WIPIP Session 4, Cross-IP

Mark Lemley (& Mark McKenna), Scope
Midnight in the Garden of Good & Evil copyright infringement case.  Court rejects invalidity claim: the photo has some creative elements.  So it has to go to a jury on infringement. But we don’t tell them to filter out the elements the photographer didn’t create—filtering is only in our instructions on actual copying; infringement/substantial similarity is a gestalt.  In TM: Reynolds Wrap v. Handi-Foil. Court says that the trade dress is legitimate but narrow: blue combined with light red combined with stripes.  But then the court says on infringement that juries could find infringing similarity. What’s striking about the similarities? They say non-stick and heavy-duty, food lifts off, square footage is the same and displayed in the same place, and Made in USA language.  There is certainly similarity, but entirely in things we’ve previously said are unprotectable under TM and shouldn’t be the basis for an infringement finding. And then there’s the iPad design patent case and Apple’s patent on the rectangle with slightly rounded corners.  DCt denied PI based on invalidity, Fed. Cir. says no, they’re almost certainly going to win; jury ultimately found noninfringement (not invalidity). But one reason is that, b/c of quirk of design patent law, they got to look at the prior art. Makes clear that they don’t own all rectangles w/rounded corners—Apple must own something smaller than that.
General problem: we chop up world into infringement, validity, defenses, decided at different times often by different decisionmakers. This creates creep in the rights, and the only way we know to fight it is to deny all rights. What IP law needs is an integrated scope doctrine: think about validity and infringement and defenses this way. One IP regime has a step towards that: utility patent has Markman hearing.  What that does right: asks a single Q, what is the scope of the patent, prior to a validity or infringement determination.  Markmanfocuses on words written by lawyers and not on actual invention; this is a mistake. Patent is also not immune from the problem—it says there’s no defense of practicing the prior art.  What the court means is probably that standards for invalidity and infringement differ and we don’t want you to smuggle invalidity evidence that doesn’t meet the standard into your infringement case.  But of course there should be a defense of practicing the prior art. Integrated scope proceeding would work; could lead a case to end b/c the P is claiming more than it has, but even if the case doesn’t end it’s an opportunity to articulate what’s protectable about the IP right.
Greg Vetter: Does trade secret also match as a proceeding where we do validity and infringement and defenses all together? What about unfair competition/misappropriation?
A: Trade secret has been separated from misappropriation and put into IP, and that’s led to a greater separation b/t validity and infringement; beneficial to treat it is IP in many ways but this is not a benefit. Courts if they thought you were a bad actor were willing to overlook the absence of a secret; we want to avoid that sort of prejudice in an integrated proceeding.
Q: Does estoppel help here?
A: every once in a while, but often they don’t use it.  Reynolds Wrap is an example. Some other doctrines otherwise hard to explain are haphazard efforts to manage this problem: “thin” copyright requiring virtual identity—makes it harder for overclaiming to occur.  Merger doctrine too.
Courts have a natural tendency to make boxes. That’s odd way to treat a common law doctrine. Courts are more comfortable if they feel they’re checking off what someone else decided; less comfortable deciding breadth.  But they should be.
Ramsey: is the law ok and judges doing it wrong? Or is the law wrong? 
A: we’re not arguing the doctrines are wrong. But once we find validity—the TM was almost functional but wasn’t fully functional so it passes—we ignore that at the infringement stage where the elements D copied are functional. So we need to cross the barriers.
Q: So should judges write a claim?  Should we get rid of juries? 
A: big difference b/t ex ante claim written by lawyer and ex post determination by judge. Much more comfortable with the latter as getting to right answer.  Circumstances exist in which words will help, especially if one has to instruct a jury.  Don’t find liability based on unprotectable similarities. Side by side comparison could do a lot more, though Egyptian Goddess sadly moves towards separation of validity and infringement for design patents.  It’s correct to say that judge is more likely to get right result than juries, but one implication of scope analysis is that some cases will fall out before reaching the jury once you take seriously what’s actually protected.
[NB: I’m not sure I agree w/the TM example. Arguably, if there is a secondary meaning in a trade dress—which might not really happen in these cases—then the fact that it’s mostly functional may put a duty on others to stay further away from the nonfunctional aspects than they otherwise would.]
Ari Waldman, Trust: The Distinction Between the Private and the Public in IP Law
Public/private distinction drawing is foundational Q of privacy law, and also for IP scholars. There are problems if either side gets too big.  In privacy/constitutional law, the public tends to crowd out the private.  But there’s also a problem in IP when we define the public too large in the context of minimal disclosures.  Public use bar—if you disclose/use/demonstrate invention you can’t get a patent.
Who wins/loses public use bar cases?  You can cluster winners and losers (only about 30 so far). Lone inventor versus large inventors have public use cases.  Lone inventors tend to lose public use bar cases; IBMs tend to win.  More research has to be done, but wants to think about possible reasons.
Rule: inventor must maintain control over invention during the use, it’s considered private, but if you relinquish control, it’s public.  Too often, that retention of control = assumption of risk doctrine that you run the risk someone will talk about it. Corporate inventors have extensive legal armies/cachet that allow them to force collaboration partners to sign confidentiality agreements.
Courts honor norms of big inventors, not young/small ones—the latter tend to ask friends and family. Norms of confidentiality exist but without the formality that exists in corporate settings. Courts don’t appreciate the norms in different social networks.
If you’re agnostic about privileging one type over another—not saying individual is better—it’s still not a good idea to privilege one set simply because the doctrine ignores uniqueness/variations of social norms from network to network.  Courts privilege formally negotiated agreements between collaborators, and arguably shouldn’t, controlling for other factors.
McGeveran: must first justify using inventor’s perspective.  Are individual’s perceptions a meaningful guide to what ought to be considered private? For privacy, maybe—goal is to protect reasonable expectations. For patent, maybe not, if our goal is to get inventions and enhance public knowledge.
A: some evidence that purposes of patent are also met by this type of analysis.  Experimentation: goal is to make the inventions the best possible.  A changed vision of how we control public use would enhance that.
RT: how much do these inventors know about the on sale bar? Is there any way that tweaking the rule could incentivize them?
A: Not sure they’re affected, but individuals generally reflect/respond to the law. 
Q: solo inventors are often norm-jumping from informal to formal.  Collaborative IBM types aren’t.  One message is that we can’t switch norms midway through the story. Can’t get a powerful exclusion right because you started in the world of your friends.  Inventor wants patent right—powerful market-based brutal and impersonal rights. Why not make them play the norm game from the outset in the impersonal mode?
A: but is that offensive to other patent law norms/frustrating other goals by making this contextual analysis?
Q: Paper apparently has a trade secret piece, which is stronger.  Your insight from privacy is about control.  When you choose to disclose to your inner circle, you haven’t given up on privacy—danah boyd, young people do care about privacy but manage it differently.  Trade secrecy is a good place for that.  [Analogy to naked licensing in TM might be helpful here—the doctrine there does recognize context.]
A: broader conversation about relational norms of trust—read his book when it comes out!
Jessica Silbey, IP and Constitutional Equality
Progress Clause: one part of project comes from qualitative/empirical data, about what people working in creative industries think progress is.  Instances of market failure.
Today’s cases: SCt.  What progress do they imagine?  If SCt is thinking of deeply rooted equality doctrines, that’s worth thinking about and responding to.
Two dominant strains of equality doctrine in two cases—both Justice Ginsburg, but can also be done with Aereo, Kirtsaeng, Petrella.  Eldred: Aristotelian equality promise of likes being treated alike. Classic neutrality—similarly situated classes treated the same; difference needs justification; deference goes up as the class gets less suspect. 7 members of Court said that Congress could extend 20 years to existing, not just future, copyrights.  What incentive rationale is there? What limit is there on that? The Court didn’t have factual explanations for this—a lot of hypothesizing, which is fine under rational basis, but what really might have been going on is an understanding of the value of formal neutrality in application—treating all copyright owners the same. Language: parity, alignment, even-handedness, existing and future copyrights “alike.” Harmony, sameness—these words show up again and again.  Personalization of the benefit for copyright owners is not about incentives but about the dignity of equal treatment. 
Rudimentary, and there are problems with the theory. Ignores the democratic flaws in copyright legislation; assumes all authors are similarly situated when they’re not.  Failed to consider those left out, while enacting a story about inclusiveness. A classic problem of formal neutrality. We talk about this a lot in equal protection law.  Justice Ginsburg knows that all too well.  Just application of neutrality depends on starting line being relatively equal for all those being compared.
Golan is actually about antisubordination. © restoration for foreign works in public domain because of failure to comply with formalities. Court saw 104A as reparations for unfair losses in previous years.  Reciprocation—foreign works put on equal footing w/US counterparts. Not about treating likes alike; it’s the other side of the coin: justifying antihierarchy approach where constitutional equality dehierarchizes unjust status differences.  Targeted special benefits are ok—affirmative action reverses unfair deprivation.  Language: foreign authors “subordinated” to domestic; 104A is a “remedy,” restoring authors to the position they would have had—that is language from discrimination cases.  Critiques Breyer as American exceptionalist, which also resonates.
Problem with that too.  Ginsburg says: Q is whether users must pay or limit their exploitation to fair use.  Rights must be obtained from marketplace, as they must be from US authors. This sounds like equal pay for equal work.  Contrary to equal pay laws, where there are no losers but discriminators and about whom we don’t care, 104A causes real harm to people who didn’t do anything wrong—now forced to pay. Leveling up ignores harm to stakeholders who don’t have political power—misses bigger picture about benefits for public domain, thinking © benefits only authors and not the public.
Petrella: also a direct response to the Lily Ledbetter case in which Ginsburg dissented.  Is this fundamental to the argument? Fortuitous?  Is it a complement to or displacement of a traditional property framework? What does it have to do with Progress at all? Blank check to Congress?
Vetter: would this mean that in AIA the fact that we left patents through March 2013 as first to invent and not first to file would be potentially unconstitutional?
A: not trying to determine constitutionality, but explaining cases through other frameworks, not necessarily as predictive or normative. From perspective of IP on the ground: SCt cases read strangely, at level of generality that feels unrooted.
RT:  Golan argument, you say that this ignores harm to the public.  But they were wrongdoers in this account, right?  Compare Mark Twain/piracy discourses—wrong even if legal.
Jonathan Mazur: Ginsburg seems to be imputing normative judgment to Congress—meant to treat likes alike. Does that make a difference v. constitution?
A: It’s not that someone made an equal protection argument.  Golanis right w/r/t deference.  But then why is the language there?  Equal protection jurisprudence is a leaky doctrine.  It changed constitutional law generally, became a fundamental value. Q is whether it does here.
Q: Why use a construct that is a red flag to colleagues?
A: That is exactly what happens in Aereo—Scalia calls the majority out. Kirtsaeng is a split, and looks more like a substantive equality case.  Might see more splits/disputes over proper framework. 
Q: Lexmark: treat them all the same?  [That’s super interesting, especially since you’re seeing resistance in the lower courts to applying Lexmark to §43(a)(1)(A) even though the opinion clearly instructs that should happen.]
Gerhardt: is equality the new “traditional contour”?
A: if so, we need to put pressure on how the lines are drawn, how the class is defined. Constitutional lawyers think a lot about that.  We need to do the same.
Gregory Mandel, The Plagiarism Fallacy in Intellectual Property Law
Public perception: IP law designed to prevent plagiarism.  Experiment—trying to figure out what American adults using Mechanical Turk thought about copying.  Copying someone’s creative product: 20% conditionally acceptable; 78% not acceptable.  Why/why not: 78%: ethical/moral. 6% mention any legal basis.  Response examples: “copying someone else’s work and taking credit for it is theft.”  “People should get credit where credit is due.”  Credit/misplaced attribution was the greatest concern.
Popular understandings of purpose of IP law.  Developed brief explanations of incentives, natural rights, expressive rights, and plagiarism; participants asked to rank by agreement w/them as justifications for IP protection. Plagiarism: 37% incentives and natural rights, 26% each, expressive rights 11%.
In-depth look towards IP in specific contexts: creative subject matter: book, music, painting, medicine, electronics, software. Type of copying: idea/expression (not full product)/copying creative product.  Perspective: what law is and what law should be.
Results: plagiarism fallacy appears to be rooted in and partly a cause of widespread perception that IP rights are too strong and too broad.  In identical scenarios, participants believed copying should be permitted to a greater extent than law allows. 
In each subject area, the copying in the idea condition would be permissible, complete copying not; expression (e.g., copying some qualities and chorus of song but not entire song; reverse engineering and duplicating patented chip).  Higher numbers = more in favor of copying—largely in favor of copying ideas. But in 4/6 partial copying scenarios, public believes copying should be allowed, and for music, complete copying is ok, and books and medical devices above 40%.  So preferences are highly contextual.
Tested mitigating factors: copying for educational purposes; noncommercial; permission; attribution. Results: baseline: permission made it nearly ok to copy.  Attribution, educational use, and noncommerciality all should reduce infringement liability.  All differences statistically significant.  Educational use generally does better than attribution.  The majority of people think that simply providing attribution should enable the free copying of intellectual works/inventions—not just downloading a song on the internet but other creative works too.
Exposing the plagiarism fallacy explains some puzzling behavior: YouTube videos that say “no copyright infringement intended” (or even “no copyright intended”).  Nonresponse to “infringement is theft” campaigns.  Many people may agree with “theft,” but have a different understanding of the meaning of “theft” than IP owners. People hear: don’t claim credit for someone else’s creative endeavors, and they think, “I can do that.”  People aren’t dismissive towards IP rights, but they understand them differently. 
Further findings: public is ignorant of IP law.  Multiple choice quiz—average of 4/10 right, 1.5 above chance.  Knowledge of IP law doesn’t affect opinions about what the law should be: if they did really well on the quiz, they still don’t change opinions about what IP should protect, suggesting that info campaigns are unlikely to change views.  The public views patents and © relatively similarly.  Answers across subject matters vary widely, but that variation seems subject matter dependent, not about artistic domain v inventive domain.  Variation isn’t across copyright/patent divide.
Demographic variation in preferences.  Older people, women, conservatives, and wealthier people tend to believe in stronger IP rights, and tend to report greater self-compliance w/IP rights than alternate groups.
Silbey: Findings on software: where we think rights should be weakest, public thinks rights should be strongest.  Does that have to do with industry status, distance from industry (people paint).
A: medical scenario involved vaccine, not familiar.  (Silbey says: that saves people, is understandable.)  Scenario was someone who writes a computer program copying functionality—reverse engineering.
RT: so the people who say they believe in strong IP rights, do they believe in the plagiarism norm very very strongly, or do they believe something else? How do they respond to things like educational/attributed use?
A: Only difference we really saw: People who believe in expressive basis favor weaker rights.  We are going to study differences in response to changed scenarios.
Sheff: most people on MTurk are consumers and not producers. If you think IP is distributive, it might not be persuasive to have respondents only from one side of the distributive problem. Could you manipulate respondents to be creators, like Sprigman, Fromer, and Buccafusco?
A: our hope is to run the same survey with creators.
Heymann: not surprising that people think IP is plagiarism because their first encounters in research papers involve attribution norms.
Q: relevance of TM examples?
A: we were surprised by plagiarism results, but TM is about attribution.
Lemley: if we think this is troubling, is it the law that should conform to people’s views or should people be educated about the law?
A: doesn’t take the position that belief should = law. We can have other objectives. Strong point: represents dominant view among users and some creators. Can’t expect IP system to function the way we want for incentives if there’s this widespread disconnect about the law.  Think about how we are going to get greater penetration among the public.  Look at creators.  [We could create an absolute educational exemption.  That might not have a huge effect on incentives but could really help.]
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