WIPIP panel one: TM tarnishment and (c)

[title fixed because I can’t keep seasons straight]

Suneal Bedi, Bad Brands: Experimental Studies in Trademark
What is the reputation of a mark?  Working on PhD in marketing at Penn;
marketing is the best discipline to answer this Q.  Brand associations and attitudes are the
reputation of a mark. TM isn’t just source indicator; it invokes nodes of
meaning.  Attitudes= liking;
associations= other meaning, like “Mexican” for Chipotle. Thinks that
tarnishing should have to affect preferences/attitudes—should move Chipotle
down in the ranked preferences/affect market share. So why not look just at
sales? The statute is focused on reputation, which is distinct from decreased
sales though it should predict such decreases. There can be instances of
reputation harm w/o harm to sales.  WIP
looks at isolating decreased sales; have to use sophisticated quantitative
What predicts tarnishment? 1. Multiple exposures.  At minimal exposure, people don’t really
care. It’s an S shaped curve: middle exposure is high effectiveness; after that
there’s a saturation point, which is why it doesn’t matter for Pepsi to
advertise at the Super Bowl.  Tarnishment
is competitive advertisement harming the senior mark. But only awareness &
internalization of associations can do harm. 
A few exposures or one won’t affect reputation.  Empirical strategy: multiple exposures.
2. High cognitive load. 
Elaboration likelihood model predicts attitude change in 2 different
ways: (1) central (rational and thoughtful); (2) peripheral (positive or
negative cues, simple inferences). People use peripheral processing in times of
high cognitive load.  A double-take: your
mind is somewhere else, but as soon as you look close you aren’t really
confused. That’s an instance of high cognitive load, and that may predict
Studies include pre-tested brand associations and attitudes
for several brands. Chick Fil A; fictional tarnishing brand, Chicks Fill A
gentleman’s club.  People prefer Chick
Fil A lower after exposure and find it to be less wholesome.  It makes it a little different but not a lot;
not on tastiness or liking at all. What happens about multiple exposures?  Embedded banner ads in news articles; asked
people to tell them about the news article—high cognitive load.  Zero ads v. 4 ads: Then there was an effect
on rank, tastiness, and liking.
[This is all an argument about the nonrational, nonfactual,
non-thought based nature of tarnishment which under current 1A doctrine should
put it off limits for the law, just as in the tobacco cases.]
Felix Wu: what implications for tarnishment cases?
A: courts aren’t using the right empirical evidence, or
requiring the right empirical evidence. Both under and overinclusive—actual
harm is underinclusive, but 6th Circuit’s presumptive harm is
overinclusive.  If it exists narrowly, Ps
must introduce good empirical evidence.
Lunney: The Streisand effect—most such uses you’d never hear
of except for the litigation.  Debbie
Does Dallas, Pillsbury Doughboy. 
A: The distribution of awareness—how many people see it;
also of the people seeing it, how many times they see it.  Both matter. 
People who saw the movie saw her once in the costume, according to
Lunney.  He says that it’s not therefore
likely to be tarnishing.
Q: what about the ridicule factor? It doesn’t necessarily
matter what the “tarnishing” is but just the challenge, mockery.
A: but how do we know it’s a mockery? Only if it’s
associated with something perverse. 
[Wacky Packages]
Lunney: is it ok to garrote the demand for something through
criticism, a la Campbell v. Acuff Rose?
A: Wal-Qaeda: Jacoby’s survey says there was tarnishment;
but overriding concerns like free speech matter.   Neutral on whether this is a good idea
(thinks it’s kind of dumb).  He’s ok with
tarnishment not being something the law regulates—the point of this was to
discuss the standard of proving tarnishment now, which is bad.
RT: Charts show 8 ad spike/recovery in ratings. 
A: he thinks it’s a demand effect b/c respondents started to
say “I think you were trying to get me to like Chick Fil A more” when he asked
them what they thought the survey was trying to prove when there were 8 ads. [This seems worth further investigation]
McKenna: what makes us think that consumers’ reactions have
anything to do w/the fact that it’s ads and not other things that might produce
exactly the same effect. [I noted that Victor’s Secret image he used was from
the Simpsons, not the actual Victor’s Secret shop.]  If there’s nothing unique about what the law
targets, it’s cherrypicking from the same activities.
A: what’s unique is that the point of using it is to draw
attention to the junior mark specifically people because people are aware of
it.  Criticism = not using Wal-Qaeda to
draw attention/coopt.
McKenna: now you’re just talking about free riding.
A: yep.  That’s the
actual harm of dilution/tarnishment.
Charles Duan, Implications of Oracle v. Google for Technical
Is it an infringement to implement someone else’s interface?
Most standardss come from private standard setting organizations that invite
participants from multiple groups who propose ideas and then the SSO chooses
for standardization. Ideas contributed by 3d parties.  Patentable inventions?  SSOs have very comprehensive patent policies
trying to prevent patent claiming. But fewer have copyright policies.  W3C’s policy changed in 2015, but Oracle v.
Google was 2014—may have been a response to that decision. Confirms his belief
that programmers didn’t think APIs and standards were ©able. Should courts
accommodate industry expectations? 
There’s value to that, though the law is not bound to follow experts in
the field.
SSOs as a practical matter may want to start adopting ©
licensing policies.  Standard-setting
organizations like IEEE might want to be more involved in these discussions in
©, though members may have conflicting incentives.
Q: what about ASTM—software standards varying from other
types of standards?
A: distinctions—gov’t mandate in ASTM case. That was copying
the standards text and not implementing the standard—as if ASTM were
challenging buildings made using their standards.
Carys Craig, Substantial Transformative Taking: Holistic
Comparison and the Non-Infringing ‘New Work’
Bakhtin’s idea of dialogue: what an utterance chain looks
like from a dialogic perspective and how that should influence ©.  Utterance as work: four connected things:
what has been said before, the already spoken (relational meaning); distal not
yet spoken (the still to be said;) the proximal not yet spoken (anticipated
response); distal already-spoken (broader cultural meaning). So how can ©
protect the already spoken while permitting the dialogic utterance in the chain
and leaving room for the not yet said?
What is a copy?  Analysis
at the moment of prima facie infringement at which you determine something is
substantially similar. Canadian case: Cinar Corp. v. Robinson: pitch and pinch:
someone pitches a story about a film, which is then made into another
film.  Claude Robinson had spent years
building materials for Adventures of Robinson Curiousité; then he saw it on TV anyway w/parallel characters,
settings, scenes throughout.  On appeal, Cinar
argued that court was wrong to compare the works without filtering out the
unprotectable elements.  Altai abstraction
filtration comparison test: Canadian SCt said it wasn’t appropriate for this
type of work which has to be compared holistically.  Shouldn’t dissect work, which eviscerates it—hard
to get a sense of the authorial contribution. 
Comparison, abstraction, filtration, then compare again if necessary.  Criticized for undue focus on protecting
author over downstream creators, influenced by very sympathetic facts.
Maybe we need to look at whether the defendant’s work is in
its whole something new—new expression. Holistic comparison can be used to
shift to asking about the dialogic relation b/t the texts and to see the D as a
possible creator too. Could consider transformativeness of the taking into our
assessment of substantial similarity, rather than waiting for fair use and fair
dealing.  By the time you’re searching
for an affirmative defense, you’re already on the wrong side of copyright’s
moral equation—seeking a reprieve by calling yourself an author too. We could
do this at the infringement stage instead. 
From Canadian perspective: transformative use isn’t actually available
as a defense, but we could put it in infringement. 
Example: Larrikin Music Pub’g v. EMI Songs Australia (Down
Under/Kookaburra song)—line taken from common folk song and reproduced in hit;
court could find no way to avoid conclusion that substantial part of the song
had been taken, and there was no defense. Holistic consideration could find a
new work even w/some copying of the “golden nugget.”  Substantial transformative taking should be
regarded as an original work—not derivative but responsive, new utterance in
the chain in a discursive struggle w/P’s already spoken work.
A: not that surprised—old English fair use cases were about
new works being created; not framed as a defense at all.
Q: what happens to the derivative work right?
A: Canada doesn’t have one and neither should you. But you
should also resist the collapse b/t derivative and dialogic.  A derivative work has to be a substantial
reproduction so we can use this framing to get over the derivative hurdle.
Rosenblatt: comprehensive nonliteral similarity v. fragmented
literal similarity?  You maybe want to
distinguish them.
A: yes.  Sampling
cases—solving a problem that can’t otherwise can’t be solved.  Blurred Lines: they failed to filter out what
should have been. But sampling, you can do the filtering and still look like you’re
left with “golden nuggets” that are substantial, even though there’s a new
Q: so how do you distinguish b/t dialogue and “pinching”? [I
would frame this perhaps as: was Bakhtin’s formulation even set up to contemplate
“infringement” or other acts that might be considered illegitimate moves in a
dialogic chain? What if we care about things other than dialogue—can incentives
fit in?]
A: good Q. Wouldn’t necessarily get Cinar off the hook but would
limit attempt to control downstream uses?
Rob Walker, The Great Disappearing Doctrine: Making Sense of
Scenès à Faire
Doctrinal oddities: has a descriptive take but no solutions
yet.  Scenes a faire is apparently a term
from 19th c French dramaturgy, but he hasn’t been able to find  much/any use there, so if someone can figure
out what the judge who first used the concept meant that would be great.  [Paging Francesca Coppa.]
Hard to distinguish what courts are doing/what is or isn’t a
scene a faire, though we have some definitions, e.g. for software it’s
expression dictated by peractical realities; incidents, characters or settings
which are as a practical matter indispensable, or at least standard, in the
treatment of a given topic—in some ways this is just an application of
What do we mean by indispensable? May be clear in literary
work with traditional structure, like Chekov’s gun.  But what about avant-garde works or genre-busting
works? Isn’t this idea of indispensability just a judgment about what a work
needs to be a “good” version of itself, contra Bleistein?  Is Star Wars a sf film, a fantasy film, or a
western?  What are the conventions that
might be standard to it?  Is an earnest
treatment of a topic using conventions in a traditional realist way
unprotected, whereas a parody of the conventions could be protected, e.g.,
Blazing Saddles and Young Frankenstein and Spaceballs?  What’s the time at which we set a convention—at
the time the P’s work was created, or the D’s? 
Using the conventions of Elizabethan drama to write a new play would be
strikingly unusual today, but not in Elizabethan times.
As courts get into the analysis, scenes a faire tends to
disappear into the ether and is replaced by idea/expression and merger. Example:
Fulks v. Knowles-Carter, in which avant garde filmmaker sued for infringement
in Beyonce’s Lemonade video.  Court’s
attempt to pinpoint scenes a faire collapses into idea/expression and merger.
The exception: software cases where functional elements, programming
conventions etc. matter.  But no guidance
in literary/artistic context. 

Biggest problem: shifts focus away from proper analysis of similarities b/t the
works and their substantiality; talks about the overall genre or milieu
instead.  Underprotects realist works and
over protects genre defying or defining works, creating a Bleistein
discrimination problem.  Sherlock Holmes:
when written, new/creative (maybe; he hasn’t done the research), but at a certain
point this character solidifies into a set of tropes copied in many different
versions over time—eviscerated?  [Public
Fix: return to focus on originality at the time the accusing
work was created. In software, focus on functional/nonfunctional.
Q: relational context from Rosenblatt & Craig—Fulks submitted
his video to Beyonce’s producers.  You
lose the relational element.  Taylor
Swift: the court says that players gonna play is too banal.  Making old lyrics generic.  Timing: can Swift make anything generic
through success? Then we lose something about the contribution of the earlier
Madison: Judicial biography: the judge who used the term
first was committed to balancing access & rights—a pragmatic intervention
along the fair use continuum; another way to get at similar scope problems.
Q: why when we think about genre works it would result in
underprotection? Why wouldn’t recognizing contribution of individual work
result in right-sizing?  Originality
might not give us right-sized results; shifts us to thinking about what the
author contributed, not what the author took.
A: Will look into relational interactions.  May change his under/overprotection analysis.
Rosenblatt: every scene a faire was invented by someone but
we often don’t know by whom. 
Functionally an expiration doctrine?
A: likes that. 
Certain things shouldn’t be protectable. If we start thinking about
originality and take Feist seriously—the bar is low, but it exists—that’s the
right conversation.
RT: Doesn’t originality assessment require an assessment of
prior art? The reason we try to figure out what other works have done is to
figure out what shouldn’t be attributed to the original work of the accusing
author.  And one function of scenes a
faire is that it deals with what the patent folks might call “Obvious to try”: someone
was the first to use the missed phone call instead of the missed appointment at
the top of the skyscraper but that doesn’t mean they should get the rights to
that plot point; see also the Jurassic Park case—once you come up with the idea
of a dinosaur island, certain tropes follow for anyone with minimal exposure to
narrative structures.  That’s the
function of scenes a faire that allows it to parse originality.

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