Notice and notice failure at BU: panel 1

Graeme Dinwoodie – Trademarks and Commercial Reality: registration
systems/use systems; Industrial policy/consumer protection and
registered/unregistered affect notice, but not sure how much compared to
patent.  Costs of inadequate notice may
not be as great.  Efforts to ensure
adequate notice need to be balanced w/other objectives.
 
EU has first to register; US (alone in world) has first to
use system.  Different historical view of
registration. Pre-Lanham Act, clear that registration merely confirmed common
law rights.  Conventional wisdom about
current state of law is that’s still true, but that should be questioned—now
confers some substantive rights. If registration is notice of anything, is it
notice of legal rights or of something else? 
Does it constitute rights or reflects them?  In EU, the registration defines the rights.  Primary value on public notice.  Unfair competition is national, by contrast.
 
Evolution means convergence in regimes, though. Unfair
competition & TM have always accommodated some consumer protection goals
and some industrial property/market structuring goals. 
 
Even if registration is only signpost, should be as accurate
as possible. Registration is not the only way of providing notice: the use
requirement provides notice, especially secondary meaning requirements.  Actual use may be as effective as notice as
registration, depending on how the rights are structured.  It doesn’t work as well when the rights
extend to dissimilar products (e.g., dilution). Actual and constructive notice
can work together—the register may help you figure out what the mark actually
is, particularly w/non-word marks.
 
Distinguish notice of existence v. notice of scope.  Beebe’s studies on applications that are
abandoned—astronomically high.  Huge amount
of deadwood even in the US use-based system. 
EU has the problem of submarine marks. 
The problem in TM is scope is determined in two ways that make it hard
for register to be helpful: metric is external to the register, consumer
understanding, which is also dynamic/evolving.
 
In Europe, graphic registration requirement does some
work.  Applied to bar registration of
something we could easily recognize in practice: purple as the predominant
element of a package for chocolate; UK court considered “predominant” too
vague. Forced Cadbury to use passing off, with higher proof requirements,
causal nexus, more proof of reliance/damage.
 
In the US: from 20th c. and now, we’ve
assimilated §32 to §43.  Should we
revisit that question of whether the unregistered mark requires more proof
before asserting rights.  Two areas in
particular: trade dress. Defensive registration?  Australia allows you to say ‘I’m not using
this mark in this area, but if someone else does, I will make a dilution claim.’
 
Barton Beebe: how does notice affect the dynamics of the
opposing interests Dinwoodie identified, such as industrial policy/consumer
protection.  This topic demands a
comparative approach between registration-based and use-based.  What about Canada’s weird hybrid system?  One of the most shocking extensions granted
by registration is nationwide priority, even if you are really only using the
mark in NY.  US also has an examination
system that considers both absolute (scandalous, descriptive) and relative
(likely confusion) grounds for refusal. European system is more rubber-stamping;
no relative examination. But how rigorous is the US review?  Fromer and Beebe are working on that.
 
Distinction between reactive and proactive functions of TM
law.  Should TM be structured reactively
to protect whatever consumer understanding develops, or proactively seek to
structure the ways in which consumers shop/producers sell, and thus order how
the economy functions?  Key question
Dinwoodie has asked.  How do constraints
associated w/notice affect that? 
Registration is signpost, not fencepost; it must be thus if the
existence/scope of TM protection informed by consumer understanding (instead of
TM law operating on consumer understanding).
 
We have to accept that TM law is reactive in nature,
Dinwoodie suggests. Notice compels us to recognize that.  In comparison to the Europeans, the US
use-based system is especially reactive. 
Perhaps now we can recognize that notice might be one of the main policy
levers by which TM policy can inform consumer understanding.  [Would like to hear more about that.]
 
Can it be said that the Europeans, w/more formal approach to
TM, are ultimately presenting a more proactive system?  Is this a good thing?  Reaching out into the economy a bit
more.  Industrial policy orientation in
EU is greater.
 
Little points: In TM context, to what extent is PTO’s TESS
the main resource for notice, versus Google? What is the effect of massively
indexed online databases? Our concept of notice was formed in the offline
context.  False positives are a big deal
there.
 
Irony Dinwoodie identifies: EU is giving European-wide
rights, but political events/multilingual nature suggest this might not be
totally appropriate: use in one country gives you rights all over.  Whereas in the US, use in NYC gives you
rights to the nation, but that is appropriate. 
Here the American use-based system is inconsistent w/ how we approach
geography; European system is also.
 
Jessica Litman – What Notice Did
 
Most scholarship on © notice talks about role dividing what’s
protected by © from what’s in the public domain.  Some writers think notice’s function in
moving works to public domain is great, others that it’s terrible.  Also may have distorting/shaping effects on
other parts of copyright law.
 
Existence of notice prerequisite may have allowed US to
tolerate broader sphere of potentially copyrightable subject matter. 
 
Rule that notice had to accurately name the © owner created
enormous pressure on courts to find that the person named in the © notice was
actually the owner, in order to avoid forfeiture.  Since this is peculiarly w/in control of
publisher, © notice tended to name publisher; led courts to figure out how
author had transferred her © to the publisher, even when she hadn’t. Their
innovations have stuck with us, messing up the law even now that the
justification is gone.
 
Only tiny number of maps and charts were registered, less
than 1%. In 1802, Congress sensibly required that small number of works that
did claim protection to include a notice. 
1820s-30s = court decisions require strict compliance
w/formalities.  1850s: no court had
squarely held that statutory language about assignment in presence of two
witnesses required a writing, but then it came up in a case about a license to
publish a medical book.  B/c author saw
the notice, can be inferred that he transferred the rights.  Before a © was registered, author could part
w/right w/o any written agreement—writing requirement only kicked in after
registration. Seemed to be motivated by third parties’ arguments that copyright
were void b/c the person named in the assignment had never secured a written
assignment. The parol transfer doctrine took on a life of its own, though, and thus
in Parton v. Prang, landscape painter sold painting, which was resold to
lithgraph publisher who made lithographs and registered ©. Parton argued he’d
never transferred the copyright, but the court said no writing was required for
transferring © in an unpublished painting; transfer of painting is transfer of ©
in the absence of express reservation: could presume that owner of unpublished
work automatically acquired right to © it in his name.  By end of century, this was “well-settled”
according to Eaton’s treatise.
 
SCt adopted this reasoning. 
In one case, defendant said that copyright in cookbook written by a
woman was invalid b/c she had no right to transfer it (she was married); the
SCt implied her husband’s consent/endorsement to transfer. Then courts invent
work for hire doctrine out of whole cloth when there isn’t evidence even of an
oral agreement.
 
What about making sure the publisher prints the author’s
name in the notice and registers the copyright in her name?  Harriet Beecher Stowe & Oliver Wendell Holmes
Sr. both had serials published in the Atlantic, registered in their name, but
Atlantic included © notice in its own name in the issues in which the serials
were published.  If the Atlantic owned
the ©, then Stowe and Holmes forfeited their rights by putting notice in the
wrong name when they published the full book; but if Stowe and Holmes owned the
©, then the Atlantic put the works in the public domain by publishing them with
the wrong notice.
 
Ultimately, Congress responded trying to fix this; but
courts didn’t change course—courts kept applying the presumptions to
unpublished works, finding parole transfers on little or no evidence.
 
Not a matter of pro-publisher and anti-author. Instead,
courts were trying to preserve © from forfeiture.  Author-unfriendliness was an accident of path
dependence.
 
Jane Ginsburg: Author-unfriendliness is another nasty effect
of the notice requirement.  Effects on
recordation requirement as well—must record transfer of federal ©, but the
gambit she described involved a transfer of a common-law ©, so there was
nothing to be recorded. Our recordation system has many problems; Litman has
identified this one in addition.
 
Doesn’t think we should have mandatory notice at risk of
losing copyright or author’s right. But current problems exist even for
voluntary notice.  We now have a system
of divisible ©.  But divisibility can
mean that any ambiguity should be construed against transfer and remains
w/author.  That has possible unfortunate
effects on notice: how do you know who owns which rights?  If the basic notice doesn’t specify which
rights the notice-giver owns, can have trouble.
 
Imagine: A work is created but not published before 1978.
There’s a transfer agreement for the rights in that work.  In 1978, unpublished works get vested
w/federal ©.  Is the grant of rights in
that work subject to termination under §203? 
It’s not §304-terminable, which is based on the renewal term. How do you
date the grant of rights?  One could
argue that the relevant date is not the pre-1978 agreement, but the date
federal © came into being, Jan. 1, 1978—making termination possible as of
2008.  Potentially good news for an author,
but the clock is ticking—only until July 1, 2016 to serve a timely notice of
termination. If there’s anyone in this situation—granted rights in unpublished
work before 1978—act quickly!
 
Ruth Okediji – Form versus Function in The Berne
Convention’s Notice Regime: Reclaiming the Public’s Interest in the
International Copyright System
 
Since 1908, int’l © framework eschewed formalities.  Art. 5 of Berne: enjoyment/exercise of rights
shall not be subject to any formality. 
Protection in the country of origin is governed by domestic law.  Specific goal: protect works in countries
other than that of the author; not inherently anti-formality.  Didn’t address how foreign authors might
prove compliance/ownership/authorship.  Historically
didn’t eliminate all formalities: Art. 11: it will be sufficient (in absence of
proof to contrary) to put name on work in customary manner; if pseud/anon,
publisher would be deemed owner (in the absence of other proof)—deemed to be
notice to public of another’s claim of right. Art. 7: articles from
newspapers/periodicals could be reproduced, unless there was printed notice to
the contrary.  Art. 9: unpublished
musical work: could indicate on title page that author rejected public
performance.
 
So notice was a big deal until 1908.  Then the practical effect in most countries
was to eliminate most formalities; maintaining them for domestic authors would
have led to political backlash in many countries.  Political/pragmatic sense: formalities had
fallen out of favor in many Euro. countries. But formalities served so many
functions and had such a long/storied history in Europe; struck by relative
ease w/which this article got rid of this significant institution.
 
Notice = important part of human society. Indigenous
communities had forms of notice. Notice/property rights have a strong
historical link.
 
In fact, notice is alive and well, but hidden/dispersed in
different functions.  Formalities are not
neutral, and neither is notice—cf. Litman’s paper. Across countries/authorial
classes.
 
Lack of notice burdens limitations and exceptions; just as
L&E do lots more work because of lack of notice.
 
Global enforcement regime will compel/justify a return to
formalities. In the absence of int’l rule for notice, we’ll end up with costly
forfeitures/greater burdens than notice itself caused.
 
Berne Act had formalities of its own, and current iteration
allows for some formalities.  Esp. for
exercise of L&E.  Original Berne
Convention was directed at facilitating crossborder exchange, but allowed
national reservations to tailor solutions. Of all the formalities we don’t see
retained, most important to ©’s goals is notice.  A point of intimacy b/t authors and the
public.  Public relies on notice; notice
facilitates transactions; channeling function b/t fair and permitted etc. uses.  Notice should also be considered a
fundamental right of the public. Can also facilitate rights across countries—where
authors from other countries claim that American authors have lifted melodies,
etc.
 
Not always benign.  In
developing countries, elimination of formalities was particularly disruptive of
authorial class formation—notice and other formalities were abolished to
destroy the rights of local authors. 
1934 decree forbade filming in French African colonies without prior
authorization; Africans were precluded altogether from producing films, and
often restricted from viewing films. French officials were to maintain strict
vigilance over stray Europeans w/photographic equipment wandering to remote
corners of a colony.  African authors
denied opportunity to register in their own names.  In art, local authors couldn’t register works
of art in the UK, France.  The first real
orphan works: they didn’t exist for purposes of colonial law, thus freely
available for appropriation. They also killed irrepressable authors, which didn’t
help.
 
Also distorted the notion of ©. Infringement is rampant in
developing nations not b/c of culture of theft but b/c ingrained notion of
boundaries has never been built into the authorial etc. classes. 
 
Hidden culture: notice abounds in technical rules in the
enforcement space. 
 
Berne: no bar on notice for domestic authors; notice from
users; on making protection for TPMs contingent on notice; etc.   But we need to address differential burdens
on new authors, poor authors. 

TRIPS art. 41: members shall ensure
enforcement procedures available (mandatory); procedures must be fair and
equitable; can’t be unnecessarily complicated or slow.  Art. 43: Have to present reasonably available
evidence to support claims.  So
agencies/enforcers look for some easy to process form of evidence—and that’s
formalities.  Thinks you can’t comply
w/TRIPs w/o some sort of formalities. But doing it through trade law is a bad
way.  High-cost way for users; high-cost
for finding authors.  Benefits of
formalities are unavailable at the exact time they’d be most beneficial—before suit.
Then resurrected at enforcement, when most costly for authors/users.
 
At the end of the day, shouldn’t tiptoe around Berne. If we
think formalities are problematic, global enforcement makes them even more so.
Need notice’s benefits w/o defects—nothing wrong w/asking authorial class to
play a role in ensuring that © system serves its functions.
 
Jane Ginsburg: Original Berne convention cut back
significantly on formalities; situation before was that, to the extent that one
country would protect the author from another, it may have been necessary to first
publish in that country, conform to its formalities; generally it didn’t work.
Initially it was sufficient to comply w/country of origin’s formalities, but
that proved too difficult in practice.
 
Finds reading of TRIPs problematic: incorporates and makes
enforceable Berne norms apart from moral rights.  Yes, you still have to prove your claims, but
that’s not a reintroduction of mandatory formalities.  As to notice being good, yes it is, but what
are the consequences if one doesn’t provide it? 
Berne’s art. 6bis on moral rights provides for attribution—right to
claim authorship.
 
Ginsburg on Dinwoodie: difficulty of ascertaining scope of
TM through notice comes down to the two things Dinwoodie identifies: consumer
perception and the dynamism thereof. Could you make notice track scope? Maybe a
strictly enforced rule of speciality: the only rights you have are the
goods/services listed in the registration. That wouldn’t work b/c it would
destroy dilution (so sad!) but also b/c it doesn’t map onto reality, which
results in the EU situation, where you have TM rights + lots of pressure on
domestic unfair competition regimes to absorb the shock to the protection of
consumers that would be the consequence of a system in which the registration
corresponded to the scope of the TM.
 
Lydia Loren: © papers have unintended consequences as their
themes—unintended consequence of requiring notice, then of eliminating
notice.  Given the return of the
repressed formalities, © owners should want more transparency about what the
formality requirements are.  Reform of
int’l agreements?  Any chance of
that?  [That’s why they want the mythical
Copyright Hub/celestial jukebox]
 
Okediji: when you speak w/authors in developing countries—they
are working w/out registration and judges are saying ‘how do I know you’re the
author?’  They want documents.  So to avoid the requirements of Berne, they’re
showing up in regulations—that you only hear about when you file a
complaint.  One country formed a
collective society; had to create a registry just for the purposes of the
lawsuit.  Striking disparity of regimes—South
Africa differs from Zambia differs from Brazil. So a US author wanting to
assert a claim in these countries will face the same situation she did 100
years ago.  That’s worse than a minimal
notice requirement in int’l law. We can avoid problems of overenforcement, but
the notice requirement is back at the most inopportune time.
 
Ginsburg: Berne has an answer for foreign authors. Countries
demanding registration is contrary to art. 15. 
Shall, in the absence of proof to contrary, be regarded as author and
entitled to institution of proceedings if name appears on work in traditional
manner.
 
Okediji: but if your name isn’t on it, then what?  People are downloading; they circulate
without info.  One case where three
people each claim to be the author.  The
courts are entirely focused on enforcement—they just want to make the system
work.  One country asked for access to
the US CO’s registry; that won’t help.
 
TJ Chiang: What do you mean by formality?  To have standing in court, you need to
produce an instrument?  Or, to file a
claim, you need to comply with FRCP? 
Okediji seems to treat those as formalities, though he wouldn’t have
traditionally thought of them as Berne formalities.
 
Okediji: To the extent that courts/admin tribunals are
asking for proof of ownership, that goes too far and is clearly a
formality. 
 
Gordon: TM is a notice regime for the physical world:
consumers see identical machines, pills—only the TM tells them which of these
surfaces can be relied on to come from a reputable maker. TM helps markets in
physical goods work.
 
TM has expanded well beyond this notice function, borrowing
legitimacy in areas where lawsuits bring dubious advantage.  Does this interfere w/classic function of TM
to specify origin of makers.
 
Dinwoodie: answer may be different in Europe/US. There are
different forms of dilution.  Blurring is
potentially on the edges of the same justification, esp. in Europe where we
have a narrower conception of confusion. Tarnishment is doing something very
different.  No need for it in the
US. 
 
RT: Beebe said notice might be one of the main policy levers
by which TM policy can inform consumer understanding. Say more?
 
Dinwoodie: might depend how high in the hierarchy of values
you think notice comes in TM.  Maybe it’s
very low.
 
Beebe: §2 could be a place where we do a lot of our policy
work.  Through the registration
standards, we allow certain conduct to occur or not in the market; consumers
then adjust their expectations through that. Our registration doctrine affects
firm conduct which then affects consumer protection.
 
Dinwoodie: Maybe think of the potential issue of running
that to §43(a)—do you need to preempt causes of action that rely on
unregistrable marks.
 
Bone: Firms strategically respond to consumers; consumers in
a certain sense act strategically, or at least responsively, by appropriating
marks. What we miss in proactive/reactive is that we live in between those two.
Commercial reality is the product of all those interactions.
 
For Litman: You’re saying the doctrine favors the ©/owner
over the public, but © was a statutory exception to the common law.
 
Litman: the public’s not there. The court has the parties
before it. Once courts upheld the ©, courts imposed all sorts of conditions on
the publisher to exercise its rights for the benefit of the author; that then
died out in the 1920s when they forgot why they were giving rights to the
publisher.
 
Bone: strict compliance requirements had something to do
with the deviation from the common law.

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