5th Annual Trademark Scholars' Roundtable

Indiana University Maurer School of Law
Session 1: Conceptual Questions About Registration

Mark Janis: conversation about registration is not often academic, and that means there’s a lot of opportunity to investigate high-level conceptual issues (not just questions about the TMEP): systemic design choices, which eventually manifest at the level of the TMEP. Conversation in the US is rather pedestrian; we have a lot to learn from other systems.

Graeme Dinwoodie: not a burning issue like TM use, but underexplored. Outside the US registration a significant part of practice, and of international policy discussion.  Why does registration dominate that discussion/debate at the international level?  Seen as principal defining characteristic of national regimes: use-based or registration-based.  Doesn’t even teach registration in the US until halfway through, but in the UK/Europe that’s where he starts.

But has found the differences overstated.  Intent to use in the US: constructive use, complete modification.  In EU, most countries have grounds for opposition that take into account use-based rights.  But we may also understate the system’s effect on other features of the system—in some ways a proxy for a passing off claim (for unregistered marks)—should we have a narrow set of rights from registration that are more property-oriented, and then §43(a) for passing off?  Registration line might be a line between two different types of claims, on the one hand representing slam-dunk uncontestable property rights and others at the margins.  EU: one of the challenges of EU for Court of Justice has been to accommodate historically use-based and varying degrees of registration-based systems. Playing with reality v. paper rights to compromise reflecting different systems.

Mark McKenna: also teaches that registration is not fundamentally the point of the system.  Why is that so?  Three overlapping ambivalences in US law.  (1) The extent to which we want the TM system to be federal as opposed to state law.  (2) The extent to which we want it to be statutory rather than common law.  (3) The extent to which we can sensibly think about TM law as distinct from unfair competition.

1870: first registration system; struck down. 1881: new system available only to marks used in foreign trade/trade with Indian tribes.  The registration system has always been a carrot rather than a stick. Initially the carrot was a federal cause of action, available only for registered marks. That carrot has been chewed up now.  However, one thing that did was distinguish TM from unfair competition (the cause of action available under state law for unregistered marks).  Prior to Erie, that didn’t matter a lot as a matter of substance—registration gives you a federal cause of action, but you can just vindicate your existing claims—the right is “procedural.”  Post-Erie, the courts were confused about what that meant; the substance must be coming from state law.

Registration wasn’t widely used when commerce was more limited; the benefit of rights beyond a specific location of use wasn’t tremendously important to most people. By the time of the Lanham Act, some desire for more rights, but the design choice was still to provide a carrot.  Subject matter: in 1905 and even 1946—had in mind a much narrower set of things, technical TMs, not trade dress/product configuration.  That was all left to unfair competition.

Post-Lanham Act, substantial broadening of §43(a) begins to sweep this into the federal level. Now a registration doesn’t mean much because you can get so much through §43(a). American law has lost the ability to conceive of unfair competition as distinct from §43(a), and that’s a loss.  Badly undertheorized, but one reason is that it’s a jack of all trades.  Though we may call §43(a) claims unfair competition, because they’re subject to all the same rules as registered TMs, we don’t really think about the differences.

Unfair competition law didn’t prevent copying of product configuration, but did require labeling. There might be gains from rethinking subject matter of TM law and non-subject matter.

Lionel Bently: UK history. What is now TM law was found in various places—statutory provisions built around particular trades.  E.g., from the 17^th c. there was local legislation relating to marks used on cutlery, knives, etc. 1720s, act gave protection to marks woven into or printed on linens. 1813, act relating to counterfeiting marks on gun barrels. Etc.  Alongside that there were provisions of the emerging common law and equitable rules that eventually became to be seen as passing off.

Traders seek registration system. 1860s: bills introduced to allow registration/criminalize misdescriptions in trade. Outcome: no registration, but criminalizing misdescription in trade, not just labeling source but quantity/quality—consumer protection indirectly protecting traders.  Traders continued to lobby for registration system. 1875: registration enacted (after the US and British colonies). Colonial experience may have helped confidence in operation of registration.

Treaties premised on the notion of reciprocity.  Foreign countries wouldn’t recognize Britain’s scattered protection for purposes of reciprocity—or at least British traders believed this, though he’s never seen evidence that foreign countries declined to provide reciprocity on this basis.  Registration is therefore linked from the start to international protection. That may explain US’s disinterest; many US traders wouldn’t have cared at the time.  (McKenna: most worried about expanding markets in the US since there was so much room to grow there.)

Expensive for traders to establish rights each time; wanted easy recognition, and registration seemed a good way. Note that registration was being proposed for lots of things at the time—land, design, copyright for works of fine art. Thinking in terms of registration was not a strange move.

Problems: questions of definition. Personal names were most common marks, but what would it mean to register a surname? Excluding other people with the same surname? A disconnect between the feeling that a trader should be able to use their own name and a registration system that would include names.  Same too with indications that goods came from a particular place, also common.

Also seen as potential vehicle for fraud: registration could allow transferability of TMs, which would enable deception of consumers.

Another objection: would the system change the nature of what was protected?  If the registration system protected different things from what was being used, that would cause difficulties.  Louboutin case in the US shows problems with figuring out what the representation in the registration actually protects.

1875 Act: registration was only permitted in relation to narrow category of subject matter. Words/names not initially registrable apart from where they’d already been used/acquired a reputation—going forward, no registration of names/words, but rather symbols and devices. The act didn’t define the rights given to a registrant, until 1905—just operated as constructive use that could be the basis for a common law action.

Relationship with common law was unclear. 1875-77: commentaries assumed that you couldn’t rely on the common law if it was registrable but not registered. By 1905 dual system was accepted.

18,000 registrations by 1880.  In particular fields there were real problems, such as marks relating to cotton where a separate system was set up for determining validity: 40,000 applications, with only 10% registered.  Move from different trades to centralized regime, and wasn’t ready for that and had to go back to the trade!

McKenna: US may be free riding—no struggle with what may be registered. Early acts just say the owner of a TM can register it; no attempt to define what a TM is, though people seem to think they understand that. Only later does terminology of technical TMs develop.  Basically the idea is inherent distinctiveness, but no struggle to reach that conclusion. Never any question that state protection is also available for registrable marks.

Jessica Litman: in hearings as early as 1910, you do have TM lawyers fighting over trade names being included as TMs. But that’s post 1905.

Bob Bone: separate provision for descriptive marks after that.

McKenna: trying to map timeframe: up to the 1905 act, the terminology is starting to surface but not making its way into the statutory discussion.

Stacey Dogan: Is TM supposed to protect consumer meaning, or to protect producers and provide property-like system of metes and bounds?  Thinking conceptually about reasons for use-based v. registration-based regimes; costs and benefits. Blending is worst of all possible worlds.

If consumer protection is our goal, TMs should be defined by consumer recognition (including geography). Practical and error-cost reasons to provide rights that don’t perfectly correlate with consumer expectations: inherently distinctive marks can be protected before acquiring brand significance in consumers’ minds. But use based rights do resonate with the economic approach to TM protection and suggest a limited scope of protection. Registration offers priority or just affirms the existence of use-based rights.

Notice is a big benefit of registration, at least in theory, especially as producers expand into new markets and may have trouble determining what rights exist. Maybe it should be required for certain types of marks. But these advantages require the registry to be an accurate catalog of who has which legal rights. Today’s blended regime means that a registry search isn’t a full clearance.

Warehousing/gamesmanship. This problem can be avoided through proof of use before the registration vests and if the rights are limited strictly to the nature of the use that’s specified in the application. If we insist that parties only register marks that they have a good faith intent to use and the rights don’t vest until use, and then only to the uses made, problems are less costly.

Pragmatic reason for not having registration-only: not everyone has resources/sophistication to register. But does this protection have to be the same as that provided to registered marks? Perhaps only protect against passing off.

What if we required registration for trade dress? This is an area where notice is the most problematic for understanding what copying is ok.  Competition concerns are quite significant. Appeal to having some level of review, registration, and notice w/r/t those kinds of marks. Whatever we say about Louboutin, one interesting thing is that the court did limit the registration to the mark that was actually used. Could take the further step to say that when the marks are registered in that configuration, the scope ought to be more limited as well.

Litman: could argue that they limited it to the specimen of use, since the description didn’t require contrast.

Dogan: if notice is a benefit, could harness registration for areas where notice is a special problem.

Dinwoodie: essentially preempt a common law action with respect to that subject matter.

Dogan: right.

Dinwoodie: flip the Louboutin facts: where the mark said “contrast” but in fact the use went beyond contrast—would you preclude a case?

McKenna/Dogan: yes. 

McGeveran: require use to get the meaning that leads to the registration, but then protect only registered marks?

Dogan: yes: registration confirms source identifying meaning and formalizes it.

Bone: if we’re worried about consumer confusion, it seems somewhat arbitrary to limit protection except for the benefits of avoiding too broad protection. But can we rely on the PTO to strike an appropriate balance between avoiding anticompetitive effects and protecting against consumer confusion. Once the applicant understands the limits, the applicant will make very broad claims for protection.  Like an overbroad patent application; the examiner will have to narrow it—can we trust in that.

Dogan: fair point.

Janis: lessons from patent law: when you put a lot of pressure on the registration document, you get arguments to a court that the PTO didn’t strike the right balance, so you need a doctrine of equivalents or the like. There needs to be a mechanism to deal with scope later, and the erosion of notice therefrom.

Dogan: early version of the idea! Basic question is whether we can get some of the benefits of registration and make them real w/r/t certain types of marks.

Dinwoodie: existence of other systems do some of the work, design patent/copyright—this is what made the Court comfortable in Dastar, Wal-Mart, and Traffix.  If you make everything strong, then all rights will be strong; a weak safety valve might be better, including a weak cause of action for unfair competition.  Forcing into single strong property regime is difficult.

Dogan: would need more robust review; formalize Traffix and say you can register incidental/arbitrary (court unfortunately also says “ornamental”).

McKenna: registration systems are created at a moment when the scope of rights is very narrow—very similar mark for very similar goods/services. So we need to consider registration and scope—registration is more worrisome when what counts as infringement expands. We should think about scope.

The more done in registration, the more pressure on examination.  Except for silly incontestability, he doesn’t care if it’s registered; presumption of validity doesn’t mean as much in TM as in patent. (I think I disagree with this.)

Marshall Leaffer: we don’t want to overburden the registration system. Unfair competition notions folded into registration create questions of description. TM office doesn’t want to have to describe these things.

We do live in a fairly harmonized world.  So we need to understand how it will be integrated worldwide. If we throw too much in, our assumptions will be undermined.

Jeremy Sheff: On the importance of structuring examination process: compare patents. People believe that most patents aren’t valuable; the market will figure that out and courts will deal with it. The reason that doesn’t even arguably work for TM is incontestability. If the examination process fails us because of institutional pressures it may take longer to determine which are valuable; we don’t have a comparable way for reassessing validity on descriptiveness. 

Dogan: but functionality is usually the biggest problem for trade dress.

Sheff: but there are other issues.

Leaffer: maintenance fees? Increase them! Make people reveal valuations.

Dogan: just a thought experiment. Other general questions have been raised about the values of registration v. use based systems.

Sheff: if you killed incontestability, the problem would go away, but other problems of competition remain from the examination process. 

Dogan: they are getting registration/incontestability now when they want to.

Janis: without incontestability, we’d shift to debating presumption of validity, which would become more meaningful.

Litman: updating a casebook every year for 20 years, so she doesn’t see in topic terms but in year to year terms. When Two Pesos came out, she thought no one would bother to register trade dress. But unquestionably in 5-10 years is that litigated cases generating opinions involving registered trade dress swamp the number of unregistered trade dress cases.

(1) PTO has loosened up a lot on registering trade dress. (2) People looking for international protection down the line get nothing from use-based rights.  Sometimes broad trade dress claims have gotten through the PTO. So a registration requirement is worth thinking about.

McGeveran: notice. Trying to puzzle through how notice works in a meaningful way. Incentivizing fighting it out at the beginning, but only if you’re a sophisticated competitor. You may not be able to wait and see. Good for clarity, but bad for disputes generated without need?  Also, what about people who don’t know that they’ll have a problem (small, not yet existing competitors).  What is the effect of the registration? If you start to get too concerned about those people, then you immediately move to whittling away at the significance of the registration.

Beebe: similar to copyright, where the background assumption of early opinions was that only registration granted rights—so narrow subject matter underlay formation of rights that we now take for granted as applying to anything that is fixed.

Reference to priority: Main reason to register in US is nationwide priority—constructive notice/constructive use. 

Mike Grynberg: registration takes a fact intensive inquiry and resolves it at the administrative level. Familiar arguments about expertise/regulatory capture. Trying to get an information signal that people can rely on. We don’t trust the PTO, so we need either a limit on the kinds of rights registration gives or aggressive judicial oversight. That’s not inconsistent with thinking that the PTO’s information signal is worthwhile. You might need to clear the hurdle of the PTO as a necessary but not sufficient condition for protection.

Dogan: functionality is key here—how do we feel about oversight of PTO decisions.  Also secondary meaning, to some extent. Supreme Court has been good on functionality lately, and most lower courts are doing ok, except on aesthetic functionality.  This remains alive even after incontestability. Could adjust the presumptions and make this kind of system for trade dress be pure notice. Judges could take a more aggressive approach to reviewing the eligibility questions.

Dinwoodie: like a deposit system?

Dogan: like copyright, maybe.

McKenna: all of us coalesce around concerns over trade dress, not trademark. Would a mandatory registration system confined to traditional subject matter be a good idea? It’s not just functionality. One of the problems w/trade dress is just how amorphous and undefined the concept is. Look at what people claim—“everything about us” is our trade dress.  The PTO would have to be able to decide something about claim scope. Whether you’re claiming too broadly or not. They don’t do that—they think only relationally compared to existing marks. But that’s not enough; the fact that other Mexican restaurants have festive atmospheres (Two Pesos) doesn’t come into the analysis.  (Of course Two Pesos was unregistered!)

Q&A on new Canadian copyright law

Betsy Rosenblatt of the Organization for Transformative Works has a Q&A with Graham Reynolds (Dalhousie) about Canada's new fair dealing rules.  More to come soon.

Navajo Nation claims against Urban Outfitters survive

Navajo Nation v. Urban Outfitters, Inc., --- F.Supp.2d ----, 2013 WL 1294670 (D.N.M.)

The court largely refused to dismiss the Navajo Nation’s claims against Urban Outfitters for using “Navajo” on some of its items.  In this case, the court seemed to treat “identification meaning” the same as “trademark meaning,” allowing the Navajo Nation to claim that recognition of the Navajo as a group was recognition of “Navajo” as a mark.  I’m dubious about this, but understand why it happened here.

The Navajo Nation “is a sovereign Indian Nation with over 300,000 enrolled members,” and “acts through its political subdivision …; its wholly-owned instrumentalities …; its officers, employees, and authorized agents; and its members, the Navajo People.”  (This is one place where I get nervous about applying trademark concepts: if that isn’t naked licensing, what is?)  It alleged that it and its members had been known as “Navajo” since at least 1849, had continuously used the mark in commerce, and had made the mark famous with numerous products, including, among other things, clothing, accessories, blankets, jewelry, foods, tools, decorations, crafts, and retail services.  The Navajo Nation has registered 86 trademarks that include NAVAJO for different classes, including clothing, jewelry, housewares, and accessories, and alleged that many had become incontestable.  (Urban Outfitters argued that the Nation didn’t actually own all 86 marks, and that only 5 were incontestable.)  The Nation also alleged substantial investment in promoting the marks, resulting in over $500 million of sales of NAVAJO-branded goods. 

Further, it alleged, “NAVAJO” was inherently distinctive, and that it wasn’t a generic name for any products, since if you go into a clothing store and ask for a “Navajo” you will be greeted with incomprehension.  (What if you go into a grocery store and ask for a “Swiss”?)  The Nation alleged that, instead of using descriptive words like “geometric” or “southwestern,” Urban Outfitters chose “Navajo” in order “to trade off of the cachet and romanticism associated with the Navajo People, who form the Navajo Nation.”  Futher, UO allegedly falsely advertised a number of its “Navajo” products as “Vintage” and “Handmade,” making an expressly false claim that their goods are made by members of the Navajo Nation.

UO allegedly rolled out a product line of at least 20 items under the “Navajo” and “Navaho” names, echoing Navajo Nation tribal patterns.  Further, UO allegedly “used” the mark in its internal search engine to divert consumers, causing initial interest confusion by returning results.  (The Amazon watch case might be of relevance here.)  The Nation alleged trademark infringement, federal and state dilution, false advertising, violation of the Indian Arts & Crafts Act, and related state-law claims.

On a motion to dismiss, the court refused to consider excerpts from the trademark file histories of some of the marks referenced by the Nation in its complaint.  The Nation didn’t attach an incomplete document to its complaint, but rather UO was cherry-picking portions of the PTO record to contest the facts.  The evidentiary value of the excerpts was subject to reasonable dispute and not suited for judicial notice.  “If Defendants' position were correct, the entire trademark file history of each trademark allegedly infringed would nearly always be permissible to consider on a motion to dismiss in any trademark infringement case, an incredibly cumbersome analysis at the early stages of a case.”  Likewise, the court declined to consider evidence that “Navajo” was used as a generic descriptor of “Indian-styled” prints and designs at this stage of the case.

UO argued that the Nation failed to state a claim because it failed to allege facts showing that UO’s use of the term was as a source identifier instead of descriptively; the Nation cropped the content of the sites (presumably so that UO’s own marks wouldn’t appear).  Dismissal for failure to state a claim is appropriate only in the most extreme trademark cases, and this wasn’t one.

The Nation argued that because their marks were incontestable and fanciful, arbitrary, or suggestive, descriptive fair use was unavailable as a defense.  (I’m pretty sure that the “incontestable” part there doesn’t work, inasmuch as §33(b) is in the statute precisely to establish descriptive fair use as a defense as to incontestable marks.)  As for the fanciful etc. argument, a number of courts have (correctly) concluded that it’s the defendant’s use that must be descriptive, not the plaintiff’s, but the court didn’t resolve the issue because UO didn’t establish that the defense succeeded as a matter of law.

The Nation alleged sufficient facts to show that UO used “Navajo” as a mark, and that it didn’t “sufficiently accompany ‘Navajo’ with such distinguishing marks that a buyer exercising ordinary care would not be deceived into believing they were purchasing an item produced by the Navajo Nation.”  The Nation alleged use on similar goods to the Nation’s own goods, and that the goods compete in many of the same channels of commerce.  UO advertised “Navajo Bracelet” and “Navajo Feather Earring” “without clarifying words or images that ‘Navajo’ did not mean that it was made by a member of the Navajo Nation and was merely descriptive of the style,” and other items were advertised similarly.  When the products involved are similar, a descriptive fair use defense may fail not because likely confusion makes the use nondescriptive, but because confusion shows that a use is de facto use as a mark.  Even as to UO’s sub-brand Anthropologie, where the exhibits only showed statements saying, “We're sorry. This Product is no longer available,” could count as use; “a factual inference could be made that the product is no longer available because all those particular goods had been sold from the site.” 

Here, “Navajo” has a primary meaning referring to the Navajo tribe and its people.  “Navajo” also has a geographic component, but the tribe is the registrant.  As for dictionary definitions of “navajo blanket” and “navajo rug” as “a blanket woven by the Navaho in geometric designs of symbolic meaning,” this definition “demonstrates that, even when used as an adjective, the term conveys information that the source of the rug or blanket is the Navajo tribe or a member thereof.”  Thus, even adjectival use could create likely confusion among consumers.  Some of the items included another company’s brand in the product description, but that wasn’t enough to find, as a matter of law, that the use of another brand would eliminate all alleged confusion.

UO argued that the Nation itself acknowledged that “Navajo Style” for goods would be fair use, relying on a license agreement submitted to the PTO in connection with one trademark, but that evidence wouldn’t be considered on a motion to dismiss.  In addition, UO argued that the Nation failed to show either trademark use or bad faith as to Free People because “Navajo” was a descriptor of “vintage, pre-owned items originally from artisans who identify as Navajo Indians.” But UO’s affidavit was less than a model of clarity; it averred that the items were “believed to” be made by self-identified Navajo artisans; this again wasn’t suitable for resolution on a motion to dismiss. The allegations of use in, for example, “Vintage Handmade Navajo Necklace,” were sufficient to state a claim of confusion over origin. 

In addition, UO argued that a user’s collection of items she wanted, labeled “Navajo Beauty” and displayed on the Free People site, wasn’t trademark use by UO.  The Nation acknowledged that its claims didn’t encompass acts of UO’s customers.  The court noted that the Tenth Circuit recognizes claims based on initial interest confusion, “the unauthorized use of trademarks to divert internet traffic, thereby capitalizing on a trademark holder's goodwill.”  The court found it “unclear” whether UO was responsible for using “Navajo Beauty” to describe a collection, since the page says the collection was created by “indiehippiepixie.” However, the Nation sufficiently alleged that UO used “Navajo” to divert internet traffic.  Thus, the court didn’t decide whether there was infringement based on advertising the “Palmedo Blanket Bag” (part of indiehippiepixie’s collection) without “development of the factual record concerning how Defendants allegedly used ‘Navajo’ in their internal search engines to divert customers to products like the Palmedo Blanket Bag.”

Finally, the court couldn’t find nominative fair use as a matter of law.  And we get a new-to-me reformulation of the doctrine: “whether (1) the product is readily identifiable without use of the mark, (2) defendant used more of the mark than necessary, or (3) defendant falsely suggested he was sponsored or endorsed by the mark's holder.”  Assuming the doctrine’s validity in the Tenth Circuit, whether “Navajo” was the only word reasonably available to describe the designs of the products at issue was a fact question; the Nation alleged that “geometric” or “southwestern” would also work.  The Nation therefore successfully alleged claims of source confusion as well as sponsorship or endorsement confusion.

Of course, the court also rejected UO’s contention that Navajo was generic for clothing and accessories, given the pleadings, despite what indiehippiepixie might have thought.

Turning to dilution, the court rejected UO’s argument that the Nation failed to allege fame for the relevant goods.  The Nation represented to the PTO that its first use of the mark in connection with clothing such as shirts and jackets was in 1995 and 2005; it didn’t allege particular facts showing the extent and geographic reach of sales, advertising, and publicity. However, the Nation alleged that it and its people had been known by “Navajo” since 1849; it had continuously used the NAVAJO trademark in commerce; it had marketed and retailed clothing, jewelry, and house wares since 1941; and it had registered the NAVAJO trademark in 1943.  This was a significant duration, despite the Nation’s failure to allege many non-conclusory facts about geographic reach. It did allege that it had invested “substantial capital in promoting and protecting” the NAVAJO trademark, resulting in more than $500 million in sales of NAVAJO-branded goods, and that the NAVAJO marks were prominently featured on a number of its websites. Moreover, it alleged 86 registrations with a NAVAJO component (despite the factual dispute over how many marks the named plaintiffs actually owned). Combined with general allegations that the mark was broadly recognized by the general public as a mark for Indian-styled and Indian-produced goods, this was enough to survive a motion to dismiss.

In combination with the complaint as a whole, the allegation that UO’s use of Navajo in retailing its 23 “Navajo” products and its marketing of its “Navajo Collection” made it likely that consumers would incorrectly believe that the “Navajo” mark is an indistinct term was sufficient to allege dilution by blurring. Evidence that other fashion marketers already do that was not relevant on a motion to dismiss.

The court did agree that plaintiffs failed to allege dilution by tarnishment based on two theories, though a quality-based claim survived. The “Navajo Print Fabric Wrapped Flask” was not sufficiently unwholesome to constitute tarnishment, given that the Fire Rock Navajo Casino registered trademark includes “shot glasses” among its goods. Although the Nation bans the sale and consumption of alcohol within its borders, it admitted that there was an exception for alcohol in dining areas of a Navajo Nation Gaming Enterprise facility and that it had registered the mark for shot glasses.  Thus, as a matter of law, use on a flask wasn’t sufficiently unwholesome or unsavory to support a tarnishment claim.

In addition, the court rejected the argument that UO’s use of “Navaho” was scandalous because the official spelling uses a j.  There was no authority that misspelling is scandalous.  Indeed, the Nation’s own complaint noted that “Navaho” is a long-thought acceptable spelling, and the Nation relied on Webster’s dictionary in its briefs, which also used the terms interchangeably.

The Nation did preserve a theory that UO’s products were of significantly lower quality than the Nation’s own products, diluting the marks.  UO argued that these allegations were conclusory and that the complaint itself showed that consumers rated the products highly, with an average rating of 4.5 out of 5 stars.  The court wasn’t willing to find that the star ratings were conclusive as to quality. While the allegations of lower relative quality were “somewhat conclusory,” they were enough to create a factual issue.

The Indian Arts and Crafts Act: The IACA “is a ‘truth-in-advertising law designed to prevent products from being marketed as ‘Indian made,’ when the products are not, in fact, made by Indians as defined in the Act.”  It creates a cause of action against a defendant who sells a good in a manner that falsely suggests that it’s Indian-produced or the product of a particular Indian, Indian group, or Indian tribe.  “[T]he question for the trier of fact is what the entire sales package, including advertising, labeling, and place of sale, suggested to the average consumer.”  An art or craft work is a handcraft—“an object created with the help of only such devices as allow the manual skill of the maker to condition the shape and design of each individual product.”

The court refused to dismiss the IACA claims:

Plaintiffs allege that Defendants have displayed for marketing and retailing items such as “Navajo Bracelet,” “Navajo Glove,” “Vintage Men's Woolrich Navajo Jacket,” and “Navajo Feather Earring.” Plaintiffs contend that the products are in a traditional Indian style, and composed of Indian motifs and Indian designs, but are without identifier terms or labels; that the manner of marketing the goods falsely suggests the products are Indian products of the Navajo Nation, when in fact they are not Indian made; and that a consumer may find the products using search terms like “Indian,” “Native American,” “tribal,” or “Navajo.”

This was enough to allege a cause of action under the IACA.  Clothing and clothing accessories could be arts or crafts within the meaning of the IACA, even if the clothing was contemporary apparel.  The regulations specify that both traditional and modern apparel could qualify.

UO argued that the Nation made contrary representations to the PTO in registering “Navajo Jeans” for “clothing, namely, tops, vests, shirts, sport shorts, polo shirts, golf shirts, jackets, T-shirts, sweat shirts.”  In response to an examiner’s refusal to register the mark because registration could violate the IACA, the Nation successfully argued that “[t]he goods offered under the Mark are not art works, crafts, or handcrafts within these definitions contained in the Regulations [for the IACA].” The court wasn’t willing to find judicial estoppel based on the limited record before it, and it wasn’t clear whether judicial estoppel would apply because the IACA’s regulations might have changed after the Nation made its representation to the PTO. Anyway, it wasn’t clear whether the Nation’s statement about “goods” referred to particular types of clothing, or contemporary clothing generally. (This is an interesting issue, and the Nation does seem to have a problem here. If it wants freedom to make “Navajo”-branded garments anywhere and in any quantities, as a trademark owner normally does, isn’t that inconsistent with the IACA’s goal of supporting Native American artisans?  For what it’s worth, I don’t think the change in regulation text makes a difference—I read the old and new versions of the regulation and I don’t think that the statements about apparel represented a change in the law.) 

Given the holdings above, the New Mexico Unfair Practices Act claims also survived, with a certification to the state supreme court.  UO argued that the Nation lacked standing because it wasn’t a buyer of UO’s goods.  However, the case law simply suggested that a seller of goods couldn’t sue the buyer of its goods under the NMUPA.  Here, the Nation alleged that false representations were made to the consuming public, so the lawsuit served the statute’s consumer protection goals, albeit indirectly.  The statute said that “any person” injured could sue, and many other states with similarly broad language allow business competitor standing, though there’s no clear consensus.  Given the limited briefing on the issue of whether a competitor would need to allege a public interest component and whether, if there is one, the Nation sufficiently alleged it, the court was inclined to certify the issue to the New Mexico Supreme Court, and so the court stayed its standing ruling until it received supplemental briefing.

The state law trademark infringement and dilution claims also survived, though the Nation would have to amend the complaint to allege fame in New Mexico.

CLS and IP part 3

Panel 3: Politics and the Public in IP and Info Law Policy Making

​Michael Burstein, Assistant Professor, Benjamin N. Cardozo School of Law

1990s: powerful actors wrote copyright laws as they wished. Tech companies arrived on the scene with hands in multiple issues, distinct from telecom/cable providers and from Hollywood. Maturation of public interest communities: Public Knowledge, EFF as forces.  Rise of grassroots/netroots that tends to be more organized than public interest/grassroots movements that worked against term extension/in telecom in the 1990s.

Range of issues has also changed; issues moving out of silos. Interested in tech? You can’t follow just telecom, or just copyright.  Cybersecurity; free expression; entrepreneurial policy/funding concerns—end up talking about securities regulation and crowdfunding.

Number of forums in which issues are debated and policies made have expanded. Private self-help deeply enmeshed in public policies; treaty negotiations; new regulatory actors, including the Copyright Office which now is taking an active role in policymaking.

​Derek Khanna, Visiting Fellow, Information Society Project at Yale Law School

Copyright isn’t coherent now.  It’s the result of lobbyists who’ve succeeded in perverting the law and the way we frame issues relating to copyright.  Success in doing so shouldn’t be confused with constitutional fidelity—invoking natural rights or constitutional rights doesn’t make copyright now consistent with the Founders. Myth: copyright is free market capitalism at work, not a gov’t monopoly. Myth: copyright leads to innovation; truth is that too much and not enough are both bad, and we have too much.  Wanted to reform statutory damages, reform fair use, deal with false DMCA takedowns, and limit the copyright term.  After the memo came out, endorsed by major conservative organizations, but then taken down.  Some industry lobbyists on the right called Khanna a Marxist for wanting more economic growth.

Strategy: reform copyright with small victories. This will take a generation and a movement. But we can’t just stay on the defensive, watching for the next SOPA. If we slumber, they’ll sneak provisions into other laws. Already happening—using ICE to go after websites; using treaties like TPP.  Convinced payment processors to shut off funding. Much of SOPA has been implemented without codification in law. Current laws are nearly as nefarious as SOPA would’ve been. Progress requires bipartisan support, so we need strategic choices. Focus on areas of common interest.  And on asymmetrical warfare. 

First battle: cellphone unlocking. Major misstep by other side: Jan. 26, became illegal for individuals to unlock their own phones, using a SIM card from another carrier. Pro-free market activity that exists in every other market in the world.  AT&T & Verizon asked for it to be illegal, but over 100 wireless carriers on the other side were ignored. 32 million Americans potentially became felons.  Well, will anyone be arrested? Laws that are seldom enforced but could be broadly enforced are the most nefarious.  White House petition; reached out to members of Congress, who didn’t care. But when the White House reversed previous position and endorsed unlocking, FCC announced an investigation. 6 bills introduced and 2 pending. If you take an isolated, asymmetrical battle you can often proceed in positive reforms.

Next battle: accessibility tech for the blind and deaf to deal with media.  Existing exception requires blind person to develop code herself to closed caption a movie. The idea this has anything to do with piracy is absurd. We can create a coalition of the willing (!).

​Jessica Litman, John F. Nickoll Professor of Law, University of Michigan Law School

Congress has essentially delegated lawmaking to copyright lobbyists, for more than 100 years. Pattern of lobbyists getting together, excluding people at whose expense they hope to change the law.  If targets find out, they show up and can block the bill.  CTEA was opposed by bars and restaurants who didn’t like paying ASCAP; this delayed term extension for several years until the bill added an exception to allow bars to play music; this makes us violate TRIPS, but that was the price bars were able to exact.

Copyright lobbyists never seem to invite targets to negotiate/take interests into account, which is how to block the bills.  Why? Copyright lawyers learned from their own battles that there’s a real strategic advantage in being able to design the initial bill, which you can do with targets out of the room.  DMCA is a combination of several different bills. One piece—WIPO treaties implementation –is 1201 anticircumvention provision. Another part is ISP safe harbor, 512, initially drafted by phone companies and ISPs. Copyright owner lobbyists decided they didn’t get a good bargain with notice & takedown, and people who negotiated 1201 exceptions have decided they’re all useless because they’re so narrow. So the sense is: if you can make the architecture, you can narrow the damage from other interests.

Some copyright lobbyists have views on who is and isn’t a legitimate participant in the bargaining. In the aftermath of SOPA, Paramount sent out a corporate VP to talk to law students all over the country. We learned that the story the studios were telling each other about what happened to SOPA was that Darth Google whipped people into a frenzy by telling them lies.  Students asked questions about SOPA provisions; there was a secret manager’s amendment that didn’t have some of those provisions, and Paramount felt that it was improper for the public to respond to the only bill text that was public.  Don’t yet regard audiences as people with right to have views, nor Google as an entity with a right to sit at the table.  Public Knowledge is at the table, but not necessarily heard.

Pessimistic story: the pendulum has swung toward public involvement in IP, but it will shortly swing right back. Copyright lobbyists control the process & realize that ordinary people may make trouble, so they have strategies & tools to damp it. Controlling the initial draft/limiting exceptions; maintain control and secrecy by going overseas and making this a treaty. If it’s a treaty, no matter how sympathetic the Administration has been elsewhere, it’s adamant that we have no right to know what we’re signing away in treaties.

Optimistic: politicians are beginning to pay attention to the fact that citizens are paying attention.  PK and EFF are figuring out ways to harness the attention.  Cellphone unlocking and open access to federally funded research are successes—at least the White House thinks ordinary people are legit voices. But what Litman learned with the DMCA is that lawmaking is a job done better by professionals. Amateurs screw it up.  We got played; they whooped us.

Rick Whitt, Vice President and Global Head of Public Policy and Government Relations, Motorola Mobility, Inc.

Zoe Lofgren said: SOPA went from inevitable to unthinkable in a single day. A success that will be difficult to replicate.  Crystallized concerns; hit at the right moment, when White House had its own second thoughts; required a lot of organization; could lose novelty and impact over time. 

Internet engineers carefully pointed out issues with SOPA, including how it would harm the DNS and harm substantial innocent uses; sent letters to Congress that went unread. There were a number of countermeasures that could be employed by people getting around the mandate—both overbroad and underbroad.  Those voices weren’t heard, and even today the lobbyists on the other side are trying to “harness the users”—maybe tell our side of the story before every movie starts. Still no meeting of the minds.

Sherwin Siy, Vice President of Legal Affairs, Public Knowledge

Don’t disparage the engineers! That primed a number of members’ offices; members didn’t know much about the issues, and might have been sold on cosponsorship by being approached by others who said this was an uncontroversial enforcement bill.  Maybe the letters didn’t make them challenge party leadership, but that was enough to get some idea that there was an actual controversy with at least one other side. Public protest had more legitimacy because of the groundwork.  Not just an elaborate digital prank.  (Build a Death Star, anyone?)

There isn’t as much of a left/right divide, but different approaches.  Silicon Valley v. Hollywood—a lot of members do see that as real and will look at “both sides,” though publishers, libraries, etc. don’t make it into that consideration.

Maria Pallante’s testimony about the next great copyright act: seemed to have nostalgia for the past in which scholars debated fine points with people involved in repeat transactions with IP—a collegial environment. That room in the 1950s, 60s, 70s was a collusive atmosphere. A club with implicit rules and norms as well as explicit rules that ended up in the statute.  Example: first sale, where one argument against the ultimate result in Kirtsaeng was “oh, we’ll never sue Toys for Tots for reselling a foreign made work.” But some individual would get sued (Kirtsaeng!), because small entities and individual consumers are distributors/competitors of copyright owners. New players—consumers, users, hobbyists—will be sued because enforcement is easier than ever in terms of which infringing acts are visible because they’re networked. People aren’t swapping mix cassettes or CDs, but online.

​​These are the assumptions baked into the heads of legislators, and these are the attitudes we need to challenge. 

Copyright reform is coming.  Register is saying it’s time for a fresh look. We will be addressing not just safe harbors and circumvention, but possibly 106 generally. Our system for digital audio public performance being wildly different from nondigital is a strange artifact. Fundamental questions coming up. 

Hear a lot in DC: don’t open up these issues. If we open it up, we might lose ground. If you say that, you’re saying copyright law is as good now as it will ever be.

Q: how much does concentration in telecom and content create a problem? Copyright alert system exists because a few stakeholders could agree to essentially private law.

Siy: definitely a big deal.  (He notes: Siy’s boss is on the advisory board of the copyright alert system.)  It’s not just the alert system, which could exist with plenty of competitors; it has teeth because there’s not much competition.

Litman: As a historical matter, Congress rather unreflectively appears not to have believed that the copyright statute in fact affected individual viewers and readers as recently as the early 1990s.  Why?  Unclear.  Seemed to be general consensus, also shared by the Copyright Office, that the copyright law didn’t make individual personal copying illegal. There is still some political salience to the idea of listener’s rights, consumer’s rights—the first sale story is an effective one.  A lot of members of Congress may be willing to respond to it. Some DMCA pushback came from questions and stories about people using Bookmobiles, and whether this would still be legal. To the extent this is a problem for Joe Constituent, that’s one wedge that might be effective. Congress never sat down and said “let’s make every citizen liable for thousands of dollars in statutory damages.”

Khanna: Important for people to analyze issues of a law that makes everything illegal, even if unenforced.  For innovation, it’s a dangerous threat. Aereo: not many are willing to take the risk of huge multiples of statutory damages.

Frischmann: from a CLS perspective, isn’t the ITU a good thing?  US hegemony on internet governance through ICANN is exactly what’s being challenged by lots of countries that don’t have a say?

Whitt: there are some good arguments from countries concerned that the US through its contract with ICANN and general influence has too much sway and needs to be pulled back. The problem is that the ITU is the wrong kind of instrument—a government-to-gov’t treaty organization; private citizens can’t become members; deliberations aren’t public; third parties typically not invited; corporations can become members, but not with full access.

Polycentric governance gives the internet its great power—volunteers (though many come from corporation) who propose and debate standards.  End-to-end and openness were under attack at the ITU.

Burstein: Litman said professionals are needed; Khanna says we need winnable fights.  For those of us who inhabit the academy, is what we write relevant?  What more can we do to make what we do more relevant to the policy process?

Whitt: the garbage can of politics—different elements mix together in the political stream. (1) Identifying problems—what lots of members of Congress like to do. (2) Identify what solution might look like. (3) Actual political process then of getting solution enacted and implemented. Need all three to be successful.  Problem identification occurs sporadically, through policy windows/big event or slow steady movement of people. Then you get competition among solutions. Members of Congress often do want to understand and try to come up with good solutions. That’s when academia can be translated into solutions.  Engage people from the bottom up as advocates.

Khanna: legal academic can be useful when people throw out silly counterarguments taken as gospel.  Response to his memo from content industry was that he was a Marxist and that copyright was a natural right.  Tracing the history of natural rights argument is important for policy. 

Thinking that piracy is bad and that therefore current copyright saves jobs is like thinking that terrorism is bad and that therefore the TSA is the best way to protect us on airplanes.  (This line apparently kills among conservative audiences.)  Talking about inhibiting innovation has broad credence on the right, and support on the right is needed.  Accessibility for the blind and deaf; parents dealing with porn—these are useful.

Siy: Staffers don’t read law review articles. Five pages is too long. They have time for one page. They have a lot on their plates.  That doesn’t mean the law reviews are useless, because they back shorter pieces that can come out of the academy or elsewhere that provide the necessary background and actual research that gives those arguments credence.

Litman: as someone with no Hill experience, what you can do, at least once you have tenure, is infect folks with the virus of your ideas so they don’t know where it comes from.

Siy: proposals come from offices that have concepts whose origins they don’t know (does anyone? Sorry, had to say it).

Q: What will the industry do in response to a populist uprising now that they’ve seen it, for example Aereo?

Siy: Someone trying to fix Aereo wouldn’t cause an uprising; not enough people directly affected, so the dynamics are different.

Khanna: DirecTV and others may really get involved in using the tech, and if they’re using that for retransmission you may have a sizeable amount of lobbying power on the other side.

Siy: there are so many things broken in public performance and retransmission consent, not just in copyright but in telecom, that someone trying to act is going to trigger a bunch of controversy. Unlikely to slam through an Aereo fix.

Litman: cheaper to buy the company and shut it down.

Q: will we see anything like the Pirate Party in Europe?

Khanna: Unlocking in particular, he wanted to do civil disobedience; people were afraid of being arrested. IP community isn’t as acclimated to the tools of civil disobedience as other communities of the past.

Litman: OTW started as civil disobedience but succeeded in nudging the law. It decided to host fanworks despite the risk, even though it was a community committed to continuing its activities—weren’t necessarily taking more risk except by regularizing their efforts and their audience. Also, academics all over the world are putting textbooks up on servers so students won’t have to pay; students ignoring mandatory education about how they shouldn’t get music from bittorrent.  (I’d add professors in the US using courseware sites.)

Siy: Carl Malamud digitizing codes in which people claim copyright, putting them up online; DC backed down from copyright claim, and he didn’t really want to get sued, but he thought it was important enough to do.  Civil disobedience isn’t the same as wanting a free album.  Thoreau: he was in prison for refusing to pay taxes to support the Mexican War. Connection between the law he violated and his political objective wasn’t as tight as we ordinarily want—someone with a generalized grievance against the government generally shouldn’t just stop paying taxes.

Whitt: civil disobedience is about posting/speaking online, not necessarily getting arrested in the Library of Congress. If you want to make a point, though, chaining yourself to the LoC is more understandable to those with low tech savvy.  SOPA/PIPA was largely online, though.

Q: Smith was reelected with 63% despite proposing SOPA.

Whitt: Texas; safe district; other issues resonated more with people in his own district.

Siy: unless it’s a particularly nerdy district, copyright is unlikely to be an election issue. Staffers ask where callers are from.  This is the job: represent the citizens of the district.

Khanna: We need to learn the DC rules, and then hack the process.  We need to primary bad candidates. Keep ammunition going after the White House petition; AT&T & Verizon created an astroturf campaign saying “don’t take away my subsidized phone”; “this will lead to more phones being stolen.”  Specious, but we need a way to keep our campaign going with letter-writing, drafting candidates to run for office. Innovation caucus.

CLS and IP part 2

Panel II: Critical Legal Activism & Netroots Movements

Brett Frischmann, Professor of Law and Director of the Intellectual Property and Information Law Program, Benjamin N. Cardozo School of Law

Victoria Ekstrand, Assistant Professor, UNC School of Journalism and Mass Communication

Intensification: taking existing legal structures and turning them on to empower ordinary people—similarities to Creative Commons.

CLS: exposed law’s indeterminacy; value of interdisciplinarity in finding how the law actually worked on the ground; legal system created its own realm of insiders, blocking participation from untrained legal actors; impenatrability of law. Struggled to effect change. If CLS 1.0 was a movement, it was mostly on paper.

IP wars have been a privileged location to help realize some of the goals of first-wave CLS. CLS wasn’t the cause, but the goals have nonetheless been realized.  Who made that happen?  Academics outside the law schools have become greatly involved in discussion: Richard Stallman; Vaidhyanathan, Gabriella Coleman—copyright as historical and current power struggle. Nonmembership organization: creating tools for online collective action.  Some may be “clicktivism,” subject to criticism; others are like Fork the Law, working on tools to allow more direct citizen commentary on law/proposed legislation.

Ubiquity of copyright matters; so does narrative.  SOPA/PIPA: Wikipedia being down, and phones in Congress being jammed, fuels a compelling story. So did the tragedy of Aaron Swartz’s death.

CLS: recall that law professors were denied tenure over CLS, so the term became less prevalent, even though students come to law school to make the kind of change that CLS offered. Students increasingly have diverse interests and skills.  Torchbearers for new legal practice.

Siva Vaidhyanathan, Robertson Professor in Media Studies and Chair of the Department of Media Studies, University of Virginia

​Intellectual history of the free culture movement/info policy activism/copyright activism.  One part of that story: A ragtag group of IP scholars happened to notice changes, threats, opportunities; got together with librarians, others, and raised some early warnings about scary proposals in Congress that ultimately became law. No necessary direct lineage between CLS and free culture, but because the academy itself was altered by the presence and often painful experience of CLS, you can’t help but pay attention to the way in which CLS changed the habitus of the legal academy.  It’s almost too easy to go to Larry Lessig and Jamie Boyle—look at who they and the rest of us are footnoting and reading.  Pam Samuelson & Jessica Litman; Julie Cohen’s work exemplifies the powerful critique of CLS.  Ann Bartow & explicit feminist analysis.  Tushnet, Katyal.  A feminist/subaltern influence on the rest and on public policy.  Anyone starting out can read Litman’s Digital Copyright.

Examine battles in 70s and 80s between CLS and law & economics.  Huge effect on regulatory and legal policy while CLS says, wait, the story isn’t that simple; complex dynamics of power and human relations.  CLS is also trying to displace more established liberal rights framework.  Complicates relationship with free culture, because law & economics doesn’t have a clear set of answers about what copyright policy we should have.  Libertarians like Kozinski/law & economists like Posner can be fervent advocates of looser IP, though not always.

Caveat: activism.  IP law’s contestation by multiple stakeholders doesn’t mean direct link to CLS, because lots of areas of law are contested in that way. But spirit of CLS has been taken up in law schools in lots of ways whether profs know it or not. Cultural studies has also loosened up the academy.  Left-wing cultural theory was quashed in a way; it’s no longer the thing to write dissertations quoting Deleuze & Guattari. However, the influence of Barthes and Foucault and the Frankfurt School are now so embedded in the common sense of the academy, and therefore the classroom, and therefore the education of many at elite universities, that it plays a role in how they see the world. Doesn’t mean that it’s dominant, but it’s there.

Also remember CLS and legal realism: pragmatism never went away. While Legal Realism went out of fashion for many reasons, it was never out of political and intellectual life of the US. 

CLS absorbed without being identified. Last week’s arguments in US v. Windsor, Scalia and Alito hinted that they couldn’t accept rights-based analysis, because they’d lose; they can’t do a textual reading of the case, so there’s no text to read.  So Scalia asserted the falsity that sociologists disagreed about the effects of gay marriage on children, and Alito said that gay marriage was new—as if their job was doing sociology, albeit badly; as if Gunnar Myrdal should show up and give them a brief.

John Tehranian, Irwin R. Buchalter Professor of Law, Southwestern Law School

IP is suddenly on the radar of 16-year-olds.  Registration requirement for statutory damages. This has disparate impacts on small creators; can’t practically litigate their copyright rights. Yet sophisticated content creators have the hammer of statutory damages and attorneys’ fees, such that even a de minimis infringement might be worth pushing into court.  If you infringe Hollywood, you go to jail/bankrupt; if they infringe your work, the lawyers ask first whether it’s timely registered, and they can then say “go ahead and sue.” This creates a massive power differential.

Compare response to Copyright Term Extension Act and SOPA/PIPA. CTEA was passed on a voice vote; 15 years later, massive individual awareness by individuals who typically aren’t political.  Critical activism in copyright transcends traditional political lines. Distinguished from predecessor CLS.  Maybe it can therefore see more achievements in the real world.  Not just ivory tower/elitist movement. Ardent supporters of copyright, such as Justice Ginsburg, often from the left; critics can be from the right, like Derek Khanna, viewing copyright as corporate welfare from the government.

Frischmann: what about netroots activism is different?  What makes it critical and not just activism? What makes it fail and what makes it succeed?

Ekstrand: has the characteristics of regular activism. There’s something unique about internet infrastructure in reaching 16-year-olds, as initial crits really wanted to do but couldn’t. Evgeny Morozov warns us against attributing too much to the internet; there is a tendency for folks to click “I agree” and move on, but there’s more too it than just getting excited about tweets and emails to members of Congress.  Students in particular have a sense that they have tools at their disposal.

Vaidhyanathan: What kind of activism today isn’t digitally mediated? Is anyone planning a campaign that eschews social media/YouTube?  How would we test this proposition that digital is different? When humans want to get something done, they employ the available tools. Nothing profound about that. Not to say that each media system has same level of reach or same level of embedded friction.  Activist ecosystem today: so much noise. If we are engaged with any sort of movement from any position, we are instantly profiled and barraged with requests for attention and money, which diffuses attention: how to know whether I’m making a difference.  It will be years until we can measurably assess how they altered the political environment of the US, let alone the world.

True that we often focus on successes, not failures.  Wikipedia is the universal solvent in literature—anything can be like Wikipedia!  No, Wikipedia is special, perhaps a one-off. We’re waiting for the second Wikipedia, second Talking Points Memo; waiting for Howard Dean campaign to finally win a primary. 

SOPA/PIPA is fascinating not just because Wikipedia and Reddit and Google were involved. Don’t forget that people were banging pots and pans together for a decade to get a vocabulary and a clear narrative about nightmare scenarios out there so that people, even if only elites, understood that there was a lot at stake. Took a while to prime the public to care about things like this and enable the reaction.  The people who finally wrote to Congress understood because of what had gone before.  There have been a dozen cases where Reddit was not a great example of the constructive use of rage.

Tehranian: Lessig on losing Eldred: what do you expect when you fight all the money in the world?  SOPA/PIPA, some of the money was on the other side. Taking place at the same time as Occupy Wall Street and Wikileaks; we don’t talk about those any more even though they had access to the internet, new tools, youth.  SOPA/PIPA had Google and other powerful companies that could countervail the forces of Hollywood. Was a big moment, but need healthy skepticism: what made it different was the fairer money fight.

Q: Copyright alert system (6 strikes) & Justice Dep’t help—the internet goes both ways. IP maximalism is driving private surveillance—watching you while you watch Netflix, etc.

Vaidhyanathan: Right, which is why it’s unhealthy to bracket out copyright from other info policy issues. FB’s new app for your phone is a massive surveillance tool.  Copyright and privacy are not separate, as Julie Cohen has argued.

Q: what about interests not represented by either side?

Vaidhyanathan: should challenge notion that info maximalism is our goal. Not fighting for the good of “the internet,” but rather the good of people, in which the internet is an important tool. Don’t essentialize the internet or internet freedom; it’s about what people can do. Keep challenging corporate platforms; don’t be satisfied with a friend on our side for one particular issue, especially when it claims to represent the public interest. Challenge the liberal US-centric narrative of the public domain by paying attention to cultural claims around the world. Also, pay attention to labor issues as well. Valorization of public domain goes hand in hand with dissolution of status of labor too often.  Complicated; will undermine political efficacy, but as responsible scholars these are issues we can’t avoid.

Critical Legal Studies and Intellectual Property at Cardozo

Cardozo Arts & Entertainment Law Journal Spring Symposium

Critical Legal Studies & the Politicization of Intellectual Property and Information Law

Panel I: Critical Legal Theory in IP & Info Law Scholarship

Peter Goodrich, Professor of Law and Director of Law and Humanities, Benjamin N. Cardozo School of Law

CLS keeps returning in different guises.  A degree of necrophilia or transmutation.  New generation.  Moved from practice to theory to aesthetics. Move into the institutions.  Studying the image and the virtual.  Law relating to the image from Romans: if an artist paints on my palette, who owns the image?  The artist because of the power of the image.  Virtual means that authorship is in the origin, and also comes from vis/force and virtus/angel.  The immaterial; the movement to what cannot be materialized directly.

Rebecca Tushnet, Professor of Law, Georgetown University Law Center

What I think of as my critical scholarship: First Amendment and copyright.  I’ve written about transformative fair use and the way it can assist in shrinking conceptions of fair use inflected by the First Amendment; if the paradigm of fair use is the little guy angrily speaking truth to power, that fits into a First Amendment narrative but doesn’t protect many of the spaces in copyright that are also important to free speech, like the freedom to make private performances, various educational copying limitations, multiple copies for classroom use, etc. I suggest that pure copying can also serve First Amendment purposes, in access, in self-constitution, in communicating important messages to other people, as distributing the Bible does.  Because pure copying does serve free speech purposes, the conflict can never be fully reconciled.

Copyright’s treatment of images—here I really do move from theory to aesthetics: a diagnosis rather than a prescription. 

My other work: Organization for Transformative Works. What is it?  Created to push back against commercialization of so called “user-generated content,” which is to say creative works made by people who love existing works; nonprofit; under US law.

Terminology: Organization: legitimacy versus the incredible diversity and non-organization of actual fans. Transformative: adopts the legal language of fair use, setting up authorial claims as equal or not subordinate to the claims of other authors. Works: for works, not for workers, even though conditions of production and communities of practice are vital to the actual creation of fanworks; separately, the idea of the work (instead of the story, movie, etc.) has important consequences for how creative activity is understood as implicated in but also apart from the so called ordinary operations of the economy—the making of chairs, cars, etc.  Work gives dignity to fans who are often culturally disadvantaged, mocked for consuming the very things produced to be attractive and consumable.  And of course consumption here means intellectual activity—watching, listening, thinking, and creating new things in response.

So what are we doing?  Example: DMCA anticircumvention exemption hearings. Participated in order to explain what fan vidders do. Necessary claims to authorial genius (taken out of community)—example of Closer, a Star Trek vid that went viralsome years back. Have to identify works that are intelligible to outsiders and understandable as aesthetically and politically “good”—well done, legible critical message. We don’t believe that quality in that sense is important to fair use, but strategically we don’t get any exemption if we don’t convince outsiders that there are a substantial number of fair uses.

Second kind of quality: technical quality. Do you need to have good quality footage to make your critical uses?  Can’t you just film the screen or use screen capture software?  Use of technical quality forces us further into defending a particular aesthetic and also subjects us to someone else’s determinations about how good our messages need to be to deserve an exemption.  Copyright Office disavows quality judgments, but is still making them in deciding that some people but not all people need more than screen capture to do their artistic or educational work.

Sonia Katyal, Joseph M. McLaughlin Professor of Law, Fordham University School of Law

Equality and access in digital contexts. Parallels worthy of exploration.  Structural critique of IP deeply informed by CLS.  Art. I, sec. 8: exchange—to promote progress, law provides exclusive rights. Private right for public good is key framing issue.  Do IP rights always have to promote the public good?  Extending copyright eventually doesn’t seem to do that. The question of how we construct the public good/social welfare is similar to CLS approaches to goods beyond economic efficiency: expression, freedom as a good in itself. Social relationships and dynamic entitlements about allowing access to others instead of pure exclusion right. Influenced by Lessig, Litman, Vaidhyanathan: critical information studies movement. Scholars steeped in other areas of scholarship before IP—Lessig was constitutional law, Vaidhyanathan from library science—far beyond economic efficiency model embraced by others.

Emergence of cultural critique of IP.  The power of the image; the power of subversion, parody, satire in recoding established works.  Intersection between CLS focus on minority rights and distributive justice and the way in which fair use scholars focused on the right of minorities to recode works—rap and jazz and creativity beyond the control of copyright.  Tushnet on women recoding texts through slash, gender parody, etc.  Scholarship unpacking the romance of authorial control and the way in which audiences can recode works.  Questions like: who’s served by IP control? Who’s being excluded and why?  Ann Bartow: areas of creativity, particularly women’s creativity, completely unrecognized by copyright law.  Some success in that critical approach.  Infamous Gay Olympic cases coexist with more modern cases defending gay activists’ rights to parody websites (Fallwell.com).  Critical approach to copyright asks how entitlements are distributed and their effects on disenfranchised groups; use fair use to restore some rights.

Third: indigenous groups; traditional knowledge; new ways to define and manage intangible resources. Social relations to property: strong rights of exclusion give way to more malleable group rights/collective knowledge.

Open source: parallels to CLS’s institutional critique.  Nomos & Narrative: the same rhetoric can be seen in activism/disobedience by groups like Downhill Battle, which organized the Grey Album protest.  Have forced malleability.

Q: Cariou v. Prince.

RT: Transformative within context, even if not understood as new meaning/message by outsiders.  AndyWarhol Foundation brief is fantastic on this.

Katyal: We live in a different world for uses of imagery. It was easier to tell who was David and who Goliath, commercial/noncommercial.  We have structures suggesting clear boundaries but the reality is that when fair use expands it expands for both commercial and noncommercial entities.  Well-financed artists can come along and appropriate work of less well-financed artists. Distributive consequences among artists.  Art production as a system makes it hard to tell when things are commercial.

Goodrich: scholarship can give us facts: who is doing what to whom?  CLS is vibrant/never faded in international law.  Assertion of identities in oppressive contexts—all the way through to the Arab Spring.

Katyal: one big parallel is unmaking or recoding the idea of sovereignty.  CLS was useful to pierce the sovereignty of a work; authorial control is indeterminate; audiences/third parties have power to interpret. Internationally, that’s similar. Piercing private and public sovereignty; fluidity in ability to reinterpret.

RT: power flows. Internationally: USTR goes to WIPO and gets anticircumvention language, then goes to Congress and says we have international obligations.  Fluidity is not a clear win for anyone.  It can be exploited especially by those with lobbyists; documentarians didn’t know that their fair use rights had been given up in a foreign country. Power is slippery: Ultraviolet/streaming media as the future; control will be moved so that again you as individual will only be hailed as a consumer of video, on demand, but not as a creator or an owner.

My thoughts listening to Katyal: 2009 DMCA hearings: Vividly recall question from Copyright Office panel: couldn’t we give an exception just for women and racial minorities?  Put liberal commitments (diversity, property/control) into tension. 

Q: Maria Pallante said that the author’s interest is the social interest.

Katyal: Doesn’t think that’s so.  Copyright law can’t be authorial control only.  Constitutional principles: First Amendment concerns over preliminary injunctions.

RT: work is valuable only because of the audience—the farmer and the railroad are both “responsible” for the railroad’s sparks that set the crops on fire. We learn that in law school, but copyright tries to make us forget that. Responsibility doesn’t mean a natural allocation of rights or responsibilities; it has to be a choice.

Q: What about using Citizens United to help rights of free speech in IP?

RT: Deven Desai has a good article on this for trademark. I am dubious that it will work because though the logic is very strong I don’t believe that courts will adhere to logic when it comes to IP rights, any more than they did in Eldred and Golan.  “Copyright” proved a stopping point.

Rack and ruin: search queries no aid to Nordstrom

Nordstrom, Inc. v. 7525419 Canada Inc., No. C12-1387 (W.D. Wash. Dec. 27, 2012)

Older case, but of interest because of its interpretation of search engine results.  The district court found that “Beyond the Rack,” which does online short-term sales for members only, was not likely to cause confusion with Nordstrom Rack, despite Nordstrom’s registrations for RACK and THE RACK.  In practice, the district court found, RACK and THE RACK were always presented in close connection with the Nordstrom mark (does that mean the registration should be invalidated?), and BTR’s uses were not likely to cause confusion.

Analyzing search traffic over “various periods” during 18 months, about 117 people arrived at nordstrom.com by typing “beyond” and “rack” into a search engine.  About a third also included some permutation of Nordstrom, such as “norstrom,” “nostram,” “nordstron,” “nordstrum,” “northstrom,” or “nordstrm.”  During another, more recent period, Nordstrom was able to identify 47 visits to nordstrom.com from similar searches, with 27 also including a variation of Nordstrom.  The court stated: “To the extent that this evidence shows actual confusion, which is debatable, it indicates that any confusion probably benefits Nordstrom; the majority of Nordstrom website ‘hits’ … resulted from the input of only ‘beyond’ and ‘rack,’ the main words in BTR’s mark, and the conclusion follows that some of these consumers were actually looking for BTR, but were instead lured to Nordstrom’s website.”  (The court nonetheless rejected a reverse confusion theory, as there is no chance that BTR’s mark will overwhelm Nordstrom’s.)  If consumers were inquiring about the relationshp between the parties, that was too ambiguous to demonstrate confusion.

As for social media, for a 20-month period, Nordstrom offered only six examples of alleged confusion.  At least one indicated “the opposite of confusion”: comparison, not association.  “Just like Nordstrom’s Rack but online. It is free to sign up and when you do, you get a $10 first time credit!” Another post used metaphoric language: “just ordered a bunch of stuff I probably don’t need from beyond the rack. think online nordstrom rack.” A third “has been so stripped of context that its meaning is unclear: “nordstrom rack even cheaper. Beyond the Rack.”

Three of the examples did indicate confusion: “Just received email from Nordstrom Beyond the Rack - Tom Ford sunglasses on sale”; “NORDSTROM bought BeyondTheRack . . . .”; and “If you didn’t know . . . @BeyondTheRack is owned by @Nordstrom but w/o coupons & returns differ. BTR sells off leftover & reject inventory.”

The court considered these examples de minimis given the extended period of coexistence, and also held that they didn’t manifest confusion affecting a purchasing decision, as opposed to confusion in the abstract.  The last one made very clear that the parties’ policies differed.  The court was more impressed that Nordstrom had received no customer complaints in any form.  “If, over the course of the past three years, consumers had purchased from BTR under the mistaken belief they were dealing with Nordstrom, only to learn they could not take advantage of Nordstrom’s generous return policy, or forming some other reason for dissatisfaction, Nordstrom would have presumably received at least one call, e-mail, or letter, or could have discovered at least one social media post or blog entry to that effect.” Nordstrom’s failure to proffer such evidence belied its assertion of confusion.

The court then proceeded to wildly overestimate consumer privacy consciousness in its discussion of consumer sophistication: “Although the goods at issue might be considered inexpensive, a consumer desiring to purchase items from BTR must become a member and provide personal information, including an e-mail address. Because a relationship is formed between BTR and its members as a prerequisite to any transaction, the Court cannot focus solely on the price of the items being offered and sold.”  Instead, “a reasonably prudent consumer would exercise a higher degree of care in dealing with BTR than he or she would in making cash purchases at Nordstrom Rack’s or its competitors’ brick-and-mortar stores.”

Overall, given the weakness of Nordstrom’s marks, a crowded field of similar uses of “Rack,” and the level of care exercised by “flash sale” customers, the court wasn’t willing to find a likelihood of success in the absence of strong evidence of actual confusion.

Turning to the remaining factors, the court joined the courts holding that eBay abrogated the earlier rule that a presumption of irreparable harm arises from a showing of likely success on the merits of an infringement claim, contra McCarthy. “[F]or purposes of securing either a preliminary or a permanent injunction, irreparable harm may not be presumed in the context of a trademark infringement claim.”  And Nordstrom didn’t offer much evidence of irreparable harm: “no customer complaints, no indication that BTR sells inferior products or offers poor customer service, and no record of lost sales or of misdirection from Internet search engines.”  Plus, though the court didn’t hold Nordstrom’s extensive delay (about 2 years) dispositively against it because Nordstrom was busy fending off a challenge to the validity of the RACK mark, it was relevant that Nordstrom did express willingness to coexist with BTR before negotiations broke down over whether BTR could expand beyond “flash sales,” and that BTR’s business had stayed basically the same as it was during the negotiations.

Claims over allegedly inhumanely raised chickens survive

Hemy v. Perdue Farms, Inc., No. 11-888 (D.N.J. Mar. 31, 2013)

Discussion of previous opinion. Hemy brought a proposed class action alleging that Purdue’s Harvestland brand misled consumers by using the terms “humanely raised” and “USDA Process Verified.”  She alleged that she wouldn’t have bought the premium-priced chicken had she known that the chicken wasn’t in fact treated humanely or differently from other chickens on the market.  Hemy alleged that the National Chicken Council’s (“NCC”) Animal Welfare Guidelines and Audit Checklist for Broilers form the basis for Perdue’s “humanely raised” claim, but that the NCC guidelines were nothing more than the industry standard, which is inhumane and has huge loopholes.  Harvestland chickens are allegedly “shackled by their legs, upside-down, while fully conscious; electrically shocked before being effectively rendered unconscious; cut ineffectively or partially while fully conscious; drowned/scalded while conscious; stored in trucks for hours under excessive temperatures; subject to lighting conditions which result in eye disorders; injured in the process of being removed from their shells; subject to health problems and deformities due to selective breeding; and provided no veterinary care.”  Hemy alleged the existence of statements from Perdue indicating that the NCC guidelines were the basis for its own program.  Further, Hemy alleged, the guidelines are followed by almost every other mass chicken producer; sanction cruel practices; and were nonetheless violated by Purdue. 

Hemy allegedly believed that “humanely raised” meant “treated humanely throughout life, including quick and painless death,” and also alleged that an online consumer survey of 209 people showed that this belief was reasonable.  (As I suggested before, it seems the worst kind of sophistry to say that “humanely raised” has an implied asterisk reading “but we reserve the right to horrible, painful slaughter!” when the animals are being raised for human consumption rather than, say, sale as pets.)

Hemy further alleged that she interpreted the USDA Process Verified label, in conjunction with “humanely raised,” to mean that Harvestland chickens were approved/endorsed by the USDA as humanely raised. However, the processes to be verified are allegedly defined by the company itself, making the “USDA Process Verified” claims misleading.

Applying Rule 9(b), the court allowed some of the claims to proceed.  For purposes of a motion to dismiss, plaintiffs successfully pled that Purdue’s guidelines were only the industry standard, and that the chickens were treated in the ways described in the complaint.  Though the court had before it only a limited factual basis to conclude that Harvestland chickens were treated in the same ways as Purdue chickens generally, plaintiffs couldn’t be expected to plead facts solely within Purdue’s knowledge.

The prior opinion found that plaintiffs failed to plead that “humanely raised” applied to slaughter. Purdue argued that plaintiffs still failed to allege facts showing that consumers understood “raised” to be more expansive than dictionary definitions.  Plaintiffs rejoined that reasonable consumers would expect that humanely raised chickens “would not be shackled upside-down, electronically shocked, or bled to death while fully conscious and in intense prolonged pain[.]”  The definitions of “raising” and “slaughter” were contested, and it was plausible for a reasonable consumer to construe “humanely raised” “as speaking to Perdue’s processes up until the time of death, including slaughter,” especially given the internet survey.

As for the USDA Process Verified label, plaintiffs argued that its proximity to “humanely raised” was key, relying on the internet survey allegedly indicating that “58% of consumers believe that the USDA Process Verified shield meant that the company meets the standards for the treatment of chickens developed by the USDA itself.”  This was enough to plead plausibly that the combination of terms caused reasonable consumers to believe that the Harvestland chickens were approved and endorsed by the USDA.

Thus, plaintiffs’ New Jersey Consumer Fraud Act claims survived, as did claims for fraud in the inducement, negligent misrepresentation, and breach of express warranty, all only as to Harvestland chicken.