Rebecca Tushnet

Showing good-looking cuts of meat is puffery for pet food

Posted on May 7, 2018 by rtushnet

Wysong Corp. v. APN, Inc. 2018 WL 2050449, — F.3d – (6^th
Cir. May 3, 2018)|

Wysong, which sells pet food, sued six competitors for
violating the Lanham Act through pictures like this one:

“The bag features a photograph of a delicious-looking lamb
chop—but Wysong says the kibble inside is actually made from the
less-than-appetizing ‘trimmings’ left over after the premium cuts of lamb are
sliced away. The
district court dismissed the claims, and the court of appeals affirmed.

Wysong argued literal falsity because the photographs on the
packages told consumers the kibble was made from premium cuts of meat, when it was
actually made from the trimmings left over after the premium cuts are gone. But this wasn’t unambiguously false—a
reasonable consumer could understand the images as indicating the type of
animal from which the food was made (e.g., chicken) but not the precise cut
used (e.g., chicken breast).

Without a survey, pleading misleadingness required facts
supporting “a plausible inference that the challenged advertisements in fact
misled a significant number of reasonable consumers.” The complaint alleged
that contemporary pet-food consumers prefer kibble made from fresh ingredients
like those they would feed their own families, and that the accused packaging
tricked those consumers into thinking their kibble was in fact made from such
ingredients. But context matters, and “reasonable consumers know that marketing
involves some level of exaggeration.” A
reasonable consumer at a fast-food drive-through doesn’t expect that his
hamburdger will look just like the one pictured on the menu. Likewise, without more facts, “it is not
plausible that reasonable consumers believe most of the (cheap) dog food they
encounter in the pet-food aisle is in fact made of the same sumptuous (and more
costly) ingredients they find a few aisles over in the people-food sections.”

Wysong responded that some pet foods, such as Wysong’s, do contain
premium-quality ingredients. But Wysong failed to explain “how that fact
impacts consumer expectations. Are these premium sellers even known to the
Defendants’ intended audience? Do their products compete with the Defendants’,
or do they cater to a niche market? Are there obvious ways consumers can
distinguish between the Defendants’ products and the fancier brands?” The
ingredient lists’ effect on consumers also needed to be explained: many of the
packages listed animal “meal” or “by-product” as an ingredient. “And that
information certainly suggests that the kibble is not made entirely from
chicken breasts and lamb chops.”
Ultimately, the relevant market and the products’ labeling are crucial
in evaluating plausibility, but Wysong said next to nothing about them. And
that is fatal here, since the puffery defense is such an obvious impediment to
Wysong’s success.”

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ABC doesn’t find getting rid of pro se (c) and TM claim so simple

Posted on May 3, 2018 by rtushnet

Manigault v. ABC Inc., 2018 WL 2022823, No. 17-CV-7375
(S.D.N.Y. Apr. 12, 2018) (magistrate judge)

An app owner’s copyright and trademark claims against a news
organization for broadcasting a news story about apps, including his, survive a
motion to dismiss on the merits (though the owner has to replead copyright
ownership). Partly this terrible result
is from bad Second Circuit precedent, but partly it stems from a
refusal to consider the content of the accused TV segment on a motion to
dismiss, although doing so is clearly acceptable because the content is
integral to the complaint. Despite the bad Second Circuit precedent, this is an easy case for dismissal. Should I have an “argh” tag?

Manigault alleged that he “owns KeyiCam unregistered
Trademark, which KeyiCam is Software that takes a picture of a Key and provides
the biting code to end user.” ABC allegedly infringed his copyright and
trademark rights “by showing a picture of KeyiCam website” “in connection with
their News ‘Locked out? Smartphone app might be key to solving problems’ and
‘KeyMe addresses security concerns of key duplication.” ’ “ABC Inc advertised
on their [sic] website that… KeyMe isn’t the only game in town, though;
there’s also Keys Duplicated and KeyiCam.” Manigault alleged that ABC’s use of
the marks similar to KeyiCam “is likely to cause consumers mistakenly to
believe that the [goods identical or similar to KeyiCam] emanate from or are
otherwise associated with KeyiCam,” causing KeyiCam to lose business.

ABC explained that Manigault’s claim “arises from a consumer
news segment that was broadcast on [its 6abc’s] program” reported by journalist
Nydia Ha, which “lasted roughly three and a half minutes.” According to ABC,
the segment reported by its journalist “reviewed the phenomena of smartphone
applications … that allow consumers to create and store virtual copies of
their keys – digital copies which can then be used to order physical duplicates
of the keys if they are lost.” “The report focused on one service called
KeyMe,” explained how it works and “mentioned the names of the other two
services, a screenshot from each business’s web site was displayed on the
screen for about a second each.” ABC contends that it “also posted an article
on [its 6abc] website summarizing the news report,” which included “hyperlinks
to the websites for each of the companies mentioned in the report.”

Since Manigualt was pro se, his allegations had to be construed
liberally.

ABC argued that the complaint “is premised on the assertion
that the ABC news report is a commercial advertisement for key duplication
services. It is not, and so the Complaint must be dismissed as a matter of
law.” The magistrate deemed this argument “meritless,” because Manigault’s
allegations had to be taken as true on a motion to dismiss, and he alleged that
“KeyiCam appeared in ABC Inc advertisements” and “ABC Inc advertised on their
[sic] website that … KeyMe isn’t the only game in town, though; there’s also
Keys Duplicated and KeyiCam”; and “KeyiCam is mixed in the broadcasted
commercial in ABC News with other similar Startups such as Keyme and Keys
Duplicated that offer similar goods and services.” This was enough.

Likewise, the magistrate rejected ABC’s argument that
confusion was implausible and that reference to KeyiCam was nominative fair
use. Without discussing Twiqbal, the magistrate ruled that a
challenge to plausibility went to the merits of the trademark infringement
claims, as did nominative fair use (citing IISSCC) and First Amendment defenses,
thus requiring a summary judgment motion or trial.

So many problems.
First: “confusion over what?”
Construed as liberally as possible, the complaint still has no
allegation that there’s confusion over ABC’s connection with Manigault. Mis-reporting, even assuming that’s what
happened, isn’t generally directly infringing, and at most secondary liability
would seem to be an issue. Cf. the
Hangover case, in which the court points out that confusion over whether a piece
of luggage shown in a movie was actually from LV is not the kind of confusion
against which the Lanham Act is directed. Louis Vuitton Mallatier S.A. v.
Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D. N.Y. 2012) (granting
motion to dismiss).

The Second Circuit’s bizarre treatment of nominative fair
use has made this harder, but invoking a trademark doesn’t inherently remove
12(b)(6) as an option. A motion to
dismiss should still be viable “where simply looking at the work itself, and
the context in which it appears, demonstrates how implausible it is that a
viewer will be confused into believing that the plaintiff endorsed the
defendant’s work.” Elec. Arts, Inc. v. Textron Inc., No. C 12-00118 WHA, 2012
WL 3042668, at *5 (N.D. Cal. July 25, 2012); see also Hensley Mfg. v. ProPride,
Inc., 579 F.3d 603, 610 (6th Cir. 2009) (affirming grant of motion to dismiss
where the defendant did not use the trademark to identify the source of its
products or to suggest an association between the defendant and the plaintiff);
Cummings v. Soul Train Holdings LLC, 67 F. Supp. 3d 599 (S.D.N.Y. 2014)
(granting motion to dismiss where confusion based on inclusion in artistic work
was implausible); cf. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013)
(recognizing that even descriptive fair use, an affirmative defense, can be
resolved on a motion to dismiss where the necessary facts are evident from the
complaint). This practice is
particularly important given that nominative fair use protects important First
Amendment interests, and that early resolution of assaults on news reporting
prevents chilling core First Amendment-protected speech. [Also why we need a federal anti-SLAPP law.]

Similarly, on copyright, the magistrate refused to consider
ABC’s fair use argument under 12(b)(6), considering it an issue only for
summary judgment motion or trial (not citing any cases). Here’s one saying that 12(b)(6) is a fine
time to resolve clear-cut cases of fair use: TCA Television Corp. v. McCollum,
839 F.3d 168, 178 (2d Cir. 2016), cert. denied, 137 S. Ct. 2175 (2017).

However, Manigault failed to plead ownership of a valid/registered
copyright in any specific work, so the claim was dismissed with leave to
amend.

The magistrate also held that there were no allegations that
ABC engaged in deceptive acts or practices, so claims for such under New York
law had to be dismissed—inconsistent with the TM claims, but it’s hard to be
surprised.

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Alzheimer’s Association and Alzheimer’s Foundation in keyword battle

Posted on April 30, 2018 by rtushnet

Among other things, this case has some interesting things to say about IIC and proper controls in survey cases.

Alzheimer’s Disease & Related Disorders Association,
Inc. v. Alzheimer’s Foundation of America, Inc. 2018 WL 1918618, No. 10-CV-3314
(S.D.N.Y. Apr. 20, 2018)

The Association (counterclaim plaintiff) sued the Foundation
(counterclaim defendant), alleging that the Foundation’s purchase of
Asssociation trademarks as search engine keywords and use of the two-word name
“Alzheimer’s Foundation” constituted trademark infringement and false
designation of origin under the Lanham Act. The court found that confusion was
unlikely.

The parties first litigated confusion in 2007, starting with
fighting over checks made out to one entity but sent to the other. The Association was formed in 1980 and is the
world’s largest private non-profit funder of Alzheimer’s research. It has more
than 80 local chapters across the nation providing services within each
community. In fiscal year 2016, the Association raised more than $160 million
in contributions and spent $133.6 million on program activities, including more
than $44 million on public awareness and education. The Association had nearly
9 billion “media impressions” and more than 41 million website visits in that
FY.

In 2015, when survey respondents in the general population
were prompted for the first two health charity organizations that come to mind,
“respondents were vastly more likely to name the American Cancer Society (46%),
St. Jude Children’s Research Hospital (28%), American Heart Association (19%),
and Susan G. Komen for the Cure (10%), than they were to name the Alzheimer’s
Association (3%).” When they were asked which organizations “involved in the
fight against Alzheimer’s disease” they have heard of, the Association
registered 8-12% awareness from 2011-2015. Among the demographic groups that
the Association targets with its advertising messages, unaided awareness of the
Association among organizations “involved in the fight against Alzheimer’s
disease” hovered between 10% and 20% from 2009-2015. Aided awareness of
“Alzheimer’s Association” was roughly 25-32% among the general population, and
at 35-47% among targeted subgroups between 2011- 2015. For the Foundation, those numbers were 15-19%
and 25-32% respectively.

The Association has a standard character mark registration
for ALZHEIMER’S ASSOCIATION, registered since June 8, 2004, but in use since
1988. The Association also has other registrations using “Alzheimer’s
Association” along with other words or with graphical elements, as well as
standard character marks for WALK TO END ALZHEIMER’S and MEMORY WALK. In 2016,
nearly 500,000 participants took part in Association walks in 630 communities,
raising more than $78.6 million. The Association websitet displays “alz.org”
and “Alzheimer’s Association” at the top of its landing page. Its principal
color is purple.

The Alzheimer’s Foundation of America was founded in 2002 and
has more than 2,600 member organizations throughout the country that
collaborate on education, resources, best practices and advocacy. AFA has
awarded millions of dollars in grant funding to its member organizations for
services such as respite care. In 2010, AFA’s “revenues, gains and other
support” from “contributions and special events including telethons” was
approximately $6.6 million. Its website is at http://www.alzfdn.org, and principally
uses the colors teal and white. Its first registered mark, from 2006, is for
“AFA Alzheimer’s Foundation of America” with the organization’s “heart in
hands” logo.

The Foundation also has a registration for “Alzheimer’s
Foundation” plus the heart in hands logo.

The Foundation disclaimed any exclusive right to the literal
elements of these marks. In 2014, the
Foundation filed for a standard character mark for “Alzheimer’s Foundation,”
now registered on the Supplemental Register with a claimed first use date of
2004. Before 2009, its use of the
two-word name (without “of America”) was mostly limited to press releases and
sponsored ads online, as well as on the Foundation’s Twitter account. Since 2004, the Foundation has described
itself in the header of online ads using the two-word name “Alzheimer’s
Foundation,” resulting in over 30 million impressions between June 7, 2004 and
the end of 2009. The Foundation also bought Association marks as keywords. From
April 2012 to June 2014, the Foundation ran sponsored ads that used the word
“Association” in the text, ending when the Association objected.

The Association also used keyword advertising, including
buying “Alzheimer’s Foundation” as a keyword until 2010.

A Google search of “alzheimer’s association” from June 2014
showed the Foundation’s ad as the top result, with the main header as
“Alzheimer’s Foundation – alzfdn.org” with the tagline “An Association of Care
and Support. Reach Out to Us for Help….” The second and only other ad was
from the Association. Their header reads “alz.org – Alzheimer’s Association,” and
the tagline “Honor a Loved One with a Tribute Donation – Support Research &
Care.”

“Alzheimer’s Association” sometimes led to more clicks on the
Foundation’s sponsored ad than those received from its own brand. Indeed,
campaigns targeting Foundation’s competitors performed the best and comprised
roughly 40% of AFA’s keyword marketing budget. During some of the relevant period, the
Foundation may have been using Association-related metatags, though the court
found this immaterial “as [site metatags] have likely not been used by search
engines since before 2009, and so have little effect on the ordinary prudent
consumer.”

On the Foundation’s donation page, there are many references
to “AFA” or “Alzheimer’s Foundation of America,” and no references to the
Association or use of any the Association’s marks. “At no point while on the
AFA website during the donation process would a consumer see any of the
Association Marks.” So too in reverse for the Association.

The Foundation was the first to complain of confusion, in
2004, when its then CEO wrote “a routine web search under ‘alzheimers
foundation’ led me to [the Association’s] site. ‘Alzheimer’s Foundation of
America’ is a registered service mark of our organization. It distresses me
that supporters of our respective organizations may be confused when searching
the internet.” This might not have related to sponsored ads, though. In 2014, a
Foundation employee wrote that a survey showed many people saying they donated
before or were “introduced to AFA through a fund raising event,” and speculated
that “several respondents may have us confused with the Association or with
‘the cause.’ ”

Between 2007 and 2012, the Association received more than
5,700 checks made payable to “Alzheimer’s Foundation” or a variant totaling
over $1.5 million. The Foundation received more than 5,000 checks between 2006
and June 2016 made payable to “Alzheimer’s Association” or near variants. A
large percentage of the Foundation’s online donors are first-time donors, and
that the average online donation, as well as check donation, is under $100. The Foundation argued that the number of
Foundation-labeled checks received by the Association was only 0.1% of the
total number of checks received, and 0.252% of the total value of checks
received.

There was evidence that a check for the Association was
received alongside a printout of the Foundation’s internet donation form. When
asked why she had submitted the Foundation form, the donor claimed that she had
typed the Alzheimer’s Association name into her web browser and clicked on the
first entry that came up to download the form for donations and that she was
unaware that she was on the Foundation website. No one testified about other donors or
potential donors contacting one organization looking to donate to the other,
apart from people asking about the difference between the Association and the
Foundation.

Other purported instances of confusion included that NBC’s
Today show ran a quotation the Association has provided alongside the
Foundation’s logo, but that was the logo with the words “of America,” and wasn’t
at issue in this litigation. In Celebrity Family Feud, the host once suggested
the show was raising money for “Alzheimer’s Foundation,” when it was actually
raising money for the Association. These instances didn’t have a clear link to
the Foundation’s allegedly infringing actions.

There was also two studies from the Association and an
expert critique by the Foundation. Study
1 found 34% net confusion between the standard character marks “Alzheimer’s
Association” and “Alzheimer’s Foundation.” The court found that this was somewhat
artificial but still probative to actual confusion. However, the court found
that the control—“Alzheimer’s Trust”—artificially inflated the net confusion
numbers. They “pre-tested” two controls,
“Alzheimer’s Charity” and “National Alzheimer’s Foundation,” which, by
generating more confusion, would have yielded net confusion rates for
Alzheimer’s Foundation of 12% and 11% respectively.

The expert said “Alzheimer’s Charity” wasn’t good because it
“sounded like a product category rather than a single real entity,” which
sounds fair to me, but the court didn’t like the expert’s explanation
overall. He testified that his staff
never disclosed the results of these pre-test surveys to him, even though the
results were disclosed to the Association’s attorneys. “While it is legitimate
to run a pre-test or pilot study for the purposes of improving a study, no
credible explanation was offered for the changes made between the pre-test
survey and the reported survey, and this suggests a potentially improper
purpose.”

Setting that aside, “Alzheimer’s Trust” was a weak control
term. Though testing a two-work mark made sense, “Trust” as a descriptor for a
charity was both more unique than “Foundation,” and more easily distinguished
from “Association” in part because of its multiple meanings. “Alzheimer’s
Federation” could have more clearly controlled for the confusion created by
reasons other than Foundation-specific reasons, or “Alzheimer’s Foundation of
America,” given that the Association was arguing that it was the two-word mark
that was confusing. “[W]hat better way
to test that proposition than to compare its use with that of AFA’s full, and
undisputedly non-infringing name?”

Another study allegedly showed IIC. Respondents were asked to type “Alzheimer’s
Association” into a search box and then were either shown results including the
Foundation’s disputed ads and other keyword ads (test condition), or organic
search results without ads (control condition). Respondents were asked to click
on the link/s they thought would take them to the website of the organization
for which they searched. If they clicked on the Foundation’s ad, they saw the
Foundation’s web page and were asked if they thought it was the web page of the
organization for which they had searched. If respondents didn’t select the
“Alzheimer’s Foundation” or control links, respondents were asked to click on
the link or links, if any, that they believe would take them to the website of
an organization affiliated with the organization they searched for.

There was a net rate of 20% sponsorship confusion, and, of
the 42% who were confused in the test condition, 74% remained confused as to
source or affiliation after viewing a screenshot of the Foundation’s web page
(31% of the total respondents in the test condition).

The court found it significant that the study design assumed
that participants asked to type in “Alzheimer’s Association” knew that it is a
particular organization. “Consumers cannot mistakenly associate the AFA ad or
website with the Association if they were not aware of the Association’s
existence to begin with.” The test
stimulus was also biased—there was no sponsored ad for the Association, whereas
the Association also bid on its own marks as keywords, and often would have
appeared in the sponsored ads section as well. The order of the ads would have changed based
on the organizations’ respective bids, and thus order bias was also implicated—a
bias that couldn’t be accounted for by the chosen control. [citing Winnie Hung, Limiting Initial Interest
Confusion Claims in Keyword Advertising, 27 Berkeley Tech. L.J. 647, 666 (2012)
(stating that statistics show ad rank has a significant effect on consumers’
confusion).]

The court, however, concluded that though the bias suggested
a lower actual confusion percentage, the study did use a real web page with
real ads that did actually result from typing in “Alzheimer’s Association” at
one point in time. “[I]f the Court were to find a likelihood of confusion based
on the one test stimulus used, it would constitute a Lanham Act violation just
the same.” [Is that really likely confusion if there weren’t
evidence about how often it would have happened?]

The study inflated net confusion because the first search
result in the control was the Association’s website, while the first search
result in the test condition was the allegedly infringing Foundation ad. “A better control stimulus would have contained
non-infringing sponsored ads at the top that, if clicked, counted towards the
confusion rate for the control.” What was at issue was the specific ads, not
sponsored ads in general, and thus “only the offending item should have been
removed or replaced.”

Overall, the evidence “strongly militates against placing
much weight on the study evidence.”

The Association’s evidence of intentional attempts to
confuse also faltered. Of possible
interest: “AFA’s patent counsel filed
two false specimens of use”—in its filing for a standard character mark, t
counsel included as a specimen of use a page from its magazine in which the
words “of America” had been obscured. After the Association raised the issue, counsel
filed press releases as substitute specimens of use, which were accepted by the
USPTO. The Foundation also filed a
section 8 declaration with respect to the composite mark and included one specimen
of use (among others) in which “of America” was removed and that had not
actually been used in commerce. The Foundation again filed an amendment after
the Association raised the issue, and the USPTO accepted the amendment. There was no evidence that the Foundation was aware
of either of the false specimens of use.
[Still, looks bad for the lawyers. To the extent that this increases the
expense/burden of litigation, it may raise questions that should be taken up
with an insurer.]

Because the Association didn’t challenge “Alzheimer’s
Foundation of America” in any context, the key question was the [marginal] likelihood
of confusion arising from the use of the two-word name and the Foundation’s use
of Association marks in search keyword ads and metagags.

[One way to read this case might be as a cautionary tale for
the assumption that structures much discussion of the TM/unfair competition
interface—that there is something
that can really be done to limit confusion without disallowing use of generic
terms, or functional features, or whatever isn’t protectable by TM but may
still be contributing to consumer confusion.
Then-Judge Ginsburg might have wanted
there to be a good solution for the two Blinded Veterans association, but we
have no empirical evidence that any intervention would work.]

[Also, another interesting question here is the appropriate
comparator keyword buy. Suppose that the
Foundation had merely bought “Alzheimer’s.”
Its ads should then have stilled displayed in response to a search for “Alzheimer’s
Association,” though possibly at a different price point depending on the
search engines’ practices. The consumer doesn’t know why the ad displays. If that’s the appropriate comparator, then
the net confusion from buying the Association’s trademark would be zero. Or should we also allow the Association’s
trademark rights to force the Foundation to use negative keywords, as
1-800-Contacts made its competitors do (in violation of antitrust law, as the
ALJ found)?]

Anyhow, the court noted that it wasn’t evaluating the
Foundation’s keyword buys in a vacuum, but rather the effect of the keyword
purchases in conjunction with the Foundation’s resulting ads. Further, the key type of confusion was
IIC. Was the Foundation engaging in a
bait-and-switch likely to confuse consumers, or offering consumers a choice?

Though the Association’s mark was incontestable, it was
still commercially weak, which was crucial to the court’s holding here. As the Ninth Circuit has said, “a consumer
searching for a generic term is more likely to be searching for a product category.
That consumer is more likely to expect to encounter links and advertisements
from a variety of sources.” Both
components of the Association’s mark were descriptive of the relevant
charitable endeavor. Althought the Association is the world’s largest
Alzheimer’s-related non-profit and the world’s largest non-governmental funder
of Alzheimer’s research, the consumer studies in evidence showed that the
mark’s secondary meaning was not strong.
Between 10-20% unaided awareness among potential donors wasn’t much.

“Here, because of the weakness of the mark, it is not easy
to disaggregate the consumers searching for the Association as a specific
organization from those searching generically for an Alzheimer’s charity when
they type ‘Alzheimer’s Association’ or some similar derivation into a web
browser.” Relatedly, it was difficult to distinguish consumers confused by the
Foundation’s actions from those “confused simply by the similarity of the
descriptive marks.”

Mark similarity: the court reasoned that the proper
comparison was not the mark to the keyword buy itself, but the mark to the
resulting ads, because that’s how consumer confusion would manifest itself. The Association argued that, in organic search
results, AFA’s website appears as “Alzheimer’s Foundation of America,” and that
the use of the two-word name in the ad header and sometimes “association” in
the ad text combined with the keyword buys to increase the similarity between
the marks/ads.

The Foundation argued that, in context, the similarity was “mitigated
by the unique information and URL of its ads,” but the URLs http://www.alz.org and
http://www.alzfdn.org and ad text, e.g., “Honor a Loved One with a Tribute Donation.
Support Research and Care.” and “An Organization Providing Support for Your
Loved One with Alzheimer’s” weren’t particularly dissimilar. And differences in
the parties’ websites came too late. The
ads were similar in appearance and meaning, favoring the Association.

The Foundation tired to argue that it was primarily focused
on providing care services while the Association focuses on funding research, but
that didn’t distinguish them in the market for donors.

Actual confusion was a key factor, but the evidence “must be
related to the actions or behaviors at issue.” The evidence of 11,000 mislabeled or
misdirected checks was probative of confusion “generally,” but not by confusion
generated by the Foundation’s actions.
Nor were the limited instances of confusion in the media and anecdotal
reports of consumer confusion persuasively related to the Foundation’s actions.
“In light of the descriptive nature of the marks, confusion between the
unchallenged ‘Alzheimer’s Foundation of America’ mark and ‘Alzheimer’s
Association’ supports the notion that it is the weakness of the marks and consumers’
inattention, not AFA’s specific disputed practices, that yields confusion.”

Finally, the surveys’ flaws meant they merited little
weight. The point of the surveys ought
to have been to pin down causation by focusing on the challenged behaviors, but
that was exactly what they did not do.

Intent: The Association argued that the Foundation complained
of the confusion created by the similarity in the organization’s names back in
2004, but, despite its own complaints and lawsuits, then proceeded to employ
Association marks in its metatags and as keywords, as well as attempting to
register a two-word mark without really using it. The Foundation argued that it didn’t
intentionally use false specimens and that its internet ads had been similar
since 2004. The court didn’t find the
Foundation’s trademark counsel “particularly credible in his explanation of the
false filings, but circumstantial evidence about AFA’s trademark applications
does not itself suggest an intention to capitalize on the Association’s goodwill
or to exploit confusion.” And the
Foundation noted that the Association also bought Foundation keywords before
2010, and coexisted with the Foundation and its practices for six years before
suing. When the Association complained
about the Foundation’s use of the word “association” in its ad text in 2014, the
Foundation removed the offending ads.

The court found that intent favored the Foundation. “In many respects, the lack of direct
evidence of actual confusion undermines the Association’s attempts to argue
that AFA acted with the intention of exploiting consumer confusion.” The
evidence didn’t support the claim that the Foundation believed the specific practices
at issue here were causing consumer confusion. Because this factor failed, the
Association also failed to show the intentional deception vital to IIC.

Consumer sophistication: the relevant population was the
average consumer searching for the Association online and seeing the Foundation’s
ad, who are less likely to be institutional donors and many of whom are
first-time donors. “[I]n this day and age, the ability to complete a form on a
website does not itself make consumers particularly sophisticated.” This factor
favored the Association.

Weighing: the most important factors here were strength of
the mark, similarity of the marks, and evidence of actual confusion, two out of
three of which strongly favored the Foundation.
A final consideration didn’t neatly fit within the Polaroid factors: “the labeling and segregation of online
advertising.” The “ad” label “heightens consumers’ care and attention in
clicking on the links, and further diminishes the likelihood of initial
interest confusion.” [Or more likely,
contributes to ad blindness if it’s noticed at all.]

Highlighting my ongoing conviction that elaborating
causation stories makes actionable confusion less likely to be found, the court
elaborated that it was trying to figure out how many consumers fell into the
relevant subpopulations: (1) Those who weren’t confused, either because they
were using “Alzheimer’s Association” in a generic sense in their search or
because, on seeing the search results, they understood the difference between
the two organizations. (2) Those who clicked on the Foundation’s ad by mistake
and who were diverted because of the Foundation’s keyword buys and its use of
the two-word name “Alzheimer’s Foundation.”
A subset of (2) could remain confused even after viewing the Foundation’s
website. (3) Those who were mistakenly
diverted for other reasons, such as because of the inherently weak and
descriptive nature of the parties’ marks. “These consumers are ‘confused’ in
the colloquial sense, but would have been confused even if they searched the
word ‘Alzheimer’s’ alone or even if AFA solely utilized its full name.” In light of the evidence, it was difficult to
identify the proportion of consumers in each group, and thus the Association
didn’t show a probability, as opposed
to a possibility, of confusion.

Finally, and perhaps exhausted by the effort so far, the court
rejected the Association’s attempt to cancel the Foundation’s marks. As to one mark, the court accepted the dubious
rationale that filing a Section 8 declaration in 2017 showed lack of
abandonment. Even though the court didn’t
see where the challenged mark, as opposed to the other mark, was included as a
specimen of use in that filing, “the filing of the application alone
demonstrates AFA’s intent to use the ‘014 Mark. Given the high burden placed on
the Association to establish abandonment, and the limited evidence adduced, the
Court cannot find abandonment.” I can’t
see how that can be right—if the challenged mark isn’t in the filing, given
multiple years of alleged nonuse, that can’t be the end of the analysis, unless
there’s some sort of implicit tacking analysis going on.

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competitor lacks Lanham Act standing absent allegations of why it in particular would be harmed by false advertising

Posted on April 30, 2018 by rtushnet

Blue Star Press, LLC v. Blasko, No. 17-CA-111-OLG, 2018 WL
1904835 (W.D. Tex. Mar. 6, 2018) (magistrate judge R&R)

The parties make adult coloring books, typically marketed as
a means of relieving stress but proving stressful in this litigation. Blue Star
began successfully publishing adult coloring books in 2015, then began working
with defendants Reagan and Sada Lewis to create Christian-inspired coloring
books. However, Reagan allegedly secretly agreed to work on competing adult
coloring book publishing with his friend, defendant Sean Blasko, agreeting “to
fraudulently steal coloring book opportunities and sales from Blue Star, often
misappropriating Blue Star’s own Trade Secrets/Confidential Information to do
so.” Blasko counterclaimed, alleging
that Reagan Lewis in fact stole trade secrets from him, including confidential
methods for “determining keyword search terms and online marketing and advertising,”
and for “obtaining sponsored ads on Amazon for books” with less “need for
‘good’ keyword search terms.”

The court found that Blasko’s counterclaim stated a claim
under the FDTSA. Blue Star argued that

misappropriation had to be made with actual or constructive
knowledge, but Lewis was Blue Star’s employee at the time of the alleged
misappropriation. Blasko plausibly alleged that Lewis was acting within the
scope of his employment at Blue Star, and thus that Blue Star was vicariously
liable, a type of liability the court determined was available under the
FDTSA. Even assuming, as Blue Star
argued, that Lewis’s secret relationship with Blasko was in violation of his
employment agreement with Blue Star, and that, had Blue Star known about it,
Lewis would have immediately been fired, agency/responsibility for Lewis’s acts
was a factual issue.

Blue Star did better against Lanham Act and state false
advertising-related counterclaims. Blasko alleged that Blue Star misled
consumers into believing that Blue Star had the lawful right to republish the
artwork in its books; misled consumers by passing its books off as books
published by their competitors; misrepresented that one or more of Blue Star’s
books were “NEW & EXPANDED”; and misrepresented that Blue Star’s artwork is
“all hand-drawn” and drawn “by independent artists” in Texas for Blue Star.

Lexmark’s
causation requirement had bite here, despite the fact that the parties directly
compete. The court indicated that “Blasko
might have demonstrated the needed causal connection by alleging, for example,
that some of Blue Star’s claimed ‘knock-off’ publications mimicked Blasko
publications or that, unlike Blue Star’s publications, Blasko’s publications
actually were hand-drawn, created by independent artists, or created by local
or Texas artists.” But Blasko instead only conclusorily alleged harm. Direct competition wasn’t enough; Blasko didn’t
allege how any of Blue Star’s alleged conduct took away from Blasko’s market
share, as opposed to that of other competitors. Nor was it sufficient to allege that Blue Star
could sell at lower prices for higher margins and with less cost because Blue
Star does not pay for the proper licensing fees that Blasko pays, “including
for books containing the same themes and images such as the parties’ Dia de los
Muertos books.” The injury to Blasko could have resulted from any number of
other reasons—potential harm isn’t enough for standing.

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seller can’t sue customer for false advertising under Lanham Act because customer can’t sue seller either

Posted on April 30, 2018 by rtushnet

Buckeye Int’l, Inc. v. Schmidt Custom Floors, Inc., 2018 WL
1960115, No. 18-cv-111-jdp (W.D. Wis. Apr. 26, 2018)

Buckeye sells floor finishing products, including Gym Bond, which
is supposed to help a clear topcoat adhere to a previously finished gymnasium
floor. Schmidt used Gym Bond on the floors of several sports facilities, but
the floors had problems with peeling. Schmidt turned to social media and email
to voice its complaints. Buckeye contends that the peeling was caused by
Schmidt’s faulty preparation of the floor surface, and sued for false
advertising and related claims. The court denied a preliminary injunction.

“A customer’s complaints about a supplier’s products and
services, even if posted on social media, are not statements made in commercial
advertising or promotion.” In addition, there was a genuine dispute about the
cause of the floor problems, making speech and counterspeech the appropriate
resolution for now.

Schmidt complained about Gym Bond and Buckeye on social
media and directly to Schmidt customers and trade associations, including
statements that Buckeye admitted that Gym Bond is defective and that Buckeye is
broke. The parties sharply disputed the truth or falsity of the statements.
Schmidt took down social media postings on Facebook, YouTube, LinkedIn, and
Google Review. (Schmidt was apparently very mad.)

The court explained that “commercial advertising or
promotion”

is broader than classic
advertising, and it is not limited to traditionally published or broadcast
materials. There is no requirement that the challenged communication be
distributed broadly to the general public, but there must be some public
dissemination. Individualized person-to-person communication, whether conducted
in-person or by means of correspondence, is not within the scope of the
statute.

Thus, Schmidt’s emails or personal discussions with its
customers, the trade association, or anyone else weren’t subject to the Lanham
Act. [This seems to skip a step. Were the emails individualized or personalized,
or was there a mass mailing trying to reach the relevant market? Email ads are still ads.]

The social media posts were disseminated to some portion of
the public. Still, “not every social
media posting would constitute commercial advertising or promotion”: what’s
needed is “a systematic communicative endeavor to persuade possible customers
to buy the seller’s product.” That’s where Buckeye’s claim faltered. Under Gordon & Breach test, Schmidt’s anti-Buckeye
social media postings wouldn’t be commercial advertising or promotion because
Schmidt and Buckeye are not competitors. [Though this rigid application of Gordon & Breach neglects the
subsequent effects of Lexmark, which
I believe removed the “competitor” prong from Gordon & Breach—and several subsequent cases have so
held.]

This public complaining wasn’t “a prototypical negative
advertisement that disparages a competitor’s goods to promote one’s own. …Schmidt
is explaining that the trouble with its floor refinishing is not its fault. And
Schmidt is warning Buckeye’s customers about an alleged deficiency in one of
Buckeye’s products. There is no endeavor to persuade any potential customer to
choose Schmidt’s services.” [Though
explaining that the trouble wasn’t its fault does seem to be designed to boost
Schmidt’s attractiveness to potential customers, as well as to criticize
Buckeye.] Ultimately, Schmidt’s social
media postings weren’t “a systematic communicative endeavor to persuade
possible customers to buy the seller’s product.” “[T]he communications at issue
in this case are, at heart, those of a customer who is unhappy with a
supplier’s product,” and Lexmark indicates
that this isn’t generally within the Lanham Act’s purview.

Lexmark said that
in the context of not letting the customer sue the seller for false advertising
of its own products’ characteristics;
Lexmark itself is a disparagement case, and I read the case as allowing far
greater scope for disparagement claims.
However, the court here thought that sauce for the goose was sauce for
the gander: if the customer can’t sue for false advertising, then the converse
should also be true. Thus, “[t]he public interest is better served by Buckeye
offering its counter-explanation rather than by shutting down Schmidt’s side of
the story.” Of course, causes of actions with heavier burdens of proof on
intent remain.

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1201 hearings, LA, streamlined video exemption

Posted on April 24, 2018 by rtushnet

IN SUPPORT
Art Neill New Media Rights
Elizabeth Rosenblatt Organization for Transformative Works
Jack Lerner, Brian Tamsut, and Jovan C. Ardy UCI Intellectual Property, Arts, and
Technology Clinic
Tisha Turk University of Minnesota, Morris
IN OPPOSITION
Ben Sheffner Motion Picture Association of America, Inc.
David J. Taylor DVD CCA and AACS LA
J. Matthew Williams Joint Creators II

Tisha Turk presented on problems with screen capture using
Movavi, one of the programs that the opponents want people to use. She showed stuttering, jerkiness, pausing in
capture from Netlfix. Results in
nonstandard framesize, which causes technical problems with editing and
export. Capturing streaming is going to
be more prone to glitches due to additional layer of difficulty of
capture. Many computers don’t have optical
disc drives at this point so streaming might be the only option.

Opponents: Screencap programs have settings that can be
optimized. Streaming: you don’t know
what the internet connection was and whether that was the problem. Was the codec lossy or lossless? The lossy format will require a certain
amount of compression. You can’t just sit down, use a screencap program for the
first time, and get perfect results. The ones we have offered fairly compensate
for every program. Not familiar with
Movavi. Had to learn screen cap programs
every three years now. There are infinite
numbers. Also much easier to learn than Handbrake and video editing. As a
hobbyist, you can easily spend the time to learn how best to maximize the
results.

Jack Lerner: Two points: Morrissette noted in his statement,
attached to Jt. Filmmakers—many sound difficulties with syncing, computer
noise, stereo effects & other important parts of the sound that aren’t
captured by screencapture. Also, there
is no such thing as lossless screencapture for Blu-Ray. Maybe he’s referring to highest possible
fidelity, but we have found nothing on the market that doesn’t drop frames and
lead to stuttering and other problems.

Betsy Rosenblatt: Movavi is among the popular screencap
programs; there are several. Does
screencap require circumvention: nobody knows. Which is one of the issues with
an exemption that deals with distinctions between types of programs. Netflix: this stream was from Netflix, but we
have numerous reports of people using screencap who end up with just a black
screen. There are certain sources from
which screencap is simply inadequate. As
to whether screencap from streaming is different: it’s necessary to use
streaming for some things for unique or timely sources. To say that one could have an internet lag
free screencap is true only for some materials. Resetting screen size was
suggested as an option: results in difficulty editing but also loss of material
on the sides of the screen—uses the aspect ratio of whatever computer you’re
working on. Professor Turk can speak to
this w/other clips. To the extent that
the stutter was supposedly a result of internet lag: that was created in an LA
home with high speed DSL; many people have worse. Even in a perfect internet connection there
is frame loss and blurring.

Opponents: the relevance of screencap at this point goes to
whether the existing exemption beneficiaries have to make a good faith effort
to use it to get the quality they need before moving ahead with circumvention.
What’s the point of that if it may or may not be legal? The proponents have
consistently questioned its legality, which is why it should be retained. [But
that doesn’t explain why there should be a requirement to go to screencap
first, especially given its questionable legality, or why the exemption should
be written to distinguish between the two.]

CO: The proponents say it’s confusing.

Opponent exhibit: from a woman responsible for VOD output
for Discovery. Transcoded AVI to
mp4. [The unanswered questions here were
how these clips in the opponents’ exhibits were created, and how long it took
to get those clips to the condition that they could be imported and looked
good. All the opponents’ exhibits start with the clips as if that were
simple, something that the opponents’ statement above indicates was probably
not the case.] Asked to determine if
these clips would be usable as a deliverable for pro use, and the answer was
no. But if a small clip was used in a larger project, providers would accept
the whole project. Using multiple
sources with multiple frame rates is common. You use the frame rate that the
majority of your clips use, and the hope is that the converted clips will look
ok. Apple is the pickiest of the
providers, and has accepted some mixed cadences, just won’t accept a lot. Inverse telecining: backwards conversion to
return it to its remaining frame rate. As long as it comes out converted, and
it’s a small portion of the project, it’s usable.

Opponent: screencap in lossless ODS format. Does drop
frames.

CO: how is it lossless then?

Opponent: they call it that. [!! My advertising prof senses
perk up.] It’s not frame for frame, but for a screencapture, it’s getting 9/10
of the frames, and there’s a lot of frames.
We submitted something different to her [the video maker] than to you
b/c there was a learning curve in using the software. It results in a huge file, but it is high
quality—someone who works for Discovery has said this could be included in a
final product for Apple. A small piece,
as w/exemptions, is perfectly fine. Every
work requires postproduction editing, and no one gets a perfect clip the first
time.

CO: we did find in 2015 that screencap wasn’t enough. That’s the baseline we’re working from.

Opponent: we’ve shown that screencap has improved enough to
meet distribution standards. We aren’t dealing w/close analysis. Any documentary film that uses an archived
clip has to deal with this processing problem regardless of how acquired.

Turk: Codec is just the format in which something is encoded
and decoded. Something can be coded in lossless format but all it encodes is
what it’s fed—a stream that has
dropped frames or is pixelated.

Neill: working with people on distribution
contracts—practically, most of the folks getting a contract related to
nonfiction, documentary, short films—these are small projects with modest
budgets. If you’re told to return and recut the video and find the source
material, that takes time and money and eats into subsistence return. Upscaling isn’t sufficient; there’s Netflix
standards on upscaling that reject it. Far-fetched to say that distributors are
accepting this across the board. They will ask a filmmaker to go back.

CO: specific films?

Neill: reply comments have cites to client w/broadcaster who
rejected clip that was screencaptured.

Lerner: Also, documentary evidence about problems other than
framerate. Taylor asserted that PBS and
Netflix don’t matter, but they are very important for documentarians—the record
referring to iTunes doesn’t cover PBS and Netflix, the key channel for
documentarians, and our record shows that PBS and Netflix don’t like screencap.
Our submission addresses ODS. It’s true that they accept 70s footage, but
that’s because they understand there’s nothing else available. If you try to
submit a modern screencap clip, that will be rejected. Opponents have not submitted evidence of
broadcast standards. Also worth noting that the clip narrator isn’t here to be
asked questions. [CO says that not all
the people mentioned in submissions here.]

Rosenblatt: inconsistency in the arguments. The argument that screencap is good enough
for everything is fundamentally inconsistent with the argument that DRM is
necessary to prevent piracy. We’re asking people who make art and commentary to
sacrifice their vision; turning CO into art critics.

CO: not here to discuss whether DRM is valuable. [That’s
true, but the impact of exemptions is very much at issue here, and the fact
that it’s not preventing “piracy” is important.]

Opponent: we didn’t oppose renewal. Expansion is on the table. They’ve had a hard time establishing uses are
noninfringing. Compare that w/the quality of screencap, what we saw was that
the quality is pretty good, and that’s true w/experts too. Take that into
account when weighing blurry issue of noninfringing status against ease of
screencap.

CO: do you envision that the filmmaker has to actually get
rejected to use the exemption?

Opponent: it’s good faith/common sense; doesn’t require
rejection by the broadcaster. Requires sampling products on the market. If
you’ve been rejected in the past or you compare their standards to what you can
get, you don’t have to try again.

CO: so now the filmmaker rejected by the broadcaster can
circumvent from now on?

Opponent: that would be a common sense approach. Not sure if
it was eligible under existing exemption.

[So why do you have to go through this rigamarole if you
haven’t yet been rejected? Good faith
makes sense where situations may vary, but ODS is ODS; it won’t work
differently from user to user.]

Opponent [Taylor]: didn’t mean to say PBS and Netflix didn’t
count. My discussion w/expert: she
offered that in her experience, the most difficult company was iTunes. Agrees w/Williamsn [opponent] about
significance of screencap. It’s an alternative for those looking to expand the
exemption. It continues to improve. [Then there’s no point in requiring people
to use one rather than the other. It
just makes the exemption more confusing without having any more DRM-protecting
or copyright-protecting benefit.]

CO: Question re previous exhibit from DC?

Rosenblatt: It depends entirely on what you’re doing. People who want to make seamless stories from
multiple sources have difficulty w/different frame sizes, frame rates. If you
want to focus in on something, you can’t
do that dependably using something that will result in blurriness or loss of
material. We aren’t looking for proof
that every use is fair, but for the significant possibility that fair use is
deterred.

CO: are people confused about screencapture as an
alternative?

Rosenblatt: Turk can address—but this is a law that
addresses more what happens after you make a thing than before. 1845 people responded to our survey Q about
what the DMCA was: 1400 hadn’t heard of it or didn’t know. Of the 440 who said
they did know, only 67 mentioned anticircumvention, and 6 mentioned
exemptions. 1/3 mentioned complicated,
confusing, convoluted. The people who
knew about it said “I have little understanding do to the confusing and vague
language.” “scared the pants off of
everyone in my middle school.” That’s the sort of user we’re dealing with. That
may not address directly your Q but it speaks to our argument that people
aren’t likely to seek out something that won’t work as well when there’s an
option that works, from the consumer standpoint, and they won’t have to go
through these multiple steps. They don’t understand why one means of achieving
a fair use would be illegal and another wouldn’t be.

CO: Seems in tension w/saying there’s a chill on uses.

Rosenblatt: there is a chill when people know, though it’s
fair to say there’s not as many of them.
A lot of the trouble comes when someone who isn’t chilled b/c they don’t
know then has to interact w/ an institution like a school, traditional publisher,
library, who won’t facilitate/adopt their work, or when responding to a
takedown, or trying to get insured. That’s where the chill happens, not in the
initial creativity but in the use of what you’ve made. Turns the law into a
trap for unwary, makes fair uses more vulnerable to takedowns. When you
encounter a gatekeeper, like iTunes, it can turn out what you’ve done is
illegal even though it would have been legal if you used a different program.

CO: is it really just because people don’t know if they can
use screencap or not?

Rosenblatt: a few levels of confusion. Screencap is one.
They don’t know what noncommercial means: if it’s on YouTube.

CO: we’ve always contemplated YouTube in the exemption. How is that confusing? You asked for noncommercial.

Rosenblatt: Times have changed a bit regarding the way
content is delivered in the sense that noncommerciality and whether someone is
personally making money off their creation is just more complicated. We are very much about noncommercial
creation, but we’ve had people come to us increasingly confused about what
noncommercial means.

CO: filmmaking and ebook aren’t limited by commerciality;
should they be?

Rosenblatt: we don’t propose a change to that.

Opponents: we support simplification, but you can’t do it at
the expense of following the law. Even
the proposed exemption is college-level understanding. It’s difficult to craft
a legal rule that’s simpler. Michael
Donaldson has tried to simplify fair use: would your use be clear to the
average viewer. If you apply that to most of the examples in the record, the
fair use doesn’t come through b/c the point isn’t perceivable to the average
viewer. That’s why you’ve drawn the lines where you have for filmmaking and
ebook authorship. Axanar: use of Star Trek in a “fan” film—no payment there,
and the court still said it wasn’t a fair use. The point of the work couldn’t
readily be perceived. [Not really a
short exerpt there.] There wasn’t enough
evidence to do “primarily noncommercial” before [that’s a mischaracterization
of the record; in that instance the CO indicated that “noncommercial” in its
definition encompassed the videos we were talking about, such as videos that
were made on commission] the Dr. Seuss
v. ComixMix: transformative purpose, the fourth factor still failed fair use as
a matter of law b/c of potential harm to the market for derivative works even
if they didn’t license mashups [again, that’s a misdescription of the case; the
motion to dismiss on fair use as a matter of law failed, not the fair use
defense]. The law doesn’t mandate the simplest exemption. [Nor does it bar it.]

Turk: The remix community uses what works. I was mystified that screencap came up at
all. The goal for a remix artist is to
get good quality video into the computer. Didn’t understand why anyone would be
asked to use something that doesn’t work as well. Can’t you just know from past experience or
other people’s experience that this typically doesn’t work, and that another
thing works well, and participate in a community that gives advice about what works
well? Can’t we just say, if it’s fair
use, get the video in a way that works for you and go? I would never say don’t use screenap. I wouldn’t do it. There might be cases where
someone wants or needs it, but I’m interested in the end result. Is the quality good enough that someone won’t
just hit the back button? Evidence is
that if something looks amateurish people don’t watch it.

CO: Remix and education: K-12 remix activities—screencap
might be perfectly adequate?

Turk: It might be. Haven’t taught remix in those
settings. I come back to: don’t disallow
it, but don’t impose it on people whose workflow or access to technology works
better w/a different format.

Taylor: We endorse joint creators’ proposal for simplifying
regulatory language. Improvement over actual statutory exemptions. Not very
difficult to understand, once you start looking at it. If it’s so confusing, could provide them some
examples of what activities would look like.
You could provide them examples from this rulemaking.

Neill: We’re dealing w/ a subset of noninfringing uses. The
analysis happens on each individual clip. That’s how a real fair use analysis
happens, regardless of whether it’s a documentary or YT video or some other
format. Trying to avoid haplessly
violating law when making video on day to day basis. There’s lots of possible kinds of confusion.
Looking back, we can see the evolution of filmmakers who do a variety of
different formats—not just fictional, but documentary, and other types. People
could turn around the next day and use a clip in a way that’s fair use and be
excluded as they weren’t the day before. We’re trying to deal with gaps—examples
of what’s ok won’t help if you’ve added all these additional layers of
requirements. Many times these requirements
have never been developed/delineated in case law.

CO: we’re not looking to break new ground in case law. [I think he was saying that the requirements
that decrease the scope of exemptions haven’t been delineated in case law,
because the requirements haven’t been requirements for making fair use.]

Lerner: 8 renewed exemptions have said that people need to
use clips which apply to the proposal for expansion, as well as a number of
examples for expansion, and the statute doesn’t require the limits that are on
the current exemptions. House Commerce
Committee said that motion pictures could be an appropriate category for
exemptions, and the report goes on to say that it wouldn’t be appropriate to go too narrow in the sense of Westerns,
comedies, etc.

CO: how is all AV works limited?

Lerner: short portions.

CO: doesn’t go to class of works.

Lerner: motion pictures restricted in other ways, such as
short portions/commentary, then you’d have an appropriately narrow class under
the plain meaning of the statute and what Congress said in the legislative
history.

We aren’t asking you to break new ground for these uses:
short portions for criticism/commentary. Not controversial that many fanworks
are criticism/commentary; the Register is on record as saying so. Juxtapose in order to say something new.
We’re not talking about a sequel but about a critique. Harry Potter; GWTW.

CO: Harry Potter wasn’t saying fan fiction was always fair
use.

Lerner: Sure, but many are, and that’s the proposition that
isn’t controversial given the record and the case law.

CO: [adopts wrong characterization of Dr. Seuss v. Comicmix
as definitively not fair use] Give us specific guidance—where do we draw the
line? [Short portions, criticism or
commentary] How do we protect only the fair uses.

Lerner: criticism or commentary/new meaning and expression.

CO: Dr. Seuss says it’s not just transformativeness but also
no effect on derivative market. And why should we drop noncommerciality? SCt
has said that the effect on the market is key. We also have to look at
commercial effects. How can we provide enough guidance?

Lerner: first of all, if someone crosses the line, there’s
still a remedy for copyright infringement—you provide enough guidance that way. [Why does the CO need to provide any guidance
in the exemption on what is noninfringing
other than the statute does?]

CO: we don’t want infringing uses, so how do we provide
guidance so they don’t cross that line? [I thought this was a proceeding about
anticircumvention, not designed to expand or contract fair use?]

Lerner: short portions makes a real dent. It won’t match
perfectly but that’s ok b/c there’s a remedy for infringement. This is a phantom threat—if someone is going
to infringe, and they’ve ripped to commit infringement they’re claiming
criticism and commentary, you have statutory damages for that.

Williams: CO began by denying exemptions for fair use for AV
works. Then the CO decided it would specify certain categories of users, it
could get there. [Fortunately we’ve
learned since then a bit more about what works and what doesn’t.] When you
disregard current boundaries that effort falls apart. Fair use isn’t an
appropriate category. TVEyes: transformativeness doesn’t moot the fourth
factor. [Though the short portions
thing, as with every other case they’ve mentioned, distinguishes that inasmuch
as TVEyes offered people everything.]
Often hard to perceive the parody/transformation in fanworks; use full
songs [of what relevance is that to the clips?]. What’s the potential harm to copyrighted
works? The fact that there are licensing options for fictional filmmakers and
ebook authors! [That always have
anti-disparagement clauses.] Wouldn’t say
it’s never fair use to make criticism and comment generally, that’s a harder
sell than criticism and comment of the work directly. Many of these examples
don’t comment on the work itself.

CO: is it appropriate/necessary to clarify existing
exemptions? If there are examples of things that should be included but
aren’t. [Prosecution/defense uses are a
big deal here.]

Rosenblatt: one of the chief confusions is that people are
confused about whether they fit into the type of creator category that
distinguishes between existing exemptions. We aren’t here to litigate remix
video but to talk about where other things might fit in, like multimedia
ebooks, and uses that attorneys might make in litigation [yes!]. Documentary about a guy who’s exonerated by
footage showing that they were at a baseball game. Makeup tutorials juxtaposing a face to a clip
from a movie. YT reviews of movies. Where do things fit in? Makeup tutorial is criticism/commentary,
short portion etc. Audio only uses of AV works—podcasters who want to rip to
get high quality audio b/c listeners expect that.

CO: wants examples of ebooks/podcasts.

Rosenblatt: can follow up w/submission. Also there are lots of people who have
questions: Quora: is it illegal to use audio trailer in my podcast? Answers are all over the map. Audacity forums
where people say, I need to rip to get high quality audio, b/c Audacity won’t
let me use it w/o high quality. I have
examples of these questions—could also make a follow up submission.

You could also have like Canada’s UGC provision does, uses
that don’t usurp the market.

CO: could we exclude users instead? Uses that fall to the infringing side.

Rosenblatt: we’re not arguing to eliminate use, just user
categorization questions.

CO: you’re not talking about filmmakers. Collapsing all of
that. Is there a way to identify problematic use, gray area use? [Shouldn’t the gray areas be left for
litigation, so as not to expand or contract
the scope of fair use?]

Rosenblatt: short clips.

CO: no one’s asked to remove that. [Yes, that’s the point.]

Rosenblatt: that’s enough.

CO: the opponents say it isn’t. [Why are we required to defer to them and not
to the other evidence in the record about the tiny size and contractual
restrictions of the licensing market, which by the way is not a “clip”
licensing market but a general licensing market, versus the size and variety of
the clip uses out there?]

Rosenblatt: educational/derivative uses are hard to separate—a
lot of derivative uses are educational. Doesn’t feel comfortable speaking to
opponents’ proposed language.

Neill: Williams skipped over the harm to © works from
clarifying the language. There isn’t
any. What is the harm that’s on the record after so many proceedings?

Sheffner: Proponents say there’s no viable licensing market. He says there is.

CO: in 2015 rulemaking, the Register found that licensing
wasn’t viable. Speak to why it has changed. And to which uses there is a viable
market, e.g. comment and criticism.

Sheffner: MPAA represents 6 major movie studios, with
different divisions (movie, TV, news).
Clip licensing is sometimes centralized and sometimes not. Different philosophies and business
practices, can only speak in aggregate. Overall, every studio licenses clips.
They have websites with info about this. In most cases it can be done online
through forms, email, phone. There was
an old FAQ that said only a fax, but looking more comprehensively there’s
actually phone or email.

CO: requests ignored, low dollar value/smaller uses?

Sheffner: asked all 6 studios to address. B2B only licensing? None of the companies outright
refused individual licenses, but vast majority was B2B, because they have the wherewithal
to engage in the project. Nonetheless,
they do receive individual requests.
Significant portion: individual can’t afford price of license. That
doesn’t mean there’s no viable market. Bel
Air houses: most people can’t afford homes there, but there’s a viable real estate
market. [If only copyrights were
intangible and nonexhaustible, unlike real estate.]

CO: licensing to remix artists? Multimedia ebooks.

Sheffner: there is licensing. Hard to generalize about
criteria for licensing. None of them absolutely barred licensing in those
areas. [Google Books case on factor 4 is
v. good on this—has to be significant as an impact.]

CO: is it frequent?

Sheffner: can’t say that in those specific categories. Ebooks is a nascent market—there have been
licenses. There’s some experimentation. The licensing websites invite inquiries
from “all” uses—there’s no prohibition. Relatively unusual for there to be
individual licenses, but not unusual for there to be remix videos posted to
YT. The content ID system identifies
them and monetizes them. Those aren’t licensed but are [he didn’t finish the
sentence because he can’t without doing something that his clients really won’t
want him to do]. [Does Content ID
distinguish circumvention from noncircumvention? How did the uploaders get the
footage? Does that mean the
circumvention used to create the footage was not unauthorized under Sheffner’s
interpretation?]

CO: is it fair to say that’s an alternative to licensing b/c
you still make money?

Sheffner: it’s a nontraditional kind of license.

CO: is it really a license?

Sheffner: there’s a license agreement w/YT. [That’s about the footage, not the
circumvention. That doesn’t provide the footage
which is the precondition to make the video, as a real license might.] Tolerated even if infringing b/c enforcement
cost too high. New business model where
the work is identified and a license is granted to YT to allow that use even if
it otherwise might have been infringing.
[Which suggests that circumvention has no adverse impact at all.] Several thousand clip licenses per year, but
not much ability to give a breakdown fiction/nonfiction/education. Can’t indicate monetary value, but licenses
exist in each category.

CO: nondisparagement clause?

Sheffner: can’t answer whether that would have prevented
licensing record examples from proponents. These have been discussed in previous
cycles; there’s no change in the record.

CO: we’re being asked to consider different types of uses.

Sheffner: this isn’t really an issue about 1201, but
contractual issue.

CO: but it bears on whether this is an alternative to circumvention,
if the use is prohibited under contract. [and on fair use!]

Sheffner: not much record evidence of these clauses, which
are vestiges, having substantial impact on ability to make fair uses. [because fair
users don’t license their clips ….]

CO: what effect is changing the exemption likely to have on
the market for © works?

Sheffner: clip licensing is a real market. [what effect is non-screencap circumvention
likely to have on that market?] It’s significant
though not dominant—people have jobs doing licensing. Fair use looks at the aggregate effect on the
market of this kind of activity. [Fair
use activity.] It absolutely would. Clip licensing revenue would dry up if all
clip uses were allowed.

CO: we’re talking about arguably fair use for purposes of
comment and criticism. Proponents say
that if a use is fair there’s no right to payment.

Sheffner: 1201 itself require that you look at, even if the
uses are fair, would allowing the exception cause substantial harm to the
market. [Really? That’s not how I’ve
understood the statute—it’s the legitimate market for copyrighted works, not
the market for extortion based on technology. The statute wasn’t supposed to
eliminate fair use or enable it to be switched to fared use.] Look at the aggregate effect on new business
models.

CO: but also one of your new models is YT, which is not the
traditional way [where you don’t need DRM].
Do you have an idea which makes more?
Or a percentage? [Considered that
way, since YT is a billion-dollar market, I’m thinking that individual clip
licensing is probably smaller.]

Sheffner: The more people can break DRM, the less effective
it is and the less willing studios will be to use new business models. [v. screencap?]

Normalization of ripping is dangerous [v. screencap?] Exemptions need to remain narrow and focused.
Broader and less focused they are, the more it becomes nonspecialized and word
gets out. [His assertion is not really evidence
of that; indeed, the record evidence is all to the contrary. I wonder what the APA standard on this
is?] Exemption shouldn’t swallow the
rule. Difficult to quantify.

Neill: In past proceedings, piracy has come up. We haven’t
seen any direct evidence why an educator, artist, or filmmaker’s use of a short
clip will create piracy. If you focus on
the harm, the Joint Creators make money off of even infringing uses through YT;
no one here is talking about infringing uses.
The question is: unidentified harm that is unsubstantiated from people
making noninfringing uses. If any harm exists, it’s the inability to get a
license from noninfringing uses –which is not a harm.

CO: we also have to consider the adverse effect on the
market for derivative works/licensing.

Neill: I’ve worked with folks who have both licensed and
unlicensed clips. When a use should be licensed, that happens. Those licensing
markets are available to folks who want to make otherwise infringing uses; we
shouldn’t be concerned about licensing otherwise noninfringing uses. When we look at our streamlined proposal,
there are specific limits. As far as slippery
slope, our language is linguistically almost identical to past exemptions but
for the user language and the access control language—it’s been 9 years. No evidence offered of some vast slippery
slope.

Williams: no studio policy against individual uses. Sites in the record don’t ask you to verify
that you’re a registered corporation.
Dr. Seuss says that even if a plaintiff doesn’t have evidence it’s
entered the mashup market, it’s potential if has licensed other uses [Again,
misdescription: there, the plaintiff alleged that it collaborated with other rights owners, such as Jim Henson
to do a Muppet-Seuss crossover; that doesn’t mean that “mashup” in general is a
standard or likely to be developed derivative market, or more relevantly that criticism
and commentary are legitimate markets].

CO: can individuals get clips that aren’t on the website?

Williams: yes, you can make contact with the studio. Whether
each studio would agree to find the clip you want, he can’t say. There are also ebook examples: enhanced Harry
Potter series, enhanced GoT series. They don’t necessarily use clips from
motion pictures, but you could easily imagine them doing clips from the motion
pictures. Enhanced Roots with
archival footage of author interviews. Making of Indiana Jones: full of stills,
and those are always licensed [not true for academic work; see also the Grateful
Dead/Dorling Kindersley case] and they have the right to choose who they want
to partner with.

With Content ID, not speaking on behalf of studios, they are
licenses to YT, not to the individual end users. Whether that’s monetized or not
we can’t say across the board. They choose monetization, monitoring, and
blocking, subject to user responses.
Agreements are highly confidential, but the fact that program has been
made available to address © concerns about mass number of users; there are tons
of other websites that don’t provide that kind of response system [and how many
views has the Pope?]. Thousands per year
of licenses v. thousands per week on YT: doesn’t mean there’s no harm or that
the studios aren’t trying to enter the market.
Piracy: my clients don’t have a straight line of sight into who claims
the exemptions, who might have gotten a license. Cesar Chavez film: some
licensed, some not; no insight into whether there would have been a license w/o
the exemption. Nondisparagement clauses: they were in the record last
time. All the things requested last time
are requested again, so that hasn’t changed.
Filmmakers: there’s not any examples clearly prohibited by the nondisparagement
clause [and if you were the person making that decision, and not making it in
the context of this proceeding, that would be more relevant evidence, but you’ve
specifically disclaimed the ability to speak for any given studio.]

Not saying that you have to look at factor four even if the
use is fair, but if there are some things that are probably fair and others
that probably aren’t, you have to see if the spillover from an exemption will
cause harm to a market.

Lerner: Universal clips website requires users not to
disparage, criticize, belittle, parody, or negatively comment on. This is the
sword of Damocles that can be asserted at any time even after licensing. Telling that Sheffner compared licensing to
one of the most exclusive housing markets in the US. There is a licensing market, but it’s not
available to everyone. Some of our clients
use it but most can’t afford it. A lot
of what’s going on is fair use, and 1201 is holding us back. How much money have studios lost due to
existing exemptions? No record evidence. Only harm they’ve articulated is a
threat of a marginal number of fair uses that turn out not to be fair. Sometimes
rightsholders just say no: MPAA member itself had to make fair use of the Steve
Jobs Apple TV ad. Sometimes they don’t
call back: personal experience w/ a number of clients. Orphan works problem. People can’t afford licenses. Dr. Seuss notwithstanding, a sufficiently
transformative use doesn’t require a license.
Campbell v. Acuff-Rose found fair use possible despite negotiations about
license that broke ground.

MPAA’s proposed language doesn’t change anything.

Taylor: possibly give us an opportunity to review any language
before publication: would help in efforts to resolve/simplify. Current exemption has misidentified AACS as
Advanced Access Control System, when it’s Advanced Access Content System. If we’d been allowed to comment, we could
have corrected it.

CO: if you were to make a vid equivalent in the ebook world,
would you be editing the clip itself?
Tandy said that remix artists could want to make ebooks. Current video
exemption involves a lot of clip editing—would that be true in an ebook as well, or would it be unaltered clips
+ writing?

Turk: not sure.

Rosenblatt: the answer is yes, sometimes those ebooks would
need or want to alter the images themselves or the sound. Examples focus in on particular part, or
split-screen where they are remixing the video as well as juxtaposing.

Lerner: the video exemptions are the only exemptions that
mandate specific technologies. That’s one reason we’ve asked for a tech-neutral
exemption: we benefit from seeing what has changed over time, as w/DVD,
Blu-Ray, etc. AACS2.0 is no different functionally
from the other mechanisms.

Opponent: AACS2.0 is completely different. This proceeding
has given new formats an opportunity to grow before an exemption is
granted. [v. screencap?]

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Merchandising right violation?

Posted on April 23, 2018 by rtushnet

In the footsteps (so to speak) of Boston Athletic Association v. Sullivan, 867 F.2d 22 (1st Cir. 1989), how should we analyze these T-shirts, sold at Boston’s Logan Airport around the time of the Boston Marathon?

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Leval on fair use

Posted on April 18, 2018 by rtushnet

At a talk today (should be posted in about a week), Judge Leval gave a beautiful explanation of
why good faith/bad faith shouldn’t matter to fair use. Boiled down and stripped
of its eloquence: (1) A publisher should be able to examine the relevant works
side by side and determine whether the use is fair, without investigating the
good faith of the second author/the means by which the second author acquired
access to the first work. (2) The inquiry should be done on the
pleadings/summary judgment, and considering good faith makes that
difficult. (3) The ultimate interest in
fair use is the public’s, and if the public is entitled to the new work/new use
and benefits from it there’s no reason that the defendant’s means of access
should matter.

Judge Leval also insisted that the fourth fair use factor was the
key, even more than factor one, and that therefore the result in TVEyes was
correct. I wish he had addressed the
record evidence in that case that Fox didn’t license everything—it put video it
was later embarrassed by in the Memory Hole.
That seems to me quite relevant even from a market-focused perspective,
especially since people looking at news shortly after broadcast, when they’re
scanning for topics, can’t be sure what moments will later be awkward for Fox
to acknowledge.

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allowing TM to be used to describe a different entity could be literally false lawyer advertising

Posted on April 16, 2018 by rtushnet

Rosenbaum & Associates, P.C. v. Morgan & Morgan,
2018 WL 1768050, No. 17-4250 (E.D. Pa. Apr. 12, 2018)

Rosenbaum sued various Morgan defendants for false advertising
of personal injury lawyering services in Philadelphia. Defendants started advertising Morgan &
Morgan’s personal injury services in the Philadelphia market in December 2015, though
no attorneys worked on personal injury matters for a Morgan & Morgan entity
in a Philadelphia office. “At some point, an entity called Morgan & Morgan
Philadelphia opened an office in Philadelphia but Morgan & Morgan PA denies
it has an office in Philadelphia.” In
January 2017, Morgan & Morgan PA hired a relatively inexperienced Pennsylvania
attorney as the only attorney in its Philadelphia office, but this allegedly
merely occurred “to perpetuate the charade [all Morgan & Morgan entities]
are handling personal injury claims for clients in the Philadelphia market.”

The disclaimer “it is not a referral
service” was allegedly false or misleading because the Morgan & Morgan
entities, in reality, refer all or nearly all of cases from Philadelphia
clients to other law firms. Billboard
claims stating that “Morgan & Morgan” has “Offices Philadelphia” were
allegedly false because Morgan & Morgan PA denies having an office in
Philadelphia and instead states the separate entity Morgan & Morgan
Philadelphia owns the Philadelphia office. Similarly, internet advertising that
“ ‘[Morgan & Morgan’s] attorneys in our Philadelphia office handle cases in
the following practice areas,’ referring to various types [of] personal injury
claims, and identifying [Morgan & Morgan] as ‘Personal Injury Lawyers in
Philadelphia’ ” were allegedly false for the same reasons.

The Morgan & Morgan entities and attorneys allegedly
never intend to represent personal injury clients in the Philadelphia area but
refers “all or substantially all” potential clients who contact Morgan &
Morgan to another law firm for a referral fee. The statements “I’m your lawyer,” “We’re all here for you,” and
“You don’t pay us unless we’re successful” were sufficiently alleged to
be literally false because Morgan & Morgan PA attorneys never represent,
never are there for, or never are successful for Philadelphia based clients.

After discovery, Rosenbaum alleged additional statements are
false or misleading and also sues other Morgan & Morgan entities and
individuals. The court refused “to
examine each statement in a vacuum and strike Rosenbaum’s allegations about
certain statements because those statements are not misleading in isolation…. The
full factual record of summary judgement is the time to examine each
advertisement in context and determine whether they are false or misleading
instead of examining the statements in isolation based solely on allegations.”

Morgan & Morgan PA moved to dismiss as to new
claims, arguing that billboards advertising “Morgan & Morgan Offices
Philadelphia” weren’t literally false because “Morgan & Morgan” isn’t
“Morgan & Morgan PA.” The court
disagreed; Rosenbaum alleged that the billboards in the Philadelphia area were
literally false when they used the trade name “Morgan & Morgan” through the
trademark owned by Morgan & Morgan Global to advertise an office in
Philadelphia when Morgan & Morgan Global and Morgan & Morgan PA deny
having an office in Philadelphia.

As for which defendants were responsible, Morgan &
Morgan Global allegedly permitted its trademark “Morgan & Morgan” to be
used in billboard ads stating Morgan & Morgan has an office in Philadelphia
when allegedly neither Morgan & Morgan Global nor Morgan & Morgan PA had
an office in Philadelphia. Allowing the trademark to be used in an ad with a
literally false statement was sufficient to state a claim.

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TM scholars’ roundtable, part 5

Posted on April 16, 2018 by rtushnet

Session 3: The Implications of Tam (and Brunetti)

What are the implications of the Tam Court’s First Amendment
analysis for other subsections of Lanham Act Section 2? What are the implications beyond Section
2? For example, is dilution protection
now vulnerable? Did Brunetti correctly
apply Tam?

Introduction: Lisa
Ramsey

Source-ID function v. other functions; the Court has to
decide whether Slants is commercial/noncommercial, and expressive component is
noncommercial; as to the commercial, Central Hudson would apply. If your mark
is only conveying source ID information, Central Hudson applies. Regulating expressive component, then strict
scrutiny required.

But expressive and commercial are not mutually
exclusive. Descriptive terms can be
both. Comparative advertising can be
both.

Registrations can also chill speech. The Court needed to
weigh the harm from registration and denial, but the Court didn’t do so. Still, can apply the analysis to
registrations: a registration for pink buildings can chill others’ use of pink
on buildings.

Vague TM laws: infringement, dilution, secondary meaning.

Court rejected theories that would take TM/registration out
of the scope of the 1A: government speech.
Could have made a categorical exclusion, but it didn’t do that.

Viewpoint v. content based. Is that distinction made because
of the viewpoint of the lawmakers who enacted the laws? Protecting against confusion isn’t
disapproval of the content of the mark itself.
But other cases like Reed say
that you don’t look at what the law’s motive was, but rather what the law
does—it targets particular content and is thus content based. You have to compare the speech of the P and
the speech of the D. The remedies target
content.

Level of scrutiny: Court doesn’t decide what kind of
constitutional test should apply in the TM context. Alito + 3 says won’t decide
whether TM also regulates noncommercial speech; doesn’t even pass Central
Hudson scrutiny. Process: identify substantial gov’t interests at stake, and
determines whether laws directly further those interests, and then figure out
what’s the harm to free speech. Thomas says strict scrutiny even if it’s
commercial; etc. – strong signals.

Rebecca Tushnet: with Ramsey present I don’t have to be the
optimistic advocate for working the law pure, so I can be the cynic. Should Tam be understood as death blow for
dilution/tarnishment and more?
Tarnishment seems obviously gone.

Incoherence in Alvarez about whether dilution is even
distinguishable from confusion for constitutional purposes/lack of disavowal of
USOC v. SFAA. Can the legislature make
wholesale decisions about confusion or must it work retail? The various parts of section 2 very much
depend on that if the interest at stake is only consumer
understanding/confusion—e.g., prohibition on
registration of flags & insignia.

Separately, could dilution survive b/c confusion isn’t the
only interest the gov’t is allowed to protect?
The appeal of a property concept (and its interaction w/a registration
system—here is perhaps the weak point from the perspective of the
libertarian-esque Justices; the rights created by registration are very clearly
additions to the common law background and thus not “natural” in the way that
rights stemming from use are).

Registration system as a whole and Central Hudson: the only
interests that a registration system more directly advances than common law are
(1) treaty compliance and (2) notice/administrative convenience functions.

Tam allows you to avoid all this with viewpoint analysis,
but Brunetti does not because it decides that scandalousness is content based,
which is bass-ackwards given that scandalousness is far more obviously
viewpoint based than disparagement, which applied to disparagement from the
viewpoint of any targeted group. I don’t
think that “being mean” is a viewpoint (though those who know me might
disagree).

Linford: On the treaty point, Eldred & Golan might allow
the Court to say that Congress gets to make decisions in light of treaty
obligations. Maybe arguments are
stronger for dilution/tarnishment, but their decision to wave off treaty issues
in those © cases might signal a willingness to do the same.

McKenna: TM law is so coherent compared to 1A law. What are the legitimate interests protected
by TM? We are probably going to see cts assert that protection of property
rights is a legit gov’t interest/water down scrutiny. But if that’s the case,
then we lose Rogers, all the
expressive use considerations—there’s no 1A need b/c those doctrines are meant
to protect 1A interests. It’s hard to
conceive a way to understand these cases that doesn’t do sweeping things w/in
TM unless we start making a bunch of distinctions w/o a difference. E.g., Tam:
why doesn’t the Court approach this as a gov’t program; Alito says “those gov’t
programs from previous cases are all about cash” (which isn’t true) but even if
it were true why would it make a constitutional difference?

Dinwoodie: even more skeptical. The doctrine seems like a mess, but
wholesale/retail framing is useful. He
takes the property point distinguishing enforcement from registration, but is
it a get out of jail free card? Still
need to look at less restrictive means.
TM does a lot of different things—industrial policy, etc.—Breyer gloms
onto source identification, but were they invited to think about other
things?

Litman: SG raised the issue of Congress trying not to give
imprimatur/anti-discrimination norms.

Dinwoodie: the problem w/those rationales is that they run
into instinctive speech responses: you can’t suppress just b/c you don’t
like. But there might be issues about
other things like notice and treaty compliance.

Grynberg: Tam oral argument, the focus was on source
identification—he wrote about why disparaging terms are inherently less likely
to identify source [though that gets us back to wholesale/retail].

Burrell: In Brunetti: why was the court so desparate to get
its hands on the 1A issues? Most systems wouldn’t have called FUCT
scandalousness.

RT: (1) to get affirmed; (2) because vagueness is the other
half of the 1A vise and so many other fuck-type marks had been rejected.

Dinwoodie: how much room is left open for a prophylactic
approach? Gov’t program type
conceptualization of what TM is about that would prevent ongoing litigation of
any TM issue from a 1A lens.

RT: I talk about that in my Tam paper a bit—given the
interest in having a registration and infringement system, the costs are worth
bearing. [It may be that examination on
absolute grounds is constitutionally required here; we couldn’t just register
w/o examination and grant the rights we do.
But see ITUs.]

Ramsey: focus on regulation of commercial speech and
misleadingness. Gov’t has interest in
fighting fraud, and also in promoting fair competition (including use of
nonmisleading terms). Any registration
laws that promote competition (functionality, genericness, exclusions of
nondistinctive symbols) will be ok, and facilitating truthful source ID is also
ok. Tam says gov’t interest in deterring
offensive speech is not sufficient. Not
just protection of property rights, but property rights in language. There’s a
difference b/t cars and colors.

Dinwoodie: EU allows property rights even upon application.
[Asks about my speculation that under Central Hudson substantive examination
might be required; though treaties leave us a lot of flexibility, the narrowest
implementation of our treaty obligations easily allows substantive
examination.]

McG: why wouldn’t non-examination and challenge post
issuance be good enough to satisfy the 1A?

RT: compare to obscenity: it’s the closest analogy I can
think of, though still distant—a licensing regime where you absolutely can’t
put the burden on the affected parties to make a challenge. This is a
regulatory regime very different from most others we’ve seen challenged.

Grynberg: property/TM conflation has been making a mess for
a long time. What’s different now? Why
would that endanger Rogers? [Because of
Michelob Oily.] As long as we maintain a
commercial/noncommercial distinction …

McK: the significance of commercial/noncommercial is in
obvious flux. [And obvious contradiction among types of law: © commercial is
not 1A commercial.]

Realistically, there isn’t going to be significant will to
challenge the whole registration system.
And so where it will play out is enforcement. The Court ignored an
obvious issue: enforcement is prohibition of speech directly; denying
registration is a much subtler impediment.
Surely our current functionality doctrines are not the least restrictive
means for dealing w/functionality. How
do we decide whether a particular provision is necessary to promote
competition, at which level of generality?
It’s a silly Q.

When you look at enforcement, a lot of times the P is
objecting not entirely because of confusion but b/c of use on goods/in ways the
P doesn’t like. That’s expressive at least in part.

Dinwoodie: compare to European concept of advertising
function, whatever that is, versus source identifying function.

Linford: Sorrell v. INS: speech the state can’t regulate—how
far are we from having no distinction b/t commercial and noncommercial
speech? Similar to Citizens United. Would that have an impact in © and TM or
would they handwave on a property basis? Maybe harder to handwave in TM than in
©. Harper & Row addresses 1A some
and still gives Ford a right of first entrance to the market despite speech
rights. Campbell = release valve. If you
look at statutory offramps for noncommercial use and commentary, and the fact that
we’ve doctrinally imported them into standard TM analysis, a court could limit
Tam & Brunetti in the same way Eldred/Golan did—we can have our cake &
eat it too. Would that survive if we
really do see shaving of the commercial/noncommercial distinction to nothing?

Diamond: speak more about blurring.

RT: Brunetti says there’s no gov’t interest in promoting
some marks over others. There’s also a Q
of what blurring really is/what the harm might be, especially to famous
marks. Also, City of Cincinnati v.
Discovery Networks: given the exemptions, the remaining coverage is limited and
that small contribution to the overall harm means that the regulation flunks
Central Hudson.

Beebe: Rogers step 0: is it an artistic work? That seems to pick up all the
commercial/noncommercial stuff.

Ramsey: consider a nonprofit using a mark to
fundraise—that’s more of a TM/commercial use. But offering religious
services—e.g., a breakaway congregation—seems so noncommercial that it should
be protected. For some marks it depends
so much on context, and so some challenges can be facial while others can be as
applied.

Eric Goldman: Denying benefits based on someone’s speech
always seemed like an easy case of unconstitutionality to him. Does think that enforcement is a different
question. Denying © registration to
Democrats would also be a problem. [But
that’s not what disparagement was: it denied registrations that disparaged
Democrats, Republicans, or nonvoters—and allowed Democrats any registrations
except those that disparaged, as others were also denied. But I understand I’ve lost that debate; the
question is what else is viewpoint-based.
Tam is not much help in determining what the next viewpoint-based
regulation will be.]

Bill McGeveran: Note that cases raising these issues will be
thin on the ground—most dilution claims aren’t litigated and most dilution
cases aren’t litigated alone but rather have confusion claims. TM owners would have to be willing to press
their luck. [LV, I’m looking at
you.] Continued invocation in C&D
letters might look better. Cts have a long list of avoidance doctrines, e.g.,
finding dilution unlikely or a 43(c) defense succeeding. Won’t have to make other moves w/in 1A
doctrine that would be bad. Harm =
vestigial doctrine w/ zombie life in C&Ds.
Remember that parodists no longer lose.
Radiance v. NAACP district court opinion v. appellate opinion—the former
looks like a case from the 80s. Judges in the last 20 years want to look like
defenders of free speech. These cases about registration may continue to have
real-world effects in the registration system, and it’s conceivable they could
break out into infringement but thinks the likelihood is really low.

Dinwoodie: motion practice to isolate constitutional issue?

McGeveran: in almost any scenario the nonconstitutional
issues would be available on the motion too.
Section 2 bars don’t take away from the core function of TM as judges
see it. To invalidate dilution, a judge
would have to take away a piece of TM rather than expanding TM protection as
w/invalidating a §2 bar.

McK: but you’d be supporting the speech of someone else.

McG: whereas allowing registrations increases the scope of
TM. Prediction: it’s a big ask to tell a
judge to get rid of a congressionally enacted protection.

Dinwoodie: you could get a dilution claim for an
opposition—the Coach case.

McG: thinks that’s more likely.

Grynberg: consider impersonation—could we have a specific
claim for impersonating an entity even in a nonprofit context—impersonation as
defamation or other harm?

RT: Eugene Volokh has a great paper about, among other
things, using defamation to deal w/impersonation cases. Consider also the
treatment of false advertising cases alleging false patent claims: courts have
imposed a higher intent requirement than ordinary Lanham Act cases; we could do
something similar with political/religious cases like United We Stand or
religious schism cases, requiring actual confusion (the problem remaining being
that they won’t have deceptive intent insofar as they will believe they’re the
real thing, and this is a real conflict that we will have to resolve).

Bently: EU takes the position that denying registration puts
very little burden on speech, and if there’s some legitimate interest in preventing
commercialization of the sign, that’s good enough.

RT: but aren’t those two things the same? If there’s no
burden, then there’s no deterrence of commercialization—those are commensurate.

Bently: yes, but we’re ok with that—similar things in patent
law. Some is about artificial incentives—we don’t want extra incentives to do
undesirable things but we won’t prevent them if they’re truly committed.

Dinwoodie: European/British approach: we have no problem
making gov’t judgments of what’s un/desirable where US would leave it to the
market.

Burrell: Australia’s scandalous marks provision has been
almost entirely hollowed out. Where he sees that as undesirable—case last year
where Commonwealth Games Committee appropriated a term from the local indigenous
language, while building a stadium in the middle of traditional land. TM Office says it doesn’t matter b/c we’re
banning some terms & reserving rights for indigenous rights/important
people. The Office is pushing the line:
if we don’t like it, just ban the use, which absolves us of any responsibility.
He’d prefer an intermediate category w/o ban but no registration either.

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Posted in Uncategorized | Tagged dilution, first amendment, Part 5 conferences, TM Scholars' Roundtable, trademark | Leave a comment

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Rebecca Tushnet

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seller can’t sue customer for false advertising under Lanham Act because customer can’t sue seller either

1201 hearings, LA, streamlined video exemption

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Leval on fair use

allowing TM to be used to describe a different entity could be literally false lawyer advertising

TM scholars’ roundtable, part 5

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