Bobby Brown’s failed ROP claim shows some of the cracks in the current ROP tests

Brown v. Showtime Networks, Inc., No. 18 Civ. 11078 (CM)
(JLC), 2019 BL 290214 (S.D.N.Y. Aug. 02, 2019)
Bobby Brown and the Estate of Bobbi Kristina Brown sued Showtime
and the BBC (which got out of the case on jurisdictional grounds) and some
other defendants, claiming they used allegedly unauthorized footage of the
Browns in a documentary film on the life of Whitney Houston, Whitney: Can I
Be Me
. They alleged violations of 43(a) of the Lanham Act, as well as state
law claims of right of publicity violations and tortious interference with
contractual relations; the court dismissed the Lanham Act claim on grounds that
applied to the ROP claims and declined to exercise supplemental jurisdiction
over the tortious interference claim.
Brown is a famous singer and also well-known for being Houston’s
ex-husband; they had a daughter, Bobbi, who died in 2015 in Georgia. Brown pled
that information about him, Houston, and Bobbi Kristina is “very valuable and
of interest to the public.” Defendants Tracey Baker-Simmons and Wanda Shelley were
the executive producers of the reality television program Being Bobby Brown,
which starred Brown and aired on Bravo for one season in 2005. An agreement
with Brown’s company Brownhouse authorized the filming and included a confidentiality
clause.
Brown declined a request to be interviewed for the Showtime/BBC
documentary.  “The film, which lasts one
hour and forty-four minutes, contains approximately thirty minutes of footage
depicting Brown and his late daughter Bobbi Kristina, all of which was derived
from Being Bobby Brown.”
Brown and the Estate alleged that Showtime and BBC wrongfully
used their names, likenesses and personas without their consent in the film;
the credits of the film; and the marketing and promotion of the film. The film
allegedly contained unauthorized footage of musical performances of Brown and
Bobbi Kristina. The film’s end credits listed “B2 Brownhouse Entertainment in
Association with Simmons Shelley Entertainment LLC,” which Brown argued falsely
suggested that he consented and authorized the use of his image and voice in
the film.  Brown submitted as exhibits
reviews of the film that mentioned him, arguing that this demonstrated confusion
as to the origin, sponsorship, and approval of the film.
Brown’s ROP claim was under California statutory and common
law. But “Whitney: Can I Be Me is an expressive work and a report on a
matter of public interest, such that it is immune from suit under both the
First Amendment and California law.” The documentary was not commercial speech;
“[u]nder the First Amendment, a right of publicity cause of action may not be
maintained against ‘expressive works, whether factual or fictional.’” [But see Comedy
III
, sigh. Later, the court says that “[c]elebrities have successfully
pursued right of publicity claims for the usage of their images, likenesses,
and catchphrases, but only in the limited context of commercial advertisements
and product sales,” without noting the contradiction between saying that the
right of publicity is limited to commercial speech and saying that it extends
to “products” that incorporate celebrity likenesses.] 
This wasn’t a hard case. The First Amendment “safeguards the
storytellers and artists who take the raw materials of life—including the
stories of real individuals, ordinary or extraordinary—and transform them into
art, be it articles, books, movies, or plays.”  Likewise, “[t]he appropriation of a celebrity’s likeness
may be important to uninhibited debate on public issues, particularly debates
about culture and values.” The court noted that one of Brown’s own cited
reviews commented on “the film’s important role in ‘preserving a necessary
account of the truth behind the tabloids.’” Another review stated that the film
“delivers…[a] tragic lesson in the toxic mix of fame, talent and children; it
should be required viewing for all those who seek to follow this diva’s path to
fame and fortune.”
Brown argued that he never signed a release form authorizing
the use of his likeness. “However, no such agreement is necessary where, as
here, the film and its portrayal of Brown are protected under the First
Amendment.” Any industry custom of paying for such releases was not relevant to
the legal standard.  The court (not at
all uniquely!) uses the idea of “appropriation” to hide a legal conclusion in
what sounds like a factual claim: “Here, Brown’s name, likeness, and persona
were not appropriated to sell products, were not used in commercial
advertisements, and did not appropriate the economic value of Brown’s performance
or persona.”  Well… not exactly: they did
use his image in advertising the film, but that’s ok because the film itself
was constitutionally protected. “The fact that expressive works, including
films, plays, books, and television shows [but not greeting cards, lithographs,
or T-shirts], generate income for their creators does not diminish their
constitutional protection.”
The Estate’s claim was brought under Georgia law.  I find it rather puzzling that a federal
court would use the underlying state’s idea of what the First Amendment
requires to determine the constitutional scope of that state’s ROP.  Nonetheless, the court proceeded to do a
slightly different First Amendment analysis, following the Supreme Court of
Georgia’s holding that “where an incident is a matter of public interest, or
the subject matter of a public investigation, a publication in connection
therewith can be a violation of no one’s legal right of privacy.”  The Georgia ROP claim had to be dismissed
because the use here was newsworthy under Georgia law. Likewise, advertising a
protected use is also protected under Georgia law.
The Lanham Act claim failed under Rogers. The use
plainly had artistic relevance.  Brown tried to use Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018),
to argue otherwise. Not only was Gordon not binding, that case found
artistic relevance present even when the defendant “recreated plaintiff’s
trademarked catchphrases on the front covers of greeting cards, without any
other text” and went off instead on part 2 of Rogers.  (In an unfortunate and likely-to-be-repeated
shorthand, the court described this case as holding that the use of the “mark”
alone was “sufficient” to find explicit misleadingness, but didn’t note that
even Gordon said there was a triable fact issue.)  Anyway, the use here was artistically
relevant.
Was there explicit misleadingness?  Sadly, we’ve now arrived at the same kinds of
gyrations courts sometimes perform with explicit/implicit falsity in §43(a)(1)(B)
cases: “Although this determination is based on the same considerations as the
likelihood of confusion factors for trademark infringement, only a ‘particularly
compelling’ finding of likelihood of confusion can overcome the First Amendment
interests.”  A couple of comments: First,
this formulation comes from Twin Peaks, a case about expressive work-v-expressive
work contests, which the Second Circuit doesn’t actually apply Rogers to;
instead it tightens the usual LOC test to account for First Amendment concerns.  Twin Peaks shouldn’t have been relevant here, because Brown is a performer in exactly the same position as Ginger Rogers and should have gotten pure Rogers treatment. Second, and relatedly, this formulation makes
a mockery of the “explicit” requirement in Rogers.  
Despite all this, courts can still get rid of trademark
claims “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.”  Brown argued that the film’s credits were
explicitly misleading. This wasn’t plausible, let alone “particularly
compelling.”  The end credits listed “B2
Brownhouse Entertainment in Association with Simmons Shelley Entertainment LLC”
as one of dozens of archival sources for the film. The credit was visible on
screen for about eight seconds. “It is not plausible that a significant number
of people watching the film would pay much attention to the end credits of the
film, let alone the long list of archival sources presented near the very end
of the end credits. … It is even more implausible that viewers of the film
interpreted ‘B2 Brownhouse Entertainment in Association with Simmons Shelley
Entertainment’ as understanding that Bobby Brown endorsed, produced,
sanctioned, or approved of the film.”
Brown alleged that defendants’ “marketing strategy” capitalized
on his fame by providing advance copies of the films to members of the press,
giving the press the opportunity to view the film and write reviews before the
release date, allegedly in the hopes that the reviews would mention Brown and
thus would draw more attention to the film. But that wasn’t sufficient to plead
explicit misleadingness. “Put otherwise, Defendants specifically identify the
persons responsible for the film, and Bobby Brown is not among them.” None of
the reviews Brown identified even stated the mistaken belief that Brown
endorsed the film. As Rogers held, “[t]he slight risk that…use of a
celebrity’s name might implicitly suggest endorsement or sponsorship to some
people is outweighed by the danger of restricting artistic expression.”
With all that out of the way, the court turned to tortious
interference. The non-B2 defendants allegedly tortiously interfered with Brown’s
confidentiality agreement with B2 after he declined the interview, negotiating to
use footage from Being Bobby Brown in the film.  Though choice of law wasn’t clear, the elements
of a tortious interference with contract claim under New York and California
law were, for all practical purposes, identical: “(1) the existence of a valid
contract between the plaintiff and a third party; (2) the defendant’ knowledge
of the contract; (3) the defendant’s intentional procurement of the third-party’s
breach of the contract without justification; (4) actual breach of the
contract; and (5) damages resulting therefrom.”
(3) was ambiguous. Brown specifically alleged that he
notified defendants of the existence of the agreement in 2017, after the film
already began airing, which would mean the alleged breach necessarily occurred
before Brown notified them of the agreement.  The court was troubled by whether defendants
could have intended to procure a breach of a contract they did not know existed,
but at this stage it declined to grant the motion to dismiss, which would have
to be without prejudice anyway. Discovery was a better place to hash this out.
However, without the Lanham Act claim there was no longer a
basis for federal jurisdiction (complete diversity was lacking).  The court declined to exercise its
supplemental jurisdiction.  

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click tracking makes online false advertising harm reparable, preliminary injunction inappropriate

Carson Optical, Inc. v. Alista Corp., 2019 WL 3729460, No. 19-cv-1725
(SJF)(AKT) (E.D.N.Y. Aug. 8, 2019)
Carson sells three products on Amazon that have a magnifying
mirror: a folding compact lighted mirror, a round lighted mirror with suction
cup base, and a square lighted mirror with stand. According to defendant RQ’s
principal Zheng, before February 2019, Carson didn’t advertise a cosmetic
makeup mirror. RQ sells beauty products online, including the ten magnifying
mirrors. Both parties buy magnifying products “from factories overseas—mostly
in China—and brand them as their own for sale at wholesale (Carson) or
direct-to-consumers (RQ).”
Carson alleged that the RQ defendants falsely advertised
their products with “grossly overstated” magnifying powers. Though the
complaint didn’t explain how Carson was harmed by RQ’s statements on its own
website, RQ conceded that it predominantly “sell[s] mirrors and … advertises
on Amazon.” According to Zheng, “RQ received the magnification listed on its
mirror products directly from its glass suppliers[,] … simply uses the
magnification given to it by its manufacturers and/or displayed in catalogs
produced by the glass supplier for its manufacturer[,] … [and] had no input
on the magnification listed.” Defendant Alista sells the same mirrors as the RQ
defendants and allegedly used the same false advertising claims.
Carson argued that it was harmed because, when the
advertisements “are positioned on the product pages of Carson’s magnifying
mirror products on http://www.Amazon.com[,] … consumers are presented with the false
[sic] choice of buying Carson’s product or buying the … falsely advertised
product[,]”and (ii) they “falsely cause Carson’s products to appear technically
inferior and over-priced, when compared to Fancii’s products.”
Carson’s attempt to get a preliminary injunction on its
Lanham Act claims failed for want of irreparable harm. Under Salinger v.
Colting
, “the court must not adopt a ‘categorical’ or ‘general’ rule or
presume that the plaintiff will suffer irreparable harm (unless such a
‘departure from the long tradition of equity practice’ was intended by
Congress).” Salinger was a copyright case, but the Second Circuit found
that eBay applies unless the relevant statute instructs otherwise; the
Lanham Act does not, and indeed specifies that injunctions should be based on
the principles of equity, and “eBay strongly indicates that the
traditional principles of equity it employed are the presumptive standard for
injunctions in any context.”
Still, though “general historical practices in comparative
advertising cases do not necessarily entitle plaintiff to injunctive relief
based upon a presumption of injury, they may be ‘helpful and instructive’ in
discerning and applying the eBay standard for granting injunctive relief ‘when
the circumstances of a case bear substantial parallels to litigation the courts
have confronted before’” (citing Kennedy’s eBay concurrence). Although
often “[i]t is virtually impossible to prove that so much of one’s sales will
be lost or that one’s goodwill will be damaged as a direct result of a
competitor’s advertisement[,]” that’s not true here. Even assuming that there’s
way to track “the precise number of customers” within the Amazon marketplace
who ultimately elected to buy defendants’ product over plaintiff’s product
“after being confronted with the false … advertising on Carson’s product
pages[,]” when a consumer clicks on one of defendants’ challenged ads appearing
on the page listing Carson’s product, Amazon apparently does track at least the
number of clicks. That maximum number means that “plaintiff’s losses are
measurable and can be sufficiently remedied by an award of monetary damages.”
Carson’s “conclusory” assertions of irreparable harm to its
goodwill and the value of its products in the minds of the consumer, without
more, were insufficient. And its claim was further weakened “by the lack of any
apparent causal connection between the advertisements and its own sales
position,” since Carson only hired its optics expert because, three years ago,
it discovered that RQ’s magnifying glasses were being sold with overstated
magnifying power claims and it wanted to know whether the mirrors were doing
the same. Although the expert opined in January 2019, Carson waited more than
two months to sue, and sought injunctive relief a week later, suggesting a lack
of irreparable harm.

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anti-tanning public service campaign targeted all tanning salons, thus couldn’t disparage them

JB & Associates, Inc. v. Nebraska Cancer Coalition, —
N.W.2d —-, 303 Neb. 855, No. S-18-719, 2019 WL 3756342 (Aug. 9, 2019)
Appellants, several tanning salons, appealed their dismissal
of defamation and product disparagement claims under Nebraska’s Uniform
Deceptive Trade Practices Act (UDTPA). The NCC said negative things about tanning
beds generally, not anything about any specific tanning salong.  This wasn’t enough to satisfy the requirement
that defamatory or disparaging statements be “of and concerning” appellants.
Appellants “allegedly accounted for between 68 to 71 percent
of the known tanning salons in the Omaha and Lincoln, Nebraska, markets and
approximately 14 to 18 percent of all the entities in Nebraska that provide
indoor tanning services.”  In 2014, NCC started
a campaign named “The Bed is Dead” to educate the public on the dangers of
indoor tanning. Statements included: “Tanning Causes More Cancers than
Cigarettes”; “Tanning beds have been proven to cause skin cancer”; “Just one
indoor tanning session increases your risk of melanoma by 20% and each
additional use during the same year boosts risk by another 2%”; and “Tanning is
addictive. One study produced withdrawal symptoms in frequent tanners with
narcotic antagonists such as are used in emergency rooms. Studies find higher
rates of alcohol, tobacco, and drug use in females that tan.” The website also
said: “Tanning facilities do not require a license to operate in Nebraska. …
In 2010, the U.S. Federal Trade Commission ordered the Indoor Tanning
Association to cease false advertising claims: 1) that tanning is safe or
healthy, 2) that tanning poses no danger, and 3) that tanning does not increase
risk of skin cancer…. Yet, a congressional investigative report two years
later found:… Nine out of ten salons DENIED KNOWN RISKS of indoor tanning.”  NCC promoted its websites in many ways,
including dermatologist partners who visited Omaha schools and encouraged
students to go to the website.
“According to managing staff and employees of appellants,
customers asked questions about appellants’ facilities and the dangers of
indoor training after visiting appellees’ The Bed is Dead website.”
The district court construed the UDTPA, which states that
“[a] person engages in a deceptive trade practice when, in the course of his or
her business, vocation, or occupation, he or she … [d]isparages the goods,
services, or business of another by false or misleading representation
of fact” (emphasis added).  The state
Supreme Court agreed that this language requires reference to a specific
producer’s product, rather than to an entire industry as a whole.  “[T]he Legislature’s use of the ‘of another’
language indicates an incorporation of the same ‘of and concerning’ element
present in common-law actions aimed at unfair and deceptive trade practices.” [What
about statements that “our widget is 15% better than every other widget”?  Presumably that doesn’t target an entire
industry in the same way, and it could also be a falsehood about the speaker’s
own goods, so construing it as disparaging isn’t required for false advertising
liability.]
Likewise, defamation requires statements to be “of and
concerning” the plaintiff, rather than about a group as a whole. A group libel
claim can meet the “of and concerning” requirement “if either the group is so
small that the matter can reasonably be understood to refer to the member or
the circumstances of publication reasonably give rise to the conclusion that
there is a particular reference to the member.” But that wasn’t the case here. The
Bed is Dead campaign was statewide; the website was available to anyone in
Nebraska and elsewhere. “Regardless of what internal documents said, which were
unavailable to recipients of NCC’s statements, nothing in the surrounding
content implied NCC was targeting appellants’ tanning salons, specific
locations in the state, or appellants’ specific customer base.”  Affidavits about customer questions in
response to the website didn’t indicate that customers believed the statements
were about appellants specifically, but rather that they understood that the
statements were aimed at indoor tanning in general.

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statements about guest’s supposed misbehavior at fan convention aren’t actionable under Lanham Act

Alexander v. Falk, 2019 WL 3717802, No. 16-cv-02268-MMD-GWF
(D. Nev. Aug. 7, 2019)
Randi Alexander and Jackson Young sued a bunch of entities
mostly for defamation and disparagement under federal and Nevada laws. “Alexander
is an erotic romance novelist and Young is a romance novel cover model.” Defendant
RT’s business is to promote romance and particularly promote/review romance
books. “Falk is the owner of RT and publisher of RT’s magazine—which later
dissolved—and is considered a pioneer of romantic fiction. Falk held a yearly
convention tailored to both readers and writers in the romance novel industry,”
which was over 35 years old.
The RT Convention held in 2016 in Las Vegas claimed “3,500
attendees, 200 seminars, countless parties, 700 authors signing books, and
unforgettable evening extravaganzas in the spirit of Sin City,” at which Falk “looked
forward to meeting people in her suite during the convention.”  The testimony was that defendant Wilson and
Young had a confrontation at a bar during the convention; Wilson reported the
incident and related matters to Falk and stated that she “didn’t feel safe.”
Falk told some attendees that she had received complaints about Young and
indicated that Young would not be invited back as a result. One witness testified that she suggested Falk talk to
Alexander because Alexander was Young’s business partner and Falk stated “Well,
from what I’ve heard, she probably wouldn’t care” and that she’d been told that
Young and Alexander were more than business partners. “Young testified that he
was told the conversations between Falk and Wills and Williams included claims
of extortion and blackmail.”
 
Falk “testified about attendees—readers and writers—who came
up to her complaining about Young, including about Young’s work”; she was
unwilling to identify anyone but Wilson, and wasn’t sure about the total number.
She also testified that she did not see or speak with Young at the RT Convention
and that she didn’t receive any complaints about Alexander.  After Wilson talked with Falk, Wilson posted
to Facebook, “asserting sexual harassment by [Young], [and] that he had threatened
to ruin her career and had asked her to sign a deal to get royalties from her
books.” 
Falk also sent a message to Young: “I advise you to not have
anything to do with [third-party] and his event … [B&N] says they will no
longer cooperate with him again … his conference last year was a disaster …
Bow out or you will get your name sullied.” But that was in May 2015—not in
relation to the RT Convention.
In April 2017, in response to posts about Young, Falk posted
to the Facebook group “Early Arrivals RT2017 Atlanta” that Young was banned
from RT events. The first response in the thread came from a woman who stated:
“A certain cover-model had been removed from the group due to multiple allegations
of abuse and blackmail… I’m not letting him back in.”
Plaintiffs asserted claims under the Lanham Act and various
disparagement-related claims.
The court sua sponte found that plaintiffs lacked Lanham Act
standing against the RT defendants (which is a step beyond continuing to call
it “standing” after Lexmark). 
Citing pre-Lexmark precedent, the court reasoned that Lanham Act
standing requires a plaintiff to show “(1) a commercial injury based upon
misrepresentation about a product; and (2) that the injury is ‘competitive’ or
harmful to the plaintiff’s ability to compete with the defendant.” “[W]hen [a]
plaintiff competes directly with [the] defendant, a misrepresentation will give
rise to a presumed commercial injury that is sufficient to establish standing.”
This is perfectly consistent with Lexmark, but the
formulation omits the relevant “commercial activities” language of the Lanham
Act—§43(a)(1)(B) isn’t just a product disparagement statute. And that
leads the court into perhaps harmless error, given the evident problems with
calling the accused statements commercial advertising or promotion (the only
thing that even requires serious thought is the Facebook statement, which is
plausibly commercial promotion but doesn’t have enough details to imply anything
specific).  The court reasoned that there
was no evidence “that connects those statements to any particular product.”  At least some of the challenged statements,
though, should have been analyzed with relation to Young’s “commercial activities” and maybe even his
“services” as a conference personality, though it’s not clear to me he was paid for that. Nor was there direct competition
between plaintiffs and the RT defendants; though plaintiffs alleged that Alexander
was conducting a different romance writers’ and readers’ convention, that was
in 2017 and 2018. They sued in 2016, so there was no competition at the time of
the alleged misrepresentations.  Again, Lexmark
doesn’t require competition, and, as that case indicates, disparagement is
exactly the kind of thing that can harm a plaintiff who’s not in direct
competition with a defendant.  This is
really an “advertising or promotion” failure (and §230 prevents RT from being
liable for a comment posted by someone else on Facebook, unless she was acting
on RT’s behalf).
Nevada claims for consumer fraud/deceptive trade practices:
Similarly, none of the accused statements disparaged plaintiffs’ “goods,
services or business” as statutorily required.
Disparagement/trade libel/defamation: A reasonable juror
could conclude that “Falk’s statements informing [others] of the complaints she
received about Young likely lowered the view of Young so as to be defamatory.”
But the testimony didn’t establish falsity: there was testimony that she did
receive complaints, and no testimony that she didn’t.  Nor did insinuations that the plaintiffs were
having an affair amount to defamation. 
And the ban from RT events, and announcement of the ban, weren’t actionable.
“The ban is not a statement, and the statement is not otherwise established as
having been false.” Statements in the Facebook thread about the ban—made
several months after this suit was filed—weren’t enough. And Falk’s “2015
advice to Young regarding his name being sullied cannot reasonably be
considered defamatory—if at all relevant to this action.”
The business disparagement/trade libel claim failed against
there RT defendants because there is no evidence that they made statements
about the quality of any relevant products or services.
Nor could a reasonable juror infer malice by those defendants.
Even if Falk didn’t investigate the complaints she testified to receiving, that
wasn’t knowing falsity or reckless disregard for the truth. Falk testified that
she “took [the complaints] to heart,” “suggesting she was not subjectively
reckless or acted maliciously,” and she had no duty to investigate before
responding in conversations where Young’s name was mentioned to her or before
banning him from RT events.
False light claims failed for similar reasons. Tortious
interference claims failed for want of proof of interference/intent. IIED and
negligent infliction of emotional distress claims failed for want of sufficient
medical evidence or objectively verifiable evidence of harm; seeking mental
health treatment wasn’t enough.
The evidence also didn’t support a claim that the RT
defendants engaged in civil conspiracy based on Wilson’s specific calling-out
Facebook post.  The testimony indicated
that they spoke; Falk only told Wilson to “do what you [want] to do” after
Wilson told Falk “I don’t know what’s going on, but I’m going to have to do
something because I’m literally being dragged through the mud.” Both parties’
testimony indicated that Falk attempted to warn Wilson regarding what Wilson
wanted to do. No reasonable juror would infer tacit or explicit agreement to violate the law between Wilson and Falk.
Wilson received sua sponte summary judgment for her on the
claims against her for intentional and negligent infliction of emotional
distress, and civil conspiracy/concert of action because of the insufficiency
of those claims.

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ownership of building doesn’t convey ownership of (once related) tenant’s TM

Long Grove Investments, LLC v. Baldi Candy Co., No.
18-cv-5237, 2019 WL 3716841 (N.D. Ill. Aug. 7, 2019)
Plaintiff Long Grove owns a building in Long Grove,
Illinois, “in which a beloved bakery, the Long Grove Apple Haus, once thrived,
selling goods such as apple pies and ciders.” 
It claimed that, because it bought the building, it acquired trademark rights
in the name Long Grove Apple Haus. Baldi set up shop next door and sold goods
bearing the putative mark, and Long Grove sued for violation of the federal
Lanham Act and the Illinois Deceptive Trade Practices Act. The court granted
summary judgment because buying a building, in itself, doesn’t confer rights in
the name used by a building tenant.
From 1977 through 2011, non-party Long Grove Confectionary
Co. (LGC) owned and operated the Long Grove Apple Haus, after which the building
remained vacant. For at least some time, LGC used a pie box like this:
And it sold apple cider like this:

LGC operated two retail stores near Chicago and sold to
wholesalers. After closing the Apple Haus Store, LGC continued selling apple
pies for some time at its two other suburban retail stores, at Long Grove
festivals, and to its wholesale customers.
In 2013, Baldi bought certain assets, properties, and rights
related to LGC’s business. It took over and continued operating LGC’s other
retail stores. In 2017, it bought a property near Long Grove’s and opened a
coffee shop, and a store with a commercial kitchen and bakery. When it opened
in 2018, it sold baked goods that used the Apple Haus name and red apple design:

Long Grove is a real estate investment firm that acquired
the old Apple Haus building, via special warranty deed, in September 2014. It
has never itself sold any goods or products. In 2017, Long Grove executed a
lease for the building with a person who intends to open a store there named
“Long Grove Apple Haus,” but who (wisely) waited on the resolution of this
case.  In that year, Baldi filed an
application to register “LONG GROVE APPLE HAUS” for unspecified goods/services
that probably can be guessed at; Long Grove opposed and the PTO proceeding was
stayed pending this litigation.
Actual use is required to own a trademark, and first use
gives priority in ownership. “Plaintiff admittedly cannot demonstrate
continuous use, or indeed any use, of the Apple Haus Mark.” Buying the building
with which the mark is associated wasn’t enough.  Long Grove relied on Plitt Theatres,
Incorporated v. American National Bank & Trust Company of Chicago, 697 F.
Supp. 1031 (N.D. Ill. 1988), which held that trademark ownership “passes
impliedly with ownership of the pertinent building or business with which the
mark is associated, absent express provision to the contrary.” In that case,
each successive owner to the historic Esquire Theatre—beginning with the
original owners who established the “Esquire” mark—was held to have passed its
ownership rights to that mark when it sold the building to the next buyer. The
building’s original construction included a marquee and vertical sign
containing the name “Esquire,” which has remained on the façade throughout
time. Likewise, in Helpful Hound, L.L.C. v. New Orleans Building Corporation,
331 F. Supp. 3d 581 (E.D. La. 2018), t the City of New Orleans established
continuous and prior use over the trademark “St. Roch Market” even though the
City never actually operated services in the building housing the St. Roch
Market. Instead, the City owned the building housing the market (which had been
known as the “St. Roch Market” since the late 1800s), designed and built the
market, chose its lessees, and significantly restored it after Hurricane
Katrina. A food hall tenant’s argument that it held priority over the City as
to the “St. Roch Market” mark thus failed.
But those cases were vastly different. “In both of those
cases, the original property owners: (1) actually established first use of the
marks; and (2) demonstrated that they or their successive owners continuously
used the marks at the properties.” [Note that doesn’t quite describe the New
Orleans situation, where the city didn’t itself “use” the marks—but I certainly
agree that the entity that chose multiple simultaneous tenants over time
plainly has a better claim than a single nonexclusive tenant.] Here, the
original owner of the building didn’t create, or have any involvement with
establishing, the Apple Haus Mark. LGC, a tenant, did so by, among other
things, selling products bearing the Apple Haus Mark. In addition, instead of continuous
use of the marks at the properties, the building had remained vacant since 2011
and Long Grove made no use of the mark when it acquired the building in 2014.
More apposite was Russell Rd. Food & Beverage, LLC v. Galam, 180 F. Supp.
3d 724 (D. Nev. 2016), which held that the owner of the property where a former
strip club had been didn’t own the associated mark. It “purchased only the real
property” upon which the club was built, not “a going concern.” There was no
authority “that the mere purchase of real property that was once associated
with a trademark in the past can confer ownership.”
With the trademark claim gone, all other claims failed. There
was no false advertising because the Apple Haus mark didn’t refer to or
otherwise identify the building, nor was there other evidence that the labels
suggested that Baldi’s products came from the building.  

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IPSC: Closing Plenary

Stephanie Plamondon Bair, Brigham Young University J. Reuben
Clark Law School
Innovation’s Paradox
Innovation begets innovation in a virtuous cycle … at least
sometimes. Not all innovations are productive, which is fine; it’s trial and
error. But some innovations may inhibit our potential for future innovation:
how?  Neuropsychology: certain
innovations may change the way we think in ways that make it more difficult to
think creatively.  Attention span and
filtering out unwanted information: focus on a task and selective filtering are
both important to innovation, and heavy digital media use seems to interfere
with our ability to do that.  Processing
information differs too: our brain processes digital information differently
from hard copy. People are more focused on concrete details than to think abstractly
for digital relative to analog, and abstraction is a necessary component of
creative thinking.  Screen time may
impact empathic accuracy, which is also important to creativity.  Creative tools: photoshop etc. Are they
unmitigated wins for creativity? Downsides: default settings on programs may
channel creativity in particular directions—users of one music editing software
program are very likely to produce 120 bpm tempo songs b/c that’s the default
while users of another are very likely to produce 140 bpm tempo songs b/c that’s
the default.  Also concerns about whether
people can produce crap: “just b/c tech 
has made it easier to create and express yourself does not mean you’re
any good at it”: Hegarty on Advertising. 
2012 analysis of creativity scores show declining scores
since 1990 while intelligence scores have gone up. Over last 20 years, “children
have become less emotionally expressive, less energetic, less talkative and
verbally expressive, less humorous, less imaginative, less unconventional, less
lively and passionate, less perceptive, less apt to connect seemingly
irrelevant things, less synthesizing, and less likely to see things from a
different angle”: Kyung Hee Kim, The Creativity Crisis. Not causation argument,
but correlates w/rise of tech. [And with massive explosion of
inequality/precarity?]
Tech/innovation: we tend to think about them as passive
tools that we can use or not as we see fit. But innovation can be acting on us,
in ways that might impact our ability to continue to innovate.  Not new idea to philosophy literature.  Even if you’re practically minded, it’s an
idea worth grappling w/ b/c of potential for negative effects on innovation
going forward.  Also connected to
literature on quality of innovation.  IP rights
may incentivize low-value innovations more than high-value innovations; this
dynamic she identifies here may be another social cost to grapple w/.
Has focused on costs and not benefits, which are undoubtedly
present. Also it’s not necessarily the existence of these innovations, but the
way they’re used/overused/misused.  California
required all textbooks to be available digitally; Florida followed suit; state
educational budgets have been devoted to getting tablets into public schools. We
should have a conversation about the downside of these policy decisions.  Mo. Sen. Josh Hawley’s bill targeting social
media companies; he wants to require them to get rid of features that might
lead to overuse of their products like infinite scroll, autoplay.  It’s an intriguing idea in this context.
RT: inequality/precarity; also want to know how much of this
research relates to WEIRD
subjects
versus others.
A: bound by what the existing research says; we might want
different policies for developing countries. Just wants to be clear that she is
vigorously extrapolating.
McKenna: you’re talking about two different kinds of
studies. One tests microeffects of particular technologies. One looks at macro
effects on children over extended periods, and causation is hard. Our education
system has shifted to testing drill & kill over time and it’s no surprise
kids are less creative in response.
A: meta-analysis on creativity shores up the results, but
most literature she’s relying on is testing for particular technologies.
Charles Duan: look at historical examples: people said
similar things about television, the printing press, etc.  [I’m very sympathetic to this criticism and I
very much want it to be true but on the other hand people have predicted
climate apocalypse for hundreds of years and this time they seem to be right
(and also we have a lot more empirical information than we used to about both
of these topics).]
Q: There is some work on autistic people in the patent
system. 
Q: innovations you point at are general purpose or platform
technologies, or both.  There are
literatures about how these technologies diffuse and affect development of
downstream tech.
Rosenblatt: how do you view the relationship b/t progress
and path dependence? 
A: interesting things in philosophical literature on tech as
monolith that moves without our direction.
Justin Hughes, Loyola Marymount University Loyola Law School
The Law of Digital Avatars (or Replicas)
His definition: digital manifestation of person.  Convincingly lifelike representations of
people are currently 2D but will be 3D soon. 
They’ll make banking and travel more tolerable; they may provide
companionship to elderly, infirm, or lonely. 
May also convincingly replicate people we know.  Pandora’s Box: the person represented may never
have said or done the things we will see. 
Stunning range of potentially relevant legal doctrines, from ROP to
fraud.
Kim Kardashian and Barack Obama have been convincingly
replicated; could be used to deter voting among African-Americans by telling
them voting hours have changed, etc. 
Deepfake porn, though need not be porn (e.g., fake crime). The question
of whether some sort of lower bound of authenticity is required to care is
key.  E.g., 2018 NY proposal started by
covering realistic depiction and then that was amended to remove a realism
requirement.  Grandparent/military
romance scams will proliferate.  Hologram
actors will replace human actors. Xinhua news agency launched a digital news
anchor, which will say whatever you want it to say.  DeepNude: worked on a single picture of a woman
(it only worked on women) to show “her” nude because it was trained on images
of naked women.  Single pictures will
soon be enough for a lot of things.
Is there a possible common approach that would be sensible,
helpful, and constitutional? It is generally thought that false
designation/defamation won’t work on deepfake porn because that mostly has
disclaimers.  Revenge porn laws used
against digital replica porn?  Depends on
the wording of the statute. Connecticut law clearly requires actual photo,
film, or other recorded image; Penn. law says visual depiction defined as
representation by film, including but not limited to photo, video, film or
computer image.
Digital replica porn proposal in California—predicts that
something like this will pass soon—carefully includes digitization. Creates
liability for intentional creation w/knowledge of lack of consent; victim has
to prove some harm. Despite those limits, seems to cover deepfakes of celebrities,
digital replica revenge porn, and unconsented enhanced sex scenes in feature
films where actor didn’t agree to what was shown on film.
NY proposal on digital replicas isn’t focused on revenge but
on employment: provides a right to control digital replicas if they show person
performing activity for which s/he is known in the form of a fictional
character: the idea is to permit unconsented depiction of digital avatar of
Hugh Grant being arrested but not unconsented depiction of digital avatar of
Hugh Grant playing Wizard of Oz.
Federal proposal from Sen. Ben Sasse: define deepfakes &
create offense of distributing it with intent to facilitate criminal or
tortious conduct. Tries to address 1A issues including US v. Alvarez by carving
out anything protected by 1A; may have to rethink Alvarez to address the
dystopic future.
Rothman: (1) you talked about 1A but not about copyright
conflicts. (2) Should you really think of all these issues as amenable to
common solution?
A: grappling with (2). Simplest global issue: a ban on
unauthorized digital replicas, period. 
That’s not a viewpoint restriction, probably a content based restriction
(though he says you could conceive of it as a time place and manner restriction,
which sounds wrong to me).  But Sasse’s
approach seems close to a globalized solution. 
[That seems wrong, at least w/r/t revenge porn—the Sasse proposal is
targeted at fraud, but the revenge porn issue is that there isn’t particularly
a cause of action for many instances of revenge porn unless we add a new law.]
Mike Carroll: disclaimer requirement?
A: convincing deep fakes with disclaimers may still fool
people; disclaimers often fail. TM law doesn’t favor disclaimers [but First Amendment
law does].
Said: actual v. constructive knowledge in Sasse proposal—wondering
what the thinking is.
A: probably not much thinking as yet. 
Betsy Rosenblatt, UC Davis School of Law
IP and the Question of Who Creates
What’s the difference b/t an inventor and a technician (e.g.
calculators in Hidden Figures)? What’s the difference b/t an inventor and a
mechanic?  Is a scrapbooker an
artist?  Who is a filmmaker?  What biases could affect our answers to these
questions?  Law is a particularly
powerful voice in this discourse b/c it speaks w/the power of the state.
IP systems create a discourse of value, assigning it to particular
creations by giving their creators exclusive access to markets. Promotes (only)
creation of things w/predictable market value, covered by IP. Lots of other
things get made, but IP only promotes some (negative space literature). Influences
what kinds of things get made—Kate Darling and Sprigman/Raustiala on adult
entertainment; Fumi Arewa on Nollywood. Low-IP spaces seem to feature fast
turnover and live performances. Higher protection results in more investment in
polished products.
But that’s all about the what. She’s interested in the who. Critical
theory/critical race theory: the IP system isn’t neutral in application and
effects, structural benefits to wealthy/powerful.  Everyone is a maker of sorts but some of that
making is special, recognized by law/society as meaningful. Foucault described
the author-function as a discursive mechanism by which we grant respect/authority
to some people and not others. Distinct from authorship in © law—under ©
everyone’s an author—but not all authors benefit from © discourse.  We can extend author-function to
inventor-function, brand-function (legitimizes brand owners over consumers even
though both contribute to meaning).  Foucault
envisioned recognition of dialogic relation as erasing the author-function, but
that’s not our world.  IP law picks some
practical winners & losers as well as winners & losers in discourse by
elevating certain voices.  Reflects &
reinforces hierarchies of race, class, and gender. She’s not the first to
observe this.  Wants to add that IP law
may also concentrate cultural respect in certain hands.
Norms work well w/in communities and not very well in
regulating interactions b/t communities. 
In these situations we need to be especially mindful of opportunity for
exploitation of less powerful by more powerful who disrupt norms that are
working. Not just where norms govern subcultures (street artists need
protection against developers, as with 5Pointz/VARA claim), but also where
things like norms of agent submission protect the film industry from random
people who send stuff in and then sue.  That
last norm exists because of law. Lots of specific doctrines favor those who
control the means of production.  Product
patents being more powerful than process patents: but who comes up with new
uses for existing things? Those who have to make do what they have.  The access/similarity test favors the famous.
Fair use—see Andrew Gilden—favors the famous. Ownership/authorship standards
giving mastermind the ownership do similar things, as does WFH.  Effort of users redounds to the benefit of TM
owners. 
What’s new here? The way this feeds our discourse about who
is doing things of value. We end up revering visionaries who may not be the people
who should be revered. Edison and Musk hired a lot of innovative workers whose
names we will never know. The garage inventor is more likely to be a white man
because being a garage inventor requires having a garage and we live in a world
with redlining/massive wealth extraction from African-Americans. Those who live
in a world of precarity are considered amateurs and considered bad.
But doesn’t IP allow those with humble beginnings to rise
and thrive?  In many ways IP makes it
harder for those voices to rise, making it harder to get out of the amateur
box. At the beginning, when you don’t have many resources, IP stands in your
way.
What is to be done? Has some, including small doctrinal
fixes, some of which might fall into the category of more rights: attribution,
termination. There may also be places where less makes sense. But also wants to
change discourse about who matters as a creator.
Maggie Chon: good to hear about justice, power,
representation.
RT: The concept of respect explains why your proposal isn’t to
decide all disputes in favor of the less powerful person before the court. But what
if it’s really all about labor law and tax law? [Lemley adds antitrust law, but
I’m not sure we’d need antitrust as badly if FB and Alphabet and Amazon didn’t
have so many billions sloshing around to be used to crush competition where
necessary.]  FB could buy out innovative
competitors b/c the tax rate is too low. 
What if you only change the superstructure by changing the structure?
A: Catherine Fisk’s work on labor is really instructive.
Labor law has a role to play here. But we should also be thinking about
innovation law specifically.
Zahr Said: distinguish discursive harm from legal harm.  Some people will distinguish the two.  What about remedies?  Even if on the merits a court finds for a
party, the better-resourced P gets so much more out of the process (or the D gets
to deduct a bunch of expenses).
A: Costs of acquiring/enforcing rights is a huge piece of
this.  Defenders say that marginal value
of money means a small recovery for a small P is fine, but she’s not convinced.

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IPSC: Copyright History

Bruce Boyden, Marquette University Law School
Substantial Similarity, from Equity to Legal Process
Multistep tests as recent inventions. Test for infringement
was created in a very different legal environment and many of its current
problems stem from the fact that the environment is quite different today.  Arnstein: copying in fact + wrongful appropriation
(aka substantial similarity). Trial court can determine copying in fact, but
jury mostly has to determine wrongful appropriation.  Many have criticized incomplete separation of
copying and infringement.
Arnstein was attempt to bring order to disjointed set of
opinions for deciding infringement in the Second Circuit, which was deciding
the vast majority of © cases.  New flood
of nonliteral infringement cases based on new tech/media. One test: was the sequence
of events the same; another test: whether ordinary audience would recognize accused
work as having been taken from the other. Arnstein combines these two.  There’s a dissent saying that there wasn’t a
two part test in previous cases, which is true. 
You get copying in fact out of the sequence of events test, and wrongful
appropriation from the audience test. Judge Frank is skeptical of the jury, but
more skeptical of judges, especially in ©. Opinion is written to send stuff to
the jury. Why does Learned Hand sign on? He’s not a judicial skeptic. Jury
trials were rare at time; they were almost always equity cases that had no
right to a jury and that were seeking injunctions.  Hand’s concern was that judges were deciding
cases based on prepared synopses by the parties; he wanted to make sure that
courts were first deciding whether actual copying had occurred before
evaluating infringement.
Arnstein was pretty much ignored through the 1950s; not
cited by other Second Circuit cases; regarded as a test for music infringement.
Generational turnover in judges; shift comes in 1960s. Consistent w/shift to Legal
Process. 3 key values: Institutional settlement: each institution has its role,
including trial court v. court of appeals.  Suspicion of standardless discretion used to achieve
policy as close to totalitarianism. “Reasoned elaboration”: judges should
explain their decisions and give basis for reviewing that decision. 5 years
after Hand dies, 2d Cir adopts Arnstein as the general infringement test, explaining
that it’s copying plus substantial similarity. That’s not a normative search
for wrongfulness, but for whether the average observer would recognize the
appropriation from the © work. But that looks a lot like the test for copying
in fact, which seems to get rid of “substantial” too, in theory if not in
fact.  Where did they get this idea?
Probably from Nimmer’s reading of Arnstein, his first © treatise in 1963, which
read improper out almost entirely.  He
told the 9th Circuit this was the test too in Sid & Marty
Krofft. 
Increasing rationalization in the courts: opinions get much
longer in the 1980s as courts work through each doctrine/subdoctrine in detail.
Courts become more attentive to the trial/appellate distinction.  Alan Latman writes an article; Second Circuit
becomes aware that Arnstein was supposed to have two parts.  Laureyssens v. Idea Group, 1992, “restate” or
really change everything and go back to its original formulation of copying
plus wrongful appropriation. But resurrecting Arnstein in this area, with
suspicion of judicial discretion and trial/appellate divide, leads to the issue
of uncopyrightable elements being entirely dropped from the analysis.  How do you do substantial similarity when
there are uncopyrightable elements? Maybe a more discerning inquiry? No, total
concept and feel.  There’s also a big
shift to jury trials. © lawyers had continued to request bench trials until the
late 90s. Hard as it might be for judges to both filter out uncopyrightable material
and measure total concept and feel, it’s much harder for juries.  Jury instruction in Blurred Lines case:
terrible; didn’t define substantial similarity.
No complete solutions, but jury can’t do better unless it
has better instructions, and juries need to be brought under control.  Nguyen’s dissent in Blurred Lines: we should
do more deciding issues as a matter of law, even after a jury trial, though
majority correctly points out that they don’t do that in © cases (or other
cases) now.
Buccafusco: some old cases in the 20s: courts do copying in
fact, then move into fair use—the two step inquiry existed as
access/similarity, but after that direct move into fair use. 
A: that’s one way to do it. 
[I don’t like this when it happens in cases that should be lack of
substantial similarity cases, but I guess you could lean in more heavily to
fair use, though many think it’s overstuffed.]
Carys Craig: sounds like an English case. Unconscious
copying case, but the point is: access is required no matter how similar the
works are; otherwise it’s just coincidence.
Q: Zahr Said has been thinking about jury instructions.  Juries are better representatives of the
public than judges.  Wants to make them
simpler.
A: Simpler may be inconsistent with what he wants, which is
more detailed.
Rebecca Curtin: why the change in jury trials?
A: no clear answer; may be that until the 90s there was a
stable © bar; after that you get Silicon Valley lawyers and other players.  [I suspect it’s plaintiff-driven though I’d
be interested in the data; it may have something to do with the increasing idea
that creativity is behind most value generated.]
Yvette Liebsman: rather take chances with uninformed jury?  Judges now have access to Westlaw and word
processing (which also helps explain their opinions getting longer).
Rebecca Curtin, Suffolk University Law School
Locke’s (Own) Literary Property
May 1689, Locke negotiated a contract for Essay Concerning
Human Understanding.  At age 56, he’d
published little, and less under his own name. 
He’d just returned to England from exile in Holland after death of his
patron; his anxieties over close brush w/prosecution for treason by James II.
His correspondence had been full of initials and other workarounds to shield
his opinions. Publishing in England must have required a significant shift. Complained
about how hard it is to wait for the press, to deal w/the whole process. Writing
and publishing are not the same thing. Nonetheless, w/in a year of his return,
3 major works appear in print, Treatises of Gov’t, Letter Concerning Toleration,
but only the Essay was signed. Locke destroyed the correspondence relating to
the first two.  Only the documents around
the Essay survive. Emerging sense of authorial rights; case study in how
sophisticated author of the day who knew theory and also practice managed “literary
property.”  Not a full record, but still an
antidote to canonizing authors as if they didn’t have any engagement with the
real market for their work (e.g., Lord Camden’s speech in Donaldson v. Becket,
where he says it wasn’t for “gain that Bacon, Newton, Milton, Locke instructed
and delighted the world; it would be unworthy for such men to traffic with a
dirty bookseller…”).
His entry point into the Licensing Act debate is about the
ownership of literary property: care for book buyers as well as book sellers:
the effects of perpetual © on buyers.  Avoid
fairer and more correct editions; ignorant and lazy booksellers benefit
(despite not having labored). He that prints them best deserves best and should
have the sale of them. Focus on printing privileges, but the same concerns
arise from perpetual © on the Stationers Register.  Discusses both censorship and need for monopoly
termination after 50 years, as well as the problem of titles that lie dormant,
leading many good books to be lost.  What
about authors who write and sell copies to booksellers? He’s keeping in mind
that living authors want to get paid—that’s different, but it’s absurd that any
person should have title to Livy’s works. 
Suggests death of the author/first printing + 50 or 70 years.
Commenting on a draft bill requiring permission to print the
name of any person as author or publisher: he says: to secure the author’s property,
that will do, joined with (1) a term of protection for the author to have the right
to authorize additional publication, apparently conditioned on author/publisher
taking on credit/liability for the initial work, or (2) deposit of copies w/specific
libraries that confers a privilege of reprinting/publishing book for a term of
years (an opt in regime).
Locke’s contract for the Essay is a pretty standard contract.
Very specific: narrowly defines what bookseller can do, specifying good paper
and size of a comparator book that was well-done, which was a common.  Printer is required to print at least 4
sheets a week—he’s learned from past frustration to control how printing
happens.  Paid 10 shilling/sheet,
counting what’s on a sheet as a specific book comparator counted.  10 shillings/sheet was not real money to him,
so Camden wasn’t wrong about his motivations; the money was desired to make the
printer take care with every page.  Locke
learned for later editions that he’d transferred full right and title and it
passed through bankruptcy to other printers. 
Later contracts: copyright returned to Locke after first edition was
published. Opposite of common form of receipts of the day, which typically said
that the publisher got sole right & title of the complete copy. 
Another contract: 5 pounds for every impression of a book
and 10 shilling per sheet for all additions; not to exceed 1400 books; 24 books
bound copies provided to him.  Covenants
not to dispose of right or title to work w/o his consent—so there’s a transfer,
but a certain amount of remaining control. 
He limits the claims of his estate, which is interesting in light of his
discussion of the deleterious effects of perpetual ©.
Betsy Rosenblatt: what presumptions would have surrounded
these contracts? We now expect a contract to leave silent what is presumed, but
some of these contracts say this is a transfer and others say this isn’t a
transfer. 
A: expectations of publisher were certainly to get
title.  She isn’t sure that Locke
understood that consequence about control of reprints. Publisher did ask him to
do a deal on the second edition of the Essay with additions; a blurring of the
lines about whether permission was required for a second edition, but on the
Stationers rules probably not if nothing new from Locke was added.
Boyden: is Locke anticipating exclusive rights in author, or
limiting rights of printers?
A: His best known writing is the latter, but comments on a
draft bill propose to secure property in the copy for the author.
Craig: why do we care what Locke thinks about his contracts
or about the licensing law?  It’s the
theory that matters.  What he did in his
contracts is neither here nor there unless you use it to modify/discredit the
theory as applied to authorship.
A: history for history’s sake is a fine thing! 

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