IPSC: Copyright Fair Use and User Rights/Trademark IV

Posted on August 8, 2025 by rtushnet

Copyright Fair Use and User Rights

Stav Zeitouni, UC Berkeley School of Law, A Theory of
Noncommerciality in Fair Use

Lots of incoherent concepts—Hachette v. Internet Archive is
example where dct used “failed to pay the customary price,” but ct of appeals
said the use was noncommercial but didn’t matter b/c the use was not
transformative so factor 1 favors publishers. If transformativeness is
dispositive, what use is commerciality?

Incoherencies: (1) how to define ‘commercial’? and (2) what
weight should it carry normatively? What kind of use is noncommercial use? A
category, a descriptor of other kinds of uses like scholarly/educational,
something else?

Components: customary price, market harm, nonmonetary gain,
indirect profit, monetary profit. The first three shouldn’t be included in the
definition of commercial uses. (Paper goes into detail; I am persuaded.)

Normative weight: sometimes courts treat commerciality as a
semantic/descriptive exercise as whether profit is being made, and it’s used as
a heuristic for factor 4 on market harm. No normative weight beyond factor 4’s
own. But sometimes they use it in a categorical/normative way, which is what
Google v. Oracle does to tip the first factor. Thinks that there is normative
weight to noncommerciality.

Two normative ideas: (1) incompletely commodified copyright.
Things are, normatively and descriptively, fully commodified nor fully noncommodified.
We treat and regulate cultural objects in ways reflective of this. Thus,
universal commodification in © is dangerous: Elkin-Koren writes that when
culture is turned into a market it reduces citizens into potential consumers
and treats them as goods themselves. Zeitouni: access and freedom to use are
what allow creative practice to occur. Both require that commodified &
noncommodified understandings exist w/in ©.

Noncommerciality as a signal. The original work is assumed
to be commodified b/c of the justifications for copyright law. The use might be
commodified or noncommodified (parody, scholarly work); the secondary work
might be commodified or noncommodified. Transformative use works at the level
of the use; noncommerciality maps on more strongly to both work and use.

Can think of two axes: public benefit/private benefit, and
nonprofit/for profit. Mixed purpose could be public benefit for profit, and a
purely commercial area that is smaller than what is generally recognized.

Hachette: correct on the definition but wrong on the framework;
noncommerciality

Xiyin Tang: how do you view the disconnect b/t © and 1A noncommerciality?
What Tang worries about is equating commerciality w/profit-seeking—seems to
diverge even more deeply from 1A definition of “speech that proposes a
commercial transaction.” Lots of areas, like right of publicity, borrow a lot
from © but also hew more closely to the 1A definition for finding coverage and
don’t cover much nonadvertising speech.

A: haven’t worked that out. We’re already seeing problems
from ©’s incoherence. The more you stretch commerciality to include
reputational gain, etc., the more trouble fair use has.

Jacob Victor: isn’t this covered by transformativeness and
the fourth factor? GvO discusses public benefit in the fourth factor already as
well as market usurpation. Warhol: Mutant 1st/4th factor [to
me this is why her project is very useful]

A: it doesn’t replace transformativeness, certainly not in rhetoric.
Concerned about cases in which work is noncommercial and nontransformative. The
concepts do different work. [the disability aspects of Google Books are a
really good example here] The more noncommercial a use is, the more that should
tip factor 1, just like transformativeness.

RT: [Loved the point that “customary price” in the Nation
case is really about bad faith.

Good point about how discounting noncommerciality in
nontransformativeness cases and discounting commerciality in transformativeness
cases leaves noncommerciality with an unclear role to play, though I have a
little caveat. “In contradiction with the Circuit Court’s finding in Hachette,
this would mean that there ought to be cases in which the mere fact that a use
is noncommercial tips the scales of the first factor” – is this a
contradiction? Or just a criticism of the CDL aspect of the case instead of the
uncontrolled digital lending? Or just a disagreement about the role of other
factors? Maybe Hachette just isn’t one of those cases where noncommerciality
tips the scales given how much of the work was used, just like TVEyes is a case
where the defendant just took too much despite the transformativeness of its
offerings.

GvO’s treatment of teaching and scholarship as noncommercial
is not necessarily categorical or normative—I read it as empirical—most
teaching and scholarship in this country, and at the time the Act was enacted,
is and was carried out for noncommercial, that is nonprofit or governmental,
purposes.

Final tiny suggestion: look at history of fan art and
fanzines—often sold, but communities consider them different from conventional
commercial publishing. ]

The only thing I managed to actually say: I was looking for
more robust argument against what Lemley calls Chief Justice Webster/the
dictionary definition. Full disclosure: I like using the dictionary because it
offers a relatively narrow, profit-seeking definition of commerciality, which
can be used along a spectrum of direct and indirect profit to further
calibrate. I think this is a thing that more judges can reliably do than engage
with commodification more broadly.

A: Unfortunately has seen judges use dictionary definitions
that don’t mention profit to go the wrong way; the larger concern is the
normative effect of a commerciality finding.

Trademark IV

Kevin Collins, Washington University in St. Louis School of
Law, Trademarks and Clarity in Consumer Expression

Trademarks serve an extra function of clarity for consumers who
bear the TM, even without confusion, justifying liability in some cases even
without source confusion (though less often than courts have recognized). Consumers
convey messages about their own identities by wearing brands. Not a claim about
Veblen goods but about self-definition. Consumers can speak more clearly about
themselves where there is more control over TMs by TM owners.

Enthusiastic consumers want to use TM to signal intensity of
their affiliation with the brand message. How? They look to other consumers
wearing the brand—“reference group” in consumer-identity theory of brands. Not
atomistic.

A devoted beachgoer wants to signal passion for salt-water
sports. If there aren’t exclusive rights SALT LIFE won’t signal well—even people
who are “meh” about salt-water sports can display the mark, making the
intensity signal fuzzy. If exclusive rights exist, meh consumers are priced out
of the market, eliminating the fuzzy signal. Economic model proves this.

Agrees that liability is often too expansive, but need to
consider clarity benefits even w/o core consumer confusion. But should only do
so if mark carries identity-relevant brand messages, which many marks don’t do.
[Are there any prominent P victory post-sale confusion cases where they don’t?]
Also, only if the mark involves public display. Self-symbolism of using Ivory
soap doesn’t count. And consumers need to value clarity; where usage creates
belonging and consumers want to feel like part of a really large group—that might
be true for university logos in many situations. And it should be only if the
TM owner shows interest in culling reference group—if giving away TM items for
publicity purposes, then no.

Lemley: I don’t think you’ve successfully distinguished
Veblen goods. For your theory to work, it has to be the case that the value
comes from the ability to exclude people from the group (consumers need to
value clarity) and lets you charge higher prices. In what universe is that true?
In cases where people in the group benefit by excluding others; we are small
and select and no one else can be in the club. The reason TM owners of luxury
goods adopt the Veblen approach is b/c they understand that’s what makes their
marks more valuable.

A: would disagree—there’s something different between Michigan
and Ohio university hats. [Didn’t he just say that universities might not
count?]

Grimmelmann: If you have no TM rights, strong affiliated
people will want some mechanism other than wearing the hat—they’ll wear 6 hats.
If they are priced out, they’ll make their own hats if they’re really strongly
affiliated. [That is, as Dinwoodie says, being passionate and being able to afford
the hat are not correlated (unless you’re just talking about Veblen goods).]

McKenna: your entire theory is about vertical
differentiation: some Michigan fans v. meh Michigan fans.  

[RT: The principal-agent problem here is shown by Tesla. People
who bought Teslas in 2018 do not feel like they can speak more clearly about
themselves.

The paper’s example of a girl wearing her dad’s band T-shirt without
knowing anything about the band, much to the disappointment of the guy who
tries to chat her up, is a really clear expression of why the ability to jack
up prices—even if it exists, which I don’t think the paper establishes for
non-luxury brands—has no relationship to clarity of consumer signaling. That
girl got that T-shirt in an environment fully willing to suppress post-sale
confusion and dilution. But once the T-shirt entered the market, anything could
happen to it. Same thing happened to Burberry with chavs and various liquor
brands w/rap.

More broadly: This theory doesn’t work if there isn’t price
differentiation—this is one thing Posner points out in the Ty case, which is
that competition still keeps prices down even if brands have horizontally
distinctive value in the abstract. Most T-shirts with brand names sell for
roughly the same price, and Ohio State and Michigan State shirts definitely do.
If that assumption is wrong, then there is no clarity/access tradeoff.

But most important of all: The paper relies on the
assumption “that trademarks signal the intensity with which consumers embrace
brand messages.” We have lots of evidence to the contrary. It’s the
unauthorized merchandise that shows real consumer signaling—Harvard Debate or
Thomas Jefferson Band Brass Section T-shirts show more loyalty than Harvard Law
or Thomas Jefferson High School T-shirts. The economic analysis assumes that
authorized merchandise sends the strongest signal. My student Jaime Gordon has
done a study of Taylor Swift’s legal strategies that contradicts this claim.
The person who buys Taylor Swift merch on Etsy is often paying at least as much,
and sending a much stronger signal—one that is likely to be received as
such—than someone who buys a concert T-shirt. Pretty much any fandom behaves
similarly. And it’s the unauthorized or unofficial merchandise that is most
likely to be nonconfusing but still actionable under these extended theories. If
the assumption that wearing an unaltered version of the mark signals intensity
is wrong, then the model breaks down.

More generally, I don’t see why current group members have a
greater interest in preserving meaning than anyone else does in having meaning
change. That girl has an interest in being the kind of person who wears her
dad’s band T-shirts. And if Salt Life isn’t good enough to signal “I like the
beach” because too many people have Salt Life clothes or stickers, then “I
heart the beach” remains perfectly available.]

Jake Linford, Florida State University College of Law, Content–Based
Trademark Regulation

Elster: content based regulations of TM registration have to
be fine b/c TM is a content-based regime. Different Justices seem fine with
reasonableness or rational basis standard, like Eldred and Golan. Congress can
do what it wants.

But what about tarnishment and Tam/Brunetti? Some questions
arise:

Is protection against tarnishment consistent with “history
and tradition”? Thomas quotes Learned Hand from 1928 that appropriating
reputation of a mark is an injury even without tarnishment b/c reputation is a
symbol of its possessor. Early 20th century would allow regulation of
morality or public policy.

Is it reasonably related to TM’s purpose of preservation of
goodwill and/or prevention of consumer confusion? Barrett says that shoddy
goods/services might jeopardize the named individual’s reputation. That sounds like
tarnishment would be good enough to her.

Is there enough evidence of tarnishment to provide Congress with
a basis for anti-tarnishment? The evidence is not very strong, but maybe the
Court will presume that it happens. If there’s no there there, then maybe it
should be unconstitutional under Alvarez.

Is tarnishment viewpoint-based? VIP says that it is b/c
disparagement is viewpoint-based. Less damaging parodies aren’t suppressed. Gov’t
says no: graffiti analogy: you spray my building with graffiti: it doesn’t
matter what you say, but you’ve marked up my building in a way that will deter
my neighbors. If that signaling effect harms reputation, then the same sort of
signaling could happen in a TM context. Imagine a Cheesecake Factory-branded
glucose monitor—that incongruity could harm CF’s reputation by association with
diabetes. The incongruity is the problem. SFAA/Gay Olympics also suggests survives
scrutiny.

How liberally should courts use constitutional scrutiny to
second guess commercial regulation? They shouldn’t be using the 1A as a
deregulatory tool. 1A as tool for solving TM policy problems is likely to make
a mess. Before Tam, Tushnet said that it would be bad to use 1A to second guess
Congress’s decisions on registration policy. The current Court is likely to
uphold tarnishment; predicts lack of appetite for constitutional scrutiny.

RT: not disagreeing on most of descriptive account, but
viewpoint based regulations are really bad and it’s really important at this
moment to maintain that as a distinction even in regulations of “commerce.” I
didn’t think disparagement was viewpoint-based because it protected everyone; I
did think scandalousness was viewpoint-based. And if disparagement is
viewpoint-based because giving offense is a viewpoint, then so is tarnishment. Also, there’s a big difference in protecting only the famous: only some
entities are protected against tarnishment, which is an inequality that ought
to matter to the constitutional analysis. I was just reminded that the 1988
revisions started out with a disparagement provision that would have applied to
all marks, which Congress eliminated.

McKenna: You make a powerful argument against the way the Court
uses history and tradition. Learned Hand’s rationale in 1928 was a deviation
from the traditional rule; it doesn’t immediately stick with other courts; and
when it does stick, it’s used to expand concepts of confusion and not dilution.
Doing what you described would be another example of misuse of history and
tradition. And of course the time period to which that claim appeals has
nothing to do with the Founding or Reconstruction.

A: Consider Molly Brady’s arguments about trespass by
light projection: might be similar arguments. [Yeah, I thought those would
produce bad outcomes too.]

Matthew Sipe: Court is also inconsistent in handling
empirical social science. The Court will just pick whatever outcome it wants.

Grimmelmann: analogies to trespass: Even in the laser projection
cases, there are physical objects; the logic of analogizing to intangible
property is difficult. Could a property owner enjoin an adjoining billboard
that criticizes them?

Lemley: it’s reasonable to ask whether we should expect
consistency—the 1A might stay deregulatory for some things that benefit conservatives
but allow lots of regulation of businesses that don’t share administration
priorities. Also maybe IP just sits in a different mental bucket from other
economic regulations when it comes to the 1A.

Sari Mazzuco: Brunetti—some of the Justices seemed open to
the idea that “manner” of speech regulation could be ok; invited that sort of
argument. [pretty inconsistent w/idea that sex and excrement are presumptively
tarnishing and inconsistent w/gov’t defense of incongruity/glucose monitor as
justification for tarnishment]

Copyright Fair Use and User Rights

Carys Craig, York University –Osgoode Hall Law School, Copyright’s
Constitution: User Rights and the ‘Deprivation of Property’ Misdiagnosis (Or:
Lessons from South Africa’s Constitutional Debacle over the Copyright Amendment
Bill)

Risk that comes w/ a property based approach to conceptualize
©: not a South African story but a story of law generally. Old chestnut: is © a
property right? We should resist focusing on individual entitlement and right
to exclude; look more to speech, dialogue, cultural participation. One common
response is that it doesn’t matter what we call it as long as we recognize that
there are different kinds of property with different rules; the consequences
attached to that particular species of property are what matter. We are all
realists here!

But Jennifer Nedelsky, property theorist, points out that
choosing a legal category gives us presumptions, what will require
justifications, what norms will have to be argued against, what values will be
taken as given. We need legal tools that won’t divert our energies and skew our
perceptions by requiring us to rebut presumptions that were never appropriate
in the first place.

South Africa: stated objectives to amend the apartheid-era
Copyright Act to bring it into the constitutional era; align with digital/tech
developments; cater to people w/disabilities, impoverished artists, researchers,
educators, the creative industry. New hybrid fair use/fair dealing framework.
Specific limitations & exceptions for education, libraries/similar
institutions, people w/disabilities, plus fair use as a subordinate catchall
clause. Provisions to limit contractual overrides of limitations &
exceptions. Strengthening authors v. owners—royalty provisions.

Tortuous route to Constitutional Court; passed in 2017
originally. Constitutional Court will now opine on it. Q: does the bill permit
an arbitrary deprivation of property by (1) retrospective effect of fair &
equitable remuneration for authors; (2) new exceptions for users—fair use,
educational institutions, libraries etc. Seems somewhat unlikely that will be
struck down, but still it’s coming on 10 years. Disability rights exceptions
were previously read into the act because Court said that it was
unconstitutional discrimination against people w/disabilities not to have the
exceptions.

More fundamental than the doctrinal Q: this whole thing is
fundamentally a misdiagnosis of what’s happening in © reform. We don’t have to
answer the Q of whether it’s property. Politically it’s probably not feasible
to say it’s not property, but also it doesn’t necessarily matter—the issue is what
damage the property label is causing, what misunderstandings of © are generated
by property framing.

Exacerbated by the property label, 3 misunderstandings about
©: its object, its subject, and its scope. Copyright’s object: confusing the
physical analogue w/intangibles of mind. ©’s “thing” is not immutable, predetermined,
fixed, or stable in ways we expect from land. It’s a legal construct of the
state, not prior to the state.

Subject: discounting the public domain as central to the ©
system. The nature of © is to draw distinctions b/t that which cannot be owned
and that which can.

Scope: not just about owner’s rights. Users and authors also
have rights.

W/o property label, easier to see other constitutional
values involving economic and social relations; balancing rights both internal
and external to ©. Requires contextual, dynamic recalibration rather than
fundamental right.

Buccafusco: Is there anything distinctive about S Africa?
Are there relative differences in valences and implications versus US, Europe,
etc. or could this paper be about any nation? Cf. South Africa’s land
redistribution efforts.

from Blogger http://tushnet.blogspot.com/2025/08/ipsc-copyright-fair-use-and-user.html

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IPSC: TM III/Music

Posted on August 7, 2025 by rtushnet

Trademark III

Graeme B. Dinwoodie, Chicago–Kent College of Law – Illinois
Institute of Technology, Not Just the Gutting of Rogers: A Window into Modern
Trademark Challenges

Defenses developed much more seriously in the US than in Europe.
Rogers was an exemplar of the way to develop defenses. Ensure speedy resolution
of nuisance claims by weak confusion claims against Ds with strong speech
interests. But then Gordon v. Drape made defense seem wobbly. This wasn’t a
surprise given the Empire case—seemed much closer to the core of TMs/harder to
treat as a Rogers/quick-kill case. But the whole point of having a rule is
efficiency/certainty even w/ an occasional error. But common law means that
courts are going to want to tweak the rule to deal with the situations they
encounter. Ideally open questions can become more certain over time. Would
rather have certainty develop through accretion of case law.

Must we accept the current reality of textualism and expect
judges to read the Lanham Act like the tax code? Grynberg argued as far back as
2009 that TM wouldn’t be immune from the disease of textualism, especially
w/r/t defenses, and he’s been proven right—courts think the Lanham Act is “comprehensive”
which is laughably false. Gorsuch’s concurrence in JDI is textualism on
steroids—the idea that the statute demands the application of Polaroid
or Sleekcraft is bananas. How do we deal with this?

Go back to the TM Cases: essential character of the TM
system as common law and merely supplementary nature of statutory law. Push
common-law delegation statute characterization; there’s a robust literature on
this outside of TM. Gorsuch hints at constitutional avoidance creating room for
innovation.

TM needs to take on board the fact that it is a normative
project as a component of the solution. But the best openings in JDI—Sotomayor’s
survey skepticism, etc.—are framed by the Justices in empirical terms even
though they could easily lend themselves to normative analysis. Myopic focus on
consumer perception continues to infest the courts, despite that it’s
incomplete and 1-dimensional. Need to broaden the lens of what TM is doing.

Rules v. standards debate—has always been a standards person
b/c of the range of fact patterns. Pressure to create rules exist, but nebulousness
of TM concepts make rules harder to generate, as w/TM use.

Should TM be understood as consumer protection or industrial
property rights allocating rights among producers? Latter, more European, looks
more formalistic in definition and scope of rights. That would provide more
certainty. 9th Circuit just said in Ryder Ripps that Rogers didn’t
depend on intent.

McKenna: normative/empirical divide: Is formalism a middle
lane between the two? Formalism lets you say what “use as a mark” is using
formal characteristics about what things generally are uses and which aren’t,
and use normativity to justify doing that analysis at a higher level of
generality rather than case by case.

Discussion of Kagan’s empirical claim (parodies are unlikely
to cause confusion) as having a normative component.

Linford: Consider US v. Alvarez and its implications dilution:
one takeaway is that if Congress hasn’t buttoned down the harm story, that
strengthens the case for unconstitutionality. Constitutional review: scrutiny
is how good a job Congress did, and that’s sort of an empirical question.

A: it’s also normative, even if you’re asking about a
means/ends nexus. But making courts articulate justifications has some
disciplinary benefit.

Cynthia Ho, Loyola University, Chicago School of Law, Registered
but Replaced

Gemini Data registered since 2021; Google files application
for Gemini in 2023; refused but still kept using the term. Lawsuit resulted.
But there are over 1000 Gemini registrations and over 50 just for software.
When Gemini tried to get its own registrations, it got an Office Action about
other uses, and so it had to admit that it was a weak, diluted mark.

Many Metas existed before Meta; one just sold its name. Meta
has said the mark was diluted when trying to deal with preexisting Metas but
also is willing to bring confusion cases against new Metas. Pump, a small band,
lost a claim against Aerosmith’s Pump album. Dreamwerks v. Dreamworks studio;
it got swamped even after the 9th Circuit allowed its claim to
proceed. A bigger company may swamp you even w/a reverse confusion claim.

So does registration really work? Presumption of validity
doesn’t help if you can’t afford to litigate.

Dinwoodie: these are reverse confusion cases—small companies
should get injunctions if they succeed, so what is it that allows big companies
to proceed?

A: sometimes the small company loses; Dreamwerks they just
paid money.

Dinwoodie: Maybe the paper is about what the harms of reverse
confusion really are.

Lemley: Also articulate what the remedies should be. Money
gets paid b/c injunctions are a terrible idea from a consumer protection
perspective—making Meta abandon its new name causes confusion in the real
world. [Weren’t we just talking about normativity and disregarding actual confusion?]

Amazon Women’s Bookstore in 1995 started having an Amazon
problem. UTube (Universal Tube & Roll Co.) got a bunch of unwanted traffic.
Those are harms, but maybe the remedy is “small company should change its name
and get a bunch of money.” Bound up with registry crowding—there are a lot of
things that shouldn’t be registered. And it’s not so easy to find a name that’s
not registered by someone.

Rosenblatt: how do we deal with the fact that reverse
confusion happens? Is it ok that Amazon took over the name of a bookstore? Do
we think that small companies that sue should get payment or that they’re just
gold-diggers? Strong enforcement might be worse for small companies under many
circumstances.

Alex Roberts: look at bargaining under the shadow of the law—there
are lots of things that are never attempted b/c of registrations. This as a
kind of bullying invites comparison with the bullying literature.

Thomas Haley, University of Florida Levin College of Law,
Copyright Disincentives

Blurred Lines case created concerns about chilling effects. Arguably
broadened what was protectable subject matter for a musical work. If creating
music risks getting you sued, maybe the incentive to create music will be
decreased. A musician might see headlines, but how will that translate into creation
decisions? Perceived likelihood of suit; cost of litigation; cost of damages;
and norms all contribute to potential disincentive.

If no one hears your song, no one will ID infringement, so there’s
mostly no reason to worry. Litigation cost is high, and statutory/actual
damages can be too (actual can be much higher for a popular song), so those
would be disincentives. Potential plaintiffs don’t have much incentive to sue
unless the damages would be high.

Only the top of the market has much to worry about. Only 7
of well over 100 cases aren’t against one of the big 3 labels. Ds usually have
songs that chart high or at least artists who have charted in the hot 100 (over
90%).

Spoke to several musicians about their understanding—basically
everyone knew about Blurred Lines, thought it was wrong, and didn’t think it
mattered to them at all.  

Q: are there differences b/t artists with their first big hit
or trying to have their first big hit and those that are already established?
Are you looking at artists who are trying to become commercially successful or
those who aren’t playing the pop game?

A: the latter.

Joseph Fishman, Vanderbilt Law School, Revenue Streams
Without Streaming Revenue

Book based on qualitative interviews w/35 Nashville
songwriters. Chapter about how they make their money.  Punchline: they all describe earning majority
of their revenue from FM radio, not streaming, even though streaming is a much bigger
source of revenue for music publishers. Why?

Every rate paid is regulated one way or another. For radio
play, the only right that is needed is public performance (PRO) money;
streaming requires both public performance and reproduction, and Copyright Royalty
Board combines that into an all-in rate that’s about 15% currently. Streaming
is 45% of industry revenue and radio only 8%, so why do artists report things
differently?

Why? Hypotheses:

PROs are reporting things weirdly. Nearly half of what they
characterize as radio payments are bonuses for hit songs. Where do they get
that money? Nearly half comes from general licensing revenue for venues. Nearly
half of that money comes from physical performances/physical locations where
music is played.

Maybe country is different—more radio listening, less
digital streaming. Skeptical it can explain the magnitude, and pop writers say
the same thing.

Recoupment hides $ from streaming but not from radio.
Mechanical part of royalties is paid from publisher, which deducts advances.
But some writers didn’t receive advances/were never recouped and report the
same thing.

Smaller pie but bigger pieces for radio? It may be b/c of
streaming’s long tail, revenue is being cut into so many smaller pieces that a
big hit doesn’t represent much of a share.

Q: role of different PROs, some of which aren’t under
antitrust decree, in contributing to opacity?

Buccafusco: is there any way to determine whether the types
of songs earn different percentages of their income on radio v. streaming?

Q: what was the pie like prior to streaming?

A: lots of radio and a lot of revenue from physical media.

Q: was it less out of whack?

A: yes. As long as you made it onto the album you got a cut.

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IPSC: TM II/(c) II

Posted on August 7, 2025 by rtushnet

Trademark II

Mary Catherine Amerine, The George Washington University Law
School, Mind the Gap: How Brand Gimmicks Have Made Infinite the Zone of
Expansion

Doritos x Empirical alcohol: on shelves for three years.
Tesla mezcal. Le Moutarde Vin wine cobranded with Grey Poupon. Panera Croissant
clutch. KFC nail polish.

Cobranding: often well within the wheelhouse of one
participant, as in Adidas x Arizona Ice Tea sneakers. But also in house
production: In and Out sneaker (after they sued Puma for sneaker design).

If we’re taking this as having an impact on consumers, consumers
might expect a lot more product expansion. But we shouldn’t expand “bridging the
gap” infinitely for brands that wouldn’t otherwise qualify for famous mark
protection. So how should we think about these expansions? Haven’t seen it
played out yet, but may be coming.

Sliding scale of similarity? If not famous, maybe only
really expansive copying is covered when there is extreme product difference.

Q: could you change the standard so that if P didn’t do a
shoe deal it shouldn’t have rights in shoes? Barriers to entry for expansions
are so low; maybe we should rely less on hypotheticals and more on what you’ve
actually done.

Q: is this unchecked licensing really interfering with the actual
TM function of the mark? Not naked licensing but may have similar effects.

Linford: would drive big brands to engage in a lot of branding/licensing
deals.

Alex Roberts: many of these were limited editions; maybe we
should have abandonment-like theories—abandoned the expansion if not the core
brand.

RT: The greater similarity standard would make courts nervous
framed that way, but you could do it a different way: these collaborations/licensing
deals have shared characteristics. They use the brand prominently and clearly.
Not a red wax seal on tequila and no other signifier. So explaining what precisely
consumers have been trained to expect—and we do expect consumers to be
brand savvy—could help explain what is nonconfusing.

Copyright II

Ari Lipsitz, Boston University School of Law, Tarot’s Uneasy
Copyright

Rider Waite deck: Public domain under 1909 Act; in 60s, US Games
Systems, Inc. came in—wanted to call it the only authorized deck even though in
public domain, and foreign publisher said yes. Became a best-seller. If the
deck started & remains in the public domain, why does US Games have market
dominance?

Strategies: strategic © registrations—registration claims
only minor variations but enables © notice on every card. 1971 registration
claims added matter; very thin but very hard to figure out what they do and don’t
claim—identified the designs as preexisting material. Original registration
identified them as being in public domain; revised description 2003. New color
schemes, slightly cleaner images—not clear that those really qualify for new ©.

Exclusive licenses: agree not to dispute ©. C&D letters focus
on TM and lead to settlements instead of litigation. Permissions: fees for
commercial reuse; attribution only for tarot reading.

Evergreening: routinely republishing the deck with minor and
significant variations.

Blurring © and TM: tell people that Rider-Waite is a TM
owned by them including the images—just like you can’t copy “Monopoly.”
[Anti-Monopoly would like a word!] Also claim ownership of artist Pamela
Coleman Smith’s name. [Dastar, Dastar, Dastar.]

James Grimmelmann: complex structured set of symbols and
meaning occupies an interesting place in the idea/scenes a faire world. Would
be great to explain how this is similar to or different from other publishers
who retake public domain materials, like printing public domain books.

A: sheet music too!

Q: a story about transfer of wealth and control from authors
to publishers. Mark Twain’s complaints about the existence of the public domain
were similar.

Bruce Boyden, Marquette University Law School, Levels of
Expression

Is selecting which result from an AI prompt is the right one
enough to create copyrightability? This is a deceptively hard problem.

Is it creative enough? What constitutes creative enough is
basically undefined. We look for evidence of proxies for creativity:
choice/judgment/opinion. The more you’re making choices—choosing from 2 is not
maybe significant, but choosing 1 from 100 could be?

Determination of creativity is supposed to be holistic—how do
we apply that to selection of an image? It’s not selection in the sense of a
compilation. You have to refer to what’s being selected to understand what the
expression is. Selecting an image to serve as your icon serves an expressive
purpose in a 1A sense if not a © sense. Individual components of works are unprotected
but can achieve protection as strung together by author. Literary works example
indicates important distinction: if you’re only talking about selection of an
image, that’s not arranged in any way.

103(b) would probably doom attempts to claim a single
output. But are images really preexisting if they don’t preexist the author’s
interaction with the AI?

Does the size matter? Are these functionally “microworks”?
Hughes writes about smaller parts of a larger project, but he explicitly says
that small things like haiku should qualify for ©.

If selection shows the most power/effect on perception when
it is a single choice, that suggests that selection alone can’t do the work.
Coordination and arrangement are key. [But see databases?] Selection seems more
like a starting point but doesn’t define a completed work. It has to be laid
out in some sort of order to convey aesthetic or informational expression.
Otherwise it’s not a compilation, but just a heap.

Rosenblatt: Selection coordination and arrangement aren’t
rules in themselves, they’re proxies for 102/103. So the question we’re asking isn’t
whether selection itself is good enough, but whether selection can ever create
anything that is nontrivially distinct from an otherwise unownable work.
Usually not, in her view, but maybe in a very rare circumstance. Selection of a
set of pixels from a larger work of art to create a closeup. Nontrivially
distinct from what came before. Mere selection w/o coordination and arrangement
might do it, but we’re not asking whether selection is enough, we’re asking “when
is selection alone enough” and the answer is “rarely.”

RT: (1) Why are you setting authorship aside? If I go down
to the seashore and choose the most beautiful rock, it doesn’t matter how much
judgment I exercised. Authoring a choice and authoring a work are not the same thing.
(2) Wittgenstein’s definition of games—no necessary and sufficient condition;
maybe the same thing is true of copyrightable works when it comes to the limit
cases where the creativity comes from the compilation. [Relatedly: Selection
alone never enough is the claim: But see databases? Would a poetry compilation be infringed
by the exact same selection in a different order (assuming that the selection principle
is not, e.g., “these are all the poems of Edna St. Vincent Millay”)? I think
the answer is likely to be yes.] (3) Preexisting: the elements need to preexist the
creation of the work, not the interaction w/the AI. But courts have always
ignored this requirement, so it might not matter.

Grimmelmann: you’re appealing to intuitions about how much
information is in a selection. Sarah Scheffler et al.’s paper on using complexity to analyze copyright.

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IPSC: TM I/(c) I

Posted on August 7, 2025 by rtushnet

IPSC, DePaul

Trademark I

Stacey Dogan, Boston University School of Law, Hollywood’s
Trademark Law

Courts seem to be treating classically expressive uses,
including titles of movies, as source-indicating; Kagan didn’t seem to intend
this result and courts should be more cautious. But also thinking about Empire.
Courts were troubled by claims of expressive use by parties whose objectives
seemed brand-related and commercial. When creative industries are treating
characters and franchises as brands, why should TM disagree?

First part: titles. For a long time, courts have treated
title v title conflicts as potentially actionable. Deserves separate treatment.

Second: Hollywood and branding. Claim: Hollywood’s brand
fetishizing has blurred line b/t expression and commodity, with adverse
consequences for creators of all sorts. We should think about whether it’s
possible to limit those effects and provide analytical clarity.

Film as brand isn’t new: MGM v. Pink Panther Patrol where
Leval grants injunction. Movie studios have aggressively licensed characters,
titles and other features on toys, clothing, and other merchandise. More recent
decades: intensified to the point that brands become films (Barbie) and thus
improve the brand. Self-parodying. Line b/t expression and TM use/branding has
been eviscerated. Variations: title; series; character; other features
(Simpsons Duff Beer, Krusty Krab).

Effects on ability of others to use in expressive works is
one issue, but another is the implication of this trend for creative industries’
ability to defend their own uses of things that might be subject to others’
TMs. JDI: Rogers doesn’t apply to use as a designation of source for the
infringer’s own goods. In the wake of JDI, several courts have found movie and
TV titles at least potentially source-indicating. Some of these courts have
emphasized Ds’ commercial and branding efforts w/r/t the mark in the course of
finding potential source-indicating use. Belin v. Starz, CD Cal 2024: Ds filed
an application to register “BMF” for various classes. Not entirely irrational:
if the filmmaker is claiming its own level of exclusivity in a term, reasonable
to ask whether it is creating confusion w/someone else’s mark. Not crazy to ask
if the intention was to create a franchise instead of a more traditional title.
But that casts doubt on claims of Rogers eligibility. To the extent that
courts start treating titles as presumptively source-IDing, that affects other
creators using titles as terms of their own work.

Options: election: parties that rely on Rogers should
be estopped from asserting TM claims in the title/character/feature at issue.
(Aqua specifically avoided selling Barbie related merchandise.) Cf. Empire,
where studio sought (and ultimately abandoned) registration. This does not mean
that use is infringing—LOC still required.

Betsy Rosenblatt: Hollywood has no interest in claiming
expressiveness and 100% interest in claiming ownership in this context. Given a
choice, they’d rather assert TMs. Expressiveness isn’t up to the user. Wary of
election in this regard. Rather: say that when things get secondary meaning,
they don’t get to use Rogers, but unless and until they do serve as source-IDs
they aren’t marks. Characters aren’t inherently marks. Titles aren’t inherently
marks.

A: not suggesting that election = rights, but rather would
allow intention to build secondary meaning. [Discussion of fact that Hollywood
overreaches by registering lots of stuff like single titles.]

RT: Consequence of failure to have coherent commerciality analysis
versus commercial speech analysis. “Expressive” is a complete failure of a
concept—it’s true that the Apple logo is expressive for Apple too.

Highlight more the conceptually less justified title as
special: courts don’t seem willing to make the jump to Krusty Krab and Duff
Beer … just yet. The Rogers victories are in cases of content (w/exception of
Toy Story feelings bear litigation, where there was licensing). Non title uses
as Exception v. rule? But what is a “title”? Website (Punchbowl), song title
(Chainsmokers Sick Boy case is super interesting) where there is no tradition
of sequels or franchises.

Note challenge of reciprocity: usual error is to treat P’s
source-IDing use as D’s therefore source-IDing use.

Mark Lemley: Evaluating D’s attempt to make TM use might be
workable—Krusty Krab stuffed toys might be a TM use in the category of stuffed toys
w/o having a TM in Krusty Krab.

Victoria Schwartz, Pepperdine Caruso School of Law,
Rethinking Use of Trademarks in Art

Note that Pepperdine is litigating against Netflix and her
views are her own.

Concurrence hints in JDI: maybe Rogers isn’t good law at
all. What do we do if Rogers goes away? There are alternatives. A lot of hope
in nominative fair use as doing lots of the work. Need to shore it up, but most
of the cases we’re worried about could easily have been decided as NFU cases. Use
of a brand in all sorts of artistic work to reference that brand is at the core
of NFU.

To think through: what NFU has that Rogers doesn’t is “no
more than necessary.” That’s where I take some hope from © fair use analysis,
where courts are pretty willing to say that you have to take enough to make the
reference work. Reading that similarly in TM is you can say “Barbie” a lot if the
song is about Barbie. You just can’t say “Mattel’s Barbie Girl.”

Alex Roberts: Empire isn’t about the real Empire; Honey
Badger isn’t really a reference to the Honey Badger guy, but maybe descriptive
fair use covers that mostly. [I was thinking differently: that there is a kind
of descriptive fair use that is a descriptive use to identify the topic of the
conversation, which we call nominative fair use.]

Felix Wu: Is it necessary to use the mark at all? Once you’ve
decided to have a survey about the New Kids, you need to use their name. But do
you need to use LV in particular to talk about luxury? That’s what the concept
of artistic freedom gets you: you get to pick whether you want to talk
about LV when you talk about luxury. And courts don’t agree on whether you need
to justify your choice.

A: sort of like the satire/parody distinction—and that’s bad.

Mark Lemley: What are the consequences of fitting these cases
into other boxes? One consequence is that, in the 2d Circuit, you have to do a
full LOC analysis and you add a Third Circuit defense on top of that. NFU law
is screwed up! A broader challenge: the thing Rogers did that was helpful was that
it said “we don’t care about actual confusion/your survey.”

Felicia Caponigri: what do you do when Mattel says that it’s
an artist too and therefore there’s a LOC as to sponsorship/affiliation?

[My opening speculation is about trying to restore false
advertising concepts to TM, not just materiality but the relevance of explicit
v. implicit representations—this would fit nicely with focusing on source
confusion/speaker confusion versus other kinds of confusion as less likely to
cause harm.]

Mike Grynberg: if people can undermine the test with surveys,
we can look to JDI’s skepticism of surveys. How much better/worse is LOC once
you start disbelieving surveys in this context?

McKenna: worth remembering that in many circuits there’s no
such thing as NFU; every single circuit to consider Rogers has, w/exception of
7th, adopted it. So you’d be starting brand new and have to figure
out which version from the other circuits you should adopt.

The range of Rogers cases include obvious references to
nonentertainment brands; title v. title disputes; and increasingly a third
category in which my nonentertainment brand name is similar to something you’re
using but it’s not nominative (Punchbowl). [Also, “entertainment” is now a huge
category—is a restaurant entertainment? Is it entertainment if they have live
music? Florabama case.] Rogers made those differences unimportant, but they’re
now potentially three different categories. Which can be dismissed using a
motion to dismiss? Picking a lane has structural/doctrinal consequences, so we
shouldn’t erase a rule that keeps us from having to do a lot of that.

A: to be clear, not endorsing getting rid of Rogers!

Jake Linford: reminds him of PTO’s adoption of failure to
function to deal with losing scandalousness and disparagement. Do you try to
hide that move or are you explicit about it? [SCt said you couldn’t do
scandalousness as a category, but one defense of the category even at the time was
that such marks were especially unlikely to function; moving that assessment from
blanket rule to case-by-case is pretty clearly the mission of current SCOTUS TM
jurisprudence (Booking, etc.). Maybe the project of the paper could be to show
how there could be case by case analyses in different ways?]

Rosenblatt: Rogers was a reaction to the Debbie Does Dallas
case; maybe that’s a good comparator. There’s a value to having a 1A doctrine
that does work separate from other doctrines; one value is to say that
sometimes TM and the 1A conflict, and we should privilege the 1A under
appropriate circumstances. What are those circumstances? Under those
circumstances, we should be able to use 12(b)(6) across all circuits. NFU doesn’t
get us there in every circuit.  

Copyright I

Edward Lee, Santa Clara University School of Law, Is the Lay
Audience Real or Fake?

About 75 years from Arnstein v. Porter, written by Judge
Frank, a prominent legal realist. Adopts a lay audience test. Likewise, de
minimis test looks at the “average audience” and its recognition or lack
thereof of the appropriation.

Experiment: looked at a rug case and VMB Salsoul v. Ciccone.
Varied prompts—lines to highlight rug similarities; textual description of
similarities; lines + text description. For music: short clips to highlight
similarities focusing on horn hits, plus two minutes of both songs; text
description of similarities plus 2 minute clips; and short clips plus textual description.

Results: when presented as a hypothetical legal dispute and
asking subjects to imagine they were jurors deciding substantial similarity,
with no prompt, 63.4% found substantial similarity; with lines, 70.3%; with
text, 74%; with both lines and text, 82.2%. Significant results. Consistent
with hypothesis.

Song: 23.7% said SS with no prompt; short clips, 40.3%; text
29.9% and combination 29.2%, which is a little weird.

Also did a version where they didn’t say it was a legal
dispute. Rugs got weird: most said they were SS with no prompt (92% whereas lines
+ text got 80.8%); songs with no prompt were 44% and short clips 61.4%, text +
description was 48.6%).

We think courts should modify SS test. Modest intervention:
would the ordinary lay audience notice the similarities b/t the works.
Cf. doctrine of foreign equivalents where the court asks whether consumers
would stop and translate the foreign term into its English meaning. If the lay
audience wouldn’t notice the similarities, that would be the end of the road.

Option 2: bifurcated trial: would ordinary lay audience find
these 2 works similar? If no, stop. If yes, trial on copying and substantial
similarity. [How would that work?]

RT: how would that work? Maybe two things are both
paintings. What if they’re separate types of media but both about superheroes?

Bruce Boyden: did you define substantial similarity?

A: no for the no context groups; for the “legal case” groups,
we provided an infringement standard but didn’t define “substantial” except to
say that it didn’t have to be identical in every respect.

Boyden: Arnstein seems to incorporate wrongfulness of the
taking; other standards say “recognition” of the taking.

Tim McFarlin: difference v. similarity—if you’re prompted
for similarity, then it’s a test of whether you can spot what’s the same. What
about prompting for difference too?

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Amicus brief on unconstitutionality of dilution by tarnishment

Posted on August 5, 2025 by rtushnet

 Filed in the return of JDI v. VIP to the Ninth Circuit.

from Blogger http://tushnet.blogspot.com/2025/08/amicus-brief-on-unconstitutionality-of.html

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resale is not a misrepresentation of being an authorized seller under false advertising law

Posted on August 4, 2025 by rtushnet

FB Select, LLC v. Ocean Blue Trading, LLC, No. 24-cv-8425
(PKC), 2025 WL 2172653 (S.D.N.Y. Jul. 31, 2025)

Finding cases where TM and false advertising law give
different outputs on the same facts because of lack of harm/materiality/falsity
is my niche! Here’s another one: being an unauthorized seller isn’t false
advertising because there’s no false statement of fact.

FB, the exclusive distributor of Klaire Labs supplements on
Amazon, sued Ocean Blue for Lanham Act false advertising and tortious
interference with contract or prospective business advantages (the court asked
for briefing on its supplemental jurisdiction once it kicked out the false
advertising claim). FB alleged that Ocean Blue “willfully resell[s] illegally
and fraudulently sourced Klaire Products on Amazon without any authorization
from SFI.” There was no allegation that the products were counterfeit or nongenuine.
FSB alleged instead that “[t]he only plausible way Defendants could be
obtaining the volume of products they are reselling is by purchasing them from
one or more Authorized Sellers.” (That’s the basis for tortious interference.)

FB didn’t challenge any particular statement about the
product or its origins, but instead argued that the act of selling the product
on Amazon was an impliedly false statement because it failed to affirmatively
disclose that Ocean Blue had acquired the product from authorized sellers of
the product who did not have the contractual right to resell it to Ocean Blue. But
an act of selling the product “did not impliedly represent anything about the
identity of the party selling the product to Ocean Blue or of that seller’s
contractual responsibilities.” FB argued that there was an implied
representation that Klaire Labs guaranteed or warranted the product, but Ocean
Blue didn’t say anything about it, and there was no allegation of a deceptive
material omission.

from Blogger http://tushnet.blogspot.com/2025/08/resale-is-not-misrepresentation-of.html

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court upholds nine-figure verdict in false advertising case

Posted on August 1, 2025 by rtushnet

Guardant Health, Inc. v. Natera,
Inc., 2025 WL 2106522, No. 21-cv-04062-EMC (N.D. Cal. Jul. 28, 2025)

Previous opinion discussed here.
Guardant sued Natera for falsely advertising a clinical test; after the court
denied a PI, it conducted a trial at which Natera was held liable for willful false
advertising under the Lanham Act and California law. The jury awarded $75
million in damages, awarded $175 million in punitive damages under California law,
and issued an advisory verdict recommending $42 million in disgorgement. It
also rejected Natera’s false advertising counterclaims. The court here resolves
post-trial motions, including some discussion of the jury instructions.

The jury found
Natera’s advertisements were false by necessary implication. The ads compared
specific performance metrics of Signatera and Reveal, the parties’ competing
products, from two separate studies. “[M]issing from the side-by-side
advertisement was adequate context of the differences in the studies that could
lead to further explanation why specific key metrics were not actually
comparable on an apples-to-apples basis.” The comparisons, in context, were “statistically
invalid and misleading” because of differences in the underlying data
sources. This wasn’t puffery. Natera’s advertisements presented “specific and
measurable” claims of superiority of Signatera over Reveal.

not an apples to apples comparison

Advertisements using an “ ‘apples-to-oranges’ theory of
falsity” are literally false by necessary implication “where non-comparable
products are portrayed as otherwise equivalent (except for the superior or
inferior aspect being illustrated in the advertisement).” Interestingly, the
court actually gave this as part of its instructions, which stated in part:

A statement is literally false by
necessary implication when it does not explicitly state something that is
untrue, but considering the advertisement in its entirety, the only reasonable
interpretation of the statement is that it is untrue. Advertisements using an “apples
to oranges” comparison are literally false by necessary implication where
things that are non comparable are portrayed as otherwise equivalent.

The jury could properly find that Natera’s advertising
statement was false because it “omits differences which would have been
material to recipients.” And the metrics in the ad, as the ad itself said, were
“key” to the products’ functions and therefore to purchase decisions. “Indeed,
the fact that Natera highlighted these metrics in its advertising campaign
against Reveal suggests Natera is being a bit disingenuous in now asserting
their metrics are not really material.”

Consistent with the amount of money at stake, Guardant also
provided a survey to show that the ads affected respondents’ perception of product
quality (69.7% of oncologists “understood the main message of Natera’s email
advertisement to be that Signatera is superior to Guardant’s Reveal”), as well
as evidence that ads of this type affect doctors’ purchasing decisions. The
accuracy of tests like these ones “undoubtedly” concerned an inherent quality or
characteristic of the product.

Commercial advertising: Natera argued that it was just
disseminating educational materials, not ads. But the evidence at trial showed
that their purpose was to influence consumers. The comparison chart was
“provided to the sales force” and “used by the sales force in meetings with
oncologists and physicians for the purpose of influencing customers
(oncologists and physicians) to buy its tests.” The ads were widely
disseminated in the relevant market, through thousands of emails. And Guardant
presented evidence that Natera made its false claims with the express economic
motive to advance the sale of Natera’s test over Guardant’s. “The ‘education’
here was intended to drive sales.”

First Amendment: A false ad is not protected speech. Natera
argued that, because the comparison advertisement consisted of results from two
scientific studies, ONY, Inc. v. Cornerstone Therapeutics, Inc., 720 F.3d 490 (2d
Cir. 2013), precluded liability and required treating the ad as a statement of
opinion in a scientific debate. “ONY does not categorically immunize
false statements about peer-reviewed studies.”  Instead, “[s]tatements in peer-reviewed,
published scientific articles are entitled to protection against Lanham Act
liability” because, per ONY, they’re opinion rather than fact.  Specifically, for peer-reviewed scientific
studies, “conclusions from non-fraudulent data, based on accurate descriptions
of the data and methodology underlying those conclusions, [and] on subjects
about which there is legitimate ongoing scientific disagreement … are not
grounds for a claim of false advertising under the Lanham Act.”

However, “statements made within the academic literature and
directed at the scientific community” are distinguishable from advertising
“statements made in commercial advertisements and directed at customers.” [The
difference here from the Fifth Circuit’s Plastipure decision, on which
the court (I think correctly) relies, is that the ads in Plastipure were
not directed to doctors. But they were directed to specialist consumers, and
neither doctors nor other highly trained professionals are necessarily good at
spotting problems in ads that don’t give the full context of a study. (I don’t
think they’re necessarily good at spotting problems in full studies either, but
the Second Circuit’s holding really does need to be confined to that scenario
or, as everyone recognizes, advertising regulation would collapse.)]

Here, there was substantial trial
evidence that Natera did not merely reproduce and then accurately describe the
results of a scientific article. Instead, Natera (not scientists in a
peer-reviewed, published scientific article) placed, what the jury found to be
misleading, apples-to-oranges comparisons of the studies into a side-by-side
format.

The instruction on this point included:

Statements in a commercial
advertisement or promotion which are based on test results from a
peer-reviewed, published scientific study cannot be literally false unless that
party challenging the advertisement proves that:

1. The statement in the
advertisement of promotion is not, on its face, supported by the peer-reviewed,
published science study. In other words, even if the study is reliable, it does
not establish the statement at issue in the advertisement; or

2. The statement conveys a false
message that is beyond the scope of the peer-reviewed, published scientific
study, such as comparing test results from a different study when the results
are not actually comparable; or

3. The statement is supported by
the peer-reviewed, published scientific study but the results of the study were
fabricated or fraudulently created.

A party also may show that a
commercial advertisement or promotion that relies on a peer reviewed, published
scientific study is misleading if it reports results from the study in a way
that is deceptive and that deceived a significant portion of the commercial
audience.

The court also found that the jury was properly instructed
on awarding corrective damages. As a direct competitor (in fact, the other player
in a two-player market), Guardant was entitled to a presumption of commercial
injury once the jury found material misleadingness. And it also presented “substantial
evidence that Natera’s advertisements affected Reveal’s sales and that Guardant
needed prospective corrective damages to remedy the past wrong.” Even though Guardant’s
test at the time of the ads was a version no longer on the market, the ads targeted
Guardant’s products in general as “tumor-naïve” tests, and the next generation
was also “tumor-naïve.” Given that it was the immediate successor to the
targeted test and “reasonably proximate in time” to the ads, harm was
plausible.

Guardant’s evidence also reasonably supported the jury’s
finding of willfulness. I didn’t go back to see when these statements were
made, but apparently one doctor told Natera that the comparison between the two
studies would be “unfair” and characterized it as “a bit like comparing apples
and pears.” In addition, general competitive statements supported the willfulness
finding with statements such as: “We need to be laser focused … or we will lose
to Guardant. We need to put more intensity – this is a war we are entering,” “we
need to go to the mat here” and “[s]pend whatever is necessary to salt
[Guardant’s] launch” of Reveal. Testimony indicated that Natera sent about 10
emails to each oncologist.

Punitive damages were available on the California claims. The
$175 million in punitive damages worked out to a 2.3x multiplier for the damages,
“well within the range of an appropriate ratio.”

The court also declined to grant remittitur of the damages
award; the jury accepted Guardant’s expert’s 3x multiplier for $75 million in prospective
corrective damages based on the $24.8 million Natera spent on its anti-Reveal
campaign.

The court unsurprisingly also granted a permanent
injunction, though it refused Guardant’s request to require Natera to notify
customers that a jury unanimously found its advertising comparing the
performance of Signatera and Natera was false. “The jury’s award of prospective
corrective damages is an adequate legal remedy for this request, thus no
further equitable remedies will be entered.” But Natera was enjoined from
comparing the tests in terms of the advertised qualities “based, in whole or in
part,” on the two studies at issue.

The jury recommended $42 million in disgorgement, which was
about 44% of Guardant’s request. The court crunched the numbers on its own, as
is appropriate, and found attributing 50% of Natera’s sales of Signatera to the
false advertising to be reasonable, given that Natera exceeded its projected
sales by about 40-60% and Guardant’s projections were short by about 50%. That
led to disgorgement of a bit over $37 million. Disgorgement was appropriate to
prevent Natera’s unjust enrichment; willfulness supported disgorgement as well.

Guardant also sought a 1.5x multiplier for the actual
damages of $75 million. The Lanham Act allows a court to adjust a Lanham Act
award if it finds “that the amount of the recovery based on profits is either
inadequate or excessive” up to 3x. But actual damages should “constitute
compensation and not a penalty.” How to square these dueling goals? “Courts
sometimes award treble damages because economic harm is hard to prove, where
there is loss to reputation and goodwill, and to deter future infringing
conduct.” Here, though, there was only vague testimony about “the damages that
have been done to the reputation of this product,” and Guardant’s damages
expert testified that $75 million was “necessary in order to put [Guardant]
back in the position they should have been, level the playing field,” and
“correct the impressions that have been left in the market.” The jury
apparently accepted this testimony. “[A]n assertion by a CEO that additional
damages should be awarded for e.g. loss of goodwill, without any further
evidence, does not warrant an additional enhancement of the jury’s award of $75
million for corrective advertising.” This was especially true given the
punitive damages award under state law. Willfulness alone didn’t justify a
multiplier where “the actual damages awarded already compensate for the alleged
harm.”

Prejudgment interest: Section 1117(a) doesn’t mention prejudgment
interest, but 1117(b) (treble damages for counterfeits) does. And:

In Y.Y.G.M. SA v. Redbubble, Inc.,
75 F.4th 995, 1008 (9th Cir. 2023), the Ninth Circuit explicitly noted that
there is an express provision awarding prejudgment interest in Section 1117(b),
but not in Section 1117(c) [statutory damages for counterfeits]. The Court
applied traditional statutory interpretation tools to find this omission was
intentional by Congress, and thus prejudgment interest was not available under
Section 1117(c).

[Ah, if only the Supreme Court had noticed a similar issue
with the noncommercial use exception to dilution’s lack of a “use as a mark”
limitation! Anyway.] Expressio unius est exclusio alterius: “When Congress
includes particular language in one section of a statute but omits it from a
neighbor, we normally understand that difference in language to convey a
difference in meaning.” The same logic applies to regular infringement damages/profits.
Also, prejudgment interest is supposed to make plaintiffs whole, but the
damages here were for prospective corrective advertising. And disgorgement also
doesn’t need prejudgment interest to make a plaintiff whole. “Guardant was not
awarded monetary damages for past lost profits, profits that it ‘lost [the]
opportunity to invest.’”

The court also denied Guardant’s motion for $22 million in
attorneys’ fees. Although the jury found the false advertising willful, this
wasn’t an exceptional case. The key factors are (A) frivolousness; (B)
objective unreasonableness; and (C) considerations of compensation and
deterrence. “Natera’s litigation positions were not so unreasonable as to
render this case exceptional.” Summary judgment was granted to Natera in some
parts of the case, to Guardant on others, and mostly the case went to trial on
disputed issues. “[A] well-fought case where one side wins on all claims does
not transform a Lanham Act case into one that is exceptional. Were that the
case, attorneys’ fees would be awarded in almost all Lanham Act cases…. Success
at a jury trial does not deem the opposing party’s positions weak or frivolous.”

As for litigation conduct, Natera got sanctioned already for
certain conduct, and no further sanctions were warranted. Nor was it
exceptional to keep advertising after Guardant sent a cease-and-desist letter; Guardant
sued six days later.

from Blogger http://tushnet.blogspot.com/2025/08/court-upholds-nine-figure-verdict-in.html

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I write letters

Posted on July 31, 2025 by rtushnet

To Alan Garber & John Manning:

As
a member of the law faculty (and, not for nothing, a professor of the
First Amendment), I am writing you to express my strong opposition to
any “settlement” with the Trump Administration. Harvard has been a
beacon for academic freedom, and that means that even if Harvard’s
administration believes that it is getting a “good” deal, any “deal”
will be used to extort more concessions and destroy academic freedom
elsewhere. This is not how the leading US university should behave.
Moreover,
as every trade partner has seen—as Columbia University has seen—as the
recission package passed by Congress despite promises to the contrary
has shown–there are no “deals” with authoritarians of this stripe. This
administration is both unwilling and unable to keep its word. Russ
Vought and his ilk are not going to release money, and even if the money
previously owed is released without a court order, there will be more
demands and less money next time.
Instead,
the administration’s acts against George Mason’s faculty suggests that
individual professors are next, and our students are already at risk.
Protecting Harvard requires protecting its faculty and students from
government thought control. This cannot be accomplished merely by saying
in a statement that the university has retained academic freedom, if it
is accompanied by concessions to people who hate higher education and
want to destroy it. If you sign an agreement with these people, will
appointments and admissions be actually free to follow the pursuit of
academic excellence according to the law on the books? Or will a threat
hang over every decision? If you sign an agreement, will it still be
likely that you’ll wake up to find that we can’t have international
students any more until we do just one more thing to root out whatever
they’ve decided is too “woke”?
I
understand you must be under a huge amount of pressure. If the US does
not retain its democratic institutions, let it be without your consent
and with your resistance. If the US does survive as a democracy, we will
all remember what side Harvard was on.

from Blogger http://tushnet.blogspot.com/2025/07/i-write-letters.html

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9th Circuit affirms class status based on materiality of claim in product name

Posted on July 28, 2025 by rtushnet

Noohi v. Johnson & Johnson Consumer Inc., — F.4th
—-, 2025 WL 2089582, No. 23-55190 (9th Cir. Jul. 25, 2025)

J&J sells Neutrogena Oil-Free Face Moisturizer for
Sensitive Skin. The district court certified a class in a consumer protection
case brought by Noohi, who alleges that, despite the name, Neutrogena Oil-Free
Face Moisturizer for Sensitive Skin contains oils and oil-based ingredients (ethylhexyl
palmitate and soybean sterols). The court of appeals affirmed the
certification.

Noohi’s expert Hickner, a professor of materials science and
engineering, opined that, although “oil” lacks a standard scientific
definition, the term generally refers to a “naturally-derived, chemically
synthesized, or petrochemically-refined slippery … substance” that is
hydrophobic—meaning that it does not mix with water—and more viscous than
water, but less dense. Dr. Hickner opined that, based on their chemical
structures and physical properties, ethylhexyl palmitate and soybean sterols
are oils with oil-like physical properties.

Her expert Roberts, an econometrics expert, described his
proposed process for measuring class members’ damages by calculating the
economic value to consumers of the “oil-free” statement: qualitative market
research designed to uncover consumers’ understanding of and response to the
“oil-free” label, plus quantitative surveying and market analysis to measure
the economic value to consumers of the “oil-free” statement.

J&J contested the evidentiary value of both experts’
proposed testimony and submitted competing expert declarations for both.

First, the district court could properly accept the proposed
damages model of Noohi’s economic expert. The Ninth Circuit has held that
“class action plaintiffs may rely on a reliable though not-yet-executed damages
model to demonstrate that damages are susceptible to common proof so long as
the district court finds that the model is reliable and, if applied to the
proposed class, will be able to calculate damages in a manner common to the
class at trial.” The district court did not abuse its discretion in finding the
proposed damages model fit Noohi’s theory of harm and was sufficient for
purposes of class certification.

For measuring the price premium, Dr. Roberts proposed to
show survey participants the product and ask at what prices they would find it
“too inexpensive to be considered, a good value, expensive but still worth
considering, and finally, too expensive to be considered.” Dr. Roberts would
introduce information “challenging the ‘oil-free’ claim,” e.g. by telling
participants that the ingredients contained extracts of soybean and palm oil.
Then the survey would ask the price question again. He proposed to use regression
analysis to determine the percent of the product’s overall price associated
with the phrase “oil-free.” Courts have approved of similar
“benefit-of-the-bargain” damages models in deceptive marketing cases under
California law.

Dr. Roberts also proposed to measure “softer” kinds of harms
consumers might experience, such as changes to “overall consumer satisfaction,
brand loyalty, willingness to recommend [the Product], and repurchase intent.”
He proposed questions about their attitudes towards and impressions of the
product before and after the “exposure.” He would use “multivariate
statistic[al]” analysis to quantify the changes in respondents’ perceptions of
the Product. That would include damages beyond a price premium. But that didn’t
make the problem unusable. The problem only comes when a model proposes to
measure damages not associated with the plaintiffs’ theory of harm that can’t
be separated from damages tied to the plaintiff’s theory. So all Roberts had to
do to solve the problem was … not ask those questions.

J&J also argued that rather than comparing what
consumers are willing to pay before and after they learn that the Product is
not “oil-fee,” Roberts should compare “what consumers paid for ‘Neutrogena’s
Oil-Free Face Moisturizer for Sensitive Skin’ and what they would have been
willing to pay for ‘Neutrogena’s Face Moisturizer for Sensitive Skin,’ holding
everything else about the product’s performance and packaging (other than the
‘oil-free’ claim) constant.” Dr. Roberts’ model, J&J argued, would
improperly include the “emotional value” that consumers associate with learning
that the “Product’s label contains a lie.” 
But “California law does not prescribe any specific means of measuring a
price premium for purposes of actual damages or restitution. In fact, ‘[c]lass
wide damages calculations under the UCL, FAL, and CLRA are particularly
forgiving.’” All that was required was “some reasonable basis of computation.”

“There is no talismanic means of measuring damages for
deceptive marketing claims under California consumer protection law.” Conjoint
analysis is ok, as is “contingent valuation analysis,” which is similar to Dr.
Roberts’ proposed methodology in that it varies the features of a single
product by presenting new information about the product and asks survey
participants to “directly report what they are willing to pay for it.”

True, surveys might be badly done and inflate damages or
fail to replicate purchase conditions. But Dr. Roberts recognized those risks
in his deposition and rejected telling survey participants “you were lied to.”
“Should Dr. Roberts’ execution of the survey fall short of that mark, [J&J]
may explore that failure at summary judgment, in a renewed Daubert
motion, or during cross-examination at trial.” At the class certification
stage, the key inquiry was simply whether Noohi has “demonstrated the nexus
between [her] legal theory … and [her] damages model.” Whether the proposed
calculation of the price premium would be accurate was a “merits inquir[y]
unrelated to class certification.”

Second, materiality and reliance were susceptible to common
proof. “Materiality, and therefore an inference of reliance, can be established
by reference to an objective, reasonable consumer standard, and so in this case
may be proven in a way common to the class.” It is for this reason that class
actions asserting the
usual California claims are generally “ideal for class certification.”

The presumption was rebuttable, but the district court
didn’t abuse its discretion in finding the presumption to be unrebutted. “If
the misrepresentation or omission is not material as to all class members, the
issue of reliance ‘would vary from consumer to consumer’ and the class should
not be certified.” Here, the district court also relied on the undisputed
evidence of classwide exposure to the “oil-free” language prominently displayed
on the front of the packaging. In determining material misleadingness under
California law, “the primary evidence … is the advertising itself.” The court
was quite plaintiff-favorable here, as its understanding of California law
required:

It is hard to imagine that
consumers would purchase a product labeled “Oil-Free Moisture” without regard
to whether the product was free from oil. If, somehow, the evidence later shows
that a reasonable consumer would not have found the product’s name to be
material to their purchase decision, “the failure of proof on the element of
materiality would end the case for one and for all; no claim would remain in
which individual reliance issues could potentially predominate.” 

Given the objective standard for
materiality and the undisputed evidence of classwide exposure, Noohi is
entitled to the inference that reliance can be shown via common proof.

J&J argued that “oil-free” might have multiple different
interpretations: doesn’t contain oils, doesn’t contain ingredients derived from
oils, or doesn’t perform in a way consumers consider “oily.” But J&J didn’t
offer persuasive evidence of this variance, only Noohi’s testimony as to her
motivations for purchasing and the expert report of a dermatologist as to the
dermatologic uses of oil-free products. That didn’t show variance within the
class.

Second, even if understanding of “oil-free” varies across
the class, J&J didn’t explain why that would undermine the commonality of
materiality based on a reasonable consumer standard, or rebut the inference of
reliance. In cases reaching the opposite conclusion, “a sizable portion of the
class either were not misled by the statements or would not have found the
misrepresentations to be material had they known the truth.” As opposed to
showing that “oil-free” didn’t affect the purchase decision, J&J’s evidence
at most showed that it “affected the purchase decision of class members—and so
was material—for different reasons.” J&J offered no evidence that “a
consumer who thought ‘oil-free’ meant ‘without oils’ was any more or less
likely to be affected in their purchase decision than someone who thought it
meant ‘without oil derivatives’ or not tactilely ‘oily.’” Thus, J&J’s
argument didn’t undermine the idea that materiality was susceptible to common
proof:

The baseline inquiry is whether the
statement was material to a reasonable person. An affirmative answer to that
question gives rise to an inference of reliance. A showing that for some
portion of a class that statement was not in fact material upsets that
inference. But a showing that a statement was material to different class
members in different ways does not.

In California, “a plaintiff need not establish at the class
certification stage that class members share a uniform understanding of the
contested term.”

J&J also argued that it defeated the inference of
reliance by showing that 30% of purchases were repeat purchases. (One thing
that could be useful in a false advertising case would be to know
whether that was a low percentage for a personal care product, or a high
one.) “The existence of repeat purchasers does not defeat the inference of
reliance. There is no indication that the repeat purchasers knew that the
Product was not oil-free and purchased it anyway.” Plus, for reliance under
California law, a misrepresentation need not be “the sole or even the decisive
cause of the injury-producing conduct.”

from Blogger http://tushnet.blogspot.com/2025/07/9th-circuit-affirms-class-status-based.html

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court finds advertising injury insurance coverage in false association case despite consumer fraud and other exclusions

Posted on July 25, 2025 by rtushnet

Illinois Casualty Co. v. Kladek, Inc., No. 22-3214 (DWF/DJF),
2025 WL 2071043 (D. Minn. Jul. 23, 2025)

ICC sought declaratory judgment that it didn’t have to defend
(or indemnify) its insured in a Lanham Act false association lawsuit brought by
models, and failed, at least as to defense.

In the underlying lawsuit, the models sued over a “Gentlemen’s
Club” that used photos of them in social media ads. They alleged 43(a) false
endorsement, unfair competition, and false advertising; right of publicity
violations; negligence; violation of Minnesota’s Uniform Deceptive Trade
Practices Act; and unjust enrichment.

ICC issued Kladek business liability coverage that included
advertising injury and also issued an additional cyber protection endorsement. An
arbitration panel concluded that the cyber protection endorsement created a
duty to defend (but did not resolve the duty to indemnify), but the business
liability coverage is broader and so still relevant.

Advertising injury covers, inter alia,

(4) Oral or written publication, in
any manner, or material that slanders or libels a person or organization or
disparages a person’s or organization’s good, products or services;

(5) The use of another’s
advertising idea in your “advertisement”; or

(6) Infringing upon another’s
copyright, trade dress or slogan in your “advertisement.”

But ICC contended that exclusions applied. Under Minnesota
law, courts read policies in favor of finding coverage, construing words of
inclusion broadly and words of exclusion narrowly.

First, ICC argued that it excluded coverage with the “law
exclusion,” which covered liability “arising directly or indirectly out of any
action or omission that violates or is alleged to violate … (12) Any federal,
state, county, municipal or local consumer fraud protection law, regulation,
ordinance, order, or directive barring fraud, unfair competition, and/or
deceptive business practices.”

The court agreed with Kladek that the Lanham Act and MDTPA
claims apply to various types of conduct, not all of which can be labeled
“consumer fraud.” The exclusion does not apply to the statutory claims insofar
as they do not implicate consumer fraud conduct:

Notably, the Models have not
alleged that any “consumer” has been defrauded. Instead, the Models allege that
they were wronged because their images were used without their authorization or
compensation. These claims are not “consumer fraud” claims at their core, but
rather commercial claims involving advertising injury.

“Because the core of the Models’ Lanham Act claim alleges an
injury caused by the unauthorized use of their images without compensation by
the Club, and not a consumer fraud claim, ICC has not demonstrated that the Law
Exclusion applies to the Models’ Lanham Act claim.” Of course, injury to
consumers is the method by which the harms of false advertising are inflicted,
and courts have rejected models’ Lanham Act claims merely based on failure to
pay, but that I suppose is a matter for the merits.

In a footnote, the court said that the duty to defend even
one claim triggered the duty to defend in its entirety unless an additional
exclusion applied, and that, in the alternative, ICC’s interpretation would
render any insurance illusory. “[W]hen policy exclusions appear to be broader
than the coverage, so as to ‘swallow up’ the coverage, rendering the insuring
promise illusory, a court will avoid that unreasonable result.” The court found
that logic compelling, “as it appears that the ICC’s broad interpretation of
the policy exclusions would preclude coverage in most factual scenarios.”

Electronic chatroom exclusion: this excluded advertising
injury “[a]rising out of any electronic chat room, bulletin board, or blog the
insured hosts, owns, or over which any insured exercises control.” ICC argued
that Facebook, Instagram, and Twitter, the platforms on which the models’
images were used, “all allow users to post or read messages and control or host
their own bulletin boards” and therefore qualified for the exclusion. But the
policy didn’t define “bulletin board” or “electronic chat room,” so the plain
meanings of those terms applied. Chat rooms involve realtime communication, and
a bulletin board is an “online communication system[ ] where one can share,
request, or discuss information on just about any subject.” “In contrast, as
commonly understood, Facebook, Instagram, and Twitter are social media
platforms.” Kladek didn’t host, own, or exercise control over Facebook,
Instagram, and Twitter, but rather used them to promote its business. “There is
no evidence that it did so with any intention to generate any discussion among
viewers. Indeed, the use of the Models’ images did not occur in a chat room, on
a bulletin board, or on a blog.” The best description of where these images
were was that they were on Kladek’s “social media accounts.”

ICC had one final try: its exclusion for “multimedia peril,”
“the release or display of any ‘electronic media’ on your ‘internet’ site or ‘print
media’ for which you are solely responsible, which directly results in any of
the following”:

a. Any form of defamation or other
tort related to the disparagement or harm to the reputation or character of any
person or organization, including libel, slander, product disparagement, or
trade libel;

b. Invasion, infringement or
interference with an individual’s right of privacy including false light,
intrusion upon seclusion, commercial misappropriation of name, person, or
likeness, and public disclosure of private facts;

c. Plagiarism, piracy, or
misappropriation of ideas under an implied contract ….

This exclusion applied unless the cyber endorsement applied—or
maybe it did so if the cyber endorsement applied. “In essence, ICC
appears to argue that because the ICC has a duty to defend claims under the
Cyber Endorsement (as determined by the arbitration panel), all of the Models’
claims are now excluded from coverage under the Policy.” The court disagreed. The
arbitration panel didn’t decide indemnification, or which claims in the
underlying suit triggered the cyber endorsement duty to defend. Also, the cyber
endorsement created several ambiguities, and was unclear on its relationship
with the main liability policy. Basically, the endorsement was inconsistent
about whether it amended or supplemented the main policy and stated that its coverage
was “in addition to, and will not erode, the limits of insurance provided
elsewhere under your Policy.” And the main form was written on a traditional
“occurrence” basis, while the cyber endorsement was a claims made policy. Finally,
“the wording of the Multimedia Exclusion is, itself, circular and facially
contradictory” by excluding multimedia liability for advertising injury “except
to the extent that coverage may be provided under the Cyber Endorsement.” The
court found the language confusing, but one reading was that, once coverage exists
under the cyber endorsement, it also exists under the basic liability policy. “Ambiguities
are construed against the insurer and in favor of coverage.”

from Blogger http://tushnet.blogspot.com/2025/07/court-finds-advertising-injury.html

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