WIPIP Session 5: Copyright 2

Posted on February 20, 2016 by rtushnet
Session 5 Copyright 2
 
Zahr Said, A Transactional Approach to the Lay Observer in
Copyright Law
 
Internal contradictions in uses of the observer.  Humanities perspective: copyright doesn’t
have a theory of reading/interpretation/engaging with works.  Reader response theory as a means for
addressing some confusion in © law: it’s a literary theory broadly applied to
film, art history, music, and other genres beyond text.
 
Payoff: more coherence for ©’s reading practices and
specifically for its reader.  Formal tests
used by courts and a variety of informal uses. 
Formal: urge adoption of lay perspective, such as 2d Circuit’s ordinary
observer test; 7th Circuit’s more discerning observer test, which is
less about observer and more about filtering. 
Function of lay perspective unclear; rationales vary and are sometimes
in conflict—proxy for market harm, other things.
 
Reader response theory reoriented analysis of art away from
text and towards audience (an oversimplification but that’s what you get in 8
minutes).  Different movements w/in the
theory; her favorite is Rosenblatt, who started writing about it before almost
everyone else did—1938.  Scholar/teacher
who attended to pedagogical scholarship. Reader response theory involved a
spectrum of fidelity to text, author. 
Author communicates and controls à ideal reader.  Text controls à implied reader.  Reader controls à interpretive
communities.  Rosenblatt’s scholarship
was practical, thus useful for judges: The reader is here and the text is there
and something happens in the space of the transaction, but reader can’t do just
anything with a text.  Some readers see
more cues and some see fewer; some see different cues and you can be trained to
see different ones.  The reader actively
engages with the text. Transaction controlsà reader creates, text
constrains.
 
Two modes for readers: aesthetic and efferent stances.  Not the aesthetic from Bleistein, but
phenomenological.  Aesthetic: a general
experience from interacting with the work. Its meanings for you unfold through
time. You might notice color, shape in a painting—a basic understanding.
Efferent: You’ve been asked to take some piece of information away with you—efferent
comes from Latin, meaning to bear something away. There’s a correct answer: how
many straight lines are in the picture?
 
Aesthetic can change; there’s no one correct reading (though
there are incorrect ones) and the reading may change over time.  Evolves; concerned w/what’s experienced
during the reading; varies based on reader’s knowledge and background.  Efferent: objective, public, informational,
functionalist, can proceed quickly b/c you can filter; in theory any reader can
get the full/same info if equipped with sufficient guidance.
 
Aesthetic to efferent is a switch of modes: experience v.
studying for the midterm.  Spectrum of
practices in ©; judges are better efferent readers than aesthetic, especially
when we’re discussing questions of scope, such as what’s protectable and what’s
in the public domain.  Efferent reading
should be the task for matters of law.  Juries
or factfinders can read aesthetically. 
Doesn’t mean decision will be uniform. 
 
Prescriptions: we ought to allow more expert evidence for
anything that’s efferent. To the extent we allow aesthetics in for look &
feel or holistic test, acknowledge what we’re doing and instruct juries in it.  Perhaps even use special verdicts for the
jury to identify what they see as similar. 
If juries could explain, judge could even read jury’s expressions and come
to some conclusion about that.  We need
to be clearer about what we’re asking juries to do—look at the instructions in Blurred Lines case, where they were
unclearly asked to do a job that they unsurprisingly did poorly.
 
Kevin Collins, Economically Defeasible Rights to Facilitate
Information Disclosure: The Hidden Wisdom of Pre-AWCPA Copyright
 
As an architect, I viewed © not to stop copying by
architects, but as a tool to prevent owners from screwing me over.  Prevented the building owners w/whom I worked
from appropriating my design without full payment.  Law prof default: copyright augments
incentives for expression by preventing copying by strangers.  Architect view: © facilitates bargained-for
disclosure, resolving Arrow’s information paradox, backing up a contractual
relationship rather than providing incentive to create through in rem
rights. 
 
Pre-AWCPA rights were quirky, economically defeasible
rights.  Proven difficult to justify
under standard incentive theory of ©. 
Hidden wisdom revealed in dealings with building owners.  If you recognize that architectural © played
a transactional role in backing up contracts, it makes good sense. 
 
Copyright maximalists complained that lack of protection
against copying buildings meant insufficient incentive.  Minimalist critique: weak copyright is good
for creativity and protection should be thin; but defeasible rights are
ill-conceived.  Why not protect both buildings
and drawings and equally through thin copyright?
 
Features of contracts that create information problems:
Standard design-bid-build project delivery: five phases; design information is
mostly generated early on, with schematic design, design development; then
construction documents, bid oversight, construction management.  Last phases: more management, coordination,
not creative information producer.  These
agreements usually defer most compensation to later phases of the contract.
Antitrust authorities went after AIA in a way that makes architects hesitant to
share fees info. Design development is a small component of fees received; most
is paid at the end. When offering services a la carte, architectural firms
incresae the cost of schematic design as a stand-alone service. Finally, for
many reasons, the contract is terminable at the convenience of the owner. This
allows owners to engage in opportunistic conduct: hire more expensive architect
to design, then fire her and hire a cheaper architect to oversee the grunt
work.
 
Thus, architects will hesitate to reveal design information
early in the process for fear of misappropriation, but owners want to know that
information before fully committing. 
Pre-AWCPA rights provided strong rights against appropriation by owners;
until the building is built, there is no built building from which to copy,
which can then be copied—but by then architect will have received all the
necessary fees.  So pre-AWCPA rights
provided the minimum rights necessary to get the incentives right.
 
Almost all post-AWCPA cases fall into two categories: (1)
architect v. owner, same as pre-AWCPA. 
(2) suits against strangers involving cookie-cutter, model-home
developers/architects, where expectation is that cost of design is to be
recouped over the sale of many copies. 
Architects for specialized projects aren’t using their AWCPA rights.  Future work: why not?  Is post-AWCPA copyright just very thin?
 
Rebecca Curtin, Contractual Origins of Authors’ Rights:
Looking for deals showing an idea of literary property not dependent on
possession of the actual manuscript. 
Earliest evidence of authors’ contracts is in Stationers’ Register
itself: “Entered for his copy”—might not even name the author, but would name
printer/bookseller who entered the copy. A handful of different entries: The
Treatise of Melancholy by Timothy Bright, Oct. 1586; Bright promised not to
meddle with the printing of the book until sold.  One of the ambiguities of the time was how
soon or whether authors would have the right to reissue a new, altered,
abridged, or revised version.  Stationers’
copyright was protection only against literal copying, so authors putatively
(others as well) could abridge or otherwise create new versions.  Here, the parties negotiated to prevent
competition from the most desirable source, Bright himself.  Although this isn’t about a strong
reversionary right, we see authors & publishers trying to work out the
problem of literary property on a contractual basis.
 
1607: a note that it’s agreed that this copy shall never
hereafter be printed again without the consent of Mr. Ford the author.  A retention of rights.  Piggybacking off of the ability of the
bookseller who entered the copy to vindicate those rights.  That right doesn’t depend on physical
possession of manuscript; leverages contract to control the work. There’s still
an ambiguity: whether Ford is free to deal with another bookseller.
 
Another memorandum: seller promises not to reprint w/o
author’s consent, and will surrender copy to him when he shall require it.  Parties have advanced to thinking about the “masters,”
as it were.  Intended it to be used as
evidence in court in the event of a dispute.
 
Contracts become more complex over time—Milton’s contract
for Paradise Lost called for contingent payments; he got more money if the
first run sold out, and more if a second/third run sold out.  Total potential: £20.  Also
included duty to account; emergence of author as commercial dealer.  1690s: contract b/t Tonson and Dryden
includes complex compensation provisions, both up front and investment on
Tonson’s part to allow Dryden to resell copies as part of his compensation.  Language isn’t very clear separating delivery
of manuscript from right to exclusively print; they don’t always make the
distinction.  Very clear language borrows
from vocabulary of property in 1709, just before Statute of Anne: “sole right
and title” for a complete copy, “and 50 copies for my own use.”
 
Authors were far more active in market as proprietors than
we’ve given them credit for.  Idea of
authors as owners can be shown in the transactions they undertook.
 
Zvi Rosen, Saurabh Vishnubhakat, Empirical View of Copyright
Registrations and Renewals under the 1909 Copyright Act
 
No statistics exist prior to the Copyright Act of 1870.  Until 1897, there are statistics by class and
year.  No records for 1897, when they
moved buildings.  1898 and beyond: annual
reports with basic statistical information. Catalog of copyright entries begins
publishing in 1891; published for Customs agents to enforce manufacturing
clause, but it was ineffective for that and people quickly used it for
registration info.  CCE expanded over
time to add more information; 1947: began including statistics on renewal.
 
1909 Act: need publication with notice, then registration
and deposit.  So, did authors register
shortly after publication under the 1909 Act? 
Until renewal became optional, 98% of renewals were registrations for 28
years earlier; almost everyone registered pretty much right away. Even in 2005,
it’s 76%.  So renewal data can be used to
determine renewal rates as percentage of registrations. 
 
Annual reports turn out to be only kind of helpful,
though.  Ratio of registrations in annual
reports to registrations in CCES, also same issue w/ renewals: a lot of
variations (it doesn’t match the calendar year).   Registration
#s: Books dip in Great Depression while music seems to go up.  Photos: spike and then drop, lower in 1977
than they are in 1900.  Other categories
have their own curves.  Mapping copyright
against economic panics: you can see for all of them more or less there’s a
subsequent dip in © registrations.
 
Percentage of all renewals by filing year: Renewals that
mention an initial registration after 1978 and renewal after publication—this would
skew the calculation of renewal right. 2005: a lot of people filed a
registration and a renewal in the same year in order to be timely.  [I would guess for termination of transfer
reasons.]  Renewal rate for all registrations
1919-present.  1962: extension of renewal
term; 1978; 1992 becomes automatic and renewals decline.  47-year term: renewal rate gets substantially
higher and stays that way.  Renewal rate
for 1947-1961: 12%; goes up to 15% until 1977, when term was being consistently
extended; then went up to 20%. Very little variance year by year within
periods.  The one from 2005 is unusual
because it became increasingly known in business that filing was unnecessary.

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WIPIP Session 4: Design

Posted on February 20, 2016 by rtushnet
Session 4: IP, Design, User Experience
 
Sarah Burstein, Reviving Ornamentality: Fed. Cir. killed
ornamentality in design; right now it means nothing other than Morton-Norwich nonfunctionality. She
thinks we should bring it back.  Two
aspects: (1) “matter of concern” in normal and intended use; (2) if you can’t
see it we don’t care.  But “normal and
intended use” means everything from manufacture to disposal; if you can see it
when it breaks, then it’s within the possible scope of design patent.  If you can draft a patent application, you
won’t run up against an ornamentality problem.
 
First mistake: treating ornamentality as opposite of
functionality. Some designs can be both at the same time.  Fed. Cir. says: it’s not primarily functional
unless there are no other alternatives; this makes everything ornamental b/c
there’s almost always an alternative. 
Only recent exception: a key that fit into a specific lock; and even
then there was a dissent.
 
This is a problem b/c design laws should incentivize the
creation of new and creative aesthetic product designs.  Design patents are now protecting useful
innovations in design patent clothing/petty patents, against Congressional
design.
 
Before 1982, many courts said (1) is design dictated by utilitarian
concerns? (2) additional aesthetic requirement—some visual impact.  Don’t think of ornamentality as mere
nonfunctionality doctrine. Ask whether the design makes a material aesthetic
contribution to the product, providing a reason for choosing one over the
other?  How do we test that?  Well, we can measure it indirectly. Ask of
producer: was this design driven by utilitarian concerns?  Ask of consumer/user: does the appearance of
this type of design matter to a substantial portion of actual users?
 
Why focus on the visual? 
This is the only way that design patents make sense in our IP
landscape.  It’s the hole they were
intended to and can in fact fill: protecting useful articles with some visual
content that matters. Otherwise they’re just petty patents or copyrights.  If consumers don’t care (e.g., shape of USB
connector), then it’s wasted effort from design perspective/anticompetitive
from any other perspective.
 
Also addresses problems of partial claiming.  Plus the “Rabbit Strategy,” where you use
continuations to get competitors on the hook—you take a parent application and
then create child applications with subparts of the original design.  In my world, you’d have to prove consumers
cared.  Spare parts, too.  You might say that people buy bumpers b/c
they want the bumper to look like it did before the accident, but that’s not
the kind of aesthetic effect that should matter.
 
Would also make our crazy damages provision make more sense,
when you get total profits no matter what—if the design is material to the
consumer, that is closer to tort principles.
 
Mark McKenna: Who counts as a user?  You see TM use intermediate purchasers all the
time.  Materiality: you mean “is the
aesthetic aspect material”?  That raises
an important timing issue. As of the date of application? If it’s ever
true?  If successful, people will likely
come to appreciate the design and it will matter to them.
 
A: true, especially for primary products—the initiator of
the smartphone. But that may be justified.
 
McKenna: especially given evidence that familiarity breeds
likeability.
 
A: but that is ok: we should create incentives for people to
create nice products even when they aren’t typically bought for aesthetic
reasons.
 
Lunney: Congress didn’t intend this isn’t a good enough
justification—think more about broader social costs.
 
A: Agree—Congress said so for some pretty good reasons.  Mutant patents = big social problem. 
 
Farley: Steve Jobs even wanted the circuit board to be
beautiful.
 
A: I would focus on the user.
 
Zahr Said: presumptions anywhere?
 
A: We should just go test it.  Surveys; PTO would be subject to lower
standards as with TM. 
 
Peter Lee, The Law of Look and Feel: A comprehensive
examination of the regulation of consumers’ aesthetic experiences.  Emergent law of look and feel: exclusive
rights in design across ©, TM, utility patent, design patent.  Doctrines selectively mitigate exclusive
rights in response to certain factors. 
 
Look & feel of the 1980s, as shown by Pac-Man (really
Ms. Pac-Man).  Look and feel in Louboutin
heels; Abercrombie & Fitch clothes with hot guys and their abs—an A&F
store is a total sensory experience, including music and scent.  Exemplar of look & feel in modern
economy: the iPhone.  Valued in
significant part for how it feels in your hand. 
Marketers say: look and feel of products will determine their success;
in a crowded market place, aesthetics is often the only way to stand out.  Look and feel can encompass the
zeitgeist.  A&F evokes the early
2000s; iPhone = right now.
 
Law of look & feel. 
©: 9th Circuit in Roth Greeting Cards protected “total
concept and feel.”  Blurred Lines case:
jury found infringement based on sound & feel of the late 70s.  Limitations in ©: idea/expression; merger;
scenes a faire; useful articles.  Apple
Computer v. Microsoft: copying the GUI; the court invoked limiting doctrines of
merger & scenes a faire, including consumer expectations re: overlapping
windows.
 
TM: Taco Cabana
protects look & feel. Limiting doctrines: distinctiveness, functionality,
and likely confusion.  Product design
trade dress can’t be inherently distinctive. 
Aesthetic functionality: A&F lost claim against American Eagle for
general look of its stores.
 
Utility patents: Apple’s patents on two-finger pinch to zoom
and on slide to unlock. These patents contribute to look & feel:
streamlined aesthetic/user interface. 
Limitations: functionality; constraints on patentable subject matter;
apportionment of damages.
 
Design patents: here though there’s a distressing lack of
limitations.  Functionality is construed
narrowly; consumer deception standard for infringement isn’t sensitive to
context; expansive damages.  Greater
standardization is justified to make design patent fit better with the other IP
forms.
 
Linford: limits on © don’t seem to be that good.  We do abstraction, filtration, comparison
when we’re worried about functionality; total look and feel seems to be courts
generally extending broad protection. If the argument is design patent needs
more than what it has, I’m with you there, but it’s surprising to think that
copyright might be a good model.
 
A: Not saying that © is perfect; impressionistic view is
problematic in itself, but other doctrines help cabin it in ©, not design
patent.
 
Q: Zeitgeist—if it’s true that one producer was the first to
create the zeitgeist, wouldn’t limited term take care of that with obviousness
afterwards?
 
A: it could, but that revolves around the question of
timing. Something can achieve the status of a standard quite quickly, before 14
years expires.
 
Said: Roth never
really meant to establish a test.  Look
& feel cases seem to involve courts struggling; treating look & feel as
an element of a work along with plot, as opposed to a lens through which to
view the work.  Treating
errors/outcome-driven cases as a unifying principle begs the question.  She’d rather say: there are these cases, and
what about the cases drove the court to use total concept & feel instead of
something else—scope, filtration, etc.
 
Farley: also concerned you’re reifying look & feel,
which is a fictitious concept—case involving the artist Tarkay—attempt to
protect his style was rejected, and she’s not sure how to distinguish look
& feel from style.
 
A: we don’t want to focus on the words look & feel. What
we argue is that there’s a law of look & feel that extends past the use of
the words (to substantial similarity). 
It can’t be an analytic grab bag. 
Other doctrines that have never explicitly been associated with look
& feel are part of the broader law of look & feel.
 
Mark McKenna & Jeanne Fromer, Claiming in Litigation/Claiming
Design: How different systems of IP conceive of claiming. Louboutin: how does
the court understand the nature of the plaintiff’s claim as a kind of
property.  Yankee Candle: P attempts to
claim everything you might think about when you think about this store.  Recent TM application: all of the lines on
the image are dotted out, meaning they’re claiming no shape, just a color—the
color of something.  TM doesn’t have a
methodology for claiming; thinks about problem where law encounters it in
particular cases.  Recent design patents:
Claim limited to one curve on a gear, everything else dotted out.  What explains the different methodologies for
claiming, especially given increasingly overlapping use of those systems?  Design patent system forces you to show up at
PTO with a claim in pictures; you have some definitive ex ante claim against
which you can compare anything later on. TM says: you don’t have to do anything
ahead of time if you don’t want to (though we might want to change that rule)—most
trade dress cases involve unregistered trade dress, and even when there is a
registration, doesn’t seem to have much bearing on court’s infringement
analysis (Louboutin being the outlier).
 
What TM law does so differently: articulate your claim in
litigation, rather than in ex ante document. 
Issues of public notice.  Not
specific to design: happens in copyright, trade secret—claiming in litigation
is an issue in many situations.  Attacking the problem as a claiming in
litigation problem suggests that design is one instance of a larger
problem.  In TM we allow it because we’re
concerned about how it works in the market, not in the abstract.  Product designs change over time; makes more
sense to consider it at time of litigation. 
Costs of claiming in litigation: public notice; courts seem
uncomfortable w/lack of notice/lack of ability to pin down scope.  So they sometimes say “we don’t know what you’re
claiming, so it’s out.”  Fair Wind
Sailing in the 3d Circuit: P seems to be claiming a way of doing business,
using a certain size of boat and using customer testimonials—3d Circuit says “no
mark” but they don’t have a tool like distinctiveness or functionality to do
this work.
 
Trade dress cases: courts have tried to say: you need to
articulate the trade dress in words. The problem with that rule, though it’s
the right instinct, is that courts allow people to articulate the claim in
incredibly varying levels of generality: every Mexican restaurant you’ve ever
seen, or exacting description. Courts are thinking about infringement/managing
scope, and backing into a claim definition. Design patent: pictures are used,
but deep & persistent ambivalence about need to describe pictures in words—b/c
pictures are often not very illuminating (no pun intended). Maybe they aren’t
so different—the mostly dotted image is a trick, leaving the design patent
incredibly general and vague by claiming only a very small part of the design.  Relates to partial claiming.
 
Are there good reasons for claiming methodologies
differing?  You might say that TM v.
utility patent: it’s more important for utility patents to be clear b/c stakes
are higher. But that doesn’t work well for design patent. Iinfringement
standards are pretty similar b/t trade dress and design patent; obviousness
criteria are mostly nonexistent for design patent, so design patent claims look
like trade dress claims.  Both sides
ought to think about more specific rules to apply across cases.
 
Lunney: exemplar systems worked well for old-style TM (where
double identity was required to infringe) and © (pure copying) but never worked
for utility patent.
 
Fromer: we want people to have to think through an
invention; claiming forces you to a certain level of
generality/specificity.  Is there
something similar going on in this context? Do we want to force people to think
about their rights early on for TM/design patent.  Not as obvious.
 
Lunney: what would a written claim for Star Wars look like?
 
McKenna: reason why TM lacks methodology for claiming—historically,
most of this would have been in unfair competition, so you didn’t need to worry
too much about the front end.
 
Aaron Perzanowski, The “Buy Now” Lie: “Buy now” on Amazon
for Kindle books; the page for Orwell’s 1984
looks the same for Kindle version as for the paperback.  But Amazon can pull back and destroy 1984 for the Kindle, not for the
paperback. One claim: the market has spoken and people don’t value possession
rights for ebooks as much as they do for physical books. But that assumes
consumers understand that “buy now” doesn’t mean “buy now.”  Commerce Department White Paper: MPAA/Disney
said, of course consumers understand they’re buying a license.  But I figured it was worth empirically
testing.  Fake online retail portal:
simplified layout like Amazon’s.  Tested “buy
now” button. 1300 consumers representative of the US population in sex, income,
age.  Showed a number of variations on
this retail page.  Tested books, movies,
music.
 
What do consumers think they get?  Switched to “license now.”  What do consumers think when they see
that?  Switched to just a price + a
notice about what you can and can’t do: you can download to approved devices,
read on approved devices, keep subject to our terms of use; you can’t resell,
lend it, transfer it, give it away, or read on approved devices.  (Out of 1300 people, 14 clicked on terms of
use.)
 
Asked them: after they’d clicked, can you lend it to a
friend? Leave it in your will?  Resell
it? Keep it as long as you want?
 
People who believe they “own” what they buy using “buy now”:
high percentage; also high percentage believe they can keep forever & use
on device of choice (both of these in the 80-90% range).  Believe they can lend ebooks, mp3s, and
digital movies: (1/2 or less); lend as gifts (similar); leave in wills (1/3 or
less); resell it (17% or less).  Significant
number of consumers get these questions wrong. 
All of these percentages, w/possible exception of resale, are large
enough to establish falsity/deception.
 
Apple is replacing albums stored in the cloud; it can just
disappear.
 
Switch to “license now”—while belief in “ownership” goes
down, other things go weird but don’t change much and people still believe they
can keep forever & use on device of choice in the same %ages; more people believe you can resell
digital movies when you say “license now.”
 
The tested short notice caused a pretty big drop, especially
for lending, gifting, reselling—with the weird exception of digital movies.
 
Results: there is miscommunication happening.  There is a reasonably effective
intervention.  He isn’t a user interface
designer, and he spent 10-15 minutes on the notice, and yet it had a pretty
substantial impact.
 
Also asked respondents questions about materiality.  Maybe their wrongness doesn’t matter.  Digital v. hardcover: people’s ability to
lend and resell matters to consumers in stated preference, and there’s almost
no difference in preference b/t physical and digital version. Indeed, they care
more about reselling ebooks than hardcovers, if you believe his numbers (which
there’s no reason not to).
 
Also asked: if you can’t get the rights you want, would you
be more likely to download illegally or stream it from a subscription
service?  About 1/3 said yes to illegal
download; from 36-74% said streaming would also be more appealing.  WTP: $3-4 range for the rights.
 
Dep’t of Commerce White Paper recognizes the problem:
consumers don’t understand what they’re getting.  Doesn’t cite any evidence, but now there is
evidence.
 
Haven’t broken down results by age, education level,
behaviors of lending/reselling.
 
RT: Richard Craswell has good work on how you interpret
different results from different disclosures.
 
A: doesn’t know that new options will necessarily help
consumers.  [I think we were
saying/hearing slightly different things, but Craswell would probably agree
with this point.  Craswell has written
about when it makes sense to require rewriting a claim, if some people don’t
get information/lose value from the increased cognitive burden while others
benefit from enhanced information.]
 
McKenna: Do people think they own it but can’t lend it?  Do people have any idea what ownership means?
[Note that it’s possible to have a physical thing you own but can’t rent—that’s
what airBNB is fighting about.]
 
A: 40% say they don’t believe they’re allowed to lend their
physical books to other people.  There is
a big difference b/t physical and digital, but physical is interesting in its
own right.

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WIPIP Session 3: Trademark again

Posted on February 20, 2016 by rtushnet
Session 3 Trademark 2
 
Irene Calboli & Dan Hunter, Trademark Proliferation: Lots
of marks—Louboutin soles; motion of Lamborghini doors; etc.  Why so many? 
Very broad definition of what can be protected as a mark +
ill-interpreted concept of distinctiveness. 
TRIPS + Lanham Act both define marks broadly—anything capable of
distinguishing goods/services. TPP is even broader in definition. 
 
Spectrum of distinctiveness developed by Judge Friendly:
highest protection for fanciful marks/new symbols.  Reality: fictional distinctions between
descriptive/suggestive/arbitrary are ways to define ex ante an ability to
distinguish, not an actual distinctiveness. [Nicely put.]  We are betting that a fanciful mark will be a
better distinctive element.  Then we say
that anything distinctive can be a mark. 
Our project: differentiate between the ability to distinguish and
distinctiveness.  Every possible
aesthetic element of a product could in theory distinguish a product’s source—but
do we need that? Our answer: no.  TM law
isn’t supposed to protect aesthetic elements.

Go back to the drawing table: what is distinctiveness?  Stronger emphasis on TM use, or secondary
meaning?  Criterion of separability b/t
mark and product features? 
 
Marks have to be distinctive; not every sign that is
distinctive has to be a mark. 
 
Christine Haight Farley: Why is the spectrum of
distinctiveness the problem?  Isn’t it
just in need of tweaking?  Friendly’s
categorizations of word marks just don’t work for nontraditional marks.
 
A: we are starting to hear language of “fanciful” outside
the word mark context.
 
RT: [Of course if the other papers are right that names are
often part of product features, that gets harder.] [I like the concept of
limping marks for this goal of limiting TMs—Mark McKenna pointed out that Kit
Kat shape in Europe is an example of this issue—although it could in theory be
distinctive, in practice it’s always accompanied by other marks that do a
better job of distinguishing the goods.] [Artistic distinctiveness: Rock &
Roll Hall of Fame/ETW v. Jireh concepts, applied more broadly, do what the
paper is seeking to have done.]
 
A: Artistic creativity goes into a lot of logos.  Should TM be interested in branding at all?  As long as you’re allowed to use your word,
even if not your logo, you’re distinguishing yourself:
 
Jake Linford: assume fanciful marks are more likely to
signify source.  Doesn’t it save
resources to presume distinctiveness? 
Other rules are expensive and favor players with most money.  Not sure he believes this himself, but needs
answer.
 
A: Problem is from cluttering—we’re running out of
marks.  So it should be more expensive!
Unfair competition/passing off are options instead.
 
Betsy Rosenblatt: proliferation of TM protection for
arguably functional things, maybe they’re actually source identifying for the
population.  Red sole of Louboutins is
absolutely a source identifier and pretty. 
Adding secondary meaning as a stronger requirement wouldn’t solve that
problem. 
 
A: combine it with aesthetic functionality. 
 
Christine Haight Farley, The Impact of New gTLDs on
Trademark Rights in Domain Names: rise in domain name disputes generally; this
will increase disputes. ICANN increased new gTLDs to increase space for
competition.  Idea was: glut in dot-com
space.  Nearly 2000 applications; Google
applied for a huge #; popular applications were for generic words. How will
second-level domain name disputes? Nothing in all the wrangling which dealt with
second-level domain names & how they might differ in new gTLDs.  This is the biggest moment since .com was
introduced 26 years ago; expands number by 5000%; there was no study beforehand
of how it was working.
 
UDRP view: we ignore what follows the dot.  Mercedes v. mercedes.com = the same.
Neimancarcass.com = not confusingly similar, though some “sucks” domain names
have been found confusingly similar in UDRP. 
Gulp v. Gulpy: why isn’t it confusingly similar under TM law? B/c we don’t
do a visual comparison in UDRP cases, and we don’t consider context.  It’s impossible to map TM law onto UDRP, and
we’ve done a really sloppy law.  UDRP law
comes from TM law, but not exactly. 
UDRP: universal; no specific relevant user; focused on registrant and
its intent; supposed to be for easy cases.
 
First case in new gTLD case: Canyon (trademark for bike) v.
canyon.bike.  Panel in this case said
that the post-dot matter enhanced the similarity, rather than ignoring it.  So: what about
mercedes.spanishgirlsname? 
Ferrari.red?  “Red” is network in
Spanish; could be a network of Ferrari owners using that space.  Walmart.lgbt?
 
Changed over 15 years—strong assertion of TM owners’ rights
in the policy. New mechanisms: TM Clearinghouse; Uniform Rapid Suspension—very property
focused—allowed TM owners to have rights already in advance.  Madonna got first shot at registering
madonna.church; Apple got first shot at apple.farm.  Also had legal rights objections to new TLDs:
DirecTV challenged .direct, and DirecTV won on confusing similarity (one-letter
difference).
 
It is true that the other elements of the UDRP test can deal
with many of the problems. But if this is a giveaway to the TM owner, and it’s
already the TM owner’s property, then that will cloud interpretation of the
remaining prongs (legitimate use, bad faith). 
Amazon.books should come out differently from Amazon.river.
 
All decided TLD cases: three categories of decision.  (1) post-dot info may enhance confusion:
hsbc.mortgage; TM relates to the goods following the dot. (2) Traditional rule:
gTLD disregarded, so lafitness.email, porsche.help, lamborghini.black. (3)
Troubling cases: gTLD doesn’t distinguish; panel has found that if info doesn’t
steer away from confusion, it’s
confusing: volkswagen.guru, marlboro.reviews, porsche.social.  But why should VW own .guru name?  Especially since we don’t know what these
spaces will become.  Example: .horse,
which turns out to be a space with a lot of weird content, such as spoon.horse,
walmart.horse, taylorswift.horse, etc.—playful.
 
Jake Linford: in a world with good search, does it matter?
Are any of these not famous marks?  Maybe
this is really anti-dilution protection in the gTLD space.
 
A: useful questions—remains to be seen how search engines
will work in this new space. Even if it’s true that search engines make TLDs
irrelevant, the claim was that there was a need for gTLDs.  Also, lots of TMs you’ve never heard of win
their cases.
 
Won Bok Lee, Confusion in the Eye of the Beholder:
Likelihood of Confusion in Trade Dress for Prescription Drugs.  Pharmacists/doctors are expected to exercise
a higher degree of care. But the health implications of confusion may be very
severe.  Would that logic work the same
way in product design?  No, b/c doctors
and pharmacists rarely rely on appearance of drugs, but on name/label—under US
law, similar-looking drugs wouldn’t be found confusing.
 
Korean case: found that patients shouldn’t be considered
consumers for product design.  Viagra v.
PalPal.  Viagra lost: secondary meaning
and nonfunctionality accepted; but consumer can’t get confused because these
are prescription medications and the pharmacist fulfills the order. The
appearance of the drug doesn’t matter.
 
Japanese case: Selbex, anti-ulcer drug, v. generic.  Unfair competition claim.  IP high court found capsule color/blister
packaging nondistinctive; physicians and pharmacists exercise higher degree of
care and won’t be confused.  The law
should be construed so that the physician/pharmacist becomes the primary
consumer.
 
East/West divide: who’s wrong about the right consumer?  He leans to the Eastern perspective as more
reflective of realities.  You hand the
prescription to the pharmacist; purchase is made before you could be confused.
 
If patient isn’t considered, then do we discount the harm to
the patient for having switches? 
Difference in appearance b/t generic and branded can have negative
effects on patients.  Do we empower
pharmacists to palm off?  No, secondary
liability/liability for the pharmacist is still available.  Result: better adherence to generic; no
decrease in placebo effect; no confusion about what drug to take.  These negative effects may be greater in the
US where DTC advertising is permitted.
 
RT: [See also the papers in the Xalatan/Travatan case,
Pharmacia v. Alcon; mostly about the name but a bit about trade dress and
interaction with FDA requirements. Legal US DTC ads as key differences in secondary
meaning/who is the consumer?—little purple pill; not legal in most countries.  Consumers drive medication choices in the US—70%
of those who ask for a specific drug get it. 
That makes it possible to argue that consumers should be considered as
target consumers.]
 
Q: consider the learned intermediary doctrine from
torts.  Does Korea have automatic
substitution laws? [Answer: for some drugs.] That seems like a complicating
factor.
 
McKenna: there are other things that can avoid passing off,
like imprinting a name, that don’t involve size, shape or color.
 
Jake Linford, Are Trademarks Ever Fanciful?: Idea is that
fanciful marks have no lexical meaning, don’t point to product, therefore must
point to source.  A rose by any other
name … No inherent relationship between word and thing it represents.  If linguistic arbitrariness were really
strong, that would make sense—but that’s not the world we live in. The way
sounds communicate meaning: independent of lexical meaning, sounds convey
meaning.  Furniture called Mil and Mal:
which is bigger?  80-90% of consumers
will say Mal is bigger, and marketers understand this.  Dark beer: Gomel does better than Gimel.  Clever pro namers can hide some
descriptiveness in these marks w/o lexical, dictionary meaning.  Given sound symbolism, we should
recalibrate.  Tang (below) wants
aesthetic functionality; he thinks that’s too strong.  (1) Assumption that sound similarity is
evidence of bad faith should go where the sound similarity goes to product
characteristics.  (2) Think more
wholesale about sight/sound/meaning analysis—courts tend to say that we weigh
similarities more heavily than differences; if those have sound symbolism
packed into them, we shouldn’t do that. (3) could even act at the validity
stage, where sound symbolism might justify requiring acquired distinctiveness.
Maybe we should abandon Abercrombie,
despite the enforcement costs that arise from it.  Not all fanciful marks may have sound
symbolism.
 
Jeanne Fromer: Why not go further? Arbitrary marks aren’t
arbitrary. Once you put apple on a computer, people will make links (Newton’s
apple) which help the TM owner.  Is there
something particular about fanciful marks?
 
A: could apply same logic to arbitrary/suggestive; the
effect is worst for fanciful marks b/c they supposedly have no meaning other
than the TM meaning.
 
McKenna: doing this at the confusion stage makes more sense
from enforcement costs perspective. 
These considerations may contribute to descriptive fair use.  What kind of evidence would you want? And why
aren’t defendants doing it?
 
A: you have to find an expert, pay them, get possibly
skeptical courts to accept it.  Risk of a
big waste.
 
McKenna: can you imagine this argument changing particular
cases?
 
A: tends to pop up in drug cases, Xalatan/Travatan.  Easier to see in medical cases.  More a different approach to how we evaluate
strength. 
 
Farley: Color symbolism exists too.  Scarcity problem: we are more likely to see
scarcity outside of word marks, but you’re showing that some sounds are better
than others.
 
A: Breyer might be right—colors are sometimes symbolic and
sometimes not.
 
Xiyin Tang, A Phonaesthetic Theory of Trademark
Functionality:  Functionality applied to
product design; want to turn the spotlight back to word marks.  Doesn’t mean functional in the sense of “open
here” or “fragile.”  More in the
aesthetic sense of a heart-shaped candy box. Study the meaning of phonemes.  Phrases can also have aesthetic meaning, not
just words.  Similar evidentiary basis as
previous paper; broader claims.  TM claim
by university over chant “I believe we will win.”  Rolls well off the tongue, can be used to
speed up as it’s chanted.  Ornamentality?  But what if it’s on hang tags—not used in
ornamental position.  Still can argue
that it’s an important chant because of its sonic qualities, and shouldn’t be
monopolized.
 
Q: Familiarity as an independent issue?  [Familiar terms are more popular.]  Peru sued b/c it wasn’t allowed to label its
pilchards sardines in the EU, even though consumers weren’t familiar with
pilchards.  Sardines sounds much nicer
than pilchard.
 
A: trying to find independent reason that people would like
the terms.  May call for expert
testimony.

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IPSC Session 2: Trademark 1

Posted on February 19, 2016 by rtushnet
Trademark 1
 
Paul Heald, Testing Theories of Tarnishment in Trademark and
Copyright Law
 
Tarnishment should be treated like false advertising: you
should have to prove some (likely) damage to your TM to win, rather than
presumptions.  Tarnishment is a
psychological/cognitive theory. Appears similarly in © literature, mostly in
policy analysis—Landes & Posner—if we had an X-rated
Mickey Mouse movie, the Mouse would be destroyed.  (As opposed to the super
racist versions.)  Theory: owners “shepherd”
their marks/works better.  Theory is that
sexual association is particularly bad. 
ATM: Cookie Jar—strip club named Cookie Jar opens up across the street;
Restatement thinks this is clearest case for tarnishment, such that no evidence
is needed for relief.
 
Studies: lots of empirical work in marketing literature on
sex; increased memory for ads with sex, but decreased memory for brand. Lots of
gender effects.  Strong evidence of
congruence: sex in ads works better when product has something to do with sex—perfume,
jeans, hotel rooms v. iron skillets.
 
Experiment: show “tarnishing” version of well known
work.  Showing people two movies—poster and
short description—and ask which movie will be most successful at the box
office.  Titanic v. Good Will
Hunting.  Subjects do this for 20 filler
movie pairs and 10 target pairs. Porn examples, e.g., Bitanic, You’ve Got
Shemale.  See if treatment group exposed
to these versions ranked the originals any lower.  Theory’s prediction: Bitanic would diminish
preference for Titanic.  Instead, there
was a positive effect; overall no statistically significant diminishment for
any, and 5 of them showed statistically significant enhancement.  No significant differences between women and
men; a little, not statistically significant difference b/t conservative and
liberals.  Libertines do show a big
difference; Mechanical Turk has very few puritans.  So we tried to find a good distribution of really
conservative and really liberal people, and test sequels—damage to branding.  For sequels, there was no overall enhancement
effect or negative effect; some went down a little and some went up.  And again, no difference between gender. For
most conservative viewers: statistically significant negative effect—for them,
the presumption that sex causes tarnishment might apply. 
 
Implications: no evidence of tarnishment overall; would we
want to protect one corner of the population? 
Research calls evidentiary presumptions into question; rationales for
copyright term extension; parody/satire distinction in fair use cases; market
harm calculation in fair use cases.  We
have previously shown tarnishment in other ways: significant positive
correlation between quality of audiobook recording and perceived value of underlying
book, but no correlation between reader status or legal status and value.
 
Mark McKenna: are things getting mashed together in using
movie posters? Could there be something importantly different in creative works
v. brands attached to goods. One plausible explanation for the audiobooks is
that people think that the proprietor of the book is responsible for the
recording.  Why choose to use movie
posters rather than more conventional brands?
 
A: we did want to get at both, and the TM and © literature
both describes the same claimed harm and the same claimed mechanisms, so we
wanted to see if it would work.
 
Lunney: Why do TM owners sue over tarnishment then?  Every business has puritanical consumers, so
maybe they’re concerned about those consumers.
 
A: Third grade, intuitive mentality: this is mine and you
have no right to do this.  True, we may want
to protect a narrow proportion if the harm caused is significant, but we need
to balance that with the harm caused by absence of ability to tarnish.  Mickey Mouse porn: might benefit a slice of
the population even as it harms another slice.
 
Jessica Kiser, Market Responsiveness to Trademark Litigation
 
1997 article by Bhagat and Umesh in the Journal of Market
Focused Management: sample of approx. 60 cases mentioned in WSJ.  Focused on econometrics—stock prices when
sued, and when resolved.  Findings: TMs
are valuable; litigation is expensive; no broader context.  She decided to redo this to see if there was
a reason for TM overenforcement—do investors like your filing TM suits?  If there was a negative effect, which
traditionally comes from commercial litigation in other contexts—both parties’
stock prices go down—it shows irrational overenforcement. Began w/Ken Port’s
Mitchell Study on TM Litigation—2972 cases; adding stock prices to it; pulling
out cases w/o a publicly traded party. 
Open questions about how else to thin the herd.  Event study methodology: see what stock
prices do in relation to notice of litigation. 
Helps you figure out if the brand, not just the TM, is harmed by the
litigation.
 
Define the event and notice period; measure stock return
during that period; estimate baseline w/out event; compute abnormal return;
measure statistical/economic significance. 
 
Previous studies: 1995 study shows significant effect of
major endorsement deals; 2011 study showed that announcements about health of
Steve Jobs affected Apple stock prices.
 
How do you figure out what’s public?  Previous study used WSJ/NYT coverage, but
maybe that’s not the right measure now. 
Maybe we should look at Westlaw/LEXIS. 
Pre-and post-internet divide? 
When is the test window?  Any
effect of anticipation from C&D letters? Large company v. small company;
established v. newer company.
 
Q: Other related litigation studies: Alan Mathios & Mark
Plummer, The Regulation of Advertising by the FTC: Capital Market Effects, 12
RES. L. & ECON. 77 (1989); Sam Peltzman, The Effects of FTC Advertising
Regulation, 24 J.L & ECON. 403, 419 (1981).
 
Q: when does the fact that the alleged infringement is
occuring become known? That might be another relevant event. 
 
Q: Type of product? Some industries may not care.  Some of the most aggressive litigants, like
Louis Vuitton, are nonpublic.
 
Signe Naeve, User Generated Crafts in the Sports Industry
 
All the stuff people make as fans: knitted scarves,
etc.  Fan fiction/fair use in copyright
is different in trademark where people make and often sell stuff.  Working thesis: Met with counsel for sports
teams; came in from fan perspective wanting to argue for some permissive uses.  Now thinks this is different from fan
fiction; inherent tensions w/in TM law that lead TM owners to police
brands.  User-generated crafts raise
unique issues b/c, while TM owners can turn a blind eye to personal use, they
may need to take action to protect reputation. 
TM owners could sponsor contests, partner w/fans, license them.  Risk of losing the right creates need to
police.

Difference b/t kinds of sports—Mariners said “this is our TM, and we’re afraid
of tarnishment.”  Sounders: “there’s a
fan culture of supporters that’s different—we look for opportunities to partner
w/fans.”  Sounders have “posters by the
people” contests.  Implied or direct
licenses are even possible. 
Noncommercial fair use as a potential safety valve; only policing when
there’s broad distribution or where it competes with an exclusive license; you
could even donate older TM versions to public domain.
 
Q: Materiality? 
Matthew Kugler’s Measuring
Sponsorship Materiality.  Counsel may
be strategically overstating risks of naked licensing: PTO decisions on Bucky
Badger mascot, UNC—uncontrolled since 1792, but university was still able to
claim TM rights.  If the risk of losing
the right is real, then maybe the problem is the risk, not the fans.
 
Heald: Harvard’s TM counsel—not afraid of people’s
perception of licensing.  Harvard says
whether it licenses or not is proprietary information—it will not admit whether
it licenses “Harvard Mercedes.”  Mariners
may be overstating their fears.  (That Harvard
practice could have really interesting consequences in litigation.)
 
Irene Calboli: There is a risk of naked licensing in the US,
but the law is still very confusing. Natural for TM owners to err on side of
caution.  If we had a system in which the
registration conferred property rights, paradoxically, that could allow TM
owners to pick and choose more like patent/© owners.  Struggle is extent to which fan use can cause
a real issue of tarnishment/loss of control. 
Real world has merchandising; we can make a difference in cabining that
and telling owners you don’t need to enforce so aggressively.
 
Rebecca Tushnet, The First Amendment Walks into a Bar:
Trademark Registration and Free Speech
 
I’m going to talk
fast so you have maximum time to yell at me. 
My paper analyzes the First Amendment arguments against §2(a)’s
disparagement bar with reference to the consequences of any invalidation on the
rest of the trademark statute. 
Ultimately, given the differences—or lack thereof—between disparagement
and other bars in the statute, I conclude that §2(a) is generally constitutional
as a government determination about what speech it is willing to approve, if
not endorse.  If the Supreme Court
disagrees, it will face a difficult job distinguishing other aspects of
trademark law.  And these difficulties
signal a greater problem: the Court has lost touch with the reasons that some
content-based distinctions might deserve special scrutiny. 
 
Arguments I’m
playing with that haven’t yet made it into the paper: Consider this argument:
disparagement + false connection taken together is viewpoint neutral ban on use
of the identity of a person or group of which one is not a part: if it
disparages, probably doesn’t cause a false connection; if it causes a false
connection, probably doesn’t disparage, but together they make up one unified
content-based but not viewpoint-based prohibition on taking advantage of
another entity’s reputation in a mark [except that doesn’t explain Tam—but
perhaps that’s not necessary if the overall scheme is content neutral].
 
Vagueness objection:
the standard for disparagement is vague and hard to apply with predictability.
This is perfectly true, as the cases discussed by the majority indicate—but
it’s also a problem with the rest of the bars! 
If vagueness is a constitutional flaw in disparagement, consider if any
of the other bars—or even the “use as a mark” precedents requiring trademark
use instead of ornamental use for registration—they are no less vague.
 
There are over a
hundred thousand applications each year. 
It would be actively astonishing if even the consistency available in
obscenity cases were achievable in this flood. 
In fact, the inherent inconsistency in a merits-based system is one
reason why the Court has granted government flexibility in making content-based
decisions: many systems of government grants couldn’t survive if held to strict
First Amendment consistency in every case, and the costs of not having
trademark registration are greater than the costs of not having lots of
obscenity prosecutions.  This is what it
means to have a regulatory state, and it’s another reason why, if the state is
going to maintain a trademark system granting the benefits of registration
after substantive examination, it needs some flexibility and tolerance
inconsistent with traditional strict scrutiny.
 
Q: why isn’t disparagement viewpoint-based?  Very surprised if even before Tam RACISTS
SUCK would get rejected, precisely because we distinguish b/t things
disparaging to a discrete and insular minority and things not—lots of marks say
bad things about people.  [Law treats
only certain groups as if they can’t take care of themselves]; actual practice
discriminates b/t use of racist terminology by members of racial minorities:
dykes on bikes treats the content differently b/c of who the speaker is and
that seems an indication.
 
RT: [relevance of individualized determinations—Dykes on
Bikes had a different record about what the targeted group would think when
they saw the mark.]  The bar itself doesn’t
care what your viewpoint is; it rejects disparaging terms in context of their
use.  Also, dispute the paternalism
point: one way people take care of themselves is through the political process.
Antidiscrimination laws generally are ways to prevent some people from harming
others.
 
Sheff: nature of gov’t interest in different bars.  False consumer beliefs as to facts they encounter
is different in salience than interest in preventing gov’t support of
particular kinds of content  which is
different in interest in free competition. 
[treaty compliance in provisions on wines and spirits; if we can have
multiple interests implemented in §2, preventing gov’t endorsement of
disparagement is one of them]
 
Farley: if it were all about false association you wouldn’t
need the other bars besides false association. 
Very clear that viewpoint of speaker doesn’t matter, but the current
test makes the viewpoint of the listener matter.
 
Q: but the other bars are about levels of generality.
 
RT: yes, as predictions that, say, use of a flag will be
confusing in some relevant sense—but if we apply 1A scrutiny, those predictions
seem highly vulnerable.  RE/MAX case
makes that clear: (1) nobody knew the mark was the flag of the Netherlands, so
couldn’t be confused; (2) though the registration was for the flag, in practice
it always had the balloon in front of the flag, so nobody could be confused
even if they would have recognized the flag. 
The level of generality is unwarranted if we let strict or even
intermediate scrutiny apply.
 
Q: where do consequences of registration fit into theory? If
law prohibited these forms of speech outright, this would be unconstitutional.
 
Q: if SCt affirms Tam, does it have to strike down Gay
Olympics?

RT: G-d willing.  Yes, when gov’t seeks
to suppress speech instead of just not support it, I want gov’t to be held to
higher standards of proof as to the harms it seeks to avoid.
 
Calboli: what is the minority group?  Asian-Americans?  Self-identified Asian-Americans?  Difficult to pinpoint potentially offended
community.  Also exclusive registration
prevents others from using the name: if Tam has a First Amendment right, why
don’t other potential users of the SLANTS have First Amendment rights to
commercial use?
 
RT: shift would have to be, as Sheff says, in nature of gov’t
justification—Tam’s first appropriation of the term.
 
Lucas Osborn, presentation (didn’t catch title): TM outsider
perspective: use in commerce required, but that doesn’t mean what it means in
the dictionary; confusion is actionable, but not what you think confusion means—can
include uncertainty among people looking creepily close at your stuff.
 
Effects of 3D printing: manufactured at home; TM owners will
want to police CAD files because they can’t control what goes on at home as
easily. Knockoffs will become easier and more diverse; creativity and
personalization will increase. 
Modifications, mashups (I love the connectors for multiple kids’
construction sets).  Normative shift:
source of the goods no longer mean the manufacturer; the important source is
the CAD file source.  CAD files can be
literally duplicated, so no further quality protection rationale if the CAD
file is the same (or if the person knows that it’s an unauthorized CAD
file).  Left with property based theory
of TM.
 
Pragmatically, TM owners want to police CAD files directly.
Tech and procedural hurdles as w/DMCA. 
Can protect CAD file with TM—IC 009: downloadable virtual goods, namely
computer programs featuring [specify] for use in virtual worlds.
 
Some but not all TM owners will embrace 3D printing, maybe
even allow you to personalize.  Will a
CAD file directly infringe a physical good? 
Related goods?  Dilution?  Indirect infringement/dilution based on web
host—eBay v. Tiffany means that knowledge
standard will apply; maybe we won’t need DMTA, but eBay requires at least some policing.  [Expect to hear about “notice and staydown”
with these as well.]
 
Knockoffs and counterfeits will proliferate, magnifying
existing concerns with post-sale confusion. Many more uses will proliferate for
free: circulating the CAD file will be less likely to be paid-for.  3D printing can undercut the mobs/criminals
funded by counterfeits.
 
Normative shifts with personal manufacturing: if I can take
a picture of something and reproduce it, creativity and personalization will
increase.
 
Lemley: post-sale confusion theories aren’t persuasive on
their merits; used instead to get proxy for design rights.  We will probably decide that posting the CAD
file is advertising for sale.
 
McKenna: creates a Dastar
problem: do people care about the “source” of the file when what they want is
the content?  Is a file a “good”?  (Could you even be confused about the source
when you know where you got it?)

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New article forthcoming on trademark registration

Posted on February 19, 2016 by rtushnet

New article:  Registering Disagreement: Registration in Modern American Trademark Law,

130 Harvard L. Rev. (forthcoming 2016)

Abstract: Trademark scholars widely agree that our current system for evaluating what rights a trademark owner should have over others’ uses of their (or similar) marks is broken. Courts too readily find that too many acts are infringing even when they’re harmless or actually useful to consumers. Trademark practitioners, meanwhile, while often quite approving of broad interpretations of trademark law, widely recognize that our trademark registration system has significant practical problems. What we haven’t done is try to unite concerns over the expansion of trademark rights with concerns over the registration system and explain their relationship to each other.

Registration offers some of the most challenging puzzles in trademark.

Consider: If the mark REDSKINS for a football team is disparaging and its trademark registration therefore invalid, can trademark law nonetheless protect the team against unauthorized uses of the term? This question became more than theoretical when a district court recently upheld the invalidation of the REDSKINS registrations, a ruling now on appeal and likely headed to the Supreme Court. Or suppose the PTO determines that, in the abstract, an applied-for trademark is likely to cause confusion with another previously registered mark. If the applicant decides to use the mark anyway, without a registration, should the PTO’s determination bind a federal court asked to determine whether the new mark, as actually used, causes confusion with that previously registered mark? The Supreme Court just decided this issue in a way that generated large-scale uncertainty about the new relationship between registration and infringement liability.

These questions, and a number of others, highlight the need for renewed attention to trademark registration as such. Registration provides opportunities to limit trademark’s current structurelessness.

Specifically, registration works best in a system that doesn’t aim to search out and extirpate every possible instance of confusion, instead recognizing multiple reasons that we might avoid fact-intensive confusion inquiries and instead either ban or allow certain market behaviors. Moreover, maintaining the registration system requires substantial government and private resources, which are currently almost irrelevant at the enforcement stage. Applicants and the PTO spend much time and effort crafting the equivalent of an exquisitely detailed origami crane; rather than considering the details, courts then ask the equivalent of “is this paper folded?” and move on. Not only is this a waste of resources, but it leads courts to misunderstand the proper scope of a registration. There are a number of changes, ranging from small tweaks to sweeping statutory reforms and the rejection of the Supreme Court’s ahistorical conclusion that registration is a matter of factual accident rather than an important distinction between types of marks, that could improve the law to the benefit of trademark owners and non-owners alike.

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WIPIP, plenary session 1

Posted on February 19, 2016 by rtushnet
WIPIP, University of Washington School of Law
Plenary Session 1: Innovation Policy
 
Stephanie Bair, Promoting the Useful Arts: Corporate Edition
 
87% of patents are assigned to organizations, not
individuals.  How to motivate
individuals/employees?  Assumption is
usually that companies will offer optimal incentives, such as financial
bonuses.  But companies vary quite widely
in incentive structures, both financial and more importantly nonfinancial.  Amazon: works employees past endurance.  Amazon thinks challenging employees is good
for innovation.  Google: free massages,
food; policy allowing employees to take extended leave w/benefits to work for
nonprofit, travel, etc.  Google also
thinks its approach is good for innovation.
 
Findings: workplaces that function like economic exchanges—bonus
financially for innovation—don’t work very well. Social exchanges tend to
motivate creativity more.  Social
exchanges are less formal than economic exchanges, like friend/neighbor
relationship.  Loose exchange of favors
over time. Can be more efficient because of informality; reduces transaction
costs. Built on trust, dignity, and respect. 
Other factors good for creativity: autonomy, competence, feeling of relatedness
among employees, variety of tasks, work/life balance.  Promoting sense of choice; avoiding undue
control; giving credit for work; encouraging appropriate breaks/downtime.  Conclusion: Amazon has it wrong.  Controlling behaviors make employees feel
less competent.  [Does Amazon get fewer
patents relative to its non-warehouse employee cohort size than Google?  What other measures might we use?]
 
How to get companies to do what’s best?  The case for private ordering.  Evidence shows that creativity incentives
support the bottom line, are related to employee
satisfaction/productivity/loyalty; good press. 
Should want to do it of their own accord.  (Unless employer class has taste for control/status
inequality that overwhelms this, or is in a market with less need for ongoing large-scale
innovation and just wants bodies.  Cf. Edward
Baptist’s excellent and terrifying The
Half Has Never Been Told—physical
torture can also elicit innovation and efficiency from human bodies.)
 
What causes these incentives to fail?  Bounded rationality.  Info processing limitations; status quo bias;
conformity bias.  Solution: company can
use metrics.  Info asymmetrics: potential
employees may not have as much info as they do at Apple.  Amazon announced new benefits after the bad
press.  Social norms: managers should
face constraints for behaving poorly. 
Employment law: promote employee mobility.
 
Glynn Lunney, Copyright’s Excess
 
We know © exists to solve a problem of supply/demand and
underproduction in the absence of legal protection; © tries to eliminate free
riders to push paying demand = actual demand, making supply & demand
intersect at optimal level.  Copyright’s
excess is: when we push © up we do it uniformly, not just for marginal works we
want to incentivize—transfer wealth from consumers to producers of works we
would have gotten anyway, with less ©. 
Traditional analysis: just redistribution, no welfare effects; maybe it’s
in pockets of Congress, but that doesn’t matter. Plus, given uncertainty, might
be incentive effects even for nonmarginal works.
 
But, traditional answer: higher prices mean higher
deadweight losses and higher transaction costs to be balanced against marginal
benefits. Deadweight loss will be half of what’s transferred to producers (in
perfect model).
 
Real world application: demand curves are highly
skewed.  One song streamed 60 million
times during 2005-before.  4 million
songs on Spotify have never been streamed by anyone.  5 million times for Goo Goo Dolls song.  To help one marginal song by $1 we have to
give $12 to that song at the top.  Very
little goes to the marginal songs overall.
 
Music has seen a radical transfer of wealth from consumers
to copyright owners from the 1970s to 2000s—followed by sharp decline in
sales.  What relationship between income
and output in the music industry?  Music
revenue is down from peak in 2000.  File
sharing traffic is up—1000 petabytes a month, 1.25 billion albums a month if they
were all albums; $75 billion in reduced deadweight loss.  Albums released in US from 1996-2012: 30,000
to 100,000, then recession took us to 80,000, well above the peak revenue year
of 1999.  Billboard Hot 100: 5200
slots/year; number of unique songs: in 60s/70s it was about 750.  Falls steadily until 2002 when it’s 300
songs, then up to 500, then recession and 400. 
Turnover isn’t exact proxy for high quality output—maybe we’re getting
some super-high quality songs sticking around. 
Did quality peak in 1999?  Rolling
Stone thinks it peaks in 1970s (top albums ever), but Spotify might be less
white-guy.  2014 play count: backside of
Spotify distribution curve; median user is 28 and mostly younger; normalized,
though, the play counts peak in 1983, when revenue was lowest, and 1997 is
nadir in terms of what people still listen to today. So we didn’t see peaks in
quality in 1999. 
 
Why might we be getting fewer high-quality songs?  New artists—peak revenue period in 1983-1999,
there is a slight upward slope in the number of new artists.  25% of songs were by new artists, up to 40%
at peak; filesharing kicks in and we go back to 15-20%.  Why not as many new songs?  Existing artists produce fewer hits when
record sales are going up. 
 
Hypothesis: backwards bending labor supply curve. Overpaying
superstars reduces their creative output. 
Backstreet Boys & ‘Nsync were making $200 million/album.  They produced fewer albums.  Top 250 acts of all time, according to RIAA:
early ones like Beatles produced average 14 albums in first 10 years of career
(Beatles were 12 albums + EP); by the 1990s, that was down to 5.  Lost: Sergeant Pepper’s, the White Album,
Abbey Road, Let it Be.  Adele’s delay between
albums will predictably be greater too. 
Top artist hit production from 1962-present: number of hits v. record
sales over first 10 years of career—the artists with lots of hits tend to be grouped
on low income portion of scale.
 
More revenue didn’t yield more and better works of
authorship.  Higher revenue = more new
artists, but fewer hits from existing artists; most of the new artists were
one-hit wonders. Second effect (fewer hits) outweighed the first.  Maybe we need to balance incentives for
marginal artists v. incentives for most popular, instead of incentives v.
access.
 
Laura Pedraza-Fariña, Scaffolding Innovation: The Role of
Patents, Grants, and Informal Norms in Assembling Teams that Span Technological
Domains
 
Lumpy structure of architecture of knowledge
distribution.  We’ve made vast improvements
in the way we can cure cancer/prolong survival, particularly for childhood
cancers, but the side effects include infertility; fewer advances in that
area.  Why this disconnect?  Two communities involved in
infertility/cancer research: oncologists, who are interested in understanding
cell division; endocrinologists, who in part work on addressing infertility.
Though when you ask cancer patients their main concerns, infertility is second
only to fear of death, that research hasn’t happened.  These two communities are not talking to each
other though they have key complementary knowledge to address secondary
infertility from cancer treatment.
 
Accounts of innovation incentives often assume free flow of
information; don’t look at barriers to assembly of teams even once free-riding
and market-demand problems are eliminated. 
Architecture of knowledge distribution/social barriers to flow of
knowledge are often important.  NIH sought
proposals for interdisciplinary research—problems that can only be solved by
cooperation among disciplines; oncofertility is one example.
 
Interviewed key informants: barriers and benefits to such
research; what is the effect of current patent and grants policy/what should we
do to encourage it?  Requires someone in
a position to unite two groups—an endocrinologist who fortuitiously ended up in
charge of a cancer center.  Benefits of
collaboration: problem finding.  Huge
areas of unknowns—when the mouse ovary and monkey ovary people got together
(hadn’t previously been talking), they realized that these ovaries behaved very
differently and they needed to account for that instead of using mouse ovaries
as human models.  New field of research:
oncofertility. New products: gel matrix to grow follicles into eggs in
vitro.  New social connections: ongoing
collaborations between engineers, endocrinologists, oncologists, etc.  People w/40 years of experience described it
as the best program they’d been involved with in their lives.  Intrinsically motivating to work in
non-traditional teams.
 
Policy conclusion: create scaffolds.  Temporary bridges may be enough to bring
together communities previously separated by structural holes, b/c intrinsic
motivation may take care of the rest. 
Patents are not the right tool for the job; the type of research creating
nontraditional teams tends to be exploratory, low appropriability/high
spillovers, long time to market—patents tend to distort incentives against
these.  Grants aren’t currently
structured to do this b/c NIH institutes weren’t coordinating, but could
be.  Regulatory levers: FDA.  Collaborative R&D.
 
W. Nicholson Price II, Timo Minssen, & Arti Rai, Patent
Failures on Life Science Frontiers
 
Poster child for patents seems to be developing new
drugs.  Some literature says that’s not
true across pharma/bioscience—antibiotics, orphan drugs, biosimilars, manufacturing,
second uses for existing drugs, diagnostics—all these things are different.

Themes emerging from the literature: coordination—many of these policies cut
across areas—FDA, PTO, Fed. Cir., Congress think of different things and don’t
talk to each other.  Policy academics in
these areas also often don’t talk to each other. Maybe industry trade groups
are better at figuring out how to play off regulations/regulators.  Life sciences are different?  Maybe health is special: human flourishing,
market failure, FDA as giant regulator sitting on top of everything,
gatekeeping market entry.

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Uber and out: court grants limited but still tricky injunction against Uber

Posted on February 18, 2016 by rtushnet
Uber Promotions, Inc. v. Uber Technologies, Inc., No.
15-cv-206 (N.D. Fla. Feb. 16, 2016)
 
This is a hardcore test of how you feel about consumer
protection as the sole legitimate aim of trademark law.  Uber Technologies (Tech) rolled into
Gainesville, over the unheeded objections of local senior user Uber Promotions
(Promotions), which among other things provides party buses or limos to take
people to events.  Someone who Googles
“Gainesville party bus” would find, on page two of the results, a listing for
“Uber Promotions.” Generally, its services include  “promotional and event planning services, . .
. graphic, web design and print media photography services, . . . modelling and
talent agency services, . . . private venue rental services,” and “passenger
transportation services, including through limousine and charter services.”  It used “UBER,” “ÜBER,” “UBER PROMOTIONS,”
and “ÜBER PROMOTIONS” since at least 2006.  Tech registered UBERCAB in 2010, then
registered UBER in 2011.  It expanded
permanently into Florida in November 2013, starting with Jacksonville and
reaching Gainesville in August 2014.  But
Tech is an elephant, and Promotions a squirrel. 
Shall the strong do as they will and the weak do as they must?
 
Promotions sent Tech a letter in April 2014 demand ing that
Tech “discontinue the use of the terms ‘Uber Promotions’ in connection with
[Tech’s] marketing and advertising campaigns . . . and undertake in writing
that [Tech] will not at any time in the future use any of [the] Uber Promotions
name in any future mark[et]ing or advertising campaigns, Twitter Accounts, or
apply for registration of any trademarks/service mark that may be confus ingly
similar to Uber Promotions.” Tech responded by (1) removing the term “Uber”
from the title of a page on its website that had previously been titled “Uber
Promotions” and (2) responding (through counsel) that it didn’t agree that
there was a problem, but that to avoid trouble it removed the “Uber Promotions”
reference.
 
Soon after the lawsuit was filed, Tech launched a new
service called UberEVENTS, which allows customers to purchase rides for others
that can be used at a particular time in the future, “a popular option for
corporate events.”
 
Promotions sought to keep Tech out of Florida.  It didn’t get everything it wanted, but what
it did get might pose some interesting technical challenges.
 
First, the court addressed the lurking eBay issue: the court was inclined to agree that no presumption of
irreparable harm was appropriate now. 
But history also indicated that the practice of presuming irreparable
harm from likely success “was grounded upon the sound principle that the harm
associated with trademark infringement is typically irreparable in nature. So
while a court must, in each trademark in fringement case, make a finding of
irreparable harm before an injunction may issue, that finding will often be
made due to the na ture of the harm.” 
Still, the court has considerable equitable discretion to tailor its
relief.
 
Likely success: First, the court agreed with Tech that its
use of UBER related back to the registration of UBERCAB in 2010—though this is
a question of fact under Hana Bank, “this
Court is confident that Tech would be able to convince a jury that UBER and
UBERCAB would be ‘considered the same mark’ by a reasonable consumer,” so UBER
was effectively registered in 2010.
 
The court then asked whether Promotions was entitled to a
reasonable zone of future expansion; §33(b)’s freezing provision suggests
otherwise, but the case law seems to recognize such a zone even when the junior
user is a federal registrant.  The court
also asked what Tech’s nationwide rights were for—its registrations cover “computer software for coordinating
transportation services,” not the provision of actual transportation services
themselves.  (It’s a platform!)  It wasn’t necessary to resolve these issues,
because there was no evidence of a zone of expansion outside Gainesville.  Promotions’ infrequent trips out of town to
various places weren’t enough to show use or likely expansion, except perhaps
for Promotions’ bus service to Ocala Poker and Jai Alai in Reddick, Florida,
which it might have been servicing regularly for many years.  Thus, Promotions was the senior user in
Gainesville.
 
This is a reverse confusion case, meaning that “the largest
class of people who might be confused are people familiar with Tech’s marks who
then encounter Promotions’ marks.”  Promotions primarily serves and advertises to
college-age people.
 
The court first looked at the UBER marks except for
UberEVENTS, which it analyzed separately.
 
Strength: Tech argued that the term UBER was laudatory and
descriptive.  There wasn’t much
competitive need for the term UBER, though UBER PROMOTIONS was a closer call on
being laudatory and thus descriptive. 
Though “uber” isn’t extremely uncommon, it’s also “less frequently
encountered—and thus less likely to be perceived by the relevant public as
merely self-laudatory—than a term like ‘super’ or even ‘ultimate.’” Thus,
Promotions’ mark was suggestive.  The
mark wasn’t especially strong conceptually, so this factor slightly favored
Tech.
 
Similarity: There are many ways to be familiar with Tech
without using Tech’s services, given its wide recognition.  The court agreed that the differences between
Tech’s app and Promotions’ logo, together with the fact that Promotions usually
included “Promotions” in its name, made consumer confusion relatively unlikely
on a full encounter.  But “the visual
differences are much less significant for those consumers less familiar with
Tech.”  Tech’s ads and promotional
materials suggested that the most important feature of Tech’s mark was the word
UBER, not any particular design element. 
Indeed, Tech switched logos after the hearing in this case.  If anything, “[t]he fact of the change—and
the fact that it was so well-publicized—might tend to increase reverse
confusion by creating doubt among those familiar with Tech about what its ‘look’
really is.”  Regardless, visual similarity
weighed slightly in favor of Promotions. 
More importantly, “many consumers may have just heard of Tech or read a
news story referencing it, in which case the visual differences are quite
unimportant,” nor would the relatively common word “Promotions” help consumers
distinguish the two.  Plus, Tech often
uses “Uber Promotions” in connection with various promotional campaigns, which
could easily create confusion.   
 
Similarity of services: Though both offered passenger
transportation, the services differed in many important ways—Tech had “driver
partners” using their own cars, while Promotions used more traditional vehicles
such as charter buses, party buses, and limos. Tech focused on moving
individuals or small groups, whereas Promotions focused more on group
transportation. “These differences are not so great that they weigh heavily
against confusion, particularly in light of Tech’s expanding roster of
transportation options,” such as the UberXL service that provides SUVs and
minivans, as well as UberPOOL, which allows customers traveling in similar
directions to share a car and save money, though the latter wasn’t yet
available in Gainesville.  People highly
familiar with Tech would notice the absence of driver partners, but “those who
only know that Tech has something to do with transportation or that it provides
something like a taxi service could very well think that Promotions and Tech
are affiliated based on Promotions’ services.” 
(Also, Amazon just opened a physical bookstore—just because you start
out without employees doesn’t mean you end that way.) This factor tilted
slightly in favor of Tech.
 
Similarity of sales methods weighed heavily in favor of
Tech, because Tech uses an app, whereas one must call, email, text, or send a
Facebook mes sage to Promotions in order to set up a ride. Even people only
vaguely familiar with Tech might well know that its services were app-based.
 
Similarity of advertising methods: both use social media
extensively. Some of Tech’s affiliates even put ads for Tech’s services on
Promotions’ Facebook page. Though the look of Promotions’ ads was quite
different from the look of Tech’s ads, extensive use of social media and
especially Promotions’ Facebook page raised the likelihood of confusion.  Also, Tech’s use of AdWords made it more
likely that certain searches would lead to an ad for Tech being displayed above
the results.  Weighed slightly in favor
of Promotions.
 
Intent: In a reverse confusion case, the concern is that the
infringer will “push[] its [smaller] rival out of the market,” thus “usurp[ing]
[the rival’s] business identity.” Only intent to “usurp identity” through
confusion is relevant.  (Here’s where the
equity kicks in.  What about reckless
indifference to the senior user’s trademark rights?  Tech clearly didn’t intend to misappropriate
Promotions’ goodwill, but it might well have anticipated that its entry into Gainesville
would extinguish that goodwill, which is a kind of “usurping” the identity of
UBER in Gainesville.  How should we think
about that?)  The court was skeptical:
 
It is difficult to believe that
Tech acted with the intent to push Promotions out of the Gainesville market by
using a confus ingly similar mark. Elephants don’t look out for gerbils when
they plow through the bush. Tech adopted its mark before it ever knew of
Promotions and expanded nationally thereafter. Surely it knew that it would
collide with Promotions once it entered Gainesville, but that doesn’t mean it
intended to confuse consumers and thereby hurt Promotions. This factor is not
particularly relevant to the analysis in this case.
 
Actual confusion: There was a fair amount, which is
interesting in light of the court’s conclusion that most of the standard
circumstantial factors either favored Tech or only weakly favored
Promotions.  Promotions received “numerous”
phone calls from customers looking for tech. 
The court found that some of the people who called Promotions looking
for Tech “were indeed “confused” within the meaning of the Lanham Act—that is,
they understood they were calling Promotions and thought Promotions was affiliated
with Tech.” 
 
But Tech’s number is hard to find, so many of the callers
were just misdirected, such as the ones who asked about becoming driver
partners.  Especially since a Google
search for “Uber Gainesville phone number” or “Uber Gainesville phone” brings
up Promotions’ phone number, “it’s likely that a large fraction of the callers
didn’t even grasp that they were calling something called Uber Promotions, but
instead thought they were calling Uber Technologies. This is akin to being
given a wrong number by a telephone operator.” 
The confusion about who they’d reached isn’t relevant trademark
confusion, at least not in a reverse confusion case—it would be highly relevant
to initial interest confusion. “A person who does not even grasp that he is
talking to Promotions on the phone, or that Promotions even exists separate and
apart from Tech, is obviously not going to form a bad opinion of Promotions
based on his ‘confusion,’ nor is Promotions going to lose any business.” The
same was true with emails received by Promotions from people looking for Tech. “The
Los Angeles customer appears to be someone so easily confused that even
trademark law cannot protect her.”
 
Two instances of confusion by former customers of Promotions
were more helpful: they clearly understood what Promotions is, understood what
Tech is, and thought they were affiliated. Also, there was evidence that “a few
Tech customers—and even some driver partners and others affiliated with Tech”—thought
the parties were related.  The
calls/emails were less important, especially since their confusion could be
easily corrected.  “That said, it strains
credulity to think that at least some of the many dozens of callers were not
actually confused, and certainly two of the emailers were.”  Even a few instances of actual confuison were
worthy of note because of how difficult actual confusion is to find.  This factor weighed in Promotions’ favor, “but
it by no means weighs so heavily that a finding of a likelihood of confusion is
inevitable.”
 
All together: The court was especially impressed by the
difference in sales channels: “anyone who has used Tech’s services necessarily
understands that those services are accessed via a smartphone app, and is
unlikely to think that Tech has all of a sudden started to make its services
accessible via other means.”  So, the people
who might be likely to be confused are people who have “heard of, but not used,
Tech’s services.”  But the people in that
group most likely to encounter Promotions’ mark is young people, a group that’s
relatively tech-savvy and therefore likely sensitive to the difference in sales
channels.  (NB: I don’t think tech-savvy
means that; an ability to spit out emojis super fast is not sophistication in
business organizations.)  Plus, a person
who’s heard of Tech might be aware that Tech is available in many locations,
not just Gainesville, “and the local focus of Promotions’ advertising will not
tend to create confusion.”  (Though doesn’t
Tech roll out new services place by place?)
 
If there were no evidence of actual confusion, the court
wouldn’t find likely success on the merits. 
But there was, so it did. “[G]iving great weight to evidence of actual
confusion helps ensure that a judge doesn’t rely (perhaps subconsciously) too
heavily on his own subjective view of the likelihood of confusion” and “helps
counteract the empathetic deficiencies that necessarily distort the analysis of
the remaining factors.”  There were about
five clear instances of people who truly thought that Promotions and Tech were
related “despite having a more-than-casual relationship with the two entities.”  Even a few can be enough, though.  It was a close call, but the court found
likely success on the merits.
 
As for UberEVENTS, confusion was much more likely if it were
allowed to grow in Gainesville pending trial:
 
First, the more “Uber _” services
there are, the more likely it is that a consumer might think that Promotions is
just another branch on the Uber Technologies tree. Second, UberEVENTS is
accessed through a webpage, thus eliminating one of the key differences between
Tech and Promotions. [Ed.: But no reasonable consumer would expect that,
right?] Third, the service allows users to coordinate transportation at a set
time in the future for a large number of people, just like Promotions.
 
Though most driver partners’ vehicles were probably less
lively than a party bus, the services were far closer than with any of Tech’s
other offerings. This one wasn’t a close case.
 
Tech’s laches and estoppel affirmative defenses weren’t
pursued in opposition to the preliminary injunction, and anyway wouldn’t work
as to UberEVENTS because that launched after the lawsuit began.
 
Irreparable harm: Without an injunction, more people would
be confused about the relationship between Tech and Promotion.  “But so what? Where’s the harm? The harm
usually cited as flowing from confusion in a reverse confusion case is the loss
to the senior user of the ‘value of the trademark—its product identity, corporate
identity, [and] control over its goodwill and reputation.’” These harms, if
they occur, aren’t easy to quantify and redress with money damages, which makes
them irreparable. But nonetheless, the harm must be likely, not just possible.
 
The court identified three reasons for concern: (1) Tech’s
high rate of growth in the Gainesville market, allowing it to do Promotions
more harm before trial.  (2) UberEVENTS,
which might even cause Promotions to lose business to forward or initial
interest confusion. (3) Tech’s “massive” public relations problems. The court
pointed to the top Google News search results (as of 5:00 p.m. on February 11,
2016) for “uber florida”:
 

Bad press for “uber florida”

“With all due respect to Tech, Promotions has every reason
not to want potential customers and other members of the public to associate it
with a company that has inspired protests in cities around the world.”
 
Balance of hardships: enjoining Tech from using UBER in
Florida would go way too far.  Promotions
argued that Tech could “make a new app with a new name and operate as a sort of
parallel universe version of itself in the Gainesville area.”  But this would be technically infeasible, if
not impossible, and economically unwise.  Plus, Tech would have to give up the value of
its trademark in Gainesville, “and would have to mount a massive campaign to
introduce itself to the Gainesville public. Promotions’ proposal seems to
ignore the value of name recognition and brand identity, which are the very
things that trademark law seeks to protect.” 
(Look, I’m not a big believer in protecting brand identity.  But if Promotions is the senior user in
Gainesville, Tech doesn’t have any right to name recognition or brand identity
in Gainesville, any more than Delta Dental has a right to expand into airlines
under its existing brand.  The court’s
reasoning seems to ignore §33(b), which freezes the senior user in, but also
freezes the junior user out.)
 
The practical effect of enjoining Tech’s use of its marks in
the Gainesville area would be its cessation of operations.  This would set back Tech’s efforts to build a
customer base before trial.  (Note the
assumption that ultimately it will be able to operate in Gainesville; if true,
the court’s got a point.)  Of course,
self-inflicted injury can be discounted, but here the infringement wasn’t
willful.  Plus, Promotions could have
sued earlier; it waited over a year after Tech moved into the Gainesville
market to file suit. This might not be enough for laches, but it factored into the
balance of hardships.  Thus, the injury
to Tech from a flat ban in Gainesville was more significant than the injury to
Promotions.

The court was also concerned to avoid “arming squirrels with bazookas.”  (AKA trademark trolling.)  An injunction against the name in a large
market could cost Tech far more money than Promotions could ever hope to make,
creating a windfall for Promotions given that it could sell the injunction to
Tech for “a sum far exceeding its anticipated profits but still far below the
cost to Tech of obeying the injunction.” 
A permanent injunction after a finding of infringement might be
appropriate in such a case, given the adjudicated violation of trademark law.
But a preliminary injunction required more caution.  The risk of holdup was a concern in any preliminary
injunction proceeding, but was particularly acute in a reverse confusion case,
where a small, regional plaintiff takes on a national behemoth. “[A]
preliminary injunction should not serve as a bazooka in the hands of a
squirrel, used to extract from a more fearsome animal a bounty which the
squirrel would never be able to gather by his own labors—at least not when the
larger animal is mostly without sin.”  (A
skeptic might suggest that courts, like guns, were created by societies
precisely so that the big could not simply do to the small what their size
permitted them to do—and that courts are better equalizers than guns for a
variety of reasons.)
 
Thus, the court would grant Promotions only narrow relief.
The injunction would aim at (1) preventing people looking for Tech’s phone
number from coming across Promotions’ phone number and (2) preventing UberEVENTS
from causing further confusion.  Much
confusion stemmed from the fact that Promotions comes up when one searches
“Uber Gainesville phone” or “Uber Gainesville phone number” on Google. Thus,
Tech would be required to set up a local (352 area code) number to handle calls
from Tech customers and driver partners in the area.  (Won’t this further entrench Tech’s
dominance/crushing of the goodwill of Promotions in Gainesville?)  Tech would also be preliminarily enjoined from
using its marks in connection with UberEVENTS in the area.
 
Public interest: a full injunction against Tech using UBER
in Gainesville wouldn’t serve the public interest, because that would harm Tech’s
driver partners and customers, including its “Freedom in Motion” program, in
which it “facilitates on demand, subsidized transportation services for
residents of senior citizen communities,” and in the “Safe Rides” program,
“which gives university students discounted rates on their rides when returning
home late at night.”  Yanking away Tech’s
lower-cost on-demand transportation, especially when Promotions doesn’t
directly compete with Tech and couldn’t replace its services, would harm
citizens.  But more limited relief would
help reduce confusion without harming consumers.  “While enjoining any further growth of
UberEVENTS might impact Tech’s driver partners, the effect is likely to be very
minor given the fact that UberEVENTS is relatively new and has not yet taken
off in Gainesville.”
 
Bond: Tech asked for a security bond of $64 million, based
upon a broad injunction covering all of Florida. The court had little to go on
for the more limited injunction, so settled on $10,000.
 
Now take a gander at the injunction’s components, and
consider how Tech can accomplish them: (1) No advertising of UberEVENTS in
Alachua County, including a posting promoting UberEVENTS placed on the Facebook
wall or page of people/entities in the county. 
(2) UberEVENTS can’t book events in the county.  (3) Uber has to set up a local phone number
and list it in all available directories. 
(4)  The kicker:
 
Defendant must ensure that a search
conducted with the Google, Yahoo, or Bing search engine using the keywords
“Uber Gainesville phone” or “Uber Gainesville phone number” returns a result
containing Defendant’s 352 areacode number along with words clearly indicating
that the result is associated with Defendant. Such words may in clude “driver
partner,” “app,” or “ride.” Defendant must ensure that this result, while
prominently displayed on the search results page, does not replace the result
for Plaintiff’s phone number that is currently returned when a search is
conducted using these keywords. Compliance may entail using the search engines’
paid advertisement features such as Google AdWords.
 
In addition, Tech was required to “ensure” that a search
conducted with the Google, Yahoo, or Bing search engines using the keywords
“Uber promotions Gainesville phone” or “Uber promotions Gainesville phone
number” didn’t return Tech’s phone number.
 

Court’s suggested configuration of Google search page

Thoughts on the technical feasibility of these measures?

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No compelling interest in right of publicity for private figure, 9th Circuit rules

Posted on February 18, 2016 by rtushnet
Sarver v. Chartier, No. 11-56986 (9th Cir. Feb. 17, 2016)
 
Shorter opinion about why the film The Hurt Locker didn’t violate Army Sergeant Jeffrey Sarver’s right
of publicity: “video games are different.” 
Sarver led a team in Iraq to dispose of IEDs. A journalist embedded with
his division followed him “for a significant amount of time and took
photographs and video of him while he was on and off duty,” and conducted
additional interviews with him back in the US. 
The Playboy article he wrote
was later condensed in Reader’s Digest;
it used two photos of Sarver and other personal information, allegedly without
his consent, and he objected to the article. 
The journalist later wrote the screenplay for The Hurt Locker, and Sarver argued that Will James, the movie’s
main character, was based on his life and experiences.
 
Sarver sued in New Jersey for misappropriation of his
likeness and right of publicity, false light invasion of privacy, defamation,
breach of contract, intentional infliction of emotional distress, fraud, and
negligent misrepresentation. The case was transferred to California, where the
defendants filed a motion to strike under California’s anti-SLAPP statute.  The court of appeals first went through a
choice of law analysis and applied California law, given the predominance of
California contacts, the difficulty of determining Sarver’s domicile, and California’s
strong interest in enforcing its anti-SLAPP law to “encourage continued
participation in matters of public significance” and to protect against “a
disturbing increase in lawsuits brought primarily to chill the valid exercise”
of constitutionally protected speech.  While New Jersey has no similar law, “its
courts have allowed defendants to bring a claim for malicious use of process to
protect against suspected SLAPP actions.” Thus, the balance of interests tilted
towards California: “Whereas California would appear to object strongly to the
absence of a robust anti-SLAPP regime, New Jersey’s interests would be less
harmed by the use of California law.”
 
It wasn’t hard to show that defendants’ acts were an exercise
of their free speech rights on a matter of public interest, something which is
to be broadly construed.  One California
court said:
“a matter of public interest should be something of concern
to a substantial number of people.” Further, “there should be some degree of
closeness between the challenged statements and the asserted public interest,”
and the “focus of the speaker’s conduct should be the public interest.” The
Iraq war, and the use of IEDs by insurgents during the war, was “a matter of
significant and sustained public attention.” 
Sarver argued that the true issue was “whether the defendants’ alleged
misappropriation of his private persona is of public interest.”  However, unlike the situation of a random
callow youth, “Sarver’s work while deployed in Iraq was an issue of public
concern significant attention devoted to the war and to the role of IEDs in it.”  Significantly, while the film allegedly
incorporated his personal characteristics, the portrayal specifically centered
around his work, and his characteristics were displayed only in the context of
his job in Iraq. Thus, “the private aspects that Sarver alleges the film
misappropriated are inherently entwined with the film’s alleged portrayal of
his participation in the Iraq War.”  This
was sufficient to show that the narrative focused on an issue of public
concern.
 
At that point, the burden shifted to Sarver to “state and
substantiate a legally sufficient claim.” 
Under last Term’s Reed
decision, content-based restrictions on speech, such as the right of publicity,
are presumptively unconstitutional and must be shown to be narrowly tailored to
serve compelling state interests. 
[Query, in the case of a common-law right, who is to make this showing
and on what record.]  Zacchini said the right of publicity was
constitutional as applied to the appropriation of a performer’s entire
performance.  [Zacchini, of course, did not apply strict scrutiny; rather, it
applied an analogy to a form of speech restriction that the Court has said
ordinary First Amendment principles don’t apply to, see Eldred/Golan, a logic
that looks even worse after Reed.] 
 
Zacchini reasoned
the state’s right of publicity law was aimed at protecting “the proprietary
interest of the individual in his act” and “prevent[ing] unjust enrichment by
the theft of good will,” in order to provide “an economic incentive for [the
individual] to make the investment required to produce a performance of
interest to the public.” This was similar to the interests which “underlie[]
the patent and copyright laws long enforced by this Court,” as opposed to
reputational and privacy-based interests which underlie torts like defamation. The
Court balanced this interest against the TV station’s First Amendment interests
in broadcasting the performance and found the station’s interest less weighty
because “[n]o social purpose [was] served by having the defendant get free some
aspect of the plaintiff that would have market value and for which he would
normally pay.” [Note how the “balancing” has nothing to do with Reed strict scrutiny.  Just sayin’.] 
 
The Ninth Circuit has extended Zacchini to lots of things, from greeting cards to video games,
even outside of advertising.  “[O]ur
precedents have held that speech which either appropriates the economic value
of a performance or persona or seeks to capitalize off a celebrity’s image in
commercial advertisements is unprotected by the First Amendment against a
California right-of-publicity claim.” 
 
But those cases don’t apply here, because Sarver isn’t a
celebrity: he didn’t “make the investment required to produce a performance of
interest to the public,” or invest time and money to build up economic value in
a marketable performance or identity.  He’s
a private person, even though his story is of public interest.  “Neither the journalist who initially told
Sarver’s story nor the movie that brought the story to life stole Sarver’s ‘entire
act’ or otherwise exploited the economic value of any performance or persona he
had worked to develop. The state has no interest in giving Sarver an economic
incentive to live his life as he otherwise would.”
 
Comment: so, the state has no interest in giving incentives
for things that would be produced anyway, where the incentive is given by way
of restrictions on speech?  Good to know.
 
Continuing: “The Hurt
Locker is speech that is fully protected by the First Amendment, which
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.”  Um, aren’t celebrities part of the raw
materials of life?  (Calling Andrew Gilden:
perhaps celebrities are already cooked, but they can still be chocolate chips
in my expressive cookies, no?)
 
Anyway, it’s not even clear that California’s right of
publicity would extend this far, given that the California Supreme Court barred
a right of publicity action based upon the unauthorized exhibition of a
“fictionalized version” of Rudolf Valentino’s life on television, because there
was no postmortem right.  Guglielmi v.
Spelling-Goldberg Prods., 603 P.2d 454, 455 (Cal. 1979). But a broader
concurring opinion explained that, unlike in Zacchini, there was no claim that the defendants secretly filmed
Valentino’s “performance” or otherwise stole his “entire act,” so as to
“undercut[] his ability to earn a living,” thus meaning that the fictionalized
portrayal of Valentino’s life was entitled to greater First Amendment
protection than the conduct in Zacchini.  Gee, I wonder what implications that logic would
have had for Keller v. EA?
 
After the right of publicity claims were kicked out, the
remaining defamation, false light, and intentional infliction of emotional
distress claims promptly followed. “[A] reasonable viewer of the film would be
left with the conclusion that the character Will James was a heroic figure,
albeit one struggling with certain internal conflicts.”  Even unflattering aspects wouldn’t be enough
to make this defamatory or highly offensive to a reasonable person, even if
they were provably false (such as the character’s alleged fascination with war
and death).

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High-quality health care claims are puffery

Posted on February 16, 2016 by rtushnet
Intermountain Stroke Center, Inc. v. Intermountain Health
Care, Inc., — Fed.Appx. —-, 2016 WL 523613, No. 14–4045 (10th
Cir. 2016)
 
Intermountain Health Care is a large hospital/clinic/doctor network.  Before it ceased business in 2013, the Stroke
Center provided “same-day and next-day treatment” to patients presenting with
strokes and transient ischemic attacks (TIAs). According to its staffer Dr. Nancy
Futrell, the Stroke Center was “the only outpatient, non-emergency facility in
Utah to provide non-emergency, same-day and next-day stroke and TIA treatment
by …. a stroke specialist” and the “only” facility in the state that offered
these services at rates significantly lower than prevailing hospital rates.  Originally, Futrell and the Stroke Center sued
Intermounntain in state court for violations of Utah’s Truth in Advertising Act
and related claims; they added a Lanham Act claim and Intermountain removed.
 
Plaintiffs challenged (1) general representations that
Intermountain follows “best medical practices,” provides the “best possible
care,” and has a mission of “[p]roviding excellent care of the highest quality
at an affordable cost,” and (2) three more specific representations about the
number of Intermountain physicians specializing in stroke and TIA treatment,
the efforts made by Intermountain to avoid prohibited sources of revenue, and
the proper scope of post-stroke or post-TIA care.  The court of appeals affirmed the dismissal
of the Lanham Act claim because the challenged statements were puffery as a
matter of law.
 
On its website, Intermountain held itself out as “an
internationally recognized, nonprofit system of 22 hospitals, a Medical Group
with more than 185 physician clinics, and an affiliated health insurance
company,” “offering a full range of services,” and “[p]roviding excellent care
of the highest quality at an affordable cost is at the heart of [its] mission.”
Also: “Our network of experienced doctors, surgeons and caregivers strive[s] to
provide clinically excellent healthcare through a wide range of services in a
setting where patient needs come first.” On a page called “For Intermountain
Healthcare Trustees,” Intermountain described its business model as “[a]n [i]ntegrated
[h]ealthcare [s]ystem” offering “[c]linical quality,” “[s]ervice quality,”
“[l]ower costs,” “[p]revention,” and “a relatively seamless continuum of care.”
Being a vertically-integrated network supposedly enabled it to “contribute in
essential ways to the sharing of best medical practices, and raising the
standards of clinical excellence.” Thus “Intermountain not only provides
quality healthcare; it often achieves lasting improvement in cost
structures.” 
 
All this was puffery, in context, which included the fact
that it was mass advertising expressed in vague terms, not something said to a
particular person with knowledge of that person’s specific needs. “Healthcare
is fraught with unpredictability, and a healthcare-delivery system hardly
strikes us as the species of business from which a particular
objectively-superior result (e.g., with respect to certain stroke and TIA
treatments) could reasonably be expected by a consumer without at least some
modicum of specificity being provided by the business in its representations
….”
 
Puffery was not an affirmative defense, as plaintiffs
claimed; whether statements were factual or puffery were questions of whether
actionable conduct had occurred.  Nor did
puffery have to be “forward-looking”; that’s just an example of a type of
puffery.  “[V]ague statements of
corporate optimism” also qualify.  Lexmark changed none of this.
 
As for the three specific statements, they were also
non-actionable.  First, plaintiffs argued
that Intermountain claimed to have more physicians for stroke and TIA care than
it actually did, using misleading statements that its heart and vascular
surgeons specialized in such care, and that neurologists at its clinic were
stroke and TIA “subspecialists.”  Plaintiffs alleged that Intermountain’s
listing of stroke on its website “under ‘Heart and Vascular Services’”  would “confuse stroke and TIA patients into
believing that cardiologists and other heart specialists specialize in the
treatment of stroke and TIA, which is not accurate.”  Also, “the ‘Find a Doctor’ link from the
[Intermountain] website … lists heart and vascular surgeons … as stroke
treatment providers,” which would mislead consumers. 
 
The court of appeals found that implausible.  “Plaintiffs’ own evidence supports our
conclusion that any association of stroke and TIA with ‘heart and vascular’
services is proper” because stroke is a cerebrovascular or cardiovascular
disorder.  “[I]t follows that stroke
patients could not have been misled by a suggestion that a vascular physician
might be of assistance.”  Likewise, the
“Find a Doctor” tool would provide a list of doctors, including information
about each doctor’s educational background, certifications, and clinical
interests. None of the “primary specialty” notations explicitly included a
claim of expertise in stroke and TIA treatment; the only claim was that some of
them possessed “the core competencies to treat cerebrovascular diseases,” which
appeared to be true.  Plaintiffs failed
to explain how consumers would infer that the doctors were specialists in
stroke and TIA.  Though plaintiffs might
want Intermountain to include a disclaimer, the law didn’t require that.
 
Also, Intermountain’s Annual Stroke Report said: “The Stroke
Program also offers resources for patients with ongoing medical needs after
hospitalization. The Outpatient Neuroscience Clinic[ ] … is home to
subspecialists including epileptologists, general neurologists, physical
medicine and rehabilitation physicians, and neuropsychologists.”  Plaintiffs failed to explain why it was false
or misleading to label them “subspecialists,” even though they held themselves
out as focusing on specified brain disorders. There was no explicit or implicit
representation that Intermountain’s Outpatient Neuroscience Clinic was devoted
to stroke and TIA.  [I have changed the
court of appeals’ language a bit; the court wrote as if making merits
determinations, where under Twiqbal
it really should have been talking about plausibility.]
 
Plaintiffs alleged that Intermountain falsely claimed in its
Ethics Code to “carefully review financial relationships with physicians and
other Health Care Practitioners for compliance with the anti-kickback and Stark
laws.” In fact, Intermountain reached a settlement with regulators over compensation
arrangements that appeared to violate federal healthcare-fraud statutes. But
the court found the Ethics Code claims true and not misleading.  Then, contradictorily, it said that an announcement
of intent to behave ethically was outside the scope of the Lanham Act entirely
(that is, puffery).  A code of ethics is
aspirational; “it simply cannot be that every time a violation of that code
occurs, a company is liable under federal law for having chosen to adopt the
code at all, particularly when the adoption of such a code is effectively
mandatory.”
 
Moreover, the Ethics Code promised consequences for
misconduct, tacitly acknowledging that standards are sometimes violated.  In fact, the court found that was what
happened when Intermountain found out about the compensation schemes and
settled with federal regulators. 
Comment: Even on its own terms, that’s wrong, which is not to say the
ultimate holding is wrong.  But in fact,
that Intermountain settled does not itself show that anyone involved in the
schemes suffered “consequences” therefore; we would need a lot more information.  The court of appeals, however, concluded that
“the very existence of the resulting settlement agreement evinces the truthful
spirit underlying Intermountain’s Ethics Code,” which promised to report
observed and suspected violations of laws or policies.  Aspirational statements about federal anti-fraud
laws didn’t implicate “the nature, characteristics, qualities, or geographic
origin of [its] … services.”
 
Finally, plaintiffs challenged Intermountain’s Stroke
Pamphlet, targeted at stroke and TIA patients who have been admitted to an
Intermountain facility, as well as their family members and friends. The
pamphlet contained background material on strokes and TIAs, a “Stroke Recovery
Checklist,” an index of stroke resources, and other general information
concerning “[a]ftercare.”  The aftercare
page said that “an appointment with” a patient’s primary care provider “is
usually recommended 1 to 7 days after [leaving] to go home” and, similarly,
that visiting a neurologist “is usually recommended” “4 to 6 weeks after
[leaving] to go home.” Plaintiffs alleged that “a TIA patient who reads this
pamphlet is likely to be under the mistaken impression that he or she can
safely wait 4 to 6 weeks before following up with a neurologist.”
 
The court of appeals found this nonactionable because it
made no statement about “the nature, characteristics, [or] qualities[ ] … of
[Intermountain’s] … services.”  In the
entire pamphlet, Intermountain named itself only on the title page; in one very
small “Call 911!” icon; and at the end, as one of “many organizations that
support people who’ve had a stroke.”  Plus, the aftercare chart in particular
couldn’t plausibly mislead anyone about the scope of Intermountain’s services.  This “rudimentary worksheet suggesting how
patients might approach post-stroke or post-TIA life” was “far too vague to
support a Lanham Act claim.” Plus, if a reader reached the chart on page 10, it
stood to reason that she also read the disclaimer on page 3 stating that “this
booklet doesn’t replace the specific instructions you will receive from your
healthcare providers.”

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Reading list: the class action as trust

Posted on February 16, 2016 by rtushnet

Sergio J. Campos, The Class Action as Trust.  Abstract:

The class action is controversial because the class attorney can litigate or settle the claims of the class members without their consent. Many scholars have turned to corporate law to address the potentially disloyal behavior of the class attorney. These scholars have used analogies to corporate law to support (1) the use of opt out rights and (2) restrictions on class conflicts to constrain class attorneys, and the law has generally mirrored both requirements. In practice, however, both of these requirements have undermined the efficacy of the class action and prevented the class action from being used in many appropriate settings.

This article argues that a more useful model for the class action is the trust. Unlike the shareholders of a corporation, the beneficiaries of the trust typically cannot exercise control over the trustee. Moreover, unlike the corporation, trust law facilitates the creation of trusts with conflicts among the beneficiaries. These features of the trust mirror the most controversial features of the class action.

The article shows that both of these features are necessary to address problems of scale found in both contexts. Unlike in the corporate context, both the trust and class action contexts lack a well-developed market for managerial control which would allow beneficiaries/class members with conflicting interests to cede control to a third party with better aligned interests. In the absence of such a market, retaining control among the divided beneficiaries/class members prevents them from investing in the res/claims at the right scale.

Accordingly, trust law shows that class action requirements such as opt out rights and class cohesion are misguided. The article concludes by applying the trust model of the class action to such class action issues as the ascertainability of class members, settlement pressure on the defendants, and cy pres awards.

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