fake sponsored reviews are false even if review content is opinion

Federal Trade Comm’n v. Roomster Corp., --- F.Supp.3d ----, 2023 WL 1438718, No. 22 Civ. 7389 (CM) (S.D.N.Y. Feb. 1, 2023)

The FTC, joined by California, Colorado, Florida, Illinois, Massachusetts, and New York, sued Roomster, an internet-based room and roommate finder platform, and related individuals.  Defendants allegedly falsely represented that properties listed on the Roomster platform are real, available, and verified, and that they created or purchased thousands of fake positive reviews to support these representations and placed fake rental listings on the Internet to drive traffic to their platform. Here, the court refused to dismiss the complaint or to grant a protective order.

Roomster … purports to be an intermediary between individuals who are seeking rentals, sublets, and roommates. Defendants advertise that their platform, available through their website and corresponding mobile applications, allows users to post and search listings for living arrangements, including rental properties, room rentals, sublets, and roommate requests. 

However, Plaintiffs claim that users are more likely to get scammed on Defendants’ platform than to get an apartment. They explain that many of the listings on the Defendants’ platform are fake, and the platform is rife with fraudsters who have taken hundreds and thousands of dollars from its often-low-income users. In spite of this widespread fraud, they aver that Defendants did not and do not effectively verify listings or ensure that their listings are real or authentic. Instead, the Defendants post listings on their Roomster platform immediately upon request, as long as the street address associated with the listing is recognized by the platform. For example, during an undercover investigation, Defendants immediately accepted and published a fake listing where the address was a U.S. Postal Office commercial facility, not an apartment. That listing has remained active for several months.

Nonetheless, defendants claim that Roomster has “authentic” listings and that the Roomster Defendants “mak[e] sure the Roomster profiles and the listings on the site are complete, accurate, updated and yes...authentic.” Until they received notice of this investigation, defendants claimed to have “millions of verified listings” in a “safe community with real members worldwide.”

In addition, they allegedly paid and continue to pay for thousands of fake reviews of the Roomster platform to entice individuals to use the platform and sign up for paid membership. Defendants allegedly purchased over 20,000 reviews from one defendant who settled out, encouraging him to submit fake reviews to app stores in ways calculated to evade the stores’ processes for detecting fake or fraudulent reviews. This allegedly deceives potential users about the significant proportion of fake listings, and obscures real, negative reviews about the widespread fraudulent listings on the platform.

Defendants also, either directly or through their affiliates, allegedly placed ads for fake listings on various websites, including on Craigslist. These listings direct consumers to the app, and and encourage them to sign up and pay a fee to obtain information necessary to secure the rental—only to discover that the listing does not exist.

The FTC alleged Section 5 violations through (1) representing that certain reviews of the Roomster platform were truthful reviews by actual users and (2) representing that the listings are verified, authentic, or available. The states alleged violations of their respective UDAP laws.

First, the FTC acknowledged that it couldn’t get monetary relief after AMG. Any money would go to the states only.

Second, the court rejected defendants’ argument that their allegedly improper conduct ceased in 2018, giving the FTC no standing in court. Section 13(b) of the FTCA allows the FTC to file suit when it “has reason to believe” a defendant “is violating, or is about to violate, any provision of law enforced by the [FTC].” The complaint plausibly alleged ongoing violations. The remaining defendants argued that they had no knowledge that the settling defendant’s reviews might be inauthentic; that wasn’t an issue on which the court could take judicial notice, but it could take judicial notice of the fact that he admitted to his participation in the scheme alleged by the FTC and has been enjoined from engaging in this type of behavior.

Defendants’ conduct strongly suggests they were well aware that the reviews might not generated by genuine users of the platform. Martinez was able to produce thousands of 5-star reviews for Defendants. At one point, Defendants asked Martinez to post 800 reviews of their platform to the app stores, specifying he should only post 15 or 20 in a day. That Martinez had the ability to summon hundreds of five-star reviews of their platform at a moment’s notice, and with total control over when and how many would be posted at any one time, strongly suggests to a reasonable reader that the reviews were not being created by genuine, individual users of the platform.

But had defendants ceased their conduct? They argued that prior statements that the platform verifies or authenticates users had been removed, and the generation of fake reviews ended because of the injunction against their former collaborator. No way. While the Shire case said that the FTC couldn’t sue under §13 five years after Shire ceased the alleged conduct, and when it no longer owned the drug that its challenged conduct related to, Roomster’s platform continues to operate, and plaintifs plausibly alleged that statements about authentication, fake app store reviews, and fake listings on websites like Craigslist were necessary to defendants’ business. “Where the conduct in Shire had ceased five years prior to the FTC seeking the injunctive relief, here Defendants claim only that their improper verification claims were removed in early 2020—after they received notice of the ongoing FTC investigation.” But plaintiffs alleged that “in numerous instances and on various locations on their website,” defendants continue to represent that the listings are authentic. This couldn’t be resolved on a motion to dismiss, where the FTC has not conceded that violations were not ongoing, as it did in Shire. And the FTC didn’t allege only that Roomster only purchased reviews from that one defendant, only that they “often” did so. Other associates remained so that channel of misconduct was not “defunct or reformed.”

Separately, the FTC plausibly alleged that it had “reason to believe” that defendants were about to commit another violation. The question is whether there is a “realistic likelihood of recurrence,” which can consider “factors such as the degree of scienter involved; the isolated or persistent nature of past fraudulent acts; the defendants’ appreciation of wrongdoing; and the defendants’ opportunities to commit future violations.” Here, there was a realistic likelihood of recurrence alleged given defendants’ “pattern of willful and deliberate behavior over the course of several years, as well as the continued ownership and control of Roomster by the two named individual Defendants who run the company,” despite their knowledge of the investigation. For example, one named defendant personally “instructed [ ] Martinez to produce ‘lots of 5 star IOS app reviews’ ” and directed Martinez “to spread out the reviews to be ‘constant and random.’ ” The complaint also quoted emails in which defendants specified when and where precise numbers of allegedly fake reviews should be posted. Their continued ordering of reviews from Martinez even after notice of the investigation indicated that they didn’t appreciate the seriousness of the allegations against them. “And Defendants demonstrated a lack of candor with FTC investigators, claiming that they do not pay for reviews of the Roomster platform while they purchased 20,000 from Martinez alone.”

“Defendants clearly have opportunities to restart whatever conduct they may have stopped; they simply need to update their website to assert new false authentication claims.” And there’d be no bar to getting fake reviews from someone other than Martinez. “Recurring violations are hardly implausible where, as here, defendants retain control of the company and the capabilities allegedly used to violate the FTC Act.” The court noted defendants’ “strong pecuniary interest in restarting the alleged misconduct, as their business has generated tens of millions of dollars from users signing up for their paid subscription, allegedly enticed by the deceptive or misleading conduct described. … [W]ithout the renewed promises of authentication, positive reviews, and Craigslist referrals consumers are less likely to pay for subscriptions to the platform.”

And finally, “Defendants cannot moot the case or destroy the FTC’s standing by offering a stipulation to a permanent injunction if any illegal conduct is ongoing. The FTC is not obliged to accept their offer and it does not lose standing merely because it chooses to decline Defendants’ offer, genuine or not.” Defendants didn’t like that the FTC responded to AMG by partnering with the states to seek relief. That wasn’t improper.

Defendants next argued that Section 13(b) of the FTC Act is unconstitutional as an improper delegation of executive power to an independent agency whose commissioners cannot be removed at will by the president. It wasn’t. “[E]ven where Congress has legislated unconstitutional removal protections, an agency can still wield enforcement authority that was lawfully delegated.”

For now, the court also exercised supplemental jurisdiction over the state claims. The allegedly fraudulent reviews qualified as deceptive acts under the relevant UDAP laws, as did falsely advertising rental listings as “verified,” “authentic,” and “available.” The defendants didn’t argue about the latter, so the court only addressed fake reviews.

Defendants argued that plaintiffs didn’t allege injury, because §230 protected them against claims about scam losses. But, “while free users may see possible listings, users must sign up for a paid subscription in order to actually contact the listing creator about the rental. Plaintiffs plausibly allege consumers suffered financial harm when they paid for access to the Roomster platform based on the misleading or deceptive reviews.”

Defendants also argued that it would be unreasonable for consumers to rely on subjective user-supplied reviews when deciding whether they should purchase a paid Roomster account, so there were no UDAP violations. But the complaint alleged that reasonable consumers would be deceived “because the reviews appear to be, but are not, truthful representations made by actual users of the Roomster platform, and because they obscure authentic negative reviews.” Even if individual user review content comprised subjective opinions that can’t be actionable misrepresentations, that was irrelevant:

Here, the allegation is that the reviews are fraudulent because they are not opinions at all—they are fake, written by someone who was not a real customer and so who was in no position to offer an opinion. Misrepresentations that are false because they are not real—they were made up and paid for—can never by definition be “puffery.”

These reviews were allegedly not just actual reviews with undisclosed compensation for them, but “allegedly manufactured wholesale” (also not disclosed). Alleged large-scale manipulation of reviews that created a false and misleading impression of the number of positive reviews could be false advertising. “Even if Defendants had just paid real consumers to use and review the platform, as they claim, such conduct would still plausibly qualify as misleading or deceptive acts” because of the failure to disclose a financial relationship (citing a number of Lanham Act cases).

At a bare minimum, it would have been reasonable for consumers to assume that the existence of thousands of reviews of the Roomster platform meant that there are or had been thousands of actual users. And the presence of thousands of users on the platform would reasonably make a consumer more inclined to think she could find a rental on the platform and sign up for Roomster’s paid services (of course, if she knew that these reviews had been generated by the owners of the platform, she might be less inclined to sign up for these services).

In particular, New York sufficiently pled violations of its consumer protection laws. NY’s laws are territorial, prohibiting deceptive acts or false advertising conduct “in this state.” A deceptive transaction in New York will fall within the territorial reach of the law as long as “some part of the underlying transaction ... occurs in New York State.” Here, Roomster allegedly transacts business and has its principal place of business in New York. Roomster’s owners and co-founders, who also serve as Roomster’s CEO and CTO, reside in the district and transact business here. Plaintiffs plausibly alleged that “at least some part of the development, approval, implementation, and financing of the alleged misconduct happened, and is happening, in New York.”

Defendants argued that NY remedies for nationwide consumers would violate the Dormant Commerce Clause; this challenge was premature.

CDA § 230 didn’t immunize defendants from liability for their own misconduct, though the court acknowledged that they couldn’t be held liable for allegedly fake listings on their platform, nor the content of the reviews provided by their users. Defendants could be held liable for their own allegedly false claims that listings are “verified and authentic,” and they also allegedly arranged for third parties to create and post fake reviews about their website. “Defendants are alleged to have been involved in hiring the creators of the reviews, paying them to create the reviews …, and specifically instructing how and when the reviews should be posted. Similarly, insofar as Plaintiffs’ deception claims capture fake listings on other websites that direct consumers to the Roomster platform, such as Craigslist, Defendants are responsible as the creators [of] that unlawful content.” [There’s a covert agency argument buried in there, which I think is correct.]

The parties were unable to agree on the terms of a protective order for designating material as confidential.  Of note:

That certainly does not bother me. This court does not believe in protective orders, since parties abuse them by designating material that is manifestly not “trade secret” as “confidential” – which generally prevents the public from seeing things that will never be kept confidential on a summary judgment motion or at trial, but that are simply embarrassing or worse. …

So if the parties are unable to agree on the terms of a protective order, none will be issued, because this court will not impose one unilaterally. And if parties refuse to turn over documents unless on the ground that they are confidential but not subject to a protective order, the court will entertain a motion by the party requesting the documents for an order precluding the uncooperative party from making arguments that might be supported by the withheld documents, or an order deeming certain facts to be admitted by the non-producing party.

WIPIP: In Memoriam and Fair Use

A Few Words for a Lost Friend: Tribute to Dmitry Karshtedt (Bob Brauneis, Mark Lemley, Jake Sherkow)

Closing Plenary Session: Fair use

Robert Brauneis, Copyright Transactions in the Shadow of Fair Use

Suppose a work does not infringe another work because and only because it’s been ruled a fair use. Does the status of that work or copy limited subsequent uses of it or transactions about it? Yes, in some circumstances, and looking at that tells us some things about them.

Fair uses tend to divide into buckets: justified by new work; justified by project. Cites me and others on what I call content transformativeness and purpose transformativeness.

New work: Derivative work or embedding work: Cambpell v. Acuff Rose, or quotation of Patton’s Principles in Patton on Leadership. Use is justified by context of being placed in new work. Corrolary: fair use can be determined when new work is fixed in final form; determination won’t change after that; work can be performed or reporduced as a whole in any quantity, but reproduction or performance of part might remove the justifying context and be unfair: example—just the riff of 2 Live Crew’s Pretty Woman. The parodic context has to remain for the work to remain a fair use. Could not use excerpt of hook from 2 Live Crew for ad w/o permission of Acuff-Rose. Example 2: Axelrod book on General Patton quotes Williamson on Patton: fair use b/c it uses in the same way as any scholar does—but selling items just printed with that quote wouldn’t be fair.

Fair use justified by project: multiple copies for classroom use, time shifting vidos, visual search thumbnails, full text search engine, intermediate copying for reverse engineering.

Final determination of fair use is not possible when a copy is made. If the project is fine, it’s fine to repeat the project with additional works.  

Fair use and first sale: in tension? If you see fair use as a statutory license to use the old work under conditions that justify the use, then some of those conditions are about use of copy.  Does that mean that a videotape made for private timeshifting purposes can’t be sold or given to someone else, despite §109 first sale? Or does it mean that a videotape for time-shifting was lawfully made under this title?

Current thinking: neither. Adding a transaction changes the project so we have to assess whether this new project is fair use. If I videotape a show, watch it, then sell on eBay, hard to see how that project as a whole is fair use, particularly w/erasable, usable materials.

Google Books: Never displays full text in search results—fair use. HathiTrust uses those copies to provide print-disabled patrons w/accessible copies—requires different analysis, but also a fair use.

Not suggesting that “work” and “project” are exhaustive categories. Cariou v. Prince is work plus embodiment. Prince’s large, one of a kind originals didn’t usurp Cariou’s market. That should constrain use and licensing of the works if market separation into strata by value matters. Cariou is now selling prints from Yes Rasta for $1100 and Prince is selling exhibition posters for under $700—thinks it’s much less likely to be fair use.

Jeanne Fromer: Related question: when can you take a fair use decision and extrapolate from it.

A: comes up in Grokster concurrences w/battling characterizations of Sony 30 years later.

Q: Is Prince selling a work or a brand? That might make a difference to whether they compete.

Ochoa: Warhol may upset your argument, since there were suggestions that this was a content/work-based case, some uses might be fair and others might not be. Relatively separate in case law until now.

A: Cariou already does that and provides background for Warhol. Dct considered it an all new work. Licensed for use in magazines and don’t care; still fair use. Cariou is the case that might justify hybridizing.

Q: Third hypo: the videotape was made for time shifting years ago and is now a historical artifact. Is that still part of the original project?

Jim Gibson: consider 103 interactions too. Does 2 Live Crew have some © interest in the riff even if the rest that made it fair use/©able has disappeared?

Lunney: points out that Campbell was just a remand.

Wendy Gordon: Compare to negotiated direct license to do a cover (thus no requirement of consent to create a separate protectable derivative work)—does licensee of the cover version need permission of both?

Rosenblatt: how we think about that might be different in music sampling than other derivative works. But how does this map on interim copying? If it’s only inside the computer, and you’re making a fair use, then the interim copying is fair use. Or: the interim copy is something no one ever sees, so it’s fair no matter what; it’s the later thing that’s an infringement or not. Does your approach give us information about that?

A: if you make the interim copy for a particular purpose, but do something after that, think about the project as a whole. [This will also have statute of limitations implications.]

Buccafusco: why not answer it as a matter of copying in fact? I didn’t copy the P’s work, I copied my own. If © attaches to works, why wouldn’t that be true?

A: copying a derivative work is also copying the underlying work in most of © law [except damages].

Silbey: statute refers to fair use of a work; perhaps every use has to be on its own terms.

A: but if creating Pretty Woman is a fair use, it should be done on a work level (at least for uses as a whole) w/o having to think about use on a more granular level; otherwise we get silliness like trying to decide whether you can distribute the recording in Florida versus New York versus California.

Mehtab Khan, Recalibrating Fair Use

How to think about mass copying to create image and text datasets (facial recognition, art generators, ChatGPT), including beyond content generation.

How do we address the data collection stages of dataset development, and how should we assess the public interest?

Stages of dataset development: problem formulation (is this an image recognition dataset?); data collection (does this involve any injury? It’s where the copying takes place); data annotation (subjective decisions: creating meanings attached to data); model implementation.

Data annotation might be where transformative purpose is assessed.

Trends: wide allowance for fair use. But fair use could be a corrective measure where the datasets are used to create harmful tech or exacerbate bias. Need a framework that takes process of creation into account in the first place before assessing purpose. Consider whether the tool is purely private or available to public for end user good purposes. Intermediaries determine nature of use and amount used, and (?) effect on the market. How should we consider users’ commercial benefit (using art on sweatshirts) versus intermediaries’?

Glynn Lunney, Transforming Fair Use

Why don’t courts see that everything is fair use?

Goldsmith’s argument—even if creating them was fair use, licensing them for magazines wasn’t fair use. But 2 Live Crew sold CDs as did Orbison. 2d Circuit didn’t pay much attention to this, relying on the idea that if this is fair use, movies made from novels would be fair and overbroad fair use guts the derivative work right. That also seems a red herring to him. We need to figure out what limits, if any, exist on the derivative work right just as much as we need to figure out what limits, if any, exist on fair use. Nothing in © Act says what the relative size of those two slices must be, and 106 says subject to 107-etc. while 107 says “notwithstanding.” That suggests a relative hierarchy: fair use is the one that comes out ahead.

Why is novel-to-film the touchstone? Why provide that right? Political economy, historical path dependence—movie industry was new and easy to oppress. But here are rationales: (1) there will be only one film b/c there’s a natural monopoly/high fixed costs; (2) to ensure the book gets written; (3) to increase the book/movie producer surplus combined (closest to truth).

Is there only going to be one move? Abie’s Irish Rose/The Cohens and the Kellys. There was an authorized film version of both! In digital era, we can get multiple high quality versions of a character all the time; Elementary, BBC Sherlock Holmes, Robert Downey Jr. Sherlock Holmes. It’s not Highlander!

Is it a necessary incentive for novelists?  Empirically, no reason to think so. In music industry, collapse of revenue stream didn’t stop music creation and skewed demand for popular works also leads to backwards-bending labor supply curve: low revenue leads to more music. GRRM hasn’t released The Winds of Winter—is the delay b/c we didn’t give him enough $, or b/c we gave him too much? Robert Jordan’s Eye of World—kept extending the series until he died. George Lucas earned so much from merchandise—is that why we had to wait for 16 years after Return of the Jedi?

There is more profit when you have more exclusivity, so filmmakers probably prefer the broad derivative work right, but does it serve the progress of science in any useful way?

Even if you think novel-to-film is the right model, should we extend it to other situations? Even here, the analogy fails as to Goldsmith. Licensing in Goldsmith would be incentive-redistributing: taking $ from one author and give it to another. Not obvious why © would prefer one over the other; 2d Cir. characterizes her work as the primary work and his as secondary: why use these hierarchical terms? © has no policy preference between earlier and later works. GvO rejected the film analogy: O wasn’t going to expand from desktop to mobile; they’re different, noncompeting markets; G’s system is a complement and not a substitute. That’s of course equally true for books & movies: being an author doesn’t give you the ability to make a film.

Breaking the cycle: start to talk about how losing revenue will harm follow-on creator. The way to break the circularity is to look at empirics. We’ve gotten a little better at that over time—rapid rises/falls in revenue and their effects on creativity—they don’t seem to have any.

Rosen: Moral rights? [he doesn’t believe in them]

Khan: Berne requires them; the US says it complies with them largely through the economic rights.

A: [he doesn’t care] The derivative work right is limited by fair use in US law, and is incorporated into both of those treaties as far as the US is concerned—but we still need to know if it’s the right thing to do. Not convinced it’s the best thing to do for society to give her more money from Warhol.

Khan: we’d be saying she should have more control, not necessarily more money. [But control is now done with; we’re really talking about money, as is Goldsmith.]

Sheff: progressive taxation would deal with the backwards-bending supply curve. You could also fight the market structure that captures so much of the value before it ever reaches artists, which can also account from distorted incentives. Do we need fair use to do this, or can other reforms make the problem go away?

A: will take his chances persuading 5 Justices v trying to get progressive taxation passed; only handles part of the misfit b/t copyright and purpose.

Q: is it enough if my airbrushed photos have a different meaning/message to me than the untouched ones?

A: Advocating for Campbell’s standard, reasonably be perceived.

Betsy Rosenblatt, Putting the Fairness in Copyright Fair Use

Is fair use a social justice tool? When she says it is, gets response: often a tool for exploitation. Both of us are right, but how do we make my position more right? How do we shape fair use so that it is more favorable to social justice? criticism, commentary, talking back to dominant culture benefit from fair use; access to knowledge benefits social justice; but appropriation by dominant groups with impunity does not. We do intuit that the teen writing fan fiction is in a different place than Marvel; think about inherent, sometimes hidden hierarchies—appropriating medieval France is not the same thing as appropriating oppressed cultures.

Fair use sometimes favors underdogs, which gives hope for it as social justice tool. What would it take to help underdogs more?

Why do overdogs win? Courts are more likely to respond well to the transformativeness/recognize the transformative merits of work by famous people/people who are admired. Also, unlitigated cases and risk/uncertainty aversion: fair use is both predictable and uncertain, leading people w/more resources to be more bold about fair use, while others will be afraid of having to face litigation. And of course repeat players usually win. Fair use doctrine could better promote progress if it took party resources and cultural market share into account. Add relative power or resources to the list. We already treat hobbyists and students better than market participants; this would be consistent with market failure theories of fair use. Consistent w/theory behind reparations, as KJ Greene has suggested.

Covert socioeconomic engineering in © has been going on for generations, so why not make it overt?

Should the less privileged always win? No, but a little player’s use of a big player’s work is less likely to usurp the big player’s market than the reverse. And this won’t always be relevant—big fights big all the time, and little little.

Her test wouldn’t help Warhols and Richard Princes of world but would put them in context, and help artists who are just starting out; people who are learning to make derivative works and struggling to professionalize.

The haves may have invested time, money, and personality making something that the have-not just uses. We’d care if we thought this would deter haves from making stuff, but the marginal incentives for the already prosperous are limited. The marginal value of fair use to the have not is greater than the marginal value of not fair use is to the have. Jay-Z should have more rights to what he did earlier than what he did later.

Andrew Gilden: hierarchies should be connected to the purpose of fair use. A member of a marginalized group may not have a creative motivation for the use—difference b/t sampling b/c lack of resources to make own sounds and going to the Gagosian and making copies b/c I can.

Fromer: would this disrupt the predictability of looking at patterns in fair use cases? If you don’t know how power imbalances play into thinking, harder to predict, which is worse for people who can’t throw money at the problem.

A: we can’t use the Warhol story as precedent for the flipped version of the Warhol story, and wouldn’t be able to in her story.

Q: road to justice is unlikely to be paved with more landlords, so wouldn’t look to ©.

A: I want redistribution too, but I’m at a © conference.

Q: timing—fixed at creation of first work—Jay Z has more copyright interests now in his early stuff than his late stuff? Why isn’t it assessed at the time of the accused use? This goes to predictability too.

Alex Roberts: a lot of these conversations could be about TM too, as well as ROP. OMG Girlz v. OMG Dolls in which the court’s order says “you can’t talk about cultural appropriation in my courtroom,” and granted a mistrial when some deposition testimony got in calling it racial appropriation. Is that relevant to your story?

A: not to adding another factor, but in the larger sense we should care who the parties are and not declaring mistrials if cultural appropriation is mentioned.

Said: nobody wants to talk about race in these cases—worry about backlash/appellate resistance. If the parties are going to prove up disadvantage, doesn’t that depend on who has the better lawyering? The Pepe the Frog guy didn’t mean to make a hate symbol. One story is fans simply engaging with the meme; the other story is misappropriation.

Consider fee-shifting and compare to civil rights statutes—one of the reasons fair use cases are the way they are is that Google has money to burn on fighting until they win. One-off defendants often can’t, and neither can one-off plaintiffs.

Charles Duan: GvO’s fourth factor language about public benefit/downstream benefits might help you. Consider also what’s done extrajudicially through Google, Amazon. We don’t have the opportunity to litigate the sort of rule you want. So how to get those systems in the direction you suggest?

WIPIP Concurrent Session #6 Copyright Theory

Justin Koo, Exporting Fair Use to Developing Copyright Systems

Difficult to grow when the law doesn’t have flexibility—across the Commonwealth Carribean. Either involuntarily imposed on us or adopted from UK w/o adaptation to local needs/lack of resources in former colonies. A relatively new willingness to litigate, but lack of awareness/understanding of copyright law in Carribean is a barrier. Discussion about moving from fair dealing to fair use hasn’t focused on developing countries/© systems in particular. Developing a jurisprudence: you need to implement an overall copyright policy—what is the purpose of ©? There needs to be a catalog of foundational case law identified—can’t just say “fair use”—even in the US, elements developed in the common law. This also involves using © rights in appropriate ways. Is a jury required to make the system work? [No!] Will importing fair use solve any problems? Worth elaborating.

Brauneis: The US took 100 years post-colony status to stop citing primarily British cases; the transition can take a while.

RT: Don’t need a jury (though there may be subtle effects on how judges behave because of the jury background); Google v. Oracle suggested fair use mostly wasn’t a jury question. Israel might also have some foundational cases to look for.

Naama Daniel, Lost in Transit – How Enforcement of Foreign Copyright Judgments Undermines the Right to Research

Copyright is territorial, but the internet is not; different scopes of protection.

Copyright owner has initiative, choice of forum, enforcement; researcher can at best get a no-infringement ruling. Enhanced by Equustek v. Google’s global injunction against Google requiring delisting a site worldwide. Courts have started to issue global injunctions, making the problem even more severe. Risk of strategic litigation; most restrictive jurisdiction prevails, leading to race to the bottom. Heated debate on countries about enforceability of IP judgments; kept out of int’l convention.

Is the right to research getting an unwanted transplant? Compare to foreign defamation and privacy judgments. Easier to get consensus on excluding those as representing national balancing; she thinks that the same should be true for IP.

Fromer: go bigger in protecting countries’ exceptions generally.

Silbey: surface the debate over what © is for: that privacy and defamation got excluded while IP was still being debated suggests a lack of consensus about what IP is for. Is © a personal dignity right or a property right? One suggests more about local values, perhaps, than the other.

Brauneis: Should repugnant to public policy be built into any result?

A: it already is, but has some problems detailed in the paper.

Lisa Macklem, We Love What You’re Doing… Now Stop or We’ll Sue

Examples: Axanar; unofficial Bridgerton musical; Fleetwood Mac retweeted a video of a man using his skateboard to ride down highway drinking cranberry juice and playing “Dreams”; users managed backlash against Dungeons and Dragons planned rule changes requiring payment for things like podcasts.  When does fan creation cross a legal line, and when is that line a monetary one?

Early stage creators are often willing to collaborate/lack resources. Do fans have greater power as content owners vie for their attention and dollars? DnD fans spoke with $ by cancelling their subscriptions. Motivation for © owners to change how they view ownership? Is there real substitutability in home-grown stuff compared to professional content with special effects? Is fair use/fair dealing the answer? In Canada, the UGC exception is limited to things that don’t substitute. Paramount’s fan film guidelines for noncommerciality make it hard to fundraise to create good stuff.

Contract instead of ©? Micropayments? There’s something going on but looking for thoughts about legal responses.

Rosenblatt: consider implied license and laches. Most insidious about behavior you describe is precarity of fan endeavors after they’ve been downright encouraged to do these things by bringing them in, exploiting fan labor, then going after them when they’re successful.

Feist: won’t find much in free to play, which is really about antipiracy/controlling entry. But larger companies have guidelines for fans, mostly about commerciality/no spoilers.

Sarah Louise Bishop, Scenes a Faire, Novelty, and Genre

Before 2013, no court of appeals affirmed use of scene a faire on motion to dismiss, and since then it’s happened a fair amount: 45% in last 5 years. Should that be possible? Need to define what’s common or standard within the genre, but these dismissals are happening before discovery; 9^th Circuit used to say you couldn’t even do it on summary judgment unless it was uncontested. Why?

Internet = loss of access as a filter to get rid of marginal cases, so need other parts of the toolbox?

Twiqbal: judicial experience and common sense.

How do they do it? (1) vibes, aka judicial experience and common sense; (2) factual precedent; (3) judicial notice.

(1)  Is by far the most common. Either there are no citations or support at all or examples from own experience or that of clerk’s: Luke Skywalker, the Hobbits, and Buffy the Vampire Slayer as examples of reluctant heroes. They aren’t saying, as Gracen does, that your copyright is in the small variation you did from the trope and D didn’t copy that, just speaking broadly.

Maybe we should mind, because the result is that creators working in unfamiliar topics and genres are being held to a different standard. Can’t get them dismissed early. Courts did MTD in following genres: sci fi, horror, romance, spy films, vigilante theme, stories about Americans living in Paris, buddy cops.

Courts declined: colonial architexture, makeup art, waiver and release forms, telenovelas.

Third bucket: Ds who don’t even bother to try knowing judge won’t know enough to decide.

Potentially pernicious effects of cultural competency/homogeneity.

(2)  Citing factual precedents, which isn’t how this is supposed to work. Precedent is for rules, not facts. But courts treat scenes a faire as a legislative fact—a fact about the broader world that doesn’t change case to case. Don’t we want this? Uniformity, predictability, efficiency. But civil procedure scholars are very skeptical of this notion because of the risks of herding, lack of factual support for previous finding, ossification (facts about artistic genre change). 1950s books with both having a plot about a woman elected VP who becomes president when the male president dies. Court says that was a scene a faire given the premise of a woman president, given that no woman would ever be elected. And at MTD, risk of influence by biased submissions of more resourced repeat players who define the genre they’re in for their own benefit.

(3)  Judicial notice—rare; maybe inappropriate under FRE 201 which requires adjudicative facts “generally known” or “not subject to reasonable dispute.” Not for legislative facts.

These cases look like a novelty requirement: not new. As access declined, David Nimmer predicted, courts might turn access against Ps and say they need to prove up originality, turning it into covert novelty requirement.

Importance of genre: courts often quote “standard in the treatment of a given topic.” 7^th Cir. has its own formula: scenes a faire don’t serve to distinguish one work in a class from another.

But you need to define genre or you just have a novelty requirement based on vibes. Ok with this? 10^th Cir said there was no requirement of actually having a genre for the doctrine to apply.

Fromer: scenes a faire roughly breaks into (1) depicting things about the world, like a frat party, (2) tropes internal to fictional worlds that people do—superhero depictions are standard; there is an in between where there’s a stereotypical depiction of college frats in movies. Different categories might make judicial notice easier. Also, note dynamic nature of category—experience of going to law school now is different than it was in Paper Chase.

Said: working on a taxonomy. Posner must be wrong about distinguishing a work because he’s combining it with substantial similarity. [but isn’t it a way of assessing substantial similarity? If the only similarities are at the level of trope, it’s not substantially similar in protected expression].

RT: My priors: Substantial similarity is junk and these techniques develop to clean up some of its junkiness instead of using derivative works properly. So, b/c a programmer can’t get this, a sci fi film has to go to discovery when you couldn’t imagine facts that would change your finding? Seems to benefit no one. Why not targeted discovery/expert instead? And a woman president is still a scene a faire—what’s wrong with a one way ratchet? Idea/expression; I agree with 10^th Circuit that an idea can generate its own scenes a faire: once you think about recreating dinosaurs from fossilized DNA, it is obvious that no story about that ends with the dinosaurs not escaping and everything being fine]

WIPIP Concurrent Session #5 Copyright & Culture

Akshat Agrawal, Copyright's distortive effects

Copyright directs investment to excludable assets. But socially valuable innovations can be difficult to marketize/commodify. Music sampling: the tapestry/raw materials of early hip-hop practice make those kinds of works works assets that can’t attract investment. Reproduction right expanded to cover fragments. In response, courts have identified more unprotectable things—arpeggios, etc. are scenes a faire. But that disadvantages certain genres. Indian classical music: Raga system is the basic framework for composition and improvisation. Various possibilities exist but with inherent elemental similarity; overall aesthetic experience is different yet similar to others. Characteristic phrases have to be present in all compositions in a given Raga; desirably perceivable similarity b/c that’s how the vocalist and audience gets a grip on what they’re hearing. But then that inherent elemental similarity can’t be appropriated—less excludable, less attractive to investors. This then affects popular tastes and shapes cultural identities.

Response: structurally scale down rights; while reducing the value an owner can extract out of a single excludable work, it expands the kinds of expressions that can be invested in—breadth increases, which decreases cultural bias. Restrict derivative right to adaptations/forms of representations that change medium, not works in same primary market.

Lunney: you pitch it as about lack of appropriability but then it’s about cutting back on rights: reform the intro?

Hughes: if publisher can’t get sequel rights, then it will insist on getting the film rights and impoverish authors.

Brauneis: the initial author would still have an advantage in writing the sequel—this is an empirical question.

Q: why should we care who the landlord is?

Carys Craig, Copyright & Gender: Philosophy, Proof & Praxis

Book chapter: research agenda for feminist copyright. Romantic authorship: feminist scholars critically assess role of originality in © and image of authorship as a solitary, isolated male genius detached from his community and the background of the art in which he works (Shelley Wright). Gendering of genius. Inequality is a cause and consequence of exclusion of women.

If copyright reflects a fundamentally masculinist philosophy of selfhood, one might hypothesize that copyright’s effects are also gendered, and systematically disadvantage women.

The limited research we have supports this conclusion. Evidence shows greater tendency to infringe among men; women are less likely to “break rules.” Why? Are there gender differences in how people understand the morality? Women may feel it’s more legitimate to share with friends than with strangers online. Gender & © in the Filk Community: women were more concerned with unattributed uses, and thought © was really about attribution; less concerned if attribution was given. Pro female writers earn significantly less than male counterparts, so © incentives are less. Gender gap also apparent in the © register.

So: women’s activities more likely to be chilled by real or perceived © restrictoins, and less likely to enjoy © benefits as authors and owners, and earn less when they own ©. And women are less likely to question ©’s legitimacy.

WIPO thinks women just need to be better educated and equipped to exploit their rights—that’s a misdiagnosis of the problem, which is not with women and their copyright knowledge but with the copyright system. Success of solutions depends on rethinking foundations.

One part of project: whether evidence gathering is even sound methodology for critical feminists when we respond to calls to prove the obvious; proving negatives, measuring what hasn’t been said and what might be said in a different world as an inherently critical project.

Said: Framing it as “the woman question” is rhetorically tricky and still positions women as the problem—why not “the copyright question: woman edition”?

A: That’s where © is: it says the system is neutral and you just need to get over it. It’s a place to start, but we of course need to recognize why we don’t want to ask the woman question at the end. There are so many axes and hierarchies that there’s no way to ask one question about a marginalized category and come up with a consistent answer.

Hughes: increasing registrations for women at the © office compared to other metrics where women are disadvantaged—ownership of stock, real property, presence on corporate boards, patent ownership which then translates to being in a startup. I could think that copyright is relatively neutral in an incredibly sexist society.

Q: can there be a feminist landlordism?

A: more concerned with participation, accessibility, circulation, but the © system is part of that; not interested in getting more women to register ©.

Lunney: benefits of © system may also include consumption of © works: attending theater, buying albums, books. Agrees that data can only show what is, not what could have been or what should be.

Mailyn Fidler, Cross-Racial Copyright Litigation in Music: Only a Paper Moon?

Have Black musicians been able to use copyright litigation to push back against cross-racial appropriation (Three Boys), is it equal (Campbell v. Acuff-Rose), or is it worse? Who sues who? Who wins? Looking at post-1978, 9^th, 2d, and 6^th Cir (Motown) and SCt; copying and use without license. First part of the project is from the 80s. A lot of cases were ASCAP/royalty cases against discos/jukeboxes, which was not super relevant.

Identifying race of plaintiffs: didn’t prove that difficult; most figures are public. Small numbers; Black plaintiffs are largely elite musicians. P wins overall 71% of the time and Black Ps won 100%; they might be bringing rock solid cases and it’s not favoritism but careful selection of cases. May also resolve through settlement.

Qs: should she start earlier? How should she count duplicates/follow-on litigation, e.g. additional Chiffons cases brought in aftermath of Chiffons case.

Many cases were brought by record labels suing on behalf of Black musicians. [what does that mean?]

Next steps: do these trends hold up? What does the 6^th Circuit look like? What goes on in settlement?

Gena Feist: you might look at whether they were added to the master ownership/composition ownership as a way of detecting settlement. [other suggestions: news reports, Billboard]

Q: just because the music was by a Black musician doesn’t mean that it’s a Black musician who gets paid when a case about that music is resolved in the P’s favor. [this was my question above]

Hughes: should code compositions and sound recordings separately. Can contact living people—lawyers on settlements may be still alive.

A: but the difficulty is knowing what disputes were resolved by settlement w/o a public record.

Buccafusco: Qualitative research, like Silbey does, could be helpful here b/c we don’t have access to base rate info; there’s a nice sample here though that you could go deep into.

Said: ownership records; interview a few repeat players.

Leah Chan Grinvald: history of exploitative transfers also factors in here.

Cathay Y. N. Smith, Cancelling Dr Seuss

Estate stopped publishing six books because they perpetuated harmful racial stereotypes of POC. Public reaction was swift and divided. Over the years, authors and publishers have different responses to problematic material in children’s books—pulled books, altered language, even rewritten plots or dance sequences. Wants to document and explain some of the changes publishers have made, in books, films, and dramatic works. Not focusing on creators. Explore the moral and legal implications, as well as policy considerations.

In all of Seuss’s children’s books, 2% featured POC, all men, no speaking roles. Stereotypical depictions and descriptions, e.g. “all wear their eyes at a slant,” “A Chinaman who eats with sticks.” Black characters are shirtless, wearing hairstyles that match the animals they’re with.

Charlie & the Chocolate Factory: Originally described Oompa-Loompas as African pygmies; eventually changed to white and then orange.

Richard Scarry has changed over time too. Some changes are made by heirs—Dr. Doolittle changed storyline involving “Prince Bumpo” asking to lighten his skin. Nancy Drew—plotlines where POC are very stereotypical or Nancy relies on stereotypes to solve cases.

Films are also pulled/changed: Disney’s Song of the South. Pippi Longstocking removed certain words and scene where she pulls at her eyes while singing a mock “Chinese” song. Sometimes add content warnings instead of edits.

Ballet/musical theater: The Nutcracker dances have been changed—rechoreographed Chinese Tea Dance to remove yellowface/stereotyped movement and be more authentic. Peter Pan: removing Tiger Song (?).

Complications: what is being cancelled/updated: “classic” works for children; copyrighted v. public domain. Why? Who is doing it? Follow-on creator, author, heirs? Forcing a © owner to publish something they no longer agree with could be a problem, but so could exposing children to content they’re not capable of fully understanding. Racial stereotypes in children’s works can reinforce internalized racism, sexism, and white supremacy. But should we airbrush/whitewash history?

Is publicly cancelling a work abandonment? Would it allow fair use? Denying injunctive relief may support the public interest, TD Bank v. Hill, 3d Cir.

In many cases, works edited rather than withdrawn. Should © owner be able to prevent access to older versions? Can third parties edit for offensiveness? Editing works as creating copyrightable derivatives, from just removing a word (the word) in Huckleberry Finn to recreating illustrations.

Q: compare to moves to remove books that feature transgender people.

Lunney: consider first sale/exhaustion: more control over songs/movies that are streamed.

Alex Roberts: Trans artist removing every mention of JKR from HP books and then rebinding them—interesting version.

Laura Heymann: Cancel is a fraught term for this—suggest something else. Consider fair use distinction between someone criticizing Cat in the Hat by showing pictures/quotes versus editing it to change the tropes: the former seems easier than the latter.

Said: descriptively, encourage you to think about absence versus presence, but stereotyped. What are the politics of publication? Why are authors of color not getting to be “classics”? Do we really make the Tea Dance more “authentic” by having a Chinese choreographer? The ballet is capturing a moment of Orientalism—what is it we’re trying to do and why would that be better than Tchaikovsky’s version—how do we know that one choreographer can stand in for all things China and that we aren’t just tokenizing?

Aman Gebru, Communal Authorship

© does well with solo and team authored works, but not communally authorized works, which creates confusion and gets in the way of expression; some actors benefit unfairly, capturing value that isn’t theirs. Team-authored works: dramatic, musical, audiovisual. Joint authorship elements of intent to merge and collaboration apply easily; governed by contracts, industry custom, and institutions.

Hackathons/communal authorship: large scale, informal creative collaborations involving numerosity (usually larger than team-authored works), informality (decentralized) and temporality (contributions at different times). Examples: hackathons, memes, and traditional cultural expressions. Most hackathon agreeements don’t address IP rights that could arise in the event. The solution they’re working on is not shared in most cases, so it would be hard to find intent to merge.

The meme: distinct social object from the underlying picture or any instantiation of it. No formal relationship between various “authors.” Derivative work? Fair use?

TCEs: The Lion Sleeps Tonight/story about Disney settling with Solomon Linda’s family/actual origins of melody seem to be further back in time.
Curtin: hackathons are very different in temporality and formality from your other examples. Would free software communities be a better model?

Ochoa: why not consider wikis?

Buccafusco: why need clarity?

A: Meme litigation goes on now. But maybe the anarchist “no one owns anything” is the best outcome.

WIPIP Concurrent Session #4: Digital Copyright

 [I missed a super interesting AI talk then went to meet a student]

Sean Pager & Eric Priest, The Cost of Music: Has Digitization Made Copyright Obsolete?

Do DIY productions chart? Very few. It is a fallacy to equate tools with capabilities—interviews w/professional producers, engineers, and label executives. Tools don’t make high quality recordings, any more than great equipment can create a great tennis player or carpenter. Average DIY musicians can’t do this without years of practice; learning mixing techniques might not be the best use of their time. Interviewees said there was some democratization from cheap, accessible digital recording tech. Home recording production quality is usually poor; usually you can only rescue them to make them listenable. Artistic/tech skill remains critical to production/recording/mixing, largely unaffected by technological advances, and tech hasn’t markedly reduced the time/cost associated with many recording tasks.

RT: I hear Jessica Silbey’s work with photographers—10 years ago. What we do has value. Sure, says the market, but I’ll take a little less quality for a lot less $. Maybe the consumer base will stave this off for music since the market is different/less focused on advertisers.

Silbey: Yes, photographers say it takes just as much time, and sifting through the images takes time. © wasn’t necessarily an investment recoupment mechanism for them—so consider what folks are saying about the role of © in their lives. Photographers=demonstrated that they are artists, not the way they made their $, which was through contracts.

A: rejects the premise—people in the industry may not be aware of how © functions to structure the industry. Asking people about how © works for them doesn’t get at the fundamentals of what © is doing. But there are significant differences b/t music and photos [said every industry ever right before it was rolled over]—people want adulation and admiration of listeners, and so they want a slight edge, which makes a huge difference. Even “middle class” performers benefit from professional assistance.

Lemley: is this the wrong question? Airgigs: I can hire someone to do complete editing/mixing/mastering for $300—$500-700 for the best engineers in Nashville. Haven’t we moved from the world where you had to buy a limo and hire a chauffeur to the world of Uber—where the pros are gig-based and cheap?

A: Sure, you don’t need a label and can do a la carte. Maybe it’s good enough in many cases. But that’s not much different from what the costs used to be, and the time adds up. You want a producer, a mixer, probably an engineer. Other setup costs. Bottom line: paying for these services makes a difference.

A: depends very much on genre: much cheaper to do hip-hop now. And they may even want a lo-fi sound. But live musicians will cost $30-40 thousand, and that’s if you’re not using a star producer but an indie.

James Stramm, Complementary Scarcity and the Other Post-Piracy Path

Video games, larger than movie industry and North American sports industry combined. Revenue isn’t driven by surveillance but by microtransactions/free to play games. Widespread piracy corroded the traditional model—pirated PC games were 4x authentic copies in UK in 2010. They tried doubling down, including legislation, litigation, and DRM; that iddn’t work. Legacy media adopted surveillance capitalims—Spotify, Netflix, compete with piracy by pricing closer to marginal cost/all you can eat. Data becomes a competitive necessity.

Microsoft and Sony have done subscription models, but mostly video games did other things. Streaming 100 gig game on early 2010s internet wasn’t workable for many, particularly when milliseconds of lag can affect enjoyment.

Partly DRM: gamers wary of DRM for many failed implementations.

Free to play; pay to win—popular in mobile, but also used in console games. Generally disliked by gamers; cosmetic microtransactions like skins. Certain elements questioned as predatory/dark patterns; loot boxes.

Offering complements is a way to find things that are easier to make artificially scarce, and consumers buy them and subsidize the primary good.

Compared to the deadweight loss in conventional IP, access is enhanced, but the extent depends on the type of microtransactions: pay to win are only marginally access enhancing—sell the blade, not the razor. But cosmetic microtransactions are access-enhancing.

Market distortion: does complementary scarcity only work for multiplayer games? To what extent are network effects/market concentration necessary for this to work? Does it trade off with innovation?

This isn’t really negative space—it’s just reacting to piracy. Low enforcement environments can still lead to welfare-enhancing outcomes. Subscription models may appeal for single-player games, but you need market power/large catalog; fragmentation makes the appeal to users go down.

Gena Feist: Sometimes these market configurations are just different worlds, not necessarily better or worse.

WIPIP Concurrent Session #3: Copyright Doctrine

Christopher Buccafusco (& Rebecca Tushnet), Base Rate Neglect in Copying-in-Fact

Comes out of an excellent Buccafusco paper about the failures of copying in fact, which led me to think about base rate neglect in cases where plaintiff’s expert claims that it’s not possible that these similarities arose in the absence of copying. Mostly music infringement.

To prove copying in fact, you show access and similarities probative of copying. Much of the litigation thus turns on what it means for a similarity to be probative of copying.

One must wonder how the plaintiff composed the song if it wouldn’t be possible to create that sequence without copying, but the real question is what we’d need to know to say that it’s unlikely that these similarities would arise without copying.

Given degree of similarity X, how often will a song have degree of similarity X to other songs in the corpus? How often will that similarity come because of copying, rather than independent creation or joint copying from a common source? At best, these experts glance at question 2 and not at question 1.

This is a problem of base rate neglect. Imagine a warehouse w/barrels of flour that may break loose and injure people. If negligent, barrels break loose 90% of time; if properly handled, 1% of time. If they properly handle barrels 99.9% of the time, then, given a loose barrel, what is the chance that it was because of negligence? Humans, including federal judges, get this wrong all the time, but the chance that a loose barrel is due to negligence is about 8.3%.

What if they handle barrels properly 99% of the time? Small change in underlying probability makes it over 47% likely that it is because of negligence.

So what we need to know but don’t: how often will a song have X similarity with other songs? And how often is that b/c of copying?

What should we do? For now, nothing: until experts can estimate either of these values, courts shouldn’t accept their testimony. Or Ds could introduce their own experts.

Is there anything we could start to do to get closer? Calculate total number of six note sequences in music? Some will occur more often than others due to how music works? We could then try to estimate how common it is for a 6-note sequence to show up in multiple songs. We might not be far from being able to do that.

But the best we’ve done is estimated the first question. We still need to know how likely it is that a 6 note sequence will show up in 2 songs due to copying v. not copying/independent creation. Questions: what are the other options?

Zahr Said: thinking about use of barrel, you’ve incorporated the normative “proper handling” conclusion—it produces a conclusion b/c you can rule out things like other causes. It allows us to eliminate plaintiff’s contribution to the harm. But it’s only applicable if we think it’s under the exclusive control of the D or can attribute to D.

A: OK, so do “HIV test everyone in the country.”

Said: In cases of copying, you might not find something like an HIV test—those other steps are present in other copying cases—it’s hard to rule out other inferences.

Wu: Expert says I’ve never seen this pattern before—doesn’t that say something about the base rate?

A: This is base rate misestimation, then. They’re not doing step 2 in any event. [Step 2 requires generalization—it’s not that I’ve never seen this person test positive for HIV, it’s about what the positive test/similarity means, and so the entire problem of base rase neglect

Vishnubhakat: is a jury any better at Bayes’ theorem than a judge?

A: no, but an expert would have to explain what you’d have to know to answer the question. Not worse to draw attention to the problem.

Neel Sukhatme: It’s not even a fixed target—the rate of copying is dependent on what the law is [e.g., who gets interpolation credits]—will change similarity going forward. And it will vary across fields. A bunch of people will announce their appropriation art; others won’t. But look how quickly the answer changes w/ very small changes in underlying math.

Rosenblatt: options: a) Daubert, b) counterexperts, c) impossible math. But what about presumptions and burdens of proof? We can’t presume from a combination of access and similarity that copying in fact took place. One possibility: Therefore, in the absence of identical copying or admission of copying, there should be a presumption against it.

Gena Feist: is infringement/copying binary in the same way? [I think this is in the P’s hands—if the expert says this is the copying, then that’s what we should be testing.]

Zvi S. Rosen, Fog and Fiction and Copyright Term Extension aka Who Framed Mickey Mouse?

In 1963, Disney expressed skepticism about monopoly aspects of extended term and “expressed doubt that Congress would approve a longer ownership period.” Authors’ groups were proponents. Big proponent: Gershwin family, unabashed about lobbying, saying it was less about money than about control, though of course it was also about money.

1993 hearing, transcript not public before. MPAA is there; “Coalition of Creators and Copyright Owners,” represented by songwriter (ASCAP, music, dramatists, BMI, SESAC, VLA, Writers Guild); National Music Publishers. Largely royalty-dependent groups.

In subsequent hearings, Quincy Jones, Henry Mancini’s widow, Bob Dylan, Don Henley, Alan Mencken, Stephen Sondheim—individual creators, especially composers. Disney didn’t send anyone individually, though MPAA does show up. Individual composers were the ones losing European revenues because of the rule of the shorter term.

But there was some attention to Disney’s interests as well in 1998—Disney did endorse term extension. Wondering if DMCA was also on their minds. It wasn’t that they opposed extension, but Bob Dylan was important too, and the DMCA was also tied to term extension.

Does it matter whether this was the Mickey Mouse Term Extension act? How do we tell stories about the law? Laws can be more complicated than popular narrative; legal narrative v. legal history.

Q: why not assume that Disney, like the music publishers, would send individual creators to front for them?

Bruce Boyden: can you interview people on the Hill at the time to see what they were talking about.

Hughes: it was the Fairness in Music Licensing Act, not the DMCA, which was intertwined. That was a great trade for restaurants.

A: Bono’s widow said he would have hated the final bill because of FMLA.

RT: (1) Important to have film in play b/c in Eldred incentivizing preservation rationale was all about film. (2) A name can be given you by your enemies: rhetorically important to opposition: “death tax”/this was a Frank Luntz move, which isn’t surprising. (3) “So what?” Opening up possibilities for change: new scholarship on FTC and kidvid serves to restore confidence in FTC’s ability to act. May suggest possibilities now.

Xiying Tang: European context—music ends up w/ a very different term than European term.

Lemley: opposition at time viewed it as Disney-driven, even if we weren’t right. Disney’s lobbying expenses for that year are relatively low and don’t spike up in that year. They definitely donated to many committee members but not unusually so.

Tyler Ochoa: 1993 is before European extension—does this happen w/o European extension?

A: hard to figure that out, including hard to figure out who pushed it in Europe.

Zahr Said, Shotgun Damages in Copyright

Multipliers used to ratchet up damages. Before 2016, appeared to be that these multipliers were impermissible punitive damages. Since 2016, shift either in practice or characterizations—quite a few different kinds of multipliers for exclusivity/scarcity/quality being applied to actual damages before final judgment separate from statutory damages. But their increased uptake hasn’t been noted in treatises/scholarship. Part of larger pattern of “shotgun damages,” working definition: damages characterized by inflationary demands for multiplied awards; coercion; scattershot approach. Why are they being awarded?

Older cases reject expert guesses about multipliers that weren’t willing buyer/willing seller rates. E.g., these images were good, so you should apply a quality multiplier; scarce, so you should apply a scarcity multiplier to the standard quoted rate; also P didn’t want to license them so should get an exclusivity multiplier. In 2016, Leonard v. Stemtech, 3d Cir, affirms that award! Cited over 130 times since then—cottage industry using scarcity, exclusivity, and quality multipliers; tons of default judgments. But the exclusivity multiplier is based on P’s own quoted rates; P may testify that it would have asked for more because it didn’t like cut of licensee’s jib.

Problematic that so many of these are done on default; actual damages that get ratcheted up then get funneled into statutory damages; a low showing of willfulness can yield a very high award.

Lemley: Patent law uses the actual license amount; there’s no reason to use a multiplier when we actually know. Policy question: do you want to make it punitive to punish not transacting? But that’s supposedly not the law we have, and also brings in punitive damages constitutional jurisprudence.

Jessica Silbey, An Empirical Study of the Copyright De Minimus Defense

How has it evolved? What works are most affected? Was Ringgold a turning point? Is de minimus about taking a little bit or using a whole work in an insubstantial way? Ringgold=aesthetic analysis of function of use in background; that’s interesting.

Only fragments and parts pre-1978; after, whole works sometimes; only direct competitors pre-1978, but more potential licensees after. Standard evluation confirms Oren Bracha’s critique: not de minimis = subtantially similar and vice versa, with caveats. More qualitative assessments than anticipated, especially since 1998. Works almost like a fair use defense. 30% in dataset prevail on independent de minimis defense, which is not just substantial similarity and not just fair use, contrary to Nimmer and previous study.

Hived off of fair use and became its own defense in early 20^th century, then became swallowed by substantial similarity, which is a huge problem b/c it was about market substitution and it means the derivative work rights ballooned.

Where is de minimis used elsewhere? Not in constitutional violations, crime, or trespass.

Brauneis: maybe changes with rise of concept of fragmented literal similarity, invented by Nimmer in 60s: maybe shows up with “literal” takings more?

A: yes, essentially all except for a couple of takings.

Q: some cases are now recorded that wouldn’t have been before WL. Hard to deal with that but must take that into account.

Guy Rub, Revisiting the Copyright-Contract Conflict

Most courts said that contracts were never equivalent to © rights. Second Circuit changed course in ways that weren’t clear. Universal, 2019: Software company A sells to B with a contract that maybe prohibits modification.  Genius, 2022: website sues Google for breaching TOU prohibiting commercial scraping (copying)—preempted.

The main issues: under this analysis, more restrictions on use are less likely to be preempted.

Conflict premption! 301(a) asks the wrong question. In re Jackson (2d Cir 2020): what values does state law, as applied to the case, protect? What and how meaningful is the harm to federal copyright policy? Could attend to contracts of adhesion in that way. Genius briefing doesn’t address the core question: are they undermining (c) policy and the scheme that Congress is trying to promote? Reverse engineering cases would come out differently if you used this framework as well.

WIPIP: Innovation Theory & TM

Andrew Gilden & Sarah R. Wasserman Rajec, Innovations in Pleasure

Conscious effort to tout devices/drugs as medical, downplaying their recreational and pleasurable features. Patents for cannabis related products, including lubricant, explained as medical and instrumental—to avoid divorce, mix cannabis with Viagra. Consequences of excluding pleasure from patent discourse: effects on what is considered patentable?

Queer theory: pleasure as a way of knowing things. Like debates about traditional knowledge. Patents talk about boundary-lowering potentials of MDMA (ecstasy), which has been known for decades among queer communities.

Abortion and contraception are also implicated by this. Folkloric and medical treatments have existed at least from Hippocratic times. Moving from the folk to the patent/regulated system also strips out the pleasure and the purpose—to fix sick people instead of allowing women freedom to make private choices; becomes public and subject to legislation.

Q: drugs v. devices used by a physician: does that form a pattern or change over time and who is the user—the patient or the doctor?

Rosenblatt: is this good (sharing knowledge with wider community), bad (commercializing and privatizing what had been used for human flourishing), or a sociological account?

Jeremy Sheff, Distributive Norms around Knowledge as a Resource

Should we focus on excludability or rivalrousness in determining how to manage resources? We can make things excludable through tech and law, making things that previously looked like public goods providable by private markets. But should you do that? Depriving people of benefits that don’t cost anything to provide. Jefferson’s maxim about lighting one’s taper from another’s was cribbed from Cicero, who suggested that there was a moral obligation to share nonrivalrous goods.  Book project: how do we reconcile that with our intuitions about markets and distributive justice?

Norms of distributive justice: Political equality: all else equal, all human beings have an equal claim/obligation to benefits and burdens of social life.  Responsibility: unequal benefits/burdens shouldn’t be a function of brute luck, but b/c of their own choices and actions.

Assumption: benefits for some correlate w/burdens for others: my loaf of bread isn’t mine any more if I give it to you. When agents return good for good and ill for ill—reciprocity—the baseline norm of political equality is maintained. This assumption holds generally for scarce, tangible resources (private goods).

But that doesn’t apply to knowledge. So we face reciprocity norm conflict. Compensation intuition: obligation to reciprocate is function of burden on giver, so we should measure it by cost borne. Gratitude: obligation to reciprocate is function of benefit to recipient, so we should measure it by value received. While they overlap for scarce tangible goods, they conflict for knowledge. If we adhere to one, we violate the other. Confusing knowledge creation with distribution obfuscates but doesn’t eliminate those paradoxes.

Jordi Goodman: Knowledge transfer is not costless—it takes time. Also, gratitude is a norm that is payment, which is also why you ask if someone is in a position to accept the transfer. Gender and race as well as culture affect the costs of transmission.

A: agreed that transfer of knowledge and bundling of knowledge with scarce resources like time and labor that might attend upon transfer. If we think there’s a duty to compensate, it’s about those other resources.

Courtney Cox: kinds of knowledge: if I know something that has value b/c knowledge of it is limited, that may require different analysis.

A: basic observation of benefit matching loss works with physical goods. (Though it also can be costly to hang on to goods.) Maintaining an advantage in pursuing goals b/c of asymmetric information is a different issue that isn’t about benefit, ties this to Qs like insider trading.

RT: I’m not sure you can say there’s no cost to the knowledge transfer as such when it inherently entails my time and effort—it’s just that the transfer might not work, and in that sense we can distinguish between the time and effort and whether the knowledge transfer happens.  Copying may be directly costless to the knowledge creator, but knowledge transfer is not, and who is initiating may affect what’s going on here: knowledge transfer encodes voluntariness which fits with Cicero but not with a lot of the copying to which people object today. Obligation not to stop copying, or a right to stop copying, is different.

Vishnubhakat: cost of transfer might be correlated with cost of creation in ways that affect the analysis.

A: yes, but trying to clarify that we care about different things for different reasons and may have to choose which.

TM

Justin Hughes on the disappearance of terroir—interesting argument about reality (microclimates are real but GIs are much broader; climate change makes past claims not credible) and politics (EU and China deals to recognize a limited set of GIs; extension of GI claims to arts and crafts). Today, very few claims are about the nature of the territory.

Bob Brauneis: Modern GIs seem so much like certification marks that Jeanne Fromer’s criticisms of the latter seem to apply--used to fight between producers to exclude some b/c there’s no effective concept of terroir to discipline the concept.

A: that’s right; GI fans think that certification marks are way too weak, and the gov’t should bring everyone in and regulate the certification, supposedly forcing transparency.

Buccafusco: internal v. external producer interests. Champagne shippers want the place champagne comes from to be as big as possible; growers in the region want it as small as possible to increase the price; but Moet wants the lowest possible cost of inputs while keeping the price high externally, so its internal idea about what champagne is no longer has much appeal to terroir.

A: the extremely successful GIs have this problem; contrast to the less successful ones that really want an appeal to terroir to provide sales appeal.

Sandra L. Rierson, Trademark Law and the Creep of Legal Formalism

Various rules w/in TM law have been codified that we seem to be treating more as formalistic labels or bright line rules when a more practical approach is preferable in TM context instead of leaning on labels.

Legal formalism: this might not be the right label, it might be more rules v. standards. Background: Erie marks transition from era of legal formalism to realism; one of the reasons we have the Lanham Act, since Erie invalidated the federal common law of trademarks. Results came not from balancing competing principles and policies, but automatically applying rules deduced logically from greater principles that supposedly dictated a single result in every case. Example: allowing descriptive terms with acquired distinctiveness to be “trademarks” is realist; common law/1905 Act required D sell goods of “same descriptive properties” as P for infringement, but Lanham Act eliminated that requirement, which is now just a LOC factor.

Formalism creeping back in: three examples. (1) Dilution—formalistic principle: once we put the label famous on a mark, we don’t do much to restrict the protection of that mark. Victoria’s Secret v. Moseley on remand: use on a sex-related business is presumed to tarnish.

(2) Genericism/genericide—the generic label has become overly formalistic in terms of if a mark is deemed generic, the courts put that label on it and don’t look at the way it functions in the marketplace. Booking.com was trend in the right direction looking at how the mark was functioning in practice & competitive necessity [note that Booking.com gave no weight to competitive necessity]. Too much emphasis on noncommercial uses of terms in determining genericity—words can have multiple meanings in multiple contexts. Courts no longer have sufficient flexibility to remedy unfair competition when a word has been deemed generic. [I don’t think that’s true either. They don’t use it often but they definitely have it, and more courts are following the Belmora approach of saying 43(a) gives them that authority.]

(3) Functionality. Evolved to more bright line rule. Doesn’t pay sufficient attention to competitiveness inquiry. If it has the label functional that’s the end of the story. [But how is functionality assessed? A formal label in the outcome doesn’t mean legal formalism was applied to generate the label, any more than “affirmed” at the end of a court decision does.]

Bright line rules are attractive b/c predictable and easy to apply [none of these doctrines are those] but turn out to be arbitrary and generate unintended consequences. Taking an all or nothing approach w/o considering consumers and competitors is bad.

Silbey: legal realism was a response to 19^th century formalism. Today we see formalism in other areas which can’t be divorced from politics of judicial review and judicial power over other branches of gov’t. Is that what’s going on here?  

A: plays a role, not sure how it ties into TM specifically where politics aren’t as obvious.

Rosenblatt: Who benefits from formalism? Is that any different from what we see in other contexts? David Welkowitz has a piece on benefits of uncertainty. Most obvious formalism to her is set of presumptions and burden shifts that come w/registration.

RT: Situate your argument: (1) Carol Rose, Crystals & Mud: cycles of law; (2) Glynn Lunney’s argument that the “everything in the hopper” practice of modern TM harms small entities that can’t afford to litigate in ways that expand the rights of big TM owners and contracts the rights of small ones (note that the dilution definition is neither a rule nor a standard! It’s not formalistic at all because it provides no rule of decision for which of these factors is more important or how to weigh them—you can find dilution but you don’t have to, as in the Gap case in NY).  (3) Mark McKenna—not formalism but absence of guardrails imposed on realism in classical unfair competition.

Alex Roberts, Multi-Level Lies

Marketing and advertising claims made by laypeople selling through MLMs. MLMs are exploitative business model—95-99% make no money, and the products are often junky. Web of federal and state regulation. Why do sellers make deceptive or illegal claims? A lot are desperate to recoup costs, unload products, meet goals they committed to; lack knowledge and training; rules aren’t intuitive (structure/function claims for supplements); share personal experience; true believers want to help friends.

Social media influencers seem reasonably held liable, but what about when the seller is texting friends. Current regime renders regulation uneven and inconsistent, incentivizing the use of MLM model. MLMs vary on type of guidance they give sellers about legal restrictions on marketing claims. A few say that you can’t use marketing messages other than what they approve. Some give dos (only truth), don’ts (don’t spam people, don’t mention disease).

Interested in sellers’ understanding of the contracts. Lay sellers don’t have strong understanding of laws and/or don’t feel bound by them. Interviews/surveys?

Rosenblatt: real incentive for companies to make rules that downline members don’t follow or understand. How do they make that happen? Gender and class?

Lemley: is/should there be contributory false advertising liability? [Yes]

RT: The core problem is that the entity that benefits the most isn’t held responsible for what sellers say to sell. We don’t need to reform advertising law; we need to reform agency law. [Gena Feist: and get the FTC rules actually enforced.] Solutions or analogies from gig economy?

Lemley: similarly it’s been proposed that liability should follow the brand, e.g. for franchising.

Said: note that MLM companies may also have IP troubles [Lularoe and leggings designs], which might also provide an interesting set of comparisons.

Felix Wu: Vicarious liability too—but are you interested in whether the individuals should be directly liable? To what end? Secondary liability means there has to be primary liability.

A: They’re often victims too—they are being taken advantage of. 

Rebecca Tushnet, Bad Spaniels, Counterfeit Methodists, and Lying Birds: How Trademark Law Reinvented Strict Scrutiny

Roughly one third of the judges on the federal bench were not there six years ago. Most of them were not even asked about their views about intellectual property, but a substantial number of them were chosen in order to reject major parts of the postwar legal order. It would be surprising if that didn’t have effects on intellectual property law, for good and for ill. Indeed, we are just starting to see those effects now, including among judges who might not be recently appointed but feel recently let off the leash of precedent

Where this project comes from: I wrote basically only amicus briefs the past two years, and most of the TM ones were about Rogers v. Grimaldi and its rule for so-called expressive speech, a phrase I hate because it is such a category error—commercial speech is not nonexpressive; when commercial speech causes trademark confusion it’s confusing because it’s expressive! Nonetheless, courts often write as if “expressive speech” was some kind of separate category from “source indication.”

I started thinking that I needed a better account of how the law ended up with this obviously wrong characterization and how we could do better.

In response to the massive expansion of trademark’s scope over the last century, courts mostly implicitly devised a compromise by which trademark is pulled back to a more traditional anti-fraud-like scope when it is applied to noncommercial speech sold in the marketplace, such as movies, newspapers, songs, and visual art, or used as the name of an organization with dues-paying members, such as a political party or congregation. The key here is that when I say fraud, I do not mean fraudulent intent, but materially deceptive effect resulting in economic interactions with the wrong party. This compromise explains an otherwise surprising feature of the cases: Political speakers and religious speakers can often expect worse outcomes than “commercial” publishers, given the kinds of cases brought against them. 

I’m going to assume you know what Rogers is and focus on the other classes of cases: cases against gripers, where courts increasingly say that there’s no liability at all, often saying that the Lanham Act is constitutional because it covers only commercial speech, and griping isn’t for-profit—ignoring that plenty of noncommercial speech is for profit.

This line of cases does more than create a conflict with Rogers and its progeny, which does apply the Lanham Act to noncommercial speech, albeit with a modified test. It also creates a conflict with a third line of cases: The Lanham Act is applied with no adjustment when political or religious plaintiffs, as opposed to ordinary marketplace actors, bring suit against competitors who claim to represent the true ideology behind the trademark. Breakaway sects have often been enjoined from using the name they believe truly represents their beliefs, which seems troubling from a free exercise perspective and also conflicts with the Court’s emerging doctrine of giving religions most favored nation treatment—since gripers and for-profit news and entertainment speech get better treatment against infringement claims, these churches probably should too.  

What is to be done?

The rule that I think is what current First Amendment doctrine requires: trademark law may be applied to noncommercial speech when it satisfies strict scrutiny: the regulation has to be the least restrictive means of satisfying a compelling government interest. This could in theory be done by categorical balancing, so we could end up with three different rules for gripers, for profit noncommercial speech, and religion v religion disputes, but each one should focus on naming speakers, not just source identification, and relatedly on a remedy that provides audiences who care the opportunity to identify who’s speaking.

Of specific note, Rogers itself may not fully replicate direct First Amendment analysis of a liability claim against noncommercial speech. In general, the content of noncommercial speech may be regulated only to further a compelling government interest, and the regulation must be narrowly tailored and the least restrictive means of accomplishing that compelling interest.  At least in its “explicit falsity” prong, though, Rogers tailors potential liability for noncommercial speakers more closely to classic fraud, excluding most noncommercial speech from trademark liability. But there are several remaining problems. First, requiring artistic relevance wrongly puts the burden of justification on the noncommercial speaker.  Second, Rogers does not impose a materiality requirement, and it is hard to see how the government has a compelling interest in protecting consumers from confusion they don’t care about.  Finally, Rogers does not require courts to consider a disclosure remedy instead of the full range of Lanham Act remedies including injunctions and damages, suggesting a failure of narrow tailoring.

Felix Wu: impersonation cases—when an impersonation statute is consistent w/the First Amendment—has to lead to material harm or material benefit

Q: religious piece of it: how much is about religious speech and protecting a particular ideological perspective—framed as neutral but really protecting the dominant ideology that is more attuned w/decisionmaker

Rosenblatt: is there something regarding different kinds of potential confusion: the kind of confusion in Rogers that isn’t important enough to stop is sponsorship, not passing off. If that creates a principled distinction that means we’re not violating the MFN idea.

WIPIP, Concurrent Session #1, Design

Christine Farley, Authenticity and Design: Why sell a chair for 10x a visually identical chair? The claim is authenticity: authorized manufacturers and retailers; they call copies counterfeits. Sometimes the replication is exact; design claimants say they’re made with cheaper materials and practices, but midcentury modern design aimed for cheapness and access: the idea that more people can have it now would be a good not a bad. The claim is that coming from certain retailers = authenticity. But what does that mean for works that are mass produced, today, in plastic and metal by factories in typical settings? When Design Within Reach started, it said in its 2007 10K: “our competitors believe they have exclusive rights” in some of their proudcts, including some of their best selling items, which were reproductions. Now they’re claiming to have legal rights to stop that when others do it.

In the 1960s, preemption was big (Sears v. Compco, etc.) and design patents were hard to get/not as valuable at the time. There’s not evidence of a litigation history of the few midcentury modern design patents, even though Herman Miller etc. had some. There was an extralegal campaign: look for the real thing.

Meanwhile, the “authorized” retailers are changing the design from the Eames design, in dimensions, colors, materials, collaborations with other designers—not “authentic” in the way you would have thought. An Eames plywood chair with an upholstered base!

More litigation now than there was when the designs were created, and the litigation is very strategic: forum selection, defendants who are not bringing a great defense. A lot of settlements. Interesting issues: secondary meaning, abandonment, functionality, likely confusion, dilution. Herman Miller litigated even against “Eames style.” In re Herman Miller, 2021 TTAB: the design of the plywood chair is functional.

Contemporary design/designers at the time thought their design was good b/c the functionality was completely integrated into the look. A far cry from Sears v. Stiffel. Almost all of these designs were abandoned/discontinued circa 1955, and only brought back after other people restored their popularity.

Tyler Ochoa: how do you fix this?

A: Not giving design patents and utility patents then sets them up for a good result now when they argue trade dress. They aren’t suing the parties who would mount a challenge, like Target and Walmart. They’re being extremely strategic. More than bad law, they’re muddling the ideas of intellectual property with authenticity, which may change the ways we think about IP as well. They’ve argued that they’re Eames’ descendants—the authorized speaker for Eames. So “Eames style” is an attribution right-style violation, but framed as TM.

Buccafusco: who are the producers and consumers of products they deem knockoffs? What do the people buying those chairs think?

A: there’s a range. A rich dialogue about this among design fans—the law is not helping them with any good information about what is not counterfeit, what is good quality. They’re sharing information about quality, but the law might be pushing towards counterfeits v. authorized rather than distinguishing quality.

Saurabh Vishnubhakat: is this a repeat of trolling issues we saw in utility patent/litigation costs?

A: the volume isn’t quite there. And the strategic choices of Herman Miller have kept it mostly successful—they get a rule established, and then they settle.

Felicia Caponigri, Iconic Copies: Exploring Heritage’s Role in Defining the Origin of Goods or Ideas and its Boundaries

How does a design become iconic? Product placement in media/cultural commentary. But that means that there is commentary, some of which the TM claimant might not like. Creates boundary problems between ©/TM. How is the word “iconic” used by brands, especially brands founded in early 20^th or late 19^th centuries? Looking at TTAB proceedings—puts weight on scale for commercial strength in LOC; fashion editorials can sometimes tip the scales to show secondary meaning of design and even fame for dilution. But it can also show genericity when the design seems very similar to what came before, as with the bamboo arc bag. When does it refer to the origin of the design v. the design itself?

How is “iconic” used in various ways? Traveling of the image across context; brand universe v wider cultural universe—when do we tell the story of a brand versus the culture from which the brand is feeding? Using Coke’s “iconic” status to prevent the registration of “Concealed Carry” in Coca-Cola font. (When) is iconic about household name status?

Dastar: content of an item versus producer of a physical item: iconicity does not obviously map onto one side of this. What happens when someone, e.g., makes pottery in the shape of “iconic” bags?

Silbey: Designers use that term all the time: produced in the context of how they think about their work. Complicated relationship to ownership: they think their value comes from providing iconicity/authenticity.

Alex Roberts: the problem is that brands use that word all the time to proclaim themselves iconic.

Vishnubhakat: Might get some mileage by comparing how it’s used in the market to how it’s used in courts.

Mark Lemley & Mark McKenna, Breaking the Symmetry Between Utility and Design Patents

AKA Design Patents Aren’t Patents (… and it’s a good thing too)

Three rules: (1) design patents are judged by patent rules unless statute says otherwise; (2) that which infringes if later anticipates if earlier: there is symmetry b/t infringement and anticipation; (3) infringement in design patent is completely different than infringement in utility patent, which does element by element comparison. These three things can’t all be true at the same time. Something has to give.

(2) and (3) make sense even if you don’t love Egyptian Goddess; element by element identity approach doesn’t work great for design patent. And symmetry b/t anticipation and infringement is important for scope purposes. That suggests that (1) should give. And if you look, there are a lot of differences.

Anticipation, in part b/c of the symmetry issue and for weird reasons is different and uses a different audience—the ordinary observer (or maybe a specialized observer); obviousness doctrine ignores KSR entirely—in design patents the rule is no obviousness inquiry at all w/o a single reference that is “basically the same,” which is the opposite of what we do in utility patent. Claim construction is discouraged in design patent, in part for good reasons—doesn’t make much sense to translate into words when you can compare the two designs directly. Ornamentality and functionality should in theory be part of design patent; patent prosecution is virtually nonexistent for design; even remedies are different.

Design patents aren’t patents. They lack almost all of the major features of utility patent. Probably a good thing too. Some differences driven by differences b/t design and invention. Also b/c design patents are centrally rather than peripherally claimed, as utility patents are. Design patent: are you too close to the thing I built? Utility patent: are you w/in the boundary I claim?

Separating design from utility, like every other place in the world, may help us fix inconsistencies. For example, in recent LKQ case judge ruled that Egyptian Goddess is a confusion test, so a design will only anticipate a claimed design if it would cause confusion. That’s not obviously the right way to go about it.

Judges can read the same statute differently in appropriate context, though it’s not obvious they will in the age of naïve textualism. But it is dumb to require a single reference for obviousness. We might want to replace it with an analysis based on actual design principles, but not the flat application of KSR.

Jeanne Fromer: Imagine radically—what should it look like? Do we even need obviousness?

A: there are benefits and drawbacks—maybe it would look more like a © regime. But that would require legislation; courts can adapt obviousness to the way design works.

Nicholson Price: Utility patent imperialism: why aren’t they patents if they say patents on them. Are plant patents not patents?

A: they probably bear more resemblance than design patents in what they are protecting and why. But the Plant Patent Act and Plant Variety Protection Act have a lot of similarities despite the latter not being a patent. Adding “utility” every time you say it is annoying and we don’t always succeed. It’s fine to call them all patents up to the point where we import doctrines and assume identity of concepts that aren’t identical, which is what has happened.

Vishnubhakat: should we remove exclusive appellate jurisdiction from Fed Cir?

(in response to Burstein) There’s a narrow window for Fed Cir to write a rule applying the principle of KSR to design patents in a sensible way, but a risk the textualist SCt will just say “do KSR exactly” which would be bad.

Burstein: there are design patents elsewhere, including in China. Is this really happening in many cases? They are applying 103, but differently in design patent.

A: sure, even though we’re nominally applying the same rules, in fact there’s big differences. That’s the problem of the paper.

Buccafusco: wants to hear more about what designers actually do in terms of iteration. Also, why don’t we figure out whether the constitutional language matters—are these products of authorship or products of inventorship?

Jason Rantanen: maybe authorship produces different constitutional constraints than inventorship [I’m not sure there’s much current support for that, but who knows what these folks will do?]

Are there judge effects? A few judges invested in importing utility to design concepts.

Farley: do you need to have a position on why we protect design to answer these questions?

A: to a certain extent, yes, which is why Fromer wants us to go bolder. We are thinking about how much this has to be a reconceptualization of design from the ground up. But things that require us to go to Congress are probably never going to happen and could end up much worse than we are now.

Kumar: how much work is the word patent doing? Is the EU system that different?