WIPIP Session 7: International issues

Session 7 Room 145: International IP

 

Sean Flynn, Mike Palmedo, & Walter Park, Creating a Database of Changes to Copyright User Rights in 40 Nations

 

Fair dealing is flexible (uses a balancing test) but not open (limited classes of acts).  There are counts of industries in different countries; empirical question: how does the law actually impact behaviors?  Scattered data, such as lack of enforcement of German ©s in US during WWII, but not broad data.  Existing surveys are static, not dynamic.  There are various exceptions around the world; South Africa’s quotation exception, cabined only by fair practice, not criticism/review—looks like fair use in its openness internally.  Looking for whether this openness has consequences for innovation.

 

Calboli: Do you find major differences b/t common and civil law?  Portugal has adopted something like fair use.

 

A: We’re finding openness within civil law as well.  Civil law systems often say “we don’t use abstract norms,” but even w/o multifactor test there’s often flexibility.

 

Lunney: You show larger revenues for big content industries in nations with fair use v. those without, but you aren’t making causal claims.

 

A: not yet.

 

Lunney: How do I figure out for the US whether flexibility is increasing?  Not sure you can get a map of equivalent changes v. each district court/court of appeals cases in the US.  Explain how you will map changes/growth in fair use.

 

A: regionalization is extremely difficult, but the key aspects are use of citations—we probably will look for circuit court level stuff. In Brazil we’re looking at court changes—3-4 decisions opened up interpretations of exceptions.

 

Alexandra George, Alternative Dispute Resolution in International Intellectual Property Disputes: A Solution to Jurisdictional Challenges?

 

Conciliation: like mediation, but conciliator puts forward a nonbinding settlement proposal at some point—can be good if conciliator is an expert in the field.

 

MedArb: blend of mediation and arbitration; binding if mediation doesn’t work. The neutral may be the same at both stages (mediator hears your secrets, finds your bottom line, and that’s controversial) or may be different.

 

Expert determination: usually binding unless otherwise agreed; expert has inquisitorial powers to gather info; usually only decides issue w/in their area of expertise; can be useful in patent cases.  Mutuals generally can be experts, which may be an improvement on judges.

 

Benefits: certainty; few avenues of appeal exist. Cost, confidentiality, control over neutrals, location, date, even outcomes for mediation/conciliation.  Outcomes that wouldn’t be available in court; speed; high resolution rate—80% for mediation, nearly 100% for arbitration.

 

WIPO is involved in ADR: maintains a list of neutrals & matches them to cases; domain name dispute resolution; trade mark office mediation.  ADR hubs: major cities like London, Paris, Geneva, NY, Tokyo, Singapore—but Hong Kong, Delaware, etc. promote themselves as good places—stable & predictable legal system, lack of corruption, high quality lawyers, perception of neutrality, arbitration law based on UN model law, geographic convenience.

 

Int’l dimension: mediation gets more complicated, but if we get a treaty allowing settlements to be enforced worldwide, could be an important development. Another possibility: ADR divisions of courts.  Online ADR: newly developing.  Model: UDRP through WIPO.  Small parties w/o much money may be able to solve int’l problems this way.

 

Q: worried about capture of ADR by well-resourced interests like TM bullies that then skew the results.  Concerted effort by large corporations in US to mandate arbitration in consumer contracts—less fair to smaller parties/more vulnerable groups.

 

A: Agree it’s an issue.  When both parties seek arbitration, it works a lot better.

 

Peter Yu: Dealing with distrust of developing countries’ legal systems doesn’t deal with the choice of law issue.

 

A: Depends on how arbitration agreement is drawn up.  May allow arbitrator to choose equitably.

 

Kamil Kiljanski & Benedikt Herz, Survey of IP Piracy in the EU: Actually about displacement rates of consumption of AV content—unpaid consumption is common in Europe, but effect on movie sales is unclear.  Existing studies find very different displacement rates, 0.27 to 1—all over the place for movies.  Our study is the first to use consistent methodology and a big sample.

Dataset: survey.  6 different European states.  Post-treaty/recent.  Surveyed minors: 14-17, also not done before.  Survey how much unpaid and paid consumption each had; don’t ask them what-if questions.  Trying to find if an individual consumers more unpaid content consumers less paid content.  Endogeneity problem: Individuals differ in unobserved tastes for films.  If you don’t control for this, you get bias and more modest displacement rates than the truth.  Control: some sort of supply instrument.  Event study: close of MegaUpload may give you more truthful estimate of displacement. But we didn’t have such events systematically across member states. Control for broadband, but density is now very high/not good any more.  Use Rob/Waldfogel methodology: exploit the fact that most films are seen in the year of release.  Except they did it for 500 US students and we did it for 30,000 people in Europe.

 

Germany, Spain, France, UK, Poland, Sweden; 2014.  Report the way they saw the movies surveyed. What about underreporting? We ensured anonymity; avoided terms w/negative association, such as “illegal” and “piracy,” embedded questions in other questions; specifically named known sites in each country.

 

Results: big differences b/t countries.  Much less illicit consumption in Germany than in Sweden or Spain.  1/7 movies viewed through illegal means.  1 illegal 1^st view reduces legal 1^st views by 0.416 units.  Estimated displacement rate is higher than with cross-sectional approach.  Illegal first view slightly increased 2nd legal view: 0.04 units.  Higher in Spain than France or Germany.  For the whole sample, we estimate lost movie sales to be 4.27%.  Germany v. Spain: 4x difference in percentages.

 

Bartow: kind of movie? Blockbusters/special effects v. romantic movie?  Some movies have staying power.

 

A: this is just blockbusters/biggest sellers in the country.  If it’s the rate for blockbusters, it’s probably lower for other movies, because blockbusters are the most-pirated.

 

Q: Are you just looking at movie attendance?

 

A: Cinema attendance, DVD, legal download—etc.

 

Q: what about delayed release of DVD?

 

A: we used release date country by country.

 

Q: Views v. downloads: people download stuff they don’t watch.

 

Peter Yu, The Investment-Related Aspects of Intellectual Property Rights:

 

Eli Lilly’s $500 million complaint against Canadian gov’t; challenges against plain packaging by tobacco companies.  Concerns: (1) process—high arbitration cost, $8-10 million on average and up to $30 million, compared to $300,000-400,000 in TRIPS WTO dispute; (2) impartial/unaccountable artibrators; lack of transparent proceedings; frivolous disputes; (3) interpretation: lack of binding precedent, no appeallate process, oversimplified view of IPRs; ignore TRIPS flexibilities and safeguards; narrow focus on IP side of bargain.

 

Outcome: large awards, $50 billion to Yukos Oil; used to challenge legit regulations: environmental, labor; more forums to sue gov’t; more lawsuits by private actors; more coverage beyond TRIPS based IPR; rewriting TRIPS and other multilateral bargains.

 

TPP: says hearings will be open and available to public; all submissions will be published for US cases.  Attorneys’ fees for unreasonable claims.  Amicus submissions allowed for stakeholders.  Right to regulate in public interest for public health, safety, financial stability, and environment; also a tobacco-specific measures allowing regulation.  Burden on claimant in all instances to prove all elements of claims; investor expectations aren’t enough.

Remaining concerns: Some improvements in TPP, but still concerns—high arbitration costs; ignore TRIPS flexibilities and safeguards. To prevent forum shopping, a claimant must waive the right to institute parallel proceedings in other forums.

 

Suggestions for improvement: interrogate whether IPRs at issue constitute investment.  Rights don’t equate to investment in a country—investment protection focuses on investment being taken away.  Registration of patents, for example: you can register based on foreign examination in some cases; just claiming patent rights shouldn’t be enough.

 

Contingency: there are a lot of contingencies in IPRs—invalidation; maintenance/renewal fees; free speech and competition law constraints. This should be recognized.  Many patentees will stop paying maintenance fees if patent not valuable. 

 

IP investment protection—might need to look at overall protection for investor, such as FDA protection, or understand that competition law reduces protection.  State: recognize state’s foundational contribution to registration and enforcement infrastructure; bargain-based contribution—some companies might get tax concessions/free land and that should be considered.

 

Examine relationship between TPP and other int’l agreements like TRIPS.

 

Institutional improvements: Advisory center, similar to WIPO’s. Small claims arbitration.  Appellate process improvements.

 

Silver lining: TPP investment chapter maybe can be baseline for ISDS safeguards.  Developing countries may make traditional knowledge/traditional cultural expression claims and may be able to use ISDS against them.  May reduce WTO litigation as home gov’ts say: bring your own claim!  Benefits to small/medium enterprises if costs of arbitration can be limited.

 

WIPIP session 6: IP Theory

Session 6 IP Theory 3

 

BJ Ard, More Property-Like than Property: The Asymmetry of Remedies in Tangible and Intellectual Property

 

Real property remedies are less “property-like” than IP remedies.  Property v. liability rules. Real property often much more forgiving of unwitting trespasser than IP is.  Putting a permanent structure accidentally on a neighbor’s land.  If you’re unwitting, court is more likely to enforce a liability rule: require you to compensate your neighbor for lost land: involuntary sale.  In ©, by contrast, subjective innocence is unlikely to entitle you to the innocent infringer defense.  In patent, you could do a good faith search and still miss; though you might be spared punitive damages, an injunction can still likely issue.  Adverse possession: intentional trespass may become nonactionable. 

 

(1)   It seems backwards that “property” rules would be more prevalent in IP.  Proponents of right to exclude: added security provides incentives to invest; remedies force would-be takers to negotiate in the market; property rules can even secure personality rights by protecting non-economic value invested in certain forms of property. Nonetheless, tangible property law recognizes strong justifications to depart.  Curious b/c infringements in IP are often more socially efficient than the equivalent taking in real property, because creativity is often iterative and builds upon previous work.  In addition, nonrivalry means that there’s no deprivation of use value as there is in real property trespass.  Boundaries of IP are communicated relatively poorly relative to boundaries of tangible property, so unwitting infringers are more likely and harder to deter because they don’t know.  Incumbent on property rule proponents to justify.

(2)   Pro-propertization rhetoric is missing context—many argue that IP should be enforced by injunctive remedies/property rule regularly.  Against the history of real property remedies, it’s weird to derive rules for IP based on abstract theories of property.

(3)   Questioning IP’s current strategy of dealing with these excesses. Congress occasionally acknowledges the problem, but its go-to fix is piecemeal solutions—excused specific kinds of literal copying; DMCA safe harbors.  Liability rules in the form of compulsory/statutory licenses where transaction costs of property rule seem unworkable. Startups, consumers, others who lack political voice can’t get the exceptions they need.

 

Sheff: How does eBay play into all this, if the quintessential property rule is injunction and eBay is decimating injunctions?

 

A: if courts apply it consistently, it goes a substantial way to remedying this disparity (except for statutory damages). Patent comes close to liability, but whether that works in practice comes down to technicalities of calculation, which can sometimes be supercompensatory.

 

Calboli: Caps on infringement damages exist across jurisdictions.  These are countries with strong property rhetoric/traditions. Is the problem the property theory or the structure of remedies?

 

A: You see in some jurisdictions a better sense of proportionality in the remedies, missing in American context.  If property is a right to exclude, that’s tightly linked to injunctive relief.

 

RT: Dave Fagundes’ paper on this?  Patrick Goold’s argument that copyright is really negligence, properly seen.  IP = patent, copyright.  Trademark?

 

A: Similar to Fagundes and Michael Carrier—the wisdom of limits built into real property; good to build them into IP.  Goold: the problem is that fair use doesn’t have enough flexibility to deal with all the issues you might want in a liability regime.  Not much familiarity with TM (which might mean the paper should specify about ©/patent versus TM).

 

Q: Laches, estoppel as relating to adverse possession—which usually requires open & notorious use.  Also, there’s a reason for stronger remedies in patent b/c patent is temporally limited as real property is not.

 

A: Could more equitable discretion in remedies help this?  Petrella is one thing he worries about—no laches in ©. 

 

Tonya Evans, Reclaiming Copyright in the Age of Celebrity Loan-Outs & Other Gratuitous Transfers

 

Intersection of property succession laws and ©, specifically testamentary freedom v. right of statutory heir to terminate author’s transfers during lifetime, specifically to an author-controlled, author-benefiting vehicle.  Thesis: such transfers should be treated equally; the latter should also not be subject to termination by statutory heirs.  Apparently unintended disparity between non-probate assets and probate assets, and the solution is to except non-probate assets from termination rights inherited by heirs.  (So, to disinherit your heirs from your literary estate, you have to hang on to your copyrights until death.)

 

Termination may be effected notwithstanding any agreement to the contrary.  Loretta Lynn, Tom Petty, Village People, Bruce Springsteen have successfully terminated, having survived long enough. But what happens when an author passes away before the window opens?  A small subset of heirs can terminate.  Ray Charles: created a private foundation funded solely by his royalties, designated sole heir in his will.  His 12 kids got irrevocable trusts after they waived any further right to his estate.  After he died, 7 children promptly served notices of termination.

 

Current law includes gratuitous transfers made by the author to a wholly controlled loan-out company, self-settled trust, private foundation or similar will substitute.  Sometimes they create future works as WFH for the trust/foundation, but will still want to transfer existing works/rights to royalties.  Useful for tax, estate planning, privacy—probated wills are public.  Unintended consequence: not honoring testator’s well-planned intent.

 

Testamentary freedom: how do we identify what things might be accepted, given the problem of the industry creating wiggle room against Congress’ intent.  Solution: certain gratuitous author transfers in the same way that wills are treated, exemption from termination of transfers. A lot of artists transfer assets into their own music publishing company; a critical means of asset protection along with loan-out companies—financial/tax benefits to setting up that way.

 

RT: Really interesting project of evident practical significance.  The industry evasion concern is what jumps out at me: how should a gratuitous transfer be defined?  Can a proper definition do the necessary work?

 

A: “author controlled, author-benefiting”—focused on that, with concrete examples, is a good start.

 

Q: Entertainment label could work with that.  Are we more worried about transfers close to the initial license period?

 

Ard: you’re concerned with the economic consequences of interference w/Ray Charles’ intent. Is there an expressive component?  Marvin Gaye might have wanted a specific approach to claims about copyright infringement that would be frustrated by the kids.

 

A: Yes, that’s a primary concern.  The problem occurs b/c of financial/tax issues, but as a property professor I’m concerned with parity for the treatment of non-probate and probate assets.

 

Q: is there anything courts can do if Congress won’t act?

 

A: will try to give some guidance to courts: w/Ray Charles Foundation case, the court found that the Foundation had standing to fight termination, but much remains to be decided. Heirs that agreed to do something = doesn’t matter given the statutory language.  [Maybe that should mean or be amended to mean notwithstanding any agreement to the contrary before the author’s death.]

 

Betsy Rosenblatt, Belonging as Intellectual Creation: What are we creating when we engage in creative endeavors?  First, stuff, the thing law has been most concerned with—works, marks, inventions.  But other things—communities—aren’t well served by incentives for creation of stuff. But “progress” could embrace harder to quantify things like human flourishing.  Money isn’t everything for everyone.  One possible creation of intellectual endeavor is a sense of belonging, and this can factor into IP law and policy as we go forward. 

 

Belonging: personally and contextually mediated emotion felt when people feel connected w/group, values in harmony w/group, etc. Basic human need & value.  Vital component of mental health.  One of the few universals across cultures.  Strongly tied to whether people find their lives to be meaningful.  IQ, motivation, physical health, life expectancy can all be affected.  Ability to participate in creative decisionmaking + reward, which reward is rarely remunerative—being recognized/acknowledged as member of community, or experiencing status, success, sense of accomplishment.  Synergy between reward and trust; gatekeepers/barriers to entry can promote belonging w/in and inhibit w/out.

 

Creative communities are well-suited to developing senses of belonging: unite people; opportunities for sense of belonging; opportunities for status/recognition; if there are shared norms/trust that promotes belonging even more.  Belonging is one of the things that creative communities create.  Amateur and professional.  Professional artists often value sense of belonging from creating in ways stronger or synergistic w/professional goals.  Lady Gaga & her fans both get a sense of belonging from sharing the creation.

 

Law can promote or undermine belonging.  You can make it harder for people to be recognized for their work.  I think WFH may be a terrible idea for belonging; but maybe that’s not so if people even within corporate communities can develop a sense of belonging based on other factors.  Formal law can break down/disrupt communities’ common norms/governance systems.  When we privilege creation by firms instead of innovation by innovation in WFH, §1201, TM overreach, lack of experimental use exception in patent—those things likely undermine belonging by discouraging creative endeavor by individuals; firms may or may not choose to promote belonging within themselves.

 

Adds an axis to our understanding of why we may want certain IP rules. When we regulate away communities, we may be doing harm.  Need law to regulate among groups, but maybe not so much w/in groups.

 

Q: Individual creation focus is quixotic—how does individual creation turn into group creation?

 

A: The kind of belonging I’m talking about is situating oneself w/in a creative community. Corporations can’t experience belonging, but people can.  There is group creation, but our law doesn’t account well for that.

 

RT: what if belonging is so strong people make it up no matter what?  Slavery, prisons.  Then the reason for protecting belonging would be more dignity-based than utilitarian.

 

A: we shouldn’t be trying to undermine it b/c it has benefit in itself—it’s something that people need/seek out—don’t need to incentivize it, just need not to harm it.

 

Q: Privacy literature has a lot about belonging.  Is belonging dependent on exclusion?

 

A: I think it doesn’t require exclusion, but empiricial literature is internally contradictory.

 

Q: what if oppression brings people together as “pirates” etc.

 

Jeremy Sheff, Progress for Future Persons

 

Normative commitments/debates that underlie our choices about creativity policy: philosophical underpinnings.  Future persons: people who may exist in the future but don’t right now. When we decide on certain policies, we have to decide whether and how to account for those future people.  But for earlier authors, would we have Shakespeare?  Would we have Romeo & Juliet?  He probably would have written something else—but it’s not clear it makes our world better or worse—a problem of counterfactual valuation. How should we think about these futures when we account for the lives they will live/who they will be?  What’s the moral implication of the non-identity problem—that if your parents hadn’t gotten together, you wouldn’t be here and it’s not clear that we wrong anyone by failing to bring them into existence, or by bringing into existence someone whose life is worse than the life of another person we could have brought into existence instead.

 

Economic response: count future lives, but discount them according to some function; but that means welfare of future generations asymptotically approaches zero very quickly. That seems morally troubling: spend $1 now to save a billion lives later.  Response in environmental law discussions: but it deals w/rights and norms.  It’s not clear it makes sense unless we’re talking about whether human life will be at all possible, v. choosing among different types of suffering to invest in preventing.  Theory may be no help; we are indulging our own normative commitments, and that’s ok. It may be inescapable; but then it’s important to design social institutions to bring together disagreements and decide. The future has no vote/can’t bargain with us, so we need a moral commitment to an other-regarding view of the future.

WIPIP Session 5: Copyright 2

Session 5 Copyright 2

 

Zahr Said, A Transactional Approach to the Lay Observer in Copyright Law

 

Internal contradictions in uses of the observer.  Humanities perspective: copyright doesn’t have a theory of reading/interpretation/engaging with works.  Reader response theory as a means for addressing some confusion in © law: it’s a literary theory broadly applied to film, art history, music, and other genres beyond text.

 

Payoff: more coherence for ©’s reading practices and specifically for its reader.  Formal tests used by courts and a variety of informal uses.  Formal: urge adoption of lay perspective, such as 2d Circuit’s ordinary observer test; 7^th Circuit’s more discerning observer test, which is less about observer and more about filtering.  Function of lay perspective unclear; rationales vary and are sometimes in conflict—proxy for market harm, other things.

 

Reader response theory reoriented analysis of art away from text and towards audience (an oversimplification but that’s what you get in 8 minutes).  Different movements w/in the theory; her favorite is Rosenblatt, who started writing about it before almost everyone else did—1938.  Scholar/teacher who attended to pedagogical scholarship. Reader response theory involved a spectrum of fidelity to text, author.  Author communicates and controls à ideal reader.  Text controls à implied reader.  Reader controls à interpretive communities.  Rosenblatt’s scholarship was practical, thus useful for judges: The reader is here and the text is there and something happens in the space of the transaction, but reader can’t do just anything with a text.  Some readers see more cues and some see fewer; some see different cues and you can be trained to see different ones.  The reader actively engages with the text. Transaction controlsà reader creates, text constrains.

 

Two modes for readers: aesthetic and efferent stances.  Not the aesthetic from Bleistein, but phenomenological.  Aesthetic: a general experience from interacting with the work. Its meanings for you unfold through time. You might notice color, shape in a painting—a basic understanding. Efferent: You’ve been asked to take some piece of information away with you—efferent comes from Latin, meaning to bear something away. There’s a correct answer: how many straight lines are in the picture?

 

Aesthetic can change; there’s no one correct reading (though there are incorrect ones) and the reading may change over time.  Evolves; concerned w/what’s experienced during the reading; varies based on reader’s knowledge and background.  Efferent: objective, public, informational, functionalist, can proceed quickly b/c you can filter; in theory any reader can get the full/same info if equipped with sufficient guidance.

 

Aesthetic to efferent is a switch of modes: experience v. studying for the midterm.  Spectrum of practices in ©; judges are better efferent readers than aesthetic, especially when we’re discussing questions of scope, such as what’s protectable and what’s in the public domain.  Efferent reading should be the task for matters of law.  Juries or factfinders can read aesthetically.  Doesn’t mean decision will be uniform. 

 

Prescriptions: we ought to allow more expert evidence for anything that’s efferent. To the extent we allow aesthetics in for look & feel or holistic test, acknowledge what we’re doing and instruct juries in it.  Perhaps even use special verdicts for the jury to identify what they see as similar.  If juries could explain, judge could even read jury’s expressions and come to some conclusion about that.  We need to be clearer about what we’re asking juries to do—look at the instructions in Blurred Lines case, where they were unclearly asked to do a job that they unsurprisingly did poorly.

 

Kevin Collins, Economically Defeasible Rights to Facilitate Information Disclosure: The Hidden Wisdom of Pre-AWCPA Copyright

 

As an architect, I viewed © not to stop copying by architects, but as a tool to prevent owners from screwing me over.  Prevented the building owners w/whom I worked from appropriating my design without full payment.  Law prof default: copyright augments incentives for expression by preventing copying by strangers.  Architect view: © facilitates bargained-for disclosure, resolving Arrow’s information paradox, backing up a contractual relationship rather than providing incentive to create through in rem rights. 

 

Pre-AWCPA rights were quirky, economically defeasible rights.  Proven difficult to justify under standard incentive theory of ©.  Hidden wisdom revealed in dealings with building owners.  If you recognize that architectural © played a transactional role in backing up contracts, it makes good sense. 

 

Copyright maximalists complained that lack of protection against copying buildings meant insufficient incentive.  Minimalist critique: weak copyright is good for creativity and protection should be thin; but defeasible rights are ill-conceived.  Why not protect both buildings and drawings and equally through thin copyright?

 

Features of contracts that create information problems: Standard design-bid-build project delivery: five phases; design information is mostly generated early on, with schematic design, design development; then construction documents, bid oversight, construction management.  Last phases: more management, coordination, not creative information producer.  These agreements usually defer most compensation to later phases of the contract. Antitrust authorities went after AIA in a way that makes architects hesitant to share fees info. Design development is a small component of fees received; most is paid at the end. When offering services a la carte, architectural firms incresae the cost of schematic design as a stand-alone service. Finally, for many reasons, the contract is terminable at the convenience of the owner. This allows owners to engage in opportunistic conduct: hire more expensive architect to design, then fire her and hire a cheaper architect to oversee the grunt work.

 

Thus, architects will hesitate to reveal design information early in the process for fear of misappropriation, but owners want to know that information before fully committing.  Pre-AWCPA rights provided strong rights against appropriation by owners; until the building is built, there is no built building from which to copy, which can then be copied—but by then architect will have received all the necessary fees.  So pre-AWCPA rights provided the minimum rights necessary to get the incentives right.

 

Almost all post-AWCPA cases fall into two categories: (1) architect v. owner, same as pre-AWCPA.  (2) suits against strangers involving cookie-cutter, model-home developers/architects, where expectation is that cost of design is to be recouped over the sale of many copies.  Architects for specialized projects aren’t using their AWCPA rights.  Future work: why not?  Is post-AWCPA copyright just very thin?

 

Rebecca Curtin, Contractual Origins of Authors’ Rights: Looking for deals showing an idea of literary property not dependent on possession of the actual manuscript.  Earliest evidence of authors’ contracts is in Stationers’ Register itself: “Entered for his copy”—might not even name the author, but would name printer/bookseller who entered the copy. A handful of different entries: The Treatise of Melancholy by Timothy Bright, Oct. 1586; Bright promised not to meddle with the printing of the book until sold.  One of the ambiguities of the time was how soon or whether authors would have the right to reissue a new, altered, abridged, or revised version.  Stationers’ copyright was protection only against literal copying, so authors putatively (others as well) could abridge or otherwise create new versions.  Here, the parties negotiated to prevent competition from the most desirable source, Bright himself.  Although this isn’t about a strong reversionary right, we see authors & publishers trying to work out the problem of literary property on a contractual basis.

 

1607: a note that it’s agreed that this copy shall never hereafter be printed again without the consent of Mr. Ford the author.  A retention of rights.  Piggybacking off of the ability of the bookseller who entered the copy to vindicate those rights.  That right doesn’t depend on physical possession of manuscript; leverages contract to control the work. There’s still an ambiguity: whether Ford is free to deal with another bookseller.

 

Another memorandum: seller promises not to reprint w/o author’s consent, and will surrender copy to him when he shall require it.  Parties have advanced to thinking about the “masters,” as it were.  Intended it to be used as evidence in court in the event of a dispute.

 

Contracts become more complex over time—Milton’s contract for Paradise Lost called for contingent payments; he got more money if the first run sold out, and more if a second/third run sold out.  Total potential: £20.  Also included duty to account; emergence of author as commercial dealer.  1690s: contract b/t Tonson and Dryden includes complex compensation provisions, both up front and investment on Tonson’s part to allow Dryden to resell copies as part of his compensation.  Language isn’t very clear separating delivery of manuscript from right to exclusively print; they don’t always make the distinction.  Very clear language borrows from vocabulary of property in 1709, just before Statute of Anne: “sole right and title” for a complete copy, “and 50 copies for my own use.”

 

Authors were far more active in market as proprietors than we’ve given them credit for.  Idea of authors as owners can be shown in the transactions they undertook.

 

Zvi Rosen, Saurabh Vishnubhakat, Empirical View of Copyright Registrations and Renewals under the 1909 Copyright Act

 

No statistics exist prior to the Copyright Act of 1870.  Until 1897, there are statistics by class and year.  No records for 1897, when they moved buildings.  1898 and beyond: annual reports with basic statistical information. Catalog of copyright entries begins publishing in 1891; published for Customs agents to enforce manufacturing clause, but it was ineffective for that and people quickly used it for registration info.  CCE expanded over time to add more information; 1947: began including statistics on renewal.

 

1909 Act: need publication with notice, then registration and deposit.  So, did authors register shortly after publication under the 1909 Act?  Until renewal became optional, 98% of renewals were registrations for 28 years earlier; almost everyone registered pretty much right away. Even in 2005, it’s 76%.  So renewal data can be used to determine renewal rates as percentage of registrations. 

 

Annual reports turn out to be only kind of helpful, though.  Ratio of registrations in annual reports to registrations in CCES, also same issue w/ renewals: a lot of variations (it doesn’t match the calendar year).   Registration #s: Books dip in Great Depression while music seems to go up.  Photos: spike and then drop, lower in 1977 than they are in 1900.  Other categories have their own curves.  Mapping copyright against economic panics: you can see for all of them more or less there’s a subsequent dip in © registrations.

 

Percentage of all renewals by filing year: Renewals that mention an initial registration after 1978 and renewal after publication—this would skew the calculation of renewal right. 2005: a lot of people filed a registration and a renewal in the same year in order to be timely.  [I would guess for termination of transfer reasons.]  Renewal rate for all registrations 1919-present.  1962: extension of renewal term; 1978; 1992 becomes automatic and renewals decline.  47-year term: renewal rate gets substantially higher and stays that way.  Renewal rate for 1947-1961: 12%; goes up to 15% until 1977, when term was being consistently extended; then went up to 20%. Very little variance year by year within periods.  The one from 2005 is unusual because it became increasingly known in business that filing was unnecessary.

WIPIP Session 4: Design

Session 4: IP, Design, User Experience

 

Sarah Burstein, Reviving Ornamentality: Fed. Cir. killed ornamentality in design; right now it means nothing other than Morton-Norwich nonfunctionality. She thinks we should bring it back.  Two aspects: (1) “matter of concern” in normal and intended use; (2) if you can’t see it we don’t care.  But “normal and intended use” means everything from manufacture to disposal; if you can see it when it breaks, then it’s within the possible scope of design patent.  If you can draft a patent application, you won’t run up against an ornamentality problem.

 

First mistake: treating ornamentality as opposite of functionality. Some designs can be both at the same time.  Fed. Cir. says: it’s not primarily functional unless there are no other alternatives; this makes everything ornamental b/c there’s almost always an alternative.  Only recent exception: a key that fit into a specific lock; and even then there was a dissent.

 

This is a problem b/c design laws should incentivize the creation of new and creative aesthetic product designs.  Design patents are now protecting useful innovations in design patent clothing/petty patents, against Congressional design.

 

Before 1982, many courts said (1) is design dictated by utilitarian concerns? (2) additional aesthetic requirement—some visual impact.  Don’t think of ornamentality as mere nonfunctionality doctrine. Ask whether the design makes a material aesthetic contribution to the product, providing a reason for choosing one over the other?  How do we test that?  Well, we can measure it indirectly. Ask of producer: was this design driven by utilitarian concerns?  Ask of consumer/user: does the appearance of this type of design matter to a substantial portion of actual users?

 

Why focus on the visual?  This is the only way that design patents make sense in our IP landscape.  It’s the hole they were intended to and can in fact fill: protecting useful articles with some visual content that matters. Otherwise they’re just petty patents or copyrights.  If consumers don’t care (e.g., shape of USB connector), then it’s wasted effort from design perspective/anticompetitive from any other perspective.

 

Also addresses problems of partial claiming.  Plus the “Rabbit Strategy,” where you use continuations to get competitors on the hook—you take a parent application and then create child applications with subparts of the original design.  In my world, you’d have to prove consumers cared.  Spare parts, too.  You might say that people buy bumpers b/c they want the bumper to look like it did before the accident, but that’s not the kind of aesthetic effect that should matter.

 

Would also make our crazy damages provision make more sense, when you get total profits no matter what—if the design is material to the consumer, that is closer to tort principles.

 

Mark McKenna: Who counts as a user?  You see TM use intermediate purchasers all the time.  Materiality: you mean “is the aesthetic aspect material”?  That raises an important timing issue. As of the date of application? If it’s ever true?  If successful, people will likely come to appreciate the design and it will matter to them.

 

A: true, especially for primary products—the initiator of the smartphone. But that may be justified.

 

McKenna: especially given evidence that familiarity breeds likeability.

 

A: but that is ok: we should create incentives for people to create nice products even when they aren’t typically bought for aesthetic reasons.

 

Lunney: Congress didn’t intend this isn’t a good enough justification—think more about broader social costs.

 

A: Agree—Congress said so for some pretty good reasons.  Mutant patents = big social problem. 

 

Farley: Steve Jobs even wanted the circuit board to be beautiful.

 

A: I would focus on the user.

 

Zahr Said: presumptions anywhere?

 

A: We should just go test it.  Surveys; PTO would be subject to lower standards as with TM. 

 

Peter Lee, The Law of Look and Feel: A comprehensive examination of the regulation of consumers’ aesthetic experiences.  Emergent law of look and feel: exclusive rights in design across ©, TM, utility patent, design patent.  Doctrines selectively mitigate exclusive rights in response to certain factors. 

 

Look & feel of the 1980s, as shown by Pac-Man (really Ms. Pac-Man).  Look and feel in Louboutin heels; Abercrombie & Fitch clothes with hot guys and their abs—an A&F store is a total sensory experience, including music and scent.  Exemplar of look & feel in modern economy: the iPhone.  Valued in significant part for how it feels in your hand.  Marketers say: look and feel of products will determine their success; in a crowded market place, aesthetics is often the only way to stand out.  Look and feel can encompass the zeitgeist.  A&F evokes the early 2000s; iPhone = right now.

 

Law of look & feel.  ©: 9^th Circuit in Roth Greeting Cards protected “total concept and feel.”  Blurred Lines case: jury found infringement based on sound & feel of the late 70s.  Limitations in ©: idea/expression; merger; scenes a faire; useful articles.  Apple Computer v. Microsoft: copying the GUI; the court invoked limiting doctrines of merger & scenes a faire, including consumer expectations re: overlapping windows.

 

TM: Taco Cabana protects look & feel. Limiting doctrines: distinctiveness, functionality, and likely confusion.  Product design trade dress can’t be inherently distinctive.  Aesthetic functionality: A&F lost claim against American Eagle for general look of its stores.

 

Utility patents: Apple’s patents on two-finger pinch to zoom and on slide to unlock. These patents contribute to look & feel: streamlined aesthetic/user interface.  Limitations: functionality; constraints on patentable subject matter; apportionment of damages.

 

Design patents: here though there’s a distressing lack of limitations.  Functionality is construed narrowly; consumer deception standard for infringement isn’t sensitive to context; expansive damages.  Greater standardization is justified to make design patent fit better with the other IP forms.

 

Linford: limits on © don’t seem to be that good.  We do abstraction, filtration, comparison when we’re worried about functionality; total look and feel seems to be courts generally extending broad protection. If the argument is design patent needs more than what it has, I’m with you there, but it’s surprising to think that copyright might be a good model.

 

A: Not saying that © is perfect; impressionistic view is problematic in itself, but other doctrines help cabin it in ©, not design patent.

 

Q: Zeitgeist—if it’s true that one producer was the first to create the zeitgeist, wouldn’t limited term take care of that with obviousness afterwards?

 

A: it could, but that revolves around the question of timing. Something can achieve the status of a standard quite quickly, before 14 years expires.

 

Said: Roth never really meant to establish a test.  Look & feel cases seem to involve courts struggling; treating look & feel as an element of a work along with plot, as opposed to a lens through which to view the work.  Treating errors/outcome-driven cases as a unifying principle begs the question.  She’d rather say: there are these cases, and what about the cases drove the court to use total concept & feel instead of something else—scope, filtration, etc.

 

Farley: also concerned you’re reifying look & feel, which is a fictitious concept—case involving the artist Tarkay—attempt to protect his style was rejected, and she’s not sure how to distinguish look & feel from style.

 

A: we don’t want to focus on the words look & feel. What we argue is that there’s a law of look & feel that extends past the use of the words (to substantial similarity).  It can’t be an analytic grab bag.  Other doctrines that have never explicitly been associated with look & feel are part of the broader law of look & feel.

 

Mark McKenna & Jeanne Fromer, Claiming in Litigation/Claiming Design: How different systems of IP conceive of claiming. Louboutin: how does the court understand the nature of the plaintiff’s claim as a kind of property.  Yankee Candle: P attempts to claim everything you might think about when you think about this store.  Recent TM application: all of the lines on the image are dotted out, meaning they’re claiming no shape, just a color—the color of something.  TM doesn’t have a methodology for claiming; thinks about problem where law encounters it in particular cases.  Recent design patents: Claim limited to one curve on a gear, everything else dotted out.  What explains the different methodologies for claiming, especially given increasingly overlapping use of those systems?  Design patent system forces you to show up at PTO with a claim in pictures; you have some definitive ex ante claim against which you can compare anything later on. TM says: you don’t have to do anything ahead of time if you don’t want to (though we might want to change that rule)—most trade dress cases involve unregistered trade dress, and even when there is a registration, doesn’t seem to have much bearing on court’s infringement analysis (Louboutin being the outlier).

 

What TM law does so differently: articulate your claim in litigation, rather than in ex ante document.  Issues of public notice.  Not specific to design: happens in copyright, trade secret—claiming in litigation is an issue in many situations.  Attacking the problem as a claiming in litigation problem suggests that design is one instance of a larger problem.  In TM we allow it because we’re concerned about how it works in the market, not in the abstract.  Product designs change over time; makes more sense to consider it at time of litigation.  Costs of claiming in litigation: public notice; courts seem uncomfortable w/lack of notice/lack of ability to pin down scope.  So they sometimes say “we don’t know what you’re claiming, so it’s out.”  Fair Wind Sailing in the 3d Circuit: P seems to be claiming a way of doing business, using a certain size of boat and using customer testimonials—3d Circuit says “no mark” but they don’t have a tool like distinctiveness or functionality to do this work.

 

Trade dress cases: courts have tried to say: you need to articulate the trade dress in words. The problem with that rule, though it’s the right instinct, is that courts allow people to articulate the claim in incredibly varying levels of generality: every Mexican restaurant you’ve ever seen, or exacting description. Courts are thinking about infringement/managing scope, and backing into a claim definition. Design patent: pictures are used, but deep & persistent ambivalence about need to describe pictures in words—b/c pictures are often not very illuminating (no pun intended). Maybe they aren’t so different—the mostly dotted image is a trick, leaving the design patent incredibly general and vague by claiming only a very small part of the design.  Relates to partial claiming.

 

Are there good reasons for claiming methodologies differing?  You might say that TM v. utility patent: it’s more important for utility patents to be clear b/c stakes are higher. But that doesn’t work well for design patent. Iinfringement standards are pretty similar b/t trade dress and design patent; obviousness criteria are mostly nonexistent for design patent, so design patent claims look like trade dress claims.  Both sides ought to think about more specific rules to apply across cases.

 

Lunney: exemplar systems worked well for old-style TM (where double identity was required to infringe) and © (pure copying) but never worked for utility patent.

 

Fromer: we want people to have to think through an invention; claiming forces you to a certain level of generality/specificity.  Is there something similar going on in this context? Do we want to force people to think about their rights early on for TM/design patent.  Not as obvious.

 

Lunney: what would a written claim for Star Wars look like?

 

McKenna: reason why TM lacks methodology for claiming—historically, most of this would have been in unfair competition, so you didn’t need to worry too much about the front end.

 

Aaron Perzanowski, The “Buy Now” Lie: “Buy now” on Amazon for Kindle books; the page for Orwell’s 1984 looks the same for Kindle version as for the paperback.  But Amazon can pull back and destroy 1984 for the Kindle, not for the paperback. One claim: the market has spoken and people don’t value possession rights for ebooks as much as they do for physical books. But that assumes consumers understand that “buy now” doesn’t mean “buy now.”  Commerce Department White Paper: MPAA/Disney said, of course consumers understand they’re buying a license.  But I figured it was worth empirically testing.  Fake online retail portal: simplified layout like Amazon’s.  Tested “buy now” button. 1300 consumers representative of the US population in sex, income, age.  Showed a number of variations on this retail page.  Tested books, movies, music.

 

What do consumers think they get?  Switched to “license now.”  What do consumers think when they see that?  Switched to just a price + a notice about what you can and can’t do: you can download to approved devices, read on approved devices, keep subject to our terms of use; you can’t resell, lend it, transfer it, give it away, or read on approved devices.  (Out of 1300 people, 14 clicked on terms of use.)

 

Asked them: after they’d clicked, can you lend it to a friend? Leave it in your will?  Resell it? Keep it as long as you want?

 

People who believe they “own” what they buy using “buy now”: high percentage; also high percentage believe they can keep forever & use on device of choice (both of these in the 80-90% range).  Believe they can lend ebooks, mp3s, and digital movies: (1/2 or less); lend as gifts (similar); leave in wills (1/3 or less); resell it (17% or less).  Significant number of consumers get these questions wrong.  All of these percentages, w/possible exception of resale, are large enough to establish falsity/deception.

 

Apple is replacing albums stored in the cloud; it can just disappear.

 

Switch to “license now”—while belief in “ownership” goes down, other things go weird but don’t change much and people still believe they can keep forever & use on device of choice in the same %ages; more people believe you can resell digital movies when you say “license now.”

 

The tested short notice caused a pretty big drop, especially for lending, gifting, reselling—with the weird exception of digital movies.

 

Results: there is miscommunication happening.  There is a reasonably effective intervention.  He isn’t a user interface designer, and he spent 10-15 minutes on the notice, and yet it had a pretty substantial impact.

 

Also asked respondents questions about materiality.  Maybe their wrongness doesn’t matter.  Digital v. hardcover: people’s ability to lend and resell matters to consumers in stated preference, and there’s almost no difference in preference b/t physical and digital version. Indeed, they care more about reselling ebooks than hardcovers, if you believe his numbers (which there’s no reason not to).

 

Also asked: if you can’t get the rights you want, would you be more likely to download illegally or stream it from a subscription service?  About 1/3 said yes to illegal download; from 36-74% said streaming would also be more appealing.  WTP: $3-4 range for the rights.

 

Dep’t of Commerce White Paper recognizes the problem: consumers don’t understand what they’re getting.  Doesn’t cite any evidence, but now there is evidence.

 

Haven’t broken down results by age, education level, behaviors of lending/reselling.

 

RT: Richard Craswell has good work on how you interpret different results from different disclosures.

 

A: doesn’t know that new options will necessarily help consumers.  [I think we were saying/hearing slightly different things, but Craswell would probably agree with this point.  Craswell has written about when it makes sense to require rewriting a claim, if some people don’t get information/lose value from the increased cognitive burden while others benefit from enhanced information.]

 

McKenna: Do people think they own it but can’t lend it?  Do people have any idea what ownership means? [Note that it’s possible to have a physical thing you own but can’t rent—that’s what airBNB is fighting about.]

 

A: 40% say they don’t believe they’re allowed to lend their physical books to other people.  There is a big difference b/t physical and digital, but physical is interesting in its own right.

WIPIP Session 3: Trademark again

Session 3 Trademark 2

 

Irene Calboli & Dan Hunter, Trademark Proliferation: Lots of marks—Louboutin soles; motion of Lamborghini doors; etc.  Why so many?  Very broad definition of what can be protected as a mark + ill-interpreted concept of distinctiveness.  TRIPS + Lanham Act both define marks broadly—anything capable of distinguishing goods/services. TPP is even broader in definition. 

 

Spectrum of distinctiveness developed by Judge Friendly: highest protection for fanciful marks/new symbols.  Reality: fictional distinctions between descriptive/suggestive/arbitrary are ways to define ex ante an ability to distinguish, not an actual distinctiveness. [Nicely put.]  We are betting that a fanciful mark will be a better distinctive element.  Then we say that anything distinctive can be a mark.  Our project: differentiate between the ability to distinguish and distinctiveness.  Every possible aesthetic element of a product could in theory distinguish a product’s source—but do we need that? Our answer: no.  TM law isn’t supposed to protect aesthetic elements.

Go back to the drawing table: what is distinctiveness?  Stronger emphasis on TM use, or secondary meaning?  Criterion of separability b/t mark and product features? 

 

Marks have to be distinctive; not every sign that is distinctive has to be a mark. 

 

Christine Haight Farley: Why is the spectrum of distinctiveness the problem?  Isn’t it just in need of tweaking?  Friendly’s categorizations of word marks just don’t work for nontraditional marks.

 

A: we are starting to hear language of “fanciful” outside the word mark context.

 

RT: [Of course if the other papers are right that names are often part of product features, that gets harder.] [I like the concept of limping marks for this goal of limiting TMs—Mark McKenna pointed out that Kit Kat shape in Europe is an example of this issue—although it could in theory be distinctive, in practice it’s always accompanied by other marks that do a better job of distinguishing the goods.] [Artistic distinctiveness: Rock & Roll Hall of Fame/ETW v. Jireh concepts, applied more broadly, do what the paper is seeking to have done.]

 

A: Artistic creativity goes into a lot of logos.  Should TM be interested in branding at all?  As long as you’re allowed to use your word, even if not your logo, you’re distinguishing yourself:

 

Jake Linford: assume fanciful marks are more likely to signify source.  Doesn’t it save resources to presume distinctiveness?  Other rules are expensive and favor players with most money.  Not sure he believes this himself, but needs answer.

 

A: Problem is from cluttering—we’re running out of marks.  So it should be more expensive! Unfair competition/passing off are options instead.

 

Betsy Rosenblatt: proliferation of TM protection for arguably functional things, maybe they’re actually source identifying for the population.  Red sole of Louboutins is absolutely a source identifier and pretty.  Adding secondary meaning as a stronger requirement wouldn’t solve that problem. 

 

A: combine it with aesthetic functionality. 

 

Christine Haight Farley, The Impact of New gTLDs on Trademark Rights in Domain Names: rise in domain name disputes generally; this will increase disputes. ICANN increased new gTLDs to increase space for competition.  Idea was: glut in dot-com space.  Nearly 2000 applications; Google applied for a huge #; popular applications were for generic words. How will second-level domain name disputes? Nothing in all the wrangling which dealt with second-level domain names & how they might differ in new gTLDs.  This is the biggest moment since .com was introduced 26 years ago; expands number by 5000%; there was no study beforehand of how it was working.

 

UDRP view: we ignore what follows the dot.  Mercedes v. mercedes.com = the same. Neimancarcass.com = not confusingly similar, though some “sucks” domain names have been found confusingly similar in UDRP.  Gulp v. Gulpy: why isn’t it confusingly similar under TM law? B/c we don’t do a visual comparison in UDRP cases, and we don’t consider context.  It’s impossible to map TM law onto UDRP, and we’ve done a really sloppy law.  UDRP law comes from TM law, but not exactly.  UDRP: universal; no specific relevant user; focused on registrant and its intent; supposed to be for easy cases.

 

First case in new gTLD case: Canyon (trademark for bike) v. canyon.bike.  Panel in this case said that the post-dot matter enhanced the similarity, rather than ignoring it.  So: what about mercedes.spanishgirlsname?  Ferrari.red?  “Red” is network in Spanish; could be a network of Ferrari owners using that space.  Walmart.lgbt?

 

Changed over 15 years—strong assertion of TM owners’ rights in the policy. New mechanisms: TM Clearinghouse; Uniform Rapid Suspension—very property focused—allowed TM owners to have rights already in advance.  Madonna got first shot at registering madonna.church; Apple got first shot at apple.farm.  Also had legal rights objections to new TLDs: DirecTV challenged .direct, and DirecTV won on confusing similarity (one-letter difference).

 

It is true that the other elements of the UDRP test can deal with many of the problems. But if this is a giveaway to the TM owner, and it’s already the TM owner’s property, then that will cloud interpretation of the remaining prongs (legitimate use, bad faith).  Amazon.books should come out differently from Amazon.river.

 

All decided TLD cases: three categories of decision.  (1) post-dot info may enhance confusion: hsbc.mortgage; TM relates to the goods following the dot. (2) Traditional rule: gTLD disregarded, so lafitness.email, porsche.help, lamborghini.black. (3) Troubling cases: gTLD doesn’t distinguish; panel has found that if info doesn’t steer away from confusion, it’s confusing: volkswagen.guru, marlboro.reviews, porsche.social.  But why should VW own .guru name?  Especially since we don’t know what these spaces will become.  Example: .horse, which turns out to be a space with a lot of weird content, such as spoon.horse, walmart.horse, taylorswift.horse, etc.—playful.

 

Jake Linford: in a world with good search, does it matter? Are any of these not famous marks?  Maybe this is really anti-dilution protection in the gTLD space.

 

A: useful questions—remains to be seen how search engines will work in this new space. Even if it’s true that search engines make TLDs irrelevant, the claim was that there was a need for gTLDs.  Also, lots of TMs you’ve never heard of win their cases.

 

Won Bok Lee, Confusion in the Eye of the Beholder: Likelihood of Confusion in Trade Dress for Prescription Drugs.  Pharmacists/doctors are expected to exercise a higher degree of care. But the health implications of confusion may be very severe.  Would that logic work the same way in product design?  No, b/c doctors and pharmacists rarely rely on appearance of drugs, but on name/label—under US law, similar-looking drugs wouldn’t be found confusing.

 

Korean case: found that patients shouldn’t be considered consumers for product design.  Viagra v. PalPal.  Viagra lost: secondary meaning and nonfunctionality accepted; but consumer can’t get confused because these are prescription medications and the pharmacist fulfills the order. The appearance of the drug doesn’t matter.

 

Japanese case: Selbex, anti-ulcer drug, v. generic.  Unfair competition claim.  IP high court found capsule color/blister packaging nondistinctive; physicians and pharmacists exercise higher degree of care and won’t be confused.  The law should be construed so that the physician/pharmacist becomes the primary consumer.

 

East/West divide: who’s wrong about the right consumer?  He leans to the Eastern perspective as more reflective of realities.  You hand the prescription to the pharmacist; purchase is made before you could be confused.

 

If patient isn’t considered, then do we discount the harm to the patient for having switches?  Difference in appearance b/t generic and branded can have negative effects on patients.  Do we empower pharmacists to palm off?  No, secondary liability/liability for the pharmacist is still available.  Result: better adherence to generic; no decrease in placebo effect; no confusion about what drug to take.  These negative effects may be greater in the US where DTC advertising is permitted.

 

RT: [See also the papers in the Xalatan/Travatan case, Pharmacia v. Alcon; mostly about the name but a bit about trade dress and interaction with FDA requirements. Legal US DTC ads as key differences in secondary meaning/who is the consumer?—little purple pill; not legal in most countries.  Consumers drive medication choices in the US—70% of those who ask for a specific drug get it.  That makes it possible to argue that consumers should be considered as target consumers.]

 

Q: consider the learned intermediary doctrine from torts.  Does Korea have automatic substitution laws? [Answer: for some drugs.] That seems like a complicating factor.

 

McKenna: there are other things that can avoid passing off, like imprinting a name, that don’t involve size, shape or color.

 

Jake Linford, Are Trademarks Ever Fanciful?: Idea is that fanciful marks have no lexical meaning, don’t point to product, therefore must point to source.  A rose by any other name … No inherent relationship between word and thing it represents.  If linguistic arbitrariness were really strong, that would make sense—but that’s not the world we live in. The way sounds communicate meaning: independent of lexical meaning, sounds convey meaning.  Furniture called Mil and Mal: which is bigger?  80-90% of consumers will say Mal is bigger, and marketers understand this.  Dark beer: Gomel does better than Gimel.  Clever pro namers can hide some descriptiveness in these marks w/o lexical, dictionary meaning.  Given sound symbolism, we should recalibrate.  Tang (below) wants aesthetic functionality; he thinks that’s too strong.  (1) Assumption that sound similarity is evidence of bad faith should go where the sound similarity goes to product characteristics.  (2) Think more wholesale about sight/sound/meaning analysis—courts tend to say that we weigh similarities more heavily than differences; if those have sound symbolism packed into them, we shouldn’t do that. (3) could even act at the validity stage, where sound symbolism might justify requiring acquired distinctiveness. Maybe we should abandon Abercrombie, despite the enforcement costs that arise from it.  Not all fanciful marks may have sound symbolism.

 

Jeanne Fromer: Why not go further? Arbitrary marks aren’t arbitrary. Once you put apple on a computer, people will make links (Newton’s apple) which help the TM owner.  Is there something particular about fanciful marks?

 

A: could apply same logic to arbitrary/suggestive; the effect is worst for fanciful marks b/c they supposedly have no meaning other than the TM meaning.

 

McKenna: doing this at the confusion stage makes more sense from enforcement costs perspective.  These considerations may contribute to descriptive fair use.  What kind of evidence would you want? And why aren’t defendants doing it?

 

A: you have to find an expert, pay them, get possibly skeptical courts to accept it.  Risk of a big waste.

 

McKenna: can you imagine this argument changing particular cases?

 

A: tends to pop up in drug cases, Xalatan/Travatan.  Easier to see in medical cases.  More a different approach to how we evaluate strength. 

 

Farley: Color symbolism exists too.  Scarcity problem: we are more likely to see scarcity outside of word marks, but you’re showing that some sounds are better than others.

 

A: Breyer might be right—colors are sometimes symbolic and sometimes not.

 

Xiyin Tang, A Phonaesthetic Theory of Trademark Functionality:  Functionality applied to product design; want to turn the spotlight back to word marks.  Doesn’t mean functional in the sense of “open here” or “fragile.”  More in the aesthetic sense of a heart-shaped candy box. Study the meaning of phonemes.  Phrases can also have aesthetic meaning, not just words.  Similar evidentiary basis as previous paper; broader claims.  TM claim by university over chant “I believe we will win.”  Rolls well off the tongue, can be used to speed up as it’s chanted.  Ornamentality?  But what if it’s on hang tags—not used in ornamental position.  Still can argue that it’s an important chant because of its sonic qualities, and shouldn’t be monopolized.

 

Q: Familiarity as an independent issue?  [Familiar terms are more popular.]  Peru sued b/c it wasn’t allowed to label its pilchards sardines in the EU, even though consumers weren’t familiar with pilchards.  Sardines sounds much nicer than pilchard.

 

A: trying to find independent reason that people would like the terms.  May call for expert testimony.