Nader was trying to send. One question is what the standard of proof is; another related one is who the audience is—“may reasonably be perceived” suggests the (reasonable) audience should be consulted.

Comments note that Europe (wisely) doesn’t distinguish parody from satire.

Lunney: courts like to look reasonable and split the baby, which may explain the language distinguishing satire in Campbell.

Rub, Circumventing SCOTUS

Copyright law needs updating, but Congress is not doing it. Examining 21^st century opinions Eldred, Grokster, Golan, Kirtsaeng, Star Athletica, Aereo-- attracted many amicus filings, use in copyright casebooks, citations in law reviews, so we understand them as important. But lower courts don’t always do much with them.

Part I: Narrow interpretation cases: Aereo, Star Athletica. Aereo: volition doctrine could be on the chopping block, but the Court didn’t name it, and the Second, Fifth, and Ninth Circuits have subsequently ignored it while the dissent blessed volition (and worried about its future) and the SCT majority didn’t disagree—no impact on the volition doctrine’s development.

Star Athletica: can I draw it? Seems a very test to meet. Separability still has some teeth, in some courts, sometimes; some courts apply a low standard and some courts don’t. Courts use other filtering doctrines extensively to replace separability. This is the messiest.

Grokster: worried that SCT created an independent duty to filter. But the tech moved on and distribution models moved on. Turns out that Grokster didn’t do much. Inducement cases tend not to turn on failing to filter and looking for profit. Got filtering through business models [and suing Cox and other connection providers!]

Kirtsaeng: Court prioritized free movement of copies. But market segmentation is still here. Most © materials are distributed digitally. Second Circuit shut down secondary market in digital copies (ReDigi) and libraries too (Internet Archive). Price discrimination by right is still here nonetheless.

Eldred & Golan: No limit on Congressional power to expand copyright—but user groups got organized to press against expanding copyright in SOPA/PIPA. Legal power can exist without political power. Didn’t open floodgates to new legislation. [Though that’s perhaps b/c of point one: Congress can’t often get it together to act.]

Even most significant SCT decisions w/Ginsburg & Breyer exert only modest influence on broader trajectory of © law. Repeat players in ecosystem can bypass any disturbance to Force. © is incremental. 0.7 opinions/year can’t do much. Are we spending too much time focusing on SCT? Is this minimalism justified?

RT: Do you mean © law or © practice? You make claims about the broader trajectory of © law but a lot of your points are about © industrial relations. Likewise, effects of Star Athletica on registrations/C&Ds may be very different.

Lunney: If Grokster had come out the other way, would the market look the same today as it does or would it be radically different? I think it would be different. Eldred, likewise—if Lessig hadn’t brought the case, would there have been enough political focus to develop the political pressure against term extension?

A: sure. Maybe not overruling Sony was a message.

Lemley: maybe we’ve ignored cases we should have paid attention to—Petrella has completely reshaped copyright litigation by trolls, with big effects on substantial similarity doctrine in music cases as a consequence (as well as other things like the law developed around actors like Higbee). Fourth Estate, the registration case, has also had a big impact.

WIPIP: IP for the Larger World

Koo, De-Colonising Copyright Law

Is fair use even possible outside the US? If we want to export fair use, what is it we actually want to export? Many US academics many not think it’s the greatest idea—if we had a blank slate to redesign, what would we do?

Issues: © not fit for purpose in developing English-speaking Commonwealth countries—Caribbean, Southeast Asian. Issues with access—sometimes access is only possible through piracy. Single author doesn’t fit well with collaborative creative cultures—reggae music. Indian and African influences on Caribbean music; restricts innovation to current forms. What is considered original creation? Who is considered an author? Like US, law was traditionally imposed, but we continue to impose them on ourselves. Doesn’t reflect needs/lived realities. Cut and paste from UK or from international treaties. Lack of inclusion and lack of influence of these countries—may not even has existed as independent/as republics when these agreements were being negotiated.

TWIL (third world international law) or postcolonial approach? TWIL approach: attempt to destroy international law will seem impossible b/c of link to trade. But this framework is undemocratic and oppressive. How can the reformation take place?

Undemocratic: int’l treaties demonstrate a battle between have and have-not countries

Harms: ignores collective creative cultures, limits access to works, hamstrings innovation and cultural creative processes. Maybe not allowing students to photocopy at will, but maybe allowing museums and libraries to digitize.

Borrowing copyright concepts may simply amount to trading colonizers for imperialists.

Rosenblatt: mix of cultures in Trinidad & Tobago

A: Yes, so what does creation look like? Influence is everywhere; can be accused of infringement from other places?

RT: suggestion to leverage TRIPS?—ability to retaliate for non-IP related trade violations of the US, which are clearly going to feature strongly in the next 4 years—prior TRIPS rulings on online gambling/the US homestyle exception for small businesses allow other countries to retaliate including by suspending their IP laws w/r/t US IP. Why not allow students or libraries to photocopy US works at will?

Digital versus analog: access that is limited to countries that need it will either require strong digital walls or analog copies.

Do you think that designations of origin are better forms of IP? Madhavi Sunder/IP3

Is there a universalist end state? If so, then might want something that could be imperial/ you wouldn’t worry about being accused of infringement from outside.

A: wouldn’t necessarily be worried about a universal system if it worked well. Trinidad & Tobago is tourism-based; any system that allows more sources of investment/development would be good?

Designations of origin—not useful immediately, only if you’re known. Have a GI for a T&T steel band, but have to convince people outside that it’s worthwhile.

Irene Calboli: be provocative, go bold—don’t have to have all the details yet while you’re making the case for reform, rather than trying to mitigate.

Gebru, Cultural Appropriation as Passing Off

No authoritative definition, but common features: power imbalance, lack of understanding, harm of some sort, context matters. First mention of “cultural appropriation” in OMG Dolls case—though court didn’t like it.

Proposed taxonomy has two axes: is the symbol diffused or distinct; is the use noncommercial or commercial? Diffused: place-bound; legally recognized group; shared across different communities. Would only allow legal intervention with a commercial appropriation of a distinct symbol. Diffused and noncommercial: Justin Timberlake’s cornrows. Specific and noncommercial: Kente cloth used by congresspeople after George Floyd’s death. Diffused and commercial: Aunt Jemima. Specific and commercial: Navajo symbols used by Urban Outfitters, litigated by Navajo as TM case.

Passing off theory—extended to GI theories with “Greek Yogurt,” “Champagne,” etc.

Case studies: Jeep Cherokee. Is there collective goodwill? Yes, some signaling happening—trying to communicate meaning. Official name of the source group; distinct group w/place, centralized institutions, legal status. Easy case for framework.

Gucci’s use of turban: sacred product; market value?; other cultures have turbans, so is it unique—harder question.

Q: privileges centralized cultures—which bakes in a certain perspective. Why should we privilege that? The reason a culture is diffuse might be because of previous cultural violence, now immunized. Maybe that’s how it has to be. [The recent book by Carrie Lowry Schuettpelz, The Indian Card: Who Gets to Be Native in America is really good on this point.]

A: yes, it is a present day snapshot of what consumers think right now.

Q: then just be very transparent about that.

Buccafusco: Gucci seems like a pretty expressive company, so what’s the difference between Justin Timberlake’s dreadlocks and Gucci’s turbans? Is it just that Gucci is monetizing directly and Timberlake indirectly? Plus, there seems like there’d be a lot of food in your regulatable quadrant. Are you just reinventing GIs?

A: food might be too diffuse.

Rosenblatt: are you concerned at all with transformation? Also, what is a culture that can be appropriated? Subaltern subcultures like punks, some organized and some less so, can get appropriated.

Buccafusco, Masur, & Whalen, Measuring the Value of Distinctive Brands: Evidence from the Bordeaux Wine Market

Distinctive here means different from other marks, not well-known. Everyone agrees that branding is important. Chasse-Spleen: easier to find. Suggestive or arbitrary or fanciful but not in the “jumble of letters” sense. Question: to what extent do distinctive brand names help generate price premiums?

In many markets, we don’t see much congestion around the semantic core, and TM law keeps firms from clustering. But! The market for Bordeaux wines comes from the 18^th century, when TM law wasn’t doing much work. More than 5000 unique wineries, 150 million gallons of wine, largely homogenous products: red blends of Cabernet and Merlot. Most branding choices more than a century ago. Median price is $15/bottle, but some bottles sell for $1000s/bottle. 28% of producers share a virtually identical name w/at least one other producer. 150 with LaCroix in their name, including 6 Chateau LaCroix alone.

H1: distinctively named wines will command higher prices. H2: even after controlling for wine quality. H3: price differential for distinctive names will be higher for high-quality wineries than for low-quality wineries. Scrubbed la, de, des, chateau and computed pairwise similarity scores b/t each wine name and every other wine name. Measured similarity by nearest ten neighbors.

H1 supported: highly similar wines: $13.44 expected price. Highly dissimilar: over $27.

H2: assume a rating of 90, a median good score. 21.68 versus 25.02, so the price premium persists, about 15%

H3: low rating wines, difference is $2.21; high rating, difference is $9.59 both about 200% price difference

We don’t detect meaningful distance costs, that is, being too unique—but there aren’t any Chateau XZMOXO or the like in our datasets, so we might not see that.

We detect no price benefit for low priced wines that might have gotten a boost from similarity to high-priced neighbors. “Chateau LaTour Margot” not so good.

Why don’t they switch? Tradition? A lot are owned by multinationals, so why not?

Congestion is a problem, and TM should continue to push brands away from linguistic core

We also don’t have enough variation in quality data to identify effects of investments in quality on differently named types.

Fromer: Is it possible that having a similar name decreases incentives?

A: Even among the high end there are lots of very similar names. Very hard to tell; not making causal claims.

Calboli: are there registrations?

A: probably not. Certainly not in 18^th century.

Calboli: Would like to know whether logos help distinguish—crests of specific noblemen.

A: trying to pull, but there aren’t pictures in many circumstances.

Calboli: how often are there overlaps on a given menu? Distribution might differ.

A: Yes and no.

Q: does any law govern name changes? Champagne region has weird rules I know.

A: probably; also a ton of social pressure.

Calboli & Izyumenko, Role Models Matter: Surveying Gender Gap in Intellectual Property Teaching in Institutions of Higher Education

Inquiry will span US, Europe, Asia (where numbers of women are lower, especially in higher positions). Data collection and surveys.

Questions about data collection?

Mazzurco: extending the tenure clock as an issue: Women have to extend their tenure clock b/c if they take leave, they can’t write while they’re on parental leave b/c they’re taking care of a newborn; men often don’t take leave or if they do, they are able to write while they are on leave so it’s an extra benefit for them.

A: that may also affect pay.

Q: you should also ask the same questions of men to learn about whether there are differences in treatment/responses/perceptions.

WIPIP Panel 2B Copyright: Authorship, Ownership

Newman, Adoption as Authorship

Concept of being an author: personally generating all the sensory signals other humans will process as part of the work—comes into being because my mind decides to put it there and my body guides it. Certainly in authorship disputes between the person who generates the idea and the one who creates the detailed expression, the latter is favored. But then it gets more complicated. Setting up a shot versus clicking the button to take the shot: Sarony. What matters is whether you had a clear intellectual conception and you used tools to embody the expression. To be an author is to have a fully formed work in your head and transcribe it in some medium? But even that is a bad model of authorship usually. What happens is more: I generally know what I want to say, and engage in trial and error to see what I can get on paper that makes sense. It probably bears some relation to what I started with, but not identical. The fundamental act of authorship is getting to some point where you recognize some set of signals that you recognize should have communicative meaning that you adopt as a communicative act. Until adopted, it was just a set of signals; adoption makes it a communicative act. Alfred Bell’s famous dicta: defective musculature or clap of thunder can be adopted. Don’t want to limit it to only the final product you choose to publish—if you’re engaged in working, it’s inherently adoptive, whether or not that’s your final product. Jackson Pollock: if one of those, he didn’t like the result and chose to discard it, that canvas is not a work of authorship.

RT: Read Karen Gover, Art and Authority. You aren’t saying the core is adoption rather that it’s the union of conception and adoption – have to already be engaged in a process of creation, not just wandering down the beach looking for driftwood—Duchamp’s urinal, or adopting the Constitution or the Rifleman’s Creed as your own expression.

A: he does think picking up the driftwood is expressive but not eligible for copyright because it’s a preexisting fact, just like using AI and picking a result might produce expressive work that’s not created by you. [RT: then what makes your theory a theory of copyright and not a theory of art?]

Betsy Rosenblatt: introducing intent? What about private works?

A: publication isn’t important, but communicative intent is. You can adopt something as your unpublished work.

Buccafusco: you’re defining authorship, not originality. [I will note that Feist seems to conflate those two.] There are some cases of authorship that might not have originality.

Q: if you reject a bunch of photos as bad, are you an author of them?

A: you took the photos with the intent of making a work, so probably. There’s some sense in which the subsequent act of reviewing the works I’ve generated/caused to be generated and identifying which are satisfying should be regarded as important.

Q: fixation as a proxy for adoption, at least as of 1976? Compare to Hemingway common law copyright case.

Op den Kamp, First: Shifting Benchmarks in Film History, Copyright, and Archival Practices

Palmedo, Lutes, & Safner, The Demographics of Authorship in the United States

Video essay about Leland Stanford’s commissioning of Edward Muybridge to try to determine whether horses’ feet left the ground all at once during a gallop. Copyright claimed 1878 by Muybridge, but Stanford published The Horse in Motion in 1882 with Muybridge’s name left off title page, mentioned only as technical assistant. Royal Society in UK shut him out as a result. Stanford used photos as raw material, informational only.

Rosenblatt: Muybridge did achieve IP protection, just couldn’t capitalize on it as he wanted to b/c Stanford was so powerful. Is this a story about IP or about power? The power of narratives to swamp law?

Q: but was Muybridge really a lone author or was there real collaboration?

A: Stanford is able to produce witnesses who say he paid for everything even though there are no written documents—it’s about the greater tensions in his wealth (letting M live on his land for free, etc.). Though he knew for years that M was registering © and taking out patents on inventions.

Brent Lutes, Demographics of Copyright Registrations in the US

2011-2022 applications; 9 most registered types of works; registrations by individuals; using registrations per person per year by zip codes; geographic matching. When you control for education, effects of income on registration go away—so income was a proxy for education. Education also drives a lot of the racial/ethnic data. Urbanness is also important: population/housing density. 10% increase in urbanness increases copyright registrations 5.5%, not coming from numbers or income—probably an agglomeration effect. Age also matters too—older adults register more than younger adults, even controlling for education and income.

Raw correlations with racial/ethnic groups were significant; if there were educational and income equalities, the range would shift a lot, but Native Americans would still not be registering very much and multiracial groups would be registering a lot. More diverse areas are associated with more registrations, but we don’t know which way the causation flows. We also know that urbanness and diversity are correlated. Controlling for urbanness, still there’s a positive statistically significant relationship with diversity.

Karol, American Art's Little Copyright Secret: Why So Many 20th Century Artworks Are in the Public Domain and Why That Matters

Basic claim: most works were published and placed in public domain when first exhibited for sale in commercial art galleries with no notice and no restrictions on copying. We should presume, absent contrary evidence, that midcentury visual art shown in a gallery for sale is in the public domain unless the estate/foundation demonstrates otherwise. Limitations: American art before Jan. 1, 1978. So roughly 1930-1977. Example: image from an art show from a photographer who was in there—making copies—without restrictions.

Publication without notice terminated ©. Exceptions for limited publication. American Tobacco v Werckmeister 207 US 284 (1907), pre 1909: no general publication because bylaws of Academy, where work was exhibited, expressly prohibited copying.

Letter Edged in Black, ND Ill 1970: No restrictions on copying, thus work of sculpture is in public domain. Others, including state court cases, reason similarly.

But publication under the 1909 Act is notoriously outcome-driven—MLK “I Have a Dream” case example b/c courts often think that preserving © in canonical works is important.

Museums as interest groups in support which would help them digitized collections?

Courts should not worry about issues going forwards since this is only for pre-1978 works. But will publishers accept the truth?

Deborah Gerhardt: Why not go all the way to 1989, when notice was eliminated fully as a requirement? Also, it’s not just visual art! Film, other modalities.

WIPIP, UNLV: TM Protectability

Jeanne Fromer (with Beebe and Stein), An Empirical Picture of Trademark Law

We are running out of competitively effective word marks. What about images? Word marks dominate consistently over time, but numbers have increased in every category. Our definitions: images include image only, text+image, and stylized word marks. Live image marks over time keeps increasing, with a lot of text+image and a growing number of others.

Inadequacy of TM law: visual depletion and congestion; difficulty handling visual similarity in confusion analysis; difficulty handling visual distinctiveness in the sense of source identification.

Empirical questions: are we running out of visual marks? What are changes over time in classes? Applicant behavior?

2003-2023: image only, 200K office actions, image+text, 500K office actions. 79.1% of case files contain images.

Design search codes: 3 level taxonomy of 29 top level categories such as human beings, foodstuff, supernatural and other beings, and furniture; 157 second level categories, such as trees/bushes, cutlery, and bells; 1400 third-level categories, such as Dutch women. Shades of “those belonging to the Emperor.” All sorts of weird racial categories. (I wonder if this will be purged by the new administration.) Design search codes can be added by the PTO or suggested to be added/changed by applicants. Need to find more about the process, which seems quite informal.

In class 25, apparel, for all 2023 live marks, only 50 of the 1400 noncolor design search code categories are not claimed (e.g., Scotch women). Geometric figures & solids is pretty crowded, same with animals. 32 marks with images of a dove in class 25. When a word is taken, it’s taken; are these all different doves capable of coexistence? Also, image+text with image of dove is 74, and 16 word only marks.

Visual complexity: is number of design search codes per mark increasing over time? Is resort to geometric marks increasing or decreasing? Can we measure complexity with an AI model?

Likely confusion: McCarthy says there’s little in the way of guidelines to determine degree of visual similarity that causes LOC; no point in launching into long analysis, only thing to say is I know it when I see it; court case agrees.

Increasing 2(d) refusals over time—but that seems possibly to be based on text, not on the images, b/c examiners have difficulty finding similar images based on tools they have (her hypothesis)

Distinctiveness: Abercrombie for word marks, Seabrook for non-word marks. 2d Circuit continues to try to shove non-word marks into Abercrombie, but most other circuits use Seabrook. Abercrombie focuses on distinctiveness of source. Seabrook looks at distinctiveness from other marks or ornamentation—differential distinctiveness. Suggestion: we should look for both! Consider things that are generic/descriptive for the classes for which they have design codes (e.g., a carpet design code for carpets).

Jake Linford: Thinks of both Abercrombie and Seabrook as asking the same question of sending the consumer a signal of branding.

A: that may be a proxy, but they aren’t necessarily the same thing. Flowers have nothing semantically to do with apparel, but are used in fashion.

Deborah Gerhardt: it can do both, like red for strawberry flavor.

A: yes, absolutely. Just reads Seabrook differently.

Felix Wu: psychology literature on images and how much distance between images we should require—can that tell us anything?

RT: holistic v. sequential perception of images v. words.

Rachael Dixon: People do try to game the system all the time—claiming a cannabis leaf was a maple leaf, for example. There are no design codes for poop emojis.

Sari Mazzuco: There might be a lot of space for congestion if there’s a lot of thin protection, like a thinly protected stylized “O.”

A: yes, that might be a difference from words, like a bunch of text+image marks with a name + image of a rug for rugs. (I wonder if the rug image should then be disclaimed.)

Grynberg, The Paranoid Brand in American Politics

Misinformation and trust. Can marketing tell us anything useful? Not interested in specific sources like NYT, but in mindsets. Institutional trust v. cynicism. Faith in liberal institutional structures with self-correction mechanisms v. cynicism about information as power.

Marketing framework: How Brands Grow, influential book w/contested theses—brands grow by improving their mental and physical availability—does the brand come to mind when purchase is possible? Distinctivess in their model matters more than differentiation. True differentiation is hard absent IP which can create faux differentiation; consumers don’t care nearly as much about brands as marketers do. Thus distinctive brand assets, like brand names, logos, jingles etc. around which memory structures may form, are more important than actual product features. Important: category entry points—moment that product category is relevant, opportunity for brand to come to mind—marketer can target these entry points. E.g., people might eat candy when taking a break from work. Kit Kat marketing is built around “take a break.”

Any worthwhile application to information problems? Ideas as brands: “Government can’t do anything right.” What views are mentally available if there’s a line at the DMV?

Branding trust v. cynicism: “trust the science” v. “do your own research”

If differentiation isn’t so important: Both can fill the need of explaining the moment, framing read of a news source, providing a course of action, entertaining, etc. We “shop” from both mindsets. Institutions often act in a non-trustworthy way, meaning the paranoid view is sometimes correct.

Structural advantages for cynical brand: building reach is cheap: flooding the zone with shit; ease of tailoring to audience, emotion/outrage; ease of tailoring to whatever is happening; institutional supports. Decline of reported journalism and expense of real journalism. Suitability for short, high-volume consumption like social networks. Decline of gatekeepers.

What can the trust brand do? Targeting entertainment, education/civics, smoothing contacts with government like pre-filling tax forms as an anti-disinformation measure; understanding the need for volume/reach. Problem: Nuance complicates mental availability.

Does this perspective yield anything that is interesting or distinct from what’s in the ether?

Branding and the anti-democratic moment? Democratic systems are open to multiple sources of information and strong self-correction mechanisms. Populist view is that everything is about power. Closed systems are dictatorial. Populist branding activities are also organizing/control activities in an attention economy.

Q: maybe trust/cynicism isn’t the right dichotomy. Positive v. negative claims—reliability v. they’re bad is also in the marketing literature. Where is the position of rational ignorance for a consumer? Maybe now we start in a position of distrust and people look for reasons for trust, which is why Trump has fewer problems than Dukakis.

Dickson, X Doesn't Mark the Spot: When Name Changes Fail

89% of marketing emails in July 2024 still called it Twitter. Some of the most visited English language news sites in the world still use Twitter in their reporting. Other rejected name changes: The Willis Tower is still the Sears Tower; the Mario Cuomo Bridge is still the Tappan Zee; the Ronald Reagan National Airport is still National. Stadium name change rejections are also common. People are still mad about Macy’s buying Marshall Field’s and changing the name to Macy’s in 2006—protests continued to 2012 and beyond.

Why do companies change names? (1) bankruptcy/going out of business; (2) mark super racist; (3) merged/bought out; (4) poisoned/killed people; (5) terrorist group is using name of our company like mobile payment system ISIS.

Why resist? Neuroscience: stickiness, anchoring bias; nostalgia; local pride, fears of encroaching outside forces; sense of community; disapproval of person or entity related to name change.

Could companies actually retain rights to marks they haven’t been using in years based on consumers’ continuing use of these names? Public use doctrine for nicknames like Coke might help them, as in Coca-Cola v. Koke, even though Coca-Cola discouraged used of the name at the time due to cocaine connotations. Bud for Budweiser, VW Beetle got rights in Bug. Yankees got to stop “Baseball’s Evil Empire.” Even public use of VDS to refer to VCDS.

Can the public use doctrine overcome abandonment? Even when companies have actively discouraged use?

Many companies that have rebranded have managed to keep their registrations alive for years after abandonment with really sketchy/bad specimens: Twitter’s renewed in 2024; Washington football team renewed its old name with a specimen article about its past use. Marshall Field’s renewed with a picture of a sign on a building that didn’t even match the claimed mark; so too with National Airport.

Q: another reason/explanation: resentment of participating in someone else’s marketing campaign—especially if the stadium name changes every 3 years. (Also defends renewal of Washington team mark to prevent other people selling merchandise.)

RT: This set of examples is a really good illustration of Jessica Litman’s insight that we participated in creating value of TMs too. Indianapolis Colts case would say that when there’s no continuity b/t old and new marks, there’s no interest for the new owner to assert—today, I think we would consider that also in the register of Article III standing.

Linford: thinks that courts would find standing based on the idea that consumers would punish the old owner b/c the connection remains.

Irene Calboli: it’s different with X because reporters say (formerly Twitter) and that’s different from having people still carrying around Chanel bags in Russia even though Chanel no longer sells in Russia—those are different kinds of contexts that have to be recognized.

Q: contrast: what are the characteristics of name changes that do stick? How long do the changes take to stick?