WIPIP Panel 6: Design and Brand; Protectable Subject Matter; Copyright Theory and Doctrine II

Posted on February 28, 2026 by rtushnet

A Pantone Prerogative: Defining the Privilege to Standardize
Color (Felicia Caponigri)

Color standards have been around for a long time. Pantone
developed standards and uses its system to promote the colors; registration for
the matching system and the color chip. Does it have ©? Some © in its booklets—pre
76 Act case, pre Feist, where Pantone successfully won a PI against a competing
seller of booklets. © in taxonomy?

Pantone does a lot of licensing—the business model is based
on collabs, licensing their chips, selling services to companies that then
advertise that they are using a specific Pantone color, or has Pantone christen
a color for them. Other companies describe their registrations in Pantone
colors. Require companies not to reverse engineer; authenticity and consistency
claims are also used.

Should brands that standardize avoid certain claims? Pantone
doesn’t seem to be trying to litigate against competing standards but maybe
that’s lack of competition. Maybe a patchwork of IP rights leaves room for a
private standard, but not every brand can standardize color. Europe requires
some kind of identifier for registration, whether Pantone or otherwise.

Fromer: does Pantone dominance allow businesses to chill
each other with color ownership claims? Or does that come from the companies no
matter what?

When Procedure Becomes Policy: The Hidden Substantive
Effects of the Design Law Treaty (Christine Farley)

Int’l design law becoming a thing as we speak. New WIPO treaties:
Treaties on IP, Genetic Resources, and Associated Traditional Knowledge, and Riyadh
Design Law Treaty.

There’s no underlying harmonization with design law: thresholds,
scope, etc. Once we put procedure before substance, that procedure closes the
opportunity for countries that haven’t developed their own design law to debate
what that law might look like.

This treaty was promoted by high-income countries: the
industrial design five, which already take most advantage around the world of
filing for design registrations. 75% of designs applied for around the world come
from China, EU, Korea, US, and Japan. 2.9% Africa, Lat Am & Oceania; 22%
rest of world. Not very important for local industry in many places.

Substantive choices hidden in procedural drafts: the idea of
harmonizing application procedures—a “closed list.” Any adherent can only ask
about certain things in its application. Can’t ask about whether design derived
from traditional cultural expression/resources/knowledge; whether design was
made from AI; whether design was made w/federal funding; any characteristics of
applicant that might enable fee reduction. African group did secure disclosure
that a treaty adherent may require that an application contain info, including
information on TCEs and TK of which the applicant is aware, that is relevant to
eligibility.  

Requires allowing for partial designs by providing for
allowing matter that doesn’t form part of the claimed design if shown by visual
means like dotted/broken lines; partial designs are not even contemplated by
most jurisdictions.

Provision for technical assistance to implementing
countries.

Room for maximalism: countries can always grant more
protection.

Provision to allow maintenance of application unpublished
for a minimum of six months.

Copyright & Living Organisms (Cathay Smith)

GloFish: registered trademark for glowing fish, genetically
altered—but © rejected. The GloFish company owns a number of utility patents
related to them; wants to look at potential design patents. Living organisms
can be goods for TMs, e.g. Galactic Purple by GloFish. Could a fish be
considered product design trade dress? Not sure.

Small number of decisions have rejected living matter as
original works of authorship b/c they don’t owe their expression to human
creativity and aren’t fixed. The GloFish, for example, was not the equivalent
of using paint on a canvas. Living works of authorship can’t meet the
originality requirement. Also, they just aren’t copyrightable subject matter.

But should © exclude original expression solely on the basis
that the subject matter is living?

Using organism as medium of expression; canvas of
expression; or work itself.

Medium: floral gardens, arrangements, Chapman-Kelly v. Chicago
Parks Decision. While individual living flowers might not be ©, unique
arrangement into shape of peacock could be protected.

Canvas: applying human-created art to pigs, cats via tattoos;
painting cockroaches.

Work itself: the GloFish; genetically modified poinsettia
plants. Modified to exhibit creative expression. The GloFish passes its genes
on; the painted fish is created with injecting color and does not pass on the
colors. Is that more like using the fish as a canvas?

Tree shaping can involve training living trees to have them
grow naturally in design or physically trimming them to create specific designs.

Should we limit based on process of creation, or would it be
better to have a straight rule about subject matter? What about dead organisms—copyrightable
then? Art made with flowers, taxidermy?

Q: if allowed, why wouldn’t that allow © of dog breeds?
[raises issues of visual primacy in ©]

A: can’t see getting dog breed through the © standard, but
originality is possible in the future.

Q: © as a rule of evidence by Doug Lichtman: a lot of
doctrines are actually evidentiary including how do you know whether there was
copying. Copying in fact is going to be difficult for a living organism.

Q: patents can only cover discoveries; 102(b) says (c) doesn’t
cover discoveries—seems like they’re mutually exclusive.

RT: Selection, coordination and arrangement as a principle
that helps distinguish the hedge animals and trained trees from the “canvas”
cases? Are these useful articles? If so: Design of/design on distinction,
suggested by design patent? Program your genes to express pigment to display a
tattoo, which is that?

Q: what about patents?

A: might cover different things—e.g., if GloFish is ©able
then painted fish might infringe, whereas painted fish wouldn’t infringe patent
on GloFish.

Copyright Theory and Doctrine II

The Snoopy Solution: Copyright Safety and Licensing
Opportunities for Generative AI (Matthew Sag)

[came in late] Disney has a 1-year exclusive deal with Sora;
the cost to user expression will essentially disappear. Filtering is not all
bad when recognized as a licensing opportunity—social costs decline & harms
of infringement reduced.

Silbey: how to think about secondary liability and photocopy
machines in light of your argument—although our uses of photocopier could be
licensed, the machine maker doesn’t pay.

A: AI companies aren’t just passive—they make so many choices
in model design, data curation, and 1000s of steps in between, so they aren’t
simply intermediaries. Ultimately the user provides the final command, but this
isn’t as simple as primary and secondary actors. We have secondary liability b/c
sometimes it seems appropriate to hold a noninfringer liable for infringement.
But that presupposes being able to distinguish primary from secondary, which is
volitional conduct. Volition is about role in selection, not just whether there’s
automated behavior. Courts could say this is volitional, or that being
automatic is close enough.

Rosenblatt: distributive impacts. Who’s paying for the
license, and we’re asking not about the work but about the use of the work post-Warhol.
Who’s negotiating the license? The big players, not independent artists. Who’s
going to pay for the cost of the license? It will be transformative users.

A: yes, massive distributional consequences.

The Artist Signature as Source (Peter Karol)

Book project on TMs and art. Basic claim: larger project—artist
signature or monogram is quintessential TM but long relegated to outer rim of
TM practice and doctrine. Would be improved by increased acceptance of and
appreciation of artist marks as historic and core TMs. And Art Law would be
improved by centering TM law in regulating creation & distribution of art
works—as proof, he got put on a copyright panel!

Art historical literature on history/purpose of artist
signature. Western: 12th century—not beginning in the Renaissance.
Michelangelo signed one work (it says that he is making it, which was
common in early signatures); one subsequent account says that he resented hearing
the work attributed to another.

Modern obsession w/signature: estate stamp applied by Monet
estate. Warhol had works signed for him by his mother or by an assistant who
copied his mother’s version.

Dual explanations in the art historical literature: Authorial
(source-based): artist has aegis or authority in having supervised and given
imprimatur to final product as finished good ready for public sale or
consumption; signer stands behind this thing, and different from other things
w/o that signature.

Autographic/auratic: the signer personally touched or
physically rendered the thing under observation such that we feel we are in the
embodied presence of the worshipped figure. Spiritual, akin to role of relic or
letter hand written by Abraham Lincoln.

Perhaps there’s a movement from authorial to autographic
after the Renaissance.

Some early signing practices were religious—wanted credit at
Judgment Day; wanted people to pray for them; pride/ego. Pragmatic business considerations
esp. for workshops. Especially when we see the market rise instead of direct
patronage, where signing wasn’t as important as the patron already knew the
commissioned artist. Advertising/goodwill function of signature as well. Also a
signal of completeness. Legal benefits/requirements: required by guild or
otherwise. Market demand, especially 18th C. on. All consistent w/
TM concept.

Derrida: signature tethers artist to work while making it
repeatable/iterable. But individual artists’ signatures change a lot over time.

Criminal identity theft case from 2025: source is not identity;
forging name on art was not identity theft b/c it didn’t involve transferring,
possessing, or using the means of ID of another person as required by statute. Forgery
was misrepresentation of origin, not identity.

Heymann’s previous work on The Birth of the
Authornym is also relevant.

Silbey: what about when the author hides themselves in the work,
like a participant?

A: yes, being broad about definition of signature. That’s a
little different than TM, more like a selfie.

Fromer: Dastar!

RT: Real issue is that TM isn’t TM any more! The description
is of classic TM function, but immediately it’s worrisome to think of treating
a signature as modern TM b/c it would extend © infinitely and do a bunch of
other things.

A: Yeah, one point is that understanding the signature as a
core example could remind us of what TM was supposed to do.

Heymann: transferability of personal names—designers have
signed away the right to use their names.

A: art scholarship connects the signature to the rise of
notarial practices—a signature has legal effect.

Buccafusco: compare novels: people (subset) want signed
copies of novels, allographic v. autographic.

from Blogger http://tushnet.blogspot.com/2026/02/wipip-panel-6-design-and-brand.html

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WIPIP Panel 5: Trademark Doctrine

Posted on February 28, 2026 by rtushnet

 The Arbitrary Myth (Dustin Marlan)

Connecting the Abercrombie critique literature w/some of the
critical/cultural appropriation theory. Judge Friendly says: it need hardly be
added that fanciful and arbitrary terms enjoy the protection accorded to suggestive
terms. Catachresis: strained metaphor—arbitrary marks are not typically empty
vessels but palimpsests. Amazon: river/warrior woman—vast, wild, overflowing abundance.
Apple: fruit/Eden/knowledge—nature, simplicity, rebellion. Etc.

Empirically: arbitrary marks underperform as source indicators:
76.7% as compared to 100% for fanciful. Lowest overall recognition and recall
across Abercrombie categories; worst overall liking ratings compared to
descriptive, suggestive, and fanciful. Kohli
& Suri, Brand Names that Work (2000).

Culturally, TM facilitates transfer from symbolic commons to
corporate identity. Not so much censorship as semantic crowding out of older
meanings when branded meanings are seen so commonly.

Why does TM elevate arbitrary marks? By necessity, not b/c
of real conceptual strength. Descriptive & suggestive marks are
depleted/overused. Competitors’ needs constrain protection. Result: Firms
migrate towards protectable marks, not necessarily marks with high
communicative value. Catachrestic marks require lots of advertising, burdening
small businesses and startups; rewarding cultural extraction b/c they’re borrowed
from outside the marketplace, meaningwise.

Conclusions? Downgrade arbitrary marks in strength
hierarchy? Treat as presumptively weaker than fanciful? Not entitle them to
broadest scope in likely confusion analysis? Cultural screen at registration to
check for cultural appropriation? Require secondary meaning for full strength? Arbitrary
fair use doctrine accommodating situational uses reflecting cultural,
linguistic, or metaphorical associations?

It’s not so much that arbitrary marks are arbitrary, it’s
that the Abercrombie spectrum as a whole is arbitrary. Fanciful marks echo
familiar sounds; generic terms can shift meaning over time; the
generic/descriptive/suggestive boundaries are porous. It’s a legal fiction
rather than a natural fact.

Linford: radical interpretation would be: secondary meaning
for everything. And more skeptical the closer you get to generic. Worry about
PTO (and judges) as cultural interpreters. Does the addition of the cost justify
the gain? If you think we’re overprotecting TMs, you could increase costs on
litigants by requiring secondary meaning for everything.

Fromer: you’re conflating two things. (1) semantic connection
b/t term used to signify source & a class of goods & services:
apple/computers; (2) brand associations a business wants to develop to connect
apple to computers—wisdom, Isaac Newton, etc. Think you’re right that arbitrary
marks require more investment but can become stronger over time b/c of the arbitrariness.

RT: Tradeoff b/t initial difficulty learning and strength of
association once learned: larger literature on information processing might be
helpful. Attracted to the conceptual strength argument; already cases say that
suggestive is weakly distinctive. But consider Jellybeans/Lollipops for roller
skating rinks as an interesting example for you where the arbitrariness has the
same conceptual relationship to the goods/services for both, and the confusion
story is pretty plausible to me. Compare: Amazon/Mississippi. Maybe a situation
where commercial strength decreases the likelihood of [some kinds of]
confusion. Against conceptual strength? (Compare to Fromer’s Against Secondary
Meaning.)

Truthmarks (Aman Gebru)                

Descriptively, TM owners misuse marks in ways inconsistent
w/ TM’s policy goals. Analyzed truthfulness cases (72 opinions). There are 3 buckets:
prohibited deception; tolerated ambiguity; incentivized dishonesty.

Misuse: masking marks; zombie marks; nonsense marks.

Masking marks: the connection b/t mark and product has
changed but the consumer doesn’t know. Philip Morris became Altria to hide
cigarette stink. J&J used Splenda for sweeteners but changed from natural
to artificial. Intra-brand fraud (as opposed to inter-brand fraud that TM
addresses).

Zombie TMs: abandoned marks resurrected by firms w/ no ties
to the original producer, w/residual goodwill or notoriety. May create distrust
of the system by consumers. Revived Enron using logo.

Nonsense: unpronounceable strings of letters/numbers;
consumers are not the audience. But they’re easy to register.

Doctrinal gap b/t false advertising & TM law. Only
descriptive or suggestive marks are presumed capable of carrying falsehoods,
but you can create meaning over time w/arbitrary & fanciful marks and then
change. Focus on literal deception leaves space for a license to cheat your own
consumers. Reduces incentive to improve quality.

Propose truthfulness as organizing principle. Reimagining
failure to function for nonsense marks; expanding abandonment doctrine where
there is residual goodwill. Stronger duty of candor; expand standing to include
consumers.

RT: For zombie TMs: Consumers seem pretty resistant to
learning mistrust. Given realities of imperfect enforcement, how much should we
worry about skepticism.

Why not just allow a false advertising claim when they
switch the product characteristics? As for zombies: The plaintiff former owner has
the wrong interests; maybe let consumers or current competitors claim.

Should the PTO presumption be reversed? No mark shall be
refused unless …. Could be “a mark shall be registered when.”

Lemley: nonsense marks are different in kind—they are
identifying source to algorithms and bots, not to humans—but there’s nothing
not truthful/deceptive to humans about them.

Sari Mazzurco: deceptive as to what? Ordinarily: Falsely
suggesting a quality—but zombie marks are appropriating an earlier mark’s
goodwill, which seems different. Consider also white labeling as a practice—almost
all cosmetics in the US are made by two companies; cosmetic companies are
trademarks + customer lists. Dupes are often made by the same producer. Is the
TM system obscuring actual information about source/manufacturer? Influencers
who don’t control what they sponsor/endorse—a form of naked licensing.

Alex Roberts: why should we care about erosion of trust in
the TM system? Specific deception is an issue, but that’s different.

Trademark Use, Failure to Function Doctrine, and Free Speech
(Lisa Ramsey)         

Does JDI reject commercial use requirements/nominative fair
use by rejecting any “First Amendment screen” when there’s a use as a mark?
Commercial use and TM use requirements can protect speech; but also proposed a
statutory defense for noncommercial use other than as a TM. Still need to
figure out use as a mark. Statute says: used to identify and distinguish the
goods from those of others/identify their source/manufacturer.

Is association enough for secondary meaning? 100% THAT BITCH
may be associated with Lizzo, but is it distinguishing the source of goods from
others in the marketplace? Association shouldn’t be enough—it should be distinctiveness
for source of goods/ability to distinguish them from the goods of others.
Information not related to the reputation of the TM owner should be a non-TM
use: informational slogans (if you see something, say something); parody,
satire, e.g., mashups; decorative uses. Consider goods/services in relation to
putative mark as well as placement/likely placement. If someone seeks BLACK
LIVES MATTER for T-shirts, we know they want to put that on the front and
control others’ uses.

These principles can also be used in
enforcement/infringement cases to assess TM use by defendants.

Q: would a ‘badge of allegiance’ for sports teams (Arsenal
case in UK) count?

A: should we allow them to make additional $ by selling
T-shirts—she would treat them differently—maybe give them narrow rights.

Dogan: what do you do about sponsorship or affiliation
confusion?

Question mark (TM) (Lorelei Ritchie)

Core what of TM: source identification. How: consumer perception.
Descriptive terms can acquire protection, but not generic terms. Blurry lines
b/t categories. Booking.com even says that “ordinarily” a generic term can’t be
protected. But also there are mixed uses: some people perceive it as generic
while others perceive it as a mark. TMEP: examiner is told to refuse for
genericness but there is actually no specific ground for generic refusals.
Generic-ish.

Proposals: (1) PTO shouldn’t refuse on genericness grounds,
only descriptiveness as a spectrum; (2) burden of proof; Fed Cir mostly doesn’t
require clear & convincing for genericness and right now the standard is all
over the place. Should be clear about whether it’s preponderance; thinks it should
be clear & convincing if it’s an absolute bar b/c that’s a big deal. (3) If
it’s an absolute bar, then “key aspect” genericness (generic adjective) should
go away, because it’s too blurry. What’s the difference between immediately
conveying information and “key aspect”?

Dogan: does competitive need play any role in your thinking?
We think of genericism as: does this convey firm-specific info? But also: would
TM inhibit others’ ability to tell people what they’re selling.

Ramsey: the benefit of genericism is that it protects free
expression and fair competition to have a bright line rule to fight against
abuse/C&Ds.

A: not that different from our common-law system.

Ramsey: burden of proof!

Linford: do we want to account for how consumers see things
or do we care more about TM owners’ machinations/manipulations of evidence?

RT: if blurriness is fatal we can’t have a registration
system. There is no system I know about that can make 700,000 individualized
determinations/year with more consistency than the PTO does. So I’m not against
clarity but not convinced that there are many clear lines to be drawn. Not sure
people should be entitled to a registration unless there’s clear &
convincing evidence, given the consequences for the presumption of
validity—California Innovations as an example of how that thinking screws up
the statute.

A: Preponderance is ok for relative refusals
(descriptiveness, presumably confusion) but should think about whether all
absolute refusals should be treated the same way. [I agree they should but I’d
go with preponderance.]

Rachael Dickson: Examiners haven’t got the same level of
knowledge for everything they’re asked to examine, which allows manipulation. “Dog
walker” got registered for cigarettes even though that’s actually a well known
term for a cigarette that you can smoke during the length of a dog’s walk.

Fair Use and First Amendment: The Art of Trademark
Disobedience (Rachael Dickson)     

Artists release consumer products which deliberately infringe
as a form of expression, serving both source identification for the new goods
and commentary on the companies at issue, the values they profess, or consumer
culture generally. A kind of civil disobedience: culture jamming relies on
traditional artistic mediums, but her interest is in more standard products. MSCHF:
“There’s no better way to start a conversation about consumer culture than by
participating in consumer culture.” Stuart Semple and his Yves Klein
Blue/Tiffany Blue/others.

Rogers test post-JDI doesn’t apply to use as a mark. Maybe
these uses are ornamental, but they look mark-like. Still could be expressive,
and the burden should be high on the TM owner to show a false statement is
being made/a reasonable consumer is confused.

Ramsey: compare the Yes Men impersonating the Chamber of
Commerce.

Q: if it’s civil disobedience should punishment be
appropriate?

A: They’re making fun of the way the world is, not just the
law, by using consumer products, so breaking the law is not exactly the point.

from Blogger http://tushnet.blogspot.com/2026/02/wipip-panel-5-trademark-doctrine.html

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WIPIP Panel 4: Emerging Technologies

Posted on February 27, 2026 by rtushnet

The European Accent of U.S. Digital Platform Speech (Brian
Downing)

We are often told that self-governance by corporate
platforms is better than government control, but his experience was that
freedom of action wasn’t free. US gov’t defers to platforms, but they in turn
defer to the EU. Thus, deregulation doesn’t promote freedom of action by
platforms, who instead subordinate speech and security values. US is abdicating
values it might want to inculcate into platforms.

Many things in EU regulation are good and should provide a
US model—DSA rights of appeal are desperately needed. But codes of conduct etc.
have no bargaining dynamic with US free speech principles. We should craft
regulation to bargain with the EU vision. Our involvement in laws helps shape
future regulation in ways that are better than our absence.

US approach, Moody v. Netchoice: few greater dangers to free
expression than allowing gov’t to “change the speech of private actors in order
to achieve its own conception of speech nirvana.” Corporate speech is
protectable. Content moderation: we will have a light touch so we won’t break
the internet.

EU: GDPR, DSA, DMA, AI Act—all implemented by many platforms
globally. Even if you could segregate as a practical matter, you can’t build
out a system like that just for Europe. You build it and implement it
worldwide.

Also, technolibertarians have turned into compliance
departments who just give a bottom line and they implement that globally.

Where the US stands back and doesn’t want to mess with US
companies, what has actually happened is the DSA codes of conduct have removal
policies that have a pseudo balance of privacy and speech, but the real way it
works is that speech is subordinated to privacy or other interests. Companies
are told they need to “voluntarily” agree.

If we want different rules, we have to bargain with this dynamic.
We should have privacy regulation as a bargaining chip for alternatives to GDPR.
You may hear “the EU is stepping back b/c they see their lack of
competitiveness” but they are pretty modest; do not touch DMA or DSA. Just
change some consent definitions for GDPR and timelines for AI Act, but not
fundamentally changing balance of power. Changed definition of PII.
Anonymization is helpful, but doesn’t cause a company that was setting its
privacy standards based on the GDPR to ignore the right to be forgotten.

Q: what about economic dimension of Data Act? Applicable to
internet of things, wider scope—does this affect platform economy?

A: lots of confusion about Internet of Things applying to
mobile phone OSes. Platforms think that the definitions were broadened to
future-proof them, but that means the rules don’t seem to match mobile OS. His
guess: this will be private room meetings, nonenforcement agreements (rule says
only imports of data are allowed, not exports; that will frustrate users of Android
phones—do you really want that? Quiet nonenforcement agreement).

Right posture: enter regulatory game to influence it. AI:
product liability approach w/safe harbors, not mandates to stifle user
questions on sensitive topics.

Interoperability requirements threaten security and we need
pressure on that. Maybe there should just be competition, not forced openness.

RT: in the abstract, very persuasive, but hard to agree when
you see what the current US gov’t is doing: deliberately boosting right wing content
outside the US. Also: bargaining requires a reliable partner, which we may not
be capable of right now. Idea of passing federal legislation is a bit of a
stretch.

Separately: current regime has differential effects on SMEs
versus Meta, Apple and Alphabet (including differential requirements imposed by
European regulators). [That is, the SMEs may not be building the worldwide
systems that those big companies are.] Mismatch of understanding: The quiet
nonenforcement agreement is understood as the operation of the rule of law in
Europe but corruption in the US. That may make it hard to speak in the same register.

Bargaining chip implies that we’d want to continue to
influence/control global rules. Compare mandating geofencing. (Blake Reid’s Jawbreaking
and counterboning).

A: might be talking about a world that doesn’t exist any
more. It is unsettling to confront regulators where quiet backrooms are the way
things get done, and when there’s regulator turnover things can change fast.
[My view is that this is correct but that Europeans would neither draft laws
the way we do nor see compliance with law the way US courts (or administrators)
would even if the law’s wording is the same.]

Q: what about the states? California might be able to
regulate. Could be a reliable partner even! One difficulty is that there’s an
attempt to stifle state regulations.

A: harder to operate on the corporate side where Illinois
has one biometric law and California as another—harmonization is important. But
there is a ton of action on the state side. Maybe we’d want these state actors
as our representatives to the world—almost any actor negotiating would be
better than the actors we have!

Venture Capital (Michael Burstein)  

VCs funded electric cars and mRNA vaccines, but recently VCs
have concentrated investments in social media, crypto, and AI. Conventional
wisdom is VCs pick and choose from promising pitches. It’s the ideas that drive
the funding. We argue that’s exactly wrong: it’s the funding that drives ideas.
VCs send signals to market about what they’ll fund, which induces entrepreneurs
to found startups that will be funded.

VC preferences are shaped by social norms, need for power
law returns, and short time horizons. Result: narrowing of innovation. We look
at how VCs shape founder behavior—ethnographer’s dataset. Corporate law,
contract law, and public policy could expand the possibilities for innovation.

2024: $215 billion from VCs, a little less than half of the
pre-Trump science funding. So who makes investments in early stage companies
with significant risk and when? Key features of the VC model: large equity
stakes for founders, standard 10 year term of VC fund, 2/20 compensation
structure. The goal is efficient allocation of capital w/in the funding realm.

But the outside perspective judges policies by innovation
outcomes, not allocative efficiency. Here, the big problem of VC is clustering:
$100 billion in AI, then $50 billion in healthcare—67% of VC funding, leaving
30 other industry categories like climate tech and hardware mostly unfunded.
This carries through across demographic lines: female founders received 1% of
funding, Black and Latinx got 1% and 1.5% of funding; 55% of funding was in
California.

Innovation scholars shouldn’t treat VC as a black box: we
look that entrepreneurs, the ones who decide what companies to found and what
innovations to pursue. Entrepreneurs aren’t monolithic in preferences;
partially motivated by finance but usually not the only or even the primary
motivation for what the entrepreneurs want to do. Some entrepreneurs will trade
off financial considerations for solving intellectually hard problems, or for
doing good in the world, or something else. Preferences then interact w/market
signals: from investors (VC sends signals about what will yield the highest
returns 6-7 years post-funding, scalable with $ to increase likelihood of power
law return); from product market (measure of success is positive unit economics
and profitability); and from social world (divergence b/t private and social
value of innovation).

Put preferences w/signals & get the marginal
entrepreneur: the one who doesn’t eschew VC funding or just want money but has
to decide where to invest innovative efforts.

VCs put a thumb on scale in pre- and post-funding
environments. Often built around fads & bubbles; often very explicit in
what they’re requesting. Repetitive & exhausting hype cycle.

Distorts investments: (1) misallocating resources, (2)
distributive consequences. Wasteful duplication—similar to literature on patent
racing. Pre-funding, perception of limited pool of capital induces
overinvestment in these kinds of favored tech. Post-funding, VCs favor
winner-take-all—you see wasteful investment in trying to capture consumers. VC
returns may reflect anticompetitive behavior; unit economics diverges from ROI,
and externalities are not fully internalized. This dynamic favors founders who
resemble what VCs expect and can tailor their behavior to what VCs like, leaving
out women, minorities, noncoastal and rural populations. Consumers are also
left out—the tech is disproportionally aimed at the problems of the communities
from which VC comes.

What can law do? Change content of VC signals: why is the
standard term 10 years? Change the strength of the VC signals: modulate
corporate law; promote countervailing signals/amplify other sources of funding.

The Innovation Paradox: How New Forms of Media Confound
Copyright (Zachary Cooper)

The more innovation we have, the more © gets confused about
dealing with new media. Use of Gen AI doesn’t reveal anything about creative
relationship to work—it’s as helpful as saying “used software.” No means of
auditing or evaluating. Authorship thresholds won’t work but that leads to
problems of scale—too much content out there. We also have a problem of form:
everyone can turn everything into everything else.

Copyright often does not recognize innovative new modes of
creative expression, or allow innovation if built from other people’s works;
innovation increasingly lowers costs of production, and innovation undermines
fixedness—the notion that a work will stay itself.

New instruments since the late 70s have not been protected
(synths). The sound of EDM for the next 50 years—but no one thought it was
protected composition b/c it was just turning dials on a machine. We mined all
the latent space in that composition—but the only thing that © protects is the
melody. © is protecting the old part of Donna Summer’s I Feel Love, but not the
innovative part. Meanwhile music services aren’t paying artists anything for
anything they generate.

In 5 years no one will care if you used AI but it will be
too late: we’ll have set up a surveillance apparatus that prevents you from
creating unobserved.

from Blogger http://tushnet.blogspot.com/2026/02/wipip-panel-4-emerging-technologies.html

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“shipping protection fee” providing no extra protection was plausibly misleading drip pricing

Posted on February 27, 2026 by rtushnet

DeMarco v. DNVB, Inc. (Thursday Boot Co.), No. 25-CV-3076
(GHW) (RFT), 2025 WL 4378637 (S.D.N.Y. Dec. 5, 2025) (R&R)

Thursday Boot sells shoes, apparel, handbags, and
accessories on its website, which offers “free shipping and returns in the U.
S.” according to a banner at the top of the webpage. Each product on the
website is listed with an “Honest Pricing Guarantee,” promising the “Best Price
offered year-round.” Upon checkout, however, a “Shipping Protection” fee of
$2.98 was automatically added to the customer’s cart, with an option for the
customer to deselect the Fee. Customers are told that if the Fee is not paid
Thursday Boot “is not responsible for damaged, lost, or stolen items during
shipping.” However, defendant ships its products via UPS, which will reimburse
purchasers of lost or damaged packages. Defendant also has an Amazon storefront
on which it sells its products and offers free shipping, without the Fee.

Plaintiffs alleged violations of NY’s GBL (along with common
law contract/unjust enrichment claims which the magistrate recommended
rejecting). Although the magistrate thought there was no standing for
injunctive relief, the basic deception claim was plausible.

Whether the Honest Pricing Guarantee was a deceptive
practice depends on whether the Fee was misleading, which it plausibly was.
Defendant argued that there was no misleadingness because (1) the Fee was
clearly disclosed on the checkout page “in the same size and font as the
product price, together with an adjacent option to remove the charge”; (2)
shipping protection is distinct from shipping, so that a charge for shipping
protection did not negate Defendant’s promise of free shipping; and (3) the
shipping protection bought by the Fee provided value to buyers by allowing them
to recover from Defendant for lost or damaged packages, thereby relieving
buyers “of the responsibility to pursue relief” for lost or damaged packages
from the shipping companies.

But it was plausible the combination of the free shipping
representation and the negative option to remove the Fee was misleading to
reasonable consumers and that Defendant’s behavior was made more misleading by
Defendant’s last-minute inclusion of the Fee, aka “drip pricing.” Plus, the
statement that Defendant was “not responsible for damaged, lost, or stolen
items during shipping” could plausibly lead “a consumer to believe that they
will bear all risk of loss” if they did not pay the Fee, even though buyers
were already entitled to such compensation.

Full disclosure occurs when a party “is provided with all
the information necessary to understand [a] practice and its consequences.” Whether
the disclosure provided plaintiffs with sufficient information to understand
the significance of the Fee was a question of fact that couldn’t be assessed on
a motion to dismiss. While a reasonable consumer would understand the
difference between shipping and shipping protection, “the website provided
insufficient information to allow reasonable consumers to understand the nature
of the shipping protection secured by the Fee.” A reasonable consumer likely
would be unaware that the carrier would, under ordinary contract principles,
bear the risk of loss or damage during transit. The check-out statement that if
a customer did not pay the Fee, defendant would not be “responsible for
damaged, lost, or stolen items during shipping” was “technically accurate,” but
the failure to disclose that the carrier was responsible for loss or damage
during transit might “undermine [the] consumer’s ability to evaluate his or her
market options and to make a free and intelligent choice.”

Also, even if a reasonable consumer would have understood that
the shipping fee added defendant’s commitment to bear the risk of loss or
damage, it wasn’t clear that they would know that the fee was optional.  Adding the fee to customers’ carts at the very
end of the transaction “added to the confusion and could plausibly have misled
reasonable consumers about whether the Fee was optional.” Articles cited by the
defendant in support of its motion to dismiss, which state that offering
shipping protection has become commonplace, “also opine that adding fees for
shipping protection at the end of the transaction is misleading to the average
consumer.”

from Blogger http://tushnet.blogspot.com/2026/02/shipping-protection-fee-providing-no.html

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WIPIP Panel 3: Deepfakes, Celebrities, and Movies

Posted on February 27, 2026 by rtushnet

A Digital Right of Publicity for the AI World (Emma Perot)

Prehistory: ROP covers lookalikes, soundalikes, video game avatars
(at least for realism).

Persona as training data. Theories of personality: users
informed about use; many social media companies do not allow opt-in or opt-out;
performers can be subject to exploitative terms. Unjust enrichment: in absence
of compensation for training and licensing to third parties. Incentives
undermined, though this won’t apply to the average social media user. We tend
to favor art we think is made by humans. W/o proper protection we’ll undermine incentives.

Input stage: is consent obtained? Maybe, sort of, via terms
of service, contracts with publishers, agreements made pre-AI.

Output stage: could be identifiable or unidentifiable. The
latter isn’t really a problem for ROP. But the ability to create unidentifiable
persona makes input approach important—persona has been used for the training.
Risk of nefarious uses already addressed in many situations; but expressive
uses could be covered which could interfere with realistic depictions, e.g. in
biopics. If you’re conveying information about the person perhaps we want to
allow that (as opposed to casting them in a role).

No FAKES: positives—exception for satire/parody, disclaimers
not permitted. Negatives: doesn’t address training, uses to create composite
figures, licenses last too long (10 years). SAG-AFTRA agreement: more positive
b/c TV/theatrical uses they say: each capture and use of digital replica should
be consented to and compensated.

Need clarity on how consent for input is sought and how
outputs will be treated in expressive works. Avoid labor displacement.

Betsy Rosenblatt: Different interests from people who make a
living from their persona v. someone who is more concerned w/privacy.

Lisa Ramsey: theories of persona is one framing, but what
are the goals of the law is another. What are you trying to protect? Right to
make $ from performing? Right to stay out of database?

[Persona is a bad fit for a consent-to-train framework because
the details of a person’s life etc. are facts. You may be thinking about songs
and movies, but the NYT wants to be able to license its news stories w/o being
overridden by the subjectss. Moreover, persona is constructed with others. When
I tell my life story, my husband’s life story is inherently implicated.

Incentives: if you are relying on the preference for human-made
work, what you want is a disclosure regime; licensing by the person will lead
to lots of deception.]

Transformative Celebrity (Rebecca Curtin)  

ROP claims might be implicated by methods users use—Zarya of
the Dawn looks a lot like Zendaya, and that’s b/c the prompter used her name to
produce a character who resembles Zendaya. Use of names in prompts alone, w/o
reference to whether an infringing result is produced, has been raised by artists
who alleged that allowing users to request art in the style of X was a
violation of the ROP.

Transformative use was imported into ROP from ©, but © has
recently devalued new meaning and message. Should ROP follow ©? Should © return
to focus on new meaning, especially for use of persona? Does it make sense for ©
and ROP defenses to differ?

Transformativeness is not the worst approach of the
possibilities in ROP.

Warhol’s commerciality test sounds a lot like the
predominant use test in ROP cases (yuck).

Thinks Griner v. King was wrongly decided by 8th
Cir.—use of “success kid” meme was not fair use even used in political speech.
Inherently expressive way of using image as cultural reference, but court
reasons that controlling the commercial use of the template was the point of seeking
© and thus not transformative—devalues what the politician was trying to say. Warhol
is undervaluing new message & meaning, and expanding that approach to ROP
would be devastating to the transformative power of celebrity itself.

Charles Duan: the speech is out there; it’s just a question
of who gets paid/the rents.

A: chills speech by future potential speakers.

RT: experience w/state dilution law suggests courts are
neither willing to use nor capable of using two different tests with the same name.
Return to productive use, but this time for the ROP?

Trademark Law’s Trouble with Titles (Stacey Dogan)         

What would have happened if Barbie, the movie, was made
by a truly subversive entity instead of by Mattel? TM handles titles very badly
in ways that are becoming more problematic after JDI. Alone in the Dark lawsuit—based
on video game suing over title of movie Alone in the Dark, one of many films
under the same name.  Several courts in
the wake of JDI have concluded that titles may be source indicating, meaning
that Ds have to go through the regular LOC standard, which is much less
speech-protective. But these courts have gotten it wrong.

Titles and TMs do have some things in common. But
differences in purpose function and impact on audiences versus impact on consumers;
differences in consequences of extending legal rights to titles (speech impacts)—which
should mean different legal rules. Reference to titology, literary theory of
what titles mean.

Looks at different contexts: titles as TMs, recognized by early
20th-c courts as basis for unfair competition claims, but rightly
with a high standard requiring explicit misleadingness; Rogers and titles as
alleged infringement; Dastar and its conception of TM’s relationship to
expressive works (TMs identify source of physical object; titles are not TMs in
this view, but indicate a relationship b/t author & expression); and then JDI
and Kagan’s understanding of “use as an indication of source.” This should be
understood narrowly to preclude the treatment of titles as TMs.

Goal: easy resolution of most cases. Presume titles are not
source-indicating uses, which means that Rogers-like speech protection is
appropriate. But Rogers needs an update: can’t later claim TM rights based on
expressive uses. Some kind of estoppel, though implementation is tricky.

How to draw the line b/t mere use in title and other uses?
Advertising of title/work should clearly be allowed, but what about merchandise?
Advertising in connection w/merch?

Ramsey: would only apply rules against people who asserted
TM rights by applying for registration, claiming in a pleading, or maybe using
TM symbol—treat as omission. But what about Harry Potter and the ___? If there’s
no inherent meaning before adopted, maybe allow TM, but something like Alone in
the Dark already had meaning and thus shouldn’t ever be protectable.

A: two different forms of expressive use: one set of terms
involves common meaning like Alone in the Dark; also important to be able to engage
in nominative fair use-like titles like Barbie Girl.

Rosenblatt: how much do we need title exceptionalism to get
to this place? Dastar: relationship b/t title and content is not a source
relationship. We can understand that some titles are descriptive, generic,
arbitrary and approach them that way. (I don’t think arbitrary titles are
marks! Use as a mark is a separate requirement from placement on Abercrombie.)
But she’d limit that to rights claims; whereas when titles are the source of
alleged infringement we should treat that differently.

A: we have title exceptionalism on the protection side and
should retain it b/c of the expressive cost of granting rights. Titles are
creating more problems than characters—most of the Rogers character cases are
easily resolved in favor of the defendant b/c courts have found that use w/in a
work is more purely expressive.

FIRST: Archival Encounters That Set History in Motion
(Claudy Op den Kamp)

Videographic presentation of history of first film ©
registration in US.

from Blogger http://tushnet.blogspot.com/2026/02/wipip-panel-3-deepfakes-celebrities-and.html

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WIPIP Panel 2: Copyright and Culture

Posted on February 27, 2026 by rtushnet

  Copyright’s Invisible Hand: Subsidizing America’s Cultural
Institutions (Guy Rub)

© sometimes requires payment from more intensive users,
sometimes not. Exclusive rights: unbundling—buy a book to read v. buy a book to
adapt to movie. Fair use is sometimes bundling: buy a book to parody it,
treated together w/ordinary readers; buy a book to extract facts for own work, fact/expression
distinction bundles that user with other just-readers.

First sale: also bundling—museums and libraries pay the same
as private purchasers. Subsidizes cultural institutions. Legislative process:
ensure that libraries won’t be harmed by Copyright Act; 109(2) does not apply
to libraries. Congress spent a lot of effort over time to treat libraries
separately and promised to revisit the law if libraries started to suffer.

Why does this matter? Digital distribution is the elephant
in the room, and the Internet Archive case with CDL.

Lemley: are we balkanizing fair use?

A: that ship may have sailed.

Theory, Technology, and Culture in the Development of the
Legal Musical Work (Lauren Wilson)                    

Gap between legal and musical understandings of what a
musical work is. Structure: Before the 1909 Act; 1909 hearings; before the 76
Act; 76 Act hearings.

Before 1909: the musical work was lines on a page, thus
writings. But most major American cities developed an orchestra in the second
half of the 1900s, exposing them to more music. Phonograph invention: originally
for preservation; 1890: gramophone introduced. Sound recordings quickly recognized
as a teaching tool for rhythm, tempo, accent, etc. Also as brutally honest
records.

1909 Act hearings: Music publishers brought figures it hoped
Congress would find sympathetic, like John Philip Sousa who hated records.
Recording industry didn’t have household names; appealed to egalitarianism/access
to music even w/o resources to invest in intensive musical training. Publishers
won: Congress recognized records as ©able for the musical work authors, but not
as works of their own.

Claim made by industry: Sound recordings were neutral records
of sounds as they happened. But Victor published ads “Both are Caruso”—the singer
and the record. Authenticity was a non-issue until record companies needed to
convince the public that recordings were authentic.

By the mid-20th century, recordings are standard
way to experience music. Music publishers adopt similar strategy of putting
composers on the stand, but they aren’t household names as they were before. Claimed
that © protection for recordings would boost revenue allowing them to support “good”
music, “serious” music that members of Congress would enjoy. Received some
protection, though that protection is still limited compared to that for the
musical work. Fictions about musical technology and taste led to a failure of
imagination. Publishers could have brought the Beatles or the Beach Boys, Janis
Joplin or Jimi Hendrix—the industry was buzzing with innovation. Congress
squeezed concepts of creativity into existing legal boxes.

Q: quoting from a sound recording is almost always
infringement so there’s more rights there.

A: yes, but no general public performance right. “Literal”
copying is very strictly prohibited, but imitations are fine.

Matt Sag: Class, race and gender seem likely to have been
important.

A: 76 hearings particularly—they chose only Western art
music composers so excluded Black artists.

Caponigri: Comparative insights? Enrico Caruso—artists traveling
from different places to different audiences.

Lemley: interesting to think about how those structures
differ as b/t music and e.g., movies which we don’t pull apart. Plays also preexisted
movies, just like the musical work.

Buccafusco: we weren’t worried about record piracy until the
1960s [side note that I think that “we” is doing a ton of work here; there were
big “pirate” operations but not much home taping before that], but want to make
sure it doesn’t screw up the mechanical reproduction right for musical works,
so we have to limit the sound recording reproduction right in new ways.

Reproduction v. Reference (Benjamin Sobel)

Copyright cases are treating references as reproductions.
Example from Salinger v. Colting: do you deny that he is Holden Caulfield? A:
No. That is a key example of the mistake made in certain derivative works cases:
treating a reference as sufficient to create an infringing derivative work. Inexplicable
cases where substantial similarity of expression isn’t there: character names, sequels,
and other noncopying derivatives. Maybe answer keys. Referring to expression in
some other work, evoking it in reader’s mind—that’s not the same as
reproduction.

What is the law they’re actually applying? Apparently they’re
measuring referential specificity: it’s about the strength of a referential
relationship, not presence of original expression: how tightly the character
name corresponds to the characteristics we associate with the character. Towle
(Batmobile) case—nothing in the analysis there turns on expressive qualities.

There’s no reason we should care about characters’ names,
but they play a central role in some courts’ vision of copyrightability: Posner
in Gaiman v. McFarlane—it’s harder if the character has no name. Names aren’t
expressive, they’re too short.

Sequels: the law of character copyright suggests that if the
character changes significantly across works then I don’t have a copyrightable
character at all. But I should have the number of copyrightable works I have
written.

Persistent conflation of identity with similarity. Is the
character Mr. C Holden Caulfield? It’s irrelevant!

Anderson v. Stallone: does it reproduce copyrightable
expression in a short treatment? Or does it just use Rocky’s name. The court
says it doesn’t matter b/c the characters “are” the same. But identity is not
substantial similarity. Anakin Skywalker from The Phantom Menace “is” Darth
Vader but it’s ridiculous to say they’re similar. A child who is not covered in
burns who races a pod racer is not similar to the character of Darth Vader.

The reproduction right isn’t a reproduction right—it covers
much more than what you would colloquially describe as a “copy.” It has a
principle, similarity, but the philosophical concept is exemplification:
possession plus reference. A tailor’s swatch refers to the identified fabric
& color by possessing the qualities to which it refers. Reference inquiry
is copying in fact; possession inquiry: has to possess the relevant aesthetic
features.

The problem for these cases is that a name doesn’t “exemplify.”
It designates, but does not describe.

What role does the derivative work right play here? Can it
be meaningfully distinguished from the reproduction right as expanded?

He believes: the reproduction right in a character can never
be infringed by using its name. Assume you replace all instances of Sherlock
Holmes’ name in a PD story with “Harry Potter,” that doesn’t appropriate
copyrightable expression from JKR. Likewise: Calling something a sequel doesn’t
make it a substantially similar copy.

In a suit alleging improper appropriation, a character’s name
in both works should be excluded from the substantial similarity analysis (even
if relevant to copying in fact). Prejudicial effect far outweighs its probative
value.

Maybe the derivative work right would be another story.
Reserving judgment. Either the derivative works right could be about something
other than similarity, thus substantial similarity is not required for
derivative works, or maybe this is a formal argument for why these cases are illegitimate
b/c similarity is and should be the bedrock of ©.

Matt Sag: Ordinary observer standard: when the ordinary
observer is presented with the name of a character, they remember a whole
narrative backstory; isn’t that driving those cases?

A: descriptively accurate, but not reproduction! Maybe that’s
what the derivative work right is.

Caponigri: could Dastar help? Content of work/originator of
work isn’t supposed to be source indicator. The reference here is sort of like
passing off/evoking associations in mind. [Maybe these are just TM cases]

Buccafusco: Barbie Girl is an example where reference doesn’t
seem to infringe ©.

Shani Shisha: Courts are saying “I know it when I see it”
and applying a but-for causation standard.

Occult Copyrights (Ari Lipsitz)

Rider-Waite-Smith tarot: a © story. The 1909 public domain
deck has slightly different colors from the 1971 © claim. The publisher has
acted as a steward and exploiter of the legacy of the RWS deck. New matter
claimed: lithographic reproduction of designs & text.

Attributes of an occult ©: public domain core, derivative
shell, and © owner uses mechanics of system—registration, notice, licenses—to yield
a perception of protection & supracompetitive benefits. Evergreening:
routinely republishing minor variations to reinforce the “aura” of ©.
Litigation avoidance: often no enforcement at all, or only C&Ds, leading to
market power: popularity of asset replaces monopoly right. No one else will
compete even if they could.

Doctrinal rejoinder: anyone should be able to reproduce the
work, and their contributions shouldn’t govern the original, but that’s not the
reality. You’re not buying the work for the derivative contributions but for the
PD asset.

Lemley: shouldn’t AI & other tech make market entry easy
if not for the false © claims?

A: yes, they used to assert exclusive right to use this deck
for digital readings, but don’t seem to try to enforce any more. [Presumably they’ve
found another path to profit.]

from Blogger http://tushnet.blogspot.com/2026/02/wipip-panel-2-copyright-and-culture.html

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WIPIP, BU Panel 1: Trademark Theory and Practice

Posted on February 27, 2026 by rtushnet

Trademarks, Functionality, and Competition (Glynn Lunney)         

Came in late; 3d Circuit is not a good circuit for trade
dress (11.8% success for claimants, almost always on functionality (71% of
wins)). 5th Circuit at the other end—50% success, functionality only
successful as a defense 20% of the time.      

Functionality is a trump card, not a balancing test.
Problem: Inwood test is dicta; the real problem the Court saw was
failure to defer to dct on factual finding, but the dct applied the standard
“is the feature an important ingredient in the commercial success of the
product?” and that’s the Pagliero standard. And dct should only get
deference if it didn’t make an error of law. Functionality is for non-branding
purposes. Morton-Norwich isn’t beneficial to consumers; we need more
attention to whether there is competition and less to whether it is “fair” by
avoiding copying of attractive features/role of incentive to create design
should be irrelevant.

Err on the side of functionality; just b/c some trade dress
may be nonfunctional doesn’t mean we should analogize from Coca Cola bottle to
trade dress generally. 5th Circuit wrongly reverses the hierarchy of
the Lanham Act.

Beebe: why not go further and adopt Easterbrook’s approach:
if it does anything other than indicate source then no protection?

Lunney: if there’s only one consumer who wants it for its
shape alone, that’s a little troubling—average/reasonable/ordinary consumer is
a standard construct.

Tertiary Meaning (Sari Mazzurco)                

Concept: Distinctiveness that is cultural and especially
indigenous that should trump TM distinctiveness. Genericness/secondary meaning
both ask about what the primary meaning is: the producer or the product.
Failure to function doesn’t have a uniform test but PTO does ask whether
something serves only as an expression of a concept/sentiment and is widely
used by third parties so it wouldn’t be perceived as a source indicator for the
goods concerned.

Each test applies awkwardly to symbols that are significant
to cultural groups. Imagine that Hermes began using a traditional pattern from
kente cloth on its bags. Kente cloth is used in rituals, has
spiritual/cosmological significance. Hermes could use the coercive power of the
state to try to bar those uses even if the third parties are using the pattern
in a manner consistent with its cultural purpose. Relevant public for
genericness and secondary meaning is likely consumers; F2F looks for wide use
by third parties. West Africans likely wouldn’t represent a big enough
percentage of those groups.

Meaning-making is a social practice, always emergent and
conceptual, rarely universal, never subject to exclusive control—always
negotiated and contested, with power dynamics at play. Source distinctive
meaning can vary across time and contexts. But people might not silo meaning
across groups. And people might fight over meaning in TM context: Matal v. Tam.
Groups have asymmetric power—dominant groups have more ways to establish their
preferred meaning. Ability to leverage coercive power of state helps. If Hermes
wants to establish secondary meaning for a kente pattern, it has many tools to
do that, including TM’s privileging of source-identifying meaning.

Conclusions: include cultural groups in relevant public for
genericness/secondary meaning; consider cultural meaning in F2F determinations;
cultural groups should receive priority even when a third party is first to
“use” the mark in concept; recognize that noncommercial uses by cultural groups
are outside the scope of trademark law.

Felicia Caponigri: how does the cultural meaning of Hermes
bear on this?

RT: (1) Adapt doctrine of foreign equivalents analog: can
use for 240,000 people in the US!

(2) Cost-benefit analysis underlies the DFE and other TM doctrines:
you consider the interests of the smaller group more significant if they’d lose
something significant like a coherent existing meaning and the rest of the
public has no particular need for the symbol. Fire cider genericness case;
otokoyama for sake; bond-OST for cheese.

(3) Noncommerciality mess: selling kente cloth for cultural
uses would not be noncommercial; Hermes would not target the wearers in the US,
but the sellers/importers.

21st Century Trademark Surveys (Rebecca Tushnet)

Surveys are a mess; routinely criticized as missing the
point and also dispositive in some key cases especially involving free speech
issues. Budweiser Oily, JDI.

Repetition of questions: source, business affiliation, again
and again—prompting respondents to answer positively.

One survey asked three times what people thought of aluminum
as an antacid ingredient until the third question yielded 45% of people who
thought that aluminum was bad for them. The court gave the survey little
weight. Johnson & Johnson-Merck Consumer Pharms. Co. v. SmithKline Beecham
Corp., 960 F.2d 294 (2d Cir. 1992).

Compare L & F Prods. v. Procter & Gamble Co., 845 F.
Supp. 984, 996 (S.D.N.Y.1994) (repeating questions “also serves the purpose of
clarifying otherwise-ambiguous first responses by probing the implications of
previous answers”), aff’d, 45 F.3d 709 (2d Cir.1995), with Am. Home Prods.
Corp. v. Procter & Gamble Co., 871 F. Supp. 739, 748 (D.N.J.1994)
(excessive probing undermined credibility of survey evaluating arguably
implicit messages).

Lack of definition: asking why do you say that is not the
same thing as what do you think affiliation means

Lack of clarity about what the statute means: statute uses
affiliation to mean two different things in the same section
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association: here, association is something that
can be either true or false, thus confusing or nonconfusing

(c) association arising from the similarity between a mark
or trade name and a famous mark that impairs the distinctiveness of the famous
mark—here, association refers to mental processes and the association is not
false; the consumer really does think about Nike when seeing Nikepal 

Ideas: training module; don’t repeat but have choose as many
as apply; include an option “this is about the trademark owner” –other
thoughts?

Jake Linford: pilot study on tarnishment: we did for a
screener try to define tarnishment—lost 1/3 of respondents. We had tried to
define it on our own terms—why not use the statute? Part of the work is
defining the term.

Lisa Ramsey: Informational uses of TMs/comparative
advertising. Expressive: parody, satire. Decorative: colors, shapes. Does this
use provide information? [not sure that’s as helpful b/c courts don’t care, they just
care about the confused subset]

Laura Heymann: should the survey question think about the
harm at the heart of this: when we ask these questions are we trying to figure
out solely what consumers think or what they do? [again, minimum change
principle, though I appreciate the larger project of course—but consumers are
really bad at telling you what affects their behavior so materiality might not be best assessed in a confusion survey]

Lunney: how much do you think controls help? [not much b/c
of tendency to elaborate]

Is Teflon really any good?

Caponigri: context of surveys—Instagram might differ.

Stacey Dogan: depends on what affiliation confusion is.

RT: I think this is much easier than you might think.
Affiliation specifically is a term of art across many statutes. I don’t love
Chief Justice Webster, but we’re in a period where he’s very influential.

Education, Wealth, and Weird Trademark Surveys (Jake Linford
with Justin Sevier)             

In the US, and perhaps systematically among scholarly
studies, our studies are WEIRD (Western, Educated, Industrialized, Rich, and
Democratic). We are undersampling low-education and low-income consumers and
not sufficiently correcting for the undersampling. Most surveys don’t even
report education or wealth.

Hypothesis: lower education consumers are more likely to be
confused. But it might matter either way. In our study of tarnishment, there is
directionally a burnishment effect but the sample size is so small as to create
a lot of noise.

A null effect is also potentially interesting.

Is wealth as important as education? May be easier to
measure one thing than two. Eventually will look at litigated surveys.

[RT: WEIRD usually describes the population: this is
implicit in your not challenging whether we’re oversampling Westerners,
industrialized, democratic (though political orientation might be increasingly
important). Linford: yes, but we are undersampling education/wealth.

Compare surveys among educated consumers:
doctors/pharmacists? Luxury goods]

Caponigri: we need the relevant population

Roberts: correcting for those things might be wrong
depending on the product

Q: Does dilution have a corollary with considering
sophisticated consumers? Or is a dilution survey different in who it should
target?

Trade dress protection study: Higher education: the more
likely you are to prioritize competition; lower education: more likely to
prioritize protecting status.

Heymann: is that a function of the survey format v. actual
behavior in the market—the survey context/this is a test that I have to get
right/this is like an educational experience? Less experienced with the
environment the survey is creating.

A: a fair question, but don’t want to presume.

Lunney: how much do surveys really matter? Judges like them
if they agree w/judges’ preconceived outcomes.

A: sure. We have been making claims as we run surveys that
they might tell us something about how TM law is or isn’t working; if none of
us are asking the right people, then we have to change our claims.

from Blogger http://tushnet.blogspot.com/2026/02/wipip-bu-panel-1-trademark-theory-and.html

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Deadly automatic litterbox might be falsely advertised as “safe”

Posted on February 25, 2026 by rtushnet

Gomez v. PetPivot, Inc., 2026 WL 507708, No. 25-cv-5622
(LJL) (S.D.N.Y. Feb. 24, 2026)

“Safe” is the kind of word that is general enough that it
might be puffery, but courts think that safety is important enough that they
sometimes consider it falsifiable. Here, defendant’s self-cleaning litterbox
product gruesomely killed plaintiffs’ cat after they received the litterbox as
a Christmas gift. (I will not give you the details but they were awful, and it
was difficult to remove the cat’s body.) It was “advertised as remaining
partially open at all times, with no complete enclosure that could entrap a
pet.” On the PetPivot website, Amazon.com, and promotional materials, PetPivot
marketed the Autoscooper as “smart,” “safe,” and “fully automated” and equipped
with multiple “safety protection devices,” including that the system would
automatically stop operating when a cat was inside the chamber. “The Amazon
listing for the PetPivot assured consumers that the device can operate safely
without supervision.”

Although individual defendants from PetPivot were dismissed
for lack of personal jurisdiction, the court allowed NY GBL false advertising
claims to proceed. GBL Sections 349 and 350 require proof of causation but not
“proof of justifiable reliance.” “Reliance is the causal link between an
alleged deceptive practice and a consumer’s decision to transact business with
the defendant, whereas causation refers to the link between an alleged
deceptive practice and an actual injury sustained by a consumer as a result of
such practice.” Thus, causation can be shown by evidence either that the plaintiff
would not have entered into the transaction or would have taken precautionary
measures with the product had they known the truth.

Here, plaintiffs didn’t claim they bought the product in
reliance on defendants’ representations, but rather that they relied on those representations
when accepting and using the product in the home. That sufficed: they alleged a
“connection between the misrepresentation and … harm from, or failure, of,
the product.” Also, applying Rule 8, they adequately identified the
misrepresentations at issue.

Can the death of a cat qualify for negligent infliction of
emotional distress where neither plaintiff was threatened with physical harm? “Bystander”
claims for NIED in New York are limited to “immediate family,” but the courts
have declined to define the outer boundaries of that phrase.  New York courts have allowed a grandmother to
pursue a claim for bystander recovery following the tragic death of her
grandchild, relying on the “legislative recognition of the changing nature of
society’s understanding of family and the special relationship between
grandparents and grandchildren.” By contrast, the relationship between aunts
and uncles and their nieces and nephews didn’t qualify. “[T]he inquiry is
objective; it asks not whether the grandmother and her grandchild had an
exceptionally close bond, but whether New York law has evolved to recognize
grandparents as a ‘discrete, limited class of persons that enjoys a special
status under modern New York family law.’” 

A lower NY court also found that a
pet dog could be classified as “immediate family.” New York Domestic Relations
Law (“DRL”) requires a “best interest” framework for determining the custody of
pets, similar to the framework for children, in recognition “that ‘for many
families, pets are the equivalent of children and must be granted more
consideration by courts to ensure that they will be properly cared for after a
divorce.’ ” The court also considered societal norms regarding pets in hotel
rooms and on planes, and concluded that “considering the various accommodations
made for companion animals in general, along with the deep and affectionate
bond Plaintiffs shared with their dog, it stands to reason that companion
animals … could also be recognized, as a matter of common sense, as immediate
family.” However, it limited the rule to situations in which “the pet was
leashed to the plaintiff at the time the negligent act occurred and the
plaintiff herself was exposed to danger.” Thus, this case did not support extending
NIED to the death of a cat outside the presence of, and danger to, her person. Her
exposure to danger “did not go beyond witnessing the mechanical movement of the
machine and unplugging it from the wall.”

For the remaining claims, “New York courts treat pets as
personal property and consequently do not permit damages for emotional distress
or loss of companionship.” But punitive damages might be available for strict
products liability and GBL violations under appropriate circumstances.  

from Blogger http://tushnet.blogspot.com/2026/02/deadly-automatic-litterbox-might-be.html

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Amicus in support of cert in Lanham Act intent/damages case

Posted on February 24, 2026 by rtushnet

 Truth in Advertising, Barton Beebe, Mark Lemley, Alexandra Roberts and I just filed a brief arguing that the Supreme Court should clarify the role of intent in Lanham Act cases.

from Blogger http://tushnet.blogspot.com/2026/02/amicus-in-support-of-cert-in-lanham-act.html

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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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