IPSC Day Two, long presentation session 1: trademark

Lisa Ramsey, Reconciling Trademark Rights and Free Speech Locally and Globally

Commentator: Rebecca Tushnet

International element to the question of how to limit trademark to protect free speech.  TRIPS doesn’t impose insurmountable barriers to rights-protective legislation, but international obligations will be raised by high-protectionists as reasons to avoid reform and so it’s worth thinking about what international law does and doesn’t constrain.  Nations and free speech advocates should therefore focus their efforts on developing specific, speech-protective model rules for trademark law to provide guidance to decision-makers, similar to WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and the recent agreement on a treaty on access to texts for the visually impaired.

Advocates for soft law over mandatory defenses, allowing states flexibility.  One question for further discussion is how well flexibility in allowed defenses has worked out, not just in broad international treaties but European harmonization. Are there examples of success?

Paper starts with summarizing the conflict between aggressive trademark claims and free speech, then turns to principles for defenses.  Ramsey argues that nations should pay more attention to what they deem the aims of trademark to be, and that identification of those aims will naturally suggest appropriate defenses.  (One risk, it seems to me, is that nations will decide “we want trademark owners to have rights to protect the dignity and reputation of their marks, however insulted or harmed”; having done so, that’s about it for free speech defenses.)

Many nations protect free speech, as do significant international agreements. But the US is an outlier in articulation, if not in practice when it comes to IP, and it’s generally recognized that free speech can be limited in the service of other appropriate goals.  And many nations recognize property as a constitutional or basic right, and then consider trademarks to be property.  Syllogistically, this suggests that protection of trademark interests can trump free speech rights, though then the question is, given that trademarks are intangible, is there a scope of these property rights that is entailed by the interface between property claims and free speech claims.  With tangible goods, it is generally unobjectionable to say that a speaker can’t appropriate another person’s printing press to communicate her own message.  But the analogy breaks down when the boundaries of the property right are what’s up for contestation.

As Ramsey points out, if US courts applied what she calls real First Amendment doctrine—doctrine applied to things that aren’t IP—then much of trademark would be constitutionally suspect.  Let me say in passing that I think we have to accept that IP’s First Amendment is real First Amendment doctrine too. It may be bad, and it is blatantly conflicting with other First Amendment doctrine, but I believe in it the way I believe in infant baptism: I’ve seen it.  I don’t think we can expect harmonization of IP and non-IP cases, certainly not harmonization in a speech-favorable direction, any time soon, and this is what makes US courts not as significant outliers with respect to speech based limits on trademark as they are with respect to limits on the regulation of hate speech et cetera.

Anyway, given this situation, Ramsey points to Bill McGeveran’s work on internal limitations to trademark.  By internalizing doctrines as part of the structure of trademark itself, it’s possible to protect speech interests without explicit reference to First Amendment limits, using safe harbors and affirmative defenses.  This flexibility can be accomplished by explicit exceptions created by legislators as well as by judicial interpretation.

Ramsey thus suggests having a menu “including exclusions from protectable subject matter, limitations on the scope of trademark rights, defenses, and remedies” from which nations can select.

As she points out, the ability of nations to deny registration to nondistinctive terms, descriptive terms, and generic terms is an important protector of free speech. She suggests that nations might want to deny protection for descriptive terms even if they’ve acquired secondary meaning, a suggestion that will probably find a fair amount of resistance but one that builds on her previous work on descriptiveness.  More mildly, she proposes stepped-up distinctiveness requirements for protection of descriptive marks, the adoption of a descriptive fair use defense, and a more limited scope of a mark if it’s descriptive.

She also suggests limiting protection for “cultural heritage marks” to prevent the privatization of culture.  (Here it would be interesting to engage with the opposite claim that cultural heritage should be privatized and put into the hands of particular non state groups; it’s been argued that trademark-style rights, even expanded rights, would allow representatives of the culture to best preserve and benefit from it.  Denying rights might mean that anyone could use the culturally significant terms, objects, etc. which might prove unsatisfactory.)

Ramsey also suggests a limited form of a trademark use defense for slogans and symbols on standard merchandise, like T-shirts, as a way to protect common media of personal communication. She points to attempts to register marks that seem to appropriate common cultural touchstones, like Disney’s application for Day of the Dead/Dio de las Muertas and various attempts to register phrases like “Let’s Roll”; “Don’t Mess with Texas”; and “If You See Something, Say Something.”  The latter raise interesting questions of government control, though I’m not sure people who aren’t steeped in the First Amendment will object to government control of symbols in the same way—after all, most nations have copyright in government works; what’s different about trademark?

Ramsey also takes up the question of whether it’s better to have exclusions from protection for marks like these or limitations on scope. Strategically, she argues for the former.  This makes it easier to prevent bullying and aggressive attempts to push the envelope on supposedly limited scope.  (It would be useful to discuss the limits on bullying that other countries have, like abuse of rights claims available in some commonwealth countries.)

Ramsey also suggests certain limitations on scope of rights, though.  TRIPs provides that we have to protect against unauthorized use of (1) registered trademarks, (2) used in the course of trade, (3) where the signs and goods/services are identical or similar to those of the markholder, and (4) this use of the mark causes a likelihood of confusion.  Each of these parts provides potential limits on scope.  Speech protective measures could limit protection, or limit remedies, to things outside this core category.  Under the double identity rule, for example, courts presume confusion when an identical mark is used on the same goods—but that actually leaves plenty of room for nonidentical marks and nonidentical goods if nations care to use that space.  As for likely confusion, we can have rules that protect comparative advertising, keyword use, and the like.  We are not required to give likelihood of confusion a broad reading, and Ramsey argues that we should not.

You can tell what her perspective on the protection of well-known marks is, so I won’t detail it.  Likewise, she points out that rules on secondary liability have speech implications, and there is plenty of room for states to adopt speech-protective rules on secondary liability.

The overall point is that there is significant flexibility in the international system. The nation that created the exception to trademark rights has the burden under TRIPS Article 17 to prove that (1) the exception is limited, and (2) the exception takes into account the legitimate interests of both the trademark holder and third parties. Given that free speech interests will regularly be significant and legitimate/appropriate for a democratic society, she concludes that any or even all of these proposed limits would be acceptable under TRIPS and related agreements, though in some sense TRIPS is the only one we have to worry about since it’s the only one with enforceable remedies.

Potential barriers worth discussing: can be summarized as politics, though that may be seen as an unfair characterization of the claims of trademark owners who believe that the power of their marks should be reserved for their own exploitation.  Politics are often most effective when they have intelligible rights claims behind them; the paper could benefit from more engagement with these rights claims. Why have speech claims seemed unpersuasive to many thus far?  This will lead naturally to ways to answer objections to Ramsey’s interpretation of TRIPS as allowing for this much flexibility.  One suggestion: discuss property/takings type arguments made by tobacco companies in response to plain packaging and other limits on use of their marks.

Ramsey: property rights aren’t an automatic trump; you still need to consider 1A/free speech: ECJ and national courts have said that fundamental rights need to be balanced.

Rigidity v. flexibility: advocates for more specific defenses. But we need to give courts ability to engage in speech-protective case by case analysis. Want some constraints on judges to prevent overprotection, but there needs to be more flexibility at the international level.  TRIPS/Paris Convention have flexible and ambiguous language. Annette Kur etc. have proposed mandatory defenses added to treaties, but because many nations don’t protect speech as well, that list wouldn’t be very protective and might encourage nations to adopt tiny lists.

Q: Cases in the WTO where they use the articles you cite, 7 & 8, for your purposes? Doha takes them into account for pharmaceuticals but it’s not clear where that’s going. Is there case law saying they’re more than hortatory?  W/regard to flexibility to nonflexibility: what is the goal?  How do you compare harmonization to flexibility?

A: no cases yet; difficult balancing act.

Betsy Rosenblatt: you cite McGeveran’s predictability desire. With a lot of globalized expression, one element of free speech is knowing you can disseminate broadly—predictability is a free speech value.  Unauthorized use of TMs in a film can generate risks.

Cultural property: cultural property to whom? Some may be relevant to subcultures, but not to the larger group. What should nations be free to decide?

We in the US don’t put a lot of importance on dignity, but the EU does. What we might see as overriding value might be the opposite in many national philosophies about dignity of markholder, which is different from confusion value.

A: cultural property: valid points about why there might be reasons to give Maori control. But that just makes the point that there are so many different approaches that it’s unrealistic to achieve a goal of clear specific defenses shared by everyone.  Reform at a national level is easier to achieve: the more nations have a comparative advertising, the better.

Q: But is Barbie culturally significant?

A: would leave it to nations to decide.  Protecting Maori should be sui generis, given free speech implications.

Mark McKenna: will have to tackle sui generis/design rights—some of the issues you discuss would be rendered moot given the existence of adjacent rights.  If there are carveouts in TM, people can use unregistered design rights, unless the free speech principle also controls that.  Layering.

Q: TRIPS-plus/bilateral agreements as a major recent mode of expansion. US doesn’t seem to be interested in exporting free speech principles in that context—in fact, the US seems happy to raise the bar in IP.

A: European FTA did require descriptive fair use.  This is the tension between mandatory limitations—which then prevent regional FTAs contravening int’l obligations—and flexibility. 

Justin Hughes: claiming greater flexibility for TM may threaten ability to maintain exceptiosn for copyright and patent under the 3-step test.

A: but article 17 doesn’t require consideration of unreasonable prejudice—puts third parties on par with the markholder—and so it is more flexible than the provisions governing copyright and patent. Wants to protect copyright too!

Hughes: they’re different in wording, but that doesn’t mean they differ in effect.  In the Lanham Act, courts have given the same protection to registered and unregistered marks despite wildly different statutory language. Sure the 3-step test looks different, but in the long term we might want to say it offers the same flexibility.

Ramsey also responded to my comments.  Re: bullying: model rules could also allow creation of threats action.  California’s anti-SLAPP statutes could be another model for protection.

Plain packaging: one argument people make is that there’s a free speech right not to have other people use their marks.  There’s no right against impersonation, in her view, but criticism without confusion doesn’t justify protection. Graeme Dinwoodie: we need to consider interests that balance against and justify tolerating a certain amount of confusion.

Timothy Greene, Trademark Hybridity and Brand Protection

Commentator: Deven Desai

TMs as part of language, particuarly language as contextual.  Homonymy: words can have unrelated meanings by historical accident—bank (financial institution) and bank (rivers).  Paper can be the material but also newspaper, or the entity that runs the newspaper (the paper just fired five journalists). TM law doesn’t deal well with semantic ambiguity. 

Word marks are linguistic, and there’s little reason to think they exhibit characteristics distinct from other words, even if processed as proper nouns. Semantic ambiguity has been researched in linguistics, and it helps us. Consumers rarely encounter marks out of context. Even if consumers experience confusion, it’s less likely that the harm would be commercially significant than courts think in many situations.  A term shouldn’t be thought of as only generic, or only source-identifying. But all terms, especially TMs, embody multiple meanings and people use context to resolve ambiguity.

The binary view of TM law won’t work. Primary significance test doesn’t make sense because it doesn’t cover the spectrum of possibility. Thermos and Teflon surveys set up false dichotomies between brands and common terms, so they cause more problems.

Detail suggestions: paper suggests likely confusion test be recalibrated to deal with context.  This is a real possibility, but paper should explain more how hybridity would build out the contextual analysis and why a judge should consider context equally.  Also, what would better empirical work/surveys look like?

Greene: Likely confusion test currently deals mostly with linguistic aspects of mark: sight, sound, and meaning focus on the word, rather than the overall conception of the mark—logo, how displayed to consumers, etc. Can be problematic in registration where similarity in marketing channels is presumed and you can get plain word registration.

Rosenblatt: could the same analysis lead to the conclusion that TM deals better with homonymy than polysemy? We treat words differently in different classes of goods—generic in one class, descriptive in another, arbitrary in another, and TM explicitly anticipates that people can deal with this and still determine whether a word is serving as a mark for goods. It does worse with polysemy when you refer to the cultural meaning of a particular mark.

Genericism: A word doesn’t automatically become generic through sloppy usage: Google, Kleenex regularly used in broad ways—people know that’s not genericism.  Does the distinction between knowing and using undermine your claim that we should study how people actually use words?  Some of those surveys like Thermos might then have been on the right track.

A: when translated into judicial application, it doesn’t make sense.

Me: Richard Craswell, “Compared to What?”: The Use of Control Ads in Deceptive Advertising Litigation, 65 ANTITRUST L.J. 757 (1997), would be very helpful.  Explains in a related context how meaning can differ and how there are tradeoffs when the law endorses one meaning over another. This may provide a way to translate linguistic claims, which judges may be wary of, into more conventional cost-benefit analysis.

Ramsey: more emphasis on problems of registering fancy logo + term and then claiming rights in the term: Park ‘n Fly is the classic case.  Also leads to issues where if a term is put in the right place on a T-shirt it’s considered “use as a mark” and if it’s in a different place it’s not, but then if the registration issues the owner will threaten any use anywhere on the shirt.

Greene talked more about surveys: all he’s really clear on yet is that current practices are not reflective of the best linguistic knowledge.  Should acknowledge people who see term as both mark and generic and put them in both groups.

Ramsey: surveys are expensive! Would this be more to test than you usually do?

A: doesn’t think it would change the cost, just split up the ways you count the members of the group.  May be more useful in registration context—justifies allowing far fewer nonstylized word marks.  Context specific look at what the person actually does or intends to do in commerce is really important.  Cheap Seats for buses might be different from Cheap Seats for planes.

Q: wouldn’t everything get registration if you could offer a plausible context in which it’s serving as a mark?

Desai adds that he had the same question: Greene is taking this in a low-protectionist direction, but couldn’t it be taken differently?

A: looking for context in which consumers actually deal with marks—is an attempt to look at what is really confusing, and if it is, then it can be stopped.

Q: if meaning can splinter, doesn’t that support dilution theory?

A: that assumption is that meanings can crowd each other out. Psycholinguistic research says no. It’s not crowding out. These meanings all exist together in your mental representation of a given term.  Barbie is a doll and an Australian slang term etc. Context distinguishes.

IPSC breakout 4, long presentations: design patents

Michael Risch, Functionality and Graphical User Interface Design Patents

Commentator: Matthew Sag

Sag: what are design patents? One practitioner he knows sells them to clients as another form of TM.  Risch shows how the infringement standard could be improved by applying copyright rules and by applying his economic model. Sag will criticize the use of economic models in this type of paper and how copyright informs the discussion.

Economic models are often useful to clarify one’s own thinking, but then they should be left out. The model here shows that costs are bad and that all choices have tradeoffs.  Model says we should look at issue from the perspective of the time that an actor is thinking of copying.  But the model doesn’t explain why this is so and he couldn’t distinguish this from the general “we should maximize social welfare.” 

The paper, however, teaches a lot.  Design patents are easy to get because the novelty bar is set really low, and courts still use the teaching/motivation etc. test. Image plus a display is patentable: courts are treating ephemeral displays, not always part of the object, as patentable, which is necessary for GUI patents.  They protect look & feel in exactly the way of the old copyright cases, but without copyright’s filter for functionality or its various limitations and defenses. Can be used to protect function because of the way the infringement test is structured: doesn’t require nearly exact copying.  If juries aren’t given strict instructions, as mostly they aren’t, they’ll be comparing general appearance including functional elements; and after Egyptian Goddess they’ll protect designs not at the point of novelty.

Apple v. Samsung: the phones are a lot alike, but they are similar. Once you start abstracting away for what’s protectable, you get into areas of function rather than the proper ambit of design. Apple’s complaint was that Samsung used features that were largely inevitable/attractive.  By using abstraction, you ensure an infringement test that covers function and not just aesthetics.

History of copyright provides lessons: Courts disagree on substantial similarity and how to filter, but at least in a case like Apple they would always filter.  And they take account of user demand in determining functionality, per Lotus v. Borland.

Paper should consider the static/dynamic tradeoff: Apple would argue that it deserves to be able to charge a huge amount because it took the risks/made the investment.  Would also benefit from broader discussion of economics of design patents: they’re weird hybrids where you get briefly very strong copyright/TM-like protection better than either of them.  If we should have these at all, why? That’s where the economic analysis should take place.

Risch: often gets the static v. dynamic question.  The reason he used the delayed ex ante view is so that the court can assess efficiency of that sort at the time of the reuse. If it’s early on, at that point the court might say there hasn’t been enough time to recoup investment and it’s not a standard, and therefore it can’t be reused. But if it’s been several years, as in Apple v. Samsung, then it can be time to allow reuse. It’s problematic that Apple claimed infringement because the ideas were the same. Copyright has the tools to deal with that.

You could take a photo of this room and get a design patent on it.  People are wearing colorful outfits, they have heads of different shapes—and now no one else can take a photo of people wearing colorful outfits in a room like this? That can’t be the case. Basic takeaway: when comparing, there should be filtration. Judges do this when they’re decisionmakers, but they worry it will confuse the jury so they just give the designs to the jury without more and ask “would you think the person who created X created Y?” We need to consider standards, customer switching costs, slavish copying v. nonslavish.

Q: would better written claiming identifying what’s claimed would help?

A: the claim is always the design as shown in the figure.

Q: but you never have to point to the novel part.

A: so reverse Egyptian Goddess?  Egyptian Goddess endorses filtering, but doesn’t require—it’s up to the dct’s discretion to decide how to deal with prior art.

Q: the infringement standard—would the same person have made these—sounds a lot like TM. Why not aesthetic functionality?

A: yes, it’s like TM infringement, but there’s no class of goods. It’s a hybrid of substantial similarity and likely confusion.

Q: point out that Apple is an outlier—just convinced jury that Samsung was a dirty, dirty copier. Shouldn’t extrapolate—but then again it’s an early GUI case.

A: believes that if Samsung had applied for its own design patent, it would’ve issued without an office action!

Mark McKenna and Katherine Strandburg, Progress and Competition in Design

Commentator: Shubha Ghosh

Trying to explain works where function and aesthetics are integrated.  Trying to fit design patents into copyright/TM scheme, where we know functional elements of design are excluded.  Barton Beebe: in copyright, there is no good theory of progress.  Tends to be about diversity: having something new is progress.  Apply those insights to design patent—but what are these works that integrate aesthetics and function? Architecture—you have an incentive/creativity process that works to integrate the two.  Bathroom fixtures—might not fit copyright or trademark, but someone has to figure out what bathroom fixtures should look like, and they should assist the user while also being aesthetic.  Existing law might not deal with bathroom fixtures.

Paper shouldn’t assume that copyright/TM have it right in terms of design.  PGS doctrine in copyright is not very helpful.  Nothing but ad hocery.  Same with TM: Taco Cabana and Wal-Mart as a series of mistakes.  Subtext tends to be “why did we grant cert?”

Progress is just a question of institutional choice.  Should we defer to the political process/Congress or not? 

Inclination: design patent was just a compromise. If you try to explain some ideal system, why? If you’re trying to explain the law as it is, then it’s just Congressional dealmaking.

McKenna: this isn’t an attempt to explain why we have design patents, but rather a piece saying that if we have design patents, the only coherent way to think about them is as follows.  Patent like rights for designs that integrate form and function: if you’re going to have a system that looks like a patent system, an indispensable component is a way to measure progress over time, even if not in any given specific case. You can’t talk about progress in design the way you can talk about progress in the speed of computers. So we need to be able to say that integration of form and function can be measured; if it can’t be measured, then the case for design patent is not good.

Strandburg: what makes a system a patent system, as opposed to something else, you need obviousness/nonobviousness and an idea of cumulative progress. Maybe the copyright system is doing a bad job; we’re not saying it is, but we are saying that what patent systems do, with obviousness, is to incentivize cumulative progress.

McKenna: this is why obviousness in design patent is presently a mess—we don’t have any idea what it would mean to be an improvement in design. The idea of integration came from what we see over the cycle of history—worry that people are using design patents as a backdoor to utility protection, and repeated attempts to solve that by creating invention/functionality doctrines that all fail because they require courts to separate form and function and that doesn’t work.  All design integrates form and function, some more obviously and some better than others; that’s why courts can’t deal with functionality, because it requires them to separate the inseparable.

One thing that makes it hard to get the rules right is that we don’t know what kinds of design we want to produce. If you don’t have a way to measure the costs, competitively, of the system you run into trouble.  Progress is a proxy for costs and benefits. It’s hard to imagine telling the court how to balance costs and benefits without knowing what we want to incentivize.

Strandburg: we believe that designers do care about integration, creating a space where it’s possible to have incentives.

Wendy Gordon: what if the person contesting the patent proves there’s a functional advance?  Shouldn’t that exclude design patentability?  But you assume we know what progress means for utility patents—if that were so, we’d know what should be in design and what should be in utility. But courts say they don’t know what will be valuable in the future—extreme agnosticism in utility.

Strandburg: there’s a distinction between the goal of the patent system and the implementation of nonobviousness.  The goal, from the Constitution and elsewhere, is better technology. But we don’t always know what will be more valuable/better. So what we’ve tried to do, not totally successfully, is require something that takes a step of a certain size, a step that competition alone wouldn’t spur. The doctrine doesn’t ask “is this better,” but rather by giving patents only on things that take a big enough step, we’ll eventually end up with better.  Whereas we don’t seek “better” with copyright.

Gordon: disagrees.  There are good and bad shower designs.

Strandburg: but that’s functionality.  Courts don’t want to say that there are good and bad plays.  (RT: or rather, they want to ostentatiously announce their aesthetic judgments and then assure us that those judgments don’t affect their rulings.)

Barton: paper seems to assume that integrating form and function is aesthetic progress. What if that’s not true? One could say that this version of aesthetic advance is very historically situated. Compare Art Nouveau: one could say that such designs were much better than Apple’s minimalism.  Less isn’t more; less is less—nothing to do with function. So he wants to push back on this definition of progress.

McKenna: we don’t assume integration is a form of aesthetic progress. But it’s possible that one could measure progress through integration, and that might be a goal that isn’t fulfilled well by copyright/TM etc. and therefore represents an appropriate role for design patents if this can be measured. If the only thing you can get out of design patents is new aesthetics, then let copyright take care of it.

Ghosh: every field might have its own definition of progress.

McKenna: where we are is that he doesn’t trust courts to filter out functionality. His view: avoid that by asking a different question.

Strandburg: in the market, there’s no distinction between Traffix and aesthetic functionality. So you have to think about what you want dynamically, since static analysis won’t help you at all.

Risch: how do you deal with the statute’s explicit embrace of surface ornamentation?

McKenna: that’s written into the patent statute because copyright doesn’t cover it at the time, but that doesn’t belong to his conception of what design patent could coherently be for—it should be moved. The paper is theoretical and doesn’t attempt to justify the current statute.

Strandburg is agnostic about moving to more copyright for design; McKenna worries about copyright’s duration, but we still need to figure out what kinds of investments count for what it is we’re trying to incentivize to figure out whether any system makes sense.

Strandburg: that’s also a question about what copyright is doing.  Design probably is not different from everything else within copyright’s subject matter. Maybe overall the copyright system is borked and we’re focusing on design because we have the opportunity to do so.

IPSC breakout 3: short presentations/copyright

Derivative of What? Rebecca Tushnet

What is a derivative work is somewhat mysterious, especially given the expansion of the reproduction right.

Courts and litigants have debated whether a photograph of a sculpture is a derivative work of the sculpture or merely a reproduction, with its copyrightable creativity present somewhere other than its representation of the sculpture.  The creativity in a photograph of a sculpture, in the dominant understanding, comes from the photographer’s choices with respect to lens, angle, timing, and so on, rather than from transforming, recasting, or adapting the sculpture itself.  So the new work has a standalone copyright (and can be a reproduction of the three-dimensional work)—a new work fundamentally dependent on the existence of the prior work, but not a derivative of that prior work.  But applied to termination rights with respect to preexisting works, such as songs incorporated into a motion picture, this same reasoning gives a counterintuitive result. 

When it comprehensively rewrote the Copyright Act and created the current definition of derivative works, Congress tried to solve an economic problem—what happens to works that incorporate other works as a necessary component—with a conceptual definition.  That didn’t work. 

Cases about photos of sculpture seemed to make sense when I read them—the copyrightable elements of the photo generally come from the choices made by the photographer, not from the subject matter, and that suggests that the photo isn’t a derivative work of the subject matter.  If the subject matter were an uncopyrightable object, we’d still recognize the photo itself as copyrightable, so it seems that the photo’s copyrightability must be independent of the subject matter.

But I think on further reflection that’s wrong. A photo is a translation of a sculpture into another medium, and translations are generally recognized as derivative works.  Indeed, I think the comparison to a photo of an uncopyrightable object actually points in that direction.  All representational creativity takes uncopyrightable subject matter as its starting point.  It’s the resulting creative work that is protected, and the fact that the subject matter was uncopyrightable—whether fact, public domain, or something else—affects the scope of the copyright as applied to other works that might allegedly infringe the representational work.  But this is also true to just the same extent when the subject matter is copyrightable.  Creative elements already present in the underlying work can’t be part of the protectable increment of the derivative work.  This is the same as saying that uncopyrightable elements like facts or public domain elements can’t be part of the protectable increment of the freestanding work.  That is, both derivative works and nonderivative works contain a golden nugget of separately copyrightable material, along with the noncopyrightable elements.   It’s for that reason that the separability of photo and subject matter doesn’t inherently take the photo out of the derivative works category. 

The cases reaching the conclusion that photographs aren’t derivative works were distracted by an analytically separate and easily answerable question, which was whether a photographer who had permission to create a photo of a copyrightable 3-D object needed separate permission to claim and enforce the copyright in the photo.  The answer is no, obviously so, but the courts then went on to say that anyway the photo wasn’t a derivative work so hypothetical rules about exploitation of derivative works didn’t apply.

And that holding is more troublesome.  Consider the insight, largely incorporated into copyright doctrine only via fair use, that change of context changes meaning?  The photo is, by general agreement, a new copyrightable work, and it incorporates the original sculpture in a way that copyright recognizes: isn’t incorporation of the copyrightable elements of the original plus addition of new copyrightable expression another standard way of defining a derivative work, as in the classic Batlin case? 

There is a conceptual claim made in the photography cases: the creativity of the photo does not interact with the creativity of the sculpture. But what can that really mean?  There is a physical change in the new work: the sculpture has been flattened into two dimensions. So it can’t be that there was no physical transformation (though I suspect that our tendency to conflate the image with that which it represents helps courts ignore the physical transformation).  There is also a change in meaning.  Entire books have been written about photographs of sculpture and how they change what the viewer experiences: the viewer does not see the sculpture, she sees a photo of the sculpture, and that matters to what she sees, including what she sees of the creativity of the sculpture.

Consider this photo of a mosaic:

 (sculpture by Jack Mackie, photo by Mike Hipple)

Why doesn’t that change the meaning of the mosaic through the addition of the human following the steps and the framing choices that create a particular experience of the mosaic?

Likewise, putting a song into a movie can often have profound effects on the song and how it’s experienced.  The final paper will go into the literature on the relationship between sight and sound in TV and movies; the presence of music affects both what people see and what they understand the music to mean, which sounds very much like what we’ve come to understand in law as transformativeness.  Juxtaposition regularly changes meaning: Kuleshov effect/commutation test: “trying out a sound change and observing whether a meaning change is produced or not.”   If you’ve ever seen fake movie trailers, such as The Shining as lighthearted comedy or Diff’rent Strokes as a story about a pedophile who adopts young children, you’ll notice that the music has done almost all the work of effecting the genre change.

From that perspective, it often would be fair to say that the movie transforms the recording that appears in it, into a bearer of meaning of the narrative.  When Jon Cryer lipsynchs to Otis Redding in Pretty in Pink, for example—or choose your own favorite example—the song becomes part of the larger work, and not one that could be extricated without making profound changes to the movie.

So what? Most of the time the reproduction and derivative works rights overlap and so the distinction doesn’t make a difference, but it is extremely common for films and particularly television shows to license the inclusion of existing masters into their works, as fairly significant elements of the narrative.  For that matter, it’s relatively common to license things like the appearance of within-copyright sculptures in the background of scenes, after the BET case.  Section 203 was designed to protect film and TV producers, among others, by making terminations inapplicable to prevent the continued exploitation of derivative works: “A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination.”

Now return to those photos of sculptures: if they’re not derivative works, then the right to keep disseminating the photo can be terminated.  But the whole point of giving copyright in photos based on the creative choices made by the photographer was to recognize the creativity of the photographic enterprise, which is precisely the reason that termination was thought to be problematic when a derivative work was involved.  The theory was that the original copyright owner shouldn’t be able to completely suppress the extra creative elements added by the creator of the second work.  If “derivative work” is a subset of “creative works with separate copyrights based on/requiring license from a prior copyright owner,” then that scheme fails.

This is even more true as applied to movies incorporating previously recorded music; true, very few movies will have significant value 35 years after release, but those that do will face substantial termination risk if they used existing masters unless we have a very expansive definition of derivative work.  Depending on lawyers’ cleverness, there could be other time bombs hidden in movies. For example, there are at least lawyers out there willing to argue that actors’ performances are separately copyrightable independent of the audiovisual works in which they appear.   If the overall movie or show isn’t a derivative work of such a performance, it would follow that any transfer that wasn’t a work for hire agreement would be terminable.

Possible theory to rationalize the result that the owner of the copyright in the master of the song used at a crucial moment in the movie could terminate a transfer even though the owner of the copyright in the screenplay couldn’t: assumption of investment: movie is unusable/unexploitable without the underlying book; could regularly edit out the song/sculpture in the background and continue to extract economic value from the edited work?  I don’t find that very persuasive, though.

One piece of evidence from the 1976 House Report suggests that, though Congress didn’t think this through, it assumed that movies would count as derivative works with respect to songs without addressing the question of “derivative of what?”:

The definition of “joint works” has prompted some concern lest it be construed as converting the authors of previously written works, such as plays, novels, and music, into coauthors of a motion picture in which their work is incorporated. It is true that a motion picture would normally be a joint rather than a collective work with respect to those authors who actually work on the film, although their usual status as employees for hire would keep the question of co-ownership from coming up. On the other hand, although a novelist, playwright, or songwriter may write a work with the hope or expectation that it will be used in a motion picture, this is clearly a case of separate or independent authorship rather than one where the basic intention behind the writing of the work was for motion picture use. In this case, the motion picture is a derivative work within the definition of that term, and section 103 makes plain that copyright in a derivative work is independent of, and does not enlarge the scope of rights in, any preexisting material incorporated in it.

Idea that I’m playing with: Addition of copyrightable material plus recontextualization equals derivative work. Not a standard of whether the use opened a new market, as the 9th Circuit held in the terrible Mirage case, but would find a derivative work where the new copyrightable material and the existing material affect each other’s meaning. Recontextualization alone might be a fair use, but it wouldn’t count as creating a derivative work. One way to think about that would be to say that the pure recontextualizer just adds an idea—wouldn’t this be productive in a search engine, or a database of potentially plagiarized papers, or in a new frame on the wall—but I’m still trying to think about what that means.  Mike Madison will probably say that what’s going on here is an implicit theory of things and which things are unitary (the painting and its frame and the gallery in which the frame hangs are all separate things, despite the fact that the meanings of each influence the meanings of the others).  So, a collage that reflects selection, coordination, and arrangement by the artist has sufficient creativity to be copyrightable, and is its own fixed thing, meaning that at least in my model it’s a derivative work. 

Mike Madison: are you using perspective of the creators or perspective of the audience? Perspective of some objective third party?

A: I’m most interested in the audience, but creators are clearly thinking of the ways use of existing works affects their own output—lots of literature on music selection for movies.

Glynn Lunney: are you just trying to solve termination?

Lemley: bizarre to treat derivative works separately; also questions of fixation where there’s no reproduction: Midway versus Galoob—my approach could make many more things into derivative works, and that might be a reason to reject it.  (I agree that’d be a reason to reject it; I’m not sure Galoob would be affected by my theory, since it essentially imposes a fixation requirement, which I don’t think I have to disagree with. Tony Reese has done the most persuasive work on this, convincing me that there should never be a violation of the derivative works right without a violation of either the reproduction right or the performance right.)

Jeremy de Beer and Mira Burri, Transatlantic Copyright Comparisons: Hyperlinking and Making Available as Communication (presented by de Beer)

Treaties contain ambiguity about how signatories shall provide protection about making available rights, in order to get agreement by member states, mainly because US and European approaches dramatically differ. US: dealt with in context of distribution right; Europe: communication right (closer to US public performance). Canadian: hybrid approach: depends on purpose for which you’re making work available. If for streaming, under brand new Canadian law, it will likely implicate the communication right. But if for downloading, other rights such as reproduction/authorization/distribution come into play.  It can’t impact all of those rights because of a decision, ESA v. SOCAN, saying you can’t stack royalties for different rights in the particular context of transmitting music as part of video games online.  One trial case: Publication for defamation case: don’t break the internet—linking to a defamatory publication can’t be itself defamation.  Safe to say that defamation cases and SCt’s approach in copyright, hyperlinking to copyright infringing content is unlikely to constitute a communication itself.

Issue also alive in EU; pending before ECJ.  Svensen: a fairly typical news aggregator case.  Does there have to be an actual transmission/download?  European approach in general, and copyright scholars, think that transmission is necessary, and that the work has to be made available to a new public—a public without previous access—for there to be a violation of the making available right.  3 national courts: German news aggregator; Norwegian case against Napster; Dutch case about pornography (unpublished Playboy images).  German news aggregator was held liable, but Norwegian court held that linking alone wasn’t enough for liability.  Dutch case: unpublished nature made the difference.

Paper: comparative analysis is useful. Hopes the ECJ will look at Canadian courts streamlining royalty payments and limiting defamation liability.  This could create a validation for the Canadian SCt.

Note that no one is saying that linking could never lead to liability, but that it’s not a transmission.

Matthew Sag, The Perils of Compulsory Licenses in Copyright Law

Another timing failure!  I caught enough to know that part of his argument was that compulsory licensing for digitization is offered as a solution to orphan works problems, and really only makes sense in that context, but such licenses have structural problems making statutory damages/remedies reform more appealing if what we really care about is orphan works.  I look forward to the full paper.

Jack Lerner, Regulation and Oversight of Collective Management of Copyright

Well known problems of corruption, self-dealing, etc.  Transparency, organizational governance, and institutional design literature offer insights.  Also has looked comparatively at collecting societies around the world. There’s little regulation in the US beyond antitrust law, Copyright Royalty Board.  Other regimes require permission to operate; membership may be regulated, or leadership. Transparency requirements that aren’t present here.  Different people can have standing to enforce rights, and different forms of oversight.

What are our goals? Are we trying to empower small creators?  In developing world, is there a way to empower local creators, since CMOs mostly just take revenues out of those countries?  Is it just about decreasing transaction costs?

What are our tools?  Need to assess whether CMO is doing what it’s supposed to, and that’s difficult to measure. 

Various scandals of abuse, including in Brazil.  The window for reform is now here: the question is how to generate legitimacy. Discloser and recipient must both benefit from transparency—need carrots and/or sticks.  Maybe users need an organization separate from CMOs.

Oren Bracha & Talha Syed, Beyond the Incentive-Access Paradigm? Copyright & Product Differentiation Revisited

Product differentiation is monopolistic competition: many offerings in the market are variations of each other (e.g. action films), mapping onto consumer tastes heterogenously.  Christopher Yoo: Can better explain competitive/monopolistic dynamics in IP industries. Seems to allow us to finesse incentives/access: strong copyright but also narrow copyright.  Michael Abramowicz: foregrounds an aspect of monopolistic competition, rent dissipation. More than one entrant incurs costs of R&D in creating work that is nonrival and can satisfy consumer demand; that’s waste. He suggests weak and broader copyright—reduced protection may reduce incentives but that’s ok to deter wasteful competition; strong derivative works rights allows control of subsequent development and reduces wasteful activity.

Bracha & Syed: you can’t get rid of the deadweight loss by appealing to monopolistic competition.  Property v. monopoly rhetoric is inconsequential. You can’t provide the incentive of copyright or patent without the deadweight loss unless there is costless perfect rights discrimination, which is a fantasy.  The point is to allow a markup over a work that should be provided at marginal cost; every markup over marginal cost incurs deadweight loss unless there’s perfect price discrimination, which there’s not.  It’s a red herring to talk about monopolistic competition.  Product differentiation suggests that the drawback doesn’t have to be access.

As you expand protection, you capture more supramarginal works, but you lose inframarginal works.  Product differentiation shows that incentives/access isn’t the only tradeoff. It is possible that if you increase protection, you induce more competition in inframarginal markets over existing innovation, and therefore reduce or fail to increase price competition. The cost is increasing duplication/rent dissipation.  Each increase in level of protection provides or enables generation of supramarginal innovation or increased variety in inframarginal markets.  The drawbacks may be increased inframarginal barriers to access, or increased inframarginal price competition, which comes at the cost of rent dissipation. Need a general equilibrium analysis, as Glynn Lunney has written. May distort investment away from non-IP activities.  Tradeoffs involve a series of factors, but there’s no free lunch.

Yoo: We never claimed we weren’t in a second-best world.  The rent dissipation problem has always been clearest to Yoo with patent races because of patent’s first past the post.  Even if you come in second in copyright, you can still split the rents; this isn’t perfect, but it’s a healthier equilibrium—people can compete to divide the market.

A: there’s a race to be first and inventing around. Both involve social waste—there’s more variety than is socially optimal because of cannibalizing rents. That happens at either stage of the race.  The second comer in patents can be the big winner, too.

Yoo: but you can have insufficient entry, with nothing to dissipate.  The differentiation literature recognizes dissipation as an issue.

IPSC: long presentation session 1

Jennifer Rothman, Commercial Speech, Commercial Use & The Intellectual Property Quagmire

Commentator: Felix Wu

The format involves Wu presenting the paper and then briefly commenting, before Rothman responds.

Wu: commerciality is bound up both in the scope of different IP rights and various defenses. 

Often ends up getting tied into First Amendment commercial speech doctrine, which is falling out of favor with the Court and commentators, and is a questionable source of authority for distinguishing commercial from noncommercial.  Commercial and noncommercial are beginning to merge, so we can think about why and how we might erase this line in IP.  Thinking through what a post commercial/noncommercial world looks like.

Isn’t commerciality just a proxy in fair use for factor four substitutability? Noncommercial distribution of hit film is substitutable and just as harmful as a commercial distribution.  Mp3.com got dinged without thinking about whether the kind of use at issue there might be nonsubstitution—so it’s problematic on both sides. Proposed fix: look at other kinds of lines, such as educational purposes without regard to commerciality.

In TM, similar potential dichotomy.  Use in commerce is necessary to acquire TM rights, commerciality lite; but more interesting, does defendant have to be engaged in commercial speech in order to bring an infringement action?  Case law involves courts talking about commercial speech doctrine but applying the Lanham Act in all sorts of instances clearly noncommercial speech for First Amendment purposes, like movies and video games.  (Why does she think eliminating the commercial/noncommercial distinction would help?)  Rogers defense even suggests that infringement actions can cover noncommercial speech in certain circumstances.  Dilution and false advertising also use the distinction.

What would the world look like without the noncommercial/commercial distinction?  Maybe we could address the harms of deception/confusion arising from noncommercial speech.  We could provide more breathing room for commercial speech.  We could avoid the effort required to identify commercial speech as the line blurs.  We could apply an actual malice standard in Lanham Act cases or other IP situations; this sort of standard might be appropriate.

Wu’s comments: (1) Structurally, he wonders whether the paper might separate out further constitutional and nonconstitutional notions of commerciality.  IP law’s definitions are often explicitly nonconstitutional, especially copyright, and then there are other areas where courts purport to refer to the constitutional sense. (2) Think about whether we care about different kinds of speech/communication, potentially distinguishing TM and false advertising claims in thinking about assertions as to identity and other kinds of assertions about facts in the world. Would we care differently about assertions about identity than other kinds of facts?  (3) Skepticism about ability to successfully merge political and commercial in this regard; might not serve either side.  We might have stronger interests in speakers in political contexts, even in speaking falsehoods, than in a traditional commercial context. Granting difficulty in distinguishing at the margin, the endpoints may justifiably be preserved.  Actual malice might underregulate in advertising law; would make it difficult to prevent commercial falsehoods that we should be preventing.  (Wu kindly referenced my work on the subject.)

Rothman: Main motivation for the project is that she’s always footnoted these problems and they really need addressing.  The right of publicity is a huge issue here.  People constantly say the right is limited to commercial speech, and that’s just descriptively wrong. Some states do limit the right to commercial speech, but overall it’s applied more broadly. Wants to call that bluff.

Notion that commercial speech is more harmful to an identity holder than noncommercial speech is not necessarily true—Lady Gaga is more upset by Family Research Council suggesting that she’s against marriage equality than by Baby Gaga baby food.

The case law is just incoherent: see the 9^th Circuit.

She doesn’t necessarily advocate importing actual malice, just doesn’t think it would be the end of the world.  But we may be seeing the death of commercial speech as a doctrine, so we need to think about what would happen.

In terms of giving more latitude to noncommercial speakers, it’s difficult to separate commercial and noncommercial speech. 

Betsy Rosenblatt: there’s two kinds of commercial speech. One uses commercial as the opposite of expressive and one uses commercial as the opposite of nonprofit. Would like to see more about the difference between these two—it’s confusing that copyright uses the second definition and TM and right of publicity give lip service to using the first definition.

Not convinced that commerciality is a standin for substitution.  Many non-IP professors have an instinct that if someone is making money off of some creation, they should reward the creator in some way—give back.  Might take that into account—the moral claim/unjust enrichment type claim.

A: these are related concerns.  Also an issue of value: even in copyright we generally assess profit/nonprofit, we also value things made for profit less than things that are made not for profit.  (I don’t think this reflects the case law.)

Unjust enrichment does affect our intuitions in copyright.  Still working on that.

RT: My concerns: in this model, as an empirical matter, property wins and public interests do not.  No clearer example than the 9^th Circuit—you seem to lean into the bad results we’re already getting. The whole point of having a non-harm-based standard, like a rule for noncommercial speech, is that harm stories are endless, and courts are more convinced by property stories than by fraud stories.

Justice Stevens’ standard: look at whether the regulation targets the commercial aspect of the transaction. Solves the problem of distinguishing marginal cases: look at the regulation and its aims, not at the speech object.

Paper discusses DMCA hearings: cite more of them; she doesn’t like the remix exemption for noncommercial works and argues that an exemption for commercial works would have been a good idea.  I believe that too!  A blanket exemption was proposed and rejected largely on the licensing grounds you propose as the substitute test—copyright owners argued that they wanted to license all these uses, and the Copyright Office found that this was a good enough reason to deny an exemption.  This is why I believe that giving up on noncommerciality and looking only at harm stories is a very bad idea.

A: my proposition is that IP law is in a mess and that not acknowledging this issue is a problem. The rest is a thought piece about what law would look like w/out the commercial/noncommercial distinction.  Does not want to rest everything on harm, though Alvarez says that’s the basis for restricting noncommercial speech. Because we’ve been so focused on commerciality, we’ve been undercutting ourselves on other ways to be more speech protective.  Sometimes a focus on substitution would be better, or transformativeness.  (RT: “We” have not neglected these factors, I don’t think, and the big fair use wins are about commercial uses and haven’t neglected those factors.)  Yes, in the right of publicity, it might lead to more liability, though she doesn’t like Keller either. 

Commercial/noncommercial is still muddled even if there are clear extremes.  (Right, but my point was that the Stevens approach asks what the gov’t is trying to regulate, the commercial aspect of a transaction or something else, and strict scrutiny applies if it’s something else.  Then you don’t need to decide whether an advertorial is “commercial speech,” only whether there’s a regulation aimed at a transaction.)

Lisa Ramsey: are you trying to describe what would happen under the Court’s political speech jurisprudence/strict scrutiny?  Or are you proposing some other standard?

A: Her point is that it’s a mess.  Courts confidently say the Lanham Act applies to commercial speech, and then that it applies to noncommercial speech. Shining a light on that is valuable.  Then we can think about what we could do that would work better.

Not just about market harm and incentives to create, but also other interests, including personality interests—harm to copyright owners can be unrelated to market harm.  One proposal for copyright reform is to only provide robust protection to commercial works, but she thinks that’s problematic.  Scope shouldn’t be different for noncommercial works.

Room 204:

Jonathan Barnett, Copyright Without Creators

Commentator: Jonathan Masur

Masur: Barnett makes the case for intermediaries.  Financing major products, producing risky works (subsidizing losers with winners). There are many other revenue sources for intermediaries beyond sales of copyrighted works. Yes, Barnett says, but removing copyright would take away one choice, and so we might not get the best funding model.  But that would justify infinite copyright as well.  Larger point is that this runs into the issue of balancing static and dynamic efficiency.  Can’t avoid question of how much is too much given the existence of other distribution/funding models beside copyright.

Smaller issue: what’s the line between authorial incentive and intermediary incentive?  Costs of producing a blockbuster, costs of paying authors/musicians a salary so they can eat.  What’s the difference between saying that Michael Bay will produce a movie if he can get it funded and that an intermediary needs to have resources to fund blowing stuff up?  If the paper is framed as justifying incentives for intermediaries, aren’t these really just ultimately incentives for creators?

Certainly true that a content creator has to be risk-seeking to enter a creative market, but this is part of the “romantic” story of artists—people move to NY in droves to seek this risk. Not obvious that long-tail, long-term structure of copyright is necessary—could just have a very short term.

Marketing and distribution: hits are still as important as ever even in an era of rampant production. Consumers need help!

What’s the normative significance of that?  We don’t really know whether mass marketing of songs is socially beneficial. Might make songs cheaper but it’s hard to tell what that means.

Barnett says the internet limited the value of copyrighted musical works, causing shift to live performance. Intermediaries—ticket vendors, concert venues—are still vital, but the issue is the proper role of copyright. Concert ticket prices have gone way up—Pearl Jam won’t play a cheap show to get you to buy their CDs. But on the whole it’s very hard to do the welfare analysis given the moving parts—more access to recorded music, less to live.

Barnett: in patent, it’s clear that you need to cover the costs of invention and of commercialization.  In copyright, the consensus is that copyright doesn’t make sense because it’s been captured by concentrated interests.  That’s possible, but is there an efficiency story for why copyright law looks as it does? The big picture story is that there is a plausible one. The positive and normative aspects of the paper are separable. Canonical economic models don’t take into account anything that happens after creation, but that’s where all the cost and risk is.  The real world literature has a consensus: there is a heavy skew in creative markets to hits.  Most is junk and losers and a few are gangbusters, and that’s what drives investment.  The core problem as an economic matter is risk. You must be able to spread away the risk of losers, in film, music, and books.  And the history of mass entertainment markets all shows concentrated intermediaries.  It’s not just entry barriers—independents are always being acquired by majors, contracting w/them for distribution, because the only way to make money is by having a portfolio.

Q: what does low quality/junk mean?

A: just market success—not a noneconomic judgment.  Is the star just an economic construction/tool of consumer manipulation? Tends to think not. The risk problem in creative markets is double-sided.  Stars can be used as a proxy for the quality of the film. Is that a function of the intermediary?  Put to the test in the digital era, where we have far greater access to other sources—we can listen to anything, and we still like Michael Jackson best.  There’s an economic function of the star: limiting search costs; the consumer hedges against the risk of consumption loss.  (I thought he was going to say that Kickstarter/Veronica Mars was an example of consumer hedging!)

Wendy Gordon: difference between incentives to creators and intermediaries: if your argument hinges on the need to pay stars, that’s an argument for paying creators.

A: Emphasizes the issue with free riders who haven’t invested in paying for the losers and can thus underprice on the winners.  There are other possible mechanisms to capture revenue, like lead time, but from an efficiency perspective we shouldn’t just be trying to get a reasonable level of output; we should get an optimal level of output, and for that, we don’t know whether lead time advantage is sufficient. Chinese film industry makes a ton of money without controlling piracy—it’s a viable system to do simultaneous relief.  But what we don’t know is whether it’s optimal, because windowing is impossible in China and they’re compelled to choose that model. 

IPSC breakout one: short papers

Copyright Specific Domains

Marta Iljadica, Graffiti Rules: Parallel Copyright Norms in the Graffiti Subculture

UK law; copyright subsists in a work of graffiti, though there are policy reasons that one might not enforce it—often these works qualify legally as “criminal damage.” The community is not concerned about copyright, but it is concerned with copying.  “Don’t be a toy.”  It’s not mindless vandalism; there are rules and the rules are there for a reason. Both process/placement and final product is regulated by the community (though people do contest the rules).

Rule #1: Write letters.  Collapse distinction between literary and artistic—they talk about “doing words,” and the visual the word makes.  Not necessarily about meaning of words, but shape.

Rule #2: have a style, don’t bite.  Put your own individuality into it. You have to be original, but you’re all drawing roughly the same thing. There’s lots of different ways to draw an arrow: what makes it your style/who you are?  One writer spoke of aesthetic dialect: it may all look the same generally, but people within the style look for minute shifts/differences.  It matters both because of the idea of personality and the idea of effort: if you bite, you’re appropriating the effort of another to get to the point where their style is recognizable. The rules protect individuals within the culture and also keep the community together as against other kinds of writing/painting.

Rule #3: get up/be visible. Let people see your name.  Currency isn’t money but fame.  Where do you put it?  If the point is to get up, why don’t you see graffiti everywhere, e.g. on cars?  But that’s rare.  Personal property: houses, churches, cars were off-limits—respect for people led to respect for these objects, but not trains/locations of large corporations.  Some writers said they wouldn’t tag a museum.  Acceptable intervention into a space that’s increasingly commercialized as a personal expression.

Original letter style reinforces subcultural belonging; having rules like “don’t tag a church” helps make the community cohesive.  The process is regulated as well as the final work. It’s not just style, but pleasure in putting up the work.

Q: is there any real sanction?

A: mostly social, but did have an informant report an assault.  Threat of violence in the background, but not nearly as prevalent as one might have thought.

Q: parallels to other industries?

A: Moral rights: does suggest that, for creative process, creators are interested in protecting personality and not economic rights.  “Negative space” literature.

Q: negative gossip backed up by a threat of violence seems consistent across different fields.  (Not the female dominated ones!)  Q about emergence of norms.  The illegality means they’re not able to take advantage of IP, but is there something more than the legal barrier to protection to explain why they choose self-regulation?

A: not necessarily true that they wouldn’t avail themselves of copyright protection, when works enter other spheres not their own, in which case they very much want to be paid. 

Q: is there something about this community that makes them rely on the community and not the gov’t?

A: they’re happy for it to remain illegal.

Q: what about altering existing graffiti?

A: can be frowned on—significant sign of disrespect. 

Q: is there a particular value to counter-ness of counterculture? Wants to be outsiders to formal law?

A: yes, it’s one of the strengths. Graffiti as resistance may be too simplistic, but there’s a component of that.

Q: demographics?

A: tried not to collect too much information, but there was a variety. Some people did say “graffiti saved me; I grew up on an estate and this gave my life meaning.”

Yolanda King, The Enforcement Challenges for Tattoo Copyright

Hangover II: Tattooist who did Mike Tyson’s facial tattoo sued Warner Bros. for reproducing the tattoo on another actor’s face.  Previous article examined copyrightability and fixation and concluded that tattoos were copyrightable, but noted the significant obstacles to enforcement.  Now turning to those obstacles.

As between artist and customer, unlikely that WFH argument can be made. Not employer/employee; tattoos don’t fall into the enumerated categories in her opinion.  What if the person has a number of tattoos? Can that be a contribution to a collective work?  That is a bit of a stretch (no pun intended). 

Joint works is a more complicated prospect, given flexible/fluid nature of tattoo creation, lots of input from customer; prior sketches common though not present for Tyson’s tattoo.  Nimmer’s test—only the result must be copyrightable—has been rejected by courts, but King supports it. Given customer’s input, customer should have rights and should be considered a joint author.

Focuses on display right.  If the tattoo artist is the copyright owner, what is the rule for the mobile human medium?  Proposed solution from Roberta Kwall—a type of public display right for the customer: the artist put the tattoo on the mobile medium and therefore loses control of subsequent displays on that person.

Q: moral rights—VARA?  If it’s a unique drawing on a human being, then what?

A: hasn’t looked at VARA, but Kwall does.

Betsy Rosenblatt: right to bodily integrity?  Does that factor in?

A: Nimmer did argue that the 13^th Amendment was implicated (declaration thrown out by judge).  Does raise Q of limits on artist’s rights.  Focus would be more on 3d parties like Warner’s.  Modification or removal by subject would be outside the control rights.

Kwall: we see lots of ads for tattoo removal.  It’s the ultimate site-specific art, but what happens when the person wants to obliterate the tattoo?

A: hasn’t worked through, but doubts the artist could control this.  Might be more successful against an attempted modification.

Q: There are a handful of movie/videogame/ad cases about tattoos: real outliers.  Has interviewed tattoo artists, and none of them thinks that they can control an individual client rather than a company like WB using a tattoo in an entirely different context, or using a representation of the client in a video game. They respect bodily autonomy.  They’re getting along just fine without the law.

A: will arise more often as tattoos become marketable.  When a 3d party gets involved.

We ran out of time for my comment: From what I’ve read, tattoo artists are perfectly willing to create tattoos copied from existing nontattoo works, e.g., a tattoo of the Beatles’ Abbey Road album cover, taking the position that the tattoo form makes it original on the part of the tattoo artist.  I’m curious about this because it seems to illustrate something going on with the norms discussed by both presentations: Jennifer Rothman criticizes best practices statements because they reflect the norms of the user community and discount the similar interests of outsiders.  It seems to me that many of these norms investigations discover communities doing the same thing: They get to use other people’s stuff, but other people don’t get to use theirs.  (Even saying WB was using the tattoo in an “entirely different context” in Hangover 2 is special pleading—the use of the tattoo was a joke about Mike Tyson; likewise saying that the videogame avatar isn’t the athlete is to say that you’re not allowed to represent the truth about the athlete digitally.)  This is natural enough—we see our own creative contributions more easily than others’—but should not go uninterrogated.

Copyright Theory

Robert Heverly, Buying and Selling the Ephemeral: A Transaction Costs Justification for

the Form of Copyright Law

Transacting in relation to copyright works is a critical part of the copyright system. If you have a right to exclude with no right to transact, the right is not particularly useful.  Transaction costs should be a specific part of the discussion of the scope of copyright.  Transaction costs, classically, aren’t the costs of putting the thing together but costs of dealing once you have the thing; but he wants to include both in his discussion.  If a work is copyrightable, we know there is an author, but must find them.  Determining ownership where uncertain increases transaction costs; extent of rights to be granted; terms of deal (how much money, etc.).

What can influence transaction costs in copyright markets? Norms, markets, law, trust, experience, relationships.  So what does it mean to focus on lower transaction costs?  Higher perceptions of risk are more expensive, limiting transactions.  Coase’s starting point is clear entitlements.  Uncertain rights figure into property rights: fair use is one source; ownership of rights can often create uncertainty (WFH, joint authorship, etc.).  Affects not just strength of right but status in negotiations.

Term extension: no discussion of transaction costs created by term extension.  But even with a new author writing now, we can anticipate trouble finding an owner before the copyright expires.

Compulsory licenses: Congress steps in to avoid licensing problems.  Cablevision proposed a different method for calculating cable compulsory license; Copyright Office rejected it, criticizing the method for being complicated and increasing transaction costs.

Ty v. Perryman: says that fair use economizes on transaction costs by allowing reviews without publisher permission, which publishers want so that they don’t have to worry about evaluating each use.  Posner was focused on giving users an “out,” but fair use in general is high on transaction costs.  (Hmm. I think that really depends on whether you have counsel or not!)

Q: Term extension—Congress was told that clearance/orphan works would be a problem; they just ignored that.

Q: registration?

A: can’t dump Berne, but lack of registration certainly increases transaction costs.

Q: termination of transfer—seems to be intentional raising of transaction costs.

A: should spend some time on that.

Q: if lack of knowledge of rightsholder is a problem, does explicit warranty of title/indemnity work?

A: yes, he’s a big fan of getting insurance involved.  That risk must still be priced, but it helps.

Zahr Said, Comparing Substantial Similarity and Likelihood of Confusion:  A Metacritical Analysis of Copyright and Trademark

OK, timing didn’t work out here—I missed most of this.  I came in when Mark McKenna was saying that the likely confusion test is incoherent, considering factors that serve differing ends and that therefore allow courts to pick and choose/doesn’t tell courts which ends are most important.

A: hears that, but has been astounded by copyright cases in which courts are conclusory about evaluating similarities/differences (without a structure that says what the meaning of genre is, for example).  TM cases can be intellectually dissatisfying, but at least they had factors. Are there instances of conclusory reasoning/underevidenced/underargued in TM cases where you think having more arguments would be a good thing?  Copyright cases are completely unpredictable because of the methodological abdication/vacillation. 

(The grass is always greener!  I suspect one big problem here is the Dan Kahan motivated cognition issue: it’s not so much the principles that are missing as disagreement on what is convincing as a factual claim.)

Brad Greenberg, Calibrating the Economic 'Engine of Free Expression'

Should focus on costs of creation, distribution, and reproduction and less on incentives authors need as reward.  Wants to create a taxonomy of works—e.g., remixes, which don’t need the same incentives.  Identify costs in various categories, from low to high.  Implications: copyright doesn’t work best as one size fits all. 

Have to work on averages, even though some writers can write very fast and others take 3 years and a number of drunken binges to get something done.

IPSC 2013, Cardozo, First Plenary Session

IPSC at 13

Conference website.

(standard disclaimers: this is my selective summary; as is made clear below, I couldn't possibly attend all the presentations I wanted to, so I picked on a sometimes arbitrary basis)

Roberta Kwall

IPSC began with 13 people!  (Now it’s 150 papers + other attendees.)  Discussed strategies for professors in a changing legal environment, including teaching more skills and teaching a greater variety of courses to make yourself more valuable.  Have students write briefs instead of papers, etc.  Reach out to local IP lawyers to become part of the community.  Be wary of being asked to do things whose success is largely out of your control (e.g., recruiting students, who will often be making decisions based largely on other factors like money).

Mark Lemley

IPSC started small, and limited numbers for a while. This allowed really deep/small discussions, but lost inclusiveness and a real flavor of what’s going on/ability to sample and learn from many different people.  Abandoned that and went to “the more the merrier.”  Now it’s intellectual speed dating.  Also experimented with papers—only tenure track?  Limiting the scope excludes an important chunk of scholarly universe.  This conference has gone to inclusiveness, which has costs.  But it’s also spun off imitators and differentiators which is healthy—you can talk to everyone at IPSC; you can go to WIPIP for more time to present; Patcon for just patents; privacy and internet law have their own conferences too. This gives us as a community the opportunity to experiment serving different kinds of needs.

IPSC and IP scholarship in general was heavily copyright-centric when it started.  Around 2000, scholarship started to head towards patents—practical importance plus recognition of IP as an independent discipline.  Copyright scholars 20 years ago often came out of libraries or con law and weren’t hired for IP for its own sake.  Because we hadn’t had a lot of patent academics for a while, there was a lot of low-hanging fruit both empirical and theoretical.  Clinics have also grown during this period.  Last 6-8 years, real growth in TM scholarship, again writing about stuff people hadn’t really theorized. Now, move towards post-IP scholarship: theorizing what IP’s place in the world is and what might be alternatives to it.

Are we going to see continued growth in the next 13 years?  Not on the same scale.  IP as a practice area is booming.  Will that trend be sustainable?  Is there an IP bubble that will subside (though not disappear)?  Law schools tend to lag, not lead, the bar.  As long as practice is growing, we can build the legal scholarship up even in a challenging market.

Justin Hughes

Don’t use Powerpoint, or at least read Edward Tufte’s The Cognitive Style of Powerpoint. 

Things he’s noticed: people from other nonlegal disciplines wanting to study/participate in IP.  Advances in empirical and historical work, but not nearly as much in comparative work.  Relevance: the big challenge.  Judge Jacobs, 2d Circuit, says he doesn’t read law reviews; neither does the executive branch. Law professors don’t think enough about relevance.  What we think of as “influential” often doesn’t seem influential to Hughes.  Problem throughout the legal academy, but perhaps specifically with patents—hypothesis: sixty years ago, patent scholarship became anti-patent, leading to a rupture between patent academics and the gov’t apparatus.

Usefulness to litigation shouldn’t be the only measure of scholarship; we shouldn’t expect history or philosophy to be cited by courts.  But it’s worth thinking about.  We should also judge the relevance of our community on the things we do besides articles: amicus briefs, Best Practices in Fair Use (identifies this as having genuine impact); working in government like Hughes is another way to have an effect.

One reason so much of our scholarship doesn’t have an impact is that our scholarship is polarized and partisan, often unrealistic, and is perceived that way.  Jessica Litman has made this point.  When Hughes went into the Clinton administration, he was assigned to figure out database protection.  Laura Tyson submitted a report on behalf of the database industry; it was crap, nothing but advocacy.  This was saddening.  But academics also had a lot of stuff to which he had the same reaction: advocacy thinly veiled as scholarly writing.  That’s one reason we don’t have as much influence as we could: we seem partisan and single-minded.

Risks of repetition: not clear there’s awareness of older scholarship, which is a real quality issue; partly a phenomenon of the size of our community, making us read more & more.