Commercial speech conference: send lawyers, blogs and advertising

(With apologies to Warren Zevon.)

Anthony Ciolli, University of Pennsylvania (law student), Are Blogs Commercial Speech? Regulators have begun to look at blogs, but there’s considerable constitutional ambiguity. State bar associations (KY and NY) have proposed treating lawyer blogs as commercial speech. Lawyer blogs, they say, are primarily a means of advertising. A well-written and timely blog can certainly improve a lawyer’s prospects – there are even entire companies built around legal blogs as marketing tools. But attempts to call all lawyer blogs commercial speech have not been warmly received. Lawyers protest that their blogs are like law review articles and books, which are fully protected even though they may also confer professional benefits.

(Disclosure: Though my general stake in this issue is obvious, I have a specific interest: I am licensed in New York and thus the new New York rules apply to me. I believe that, though this blog constitutes fully protected noncommercial speech to which New York’s substantive rules could not constitutionally be applied, it is nonetheless in compliance with a proper application of those rules by disclosing my name and affiliation. I do note that New York’s rules as written apply to non-legal blogging by lawyers, and that I consider the rules entirely unconstitutional as applied to such blogging, especially as they purport to ban anonymous speech.)

Blogs that merely carry advertising (e.g. through Google’s AdSense), shouldn’t be considered commercial, though cross-promotion of legal services could be. Technological change, however, has often produced changes in legal standards, and that might happen here. Newspapers aren’t really proposing transactions when they run ads; they are conduits for ads paid a flat rate for circulation. Ads on blogs, by contrast, pay for performance. This causes many blogs to integrate ads with blog posts to encourage readers to click on links, or even integrate a partner Amazon link with a post about a book or other product. A court might be more likely to put such a blog in the commercial speech category. Given that some bloggers attempt to hide commercial connections, a minimum of disclosure rules might be a good idea.

James Lake, Thomas & LoCicero, Speaking Legally and Freely: Lawyers, Websites and the First Amendment. Lawyer advertising – or perhaps speech – on the internet makes the commercial/noncommercial divide very salient. Is anything a lawyer says on a webpage commercial speech? If it’s seeking clients, sure. Advertising our education and experience and noting that we provide legal representation are activities that serve our economic interests, and states have tended to treat such webpages like any other form of advertising – Iowa sanctioned a lawyer over a website claiming that “our firm’s scholarly achievements” were better than anyone else’s, and that the firm had obtained overwhelmingly favorable results in drunk driving cases. The fact that it was a website didn’t make a difference.

But we also use the internet to discuss developments in substantive areas of the law, post scholarly articles, etc. Much of that speech is calculated to impress existing and potential clients, but that’s not enough to make it commercial speech. Florida has applied disclosure requirements to websites, but without evidence that its requirements were insufficient, considered applying the same standards to websites as to TV or print ads, which would have banned statements about past results, testimonials, etc. The board also considered restricting access to law firm websites, such as with a password, to get to portions of a website that might have a lawyer’s resume. (What were they thinking?) This just ignores First Amendment interests.

Jay Bender, partner, Baker, Ravenel & Bender, South Carolina Attorney Advertising & Web Marketing Update. The South Carolina Supreme Court doesn’t much like lawyer advertising. The newest rules are from 2005, and hit all the problem areas defined by Central Hudson by limiting truthful and valuable speech, compelling speech in direct mail advertising, and taxing advertising by requiring every ad to be filed with the bar along with a $50 check. And to add insult to injury, they don’t even scrutinize the ads for truth, because that’s the attorney’s job. In a state that can’t compel people to use seatbelts in their cars, why can the court limit what truthful things we can say to people who might purchase our services?

The question is how much paternalism is constitutional. For years, it was illegal to advertise the price of eyeglasses in South Carolina. So, people would drive to Augusta, where price advertising was allowed and glasses were thus cheaper. For years, it was illegal to advertise the prices of milk. The political culture is willing to say that the government knows best.

Commercial speech conference: Mary LaFrance on dilution law

Mary LaFrance, Are Dilution Laws Unwarranted Restrictions upon Commercial Speech? Traditional TM and unfair competition laws easily survive First Amendment scrutiny because they target false and misleading speech, like defamation laws. Dilution laws, however, are not aimed at false or misleading speech, but at plugging a perceived gap in trademark law and allowing owners of famous marks to protect against nonconfusing uses that nonetheless affect the value of the mark. Examples of blurring: the song “Barbie Girl,” which leads consumers to think both of the song and the doll when they hear later references to Barbie; Utah’s advertising for “The Greatest Snow on Earth.” Other scholars describe this as a free-rider problem.

First Amendment concerns apply to a greater extent in the dilution context than in the traditional trademark and unfair competition context, because dilution laws lack the justification of protecting consumers, which provides built-in First Amendment insulation. Dilution penalizes nonfraudulent commercial speech, and protects only the TM owner. (Note: There is a growing tendency to justify dilution on consumer protection grounds with a theory of “internal search costs.” I’m writing about this now. I don’t think it solves dilution’s First Amendment problems, but one reason the theory is attractive is that it appears to rebut LaFrance’s position.)

The federal dilution statute has a generally effective exception for noncommercial speech referencing famous trademarks. Most state laws lack such an exception, and expressive works have unconstitutionally been subjected to liability under state laws by speech-insensitive courts. And of course the line between commercial and noncommercial speech can be elusive. People often enjoy ads as entertainment, and ads can challenge sensibilities and spark debate, as for example the Snickers Superbowl ad featuring an inadvertent male-male kiss that has been attacked as homophobic. Advertisers increasingly sponsor shows and integrate their products with storylines. Moreover, commonplace merchandise – coffee mugs and T-shirts – often have expressive meaning, whether it’s displaying the name of a sports team or making political commentary. Yet courts frequently treat these items as less entitled to First Amendment protection than traditional forms of expression. Dilution laws will chill these nontraditional yet highly effective forms of communication.

Today, however, LaFrance wants to focus on the most mundane commercial speech. If dilution laws are justifiable at all, it must be because they are justified with respect to mundane commercial speech – using marks to identify goods and services. The interest in protecting trademark owners, however, is insufficient to justify these restrictions absent a consumer protection rationale. This is especially true because injunctive relief is preferred in dilution cases, and because courts allow injunctions on proof of “likely” dilution without proof of actual harm. Blurring and tarnishment are ill-defined, and it’s difficult to see how one would find evidence of actual dilution.

Absent fraud, what property interest could justify denying commercial speakers’ ability to choose marks? Under Central Hudson, the asserted government interest must be substantial. The regulation must also advance the asserted government interest, and the government must demonstrate that the harms it identifies are real and that the restriction will alleviate those harms in a material way. Finally, there must be a reasonable fit between the ends and means – a tailoring requirement.

LaFrance believes that dilution flunks the substantial government interest prong. She is also interested in whether dilution is content-neutral. Tarnishment is not content-neutral, since the purpose is to allow the TM owner to prevent criticism and control how people feel about the mark (ultimately, this is also true of blurring, which can also dull the golden glow of a strong mark). This is why Christine Haight Farley calls dilution state-enforced mind control. LaFrance is less sure about blurring, since the defendant’s message is simply “buy my goods,” and the blurring doctrine isn’t designed to suppress that message, but rather to bar the use of a particular shortcut – copying a famous mark. (If the tarnishing use is pure commercial speech, this would also seem true of a tarnishing use – Tiffany’s strip club, for example, is using free riding to sell its product and only incidentally tarnishing the Tiffany’s mark. But perhaps this reduces to the question of whether there can be a tarnishing use that does not also blur.)

In copyright, the Supreme Court made clear that damaging a work’s reputation through parody is not tortious, but merely an expression of opinion. The same is true of tarnishing use; the government has no interest in suppressing such commentary, even in commercial speech. What about blurring? There’s never been any proof that a mark loses value by being shared. Free riding is not the same as stealing existing market value from the TM owner.

Perhaps it would be better to dispense with injunctive relief and require proof of damages. But legislative amendment in this direction is unlikely. Thus, courts should refuse injunctions on First Amendment grounds. Damages are available under the federal statute for willful dilution, if proved. If we did this, we could find out whether there is any harm from dilution, and maybe we’d get grounds for injunctive relief. LaFrance suspects, however, that no harm arises from dilution.

2007 AALS podcasts

Now available: the Jurisprudence/IP sections joint session on the morality of copyright disobedience (mp3) and the Art Law section session on antiquities law (mp3), which I moderated, as well as other sessions in which I was less involved.

Ellen Goodman on peer advertising

Ellen Goodman, Rutgers-Camden, Peer Promotion and Advertising Law. Advertising Age picked “the consumer” as the Agency of the Year for consumer-generated advertising. There are dramatic decentralizing shifts in the creation and distribution of information, including advertising. This has costs and benefits advertising law is not well-prepared to address.

Peer promotions present for advertising law the same challenges that distributed digital communications have for IP – can regulatory purposes be achieved when authorship is in flux and control is difficult? Marketers seek consumer-produced ads to create buzz around the brand and break through the clutter. Chevy allowed users to create their own promotions for the Tahoe, and some users mocked the Tahoe for its gas consumptions; executives insisted this was the price that had to be paid for engagement. Hoping to get the benefits of buzz and still retain control, marketers this year ran a contest to create amateur Superbowl ads.

Other forms of peer-generated marketing: wikis and blogs about products. People express enthusiasm while having no economic interest in the brand – for example, consumer imaginings of what the iPhone would look like before it was announced. Mixed production also exists, as with the Mentos/Diet Coke video that was peer generated but then advertiser adopted. User testimonials solicited by the advertiser – Volvo will now post both positive and negative comments on its official site. Peer-generated content may even be advertiser sponsored, as with a blog that told the stories of happy and grateful Wal-Mart workers sponsored by “Working Families for Wal-Mart,” which itself is sponsored by Wal-Mart. The author insisted that this was his own authentic, noncommercial speech, and that Wal-Mart funding was no different from being paid by a newspaper.

False peer marketing – advertiser-generated, but looks like peers. For example, a fake blog run on behalf of the Sony PSP. When Sony’s ownership of the domain name was made public, Sony took the blog down. Marketers have been more savvy on MySpace, creating “friends” to try to get buzz.

These developments are extensions of integrated marketing – integration between ads and PR; integration between consumer and brand; integration with branded entertainment; buzz marketing and peer-generated promotions are applications of the theory of total integration. It’s a third stage of marketing innovation, following innovation and then image advertising.

At each stage, law has had to ask how marketing can cause harm and whether regulation is worth the costs it imposes. Informational advertising prompted the development of the FTC and state regulation. The rationale is a search costs one: good information helps consumers and bad information hurts them, so we try to sort. Information theory quickly identified image advertising as beneficial to consumers as well – advertising is expensive, and so it’s a signal to consumers of product quality. But it may create false images, such as the association of Marlboros with masculinity, and may be far more persuasive than informational claims. But the law reflects the conclusion that this kind of harm isn’t within the law’s power to address without a factual claim; it’s too hard to regulate and too dangerous for free speech.

The effort to balance consumer harm and free speech is central to regulating integrated advertising as well. The Supreme Court allows regulation when the noncommercial elements are easily separable from the commercial. Nike rebutted child labor allegations in an integrated campaign that used ads, PR, communications with large-scale buyers, and other formats. Nike got sued, and the California Supreme Court held that false advertising law applied to some of Nike’s communications. This was a fairly faithful application of the mixed-speech case law, even though it’s been much criticized. It’s consistent with courts’ determinations of what’s commercial speech under the Lanham Act.

Doctrinally, applying advertising law seems relatively straightforward. Pure peer promotions are noncommercial speech; the consumer doesn’t stand to benefit from the transaction s/he suggests you enter into. This doesn’t mean there’s no harm – there can be all sorts of material misstatements. But even more than with image advertising, regulation’s costs would outweigh its benefits.

Once the advertiser adopts the peer-generated ad as its own, as with Superbowl ads, this would seem to become the advertiser’s speech, and purely commercial; the original source of the production doesn’t matter. The same can be said for false peer promotion. Far more difficult is peer-generated, but advertiser-sponsored, speech – like the Wal-Mart blog.

Authorship is not clear: if the consumer doesn’t know an advertiser is speaking, is the risk to the consumer greater or less? Is regulation more or less likely to chill speech? The law hasn’t addressed these issues yet. Advertisers assume that peer ads are highly credible, which supports regulation because it indicates that consumers are more likely to be misled. But if consumers are the real authors, then this means regulating noncommercial speech.

Maybe peer advertising is not credible, because consumers don’t believe the source has any special knowledge. In that case, the claims wouldn’t be material and false advertising law wouldn’t apply. Widespread skepticism could undermine the basis for all false advertising law; if nothing is believed, then no ads are materially false and regulation has no purpose.

Goodman believes that the harm of hidden sponsorship is a discourse harm, not a consumer harm. Hidden sponsorship destroys our trust in sincerity. The remedy is widespread sponsorship disclosure, currently embedded as a norm in journalism. The sponsor should disclose a relationship when consumers might not understand that the relationship exists and might be fooled.

Commercial Speech conference: Ann Bartow

Commercial Speech in an Age of Emerging Technology and Corporate Scandal, sposnored by the South Carolina Law Review, the USC School of Law and the USC School of Journalism and Mass Communication

Ann Bartow bravely stepped in for Alfred Yen, who was prevented from attending by weather-related delays.

Ann Bartow, South Carolina, Trademarks of Privilege: Naming Rights and the Physical Public Domain. Trademark law is about the power of words, getting lumped in with IP like patent and copyright, but it’s different – it is directed at the commercial power of words. We don’t need to incentivize the use of words as marks; you need to earn the right to do so in ways other than by creating or innovating.

Here, her topic is naming arrangements for public buildings. She’s not against philanthropy, but she’s not a fan of quid pro quo naming where the amount of the required gift is mysterious, flexible and subject to gaming. More related to TM, she objects to the failure of corporate owners to admit that “naming” is a non-TM use of marks, and can actually look like intentional deception of consumers. Enron Park is now Minute Maid Park; Minute Maid does not own the park, but just gave some money. It’s an ad, but it’s not a TM, educating consumers about the source of a good or service. Finally, she objects to honorific naming that free-rides on public facilities and public good will, for example public buildings named for current politicians, especially if the criteria for naming aren’t publicly articulated or accessible.

Why does Colonial Life get its name on the Gamecocks’ stadium? It is not clear what information the name is supposed to convey to consumers. Did Colonial submit the biggest bid? Does it participate in managing the stadium? Who knows?

Likewise, South Carolina has been Thurmondized – what exactly are the mechanisms of naming honors? Is Strom Thurmond a trademark, and if so what does it signify? South Carolina-ness? On occasion, politicians have renamed things – like Clark Hill Lake, SC – in Thurmond’s honor, without consulting locals.

Street names are also named by the government, but become part of one’s personal identity. In a way, they constitute compelled speech, especially if the government then changes the name on you. The standards for street naming are unclear and usually undemocratic, disproportionately given to politically connected white males. There are political tensions over the advisability and nature of the naming “honor” (e.g. Martin Luther King, Cesar Chavez, Rosa Parks, which are names that signal what kind of people live in that area; wealthy people resist renaming their streets in honor of Martin Luther King because it will lower their property values).

What’s the effect of naming? Visibility, endorsement, reward for service, elevates standing of the entire family. Naming has historical impact in communicating to future generations who we thought was important. In South Carolina, the Civil War is built into the public domain. Students in at least 20 districts attend public schools named after Robert E. Lee, whereas heroism in WWI and WWII has attracted less public memorialization.

Trademark law is premised on the commodification of associative value and social meaning. Bartow’s work asks us to interrogate the mechanisms and rationales for this process.

Love loses out

Just in time for Valentine's Day.

Love v. The Mail on Sunday, --- F.Supp.2d ----, 2007 WL 458050 (C.D. Cal.)

As the court notes with near-palpable weariness, this is the latest iteration of longrunning disputes involving the members of the Beach Boys. Here, plaintiff Mike Love alleged that defendants created and distributed a covermount CD of Beach Boys and Brian Wilson Material, performed by Brian Wilson. He claimed that the CD and associated advertisements violated various of his rights; the only claim at issue in this motion was the Lanham Act claim based on the CD’s use of Beach Boys photos that included Love’s image, and on the use of “The Beach Boys” on the CD and related ads.

The CD was distributed in the UK, and allegedly promoted on UK TV and the internet. Plaintiff’s claimed losses include damage to existing and future sales of Beach Boys albums and concert tickets and tarnishment of the Beach Boys mark.

The court ruled that plaintiff was seeking extraterritorial application of the Lanham Act, which was not available to him. In order for the Lanham Act to apply to foreign activities, (1) the alleged violations must create some effect on American foreign commerce, (2) the effect must be sufficiently great to create a cognizable injury, and (3) the interests of and links to American foreign commerce must be sufficiently strong in relation to those of other nations to justify assertion of extraterritorial authority.

Love’s claims flunked that test. The allegedly infringing acts occurred overseas and were not authorized in the US (in fact, Wilson’s lawyer apparently told one of the overseas parties to get permission from the individual Beach Boys to use their images, which he recommended against in any case since the CD was focused on Wilson). The CDs weren’t distributed in the US, and the US defendants didn’t engage in any distribution. The only evidence of distribution in the US is via the secondary market for used CDs on eBay, but the court disregarded evidence of a single US sale that way because plaintiff didn’t disclose that the sale was to his attorney’s confederate.

On these facts, there’s no evidence of any effect on US commerce. There was no evidence about the “attenuated” effect the CD might have on increasing demand for Wilson’s concert, in turn decreasing demand for Love’s concerts, other than Love’s own purely speculative declaration. Without effect (1), there could be no harm (2). Also, in relative terms, the UK had a far greater interest in the matter. English law governing Love’s claims differs significantly from U.S. law. English law doesn’t recognize a right of publicity, analogous to Love’s claim for wrongful use of his “persona.” Moreover, the analogous UK claim of false endorsement is narrower than the US version. Because the conduct may have been lawful in the country in which it occurred, US law shouldn’t be applied. Numerous other factors also supported this decision, including the fact that the parties who actually engaged in the allegedly infringing conduct are domiciled in the UK and had already been dismissed from the case for lack of personal jurisdiction. None of the cases cited by Love were sufficiently similar to the instant facts to change the court’s analysis.

On its own motion, the court dismissed Love’s claim for unfair competition under California law, since the only basis for alleging unlawful and deceptive conduct was the Lanham Act claim, now dismissed.

Seagull becomes albatross for multilevel marketer

Thanks to Greg Lastowka for pointing me to this case:

Bach v. Forever Living Products U.S., Inc., 2007 U.S. Dist. LEXIS 8424 (W.D. Wash. 2007)

Plaintiff Richard Bach wrote a book, Jonathan Livingston Seagull, which was published in 1970 with photographs by plaintiff Russell Munson. Defendants (FLP) make and distribute health and beauty products through multi-level marketing, and also provide management services for U.S. resorts. Plaintiffs allege that defendants used a copyrighted photo from JLS as their corporate logo, and have used excerpts from JLS in their advertising, promotional, and training materials directed at independent distributors and end-users. They allege this is copyright infringement as well as trademark infringement and false endorsement.

Defendants used the name and title of JLS, as well as the image of a white seagull on a blue background, extensively. For example, “in a 2003 promotional video, FLP's marketing director stated that FLP's brand is ‘the Jonathan brand,’ and that ‘Jonathan is really the basis of what Forever is about.’” FLP has called its seagull logo “Jonathan” or “Jonathan Livingston Seagull” since the company was founded in 1978. For over twenty years, it has given “Jonathan” bonuses to successful distributors, called its distributors “Jonathans,” given “Jonathan Livingston Seagull” statues to top sellers, and held “Jonathan Days” to motivate distributors. In a 2005 Style Guide, FLP specified how a white seagull on a blue background – an image “strikingly similar” to the cover of the U.S. edition of JLS – was to be used in signs, flags and banners.

In a sensible interpretation of Dastar (that is nonetheless, like many sensible things courts do, somewhat underexplained), the court ruled that both the copyright and trademark claims could proceed, because the two areas of law protect against different wrongs. The key is that there are two different wrongs in this case, though there may not always be. That is, plaintiffs’ copyright claims target defendants’ copying of the cover photo and excerpts from JLS, whereas the trademark claims target defendants’ use of the character/title/trade dress of the book in ways that served to brand defendants’ products. Though the court doesn’t use the term, the key here is defendants’ alleged use of Jonathan Livingston Seagull “as a mark” rather than their simple copying, which would be nonactionable under the Lanham Act after Dastar.

Significant issues of ownership of the alleged marks do remain; because they’re all unregistered, Bach has the burden of proof to establish his rights. Among other things, there’s a question whether Bach forfeited any trademark rights in “Jonathan Livinston Seagull” through naked licensing of the movie rights. The court found that a contract giving Bach approval rights for certain aspects of the film, like the score, the title, and the final cut, and evidence that he may have exercised informal control over movie merchandising, created a factual question for later resolution. Bach’s reservations of “droit moral,” however, did not factor into the court’s decisions, because he had no such moral rights in the US and thus that contract provision didn’t give him any relevant control.

A separate issue was whether plaintiffs owned trade dress rights in the book cover design, a white seagull in silhouette against a blue background. Not all editions of the book bear this design, creating further factual issues (framed here as ones of abandonment); because S&S exercised control in the US, and because S&S asserted that it would pursue trademark infringement claims against another book that looked like JLS, the court refused to rule in defendants’ favor at this stage. More interestingly, defendants argued that the owner of the rights, if any, was the publisher, Simon & Schuster. In April 2006, S&S conveyed any interest it owned in the book trade dress to plaintiffs, as did the heirs of the book cover designer in May 2006. Defendants argued – with reason, it seems to me – that the assignments were unhelpful because trademark rights can’t be transferred apart from the business with which the mark has been associated. But in this context, the court reasoned, the goodwill associated with the book was already more the author’s and the photographer’s than the publisher’s. Thus, the assignments were consistent with the trademark policy that goodwill should serve to maintain continuity between a source and a product or service.

Indeed, the court ruled, plaintiffs have standing to sue for infringement “regardless of whether they own or owned the trade dress rights” because, under the relevant portion of the Lanham Act, they have standing if they’re likely to be damaged by the defendants’ conduct. They have a commercial interest in the mark, based on the damages and profits to which they’d be entitled if they win. “Because Plaintiffs have a right to royalties from others’ use of the Jonathan Livingston Seagull mark and trade dress, Plaintiffs have standing to sue under section 43(a) of the Lanham Act regardless of whether they technically own the trade dress at issue.” (Put that way, it seems just a bit circular. I’m not sure the court is wrong in outcome, but the question whether plaintiffs used the mark in commerce in a way sufficient to create federal rights is at least tricky. I’m willing to entertain the idea that they are the beneficiaries of S&S’s use, but it can’t be the case that ownership is irrelevant.)

A final factual issue was whether plaintiffs could show secondary meaning sufficient to establish the existence of trade dress. The court denied summary judgment based on plaintiffs’ evidence that JLS is one of the most widely read novels of all time and received significant publicity. (Compare to the PTO rule that no single title is registrable, because it remains descriptive of the specific underlying work; only series titles can be deemed to have trademark meaning.) Plaintiffs also pointed to defendants’ intentional copying, which is often deemed evidence of secondary meaning.

Defendants’ evidence against secondary meaning – the idea that the trade dress identifies a source rather than a product -- was, nonetheless, pretty good. They offered a survey showing 0% unaided recall of plaintiffs or of JLS among participants when presented with a seagull on a blue background. After they were informed that the image was from a book cover (which they wouldn’t necessarily think when seeing defendants’ non-book products), only 5% mentioned JLS. Moreover, in deposition, S&S stated that it didn’t use the book cover to identify S&S, but instead as “a marketing tool” for the product – the book.

Still, there were genuine issues of material fact on secondary meaning.

On likelihood of confusion, plaintiffs submitted depositions from several distributors who believed that defendants had the permission “of the people who owned the rights to the book” for the use of the name and the character. A survey found that 35% of current, former and potential multi-level marketing distributors believed that defendants had permission from the “owners of the rights," for net confusion of 31%. The court accepted the “permission” form of the survey questions, and found that the rest of the defendants’ criticisms went to weight rather than admissibility.

Defendants offered three surveys of defendants’ distributors and general consumers, including the survey that found 0% unaided awareness of JLS (moving up to 44% with “highly aided” awareness), but that just created a factual dispute. Defendants argued that “permission” is not the same as endorsement or approval, but the court held that a factfinder could draw an inference from consumers’ perception of permission to consumers’ perception of endorsement or approval.

Given the intentional copying here, defendants had an upwards climb. But not an insurmountable one at trial, I think, given the unclear evidence of secondary meaning. And there may be unresolved statute of limitations/laches issues as well.

Obama bin Laden mark refused registration

An alert student in my trademark class pointed out this Smoking Gun report that OBAMA BIN LADEN has been refused registration for various promotional goods on multiple grounds. First, BIN LADEN is inherently scandalous because of its association with 9/11, and thus not registrable. Second, the mark falsely suggests an association with Barack Obama or Osama bin Laden. (Really? How many consumers would seriously think that? The mark falsely suggests an association between Obama and bin Laden, but not one that goes through the trademark owner.) Third, by using the names of identifiable living individuals without written consent, the mark falls afoul of 2(c) even absent false association.

I'm just surprised that the 2(a) refusals didn't include disparagement. If BIN LADEN is inherently scandalous, than associating it with Barack Obama should be disparaging.

Readers may also note that the examiner who refused the registration was also responsible for refusing LIAR LIAR BUSH ON FIRE and KATRINA BLOWS, BUSH SUCKS -- Karen Bush.

Consumer fraud liability for physicians?

Williamson v. Amrani, --- P.3d ----, 2007 WL 419698 (Kan.)

The Kansas Supreme Court held that the Kansas Consumer Protection act applies to physicians’ statements to patients in the course of providing care or treatment. Allegations of willful failure to state material facts or willful concealment of material facts, however, require expert testimony that a reasonable medical practitioner would make those disclosures under similar circumstances.

Williamson sought treatment from Amrani for an old, disabling back injury. Amrani recommended surgery involving a surgical device and a bone graft. After surgery, Williamson was still experiencing pain, and Amrani recommended a second surgery removing the device. Williamson’s suit alleged that Amrani made misrepresentations about the benefits of the surgery – specifically, that it had a high likelihood of successfully relieving her pain and allowing her to return to work, when in fact the surgery had been unsuccessful in the majority of cases Amrani had performed it. She also alleged that Amrani willfully misrepresented or concealed material facts in that he knew or should have known that the surgery had “bad results” for a majority of his patients.

Amrani argued that the KCPA doesn’t apply to doctors’ professional conduct, and that the KCPA claims were an impermissible attempt to plead malpractice. The trial court rejected this general assault, but did grant his motion to require expert testimony about whether Amrani had a duty to disclose particular facts. No expert testimony was required to establish whether Amrani affirmatively misrepresented his experience or success rate.

Prior to trial, a different judge ruled that Amrani was entitled to judgment as a matter of law, because the KCPA doesn’t cover the medically-oriented interactions of a patient with a doctor. Given that the plain language of the law was broad enough to cover physician-patient relationships, that doctors were not covered by one of the law’s specific exclusions, and that other states had enacted specific exceptions for physicians when that furthered state policy, the Supreme Court reversed.

As for the expert testimony requirement, Williamson argued that, while a negligence action focuses on whether a doctor has met the applicable standard of care, here, what information a reasonable doctor would disclose under similar circumstances, a KCPA claim should be based on what information a reasonable patient would consider important. Given the complexity of the subject matter, the court agreed that expert testimony would be required to establish a duty to disclose, though not to establish an affirmative misrepresentation. This difference is a consequence of the distinction that state consumer protection statutes generally make between affirmative statements and failures to disclose, the latter of which generally have to be willful. Before there can be a willful failure to disclose, the court ruled, there has to be a duty to communicate the fact. And here, duty can only be established with reference to the standards of the profession. (This strikes me as special pleading for doctors – which may be justified; but asking whether doctors would consider it important to disclose something is different from asking whether patients would consider it important.)

Two justices dissented, and would have held that applying the KCPA is inconsistent with the statutory and regulatory schemes governing physicians’ conduct.

Playing Hardball pays off for Paramount in Illinois

Muzikowski v. Paramount Pictures Corp., --- F.3d ----, 2007 WL 416983 (7th Cir.)

“Robert Muzikowski has devoted years of his life to coaching Little League Baseball teams in economically depressed areas of Chicago,” the court began. After assistant coach Daniel Coyle’s book about the league Muzikowski co-founded led to a movie, Hardball, Muzikowski sued for defamation, arguing that a character “easily identifiable” as Muzikowski was portrayed badly.

In the case’s first trip to the Seventh Circuit, the court concluded that the district court shouldn’t have granted Paramount’s motion to dismiss, because Illinois state courts’ heightened pleading standard doesn’t apply in federal court for a claim of defamation per se. The district court then granted summary judgment to Paramount (and sanctioned Muzikowski’s lawyers for failure to comply with procedural orders).

The film Hardball told the story of a Little League coach named Conor O’Neill. Though the movie claimed to be a fictitious story not based on actual persons, O’Neill had many similarities with Muzikowski. “Both came from Irish-Catholic working-class backgrounds; both were involved in a bar fight in which they cut their hand; both were jailed as a result; both experienced the death of their father and financial difficulties.” There were also differences; some were unremarkable, but others showed O’Neill in a bad light: “[U]nlike Muzikowski, who had a history of alcohol and drug abuse that he successfully overcame, O’Neill was still an alcoholic at the time of the events portrayed in the film; O’Neill was a compulsive gambler; and O’Neill’s original motivation for becoming involved in the team was a selfish desire to pay off a gambling debt.” Muzikowski sued for defamation and false light invasion of privacy.

Because he was claiming defamation per se, he was not required to prove damages. Even a statement that’s defamatory per se, however, may not sustain an action if it may reasonably be innocently interpreted or reasonably interpreted as referring to someone other than the plaintiff. Illinois has a high standard – if there are two reasonable interpretations of a statement, the innocent one prevails, because damages are presumed in per se actions. In earlier proceedings, the Seventh Circuit ruled that the complaint adequately alleged that the portrait of O’Neill as an unlicensed securities broker was defamatory per se (Muzikowski is a licensed broker), and that showing O’Neill committing crimes such as theft injured his reputation. On remand, Muzikowski had the burden of demonstrating that no one could think that anyone but him was meant, and that the changes, far from supporting the idea that O’Neill was a different character, only served to defame him. Muzikowski didn’t submit evidence that there was no reasonable innocent construction of the movie, and the district court granted summary judgment.

The court of appeals affirmed. It’s an open question whether liability can be avoided “if the only details that distinguish the plaintiff from the character described by the defendant are themselves defamatory,” and the court was far from confident that Illinois would follow a rule that, the more defamatory the movie, the better the studio’s defense. Nonetheless, there were also non-defamatory differences, such as the different names and different family status of Muzikowski and O’Neill. Thus, reasonable viewers could see the connection between the two, but they were not compelled to do so. Given that the “of and concerning” element of false light invasion of privacy is basically the same in Illinois as the innocent construction rule, the court affirmed the grant of summary judgment on that claim as well.

On remand, Muzikowski had added various false advertising and consumer protection claims under the Lanham Act and state law. He argued that Paramount’s promotion of Hardball as “inspired by a true story” was false because of the extent to which his life story had been changed. The district court held that he hadn’t submitted sufficient evidence that the ads were false or that consumers had been deceived. It’s literally true that the film was inspired by a true story. Muzikowski submitted 18 affidavits from people who knew him who had seen Hardball and all believed that O’Neill was portraying Muzikowski. Given that the movie grossed more than $40 million, the affidavits fell far short of proving that a substantial segment of the viewers was deceived. Eighteen instances of confusion, under the circumstances, were de minimis.

Virtual Women: Patents

Panel 3, She Blinded Me with Science: Gender Issues in Patent Law

Moderated by Deven Desai, Thomas Jefferson

Dan Burk, University of Minnesota, Do Patents Have Gender?

Although women in the life sciences don’t patent as often as men, their patents are cited more often. In some cultures, patents on women’s work have been taken out by men to avoid the stigma for a woman of publicly claiming patent rights.

PHOSITA shows up in lots of areas of patentability. S/he is a legal fiction, but tells us whether you’re an “inventor” – whether you’ve come up with something that counts as an invention. Compare to the “reasonably prudent person” in tort law; many scholars have analyzed the extent to which s/he is really the “reasonable man” even after a change in label. A feminist reasonable person might be concerned more with connections to the community rather than separation or freedom from its constraints.

What about PHOSITA? One court has stated that the proper test is to imagine PHOSITA working alone in his shop, with the prior art around him. Masculine, isolated, incorporeal – he is thinking and not tinkering in the court’s description – and his relationship to the prior art is oppositional in that prior art is something for him to overcome.

Ways of knowing – Burk defends the idea of situated knowledge, knowledge in context and community. Case study: Edison drew on prior art for the lightbulb, and was enmeshed in a matrix of other inventors, financiers, his patent attorney, members of his scientific team, prior art looking for a cost-effective lightbulb. All of those coalesced in the invention; inventors can’t be divorced from context in the way that PHOSITA pretends.

Michele Goodwin, DePaul, Xerox Babies: Race, Power, Private Ordering and Procreative Freedom

There’s huge demand for biological resources and we haven’t answered many open questions, especially when the donors are still alive. Now living donations outpace cadaveric donations, e.g. ova and sperm. The federal government has only dealt with organ sales, not with altruism. We tend to attribute to altruism all sorts of characteristics that may obscure its actual content.

Here, a story of forgotten people: Marion Sims, the father of gynecology. He wrote about having epiphanies at 2 am and going into the hospital so that he could wake up his slaves and continue to experiment on them. Sims was able to patent the equipment he developed through his experimentation. Sims has statues and hospitals named after him, but we don’t know the names of the women who also, unwillingly, helped us get the benefits he did provide.

Today, there are concerns about the use of preimplantation screening and manipulation to create “superbabies.” The darker side of choice isn’t recent, but dates back to parents using their children to engage in “reproductive altruism” – parents who want to create and use a child to satisfy the needs of another child. Strunk v. Strunk: two siblings, Tom and Jerry, from Kentucky. 27-year-old Jerry, with the capacity of a 6-year-old, was confined to the state mental institution. 28-year-old Tom suffered from deadly kidney disease. Their mother wanted Jerry to give Tom a kidney. In the 1969 court of appeals ruling in Kentucky, the judges ruled that Tom had a good quality of life, was married, and was in college, so it would be good for him to get Jerry’s organ, and Jerry would receive a psychological benefit, so the court ordered the removal of Jerry’s kidney.

Goodwin identifies Buck v. Bell as the genesis of the state’s authority to intervene in this way. Almost all of the similar cases come out in favor of the parents’ authority to invoke state power on their behalf. Being outside the market does not mean being free.

Eileen Kane, Penn State Dickinson, Molecules and Conflict: Cancer, Patents and Women’s Health

Does IP limit access to the advances it was supposed to bring us? Cancer research today looks for targeted approaches identified through molecular biology. Four relevant molecules: taxol, tamoxifen, and herceptin, which disrupt cancerous processes, and BRCA1 & BRCA2, which can identify genetic risks for breast and ovarian cancer.

Taxol’s history involves attempts to monopolize the molecule past legitimate patent rights, eventually resolved by antitrust claims that spotlighted loopholes in Hatch-Waxman. Patents can be used to delay true competition with “evergreen” patenting techniques.

Tamoxifen also involved a patent invalidity fight with a generic competitor, resolved by settlement that vacated the judgment of patent invalidity. This led to a class action suit alleging Sherman Act violations, given that this reverse payment settlement blocked generic Tamoxifen for almost 10 years. There’s a circuit split, but the Second Circuit held that the reverse payment didn’t violate the law; a petition for cert is pending.

Herceptin: a protein that targets another protein, used for women whose tumors have a particular molecular signature. Genentech holds patents to the antibody and to treatment methods. It costs $48,000 per year, which not all insurance companies will pay, creating significant access issues. The FDA doesn’t have a formal regulatory procedure for biotech generics, but it’s under increasing pressure to expedite the introduction of generic biologics. This is a key pressure point for women’s health advocates.

BRCA1 & 2: The patent holder’s strategy is to market a commercial genetic test sent to the patentee’s labs for analysis. There is scientific criticism about the technical shortcomings ensue when only one lab does the tests – there may be significant false negatives. This has caused concern with the use of the patent, especially in Europe.

Lesson: Women’s health must pay attention to paradigmatic patent conflicts.

Malla Pollack, American Justice School of Law, Towards a Feminist Theory of the Public Domain, or the Gendered Scope of United States’ Copyrightable and Patentable Subject Matter

Basic question for social movements: Should we focus on short-term goals of improving living conditions or long-term goals of basic social change? The risks are wasted effort at impossible change versus entrenching the status quo by assimilating into an unworthy society. Many of IP’s exclusions are gendered, but does that mean we want in or out? Should we choose to help women make more money with IP, or to strengthen the public domain?

She chooses the public domain, because women are not alone in the public domain. Powerless people get rights when the interests of the powerful align with those of the powerless. And many people – consumers, producers – have interests in a robust public domain who aren’t feminists.

An example: The lack of protection for the feminine arts. Liberal feminism would argue: women are entitled to what men are entitled to. Essentialist feminism revalues women’s asserted differences as superiority. Both approaches could easily lead to claims for IP rights too – we want the master’s tools.

Instead, we should reject the male concept of ownership and put more in the public domain. The structure of individual ownership in intangible creations is male. In most so-called communitarian societies, however, status actually controls a lot of distribution and women are low-status. A big public domain therefore isn’t enough; we need structures that support an “owned” public domain, where we have a Lockean idea – you can’t be excluded without your permission.

Virtual Women: Rochelle Dreyfuss

Keynote address: Rochelle Dreyfuss, NYU Law School, Girls Just Want to Have Fun: What Can Feminist Theory Tell Us About Incentives?

Dreyfuss started out as a scientist, and has seen many things that help explain the relative absence of women in science, including discrimination, a clash between reproductive and career interests, the two-body problem of scientists marrying other scientists, lack of mentorship (in her days at Berkeley, many men flatly refused to take female graduate students, and others did very little for them, and her reading of the literature indicates the problem persists).

There’s gender stratification in academic collaborations with commercial ventures – men and women work on patentable tech at equal levels, but men are disproportionately offered consulting, venture capital, board membership, etc. – women aren’t offered the entrepreneurial resources or education they need. Invisibility: Women are less likely to be recognized as principal investigators, and thus are less likely to enter the commercial pipeline. Female scientists often feel resistant to feminism because of pressure to be “macho” and thus have difficulty organizing for change.

Why do women stay? The pay is lousy, conditions like lab space are inferior, and women and men do appear to differ in some innate abilities. Most men who are good in science have a quantitative tilt, but women who are good in science tend to be good at other things too so they have alternatives. If we understood why women stay despite the absence of money, prestige, and power, we’d understand the determinants of creative progress better – when incentives are needed. If we paid attention to why women leave, we’d learn how to better encourage and maintain creative communities.

Studies of innovation communities, like fashion, extreme sports, and French chefs, show that copyright’s incentives are not always necessary. Indeed, copying is critical to the maintenance of the community and to the incentive to generate new ideas – what have you done for me lately? Reputation is a key factor. It’s not all sunshine and daisies, but competition to win benefits – just through non-IP ways, where innovators benefit from revealing information; reputation has economic rewards and brings people the benefit of others’ revealed information.

Many of these communities are male-heavy (top chefs, extreme sports, computer programmers). What would female communities look like? Women may not equate acting rationally with acting in one’s own self-interest. Looking at it from a feminist perspective might find some non-economic incentives and even non-reputational incentives: Quilting and knitting circles; women suffragists’ publishing houses; literary clubs; anthropological studies of women’s roles; cookery (as opposed to cuisine) and cookbooks created by civic groups and individual women; fan fiction. Studying women in science, which has denied women traditional rewards, would be a great addition to that literature.

One thing: the sheer joy and satisfaction that women derive from living a creative life. Girls just want to have fun. With literary societies, women read books, read their own poetry, performed plays, etc. Women’s cookbooks included elaborate illustrations and other creative flourishes – these weren’t intended for distribution, but they still cared about expressing themselves, writing themselves into culture. Fan fiction: women write it because they love it and love talking with other women about it. Female scientists also experience this joy.

Some studies also suggest that relationship-building is a key factor in creative incentives – cookbooks are made for friends, daughters, etc. to maintain social ties and cultural traditions. In traditional communities, women perceive themselves as developers and transmitters of knowledge – shared journeys (also fan fiction). And many female scientists find deep rewards in collaborating with colleagues and mentoring students. There are reciprocal forms of altruism in these practices too – literary societies that engaged in suffragist activities. Still, other-regarding creativity is important. Women’s altruism was genuine and not based on the expectation of reciprocal benefits.

Protectionist rhetoric needs to be viewed skeptically. Creative production doesn’t need external incentives in all cases. We need to think about how IP affects such non-economic creative practices. A true revealer won’t have IP rights of her own to use against an IP claimant. Genuine altruism may be genuine, but it also may be bounded: it may be highly disruptive to commercialize freely offered output. Thompson was willing to work on Rent for a nominal fee and was happy it was doing well, until she found out that the Larson estate was making millions and she was making nothing. The same thing happens when freely shared knitting patterns are compiled into copyrighted books. Likewise with Kevin Greene’s presentation on African-American music. We need to learn more about the limits of altruism.

We also need a strategy to make sure that materials stay in the public domain where they were put. Creative Commons requires creators to anticipate problems and be proactive, but as LaFrance pointed out, some situations make that type of pre-assertion unlikely. We need some strategies to keep people from having to join the IP regime – as Thompson ultimately did in claiming that a dramaturg’s role contributed copyrightable expression – or losing out entirely.

Dreyfuss doesn’t want to suggest that freedom and no-IP are always the right solutions. The interest of innovation communities might not be aligned with the public interest. Do we need as much innovation in fashion as the current system produces? Perhaps barring copying would improve public welfare by slowing innovation. Also, some innovation communities work by subordinating certain members; IP might help them. Women in science are a good example, because when there is a breakdown in the system, it’s often women who lose out. If “sharing” means that information is shared but material benefits aren’t, that’s a wrong that needs correction. Patenting has been extremely important to the women who did it, even though women haven’t used it as much as men.

Question: Single-sex education?

Dreyfuss went to Wellesley and had a number of single-sex classes in high school, and it left her more willing to ask questions than many other women – she expected to be part of the discussion. The issue is whether the opportunities will really be equal; if they are, it may be a good idea to do girl-only math and science classes.

Question from Eileen Kane: Sometimes women resist becoming the primary investigators because they feel they’ll have to leave real science for administration.

A: That’s a version of the “joy in science” issue – many women don’t want the power/rewards enough to give up time spent investigating.

Bartow: Does effort to get credit trade off with openness?

A: Various instances of fraud in science have created interest in accountability, and journals have started requiring people to say which part of the work they did. The NIH is also getting into the game with rules about claiming credit, and schools have been following their lead. The side benefit is credit where credit is due, even though the concern was more fraud-specific. The situation is much worse in copyright and outside of science.

Panel 2, Material Girl: The Culture of Gender and IP part 2

Me – I talked about my forthcoming piece My Fair Ladies: Sex, Gender, and Transformative Use, and the pornographer as the most favored creator in copyright law – he is able to appropriate other works and have that appropriation understood as transformative fair use, but also able to monetize any use and therefore to show market harm any time another actor (like Google) copies his work. In the pornographer’s market, nothing is unreasonable or unlikely to be developed. Of course pornographers will license 100-pixel images. Any variety or excerpt of sex is sex and carries with it the market value of sex. So, Perfect 10 convinces the district court that its case isn’t a replay of Kelly and gets rights against Google that a landscape photographer doesn’t have. In my view, this is a mistake.

What is a feminist/low-protectionist to do? First, recognize that lots of things can count as transformative or otherwise favored uses under the first fair use factor, rather than privileging sexualization. Second, harden our normative definitions of allowable markets for everyone, rather than accepting circular claims that licensability defines market harm.

Mary LaFrance, UNLV Law School, Working and Playing Well: Gender, Status and Culture in Collaborative Works

Anecdote: because LaFrance didn’t intend to stay at a law firm, she was able to refuse a request that she write an article for a partner without getting coauthorship credit. Most people wouldn’t have been in a position to refuse that. As coauthor of a casebook, it’s always a struggle to refuse to be drawn into a caregiving position and to assert that her interests have to be respected and considered as well.

IP law is not well positioned to acknowledge the collaborative and derivative nature of most works. Often, there isn’t one person who deserves full credit for any invention or work. Nonetheless, as a practical matter, we need to assign economic rewards to the person/people we’re most excited about incentivizing. So, how does the system decide this?

Within this incentive-based system, authors and inventors might be misidentified, influenced by inaccurate perceptions of their contributions based on stereotypes and behaviors related to gender, culture and status. Federal court opinions addressing claims of inventorship and authorship show this – she hasn’t looked at works for hire, but power differences obviously exist there too (as with her experience with the partner who wanted an article written in his name).

She found greater bias in the copyright system than in the patent system. People who are more diffident – which is affected by gender and culture – are more likely to be left out of an authorship determination because they don’t assert their claims in the terms required. If the test is that each person must perceive the other as an author, then one’s perception that the other is a mere assistant would defeat a joint authorship claim. This test has become popular in the courts – the 9^th Circuit describes putative joint authors as “claimjumpers,” conjuring images of grizzled miners staking their claims and threatening violence against interlopers. The worst of these cases, in her opinion, is the Rent case where the dramaturg doesn’t get any authorship rights despite her huge contributions because Larson’s perception that he was the sole author – his ego – determined the outcome of the case.

Contrast that to a patent case where a doctor worked with an electrical technician who didn’t have a college degree. Both were Korean, from a culture that demands a high degree of deference to persons of higher status; the technician’s interactions with the doctor were extremely deferential, and yet the Federal Circuit went to great trouble to identify his contributions to 2 of the 55 patent claims. Thus, he was the joint owner of the entire patent. The patent became unenforceable against an infringer. The patent system focuses more objectively on the contributions of the parties and not on the way they express their contributions to one another. The technician would never have asserted his rights without the infringer’s work tracking him down and financing his challenge. So the hurdles are still there in patent law. If more technicians come forward, will the patent rule shift and start to show more copyright-like bias against claimjumpers?

Another question: If we switch to first to file, will that make patent law less equitable in its ability to reward true inventors?

Christine Haight Farley, American University, Washington College of Law, The Feminine Mystique of Brands

Today, brands are feminine in trademark law. We’re in an expansionist era in trademark law, which is connected to the feminization of brands – the law runs to their aid, to give them protection. Brands were said to be “vulnerable,” attracting the attentions of bad actors, becoming prey to their advances; and when the brands had been used by those bad actors, they were damaged. Thus, a moral imperative to act against dilution.

This kind of protection comes with a lot of costs – speech interests, competition – so you need a good reason to outweigh those costs. In traditional trademark law, protecting consumers is that good reason. Confusion serves to limit the scope of the right. Dilution is difficult to prove. So what is the injury of dilution? “Association” arising from similarity that impairs the distinctiveness of the famous mark. How do we prove or measure impairment? We can’t. So trademark owners would like us to presume it will happen when someone else uses a famous mark.

We’re protecting the brand, not the consumer. It’s a reputational interest, like defamation. In traditional defamation law, impugning a woman’s chastity was defamation per se, with no need to show damage – because women’s reputation was valuable property (of men, not of the women itself) and harm to that reputation couldn’t be measured in the marketplace. Their harms were relational and associational – they might lose social connections or marriage proposals if their reputations were harmed. Also, women would naturally and inevitably be harmed by implications of nonchastity, so there was no need to prove harm in a particular case.

The logic here is similar – brands are very valuable, but also very vulnerable. Brands aren’t Victorian prudes; they flirt with the line between accessibility and inaccessibility, edginess and comfort.

The easiest path to success in a tarnishment claim has been something like sexual slander, something that sexualizes the mark. The Victor’s Little Secret case is an example of that, even though it went down on blurring grounds. Even sexy Victoria’s Secret can be tarnished by association with sex toys/lewd mugs/other trashy sexy stuff. Likewise, Barbie and the Dallas Cowboys Cheerleaders are vulnerable to sexual tarnishment. Most recently: Breast: The Other White Milk got a C&D from the pork industry.

This feminization of brands in the law may not be deliberate; marketers know quite well how to gender individual brands (Marlboro, Betty Crocker, Brawny). In any event, it works. Feminizing the brand helps brand managers/trademark lawyers put brands on a pedestal, out of reach of anyone but the owner (like a wife reserved to her husband).

Question from Ann Bartow: Tension between Tushnet and Farley – in copyright, sexualization helps the defendant, but in trademark it leaves the defendant open to a tarnishment claim. I think this is true, but we don’t know how the new trademark law and its exceptions will shake out – maybe a lot of these things will be deemed outside trademark owners’ rights.

Pollack: Men own women in two different ways – the pimp who owns and exploits his property’s sexuality in the marketplace, or the respectable man who has the woman on his arm who is valued for her purity, which is to say the fact that she is reserved to him. The tension in copyright/trademark is what kind of relationship owners will have to their property.

Panel 2, Material Girl: The Culture of Gender and IP

I'm going to break this up, both on ego grounds (I spoke in the middle) and because there were five panelists.

Moderated by Lisa Ramsey, University of San Diego School of Law

Dr. Boatema Boateng, University of California, San Diego School of Communications, “It’s These Same Women!” Gender, Cultural Appropriation and Intellectual Property Law in Ghana

Adinkra cloth as an example of the way in which cultural appropriation is gendered. There is both hand and mechanized production of fabric in Ghana, brought together by the local economy of cloth use. There is also legal protection for adinkra designs. Asante make adinkra, which features abstract designs stenciled onto cloth by craftsmen (almost exclusively men, though dyes are produced predominantly by women who also make other kinds of cloth). Individual symbols have meanings and names, and may refer to historical or life events. It’s traditionally used for mourning.

Mechanized cloth production involves women who control trading markets, and also sometimes in the factories. Female traders commission designs from factories or choose which designs to sell. (When Ghanaians say “cloth,” they are referring to African fabrics used for traditional outfits or uses; “material” is for things like Western suits and dresses.)

In the 1980s, imitation adinkra began to appear in mass-produced offerings, and the Ghanaian cloth-buying public accepted them as more practical alternatives – they could be washed, and they were cheaper. Some adinkra producers saw this as a threat not from factories, but from women – the cloth production sector is seen as controlled by women, and some adinkra-imitative designs had been commissioned by women.

So we have female appropriation of male cultural production. But the contradiction deepens when examined through law. Ghana has protected folklore since 1985, specifying adinkra designs. But the creators were seen as deceased and unknown, so the right to folklore reposes in the state. By contrast, the designs of locally produced textiles in the industrial sector were protected under a textile designs decree. Individuals – women – could and often did register the designs they commissioned. So men have no legal standing as folklore producers, but women could obtain protection as designers of mass-produced goods. A second inversion: women are the subjects of IP law.

Women’s success in capturing a sphere that is favored by the law has translated into a legal advantage.

Kevin Greene, Thomas Jefferson School of Law, IP at the Intersection of Race and Gender – Or, Lady Sings the Blues

His narrative: struggle, opportunity, reform. The historical ties between abolitionism and women’s suffrage have persisted, as have the ties between scholars of race and scholars of gender. There isn’t much out there on race and IP, and it may seem risky to talk about it. He’s been asked by a prominent scholar if he wants to be the black guy who talks about black stuff and IP. His decision: yes. (See Ann Bartow’s point from the previous panel: what’s wrong with being a dog?) Issues of appropriation from African-American artists have correspondences with the international cultural knowledge debates, and provide insights into gender/IP issues as well.

Scott Joplin’s music: a reminder of injustices done to African-Americans, who as a group created a huge amount of copyright value. These artists built the American music industry with amazing innovations, but didn’t get to realize the value. How did people who created so much receive so little out of a system designed to create financial incentives for creators?

Societal discrimination. Sure, all artists are taken advantage of. But there was a system that was just like sharecropping, employment discrimination, and other entrenched systems that meant that African-American innovators were treated worse. Bessie Smith’s contracts, for example, had her assign all her copyrights to an entity that’s now Sony – this is a part of the puzzle where we can find current beneficiaries of past discrimination, which gives it an advantage in the reparations debate.

Clearly, the incentives of copyright didn’t flow to the African-American community, so there must have been some other incentive to create. Traditional knowledge generates the same types of problems of ill-fit and failure to promote the interests of the non-dominant community. Greene also identifies the comparative weakness of moral rights and failure to protect performances as things that don’t serve African-American artists’ interests. Underexplored: the role of black women performers. How can the music industry rise out of its exploitative history and create productive copynorms?

Virtual Women: Emerging Issues in Gender and Intellectual Property Law

Thomas Jefferson School of Law, Feb. 9, 2007

Panel 1, What a Girl Wants: The Theoretical Underpinnings of Gender & IP

Moderated by Julie Cromer, Thomas Jefferson

Doris Estelle Long, John Marshall Law School, Women’s Art, Women’s Truth: Gender Discrimination and the Battle to Protect Traditional Knowledge

Perhaps surprisingly, traditional knowledge became an international IP issue at the same time as the internet did. Definition: tradition-based works, whether innovative, creative, or culturally expressive, transmitted through the generations. These arts got kicked out of copyright early on.

Traditional knowledge is relational. It is based on traditional needs, collaborative, collective, transmitted through time. Practitioners speak of it in terms of caregiving, spiritual connection, sacredness – an emotional, social process. Think of all that we denigrate as “artsy-craftsy” – not worthy of protection because it’s not serious. “Craft labor” is seen as not creative enough to participate in copyright.

Women were authors in the 18^th century, but as it began to move into the public sphere, there was a similar debate over how to value women’s writings (sentimental, emotional, not quite literature, prostitution-like) and women’s art. Women’s three basic roles: caregiver/nurturer, hearth/home arts, food – the woman as the center of the family. In indigenous groups, caregiving isn’t just children, but healing arts, use of plants for medicine – even traditional knowledge about seeds. They are repositories of traditional knowledge, storytelling, training in traditional arts. When it comes to copyright, these all suffer from being not quite original enough.

She gave a number of examples of celebrating traditional knowledge that involved, necessarily, celebrating the contributions of women, especially old women – grandmothers.

The same issues occur in the mainstream copyright market. By 1850, women were writing all sorts of works for large-scale publication; some women perceived themselves as professional authors. By 1890, 50% of US bestsellers were written by women. All of a sudden, we hear all of the language about women’s literature – sentimental, gothic, romances, not “serious” literature. Women’s writings aren’t part of the canon. Still happening today – “chick lit” – terminology that says that what women are creating doesn’t fit within our model.

Lesson: protecting TK will be a lot harder than some think, because it has to deal with gender stereotypes as well as other biases about what copyright should cover. Women need to be empowered to participate in the debate, as major carriers of tradition. Moral/spiritual connections need to be reaffirmed.

Panamanian molas: women now make blue molas for the export market, because apparently tourists like blue even though it’s nontraditional. They’re still using their traditional skills – and they still have designs they won’t share with us. These are the types of problems protection for traditional knowledge needs to address.

Dr. Carys Craig, Osgoode Hall Law School, Beyond Author v. Public: Relational Authors and the Public Interest

Craig is generally a restrictionist, but that stance is often vulnerable to the charge of neglecting the interests of authors in favor of the public. Canada, with Quebec’s civil law/moral rights system, offers a microcosm of the international clash between utilitarian/public interest and authors’ rights perspectives. Are the groups destined to talk past one another?

Craig’s work draws on feminist literary and political theory, which has made her more resistant to the criticism that she’s unduly instrumentalizing the author. The idea of balance is a metaphor, but one that requires us to divide the author from the public and pit them against one another. This dichotomy is illusive.

Canada introduced users’ rights in 2004, but it might do more harm than good by proliferating rights talk in IP policy. It reduces the public interest to an individualizable claim and focuses us on entitlement claims rather than the goals and consequences of the system.

Utilitarian justification for copyright in the US: does it reduce the author to a means to the public’s ends? The theory implies an opposition between author and public by prioritizing the public, and rejects the notion that the author’s relation to her work is important in its own right or has any relevance to copyright policy. But there’s a clear lay sense that the processes of authorship have significance to authors that can’t be reduced to financial incentives. Artists often insist that attribution and acknowledgement are more important to them than control and remuneration.

What can feminist theory do to help? A relational feminist account of authorship would recognize the author as embedded in her community, creating out of those discourses and texts around her. The community is involved as source and anticipated audience. Likewise, dialogic feminism emphasizes discourse, narrative, participation, all of which can enrich our understanding of authorship in copyright as a way in which authors can participate in the shaping of the world. This approach values authorship in its own right as a way to generate meaning and engagement in the world, but also contains its own limits – authorship must leave space for others to enter the cultural frame.

Copyright is a triadic relationship between the author, the public, and the work. No “pure” approach will work, whether focused on the author-work dyad (author’s rights) or on the public-work dyad (utilitarian approach). Feminist relational theory can help us break down the self/society divide and thus break down the author/public divide.

Ann Bartow, South Carolina Law School, Women in the Web of Secondary Copyright Liability and Internet Filtering

Her thesis, which can be seen in greater detail in her article: Internet law was characterized as “the law of the horse,” but it’s really “the law of the stallion.” The legal scholarship doesn’t recognize the web as it exists for women. Scholars hope and believe that the bodilessness of cyberspace erases gender, when all it does is erase the recognition of women as subjects (unless we fight for it). Anonymity facilitates abusive sexism online.

Theorists largely ignore porn: Yochai Benkler wrote a grand theory of the internet and peer production and doesn’t have a single word to say about porn. Did he not see it? Did he not think it worth talking about? We get lots of theorizing about the liberatory prospects of online games, but very few looks at the avatars available for women, which have distorted bodies and lots of skin showing. Second Life has “rape role play” games for participants to play (because, Bartow says, “apparently they think they want that”). There’s a game called Rape Lay specifically for players who want to rape unwilling characters. (NB: I love Ann and I love Ann’s works, together and separately. I too am appalled by Rape Lay. But I have serious problems with singling out rape fantasies without more careful examination of what functions they serve and what they are likely to mean for real women.)

There’s lots of essentializing women in discussions of “what women want” from games. The games’ “magic circles” exclude most women. Sexual harassment is pervasively tolerated and women who complain are further harassed. There are no data on gender or race of participants in online games or for a. On the internet no one knows you’re a dog, but what’s wrong with being a dog? Why is it liberating to not to “have” to be a woman?

Women are becoming content, in games and elsewhere. Anonymity is valuable, but it also enables discrimination and harassment. Cyberspaces are simply less amenable to women who identify as women, and there’s little in the way of legal recourse.

Cheryl Preston, J. Reuben Clark School of Law (BYU), Internet Autonomy and Intimacy

In the past, Preston has argued over whether a feminist focus on porn made strategic sense. We should, she concluded, redirect our energies from censorship to non-law avenues to put economic pressure on companies that use sexist advertising even in nonpornographic ways.

It’s time to revisit the issue. This is not your grandma’s porn. Quantity, reach, and nature all differ. Amateurs are “in,” and everyone is trying to make some money off of linking, showing pictures of amateurs, etc. Numbers of porn pages have exploded. There’s no way to impose norms on a porn site, to picket it, to shame the owner in front of his community. Teenagers have easy access to porn. Young girls are feeling the pressure to perform the acts they see and that boys have seen. You don’t have to take many risks to access pornography, to find things that didn’t exist in your state ten years ago.

What should be done? It is difficult – impossible – to speak for all women at once, but now we can perhaps make some choices about what will be allowed on our own (our family, our university, our work) computers. We can also bring more real life context to the abstract censorship debates. Women have an interest in sexual pleasure, but we live in a society dominated by men, and we are the guardians for most children. We need to protect our children from their inability to think through consequences – boys want to experience pornography, but they think that someday they want to find a life partner who isn’t a slut. (I don’t see that it’s the porn, as opposed to the double standard, that’s the problem – though I accept that the porn is likely itself to carry the message that the girls who participate are sluts and the boys are awesome.)

We’ve ignored women’s right to be left alone, even on computers. We need to debate porn as we know it – as it comes into our homes – now.

Notable comments: In response to questions, Preston said that porn users consume so much bandwidth that we’re all subsidizing them, and families should have a choice – in contradiction to “net neutrality” proposals – to only pay for “community use.”

Women who use pornography use it for relational purposes – they look at images, then enter chat rooms. Men who use it don’t want to interact.