Does “Dead Weeds in 1 Day” mean the entire weed will die, or just the visible part?

Posted on February 23, 2026 by rtushnet

Scotts Co. v. Procter & Gamble Co., 2026 WL 482655, No.
2:24-cv-4199 (S.D. Ohio Feb. 20, 2026)

Previously, the court rejected Scotts’ request for a
preliminary injunction of the trade dress of P&G’s Spruce brand of weed
killer products, finding that it was not likely to be confused with Scotts’
Miracle-Gro. Scotts also makes Roundup and Ortho, relevant to the false
advertising claims addressed here. The court dismissed one part of the claim
but allowed the rest to survive.

Scotts challenged four different P&G statements (combined
with certain visuals).

Dead weeds in 1 day

First, “Dead Weeds in 1 Day” and its accompanying visuals.  Scotts alleged that this was “literally false”
because Spruce weed killer will not kill the entire weed within one day. Spruce
is a “minimum risk product” as defined by the Environmental Protection Agency,
and “[t]o date, all minimum risk products work by making contact only with the
exposed portions of the plant and none directly affects the roots of the
plant.” Thus, while “[w]ith regular application at certain dosages over time, a
minimum risk product may eventually exhaust the roots’ storage of nutrients by
repeatedly removing its leaves,” it will not kill the entire weed within one
day.

Statement 2 uses the same visuals and has the same alleged
problem: “Spruce works differently by dehydrating the weed down to the roots
for dead weeds in just 1 day.”

visible results in 1 hour

Statement 3 promises “FAST Visible Results Within 1 Hour” or
“visible results in 1 hour,” accompanied by before and after visual depictions.
Scotts alleged that these “after-application images do not accurately portray
typical results” of Spruce weed killer’s effects after only one hour.

Spruce works differently image

Statement 4 is titled “Spruce Works DIFFERENTLY.” It also
says “WEEDS DEHYDRATE TO DEATH,” “1 HR,” and that “Without water, weeds
dehydrate and die fast, showing visible results in 1 hour,” and was allegedly misleading
for the same reasons.

P&G argued that Rule 9(b) should apply because false
advertising “sounds in fraud.” Although this argument routinely works in
consumer protection cases (because courts don’t like them), it fails here, as
it sometimes does in Lanham Act false advertising cases. (Never in regular
trademark cases, as far as I can recall.)

As P&G conceded, “[n]o Circuit has yet ruled on whether
Rule 9(b)’s pleading standard generally applies to Lanham Act false advertising
claims.” P&G’s theory of the law is that “if an element of any claim
‘requires an allegation of duplicity,’ it ‘implicates Rule 9(b)’s purpose’ and,
therefore, Rule 9(b)’s heightened pleading standard applies.” And, because
Scotts alleged intentional deception, the claim sounded in fraud.

But, as the court noted, “Lanham Act false advertising
claims do not have a scienter element, so it is hard to see how they would
require an allegation of duplicity.” The Sixth Circuit has applied the Rule
9(b) pleading requirements to some causes of action missing an intent
requirement on par with the intent required for fraud—for example, to innocent
misrepresentation. “But typically, courts do so when a ‘unified course of
fraudulent content’ forms the basis of those non-fraud claims—especially if
pleaded alongside fraud.” This is designed to prevent evasion of Rule 9(b).

Here, though, Scotts’ false advertising claim was based on
the allegedly false and misleading nature of the statements themselves, not on
the allegation that P&G is “willfully … intending to deceive consumers.” “That
is, if the statements are false, liability could attach even absent intent. So
there is no indication that Scotts’ actual claim is fraud, with the false
advertising claim only pled to circumvent Rule 9(b)’s strictures.”

More generally, “Lanham Act false advertising claims, while
also based on ‘false’ statements, seem different in kind than traditional fraud
claims.” Rule 9(b) is designed to ensure defendants have sufficient notice to
respond. “But allegedly false or misleading advertisements typically run over
an extended period of time, making it ‘unreasonable and contrary to the Sixth
Circuit’s liberal construction of Rule 9(b) to require Plaintiff[s] to identify
the exact day, hour or place of every advertisement’ that caused them harm.” Scotts
clearly identified the statements it challenged, providing P&G all of the
notice needed for it to respond. (It would also be possible to decide that this
satisfied 9(b), as some cases have done.)

In addition, Lanham Act claims differ because Scotts was not
alleging that it itself was defrauded, but that its customers are. “[G]iven
that Scotts itself was not the defrauded entity, some of the who, what, when,
where, and why questions that form the typical grist for Rule 9(b) may turn on
information that Scotts itself does not have—information that instead rests
only with the allegedly defrauded customers.”

Turning to the merits, Scotts plausibly alleged that
statements 2-4 were false or misleading, but not the literal falsity of
statement 1.

Recall that, on Scotts’ theory, Spruce weed killer does not
directly affect the weed’s roots, so it does not (indeed cannot) kill the
entire weed within one day (as the roots are still alive). P&G pointed out
that the visuals do not depict the subterranean portion of the plant, and
argued that “a ‘dead weed’ refers to a plant evidencing visible necrosis as
featured in the accompanying image.” A statement “cannot be literally false if
it reasonably conveys multiple meanings,” and that was the case here. “While
consumers might plausibly take ‘dead weed’ to mean that the entire plant is
dead, and will not grow back, consumers could also plausibly consider a weed
evidencing visible necrosis (i.e., the visible green part is now brown and
dead) to be a ‘dead weed.’”

Scotts did plausibly plead that Statement 1 was misleading. Statement
2 could also cross the line to literal falsity by claiming to dehydrate the
weed “down to the roots for dead weeds in just 1 day.”

This is not ambiguous. The obvious
meaning of this statement is that Spruce works—apparently in contrast to other
weed killers—by dehydrating the whole plant, including the roots. It is not
plausible that reasonable consumers would take the phrase “down to the roots”
to mean just the above-ground portion of the weed. “Down to the [whatever
thing]” conveys finality and the exhaustion of that thing. If coffee is good
“down to the last drop,” one expects that the last drop will be good, as well.
And if an event is planned “down to the last detail,” that means that the last
detail is accounted for, too. True, sometimes phrases using this structure can
mean something like “everything is gone except the thing.” For example, if a
house is burned “down to the ground,” that does not suggest that the ground
itself has burned. But even then, “down to [something]” means that the entirety
of the thing is exhausted. The house burning “down to the ground” means that
everything that can burn has; no part remains. Either way, weeds dehydrated
“down to the roots” conveys that the roots, too, are dehydrated. Accordingly,
there are not multiple reasonable interpretations of Statement 2 and Scotts has
sufficiently alleged that it is literally false and misleading.

Statements 3 & 4 were also both plausibly false and
misleading. “Scotts is alleging that weeds treated with Spruce weed killer will
not have the visible results in one hour that the images depict. Or in other
words, if you spray weeds with Spruce and wait one hour, the weeds do not in
fact look like the pictures. Whether these images are actually inaccurate, and
if the images and statements together are actually misleading consumers, are
issues the Court will address later.”

from Blogger http://tushnet.blogspot.com/2026/02/does-dead-weeds-in-1-day-mean-entire.html

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(c) licensor’s claims about competitor’s allegedly worse licenses were opinion, not falsifiable fact

Posted on February 23, 2026 by rtushnet

Tresóna Multimedia, LLC v. Pre-Cleared Ltd. D/B/A ClicknClear,
2026 WL 480858, No. 25-cv-6202 (GBD) (S.D.N.Y. Feb. 19, 2026)

Tresóna, a music copyright licensing entity, sued competitor
ClicknClear for NY state and federal false advertising. The court dismissed the
claim.

Since 2009, Tresóna has allegedly been issuing music
licenses, on behalf of music rightsholders, to a “niche market” of “scholastic,
community, and professional organizations.” Its main clients “include vocal
ensembles, marching bands, color guards, show choirs, and other similar
performing arts groups.” Its licenses cover certain musical works and sound
recordings, including for “print, synchronization, dramatic performance, and
remixing.”

ClicknClear entered the U.S. market in or about 2016 and
later attempted to move into the “niche market” that Tresóna operates in –
issuing licenses for musical works and sound recordings to scholastic,
community, and professional organizations. It offers “licenses to various
performance sports in which teams perform alongside recorded music, including
artistic swimming, cheerleading, color guard, dance, dressage, figure skating,
fitness, gymnastics, indoor skydiving, jump rope, and band/vocal ensembles.”

ClicknClear’s website informs consumers that “[t]here is
often misleading information about what rights are required for ensembles to
make an arrangement of music to accompany your routine.” ClicknClear states
that “the rights that are needed to use a song in your performance” include the
right to 1) “[p]ractise alone;” 2) “[s]et choreography to the song(s);” 3)
“make copies of the arrangement for personal (practise) use; and 4) “[p]erform
the routine in public with music: practise and competition.” ClicknClear states
that “ClicknClear offer[s] all of these rights with our standard license.”

ClicknClear further purports to offer “legal services,” on
its website, including “legal advice for owners and users of intellectual
property rights, copyright and related rights.” And it offers a “License
Verification System” (“LVS”) feature on their website that purports to evaluate
and verify third party licenses, including Tresóna’s licenses. Users select the
events at which the user is performing or competing, upload a sound recording
of the sound, and upload proof of licensing documentation. The LVS returns one
of three possible outcomes for the user; “green” for licensed, “yellow” for
unverified, and “red” for unlicensed. The LVS only returns an automatic “green”
result if the license is from ClicknClear, while any license issued by third
parties will return a “yellow” result. ClicknClear has stated that when
consumers receive an “unlicensed” or “unverified” result via the LVS, it causes
them to “panic.”

In a prominent Facebook group for marching band arrangers, an
individual defendant suggested (and then retracted after Tresóna’s C&D)
that ClicknClear is able to offer better licenses at a lower price than Tresóna
because Tresóna does not use a “pre-cleared model.” In a presentation given to
potential consumers, ClicknClear suggested that its licenses are “stronger”
than those offered by Tresóna as they cover “all” of the rights necessary,
while suggesting that “Tresóna does not offer a full license but rather only a
certificate.”

First, the challenge to ClicknClear’s statements about what
rights are necessary: Tresóna argues that the statements were both literally
and impliedly false because these are “illusory” rights that consumers do not
need in all situations. The court found that these were non-actionable opinions
about the law. “As both sides agree, the necessity of these rights involve
unclear and contested areas of copyright law. Indeed, ClicknClear and Tresóna
devote most of their briefing to arguing whether or not each subset of the
necessary rights (to set a choreographed routine, to publicly perform, and to
practice alone) are actually needed by consumers.” Given this dispute,
ClicknClear is “expressing an opinion on an inconclusive question of law” and
“not making representations of verifiable or ‘hard definable facts.’ ”

Even if these weren’t opinions, they were ambiguous:
ClicknClear mentions on its website, quite ambiguously, which rights are
“required for ensembles to make an arrangement of music to accompany your
routine.” “In order for these statements to be literally false, Tresóna would
have to plausibly allege that there is no instance in which these rights are
required.” But whether or not these rights are needed in a given case depends
on the outcome of a “fact-specific and [ ] individualized inquiry” in this
“unsettled area of copyright law.”

That didn’t prevent misleadingness, but for that, Tresóna needed
to “allege that consumers or retailers were misled or confused by the
challenged advertisement and offer facts to support that claim” or allege deliberate,
egregious deception. It didn’t. It alleged that “[c]ustomers have told Tresóna
that they are facing pressure from their federations and governing bodies to
use ClicknClear instead of Tresóna,” and “the pressure is driven at least in
part because of ClicknClear’s false and misleading statements as well as the
LVS.” But it was not enough to “identify[ ] a broad swath of people [that were]
allegedly deceived.” (Now do trademark complaints.) “Tresóna fails to identify
any ‘federations’ or ‘governing bodies’ that pressured consumers, nor does
Tresona allege how this pressure has caused customers to buy ClicknClear’s
licenses as opposed to Tresóna’s. And even if Tresóna did allege that customers
were buying ClicknClear licenses as opposed to Tresóna’s, Tresóna does not
allege how these decisions were because of ClicknClear’s necessary rights
statements as opposed to other reasons for purchasing ClicknClear’s licenses.”
[I dunno, ‘take this license and not that one to protect yourself against expensive
lawsuits’ seems pretty clear in its pressure effect.]

Merely stating that there have been “LAWSUITS for copyright
infringement” was literally true and thus not actionable. It also didn’t relate
to an “inherent quality or characteristic of the product [at issue].”

License verification system: Was it misleading that all
other licenses issued by third parties, including Tresóna’s, will return a
“yellow” result, meaning the license’s legality is “unverified,” or red for
“unlicensed”? No: “The LVS, ultimately, is an inherently subjective rating
system that evaluates the quality of third-party licenses. Indeed, the outcome
of the LVS is dependent on which factors ClicknClear believes to be important
in evaluating a license. ‘A reasonable consumer would view [LVS’s] rating as
just that – the defendant’s evaluation.’”

And even assuming the statements were impliedly false or
misleading, Tresóna similarly failed to allege sufficient indications of
consumer confusion. “The unauthorized practice of law is not a basis for a
Lanham Act claim.”

Anti-Tresóna statements: ClicknClear’s statements about
Tresóna’s “very bad reputation,” its representations that ClicknClear licenses
are “better” or “stronger” than Tresóna’s, and its assertions that ClicknClear
was in a “strong position” to harm Tresóna were nonactionable puffery.

By contrast, ClicknClear’s statements in 2021, 2024, and
2025, that Tresóna does not use a “pre-cleared model,” or that Tresóna does not
offer a full legally compliant license but instead offers a “certificate,” were
statements of facts that could be proven true or false. Still, Tresóna didn’t
offer facts as to how these statements actually misled the public or affected
their purchases, or that the statements were commercial speech: “part of an
organized campaign to penetrate the relevant market.” “The statements alleged
here, one in a Facebook post that has now been deleted, and two upon
information and belief, do not suggest ‘widespread dissemination within the
relevant industry,’ and more aptly resemble ‘isolated disparaging statements’
that ‘do not have redress under the Lanham Act.’”

The court didn’t have to reach the state claims, but it commented
that Tresóna also failed to allege how ClicknClear’s statement constituted harm
to the public interest, as opposed to another business.

from Blogger http://tushnet.blogspot.com/2026/02/c-licensors-claims-about-competitors.html

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Fairlife brand name plausibly misleading where cows allegedly lived abuse-filled lives of suffering

Posted on February 18, 2026 by rtushnet

Bhotiwihok v. Fairlife, LLC, № 2:25-cv-01650-ODW (AGRx), 2026
WL 413749 (C.D. Cal. Feb. 13, 2026)

“In 2014, Select Milk, a dairy cooperative, partnered with
Coca-Cola to launch Fairlife, a company with an eponymous line of premium milk
and milk products…. Fairlife promotes, and charges more for, high levels of
environmental sustainability and animal care.”

Fairlife bottles include the phrase “Recycle Me” on their
labels and are stamped with a recyclability arrow, and it claims that its farms
are “top in the industry for environmental sustainability.” Plaintiffs alleged
that 0% of Fairlife bottles are recyclable and that the sustainability
practices at Fairlife’s farms cause disproportionate environmental damage.

Fairlife also allegedly claims to follow industry-leading
animal care standards and to have zero tolerance for abusive practices at farms
supplying its milk, as represented by its logo:

But successive independent investigations have allegedly uncovered
“horrendous animal abuse” at farms supplying Fairlife’s milk, which I will not
recite but are indeed horrendous.

Plaintiffs alleged the usual
California claims.   

Although the court found that plaintiffs hadn’t plausibly
alleged enough Coca-Cola involvement to keep the parent company in, claims
against Fairlife survived. The only allegations with sufficient particularity
involved the Fairlife Logo and the recyclability claims on Fairlife’s bottle
label. Nor did plaintiffs successfully plead fraudulent omission. Courts have
required plaintiffs to “describe the content of the omission and where the
omitted information should or could have been revealed, as well as provide
representative samples of advertisements, offers, or other representations that
plaintiff relied on to make her purchase and that failed to include the
allegedly omitted information.” Although plaintiffs pled that Fairlife
“intentionally fail[ed] to disclose material information about the products,”
including that Fairlife’s products are derived from abused cows and that the
products’ packaging is not recyclable, they didn’t identify where this
information should or could have been revealed or which specific
“advertisements, offers, or other representations” omitted critical information.
Leave to amend granted if there was more.

Fairlife logo

Claims based on the logo survived as a plausible misrepresentation
of Fairlife’s animal care practices. “[B]rand names can be an especially
powerful source of misleading information,” even if the brand name itself is
not a recognized word. Combining the words “fair” and “life” together in a
brand name “may reasonably lead to the assumption that the subject of the brand
lives a ‘fair life.’” Superimposed on a cartoon picture of a cow, “the
implication becomes unmistakable: the cows are living a fair life. Thus, it is
well within reason for a consumer to believe that, based on the Fairlife logo,
the cows supplying Fairlife’s dairy products are living lives free from abuse.”

Fairlife argues that its logo was nonactionable puffery. But
the Fairlife brand name, “at bottom, suggests that the cows are living lives
free from abuse.” That was specific enough for a reasonable consumer to rely
on, especially in context of the cow image. “Taking as true at this pleading
stage the substantial evidence that shows Fairlife sources its dairy from cows
that live dreadful and appalling lives, it is plausible that Fairlife’s
labeling is misleading.” This may be an example of the line of cases that
refuses to find puffery when no reasonable person could agree that an otherwise
capacious term applied.

Recyclability claims on the bottle: Fairlife argued that California
provided a safe harbor provision through October 4, 2026. The FAL’s specific regulation
of recyclability claims specifically does not apply to “[a]ny product or
packaging that is manufactured up to 18 months after the date the department
publishes the first material characterization study required” by the law (or
before January 1, 2024 if that was later). “Read plainly, it appears that the
California Legislature intended to give companies eighteen months after
publication of a generally applicable material characterization study to comply
with recycling guidelines.” This occurred on April 4, 2024. This safe harbor provision
foreclosed the recyclability claims until later in the year. When “specific
legislation provides a ‘safe harbor,’ plaintiffs may not use the general unfair
competition law to assault that harbor.” Nor may they use express warranty
claims.

from Blogger http://tushnet.blogspot.com/2026/02/fairlife-brand-name-plausibly.html

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disgorgement can’t be a lottery windfall–even when D was engaged in illegal gambling

Posted on February 16, 2026 by rtushnet

TNT Amusements, Inc. v. Torch Electronics, LLC, 2026 WL
411747, No. 4:23-CV-330-JAR (E.D. Mo. Feb. 13, 2025)

Previously.
TNT leases traditional arcade games in retail locations throughout Missouri.
Torch Electronics leases “no-chance” gaming devices in the same market. A jury
accepted TNT’s argument that Torch’s devices are illegal slot machines that
divert TNT’s customers in violation of state law. Statements that the devices
eliminated chance were false, and therefore the statement “this amusement
device does not fit any definition of a ‘gambling device’ in the state of
Missouri and is not prohibited for use by you” was also false. The jury awarded
$500,000 in damages, which the court found was $125,000 for lost profits and
the rest for injuries to TNT’s reputation and goodwill. (In a separate opinion,
2026 WL 413322, the court enters declaratory judgment that these are illegal
gambling devices in Missouri, given the trial evidence, including from both
parties’ experts, that the games contain “multiple elements of chance.”)

The court also found the case exceptional for purposes of
attorneys’ fees. “[T]he Missouri Gaming Commission declared Torch Devices
illegal in 2019. However, because the Commission’s jurisdiction is limited to
licensed operators, Torch simply ignored the Commission’s opinion and continued
to operate outside the Commission’s regulatory reach.” The Missouri Highway
Patrol and multiple local law enforcement agencies also warned Torch that its
devices were illegal, and several prosecutors pursued charges against its
customers, and one store was convicted. “Missouri jurisprudence since 1913 has
held that a gaming machine with a prize viewer is still a gambling device.
Appellate courts in sister states have reached the same conclusion in recent
years, as cited in the Commission’s 2019 opinion.”

Thus, “Torch was on notice since at least 2019 that its
commercial representations defied the realities of the legal landscape and were
therefore willfully and deliberately false when viewed in context. Torch simply
chose to ignore existing authority in pursuit of profit. For the same reasons,
the substantive strength of TNT’s position, both in fact and law, was
exceptionally compelling, as reflected by the jury’s swift and significant
verdict in TNT’s favor.” There were also some litigation shenanigans.

The court also planned to award partial disgorgement;
out-of-circuit precedent suggests as factors “whether the defendant had the
intent to confuse or deceive, whether sales have been diverted, the adequacy of
other remedies, any unreasonable delay by the plaintiff in asserting its
rights, the public interest in making the misconduct unprofitable, and whether
the case involves palming off.” And, as the Supreme Court said, “A ‘defendant’s
mental state is a highly important consideration in determining whether an
award of profits is appropriate.’ ” Ultimately, “the district court is given
broad discretion to award the monetary relief necessary to serve the interests
of justice, provided it does not award such relief as a penalty.”

From 2017 to 2023, Torch collected over $5.5 million from
100 machines in locations where it overlapped with TNT, though Torch operates
more than 6,000 devices statewide and might have profited by $68 million in the
past year alone. The court declined to order statewide disgorgement (which
suggests that Torch will still continue to break the law unless stopped by
regulators) but did ask for briefing on appropriate disgorgement.

Torch relied on Retractable Techs., Inc. v. Becton Dickinson
& Co., 919 F.3d 869 (5th Cir. 2019), “where the Fifth Circuit opined that
disgorgement, separate from recovery of diverted profits, would have
constituted a windfall to the plaintiff.” The court found this non-binding case
“largely inapposite,” but noted that it still affirmed the broad discretion of
a district court to consider the equities.

Torch also argued that it had a good faith belief in the veracity
of its statements, based on a 2017 opinion letter from a Chicago law firm and
the fact that some county prosecutors opted not to pursue charges involving
Torch devices. “But the opinion letter was supplied by an Illinois lawyer prior
to the Missouri Gaming Commission’s unequivocal warning in 2019, and the county
prosecutors who abstained from pursuing charges did so in direct reliance on
Torch’s false statements at issue here…. Overall, the evidence belies any
objectively reasonable claim of good faith.”

In addition, Truck Equip. Serv. Co. v. Fruehauf Corp., 536
F.2d 1210 (8th Cir. 1976), although based on an earlier version of the statute,
supported the view that “where the evidence shows willfulness and bad faith,
disgorgement may exceed a plaintiff’s demonstrated losses in order to serve as
a deterrent.” The court was also sympathetic to TNT’s argument that “the Lanham
Act offers multiple forms of recovery precisely due to the inadequacy of
diverted sales and the difficulty of proving the full extent to which a
defendant’s misconduct has harmed the plaintiff or impacted the market.” The
court wasn’t convinced that the amount awarded by the jury fully compensated
TNT for the totality of its market injury, given that TNT was a
long-established business that suffered a loss of 35% after Torch entered; some
of TNT’s accounts lost to Torch had been TNT customers for 20 to 30 years. Though
the parties compete for floor space, TNT’s owner explained that “it’s not a
fair fight” and “We can’t generate the revenue that slot machines generate.”

The court also found that deterrence was an important
consideration and that disgorgement would serve the interests of justice and further
the public interest of making Torch’s conduct unprofitable. “If Torch hadn’t
falsely represented and marketed its devices as ‘no-chance’ games exempt from
Missouri’s definition of a gambling device, Torch couldn’t have operated
anywhere in its current territory. Rather, it could only have operated in
licensed casinos subject to state gaming taxes benefiting public education. One
hundred percent of its revenue is attributable to its misrepresentations.”

However, given the scope of Torch’s operations, “a
disgorgement award sufficient to render Torch’s advertising unprofitable would
inevitably result in a ‘lottery-level windfall’ to TNT.” Thus, disgorgement
limited to overlapping locations was appropriate to deter Torch’s willful
conduct “and render it at least slightly less profitable, to fully compensate
TNT for its market loss, and to serve the greater interests of justice given
the unique circumstances of this case.” Consumers spent over $32 million on Torch
devices in overlapping locations alone during the relevant period. “Torch has
profited tremendously from its misrepresentations and had avoided regulation,
taxation, and prosecution by virtue of its government relations efforts and the
Gaming Commission’s limited jurisdiction. In this regulatory void, TNT’s
lawsuit not only vindicates its own competitive interests but also protects
consumers from the fallacy of ‘no-chance’ gaming going forward.” Further
briefing, and possibly discovery, was required to set the size of the award.

from Blogger http://tushnet.blogspot.com/2026/02/disgorgement-cant-be-lottery-windfall.html

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CFP: emerging First Amendment scholars

Posted on February 10, 2026 by rtushnet

Second Annual Aspiring Free Speech Scholars Workshop
jointly sponsored by the Sandra Day O’Connor College of Law (ASU)
and the Hoover Institution (Stanford University)

Are
you a law student, judicial law clerk, lawyer, or beginning academic
hoping to publish a journal article on free speech law? Would you like
the opportunity to get advice about your draft from leading free speech
scholars?

If so, send us your draft by Sunday, August 16, 2026.
(This should still be a draft article, not an article that’s already
published or expected to be published within six months.) We plan to
select the submissions that we think are particularly promising, and invite their authors to a workshop where
they can present their papers and get helpful feedback on them. The
workshop will be Saturday, October 24, 2026 (with dinner the night
before) at the Sandra Day O’Connor College of Law in Phoenix, and we
will inform the selected authors by Tuesday, September 8, 2026.

We have funds to pay for transportation and lodging for the selected authors’ trips. Eligibility is limited to people who have so far published three or fewer law-related journal articles. 

We also plan to officially recognize
zero to three of the top articles among those we review. If the authors
wish, they can also have their articles reviewed for publication in the
Journal of Free Speech Law (http://JournalOfFreeSpeechLaw.org), presumably after they revise the articles in light of the workshop feedback.

If you’re interested, please submit your draft at http://tinyurl.com/aspiring-free-speech (Google logon required). Please single-space, and format the article nicely, so we can more easily read it.

Please do not include your name or law school affiliation
in the document or document filename, and please do not include an
author’s note thanking your advisors and others. Please make your
filename be the title of your article (or some recognizable subset of
the article title). We want to review the article drafts without knowing
the authors’ identities.

If you have questions, please check http://tinyurl.com/aspiring-free-speech-faq; if your question isn’t answered there, please e-mail volokh@stanford.edu.

Many thanks to the Stanton Foundation for its generous support.

* * *

James
Weinstein, Dan Cracchiolo Chair in Constitutional Law and Professor of
Law, Sandra Day O’Connor College of Law, Arizona State University

Eugene
Volokh, Thomas M. Siebel Senior Fellow, Hoover Institution (Stanford
University), and Gary T. Schwartz Distinguished Professor of Law
Emeritus, UCLA School of Law

from Blogger http://tushnet.blogspot.com/2026/02/cfp-emerging-first-amendment-scholars.html

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“ambiguity” is taking hold in consumer protection class actions, but it’s not the Lanham Act concept

Posted on February 6, 2026 by rtushnet

Ramirez v. S. Martinelli & Co., 2026 WL 272621, No.
25-cv-07569-NC (N.D. Cal. Feb. 2, 2026)

Martinelli’s apple juice products’ front labels state either
“Premium 100% Juice Not From Concentrate” or “100% Juice From U.S. Grown Fresh
Apples.” The products now contain ascorbic acid, a preservative, listed in the
ingredients on the products’ back labels. Martinelli allegedly intentionally
designed the products’ labeling so they appear to contain only juice because
consumers are willing to pay more for a product without additives, and charges
roughly fifty percent more than comparators. FDA and state law allegedly
requires “with added preservatives” on the front label.

Plaintiffs brought NY and California
statutory claims, which the court declined to dismiss.

The court found deception plausible: “Premium 100% Juice Not
From Concentrate” and “100% Juice from U.S. Grown Fresh Apples” were “likely to
deceive a reasonable consumer into believing that the products contain only
apple juice, without other ingredients. That is, reasonable consumers could see
the front label as making an unambiguous representation which would not require
further information.”

Under consumer protection precedents, “[j]ust because the
labels are subject to two reasonable interpretations—that the product is 100%
juice, or that the juice is 100% from fresh apples/not from concentrate—does
not make it ambiguous” such that a reasonable consumer is required to consult
the back label.  Instead, the labels
could be “unambiguously deceptive to an ordinary consumer, such that the
consumer would feel no need to look at the back label.” 

[I think it’s bad to have two different definitions of
“unambiguous,” one for competitors and one for consumers, applied to the same
“false advertising” concept, especially since none of the courts I’ve seen have
acknowledged this difference or given a theoretical justification therefor.
These conflicting definitions are inevitably going to cause legal confusion.
“Plausibly sufficient to convey a specific false message, without the consumer
needing to check for more information” might be better than “unambiguous” for
the consumer protection class action context; it much better captures the
concept although it is of course longer.]

Nor did the claims rest solely on a violation of federal law:
the front labels were plausibly misleading and the plaintiffs alleged reliance
and resulting injury.

The court did kick out a punitive damages request, but not
warranty/unjust enrichment claims or a request for injunctive relief.

from Blogger http://tushnet.blogspot.com/2026/02/ambiguity-is-taking-hold-in-consumer.html

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conducting dueling internet searches converts attys into fact witnesses in TM case

Posted on February 6, 2026 by rtushnet

Vicious Brands, Inc. v. Face Co., No. 24-cv-04996-LJC, 2026
WL 276178 (N.D. Cal. Feb. 3, 2026) (magistrate)

Plaintiff, aka Saints & Sinners, sued Face, aka Skin
Saint, alleging trademark infringement and false advertising. The court granted
the motion to dismiss the false advertising claims but denied summary judgment
on trademark infringement, except for reverse confusion, reflecting the higher
barriers to false advertising claims.

Plaintiff has sold Saints & Sinners haircare products
since 2016, using a mark that includes two horizontally conjoined instances of
the letter S:

It has registrations including that mark.

Defendants sell beauty consultation services and skincare
products under the Skin Saint trade name, using a mark that consists of two
vertically conjoined instances of the letter S:

They began using it in 2021; Saints & Sinners first
learned of it in 2023. “Defendants sell their products through a physical
location in Michigan and, to a lesser extent, nationally through their website”
and through shop.app. They promote themselves on social media and some national
television appearances.

Saints & Sinners alleged that it has been planning to
expand into skincare.

False advertising: Saints & Sinners alleged that
“Defendants have engaged in false advertising by making misleading and
deceptive claims about their products in commercial advertisements and
promotions, including representations that their products are medical grade,
provide anti-aging results equivalent to that of medical cosmetic treatments
like injectable fillers and toxins, and reverse/prevent aging changes in the
skin.”

But Saints & Sinners didn’t have standing because there
was no imminent injury. (Why is there standing to claim trademark infringement,
then? Sigh.)

It alleged that it was “ready to launch its skincare line
upon finalization of product attributes and regulatory review,” and that its
products would “directly compete with the serums, creams, and other topical
formulations marketed and sold under Defendants’ brand … namely: cleanser;
moisturizer; creams; cleansers [sic]; toners; masks; skin treatments; and
serums, all in Class 3.” It also alleged that both parties sell through
e-commerce to the same general consumer demographics seeking moisturizing,
antioxidant, and anti-aging skincare products, targeting the same customer
demographics— “customers seeking luxury and performance skincare products”—and sold
through overlapping channels, including online retail/ecommerce platforms like
Amazon.

The Supreme Court has “repeatedly reiterated that threatened
injury must be certainly impending to constitute injury in fact, and that
allegations of possible future injury are not sufficient.” In Lanham Act cases,
the Ninth Circuit has “generally presumed commercial injury when defendant and
plaintiff are direct competitors and defendant’s misrepresentation has a
tendency to mislead consumers.” A plaintiff can meet that burden “using actual
market experience and probable market behavior,” which in the absence of “lost
sales data” might be done by “creating a chain of inferences showing how
defendant’s false advertising could harm plaintiff’s business.” At issue here
was “harm to reputation or sales, which generally arises from direct
competition.”

For Article III, the court pointed to the classic Lujan
case, where environmental plaintiffs’ “mere profession of an intent, some day,
to return” to sites allegedly harmed by the challenged projects was
insufficient to satisfy Article III’s injury requirement. As there, “the
plaintiff alleges only an injury at some indefinite future time, and the acts
necessary to make the injury happen are at least partly within the plaintiff’s
own control.”

In Tercica, Inc. v. Insmed Inc., No. C 05-5027 SBA, 2006 WL
1626930 (N.D. Cal. June 9, 2006), the court found false advertising standing against
an intended competitor in the pharmaceutical industry where the plaintiff had
obtained “FDA approval … and product distribution [was] likely imminent.” And
courts and commentators have stated that “actively preparing to produce the
article in question” is sufficient as “the last point before the point of no
return” in the context of declaratory judgments. But this wasn’t a declaratory
judgment case where the plaintiff would otherwise risk infringement liability. “So
long as there are necessary steps beyond Plaintiff’s control, or doubt as to if
or when a competing product will actually come to market, Plaintiff has alleged
only ‘possible future injury’ as a result of Defendants’ purportedly false
advertising, rather than the ‘certainly impending’ injury necessary ‘to
constitute injury in fact.’” The allegations here indicated that Saints &
Sinners’ products remain subject to “finalization of product attributes and
regulatory review” before they come to market, “raising questions of whether
their launch could still be derailed.”

This analysis also applied to statutory standing under Lexmark.
The court did, however, reject any suggestion that a competitor in a “market
[with] numerous participants” lacks a sufficient expectation of “
‘automatically’ displace[d]” sales to support standing under the Lanham Act— “a
premise that would seem to preclude most if not all Lanham Act false
advertising claims in typical markets with multiple competitors.” The
allegations of the complaint were sufficient to support a plausible inference
that, if or when Sinners & Saints products come to market, at least some of
them will compete directly with at least some of defendants’ products. Leave to
amend granted.

Trademark/summary judgment: I gotta admit, this one seems
extremely thin to me, but nonetheless the parties must proceed on the forward
confusion theory.

Plaintiff’s double-S mark appears on many (perhaps all) of its
products, typically with the double-S mark positioned above Saints &
Sinners, which is in turn positioned above a product title. The product
packaging tends to be a solid color or gradient, with the mark and text
generally displayed in monochrome white, silver, or black. Saints & Sinners
products are mostly sold at suggested retail prices ranging from $20 to $95, and
in third-party beauty subscription boxes. And, as discussed, Saints &
Sinners planned to expand.

Skin Saint’s founder testified at a deposition that she used
a “logo generator” to develop a new mark in 2020, and settled on the double-S
mark because it was visually appealing and resembled her logo for her related
FACE clinic, which “is a wave with an F.” She did not research whether the mark
was similar to other marks used by other companies. Skin Saint’s products often
display their double-S mark positioned vertically above the words “SKIN SAINT,”
in turn above a product name or description. The packaging is white and the
mark and text are black. Since they began using the accused mark in 2021, defendants
have sold significantly more Skin Saint products through their clinic than
through their website.

Saints & Sinners learned of Skin Saint’s mark from a
trademark watch report that characterized defendants’ mark as having a “Low
risk” of conflict with plaintiff’s mark. Plaintiff nonetheless opposed, which
is ongoing.

Plaintiff’s counsel offered “screenshots of searches [he]
personally conducted on the SHOP.app website” that show some of defendants’
products among search results for the search query “Saints and Sinners
skincare” and other similar queries. But defense counsel was unable to
replicate those results and did not find any of defendants’ products when
running the same searches on Shop.app. (Hmm… a personalized algorithm might be
doing this if, as is plausible, plaintiff’s counsel had sought out defendants’
products before.) Defendants’ sales through Shop.app were 28 orders for a total
of $2,468 in the first ten months of 2025 and less in 2024.

There was no evidence of actual confusion or other harm. “A
Google search for either party’s name does not return the other party’s website
or products in the first ten pages of results.” Several other skincare and
haircare brands use marks with a double S, but none use “saint” or “sinner” in
their trade names.

Saints & Sinners also submitted an expert declaration from
“a beauty industry consultan[t] specializing in market strategy and consumer
behavior across skincare, haircare, and adjacent personal care categories” who opined
that haircare and skincare markets were converging to focus on scalp care (the “skinnification”
of hair), that impulse buying of beauty products in the social media era was
common, and that consumer confusion was likely, although the court didn’t rely
on that last for its summary judgment ruling.  

As for those searches on shop.app: “Whether intentionally or
not, both parties’ attorneys have made themselves fact witnesses, and the Court
now orders that the parties may take their depositions regarding the limited
issue of their Shop.app searches within the time that the parties have reserved
for other specific depositions.” The court wouldn’t disregard either parties’ attorneys’
searches. [Not sure depositions would help if the issue is algorithms! Bringing
in the specific computers, or at least logging in as the specific attorneys, might
do more.]

Basically, the multifactor confusion inquiry means that it’s
hard to grant summary judgment for defendants. Unfortunately, along with deeming
the double-S logo arbitrary and possessed of some commercial strength, the
court also quoted out-of-circuit precedent that incontestable registrations “are presumed to be strong marks.” [I didn’t pull the registrations–but the description that the registrations “include” rather than consist of the double-S would also cut against this conclusion, since what is incontestable is the registration as a whole, not parts of it.]

For reverse confusion, though, “Defendants’ relatively
modest sales—at least on the scale of the national skincare or beauty market as
a whole—undermine any implication that Defendants pose a serious risk of
dominating the public’s perception of the market.”

And, though the parties’ “marks have meaningful differences,
such that someone comparing them side by side would never consider them to be
the same mark,” there was enough similarity to go to a jury, even though it was
perhaps “a close call,” given the parties’ monochromatic color palettes and
overlapping use of “saint.”

And, even if a lack of survey evidence should be presumed to
favor the defendant, “whether a presumption has been overcome is normally a
question for the jury.” [I think this presumption is best applied to large
companies with large litigation budgets: if P&G doesn’t submit a survey, we
can infer that it expected bad results. I don’t think it’s a good idea to
disregard the absence of a survey in all summary judgment contexts, but the
court here does because it focuses on the Ninth Circuit’s caution that summary
judgment is disfavored in trademark infringement cases.]

Likewise, the court discounted the absence of any actual
confusion evidence because the parties weren’t in “direct local competition
over a period of several years.” “It remains possible that consumers have
confused the two marks, and either purchased or declined to purchase products
based on that mistake, without alerting either party to their having done so.”
How is the jury to assess this possibility in assessing likelihood?

from Blogger http://tushnet.blogspot.com/2026/02/conducting-dueling-internet-searches.html

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Santa Clara IP Conference: Where Do We Go From Here?

Posted on January 31, 2026 by rtushnet

Moderator: Edward Lee, Santa Clara Law

BJ Ard (copyright), University of Wisconsin Law School

© is often displaced by contract and other regimes in sectors—scaling
it up or down would produce minimal impact. Consumer copying for example is
often solved by non-© solutions: Spotify changed things, as did rise of
cloud-based services which meant people had less to share. Content ID can block
fair use but does allow lots of uses that otherwise wouldn’t be fair. Even
big-budget productions, like video games, don’t rely on © to deter
second-comers but on features that are costly to duplicate, actors/TM/ROP
protection, sequelization. It’s not that this sector is representative but hybrid
relations that are only partly ©-governed exist across the board. Copyright
owners use licensing models to overwrite © provisions. Streaming services
continue this trend w/no need for legal enforcement b/c access is built into the
system.

© is the only policymaking place where concerns about AI are
actually being aired, but © can’t stop AI; big © owners are going to license.
Given that © isn’t doing as much work in its traditional domains, we shouldn’t
expect it to do work in these new domains. Asking it to solve labor issues,
market concentration, privacy is likely to fail.

Colleen Chien (patent): AI’s effects on search for
examination; AI can also identify potentially infringing products. AI tools
used to digest evidence and make predictions. As we see platforms start to make
their own IP infringement determinations, we might find them “good enough” w/o
need for lawyers. Discussed need for human review—need to figure out.

Camilla Hrdy (trade secret), Rutgers Law School

Trade secret law is different from other IP; often not
defined until mid litigation where you perform “identification,” the law of
which is in chaos. California wants you to identify the secret before discovery;
courts had maybe been converging on that but the 9th Circuit said
no, the Defend Trade Secrets Act has a different standard—not reasonable
particularity but sufficient particularity; other circuits say different
things. Lack of clarity on fundamental initial issue. What does it mean to keep
something secret? Not clear; jury left on its own. What does it mean for a
secret to be readily ascertainable? In California, the most important trade
secret jurisdiction, there isn’t a requirement of lack of ready
ascertainability—even if you could perform reverse engineering in 8 hours you
can still be liable for getting it from an employee. NJ has the same rule. Lots
of lack of clarity about workers’ high level knowledge and experience—lots of
courts think that asking about that is the same as asking whether something is
generally known in the field. Not clear about what it takes for a secret to
have independent economic value—lots of courts just look at whether you
invested in the information. We need more people thinking about trade secret
law! People need to talk to practitioners. We don’t know enough!

Keith Robinson (patent), Wake Forest University School of
Law

Uncertainty around what counts as invention. Mental
conception doesn’t really match with the evidence we look for (documentary:
notebook, emails, other records). Identifying a problem rarely matters. Even a
highly specific articulation of a problem is typically insufficient unless
paired w/ a concrete solution.

Jennifer Rothman (right of publicity), Univ. of Pennsylvania
Carey Law School

Identity thicket: overlapping rights. People have been
registering marks in names/likenesses for a while; current focus on Matthew
McConaghey is perplexing to her (and me). But we might highlight how rights are
being separated out w/potentially different controllers and licensees. There
used to be a lot more distinction b/t people using name as business name/putting
it on goods/services. But now the Lanham Act and states protect use of names,
voices, and images as marks, at least if we are commercializing them in some
way. The PR stunt of the registrations is more interesting: he has a deal for
use of his voice as a voice clone that can speak multiple languages—it’s a way
to market his deal. False advertising law is also relevant to these uses. © is
also relevant and maybe is less peripheral than Ard said. Are digital replicas
uncopyrightable? Unclear! There are pending registrations. If registrable, can
there be multiple registrations of a digital replica as you can have multiple
registrations of photos of a person? If so, what’s infringement? We’ll see
people leveraging © this way more. © one’s personality or “character” bible in
the same way people © scripts. Music industry has already made © claims that
using similar voices is infringing.

At the federal level Take It Down is about intimate images;
No Fakes is also under consideration to regulate digital replicas generally.
There’s so much going on: that’s the identity thicket. And one person might not
control all these rights; rights conflicts are possible, raising serious
concerns about a human-centered approach. Compare to EU approach, focusing on
concerns about the underlying person being depicted and secondarily on the
public.

Capitol Hill: not clear what will happen, if anything. But
it won’t help matters very much b/c unlikely to preempt the thicket that
already exists. And won’t address concerns about transferring rights away from
underlying person, or about deception licensed by the underlying person. Considering
model state ROP law to address more of these issues, especially transferring
someone’s own name, likeness etc away from them—has seen SAG realize this is a
problem. Might see more of an appetite for repealing CDA 230; shifts in tech to
build guardrails; we might see shifts in preferences for authenticity—hopes for
the renaissance of theater.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-ip-conference-where-do-we.html

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Santa Clara IP conference: How It’s Going: What Went Wrong?

Posted on January 30, 2026 by rtushnet

Moderator: Zahr Said, Santa Clara Law

Mark Lemley (patent), Stanford Law School

After 40 years of radical change, things settled down for
normalcy in the last 10 years until Trump. 1980-2017: we grant 350,000 a year up
from 50,000; now mostly computer/bio instead of mechanical; most inventors were
single and now they’re teams; most inventors were from US and now they’re
mostly foreign. University patenting started in 1980; now significant. Now
first to file (not first to invent); now 20 years from filing (instead of 17
from grant). Patent thickets; patent continuation practice—multiplication from
a single application to multiple patents. Lawsuit numbers have tripled. Jury
trial was starting to become a thing in 1970s but a small percentage; now a
vast majority of trials are before juries. Product producers used to file
against competitors; now 50% of lawsuits are filed by NPEs. Patents were
invalidated in 70s at around 65%; now it’s 43-45%. 1982: patent appeals consolidated
in Fed Cir. Before 1980 there was no reexamination; then inter partes reexam
and post-grant review; IPR proceedings became the way most patent validity
disputes were resolved. Introduced district court forum shopping—ED Tex, WD
Tex, D Del were not where we litigated in 1980.

Hatch-Waxman/pharma litigation against generics didn’t exist
until 1984, so pharma patent litigation grows from there. Patent claim Markman hearings
were created in 1990s, cemented in 1996; before then, we didn’t know the answer
to “who decides what a patent means, a judge or a jury?”

Then there are substantive changes: patentable subject
matter broadened to almost everything, then narrowed again. Major changes in
prior art; major changes in interferences; obviousness law changed in
fundamental ways, narrowing then broadening. Utility doctrine weakened, written
description doctrine and full scope enablement became things. All real disputes
about infringement are resolved in Markman hearings; changed law of inducement;
new concept of joint or divided infringement; we strike down large swathes of
rules on inequitable conduct. Ebay changes the rules for injunctive relief: no
longer injunctions as a matter of course. We introduce apportionment of damages
(renewed from 19th century); we change rules on willfullness/advice
of counsel and venue.

If you’ve been litigating for 40 years, everything in the
system has changed/been in flux, until about 2017. Not much happened since
then! A period of normalcy. 62 SCt patent cases 1982-2018, and none in last 3
terms. Recent SCt decisions have had “instinct for the capillary”—clarification
of assignor estoppel, not the central issue in patent law. 3 cases on 271(f)
about exporting components from the US that are combined outside the US: the
only 3 cases on 271(f) of which he is aware. Whether the post office is a “person”
under the Patent Act. Not earthshaking! Contrast to KSR, eBay, and patentable
subject matter cases before. Substantive cases began to affirm existing law rather
than change it. Fed Cir has also settled down: en bancs used to be 2x/any other
circuit, but only 2 in last 7 years (1 design patent, another a damages case
that was a dud). Fed Cir Dissent rate dropped from 2d highest to one of lowest;
many cases now not precedential.

IPRs turned out to have the same invalidity rate as courts
at 1/10 the cost. Even patentable subject matter is pretty predictable. There
are still cases but they don’t make fundamental changes.

This is generally a good story.

Then Trump. All is in flux. New PTO director dismantling
large swaths of PTO, making IPRs essentially impossible to get; increased
quotas; refused to hire new career examiners, offers no promotion path; on
track to replace examination with AI; Lemley is skeptical. Part of a broader chaos
targeting scientific research; 100% tariff on patented pharmaceuticals to
somehow magically reduce drug price; taxing university patents; proposing tax
on patents’ assessed value at time of filing. Not clear whether normalcy
survives.

Mark McKenna (trademark), UCLA School of Law

Conceptual changes that transformed what TM is mostly for
the worst. (1) unbounded expansion of the concept of source in TM. Source used
to mean actual historical source: who made the thing you were buying.
Infringement was very tightly limited to where consumers would believe D’s
products came from P. That was passing off. Only someone tricking consumers
into buying directly competing goods—very tightly connected to TM’s theory of harm:
illegitimate diversion of trade. Courts, primary drivers here, came to regard
that definition as overly limited; commerce was changing and courts wanted to
capture newer commercial practices, specifically outsourcing of production and
expansion of product lines to adjacent areas by companies—wanted to let Coca
Cola to license production to independent bottlers and still maintaining rights.
Redefined source as “control over quality” instead of actual historical source.
Also started to recognize confusion about use of same mark on products that
didn’t compete directly, like pancake mix and syrup. Unmoored TM from
traditional focus on direct competition and we never replaced it with a real
limit. “Sponsorship or affiliation” confusion is the worst; so open-ended that
virtually any conceivable connection can be conceived in those terms even
though it has different effects on consumers/competition more broadly. Net effect:
confusion is performance art—parties need to use that word, but that’s not what
the cases are really about, which is rights in gross.

(2) Connected and mutually reinforcing: structural collapse
of what used to be a separate but related body of unfair competition law into
TM, and resulting expansion of TM subject matter. Once upon a time, only
certain things could be TMs, words or devices that didn’t give info about
nature of goods/geographic origin: arbitrary/fanciful words/devices that were
separate from but attached to the goods. Personal names, descriptive terms, product
packaging/product design wouldn’t count; service marks weren’t affixed to anything
for sale. Only technical TMs could be infringed; unfair competition law was not
about what somebody owned, b/c by definition they didn’t own anything. P had to
show that D was passing off even w/o a TM, so there were additional proof
requirements and generally much more limited remedies. Would not bar use of
descriptive word, etc.

That system collapsed, mostly b/c of Erie. Unfair
competition became understood as state law, not common law, and federal courts
started to believe they couldn’t have common law, making lawyers worry about 50
different kinds of unfair competition law. That lack of uniformity wasn’t
really happening but courts and lawyers worried that it might. Solved by
recharacterizing things that used to be excluded from TM and calling them “unregistered
TMs.” Those things were previously unregistrable, not just unregistered.
Courts started interpreting 43(a) to give a cause of action for infringement of
unregistered TMs. Not what Congress anticipated. Huge change. We lost the
orientation of unfair competition as a residual doctrine w/more limited
remedies and got a huge amount of subject matter where we didn’t have rules about
what could be owned. Had to build that law about what could be owned from
scratch and haven’t been particularly successful.

These two things amplify each other: TM is redefined as
anything that can indicate source as we’ve expanded source beyond recognition.
Incremental; radicalism not notice. Courts act like the assumptions they used
to hold under the old system still apply, even though the changes are too great
to make that true.

Trevor Reed (copyright), UC Irvine School of Law

Indigenous creative rights: © is silent on status of citizens
of over 500 tribes, despite importance of Indian culture to 1970s American
culture. Many pieces of indigenous self-determination legislation in the 70s.

Mismatch b/t © and tribal sovereignty: tribes often regulate
traditional knowledge; © might call it public domain or give it only thin
protection. Eurocentric assumptions: limited times, transfers to certain people
only, money is a sufficient remedy, it doesn’t matter where the creativity
occurs; divides intangible from tangible. Ignores tribal sovereignty; 301
preemption can conflict. Tribes should, among other things, be able to take
over registration and deposit. His objections: Should be no public domain for
tribal creativity w/o tribal authorization; federal remedies for violation of
tribal rights; tribal courts should be recognized as venues for © claims and tribes’
regulatory authority should be formally recognized.

Pamela Samuelson (copyright), UC Berkeley Law

Statutory damages are the worst! Evolution: until 1909 Act,
there was a per sheet penalty dating back to the Statute of Anne, and statutory
damages were an improvement (anybody could ask for the PSP and half of the
money went to the US gov’t; not used often). Particularly useful when
difficult/expensive to prove damages; courts had discretion to grant statutory
damages but generally wouldn’t if damages or profits were measurable. Nonpunitive
way to get some compensation and deterrence.

1976: good parts: tripartite structure of $750-30,000 as
court considers just; up to $150K for willfulness; discretion to reduce awards
if innocent infringers or nonprofit educ/library users who thought uses were
fair. Compensatory at low end; deterrent in middle; punitive at high end.

Understandable but contribute to problems: Ps can ask for SD
at any time before final judgment; they’re mandatory.

In practice: Congress failed to consider how they should be
assessed in secondary liability or multiple work cases—in Cox, jury awarded
nearly 100K per work, $1 billion. Authors Guild v. Google, estimated risk was above
$350 billion. Arbitrary, inconsistent, and grossly excessive awards.

Suggested guidelines: award minimum where there’s no actual
damages or profits or P is unwilling to provide evidence; approximate actual
damages when fair use/lack of infringement is plausible, 2-3x actual/profits
when reckless or intentional; up to 10x if highly willful. Or consider what
will deter this D. Cox v. Sony: main issue is standard for contributory
infringement, but second issue was the standard for willful infringement, but
oral argument ignored it. SG and Cox said focus should be whether Cox knew its
own conduct was unlawful; reasonable for Cox to think it was OK to continue
to provide service to accounts whose users infringed, especially to hospitals
and barracks and the like.

Now getting worse: 1202 statutory damages. Very similar but
minimum is $2500 w/maximum 25K. Measured per violation (not defined) not per
infringed work. No “as the court considers just” limit. No need to have
registered © for eligibility. Way more likely to result in excessive damages.

Said: heard a lot about Erie, more than any other IP
conference: what gives?

McKenna: Congress has left the field and SCOTUS justices are
no longer picked for being lawyers but for specific hot-button issues. That
leaves everything to lower courts.

Lemley: we’ve also decided to abandon the common law and
equity for the dictionary definition of whatever terms the judge decides to
look up, which is a particular disaster for an IP regime that assumed a
common-law development. Many key concepts (infringement standard) aren’t even
in the statute. So we’ve abandoned the tools we’ve used for centuries. Leaving
us with the executive branch, and leaving aside Trump chaos, one of the
challenges is that you won’t get long term consistent development. We’re
looking at traditional sources of federal law and finding them wanting.

Samuelson: tech is also a big driver in ©. Generative AI,
billions of dollars at stake. Every other tech has pissed off a specific
sector: recording industry, movies, etc. Now everyone is mad. Dismantling of
federal science community is also hurting. Copyright is the only law on the
books is the only thing that seems like it could destroy AI; that’s not going
to happen but Ps can ask for impoundment/destruction, or they could end up
having control over the models.

Reed: people are losing faith in economic rationales of IP;
social justice is becoming a bigger rationale and people want to see more of
that, but we keep spinning out more economic arguments. Compare backlash to
racist mascots—pressure on corporations to change their TMs.

Farley: what went wrong in Dastar? Unbounded definition
needed constraint.

McKenna: Dastar’s biggest fan! But courts haven’t applied it.
The case is hard: you have to dig in to get what the court is saying. Whatever
else you thought of Scalia, he was smart and engaged with the arguments, and
that level of engagement is less common. Also, lower courts don’t like the outcomes
it produces and so ignore it. That means TM is used as a back door for
copyright, especially for works in public domain.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-ip-conference-how-its-going.html

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Santa Clara School of Law: Intellectual Property Conference: How It Started, How It’s Going: What Went Right?

Posted on January 30, 2026 by rtushnet

Moderator: Brian Love, Santa Clara Law

Jeanne Fromer (trademark), New York University Law School

Search and examination on relative grounds (Europe doesn’t
do that)—has critiques but generally doing a decent job. Ironic b/c we think of
US as “free market” and Europe as paternalistic but registration works the
opposite way. Smaller businesses may not have registrations but can get
benefits from opting in; use is still the core of US TM. This is a way to give
them some protection/different pathways for TM rights, and having the two paths
(registered/unregistered) is generally good. Courts also helped systematize
distinctiveness—again with some things that aren’t working great, but the
systematization is a good thing. Semantic connection b/t mark and category of
goods/services must be evaluated: shouldn’t be protected as a mark when
connection is too strong, or protection shouldn’t be easily granted if it’s
pretty strong. Focus on consumer perception is also a good one from the
perspective of TM’s goals: to keep consumers from confusion in the marketplace
and being responsive to how they behave.

Rob Merges (patent), UC Berkeley Law

Volume/velocity of transactions based on IP rights has grown
amazingly since 70s/80s, a little bit invisibly in how many business models and
transactions enabled. Textualism/literal infringement doctrine gave rise to the
practice of claim charts, which made for transactional efficiency: a
formalistic procedure. Structures claim interpretation process into fairly
narrow channel. This allows a boom in patent licensing. Allows fast development
of vaccines—patent licensing is behind the scenes. ROP is also good b/c there
are things you can do with property rights that you can’t do with contract
alone in terms of transactions.

Rebecca Tushnet (copyright), Harvard Law School

Unlike my predecessors, I’m not going to do an overview, but
talk about a specific provision of copyright law. Just as democracy is the
worst form of government except for all the others that have been tried, so too
with section 512, the safe harbor provisions for internet service providers,
which has proven remarkably robust despite multiple efforts to destroy it over
the past nearly three decades. I have my own litany of complaints about
practical problems with 512, but in terms of dispute management it is a
resounding success. I will compare 512 to the recently enacted Take It Down Act
and discuss the evolution of caselaw by comparison to Carol Rose’s account of
property titling systems.

512 creates a safe harbor against monetary liability and
sweeping injunctive relief that would require changes in practices for online
service providers that follow certain rules about how to handle complaints of
infringement. It divides service providers into four categories, one of which
is essentially defunct; service providers that provide connections for content
like email or private messaging are supposed to have policies that terminate
repeat infringers, and that’s definitely created some problems now, but for
decades the key provisions were those for service providers who store
content—like YouTube—or provide links or search engines, like Google—who won’t
be held liable for direct or secondary infringement if they promptly take down
instances of infringement when properly notified about them. 512 explicitly
does not require services to monitor their services for infringing content. It
does provide for liability without notice if a host or linker has “red flag”
knowledge of infringement, but the courts have generally been pretty robust
about making sure that general knowledge that infringement is taking place on a
platform, or even general knowledge that there are multiple copies of an
infringing work on a platform, don’t count as red flag knowledge. So unless a
site is something like “top 50 movies to download,” it probably won’t have red
flag knowledge.

What went right with 512? Well, one way to measure it is how
many disputes it has resolved.  Caselaw
v. number of disputes—the number of disputes is in the billions (even if 1/3 of
the notices sent to Google are invalid, which seems to be the case, still
billions of correctly targeted notices). There are big 512 cases, but not that
many of them. The caselaw tells you only what was significant enough to fight
in court about for unusual reasons—either reasons of the defendant’s deep
pockets and structural significance in the entertainment ecosystem, or reasons
of the plaintiff’s specific interests, usually a moral sense of offense. The
everyday functioning of the system, though, is that lots of infringing stuff
gets quickly taken down, often—if you believe Google—even before anyone has
even seen it. And uploaders who disagree with the takedown can file
counternotices; a service that honors the counternotice is immune from
liability for reinstating the content and the copyright owner has to sue the
uploader. Very few counternotices are filed.

Another way to measure success: 512 immediately became the
default rule around the world, at least in practice—even in Europe, 512
compliance was for a long time sufficient to avoid being sued
successfully—suggests 512’s utility as a workable compromise between interests
of IP owners and accused infringers (compare the fate of the similar section
230, which definitely spurred US dominance in tech but was not routinely
accepted as the final word on intermediary liability in non-IP situations).

Europe eventually diverged, at least formally, by requiring
intermediaries to engage in licensing attempts and screening. But I say
formally because even today it doesn’t seem to me that this has worked except
for music and popular video; major forms of copyrightable works like
photographs and texts are just not amenable to that kind of licensing
requirement because ownership is not concentrated enough for comprehensive
licensing regimes to form. European regulators have the benefit of not actually
needing to require exact compliance with what looks like the plain meaning of
the law; being a “good guy” is generally enough in the EU, something that is
often surprising to US lawyers, who expect a law that doesn’t explicitly have a
good-faith standard to not have a good-faith standard for compliance. The DMCA,
that is, is still shaping behavior on the ground around the world.

There was a major attempt in the last 10 years to gut DMCA
and put in concepts like notice-and-staydown in the US, which would require
services to search for and remove similar copies after receiving notice about
the location of one infringing copy. This was a brilliant branding move by 512’s
haters—staydown sounds almost like takedown, so how hard could it be? But it is
actually a huge technical challenge, especially for smaller services, and would
have been a huge gift to YouTube in maintaining its dominance. Fortunately,
this attempt fizzled, which is one reason that sites like Wikipedia, Reddit,
Ravelry, and the Archive of Our Own can operate in relative confidence without
the resources of a Google or Microsoft.

What about my complaints? Well, there’s definitely
complexity, as the Supreme Court’s recent attempt to tackle intermediary
liability for internet service connection providers makes clear; we’ll see what
happens in the Cox case and that will tell us a lot about what 512 means for
connection providers in the US. And counternotice law is a mess: when abusive
notices are sent, it’s very hard to hold the sender accountable. But I want to
make the case that the crud that’s accrued around various aspects of 512 is the
standard fate of almost any law allocating rights, no matter how clear.

In her justly famous 1988 article Crystals and Mud
in Property Law, Carol Rose explained that all clear legal rules,
particularly rules created by legislatures, face pressure from two sources: the
ignorant and the conniving, the fools and the scoundrels. The ignorant don’t
know about the law, no matter how clear and crystalline it is, and they are
subject to mistakes that make them lose out despite them not having done
anything morally wrong. They didn’t know that land can only be transferred by a
writing, so they rely on an oral agreement and hand over their money and are
out of luck. The scoundrels exploit the clarity and hard edges of the legal
rule to get unfair outcomes: the law says a mortgage has to be fully paid by a
date certain or the borrower defaults and loses the land, so a conniving lender
can hide out and make it impossible to find them until the time has passed and
they get the land and most of the money. These abuses and unfairnesses pile up
and courts for completely understandable reasons will make up special
exceptions to allow equity back in, muddying the clarity of the written rule.
Equity of course has its own costs: it makes disputes more unpredictable,
therefore expensive, disadvantaging poorer actors, and equity is also more
reliant on the biases of the factfinder who may have its own predispositions
about the characteristics of good guys.

I believe that much of the uncertainty that has accreted in
the corners of 512 law is the inevitable effect of this crystals and mud
dynamic; it is not unique to 512 and therefore it’s extremely unlikely that
changes to 512 could do anything more than restart this process: replacement
rules would either be mud all the way down, which I think is worse, or be a
different and probably worse crystal that would not make either creators or
intermediaries better off. Rose concludes that, when the mud gets too bad, the
legislature often intervenes to put a new crystalline rule in place—the fact
that 512 has survived some reasonably well-resourced legislative assaults to me
suggests that this isn’t one of those situations where the mud has fully gummed
up the works.

I want to end by comparing 512 to the recently passed Take
It Down Act, aimed at sexually explicit images “indistinguishable from an
authentic visual depiction” published without the consent of the person shown
in the picture. TIDA is not a safe harbor regime. Instead, it requires two
things that aren’t in 512 to avoid liability: (1) services must remove accused
images within 48 hours of receiving notice (with no clarity on what qualifies
as receipt: I give it about 6 months before someone uses a mailing address and
sues based on the time the mailed notice arrived at a building); (2) services
must make reasonable efforts to remove known identical copies.

There are no counternotice provisions, even if the content
was fully protected by the First Amendment; no safe harbor against liability;
no guidance on what counts as reasonable efforts or what qualifies as
knowledge. 512 does better on all these counts. Harbinger of attempts to do
even more in proposals like Take It Down which cover any use of a digitally
altered likeness, even as the White House is posting AI-altered images on
official accounts.

Graeme Dinwoodie (International IP), Chicago-Kent College of
Law

US jurisdiction over foreign © claims was done right. US
wanted to become a leader in int’l © law to enable more effective enforcement.
Led to NAFTA, TRIPS. Public law side interventions not always received
enthusiastically outside the US—intrusion on sovereign choices. But private
litigants used them successfully to argue that US law shouldn’t be applied
extraterritorially. Predicate act: foreign profits from US infringement can be
secured in US courts, often w/o regard to law of other country, but there are
limits to that; would have liked more comity-facing analysis.

Historical reluctance globally to adjudicate claims of foreign
© infringement. SDNY, a few years after 1978 Act, allowed claims for
infringement in various South American countries to proceed. Impulse to provide
relief under multiple foreign © laws were spot on. NY was where D was amenable
to jurisdiction; hope that British courts would do the same thing in similar
circumstances. For some time, this case was alone, in part b/c of fear of
foreign “bramble bush” of law. Eventually, this approach got appellate
endorsement in Boosey & Hawkes v. Disney—simply having to apply foreign © law
of 18 countries was not a reason to decline jurisdiction. Not a torrent of
cases, but the availability of such relief has structured private behavior. Has
also been embraced by courts in Europe.

Especially valuable for small authors w/no resources to
litigate cross-continent. Streamlining duplicative litigation is not inherently
pro-© owner: Computer Associates v. Altai didn’t just occur in NY, but also in
France. After they won in the US, Altai unsuccessfully sought an anti-suit
injunction from relitigating in France, but it would have been more efficient
for a small defendant to secure global clearance in a single case. (Altai won
in France, but would have been much faster/cheaper in one court.) Better than
seeking enforcement of US law to entire dispute. Enhances legitimacy/embraces
sovereignty. But it does create complexity in applying foreign law; the good
news is that public law has reduced divergence; there weren’t 18 different
rules in the Disney case.

Different constraints in TM/patent. In patent, distaste for
litigating foreign patents in Fed Cir and ECJ. ALI principles endorse doing
patent/TM, with patent invalidation being given only inter partes effect. And
in last few years, courts signaled more willingness, though Albright in Texas
wants to grant anti-suit injunctions. That’s where this is going, along with
jurisdictional issues. Will be a dialogue b/t patent judges in different
countries; likely to be more respectful of sovereignty and thoughtful than the
public law debates we’re going to see.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-school-of-law-intellectual.html

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