PTO descriptiveness finding inadmissible where court ruled mark suggestive

Innovation Ventures, LLC v. NVE, Inc., 2015 WL 871137, No. 08–11867 (E.D. Mich. Feb. 27, 2015)

 

Various evidentiary rulings in the latest round of this trademark/false advertising case over energy shots, the first of which presages what I expect to be increasing uncertainty in the courts until the Supreme Court revisits the issue.  The others are in moderately decreasing order of broader importance, but the later ones have enough human interest to include here.

 

Here, Innovation wanted to exclude evidence that the PTO refused its ITU application for “5-Hour Energy” in 2005 on grounds of mere descriptiveness.  The mark was subsequently registered on the Supplemental Register.  In 2008, the PTO refused another application, again on mere descriptiveness grounds.  The Sixth Circuit, however, held that “[t]he line between merely descriptive and suggestive marks is admittedly hazy and can be difficult to discern” but that 5-Hour Energy was suggestive. Thus, Innovation argued, evidence about the PTO proceedings would be contrary to the law of the case and would confuse the jury. NVE responded that the PTO proceedings were probative of the relative strength or weakness of the mark.

 

The court agreed that this evidence would have some probative value, but concluded that on balance it was more prejudicial than probative:

 

Introducing prior USPTO findings which conclude that the mark is merely descriptive, and therefore not protectable, would contradict the Sixth Circuit’s legal conclusion and serve only to confuse the jury. Even with a limiting instruction, proof that the USPTO had repeatedly denied Plaintiff a trademark could carry definitive weight with the jury, and suggest that they were allowed to reach a conclusion inconsistent with the Sixth Circuit’s ruling.

 

Nor did NVE cite cases where PTO rulings were presented to a jury as probative of the strength of a mark for purposes of likely confusion analysis.  Though arguably relevant to strength, the rulings were more directly probative of protectability, and the Sixth Circuit had already determined protectability.

 

[Comment: It seems to me that this question implicates two issues before the Supreme Court this Term: from Hana Bank, if classifying a term/mark is a question of fact and not law (and if placing a term on one side of the generic/mark line is a question of fact, why wouldn’t the descriptive/suggestive line be the same?), then shouldn’t a jury get to decide it and not the Sixth Circuit, given that court’s conclusion that the matter is not free from doubt?  Relatedly, Hargis may tell us the kind of deference the PTO’s conclusion is due when the applicant had the opportunity to contest the finding—at the very least, I’d think it should be evidence for the jury to consider.]

 

Innovation also unsuccessfully sought to preclude NVE’s unclean hands defense. NVE initially argued fraud on the PTO, though it lost that part of the argument. It also argued that Innovation “usurped” NVE’s 6 Hour Power mark by registering “sixhourpower.com” and “6hourpower.com” in bad faith, and also brought forth an expert who identified and discussed alleged anti-competitive behavior such as Innovation’s “STS rack program” that paid retailers to keep NVE’s products off the front counters at convenience stores. These allegations of anti-competitive and unfair conduct were enough to preserve an unclean hands defense.

 

The defense must be established by “‘clear, unequivocal and convincing’ evidence,” but that didn’t mean that NVE had to maintain viable counterclaims for cybersquatting and antitrust violations. The facts underlying an unclean hands defense need not be of “such a nature as to be punishable as a crime or as to justify legal proceedings of any character.”

 

Innovation also sought to exclude evidence or argument contrary to the Sixth Circuit’s mandate, but the court concluded that Innovation overread that mandate.  Innovation argued that NVE couldn’t introduce evidence: (i) that Innovation was not the first to use the mark in specific geographic areas, when the Sixth Circuit stated that Innovation used its mark “nationwide” since June 2005; (ii) that the “5–hour ENERGY” mark was weak when NVE entered the market; and (iii) that Innovation’s conduct supported NVE’s unclean hands defense.  The trial court reviewed the court of appeals opinion and disagreed.  The Sixth Circuit didn’t excuse Innovation from carrying its burden of proof on its common-law trademark infringement claim, and part of that is the plaintiff’s burden to establish first use of its mark in every geographic area in which it claims superior rights.  The use of the term “nationwide” was part of the court of appeals’ recitation of background facts, not a definitive ruling or finding of fact intended to establish the date upon which Innovation’s  use of its mark occurred in particular geographic areas.

 

Innovation argued that the Sixth Circuit’s finding of suggestiveness prevented NVE from introducing evidence of 5-Hour Energy’s relative strength when NVE entered the market.  But that argument improperly conflated protectability with likely confusion.  The Sixth Circuit found likely confusion to be a “factually intensive issue” and a “close call” that could be “decided either way.” NVE was not precluded from introducing evidence that Innovation’s mark was weak when it entered the market as part of the likely confusion analysis.

 

Nor would NVE be precluded from introducing evidence of alleged cybersquatting and antitrust/anti-competitive behavior as part of its unclean hands defense, because those counterclaims have been dismissed from the case. The evidence pertaining to them could nevertheless be offered as relevant to support an unclean hands defense. The Sixth Circuit didn’t address the merits of the unclean hands defense, and there was no clear mandate negating that defense.

 

NVE also moved to exclude expert testimony from Dr. Dan Sarel, a marketing consultant who conducted a mall intercept survey in 2009.  The respondents were limited to “buyers and potential buyers of 2–ounce energy drinks who are 18–35 years old, ¾ males,¼ females, residing all over the country.”  NVE challenged the methodology for including an improper survey population, employing an improper control, utilizing leading and suggestive questions, and failing to replicate market conditions. In late 2011, a very similar survey and report from Dr. Sarel was excluded in another case brought by Innovation, on the grounds that its methodology had “multiple flaws” resulting in an “unreliable scientific foundation for its conclusions.”  The court found that the report here suffered from many of the same kinds of problems.

 

The previous exclusion relied in part on the fact that Dr. Sarel did not allow the survey participants to handle the actual sample bottles, but rather used pictures of the various products. Here, respondents were allowed to handle the bottles. But other significant flaws remained, including leading questions, failure to provide a “don’t know” option, and use of an inadequate control product, the energy shot “ROCK ON.” That control had “blatantly obvious differences” from the 5–Hour ENERGY product in color, lettering, theme, imagery, and name. (NB: The image I found of Rock On does have orange on the label, but apparently the control used had “no significant red, orange, yellow, or blue coloring.”) ROCK ON didn’t emphasize time or duration, have a bright red bottle to coordinate with its flavor, depict an image of fruit, or feature durational language in a bold font in horizontal writing.

 

Innovation commissioned a new survey with different methodology; that could be relied on at trial, but not this original survey.

 

NVE also moved to exclude Innovation’s Teflon survey conducted by Howard Marylander.

Marylander opined that: (1) 5–Hour ENERGY “is recognized as a brand name in the context of foods and food supplements ... [and] that brand recognition is a strong one[ ]” and (2) “[b]ecause of its clear recognition as a brand, ... 5–HOUR ENERGY has strong secondary meaning.” NVE argued that the Teflon survey was mooted by the Sixth Circuit’s finding of suggestiveness, and also argued that the survey had various methodological flaws.

 

Innovation responded that the survey could be used to show the strength of its mark, a likely confusion factor, and the court agreed that it was relevant for this purpose, given the unique procedural posture of the case.  Teflon surveys are generally reliable and widely accepted; Marylander’s methodology was patterned after other surveys that have been judicially scrutinized and approved by other courts. Any errors did not make it unreliable but could be tested in front of the jury.

 

NVE further moved to exclude Innovation’s expert witness Dr. Gregory Carpenter.  Innovation agreed not to elicit testimony about Carpenter’s opinion of NVE’s intent in selecting its name, or on the ultimate issue of likely confusion/infringement. Thus, the only disputed issue was whether Dr. Carpenter’s opinion about Innovation’s brand strength was cumulative.  Dr. Carpenter, a professor of marketing strategy at Northwestern University, was a well-credentialed professor specializing in market research concerning “pioneering brands,” or brands that have a “first mover” advantage.  NVE argued that he didn’t conduct any independent investigation, study, or survey.  Innovation argued that his testimony would show how a pioneering brand draws competitors and why others would want to trade on the power of the brand, and would explain how NVE’s actions were indicative of these types of competitors.  The court agreed that this testimony could be helpful to the jury “in understanding how the various expert surveys support the marketing theory that pioneering brands have high brand strength.”

 

NVE further moved to exclude Innovation’s food and beverage industry expert, Tom Pirko. His opinion, based on over 35 years of experience in marketing and sales in the food and beverage industry, would be that Innovation’s merchandising, display and incentive programs were consistent with the industry standard and NVE’s own practices. This would be relevant to the unclean hands defense. However, certain portions of his report and testimony shouldn’t be presented to the jury, such as his testimony about the effect of the “Legal Notice” Innovation sent out saying it had won an injunction against the sale of a 6 Hour energy shot (albeit not this 6 Hour energy shot; the problem was that Innovation tried to use this injunction to get all such shots pulled off shelves).  Pirko’s report said that the Notice was clear and didn’t name NVE’s 6 Hour Power; didn’t actually demand removal of the product from shelves; couldn’t have damaged NVE; and, if it was misread, that was NVE’s fault for choosing a confusingly similar name.  Those kinds of statements crossed the line from proper opinion evidence to improper factual and legal conclusions.

 

Pirko could properly testify concerning how recall notices were normally handled in the beverage industry, and what kinds of actions a typical merchant would ordinarily take in response to a Legal Notice of the type sent out by Innovation. He could not opine on the intended scope of the Legal Notice or speculate about its “meaning,” or how others would understand or interpret that meaning. He could not summarize what he believed to be the testimony or statements of other people who have read the Legal Notice and he could not offer any opinion on the ultimate issue as to whether the Legal Notice was misleading or whether NVE’s 6–Hour POWER brand was confusingly similar to Innovation’s 5–Hour ENERGY.

 

Pirko could, however, still be an expert on the general practices of the beverage industry, even though he wasn’t recently published on the subject matters in this suit and listed no-peer reviewed or non-peer-reviewed articles citing him as an expert. He had over 35 years of experience in advising food and beverage managers, manufacturers and sellers, including nearly 25 years of experience with recalls. He had offered consultation services regarding energy shot products, as well as other relevant experience. Expert testimony can legitimately be based entirely on experience.

 

NVE successfully excluded references to misstatements or slips of the tongue made by NVE’s counsel or expert witnesses.  During the over six years this case had been pending (!), NVE’s counsel and experts occasionally misstated the names of the parties’ products during discovery, such as “5–Hour POWER.” This wasn’t relevant to the question of actual confusion in the marketplace of consumers. See, e.g., Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321, 1992 WL 421449, at *16 (T.T.A.B.1992) (“It is obvious that respondent’s attorney was quite aware of the differences between the two [trademarks] and that what occurred was nothing more than a slip of the tongue under the pressure of conducting the interrogation”); VMC Corp. v. Distrib. Marketing Serv., 192 U.S.P.Q 227, 1976 WL 21124, *3 n. 4 (T.T.A.B.1976) (“This slip of the tongue under the tension of being subjected to interrogation by opposing counsel is not indicative of a marketing environment”). “This evidence is not probative of trademark confusion. Moreover, the spectacle of Plaintiff’s presenting misstatements by Defendant’s counsel or witnesses to prove actual confusion would be fraught with unfair prejudice that would greatly outweigh whatever miniscule probative value such evidence may have.”

 

As to instances of alleged actual confusion not related to 6-Hour Power’s product or name, Innovation would have to lay a foundation showing that the confusion asserted related to NVE’s product, not some other 6-Hour product.  But evidence of commingling the parties’ products on a common display shelf could be introduced, at a bare minimum to show the same marketing channels.  As to alleged hearsay, the Sixth Circuit admonished that “the strict application of the rules of evidence to a claim that depends on customer confusion places too heavy a burden on” the offering partyand that customer calls “were not relied on to show the content of the conversations, but rather were introduced merely to show that the conversations occurred and the state of mind of the declarants.”

 

Evidence about lawsuits filed by consumers against NVE  for personal injuries and wrongful death allegedly caused by the ingestion of NVE’s discontinued products which contained ephedra was excluded because its probative value is substantially outweighed by the danger of unfair prejudice.  This evidence offered no support for claims of trademark infringement, but would only serve to suggest that NVE was a bad actor.  If NVE’s president, Robert Occhifinto, made statements at trial inconsistent with his sworn testimony before Congress as part of an investigation into the lawsuits, then he could be impeached with that testimony, but that was it.

 

NVE was unsuccessful in its attempt to exclude the testimony of Jesus “Joe” Palmeroni, a former NVE VP terminated in 2006 due to purported theft and fraudulent conduct in his role as a sales rep.  NVE sued him to recover the allegedly stolen monies.  NVE presented evidence that a lawyer purportedly acting on Palmeroni’s behalf contacted NVE’s counsel and offered for him to provide favorable deposition testimony in this litigation in exchange for a favorable settlement in the NVE-Palmeroni lawsuit.  A transcript of the purported phone call allegedly stated that “Joe” (presumably Mr. Palmeroni) “could either be forgetful of not so forgetful” during his deposition testimony, and that the attorney wished to “have a dialogue about how we can help each other bring finality to both things” (presumably, the two lawsuits). NVE didn’t accept this apparent solicitation, and Palmeroni ultimately provided deposition testimony that was unfavorable to NVE, testifying that he believed that the name 6-Hour Power was chosen by NVE to “trade off the success and reputation” of 5–Hour ENERGY.

 

During the deposition, NVE cross-examined Palmeroni at length and he said he was unaware of any communications between the parties’ lawyers.  NVE had no corroborating evidence that he knew of or participated in any kind of offer to provide favorable testimony.  While NVE could question him at trial about this, his testimony would not be excluded.

 

NVE moved to bar Innovation from arguing that its Legal Notice was literally true, given that the Sixth Circuit deemed it “on the cusp between ambiguity and literal falsity,” and thus not literally false. Whether parts of the Legal Notice were literally true was somewhat beside the point, since it could still be misleading.  The court wouldn’t bar Innovation from arguing that the Notice contained some true statements, but the jury question was whether the Notice was misleading, deceptive to its intended audience, and actually deceived recipients.

 

Also, the court granted NVE’s motion to preclude Innovation from introducing evidence of Occhifinto’s 1991 criminal convictions for importation of hashish and money laundering. Neither involved an act of dishonesty or false statement, and in any event more than ten years passed since conviction/release from confinement. Evidence of convictions more than ten years old will “very rarely and only in exceptional circumstances” be admitted. Those circumstances weren’t present here.  Innovation argued that because of his drug-related convictions, in 2003, Occhifinto must have been lying when he testified to Congress that he only learned after naming

certain ephedra-containing products “Yellow Jacket” and “Black Beauty” that those names were also street names for illicit drugs. Innovation also apparently wanted to argue that Occhifinto had a propensity to copy from other product names and then lie about name selection.  “This tortured logic simply does not give rise to adequate probative value, sufficient to overcome the highly prejudicial nature of presenting Mr. Occhifinto’s prior criminal convictions to the jury.”

 

Finally, Innovation moved to exclude NVE’s theory of lost market share damage from its Lanham Act false advertising counterclaim.  But NVE’s witnesses had offered evidence on that theory all through the case.  NVE principals’ testimony about lost market share was admissible lay opinion testimony based on their specific knowledge of NVE’s business.

Irreparable harm webinar tomorrow

Please click on the link below to register for a timely lunchtime teleseminar where our panel of experts will address the status of “irreparable harm” in Lanham Act false advertising cases.

 

Recent cases have suggested that courts no longer will “presume” irreparable harm in Lanham Act false advertising cases (where a preliminary injunction is sought).

 

Will this trend hold?  Is this trend appropriate?

If the trend holds, the next question is, how do plaintiffs show irreparable harm going forward? 

 

This is an important issue in the Lanham Act false advertising practice, and the panel discussion is sure to be a lively one.

 

Here is your all-star panel:

 

Moderator

• Sherrie Schiavetti, Kelley Drye

 

Panelists

• David Bernstein, Debevoise & Plimpton LLP

• Roger Colaizzi, Venable LLP

• Rebecca Tushnet, Georgetown University

 

èPlease register at link below  – it’s free for ABA Antitrust Section Members!

 

 

 

http://www.americanbar.org/content/dam/aba/marketing/antitrust/20150306_at150306.pdf

 

UK ad regulator finds Israel falsely advertised

By implying that the Old City of Jerusalem was recognized as being in Israel, rather than in occupied Palestinian territories.  File under: having the First Amendment makes the US very different.

Pregnancy clinic ads are commercial speech

First Resort, Inc. v. Herrera, No. C 11-5534 (N.D. Cal. Feb. 20, 2015)   

 

The court rejected a facial challenge to San Francisco’s Pregnancy Information Disclosure and Protection Ordinance, “aimed at ensuring that indigent women facing unexpected pregnancies are not harmed by false or misleading advertising by certain providers of pregnancy-related services that do not offer abortions or referrals for abortions.” First Resort is a non-profit corporation which operates a state-licensed community medical clinic in San Francisco. The clinic offers pregnancy testing, ultrasounds and counseling, but not abortions, emergency contraception, or referrals for same.  

 

First Resort’s ads characterize it as a provider of medical care and counseling services for pregnant woman. Abortions and related resources are “featured prominently in its promotional materials.”  Thus, its website has a heading “Abortion Counseling,” claiming to offer “abortion information, resources, and compassionate support for women facing the crucial decisions that surround unintended pregnancies and are considering abortion.” Another page discusses “Pregnancy Services and Abortion Services,” and claims to provide “pregnancy options counseling and many other services.” The website and ads make no mention of First Resort’s anti-abortion views or refusals to provide abortions or referrals.  First Resort targets women considering abortion, and uses Adwords to show its paid ads when “San Francisco” and “abortion” or “emergency contraception” are used in combination.  It considers keyword advertising “a means of competing with abortion providers for the attention of online viewers.”

 

First Resort relies on donations generated through fundraising. Members of First Resort’s senior management receive enhanced compensation based on the number of new clients brought in.

 

San Francisco passed the Ordinance because pregnancy clinics that oppose abortion—“crisis pregnancy centers”—have become common throughout California. While some centers readily acknowledge their anti-abortion stance, others don’t.  The City found that some intentionally deceive women, causing them harm.  The deception is especially harmful to poor women, for whom time is of the essence, “and even a few days delay in accessing emergency contraception or abortion services can render less invasive options unavailable.”

 

The ordinance therefore barred a “limited services pregnancy center” from making statements of fact related to their services that were “untrue or misleading, whether by statement or omission,” when the center knew or should reasonably know were untrue or misleading.  In particular, it was unlawful to make statements “with the intent not to perform the services expressly or impliedly offered, as advertised.”  After giving notice of a violation, the City Attorney could file a civil action, with injunctive relief available as well as civil penalties of $50-500.

 

Because First Resort brought a facial challenge, it had a heavy burden of showing unconstitutionality across the board. The City took the position that the Ordinance only regulated false and misleading conmmercial speech, which is unprotected.  There was no dispute that only false and misleading speech was targeted, so the court asked only whether the Ordinance regulated commercial speech.

The Supreme Court has held that speech may be “characterized as commercial when (1) the speech is admittedly advertising, (2) the speech references a specific product, and (3) the speaker has an economic motive for engaging in the speech.” While “[t]he combination of all of these characteristics . . . provides strong support for the . . . conclusion that [the communication is] properly characterized as commercial speech,” it is not necessary that each of the characteristics “be present in order for speech to be commercial.”  Factors (1) and (2) were true of First Resort’s ads here.

 

First Resort argued that its ads weren’t commercial speech because it didn’t engage in economic transactions with its clients and thus had no economic motive for its communications. But that wasn’t helpful for a facial challenge. In any event, failure to charge a fee wasn’t dispositive.  The record strongly supported the conclusion that First Resort’s ads, in context, were economically motivated.  First Resort paid for Adwords, and considered its ads a means of competing with abortion providers for online attention.  “Notably, First Resort’s ability to attract clients to its clinic is critical to its fundraising efforts—which, in turn, are necessary to First Resort’s operations, including the provision of free services.” Thus, the ads were economically motivated, and even for First Resort the Ordinance targeted commercial speech.

 

True, fundraising per se isn’t commercial speech, but it was First Resort’s ads, not its fundraising activity, that was at issue; the fundraising just provided context to the economic motivation. First Resort also argued that its ads were inextricably intertwined with noncommercial exhortations to get free pregnancy counseling.  But the Ordinance didn’t regulate any such solicitations—only the (unprotected) false advertising thereof.

 

Also, even if the First Amendment were implicated, the Ordinance was not impermissible content or viewpoint discrimination. The regulation depended on the services offered by a clinic, not its views; there were many reasons a clinic might not offer abortions that were unrelated to its views on abortion. First Resort and other clinics remained free to express their views.  This reasoning also disposed of First Resort’s equal protection claim.  First Resort argued that it was being discriminated against in violation of its right of conscience.  But the Ordinance didn’t compel First Resort to support any particular belief about abortion; it just couldn’t defraud or mislead the public about the services it offered.

 

Finally, First Resort alleged that the Ordinance is preempted by Section 17500 on the grounds that they are “nearly identical and seek to regulate the exact same conduct—false and misleading advertising.” California state preemption of local regulation differs a bit from federal preemption because in theory it could preempt local rules that “duplicate” state law.  But the case law indicated that what “duplicates” really meant was “creates double jeopardy” and this wasn’t a criminal law, so it didn’t create that problem.  Other cases using the “duplicate” rule looked to interference with state law, and there was none here. Also, the Ordinance wasn’t coextensive with state law: it was narrower than the general false advertising law, but also broader in that it covered false advertising even when the services at issue weren’t offered for sale.

Copying graffiti could infringe copyright and trademark

Williams v. Roberto Cavalli S.p.A., No. 14-cv-06659 (C.D. Cal. Feb. 12, 2015)

 

Plaintiffs Jason Williams, Victor Chapa, and Jeffrey Rubin sued the producers and distributors of Just Cavalli clothing, alleging copyright infringement, removal and alteration of copyright information (CMI) under §1202, unfair competition, and negligence. Some of the defendants moved to dismiss all claims but copyright infringement, and failed (even though it will ultimately be pretty hard to show that the distributors had the requisite knowledge under §1202 for CMI removal; a more targeted attack on that issue might’ve asked whether that knowledge was plausibly pled).

 

The plaintiffs alleged that they were well-known and respected graffiti artists who created a mural in San Francisco that contained signature elements identifying them as the creators. The mural depicted the stylized signatures of “Revok” and “Steel,” pseudonyms associated with two of the plaintiffs, against a background of “revolutions” imagery, allegedly publicly recognized as the third plaintiff’s signature style.

 

Mural, from complaint

Defendants allegedly used high-resolution photography to obtain images of the mural and placed the images on a collection of Just Cavalli clothing.  While the “revolutions” imagery was intact, the Revok and Steel signatures were rearranged and indiscernible. 

Examples of Just Cavalli clothing

On some items, the brand name “Just Cavalli” was superimposed over images from the mural, allegedly intentionally designed to “induce, enable, facilitate, or conceal” the infringement.

 

Just Cavalli clothing with Just Cavalli name added

On the CMI claim, the court concluded that the artists’ signatures under their pseudonyms counted as CMI, even though they weren’t provided through a digital technological process.  Further, it was sufficient to argue that defendants removed CMI by copying only part of the mural, so that “the signatures of Revok and Steel are chopped and rearranged to such an extent that they are not recognizable.”

 

Unfair competition: The third plaintiff, Chapa, alleged that his “revolutions” imagery functioned as “product packaging or logo.” Defendants argued that Dastar precluded this kind of claim, but the court concluded that Chapa’s claim alleged passing off, not reverse passing off, because he alleged that the use of his “revolutions” imagery created the “false and deceptive impression that the Just Cavalli garments and accessories are associated with and/or manufactured by [Chapa] and Plaintiffs.” Designs can be protected by both the Lanham Act and copyright law.

 

Because Chapa adequately pled his Lanham Act claim, his California statutory and common law claims also survived.

Court misapplies FTDA, not TDRA, to political speech

Hershey Co. v. Friends of Steve Hershey, 2015 WL 795841, No. WDQ–14–1825. (D. Md. Feb. 24, 2015)

 

Disappointing ruling on political speech and infringement now supplemented by flat-out wrong ruling on dilution.  Hershey sued the Friends of Steve Hershey for political signs that looked too much like the Hershey trade dress, alleging infringement, dilution, and breach of a previous agreement to stop using the Hershey trade dress. Having previously granted Hershey’s motion for a preliminary injunction on infringement grounds, the court didn’t revisit that in its ruling on Friends of Steve Hershey’s motion to dismiss.

 

Defendants argued that Hershey failed to plead standing for false designation of origin because it failed to plead lost sales, per Lexmark. Hershey alleged that the “Defendant’s willful and deliberate acts ... have caused injury and damages to [the] Plaintiffs, [and] have caused irreparable injury to [the] Plaintiffs’ goodwill and reputation ....”  Lexmark, the court here reasoned, was a false advertising case, serving only the Lanham Act purpose of  “‘protect[ing] persons engaged in [commerce within the control of Congress] against unfair competition.’” Thus, to fall within the Act’s zone of interests, a false advertising plaintiff must allege an injury to a commercial interest in reputation or sales.”

 

False association is different because false association suits also serve the Act’s purpose “to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce” and “to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks.” Because Hershey was within the Act’s “zone of interest,” it didn’t have to plead withheld sales, though it was required to plead proximate cause: “economic or reputational injury flowing directly from” the defendants’ actions.  The fact that Hershey pled damage to its goodwill and reputation was sufficient to survive a motion to dismiss.  (Some courts might have called this a bare recitation of the legal elements; compare recent treatment of harm for irreparable harm purposes.)

 

Dilution is where it got ugly.  As you know, Bob, § 1125(c) (3)(C) of the Act provides that “[a]ny noncommercial use of a mark” “shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection.” American Family Life Insurance v. Hagan, another political speech case, said that

 

[a]s courts have noted, the “noncommercial use” exemption codified at § 1125(c)(4)(B) “presents a bit of a conundrum because it seems at odds with the earlier requirement [recited at § 1125(c)(1) ] that the junior use be a ‘commercial use in commerce.’ If a use has to be commercial in order to be dilutive, how then can it also be noncommercial so as to satisfy the exception of section 1125(c)(4)(B)?” Mattel, 296 F.3d at 904. The answer to this question is that, when Congress passed the Federal Trademark Dilution Act (“FTDA”), it used the phrase “noncommercial use” as a somewhat inexact, shorthand reference to “speech protected by the First Amendment.”

 

Thus, the noncommercial use exemption could only apply if the defendants’ actions qualified as speech protected by the First Amendment.  But the preliminary injunction ruling found that the campaign signs were infringing, and thus not protected speech.  Motion to dismiss denied.

 

Comment: That’s just wrong, not least because the language discussed in Hagan is not the present statutory language, which got rid of the admittedly awkward “commercial use in commerce” predicate, replaced by “use … in commerce,” which is broader than “commercial speech,” followed by a specific “noncommercial use” exception.  The present statutory language used by the TDRA more clearly gives effect to Judge Kozinski’s sensible interpretation of the FTDA in Mattel: the meaning of the exception is “speech that is noncommercial under the First Amendment definition of noncommercial”—which was what the Hagan court ultimately said. (The court here neglected to note that Hagan ended up rejecting the standard used here—the Hagan court was summarizing plaintiff’s argument, which the court here quotes as if it were the Hagan court’s conclusion. Rather, the Hagan court then disagreed, for largely the reasons I’m about to give.)

 

Although Steve Hershey’s speech may not be “protected” by the First Amendment for purposes of other causes of action, it is most certainly “First Amendment noncommercial” in that it is political speech, not speech proposing an economic transaction.  (Arguably being a politician is in Steve Hershey’s economic interest given what politicians are allowed to accept from donors these days, but I still can’t imagine that fact making political speech into commercial speech.) The court’s understanding of “noncommercial use” makes the exception either completely redundant—if speech is protected by the First Amendment in that sense, no act of Congress can make it otherwise—or illogically dependent on the outcome of separate causes of action: suppose that Steve Hershey’s speech was defamatory and thus unprotected by the First Amendment for purposes of a defamation cause of action.  Could it therefore also be dilutive?  Trademark infringement is not dilution, so the fact that it’s not “protected” for infringement purposes should have no more effect on the dilution exception than defamation would.

 

Sigh. Anyhow, Maryland trademark infringement/unfair competition claims survived because the federal claims did. So did the breach of contract claim.

When is a house an advertisement?

Mid-Continent Casualty Co. v. Kipp Flores Architects, L.L.C., No. 14-50649 (5th Cir. Feb. 26, 2015)

 

KFA, an architecture firm, got a judgment in a jury trial against a builder, Hallmark Design Homes, for copyright infringement for building hundreds of buildings from KFA’s designs without licensing them. KFA initially licensed Hallmark to build 11 different house designs once, but Hallmark built several hundred more copies without paying.  Its complaint alleged that Hallmark used depictions of structures based on its works in promotional and advertising materials and “used the structures themselves to advertise their infringing structures.” Hallmark filed for bankruptcy, but the trial went forward because Hallmark was potentially covered by the policies at issue here. The jury found that Hallmark had infringed KFA’s copyrights and that KFA had an unsecured claim in Hallmark’s bankruptcy in the amount of $3,231,084 plus costs.

 

Hallmark’s insurer, Mid-Continent, sought a declaratory judgment that it had no duty to indemnify. Its policies excluded coverage for copyright infringement, but exempted advertising injury from that exclusion, and allowed the holder of a judgment against Hallmark to recover under the policies.  The district court found coverage under the advertising injury provision of Hallmark’s policy, holding Mid-Continent liable in the amount of the prior judgment plus attorney’s fees. Mid-Continent appealed and the court of appeals affirmed. 

 

Texas tries to give every policy term meaning as well as to give terms their ordinary meaning unless the policy itself shows intent to give a term a technical meaning. Ambiguity will be construed against the insurer. The “facts actually established in the underlying suit control the duty to indemnify.”  The policies at issue defined “personal and advertising injury” as “injury . . . arising out of one or more of the following offenses: . . . infringing upon another’s copyright, trade dress or slogan in your ‘advertisement.’” “Advertisement” was defined as “a notice that is broadcast or published to the general public  or specific  market segments about your goods, products or services for the purpose of attracting customers or supporters.” This included material on the internet or other electronic communications, as well as “only that part of a web- site that is about your goods, products or services for the purpose of attracting customers or supporters.”

 

Mid-Continent argued that the previous judgment never found there was an advertising injury.  “The insurer’s duty to indemnify depends on the facts proven and whether the damages caused by the actions or omissions proven are covered by the terms of the policy. Evidence is usually necessary in the coverage litigation to establish or refute an insurer’s duty to indemnify.”  However, a coverage suit often requires the parties to submit evidence of facts which were not specifically covered at the earlier trial, since issues relevant to the question of coverage can be irrelevant to the question of the insured’s liability. Thus, courts can make necessary factual findings related to such issues in coverage actions.

 

The issue of “advertising injury” was irrelevant to copyright infringement liability but essential to coverage under the policy. Because the jury determined that the houses themselves infringed KFA’s copyright, the key question here was whether the houses themselves were “advertisements.” The policy language, plus KFA’s “ample” evidence that Hallmark used the infringing houses for marketing purposes, showed that they were ads.   

 

KFA presented evidence that the houses themselves were used to attract customers, in addition to evidence of website and print promotional materials; the houses themselves were Hallmark’s primary form of marketing.  “One of Hallmark’s representatives testified in deposition in this suit that homebuyers never bought houses sight unseen, but rather would look at the model homes Hallmark built as well as elevations and floor plans in the sales office or on the website. In addition, Hallmark put up yard signs with its contact information on the sites of homes it built to attract customers.”

 

Mid-Continent argued that, regardless of these facts, a house could not be an “advertisement.” The policies defined an ad as “a notice that is broadcast or published to the general public or specific market segments about your goods, products or services for the purpose of attracting customers or supporters,” and Mid-Continent argued that as a matter of common sense, a house can’t be a notice, nor can it be “broadcast or published.”

 

However, the policies never specified that “notice” must take any particular form and never excluded from the definition a physical object, nor did they define “broadcast” or “published.” “Notice” in the OED is defined sweepingly as the “act of imparting information” or “something   which imparts information.”  Case law had construed “notice” very broadly, and “publish” was comprehensively defined as “to make public or generally known” or “to make generally accessible or available for acceptance or use (a work of art, information, etc.); to present to or before the public.”

 

Texas law also recognized advertising as “call[ing] to the public attention by any means whatsoever” for purposes of the Texas Deceptive Trade Practices Act, or as a “marketing device[] designed to induce the public to patronize” a particular establishment, or “a public notice drawing attention to” the attributes of a business.  This accorded with the “common understanding of the term as referring to a device for the solicitation of business.”  Hallmark’s primary means of marketing its business to the public was through the use of the homes themselves, both through model homes and yard signs on the property of infringing homes it had built.  Indeed, there was no evidence that Hallmark’s customers saw any marketing materials other than the houses themselves. “Under the undisputed facts, Hallmark’s use of the infringing houses satisfies not only the policies’ expansive definition of “advertisement” and Texas law’s similarly broad construction of the term but also common sense.”  Thus, the infringing houses, as used by Hallmark, were “advertisements.” See also King v. Cont’l W. Ins. Co., 123 S.W.3d 259, 265 (Mo. Ct. App. 2003) (same result).

 

Mid-Continent argued that the policy excluded coverage for Hallmark’s marketing activities because advertising necessarily was an activity or item distinct from the product being advertised.  The facts peculiar to Hallmark’s business—where the houses themselves were Hallmark’s primary means of marketing—and the broad policy language at issue justified rejection of this argument.

 

Next, the court agreed that Hallmark’s liability was “because of” a covered advertising injury.  KFA did not have to prove that the infringing advertisement swayed a particular buyer’s decision. Nor was KFA barred from recovery because the damages award included non-covered damages for infringement in the construction and sale of the houses themselves.  Even if infringement in construction and sale could be distinguished from infringement in Hallmark’s use of the houses as advertisements (how?), copyright law didn’t distinguish between those infringements for purposes of damages.  Thus, KFA would have received a full recovery—here, actual damages—for any type of infringement, making the advertising injury damages separate and independent from other damages resulting from infringement by construction and sale.

 

Mid-Continent then failed to meet its burden of proving an exclusion applied.  Mid-Continent argued that breach of contract was excluded (except implied contracts over advertising ideas), and that KFA and Hallmark entered into architectural services agreements. But KFA stated a claim only for copyright infringement, not breach of contract.  Neither side ever argued that there’d been a breach: Hallmark argued unsuccessfully that KFA never terminated the agreements, so it had granted Hallmark an implied license to continue using KFA’s designs. Copyright infringement could only have occurred after Hallmark lost its license. All the damages in the suit were copyright damages, not contract damages. Thus, Mid-Continent failed to show that the prior judgment was related to breach of contract.

 

Mid-Continent also claimed that the cause of action came from pre-policy conduct, but the pre-policy conduct was when Hallmark had a valid license from KFA.

 

Moreover, Mid-Continent wasn’t allowed to argue that Hallmark’s use of KFA’s designs wasn’t infringement under 17 U.S.C. §120(a).  Mid-Continent wasn’t allowed to relitigate facts established in the prior liability case, and the jury specifically found copyright infringement.

 

Finally, KFA got its attorney’s fees, based on a contingency fee agreement between KFA and its lawyers (minus a reduction for time spent not on the breach of insurance contract claim).

AU IP/Gender: Panel IV: Gendered Understandings of the Role and Scope of IP

Moderator – Irene Calboli, Marquette Law School and National University of Singapore

 

Carys Craig, Osgoode Hall Law School, York University - Deconstructing Copyright’s Choreographer: the Power of Performance (and the Performance of Power)

 

Feminist approach to conceptualizing artistic creativity can shed light on choreography as engaged and embodied practice and demonstrate weaknesses of dominant conception of creativity (myth of romantic author). Relational approach to ©, reimagining creative practice/authorship.

 

Deconstructing copyright’s choreographer: the myth of independent creation; false binaries of mind/body, author/performer; reuse and transformation of choreographic works as cultural conversation. Unsettling core constructs of independent authorship, ownership/exclusion.

 

©’s liberal individualism versus choreography.  Copyright’s author is liberalism’s human subject, depending on Enlightenment ideals of individuation, detachment, and unity. Establishes moral hierarchy: author as creative genius and everybody else, the mere copyist. Diminishes value of creative reuse.  Gender of genius: conceptions of genius over time have changed to be whatever attributes are attributed to men: sometimes passion, sometimes rationality. Feminist theories of selfhood, agency, and creativity offer a way to reconstruct ©’s author and capture the situated nature of authorship and the dialogic nature of creativity.

 

Choreography exemplifies the mismatch between concepts and practices. Divergence between ideal of authorship and art of choreography is especially pronounced. In part b/c of fundamental culture of sharing entrenched in dance historically and today. Body is the instrument in dance—makes dance something experienced with and through others; necessarily social and communicative.  Dynamically interactive. 

 

The choreographer as creator: who qualifies as the author?  Formerly choreography was treated as mere stepchild of drama.  Dance seen as mere spectacle in 19^th century—to call it dramatic composition “is an insult to the genius of the English drama.” Contributed nothing to art (exhibition of underdressed or undressed women). Loie Fuller’s Serpentine Dance was refused © on grounds it wasn’t a work but an idea that a “comely woman is illustrating the poetry of motion.” Poetry is expression when written, but not when moved.  Finally, Balanchine: “ballet is woman”—“a garden of beautiful flowers, and man is the gardener.” Women as bearers of meaning under the male gaze; role of maker of meaning is reserved to man.  Copyright’s ideal type: white male vision of choreographic production, with gendered and raced performative duties, enshrined as standard for copyrightability: Caroline Picard.  Woman gives aesthetic pleasure but does not create it.

Choreographer as independent creator: as the limits of authorship are drawn, separating physicality from authorship. Values implicit in this artificial division are gendered.  Balanchine says choreographer is sculptor—choreography is a solo endeavor; dancers are the putty/clay and his job is to get them to make real his desired vision.  Compare Beiswanger, who says that the relation between choreographer and dancer is dynamically interacting; the molding of vision is mutually creative process.  Dancer is filled w/human creative capacity, shared tradition. Only dynamics of power and privilege allow us to recast choreographer as sole author and dancer as raw material.  Mirroring the mind/body duality.  Textual is privileged over performed.  Masculine over feminine.

 

Improvised dance: Moment of pure expressivity where mind and body merge: © struggles and recedes from view in the face of that ephemerality. Doctrinally difficult and practically irrelevant because process is key when it comes to improvised dance, and © prefers the product.

 

Dialogic nature of choreographic expression: Traditional ballet has heterosexual dynamic: masculine power, feminine weightlessness; strict division of duties in traditional ballet. Virginal/manipulative ballerinas and supportive/manipulative males. Jones and Zane quoted Balanchine but changed the gender of who was supported and who supported—angered lots of people.  Choreographer reckons with who can give weight and who bears it, who initiates movement and who follows, who is passive and active, who is looked at and who looking.

 

Dance can challenge power—street culture (initially male-centered); rap videos—TLC gestures at sexuality but rebuffs male gaze (RT: see also Anaconda!).  Madonna’s appropriation of voguing from LGBT community. J-Setting comes from historically black colleges with a marching band and auxilliary section in the front with the moves: gay men reproducing feminine movements: Prancing J-Settes.

 

Gender as performance, Judith Butler: think of choreography as gender performance and vice versa. Powerful strategy for transforming codes and conventions in dance: continue to exercise discursive agency through re-presentation and reimagining of established contexts.

 

Charles Colman, New York University School of Law – Patents and Perverts

 

Project started with investigation into fashion ©.  Lots of issues around adornment/gender.  Fashion has meant women since about the turn of the 19^th century in Anglo-American culture.  Effeminacy more broadly as a concern: often serves as a way to police patriarchy.  Self-imposed restrictions.   (RT: I think of Mary Anne Franks: How to Feel Like a Woman, or Why Punishment Is a Drag: “Law and society typically regard prison feminization as a problem of gender transposition: that is, as a problem of men being treated like women. In contrast, this Article argues that feminization is punitive for both men and women…. One could take the claim, as it were, on its face: It is terrible to be treated like a woman. Alternatively, one could read a presumption into the claim: It is terrible for a man to be treated like a woman. … Unfortunately, the second reading—what I call the gender transposition reading—is the more common and dominant one.”)

 

Oscar Wilde: not known as a “homosexual” since that concept wasn’t yet invented—a sodomite. His diseased behavior was retroactively mapped onto the decorative objects/aesthetics people in the movement he was involved in had championed. Henceforth it was dangerous for men to display an affinity for unnecessary ornament.  [Relation to imperialism/racism: men of other races/cultures often condemned for their own forms of ornament?]

 

Piece argues that this discomfort with design mapped onto the design patent cases.  Decorative is opposed to dishonest.  Useful/useless. Design patent rhetoric, though starting off neutral (passed 1842), eventually takes on this connotative cluster of value hierarchies.  Judges make clear that they don’t like design and can’t tell things apart.  Designs aren’t valuable.  Defer to experts when the designs are “feminine” but analyze in great detail when the subject is a saddle.  The central theme, which begins to determine more and more cases, is that objects associated with women = deference to experts or dismissed in value entirely.  Cigar case = nuanced sua sponte analysis; not other things.  Second Circuit was the court of last resort in most cases because SCt stopped granting design patent cases after Oscar Wilde. Second Circuit gets increasingly outlandish in characterization of designs before it.  Case where 2d Circuit says that ties are bought not just b/c of their utility to the wearer (CC: query what that might be!) but b/c of their appeal to “others”—says that the purchaser is often a wife or sweetheart.

 

Homophobia/fear of perceived effeminacy related to analysis of design patents.  Distorted the jurisprudence that basically erased design patents from IP landscape, dispersing claims that would otherwise be made to © and TM.  Judges were performing gender norms for their audience, which had an impact on the law.  Demonstrating masculinity by not engaging substantively with subject matter.

 

Calboli: This is a very specific US/Canada approach.  In Italy and similar jurisdictions, ornamental design has been strongly protected even before registered designs. Value of protecting beauty, design, good food: quality of life issues. 

 

Colman: often interest in French things or Asian things was read as effeminate—suspect or ugly.

 

Craig: In Canada, we draw on English background but are next door to the US; but also we have Quebec and civil law influence.  Canada protects performers’ rights, including moral rights for choreographers and performers.  But there’s still a clear delineation between the copyright and the neighboring right.  Parsing the contributions to figure out what the performer’s right is and what the choreographer’s right is.

 

Rosenblatt: you both talked about “negative spaces”—dance and fashion have functionally opted out of the IP system. Cause, effect, something else?

 

Craig: not clear if we’re not using it because it doesn’t fit or whether it doesn’t fit because we haven’t been using the right © concepts. Doesn’t need to be answered: there’s a clear mismatch which makes legal structures difficult/awkward, which then creates space for dynamic evolution in the art form, thriving in the absence of protection.  Canada: design does extend to fashion, but it’s unused. There’s just no point pursuing registration and litigation because things happen so fast.  Where you have a gap between a way the creative community perceives its activities and what matters, and the way the law works, the law is just irrelevant. And irrelevance allows vibrant evolution.

 

Colman: Design patents were created mostly for stove designs in the US. Even then, though, they said the arguments applied w/equal force to creators of garments.  Rhetoric changes over time from “designs and inventions” to “designs” and “inventions”; clear migration over time to designers trying to use misappropriation or copyright.  Cheney Bros.—maybe the subject matter didn’t seem important compared to news. After Cheney Bros., though, you saw more trade dress claims—so doctrine & legislative inaction pushed the fashion industry in particular directions.

 

Peter Jaszi: Not sure choreography opted out entirely—selective. Some owners of choreographic rights enforce them very vigorously and are widely feared. The most is the Balanchine estate.  Does the work give you any insight into current US controversy over copyrightability of social dance?

 

Craig: true, not entirely opted out.  Only in the dead white man’s estate have we been able to fit the © romantic author concept—it’s not an accident that Balanchine is treated as the lone genius. Contracts also presuppose copyright ownership, which tends to be how choreographic works are licensed. There’s not much litigation, but the contracts are much more inclined to require attribution and some degree of creative control. A moral rights understanding rather than proprietary/exclusionary one.  Social dance: it’s not clear what an anti-social dance is—is it social because it’s traditional/historical, or social by its nature?  Original arrangement of steps—boundary setting is very difficult b/c we have a hard time explaining what makes dance, dance other than that it is useless.

 

Colman: Sarah Burstein says that it took a while for Americans to figure out what design was; turned out to be stuff that wasn’t a sculpture, wasn’t X, wasn’t Y—the salon des refusés. His work suggests an additional explanation. Clothing is also embodied, with symbolic or spiritual power; people react to dress as to almost nothing else b/c it’s immediate visual representation of identity before you say a word.

 

[for Craig: Performance and the idea of the supplement in theater—one performance in a chain of performances—that’s the one piece I’d love to see added to the choreography paper. Cf. Francesca Coppa, Writing Bodies in Space.]

[1. Compare what happened during the same period in TM, growing protection for trade dress though also skepticism about value of TM: more acceptable because language of psychology and commerce, specifically because of the idea of the advertiser controlling the consumer rather than the consumer choosing fripperies?

2. So does the turn to design patent represent another step in the feminization of America?  Or does a billion dollar verdict automatically convert the topic to one of masculine interest, the same way computer programming switched in value when men started to do it?

3. Comparative analysis: design patents in other countries? Does that track with masculinity and its performance in other countries?]

 

Colman: notable lack of commentary on the fact that design patents vanished. Janis & DuMont are the exception and he wants to offer an alternate account.  DuMont identifies nuances he identifies as “mishaps” but these terms like originality etc. are susceptible to so many interpretations that he finds it difficult to believe that they aren’t a deep level implementation of norms. 

 

Design patents began being used more when 2d Circuit began upholding them (late 50s/early 60s) and when Fed Circuit was created—so it precedes the billion dollar verdict.

AU IP/Gender Panel III: US Federal Courts

Panel III: Gender and Intellectual Property in the U.S. Federal Courts

Moderator – Christine Farley, American University Washington College of Law

 

Jessica Silbey, Suffolk University Law School – Intellectual Property Reform Through the Lens of Constitutional Equality

 

Qualitative work: The meaning of progress to artists, given the constitutional demand.  A complementary part of the project is case-driven. Not going to talk about one set of cases: total market failure/hold-outs.  Will talk about SCt cases; reading them through the lens of “progress” she sees something new and strange.  More than progress, she sees an emphasis on equality and distributive justice. Not sure whether she cares whether it was conscious or not, but is sure it exists.

 

Eldred: Incentive story doesn’t make sense to IP lawyers for retroactive term extension. Plus the marginal increase in reward in present dollar value is meaningless. Court had nothing to say to those arguments.  Ginsburg could’ve just applied rational basis review—but she didn’t really do that either. The justification wasn’t incentives; it was equality—treating likes alike. Aristotelian norms of formal equality. She saw no reasonable basis to treat current authors differently from future authors.  Words like “parity,” “alignment,” “alike, “evenhandledly,” “same,” “equity,” etc. dozens of times. Opinion spends a lot of time talking about authors and how it was reasonable for authors to expect they’d be treated like new authors should new benefits arise. This isn’t about incentives to create or disseminate, but dignity of equal treatment absent a good reason to deviate. Flawed on its own equality terms: fundamentally ignores that the history of democratic lawmaking was not representative. And assumes that the class of authors is similarly situated: people who receive royalties from traditional publishers.  But it’s not.  Failed to consider other © stakeholders and left them out entirely despite its formal inclusivity. Classic problem of formal neutrality: mechanically reciting like/unlike without comparing the history/hierarchy of classes. And Justice Ginsburg knows that.

 

That’s what Golan v. Holder is about: antisubordination.  Foreign authors were treated unfairly in this view. Reparations: this is an affirmative action case. Special benefits to people who were injured/harmed as a group in previous regimes.  Aims to eradicate imbalance of not having had © in the first place as a result of power imbalances.  If we don’t understand that’s what’s going on, we will make the wrong arguments.  But 104A causes real harm to people who are now forced to pay when they haven’t before, unlike discriminators who suffer no harm we are willing to recognize when they are forced to stop discriminating—Ginsburg thinks they deserve to have paid and were just free riders.  Ignores harm to majority/stakeholders: rights exist only for © owners/romantic authors.

 

Can do this analysis with a lot of different SCt cases—it’s a key piece of the IP cases.

 

Sandra Park, ACLU Women’s Rights Project – A Feminist Challenge to Gene Patents: Association for Molecular Pathology v. Myriad Genetics

 

Deliberately feminist approach (project founded by Justice Ginsburg). Gene patents first granted in early 1980s.  Ultimately granted patents on isolated DNA: gene excised from naturally occurring chromosome, regardless of individual from whom it was taken.  Isolated DNA coding for BRCA1; and for any and all methods of comparing or analyzing sequences whether or not Myriad had developed the method.  Locked up examination of that version of the genome because you need to isolate the genome to do any analysis, and method claims reached the methods you’d want to use.

 

Challenge over long time: result was unanimous ruling that isolated DNA is a product of nature, though cDNA is not. Lots of discussion about what Myriad means for §101, but she is interested in meaning for feminist advocacy. How to center women as stakeholders/agents for change?  Most patent litigation involves suing competitors/alleged infringers. They tend not to have an interest in challenging a whole category of patents; may have similar patents of their own.  So we thought about our larger goal of ending PTO grants of these types of patents—joint project w/ ACLU Speech, Privacy and Tech Project—spent a lot of time thinking about impacts on women.  Harms to women seeking cheaper tests or tests their insurance would pay for.  After Myriad got the patent, sent C&Ds to labs offering testing with different methods than Myriad, often cheaper; forced them to shut down.

 

There were a lot of silos: hadn’t had many conversations about the overall impacts. So we assembled plaintiffs with personal impacts—patients who had issues with costs of diagnostic testing; testing quality/Myriad didn’t search for mutations well-known to be connected to higher risk so that a negative result wasn’t as useful as it could be; ability to access confirmatory testing/second opinion.  Other concerns about data sharing and research—Myriad amassed a huge amount of data and decided not to share it, with big impact on patients who received a result that they had a variant of uncertain significance.  Interference with new technologies/downstream innovation.

 

Standing: the Federal Circuit found that only one plaintiff had standing, a geneticist who’d received a threat from Myriad.  Important takeaway: having patients as part of plaintiff group still ensured there was still a spotlight on the nature of DNA as part of the human body. Not just a chemical, but info crucial to their families and themselves for decisionmaking.

 

The DNA was framed as if it were in isolation.  We challenged that framing directly.  Isolation was a problem: allowed permissively granting patents on natural products; distanced patented DNA from people’s bodies; used perspective of chemistry to mask patenting of biological information; obscured others’ contriubtions to discovery and the need for subsequent work.

 

Revitalized an area of law long dormant.  Example of how to bring feminist practice into IP: divide between the patent bar and women’s rights lawyers. 

 

Farley: Usefulness of constitutional frames in advocacy for better IP.  Park tells a positive story about that.  Does that contrast with Silbey’s story?  Also wondering about how this kind of advocacy looks in TM law—maybe a TM disparagement case. How does the frame of equality help, if it could?  [I’d think corporation/defamation analogy would be a useful frame.]

 

Why pick this case?  Explanation sounded like “we wanted to have a constitutional challenge to patent law”—but why women?

 

Silbey: decision and oral argument in Myriad did not have the story being told by this narrative.

 

Park: Informed the case, public education around these issues, the SG’s brief/amicus interest. There was a legal resistance to the constitutional arguments; it was vital in the district court and helped us justify talking about women’s experiences, which we argued were relevant to what progress means in this context. That said, there was very little to look at for patent law/constitutional arguments. For the Federal Circuit, they weren’t interested in that aspect. Discussion moved away from more gendered understandings, but the stories/experiences were animating the reasoning. Our sense of our own bodies was really being debated at oral argument when Justices grappled with analogies about the technology.

 

Silbey: struggling with whether this is just a way of thinking that’s in the air, or something the Justices do think about in the background without having them formally introduced into the argument so it’s just coming in as a justificatory mode. Petrella, Justice Ginsburg mentions Lily Ledbetter case, where it’s different in that you didn’t know about the discrimination—she’s pro-author and wants the author to have the choice of when to sue.  Kirtsaeng: a low-protectionist win, and the value of price discrimination is at issue; one of the things that helped was that, though we were thinking about market effects of price discrimination, there was a lot of stuff in the briefs about how a contrary result would decrease access. People do care about these doctrines—having the facts present, even if not mentioned in the case (Kirtsaeng had a lot of footnotes about this).  Different organizations that testify, bring those facts about access and status/hierarchy, can change how we advocate.

Rosenblatt: Progress may be a malleable word with facial neutrality that ends up being exclusionary. Park says progress is more than isolation. Silbey says it’s been taken to mean “more,” but it’s really meant “more of some things and not others”—more commercialization, not more research/expressive work generally.  Using progress in an exclusionary way comes out of both of your papers.

 

Silbey: Has thought of progress as a blank check to Congress, which gets filled in to replicate the status quo.

 

Chon: colorblindness always has a privileged position. Formal legal equality—author-privilege Ginsburg embraces in © she rejects in race. Whiteness as property, Cheryl Harris, is also relevant. Aligns w/what you’re trying to say: the liberty interest represented by property is dominant, which forces the equality interest to mutate.

 

Silbey: Scalia in Aereo is all about treating likes alike; Ginsburg is making deliberate choices.

 

[Amy Adler has great articles about the unspeakable feminine body in Supreme Court jurisprudence. You could get a great contrast between those cases and Campbell, actually.]

 

[Because Silbey was talking about her interviewees, now I want to write a piece on the wise author who asks “What are the IP laws?”; the wicked author who asks “What do these IP laws mean to you?”; the simple author who asks “what is this?”; and the author who does not know how to ask.]

AU IP/Gender: Lunch Keynote by Kara Swanson

Kara Swanson, Northeastern University School of Law – IP and Gender: Reflections on Methodology and Accomplishments

 

Literature review: from the footnotes to the text.  Personal experience writing and publishing in gender & IP—future orientation of how we can make progress.  (1) Translating insights of feminist/queer theory into IP and info law; (2) transcend boundaries to create new insights; (3) transfer these to scholars who don’t write or think about gender, to legislatures, to classrooms, to the PTO.

 

Accomplishments: Naming and claiming the past to celebrate, use, and value it.  Gently urge that we harness the power of the citation to cite each other.  These symposia have been a rousing success. Stuff, community, and personhood, as Rosenblatt says.  Results in 3 distinct areas.  Bibliography of IP and gender scholarship; this is absolutely endless especially with int’l and interdisciplinary approach fostered by this group.  33 North American law reviews – ½ of law review scholarship on IP & Gender was published in AU’s journal, and others got their origins here.  Other scholars first published here have gone on to write more in the area. Starting to pop up in general and tech law reviews; Irene Calboli’s new book on diversity in IP.  Lively area of research, building on each other.

 

Content: where to go next?  3 categories of work now: (1) Analyzing gender disparity in IP systems; this is old news to us but not to others.  Women receive fewer than 10% of US issued patents. What about rates of © registration and TM registration by women-owned businesses? (2) Analyzing IP claims that involve gender and sexuality.  (3) Analyzing the gendered nature of IP doctrines themselves.  Most important: critical lens to IP as a legal system—mapping the connections, and how IP perpetuates gender/heteronormativity. Those dynamics are so unknown to the mainstream in IP that even raising the issues can generate huge anger and controversy.  Women’s creativity: supposedly broad definitions of creativity become narrow!  IP law is no different than any other area of law in being affected.

 

The personal is political: experience writing/speaking over 10 years.  There is resistance to the idea of connections between IP and gender. To get to our goal, developing IP that promotes social justice, we need to persuade, break down resistance, and shift conversations.  How have we not yet succeeded?  Translation, transcendence, and transmittal.  Translation: taking knowledge from one discipline and bringing it to another; bringing feminist legal theory to a room of IP scholars.  This is preaching to the choir here, but we can practice translation by taking our scholarship to fora outside our comfort zones, whether that’s to law & econ-dominated conferences, or feminist conferences, or even conferences w/few or no lawyers. We can increase visibility.

 

Transcendence: Now that we know how to map the connections, we need to recraft IP rather than simply describing connections.

 

Transmittal: How do we persuade?  Not just translation but transmittal—broadcasting to audiences divided by methodological and epistemological commitments.  Scholars who don’t work in gender, students, and legislatures.  We need to think more about this.

 

Example: her historical example of a classic patent case w/a female plaintiff, Egbert, about the corset. Teaching the case provoked giggles from students, because the corset seemed erotic and trivial.  Casebook had vaguely salacious statement about her relationship with the inventor.  Placed the article in a feminist journal—but need to communicate w/patent law community. Perceived as being w/o broader implications other than background color; law and economics influenced patent scholars just rejected historical methodology.  Project’s origins in the classroom: the disturbing way it’s portrayed in casebook and in classroom.  Need to reposition case—emphasizing sex/gender in this case seems to further trivialize and diminish Egbert.  Now, can teach against the casebook.  Also, scholarly publication may also require tweeting, congressional testimony, other written fora to practice transmittal.  How can we reach the audiences inherently most resistant to our conclusions? Feminists must marry theory to practice, an orientation familiar to lawyers.

 

Silbey: Hierarchy of methodology within the study of IP is an issue.

 

Swanson: Yes. Goal: convince empirical legal studies folks that historical work is empirical. More than counting things.

 

Chon: How to make this more inclusive?  Transmittal is also about creating a larger community to hear the conversation.

 

Swanson: Mosaic conference at Marquette: Practitioners included.