Trademark infringement on hang tags is covered advertising injury

Posted on October 23, 2015 by rtushnet
E.S.Y., Inc. v. Scottsdale Ins. Co., 2015 WL 6164666, No.
15–21349–CIV (S.D. Fla. Oct. 14, 2015)
Scottsdale insured ESY under a commercial general liability
insurance policy, with coverage for advertising injury.  Exist, an apparel maker, later sued ESY for
infringing its copyright and trademark in its Exist Shield Mark by using a
“Liquid Energy Shield Mark” on labels and hang tags for its competing garments.  Exist further alleged that the use of the
Liquid Energy Shield Mark was a false or misleading description of fact/false
designation of origin, and that this also violated state law.

Advertising injury, under the policy, included:
d. Oral or written publication, in
any manner, of material that slanders or libels a person or organization or
disparages a person’s or organization’s goods, products or services;
* * *
f. The use of another’s advertising
idea in your “advertisement”; or
g. Infringing upon another’s
copyright, trade dress or slogan in your “advertisement”.
“Advertisement” was defined as “a notice that is broadcast
or published to the general public or specific market segments about your
goods, products or services for the purpose of attracting customers or
supporters….” There were exclusions for knowing violation of the rights of
another as well as for infringement of “copyright, patent, trademark, trade
secret, or other intellectual property rights,” but the exclusion didn’t apply
to infringement in an “advertisement” of copyright, trade dress or slogan.
In order to have coverage, the insured has to show that an
alleged violation “gave rise to an ‘advertising injury,’ ” and that “there
exists a ‘causal connection’ between that injury and the ‘advertising activity’
undertaken by” the insured.
ESY argued that the underlying complaint alleged
disparagement, which could result from a false comparison suggesting another
brand is inferior. But the allegedly infringing similarity here didn’t make any
express comparison, nor did the implicit reference dishonor or denigrate Exist:
“imitation is not disparagement as there was no comparison suggesting Exist’s
brand was inferior to Plaintiffs’.” 
Though Exist alleged it suffered reputational harm by being associated
with ESY, that just means Exist thought itself superior to ESY; it doesn’t mean
that ESY allegedly suggested that it was better than Exist.
ESY’s arguments about “[t]he use of another’s advertising
idea in your ‘advertisement,’ ” and “[i]nfringing upon another’s copyright,
trade dress or slogan in your ‘advertisement’ ” fared better.  The insurer argued that the accused hang tags
were part of the garments themselves, not advertisements.  The court disagreed.  Though something that was part of the product
might not be an ad, the hang tags were attached to the garments but not part of
the garments themselves.  They provided
information and also “presumably had the additional function of attracting
consumers to the garments themselves and to the brand more generally. If the
hang tags’ only purpose was to provide information, they would not need such a
particular aesthetic.”  Indeed, many
products don’t have “fanciful” hang tags; instead they have labels “lest they
detract from the product’s appeal. The hang tags here presumably did the
opposite—they attracted the consumer.”  Given the rule that ambiguities are resolved
in favor of coverage, “advertisement” was broad enough to cover the hang tags.
Did they hang tags allegedly use another’s advertising idea?  “[T]he Eleventh Circuit, applying Florida
law, has construed the term to mean ‘any idea or concept related to the
promotion of a product to the public.’ ” So, for basically the same reasons a
hang tag is an advertisement, it is also an advertising idea, and the complaint
was also fairly read to allege that the hang tags were trade dress. 
Further, the underlying complaint alleged copyright
infringement, which was concededly covered.
Was there “a causal connection between [the advertising]
injury and the advertising activity undertaken by” ESY?  Selling an infringing product isn’t enough to
create a causal connection: the alleged misconduct has to be committed in an
advertisement.  Again, that was what the
underlying complaint alleged here.

The infringement exclusion didn’t bar coverage because it
expressly carved out infringement in an “advertisement,” as here.  The knowing violation also didn’t apply
because, though the underlying complaint alleged
a knowing violation, the underlying plaintiff could recover without showing intentional infringement.  There can’t be a duty to indemnify without a
duty to defend, and under the insurer’s logic that the allegations sufficed to
trigger the exclusion, it could end up after trial with a duty to indemnify—if the
underlying plaintiff showed liability for non-willful infringement—without having
had a duty to defend. 

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General involvement in app production doesn’t defeat 230

Posted on October 22, 2015 by rtushnet
Free Kick Master LLC v. Apple Inc., 2015 WL 6123058, No.
15-cv-03403 (N.D. Cal. Oct. 19, 2015)
 
Free Kick Master has a registration for “Free Kick Master,”
and sued Apple, Google, and Samsung, alleging that they all offered downloads
of an infringing Free Kick Master app or game. 
Though framed as direct infringement, the trademark claims had to be understood
as contributory infringement claims.  For
services, contributory liability can attach to those who continue to supply a
service to one known to be using it in an infringing manner, so long as the
service provider is also shown to have ‘[d]irect control and monitoring of the
instrumentality used by a third party to infringe….” Under this standard,
Free Kick Master failed to allege facts showing Amazon/Google continued to
supply their services to third-party app developers engaged in infringement after
learning of that infringement; no facts even alleged that Amazon/Google knew
that the apps and games were infringing until the lawsuit was filed.
 
Also, the state law claims, including the state law
trademark infringement claim, were barred by §230 of the CDA because of the 9th
Circuit’s rule that the IP exclusion in §230 means federal IP.  Free Kick Master argued that it had alleged
that Google/Apple had contributed to the alleged illegality by promising to
promote the apps, approving the apps, ensuring that the apps worked as outlined
and didn’t impair users’ devices, testing the apps for compatibility, and
supplementing them with code.  But having
content guidelines and rules, enforcing those rules, and providing technical
assistance to developers was insufficient to lose §230 immunity.  Without an allegation that Amazon/Google were
responsible for the infringing
content—choosing the names, assisting or encouraging the infringing use of Free
Kick Master’s mark, etc.—there was no claim. 
 
Samsung got out of the trademark infringement claim under
the same theories, with even more attenuated connection to the third-party
websites on which the allegedly infringing downloads compatible with its
devices were offered.  The state law
claims were dismissed as to Samsung because they were basically the same as the
Lanham Act claims; Samsung apparently didn’t argue §230, perhaps because it’s
not even providing relevant services.

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Back to the Future: 9th Cir. reverses itself in Multi Time Machine

Posted on October 22, 2015 by rtushnet
Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575
(9th Cir. Oct. 21, 2015)
 
Reversing itself (with amicus advocacy from, among others, yours
truly), the panel now by 2-1 holds that Amazon should have gotten summary
judgment for its practice of responding to searches for “MTM Special Ops” with
other, clearly labeled watches, without explicitly stating that none of its
results are for that exact product. 
Because of the clear labeling of the results, “no reasonably prudent
consumer accustomed to shopping online would likely be confused as to the
source of the products”:
 
To whatever extent the Sleekcraft factors apply in a case such
as this – a merchant responding to a request for a particular brand it does not
sell by offering other brands clearly identified as such – the undisputed
evidence shows that confusion on the part of the inquiring buyer is not at all
likely. Not only are the other brands clearly labeled and accompanied by
photographs, there is no evidence of actual confusion by anyone.
 
Sleekcraft isn’t a
rote checklist, and different factors may be important in different
circumstances.  In search engine cases,
an additional factor is particularly important, per Network Automation: “the labeling and appearance of the
advertisements and the surrounding context on the screen displaying the results
page.” By contrast, the multifactor test “is not particularly apt,” because it
was developed for a different problem, “i.e., for analyzing whether two
competing brands’ marks are sufficiently similar to cause consumer confusion.”  [Comment: I’ve rarely seen a better admission
that IIC is a bad idea.  That “different”
problem is called “whether there is trademark infringement.”]
 
But, the majority notes in a footnote, a panel can’t get rid
of IIC.  So, let’s go to the argument
that’s not about real infringement: MTM’s argument isn’t that Luminox and other
competitors’ brands have confusingly similar marks, but rather that Amazon’s
search page creates IIC, because the search results page displays the search
term used – here, “mtm special ops” – followed by a display of numerous watches
manufactured by competitors, without explicitly informing the customer that Amazon
does not carry MTM watches.  The alleged
confusion isn’t caused by competitors, but rather by the web page’s
design. 
 
Still, setting aside the multifactor confusion test,
ultimately the question is whether a reasonably prudent consumer is likely to
be confused.  Here, evaluating the web
page plus the relevant consumer was enough to answer that question as a matter
of law.  Because “the default degree of
consumer care is becoming more heightened as the novelty of the Internet
evaporates and online commerce becomes commonplace,” and because the watches at
issue sell for several hundred dollars, reasonable consumers would be careful.
 
As for the webpage, even MTM agreed that clear labeling
could entitle a defendant to summary judgment. 
Here, the products themselves
were clearly labeled to avoid any likelihood of IIC on the part of a reasonably
prudent consumer.  There were even
photos!
 

MTM argued that the use of the search term “mtm special ops”
three times at the top of the search page might lead consumers to think that
the products displayed were types of MTM watches.  But that’s silly.  I mean, “highly unlikely.”  None of the watches use “MTM” or “Special
Ops,” and some of the products listed aren’t even watches, like Jerry Ahem’s
book Survive!: The Disaster, Crisis and
Emergency Handbook.  “No reasonably
prudent consumer, accustomed to shopping online or not, would assume that a
book entitled ‘The Moses Expedition’ is a type of MTM watch or is in any way
affiliated with MTM watches.”  The same
was true of the other results.  The
standard, after all, is likelihood of confusion, not possibility.
 
MTM argued that Amazon needed to explain to consumers that
it doesn’t sell MTM watches before offering alternatives.  But anyone who can read English could tell
that Amazon sold only the listed products. 
The results were “unambiguous – not unlike when someone walks into a
diner, asks for a Coke, and is told ‘No Coke. 
Pepsi.’”
 
MTM argued that factual disputes precluded summary judgment,
but none were material.  “The likelihood
of confusion is often a question of fact, but not always.”  The Ninth Circuit has reached similar results
in false advertising cases where no reasonable consumer could have been
fooled.  Anyway, consideration of the
remaining Sleekcraft factors wouldn’t
change anything. There was no evidence of actual confusion.  As for intent, the design of the webpage “indisputably
produces results that are clearly labeled as to the type of product and brand,”
so that too didn’t favor MTM. As for strength, “[e]ven assuming MTM’s mark is
one of the strongest in the world – on the same level as Apple, Coke, Disney,
or McDonald’s – there is still no likelihood of confusion because Amazon
clearly labels the source of the products it offers for sale.”  Furthermore, Network Automation already said that the other factors were
unimportant in an internet search case involving clear labeling and a high
degree of consumer care.
 
Judge Bea, dissenting, would have sent the case to a jury on
the hypothesized IIC about affiliation between MTM and Luminox et al.  (Would consumers think that MTM had formed
relationships with all the brands
listed?)  The dissent pointed out that
other internet sites that didn’t sell MTM watches would give a “no results”
result to the “mtm special ops” search, and seemed to think that was all Amazon
should be doing too.  Maybe MTM wasn’t
right that consumers might think it sold watch parts to Luminox as a result of
Amazon’s search functions, but a jury should decide that. 
 
The majority, the dissent accused, implicitly added “at
point of sale” to the “likely confusion” made actionable by the Lanham Act, and
ignored “the possibility that a reasonably prudent consumer might initially
assume that those brands enjoyed some affiliation with MTM which, in turn,
could cause such a shopper to investigate brands which otherwise would not have
been of interest to her.”  [Note the
continued use of “possibility”—yet to avoid summary judgment MTM needed to
offer evidence that a factfinder could use to conclude that this was likely,
even if you buy the doctrine of initial interest affiliation confusion.] [Also,
how would “no results for MTM special ops found, but try these watches instead”
dispel the possibility of a suspicion that MTM had sold parts to or had some
other affiliation with the brands listed? 
As our amicus pointed out, “no results for MTM special ops, but what
about MTM Black Cobra?” would be a perfectly sensible sentence.  The “no results” doesn’t address the
postulated type of confusion.  I suppose
Amazon could program in “no results for MTM special ops, but try these other
completely unrelated, competing products with no affiliation with or
parts-selling relationship to MTM,” but that seems even sillier.]
 
Network Automation
was distinguishable because (1) it reversed a grant of a preliminary
injunction, and (2) “the ‘diversionary’ goods were clearly labeled on the
response page as ‘Sponsored Links,’ showing that the producers of those
products were the ones advertising for themselves, not for the firm named in
the search request.”  This second reason
is pretty bold, since the empirical
evidence is that consumers don’t know very much about the division between
paid and organic results despite labels of that type, and also since firms
often bid on their own trademarks anyway. 
 
“On this record, a jury could infer that users who are
confused by the search results are confused as to why MTM products are not
listed.”  [Again: not trademark
confusion!]  And those confused users
might “wonder” whether a competitor acquired MTM or was otherwise affiliated
with or approved by it.  [Also, this
would be true even if MTM watches appeared in the results.]  The risk of affiliation was especially great
for a luxury brand, since “many luxury brands with distinct marks are produced
by manufacturers of lower-priced, better- known brands—just as Honda
manufactures Acura automobiles …, and Timex manufactures watches for luxury
fashion houses Versace and Salvatore Ferragamo.” As for the Coke/Pepsi
comparison, “[n]o shopper would think that Pepsi was simply a higher end
version of Coke, or that Pepsi had acquired Coke’s secret recipe and started
selling it under the Pepsi mark. [Why wouldn’t a jury have to decide that under
the dissent’s theory?  Also, what makes
the second possibility even relevant to trademark
infringement?] 
 
Anyway, the real issue isn’t source confusion, it’s whether Amazon’s tactics caused
IIC “by attracting potential customers’ attention to buy the infringing goods
because of the trademark holder’s hard-won 
reputation.”  [Hey, wait, what
infringing goods?  At what point did
Luminox watches start to infringe MTM’s rights?]  A jury could find IIC, not just mere
diversion.
 
And here the dissent demonstrates one of the ways in which
the multifactor confusion test has become more harmful than helpful: it
contends that the majority erred in considering mark strength unimportant,
because “[a] mark’s strength is a measure of how uniquely identified it is with
a product or service, and therefore how deserving of trademark
protection.”  But one quite persuasive
point of Network Automation, not to
mention New Kids and Rogers v. Grimaldi and parody cases like
Chewy Vuiton, is that sometimes mark
strength doesn’t increase the likelihood of confusion, because of the way that a strong mark is being
used.  If we’re at all interested in
being accurate about likely confusion, even if we’re committed to using
circumstantial tests, then I don’t see why we should use a blanket rule that
the stronger a mark is, the more likely confusion is no matter what the other
facts are.
 
The dissent also was willing to treat Amazon’s intent as
intent to confuse, because “MTM submitted evidence that Amazon vendors and
customers had complained to Amazon because they did not understand why they
received certain non-responsive search results when they searched for products
that are not carried by Amazon.”  Amazon
didn’t address the complaints by explaining how its search function worked (it
also accounted for related searches and other aspects of consumer
behavior).  Amazon did nothing to
alleviate confusion, which provided “some evidence of an intent to
confuse.”  [Again, it would be nice if
everyone could remember that “confusion” is not “confusion in the air” but trademark confusion.  Intriguingly, the dissent doesn’t notice that
these very complaints tend to disprove its initial interest affiliation
confusion theory: customers understood that they were getting unrelated search
results, rather than thinking that some hidden marketplace consolidation had
taken place.]

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Hand in glove: ICE and trademark seizures

Posted on October 21, 2015 by rtushnet

More tidbits from my FOIA suit against ICE, including the
revelation that they did indeed record at least one seizure of disparaging
items, “Baltimore sucks” T-shirts.  (Other entries are suggestive, but too unclear to be sure what was seized without details.)  More
to follow, but here’s a bit from the ICE Briefing Book on what it called its “NFL
News Conference” held in early 2015, which triggered my lawsuit in the first
place: 

The NFL news conference on
anti-counterfeiting efforts will be co-hosted by Dolores DiBella, NFL’s
Counsel. Also as in past years, invitations have been extended to a local CBP [Customs
and Border Protection] representative and a local public safety official to
have minor speaking roles at the press conference. The primary topic will be
the harm to the public, economy and U.S. businesses posed by counterfeit
tickets, merchandise and apparel. The event will include only NFL-credentialed
media.

Apparently when you buy counterfeit NFL T-shirts, you’re stealing American jobs.  How many licensed T-shirts are made in the US, again?

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Transformative works of the day

Posted on October 20, 2015 by rtushnet

R. Sumantri MS, from Indonesia, paints DC and Marvel superheroes juxtaposed with Asian folk and mythological characters. Here: Guan Gong vs. Iron Man, Nezha vs. Batman, and Guan Gong vs. Captain America from his China New Supreme Power series. Discovered via David Tan’s chapter in Diversity in Intellectual Property: Identities, Interests, and Intersections, ed. Irene Calboli & Srividhya Ragavan.

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Right of Publicity Workshop Part 3

Posted on October 17, 2015 by rtushnet
Relationship to Copyright law/Relationship to Trademark
law 
 
Dryer v. NFL will
be argued to the 8th Cir. challenged by retired NFL players to
continued airing of programs recounting their exploits in actual games.  Survived a motion to dismiss.  After NFL settled a class action, moved for
SJ and dct granted it. Every single defense we’ve discussed has been raised and
was accepted: 1A based defense under C.B.C.
fantasy baseball case; statutory/common law safe harbor for speech about
sports; Rogers v. Grimaldi for TM
claims lacking express false endorsement; equitable defenses.  © preemption is important in the 8th
Cir. b/c Ray v. ESPN found preemption when a pro wrestler said that ESPN
violated his ROP by showing old footage of him wrestling. 
 
Good news/bad news: preemption is a likely win, but allows
them to avoid 1A issues, so they won’t clarify the remaining issues.  When is preemption appropriate?  And what should be done with transformative
use?  In ©, fair use is a 1A safety
valve; under ROP, you shouldn’t be applying it to 1A-protected activity in the first
place, so you don’t need transformativeness for the same purpose.
 
§301: if something is within the subject matter of ©,
whether protected or not, and the state claim is equivalent of a © right—state a
claim simply b/c someone is exercising rights of ©–then it’s preempted. ROP
gets confusing b/c there’s confusion over what the subject matter is—the thing
created by the user or the persona of the claimant, which is not protectable.
Metaphysics: Toney v. L’Oreal—a model
sues L’Oreal for putting her picture on a package and the court got tied up in
whether the subject matter was photograph or face.  Conflict preemption as another alternative.
 
§301 is incoherent and therefore not tremendously valuable;
it has this subject matter problem. Main thing it was supposed to do was to
preempt common-law copyright, and it doesn’t even seem to do that.  Conflict preemption is therefore useful.  Used to look a lot bleaker. Now there are
more cases finding preemption when there’s an authorized use at the front-end
subsequently repurposed; courts now seem more likely to find preemption as a
matter of constitutional avoidance. Problems exist: no initial permission for
underlying work; expired contract/use exceeds terms of initial contract.
 
Permission as an issue: what do we mean by permission?
Federal law may perhaps need to define what consent is for purposes of copyright
preemption regardless of whether state law purports to require written consent
for the ROP.
 
Marshall: followed Dryer
surviving a motion to dismiss, b/c athletes didn’t expressly consent for their
games to be shown on TV.  So what’s the
role of consent?
 
We’ve struggled w/ the relevance of consent.  At some level, the case is premised on the
notion that consent to do anything was coerced: an unfair deal/forced to sign
deals if they wanted to play.  Consent is
usually a Q of fact/can be vitiated by duress. 
For purposes of © preemption, we’ve argued that it doesn’t matter.  When push comes to shove, it has to be the
case that for purposes of © preemption these athletes have consented: they came
to the field and knew they were being filmed. Whether that’s consent for
purposes of common law may be different. 
Though it’s argued as §301, it’s always felt more like conflict
preemption: © defines how performances are to be protected; this is essentially
a common-law © claim repled.
 
Why should consent matter to the preemption claim? 
 
When the underlying party has consented the problems of
conflict preemption/goals of © are implicated. 
Implied consent can be read broadly. 
 
Conflict as conflict w/©’s scheme for determining who an
author is.  Consent may matter then if
the person who consented would otherwise count as an author: so Zacchini may be
in a different position than a single athlete or even a single actor in a
larger production.  If the claimant is a
person for whom it would make sense to ask “is this person an author?” then
perhaps a ROP claim implicates © preemption questions, and that makes consent
relevant.  If their performance or expressive
configuration is fixed w/out consent, then what they have is functionally a
common-law © claim; if it was fixed w/consent, then either © provides them an
ownership interest or it doesn’t and either way there should be preemption.
 
They may also have a contract that limits/expands rights in
various ways. The contract may or may not be valid, but even if you took the
contract away, they still knew they were going to be filmed.
 
Consent is a separate case. 
Finding of consent to woman on red carpet was not a preemption
finding.  T3 case: preemption doesn’t
depend on consent; you can license photos for which you own the ©.
 
Consent is fact-specific: who are you suing and what are the
terms. Are you exercising a right to which you would normally be entitled? 
 
Fleet v. CBS:
claimed their contracts didn’t allow the use of their images in the films.
Court spoke in terms of consent for © preemption; then the © rights trump their
rights of publicity.
 
What’s the linkage to ©? 
If we don’t know what the ROP is for, then what it is/whether it is
related to incentives is at least open to debate.  The argument that has proven more persuasive
to some folks, including Posner, is © as brand management—an exclusive right to
encourage efficient management of celebrity once achieved. Cal SCt explicitly
relied on incentive theory in Saderup
too in its decision to look to ©. Zacchini
used © as analogy; states used it as analogy to get life +50 or +70 in states;
to copy remedies such as disgorgement.  To the extent a ct finds them persuasive, it ought
to be motivated to apply a more searching §301 analysis—paracopyright is
exactly what §301 was supposed to get rid of.
 
But what if the ct says it’s incentive based, but the
incentive is to do something other than create expressive works.  Then §301 isn’t obviously implicated.
 
Worst use of © analogy: transformativeness! No one can agree
on what it is for ROP.  You can’t use the
person to discuss the thing that made them famous?
 
It’s really about art v. tchotchkes.  Transformativeness does this, even if it’s
stupid.
 
That’s how the case should have been decided, though it
creates problems of its own: the New Life
court got completely tangled in mugs v. calendars v. posters. But that would
have been better than what we got. 
 
OK if correctly applied: the work is transformative, used for different purpose and effect [than
what?  Than the celebrity? What is the
purpose and effect of the celebrity?] 
Relative value of the celebrity use is effectively the fourth fair use
factor folded into transformativeness. 
 
But why do people buy biographies?  Court includes that as a class of protected
works, but doesn’t explain how that works.
 
Might have been ok as articulated, but never used rationally
or consistently.
 
How do you transform a name? Several courts have said you
can’t.  And if you’re talking about a
news photo, you can’t transform that if it’s just how the person looks.
 
Cal SCt started from the assumption that virtually all
expressive works were protected, intended to be a pro-artist decision. 
 
Trademark: Would §43 cover everything that we agree is
within the legitimate scope of the ROP as we think it is?  What are the risks/benefits of such a move?
 
There is a close match between this narrower version of ROP
and §43(a)—Midler and White both also involved successful
§43(a) claims.  There may not be a
perfect match w/commercial speech, since TM is broader in the forms of
confusion it prohibits.  Doesn’t always
require, as it should, a strict invitation to engage in a commercial
transaction.  For the most part, a lot of
overlap.  What does that say about the
risks/benefits/opportunities of thinking about TM?
 
The greatest potential benefit: convince courts to think more
in terms of Rogers v. Grimaldi, if
the purpose of the right is defined more narrowly and more like the purpose of
TM—gives us a basis for balancing speech interests in a way similar to how the Rogers ct did it.
 
But TM has expanded so much; de facto existence of licensing
market makes it plausible that cts would find false endorsement in many
circumstances, especially merchandising—maybe that’s not so bad for courts’
anti-exploitation instincts, but leads us back down the rabbit hole. Does
presence in video game imply endorsement? 
Rogers is important, but then
rests on a distinction between “expressive” works and other works.  And is incoherently applied in the U of Ala./New Life case.
 
Courts haven’t explicitly grappled with where Rogers applies—but where the sum and
substance of the product constitutes the TM, a keychain or license plate
holder, they don’t engage in Rogers,
versus works that contain independent expression into which the TM is folded
where they do apply Rogers. It’s
rough and not explicit in the case law, but merch that consists of the TM isn’t
even treated as expressive in TM law. 
 
If we did a §43(a) approach, would there be a policing
requirement?  Could there be
abandonment? 
 
If we limit the wrong sought to be protected, the
endorsement should come from the celebrity itself and not from the estate—postmortem
ROP is much harder to sustain. The move people make to get around that is to
say that consumers believe that the estate licensed it, but that’s entirely
circular.  People don’t think Coretta
Scott King endorsed the statue; they may think she’s getting money, but that’s
different.
 
But what about the category of non-false claims?  Paparazzi photos of celebrities drinking
Coca-Cola—truthful ad that they drink Coca-Cola.  Courts won’t allow that campaign although it
is 100% true. 
 
Cycles us back to 1A: dangerous constitutional ground if you
try to prohibit that by state law.  Can
make a good case that implicit endorsement should be actionable, but if you
take away the misleadingness—make it absolutely clear that there’s no
endorsement—the 1A should prohibit liability. 
[Unless it’s commercial speech and the ROP still survives Central Hudson!]
 
[It says something disturbing about the current SCt that the
comments so far largely assume that they are fine with animal crush videos,
violent videogames that cause violence, and simulated child sex but we assume
that they could not stomach a rule that didn’t give celebrities rights to
control truthful commercial speech about them because that doesn’t give
celebrities enough money/property rights. 
Not something that I’m sure is wrong, but something disturbing.]

A fair amount of sentiment in the room that in fact the SCt will see the ROP as
equivalent to the animal crush video law; SCt wouldn’t see it as an IP right
because it’s a state right.  I don’t
really see that conclusion as following given the Ct’s extreme respect for
property rights created by the states. 
Even the judicial takings case suggests that the Ct won’t let states cut
back on the property rights they created. 
Alvarez indicates that
Justices across the spectrum believe in trademark rights, and I don’t think
they’re just talking about the federal right.
 
Rogers: said that
when you’re dealing w/Lanham Act you have to establish consumer confusion and
ROP doesn’t require that, so there needs to be more 1A protection for that very reason. The Third Circuit turned
that on its head, for no sensible reason. 
We’re really giving celebrities a right of control, not a right of
reward.
 
People do have a visceral reaction to advertising use versus
expressive products.  But can’t think of
a way to implement that distinction in a satisfying way.
 
A way to use TM to give some comfort to the Ct?  Haelan
was justified b/c celebrities would feel deprived if they could no longer
benefit from their endorsements. Given §43’s expansion over the years, there’s
become much less of a need for that. 
Complementary federal protection.
 
Does the expansion of stakeholders—people giving likes on
Facebook as potential claimants—play into this?

Even if they cut back on commercial speech doctrine, SCt will find a way to
deal with the false endorsement issue—maybe by using fraud.
 
If you use TM analogy, do you get postmortem
rights/transferability?
 
It’s more of a justification—doesn’t mean we take all the
rules for TM and transfer them over. [In fact, try a broader false advertising
justification—then you don’t get postmortem rights and transferability at
all.]  Make Rogers seem relevant by identifying the harm we’re trying to
prevent as consumer deception, in which we have a ready-made test for
expressive works that incorporate celebrity identities. If the harm is that
somebody made money and the celebrity didn’t get paid, then Rogers won’t work.  But that won’t fit many of the suggested
justifications for the ROP; the conclusion has to be that the 1A puts many of
those justifications off limits.
 
One sign of how bad transformativeness is as a test is that
putting Paris Hilton in an NCAA video game is easier to justify than putting an
actual player in.
 
Rogers exists for
a reason: needed something to allow people to use names/etc. in expressive
works without vetoes.  Anybody who’s put
a TM in a true expressive work w/o permission of owner has gotten a letter;
there were lawsuits way back when where TM owners lost. But fundamentally they lost
and courts said “no one would assume endorsement or sponsorship in this case.”  Today, where product placement is in 75% of
works—that case doesn’t come out the same way without Rogers.  That’s why it’s
important that Rogers is a standard
that does not rely on an empirical test. 
[Rogers rejected a consumer
survey even accepting that it was well-conducted.]
 
The risk of TM world is that, if any connection is thought
of as sponsorship/endorsement, then TM isn’t a limiting principle. SCt might
not automatically treat Rogers as
good law.  Rogers works as a bulwark against that by saying “if it’s
artistically relevant, we don’t care if it’s confusing,” as long as you weren’t
explicitly misleading.  But: If you look
at TM as how the SCt has articulated it, they might not like Rogers.
 
Current Ct seems better on TM, though.  They might well be fine on Rogers. If they think of it as an IP
question, much better that they think of it as TM than as ©!
 
Practical Issues (but not unrelated to principles)
 
How to frame the issue to the SCt: straightforward
commercial speech case: not commercial speech and fails strict scrutiny.  That’s all that’s necessary.  Role of Rogers:
one of our smartest appellate cts has already thought through the issue and
gotten there; just clarifying relationship of Rogers to 1A.  [Why does the
rump liability of Rogers survive
strict scrutiny?]
 
Cite Stevens: not
low value speech; standard interests cited are not present/not compelling/the
right is not narrowly tailored to them. 
 
Logistical question: do you have to do that if you succeed
in the doctrinal reframing? One thing the Ct could do is say strict scrutiny
applies b/c it’s content based and send it back to the 9th
Circuit.  If it’s not commercial speech,
9th Cir’s approach was wrong and strict scrutiny applies. Do you
need to preemptively think up and defend against justifications?
 
Use Zacchini
affirmatively as: the lower court misread Zacchini.
Torturing it so badly so they end up w/ “it’s unprotected b/c it’s accurate.” 
 
How do you take on Zacchini?  Wrongly decided?  Distinguishes itself: a complete
performance.  Narrowly
tailored/compelling interest.  Ohio SCt
used the words ROP, but that doesn’t mean that everything that includes the
words ROP is Zacchini: a common law
proprietary right in complete events. 
 
What is the right level of scrutiny that should have applied
in Zacchini?  Good question! Now we know it’s content
based; decided before SCt addressed the relationship between 1A and ©; need not
address whether state common law © is treated the same way as federal ©, b/c it’s
almost all preempted.  Even setting
preemption aside, could say strict scrutiny applied and the nature of
claim/interest differ and Ct needs to decide whether it would come out the same
way, but it’s still nothing like EA v.
Davis.
 
Path of easiest resistance: just distinguish Zacchini. 
 
What if the SCt doesn’t take this case? What’s next?  Only place for coherent nationwide rule is
SCt.  Would need to find another
case.  (Pirelli?)  Jim Brown case is now in the state court of
appeals. 
 
What kind of case will plaintiffs look for?  Sympathetic Ps, like NCAA athletes.  Hurt
Locker: ex-Marine?  You took his
story/his life!
 
The problem is that the Ds are giant companies that make
millions off the works. We need a D who’s a poor struggling filmmaker.  [SCt may be perfectly sympathetic to giant
companies.]
 
Talk to the Ct about the creative process involved in making
these games—creativity, skill, imagination. 
Dryer, Sarver, Marshall: no
court has gone so far as to treat movies like video games, so we never get to
the SCt b/c the Ct doesn’t disagree with the cases and the movie companies
oppose cert. Gutsy to not oppose cert and say it’s time to decide this
issue. 
 
That didn’t work so well in Aereo.
 
There are sympathetic game companies.  Not every potential D—or every real defendant—is a big
company/unsympathetic. 
 
Do they still think this is trivia that they’ve been forced
by logic into protecting?  Very important
not to make this sound as if we think the world is crumbling. 
 
Biopics: there’s no way to draw a line.  Videogames can be educational/used in
training. Won’t just be trivial.  New
form of interactive storytelling, not like merchandise.
 
If the Ct takes the case: what kind of amicus briefs? 
 
A good argument would focus on the fact that interactivity
is not exclusive to video games: it’s part of reading, going to the movies;
insofar as videogames are perceived as interactive, they are not different from
anything else. Marshal the literature community in some form, the movie
community.  Educators, history teachers.  Ken Burns?
 
Videogames with multiple levels, creative elements.  [That makes “transformativeness” look like an
ok standard.] Better to have a realistic, complicated game.
 
Was Brown driven
by perception of the material, or resentment of the California legislature
caught up in anti-violence?  Predecessor
cases like Kirby were fantasy;
reality simulation games are losing, and those viscerally feel less like
literature.  Should focus on why to
protect reality-based games.  Biopic
producers would produce a good brief.
 
Remarkably, there were no amicus briefs in Zacchini: Court took it as a sign that
industry stakeholders just didn’t care. 
 
There is a risk that the Ct could backtrack on Brown. Must emphasize importance of
throwing traditional expressive works under the bus. Brown is about speech regulation by the gov’t; they won’t have any
trouble saying this is a different context.
 
Focus on the fact that there’s no principled difference b/t
games and movies.
 
Educate the Court about the range of laws, the
inconsistencies, the incredible breadth of what the states are doing.  Get facts in about reality of industry.  What you have is a national product that with
the internet can’t be limited to certain states.  The state with the strongest ROP sets the
rules for the nation.  Vast investment
for motion pictures/need for predictability. 
 
EA takes many licenses—stadiums, NFL teams.  If the Ct rules in EA’s favor and uses Rogers, does that mean that it’s free
for all for other competitors to use all these trade dress features of
games?  [Yes, it should.]  Have the stakeholders thought this
through?  EA games could be lower
price/higher quality if it faced more competition from others who could use
realism.
 
Some is copyrighted. 
But EA was asked that at oral argument and it’s willing to take that
result.

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Right of publicity workshop part 2

Posted on October 17, 2015 by rtushnet
How is the “right” to be reconciled with the First
Amendment?  
 
Could be part of the vast universe of communication that isn’t
protected speech: Fred Schauer’s writing. 
Contracts aren’t protected by 1A, etc. 
Could just be market behavior. That won’t work for ROP b/c so much of
the regulated stuff is art.  [And
commercial speech.]  Not low-value in SCt
sense.
 
Next: explaining the tort involves subject matter
restrictions, viewpoint restrictions, content restrictions—thus you get strict
scrutiny and need a compelling state interest, narrowly tailored.  If it were judged this way, it couldn’t pass.
There’s always a less restrictive alternative: to create a prize system for
celebrities; create a compulsory license scheme.
 
Next: strict scrutiny is irrelevant to defamation
torts.  Content-based, viewpoint-based,
speaker-based.  1A applies to certain
classes of expression and remedies.
 
Next: Double down on Zacchini
and argue that the publicity tort is just like ©, an info production
device/engine of free expression with built-in 1A exemptions and rules.  Not very persuasive; have to believe the
purpose is info production and that’s not persuasive.  [Unless Zacchini is limited to its common-law copyright core where the right is one over his performance and not a right based on identity.] Also, not sure there’s a generally agreed-on
1A-friendly limits like idea/expression and fair use.  Grimaldi
perhaps attempts precisely this: to graft onto the tort a set of things kind of
like fair use (also see analogy to TM law). 
 
Next: this is secretly a privacy tort and no one knew about
it.  Inequalities of power/need to trust
another party can found fiduciary duty, and thus falls outside 1A.  Doesn’t think this works either.  If you think ROP is dignitary in part, maybe
this works.
 
Next and his suggestion: based on commercial/noncommercial
speech distinction.  Commercial speech
doctrine treats certain classes of speech as unprotected entirely: false or
misleading. To the extent ROP involves false or misleading attempts to hawk a
product, this is just consumer protection law. But not all of ROP can be so
described. (1) if not false/misleading, it either has to survive strict
scrutiny or has to be classified as truthful commercial speech regulable under Central Hudson.  (a) He is falsely claiming I endorse his
product—unprotected.  (b) Noncommercial
use of name/likeness—protected.  (c) Most
interesting: commercial speech but not purely misleading or false: Central Hudson, but until recently that
gauntlet was easier to run and allowed state to engage in somewhat broader
regulation than ordinary political/cultural speech would allow.
 
If rt limited to misleading commercial speech, overbreadth
and prior restraint doctrine doesn’t apply, making existing law make sense.
 
That all made sense 5 years ago, but it’s Tony Kennedy’s Constitution
and we all just live under it.  INS v. Sorrell put into Q the difference
between the standard track for public discourse regulation and the commercial
speech track—content-based and speaker-based restrictions = heightened scrutiny
even for commercial speech. That really screwed things up, since commercial space
is always content-based and speaker-based. 
Sorrell didn’t touch the
false/misleading v. nonmisleading commercial speech distinction, though, and as
long as that’s in place it’s possible to justify a slimmed-down ROP.
 
How do you define commercial speech?  One Q is whether all forms of what Dogan
& Lemley have called false endorsement to be a proposal to engage in a
transaction.  If yes, then no
problem.  If no (playing music at a
political rally is allegedly false endorsement, according to many singers),
then there is an issue. Would a ban on false political endorsement survive
strict scrutiny?  I think yes.  Not pure consensus in the group.
 
Thin conception of ROP leaves false light and defamation on
the table, as long as NYT v. Sullivan
standard was met. 
 
When you limit the tort to false endorsement/no relationship
to use of person’s likeness, courts just have a knee-jerk reaction to the need
to compensate people for a wrong done. Has had judges say: if you follow Rogers v. Grimaldi, it eviscerates the
right of publicity.  Which, yes.
 
What if there’s an advertising use where the person actually
does use the product, but didn’t consent to the use of her picture for an
endorsement.  Literally true: how does
that come out?  Maybe the state can’t
require more than a disclaimer under conventional commercial speech doctrine
b/c it’s only “potentially” misleading rather than “inherently”
misleading. 
 
How does Abdul-Jabbar
come out? Truthful claim that Alcindor was the 3-time champ; ct says commercial
context means audience believes there’s an endorsement.  It’s misleading, that produces a remedy, but
it’s not clear whether the remedy is ban or disclosure. 
 
Tom Cruise avatar appears in the film without permission:
that’s a different case though you can imagine an endorsement story. 
 
Rogers is not an
ordinary false endorsement test from the perspective of nonconstitutional false
endorsement law.  It explicitly rejects
dependence on every source of evidence that courts traditionally consider in
nonconstitutional false endorsement cases. 
There is an error-avoidance rationale for this, but (1) that needs some
justification in itself, and (2) it doesn’t explain the no artistic relevance
prong, which is a rump unfair free riding justification. 
 
Commercial use is usually ordinary public discourse/strict
scrutiny.  Commercial use doesn’t mean
that we’re at commercial speech. 
 
Is disclosure enough? 
That is a Central Hudson question.
 
A movie in which Tom Cruise is portrayed being himself seems
like an easy case.  It’s only the Tom
Cruise avatar playing another character that seems to drive courts crazy. 
 
Can a false endorsement turn something that isn’t otherwise
commercial speech into commercial speech? 
[Compare a standard false advertising claim: BMW funds a film in which
BMW is shown, among other things, performing well and passing emissions
standards.  Can a regulator challenge the
factual representations made in the course of the otherwise 1A protected film?
I think the answer is yes, though very few people in the room agree with me.  I’m also a fan of Rogers v. Grimaldi, though.  But
I am willing to believe that false endorsement claims can satisfy strict
scrutiny even for noncommercial speech (which Alvarez actually suggests). 
Only Alvarez can save us.  Alvarez
forces us to ask: Falsity over what? What harm does the falsity do?]
 
Suppose it’s a disparagement of someone else’s competing
product in the BMW-funded film.  I think
that’s still commercial speech, like Lexmark,
but lots of people disagree with me.
 
Jewel v. OSCO:
Judge said—yeah, on its face it’s a congratulatory ad, but the only reason they
took this ad out was to promote their own products. If you’re using the
commercial speech doctrine, we have to face the reality that corporate entities
put their names on stuff to sell products, even if those products aren’t named
in the ads.  Positive association
w/BMW.  [Which is why falsity is such an
important constraint on the regulator’s ability to act!]
 
Baseball cards: modern ROP starts with images on baseball
cards. Packaged w/gum, but not advertising the gum.  That doesn’t seem like commercial speech to
me under any test articulated.  But it
also doesn’t seem to be possible to get to Haelan’s
result and apply strict scrutiny.
 
NFL Films: gets a commercial benefit from producing its
films, but fully 1A-protected despite its economic interest.  [I agree, but it’s not b/c no factual
representation was being made.  It’s b/c
the alleged falsity in Facenda wasn’t
sufficient to justify gov’t intervention. 
This is why I care about Alvarez:
Alvarez tells us that falsity isn’t
enough; the falsity has to do a certain kind of harm, which can be determined
wholesale in some cases and retail in others, in order to justify regulation.  Facenda
isn’t a problem because it treated films as a subject of regulation, but
because it considered that the possibility of consumer confusion about whether
Facenda endorsed NFL Films over and above having announced for the NFL for
decades was significant enough to justify liability.  The harm to consumers, or to Facenda, from
this purported confusion was not enough (not to mention not proven with nearly
the certainty one would want before suppressing a message truthful on its face).]
 
Broad dissent on the assumption that commercial speech
doctrine will remain as it is.  Kennedy
may be wrong, but what he said was that content-based distinctions are
presumptively unconstitutional and that speaker and content are both ways to
get to presumptive unconstitutionality. [Which is why I think that the FDA and
the FTC and the SEC are very much in danger from many of the theories we might
advocate to get rid of the ridiculousness of the ROP.  There’s a reason that the SCt dismissed Nike v. Kasky as improvidently granted—you
couldn’t write the opinion for Nike without clearly driving a stake through
those regulatory agencies.  The Cal. SCt
had the right idea about defining commercial speech through factual
representations for purposes of false advertising law.  Though no one here agrees w/me.]
 
Is it plausible that there will be nothing left of the tort
if the SCt abolishes the commercial speech doctrine? Or will we be left with
the worst of both worlds—strong ROP because that’s a property interest, no FDA?
 
As a practical matter: We’re not going to end up with a
world in which falsity in commercial ads is going to be treated as favorably as
falsity in political ads. 
 
The real risk of applying strict scrutiny then is withdrawal
of scrutiny from ROP in its entirety. 

If the real likelihood is being thrown into a category of its own, we need to
look at whether there are internal limits on the ROP.  They could just say it’s not a new exception
but an old one: Zacchini, Gay
Olympics, copyright are all the same and all ok/exempt from the rest of 1A
doctrine.
 
Uses that seem troubling to other people—worries about
judges wanting to create some remedy.  So
what can we think of that will be second-best? 
[I think that may be unambitious, given that the defamation bar thought
the same thing pre-Sullivan—of course
there will be remedies for abuses!]  If
we go with false endorsement, then most merchandising uses will be false
endorsement.
 
Nobody knows what merchandise is after the 3 Stooges case.
 
Yes, but you can say that many instances of merchandising
use involve a plausible claim of false endorsement—when marks are used as
products, that implies endorsement, or at least (doesn’t believe that) courts
have accepted that theory for pure use of image on T-shirts.  So as a practical limit, use of persona as
intrinsic part of product is actionable b/c that causes confusion.  [So what’s left of Rogers after that?]  [This is
why we need to think about the justification for Rogers as part of this inquiry!]
 
The key is framing Davis
sympathetically, when the equities all seem to lie w/the other side for lots of
people.  Frame these issues ex ante:
censoring the depiction of history in realistic media, whether a video game or
anything else. Consider a videogame about simulating elections: Should Dan
Quayle or Hillary Clinton have the right to say no?   What about Manuel Noriega?  Right to control how anyone can experience
the video game: practical problems—that’s a lot more attractive than “should we
share the revenue after the fact?”
 
Functional products v. expressive works.
 
But a poster of Che Guevara is clearly an expressive work
and courts throw it on the other side of the line.
 
Sure, Cal. SCt screwed that up with T-shirts.  A T-shirt is a functional product that may
have expression on it; just b/c you could put expression on it doesn’t make it
protected by the 1A.
 
But the cts have said that it’s unprotected even if  you put expression on it.  There’s a whole body of case law and
instincts.
 
SCt doesn’t care about lower courts.
 
But it may care about instincts.

There’s a distinction from using a likeness in an expressive work (calendar) to
advertise a car and we shouldn’t let them be mushed together. 
 
Baseball card and statue are only valuable as expressive
works, whereas a T-shirt and a coffee mug have value aside from that.  Saderup
didn’t like having T-shirts be sold so they made up a test to prevent that.

Average person would be comfortable with a rule that says “you can’t sell
T-shirt w/Michael Jordan’s image on it w/o permission,” but sees value in video
games.  If you bring people along to the
result that these games can’t get made/can’t get made without private
censorship, they’ll reject the ROP claim.
 
What if the SCt said, we can address that using eBay? Might just say that there are all
sorts of situations where these images are paid for, and so we should just create
a licensing regime.
 
No one would make such a game and await suit with no set
price.
 
Compulsory licensing?
 
Licensing is still unfair treatment of video games v.
biographies—no one would say that it’s ok to have a damages-only remedy for
biographies.  We all agree on the truly
historical expressive works.  The fact
that people do make life rights agreements doesn’t mean they have to; some
judges and in-house counsel seem to be under the misimpression that life rights
agreements are required—but the practice of doing it risks building it into the
law.
 
Doing it to eliminate risks. [But why doesn’t that mean that
courts could reasonably say “get a license or do not make the movie,” as they
do with copyright?  Going forward in a
world in which everyone else gets licenses looks negligent.  Not that I agree with this reasoning but I
understand why judges mistake the meaning of these agreements.]
 
Trying to figure out an answer to: “if we rule for EA, isn’t
the T-shirt allowed?”
 
Lawyer can respond: “that’s not my case.”
 
Doesn’t think that will work; thinks an exception will be
found for ROP, though own normative take is unlikely to be adopted by SCt. So
we need to frame some built-in speech protections like speech.  Fiction is compelling but dangerous.  One problem was Davis disfavoring realistic portrayals—jeopardizes nonfiction.
 
We need to articulate something the SCt can adopt at least
in broad outline if it doesn’t do the details. At least for realistic
depictions, in noncommercial speech, X should be protected.  That are not exploitative.  [What does “not exploitative” mean?]  I like Rogers,
but you could read ROP out of existence that way b/c everything is artistically
relevant—which most of us like, but not everyone will. 
 
Many state statutes have language excluding from the scope
of ROP the core 1A stuff. One could make an argument that, like fair use and
idea/expression for ©, those are constitutionally required as an overlay and
they have the advantage of existing in many states; it’s not totally
foreign.  If those get strong enough
through statutory analysis/constitutional avoidance, you narrow the problem
even if you lose the tchotchke cases.
 
Hard time w/concept of constitutional overlay/privilege—looking
at defamation etc., the only reason we have a constitutional overlay is b/c SCt
decided that lots of speech was protected and came up with definitions of
acceptable versions of the torts.  We
always thought defamation etc. weren’t speech w/in 1A. This is clearly speech,
not an unprotected category; what justifies a constitutional overlay?
 
Structurally the issue is a little broader—it’s not so much
that these are nonspeech categories, but pragmatic view: certain forms of
regulation are inevitable; we want privileges/overlays when courts think there’s
something inevitable.  (1) we don’t need
to say child porn is non speech to recognize that it will remain regulable. (2)
libraries are going to engage in viewpoint based content selection;
inconceivable not to do so. Island Trees:
there’s an exception/overlay for partisan political viewpoint discrimination—a broader
phenomenon than just defining things out of the 1A.
 
With this SCt, the one hot button issue is that they shouldn’t
recognize a new category of unprotected speech—good for our side.
 
Hustler v. Falwell:
we don’t need a new privilege/overlay, just a recognition that this is asked
and answered by NYT v. Sullivan. You
need a provably false factual statement (endorsement) that does harm; maybe
intent to imply endorsement is also required.  All of these cases are about end runs around
libel laws to control what people will say.
 
The problem w/fair use is that we don’t even know what it is
we are fairly using. Still haven’t figured out the core of this right that’s
worth protecting/allowing other to use. 
Transformativeness test was from fair use, and it’s incommensurable.
 
Can ask for constitutional purpose, or purpose of the right.  If you say this is about false commercial
speech as the paradigm case, then you would say that what Congress/state does
in creating tort is to ensure the free flow of truthful info about sale and
purchase of products; tort assists us in that purpose.  That’s not what a lot of people think the
tort is primarily about, but it could be. Dignity/misappropriation/free riding
version would be different. 
 
New state IP rights to identity in general—not ok.
 
Don’t advocate for less than what you want: strict scrutiny
for everything, then strict scrutiny for noncommercial.
 
But Gay Olympics, ©, etc. may make that a dangerous pitch.
 
Does the pitch have to be, “you blew it in Zacchini” or “you need to cabin the
acceptable result in Zacchini”? If
the latter, you need a theory of the 1A under which the cabining works.

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Right of publicity workshop at Yale

Posted on October 17, 2015 by rtushnet
Right of Publicity Workshop
Yale Law School
Information Society Project
Abrams Institute for Freedom of Expression
 
Chatham House rules apparently allow me to disclose my own
participation, but not that of others, so I’ll just take some notes on whatever
catches my ear.
 
Introductory Background Briefs       
1.  Current state(s) of
right of publicity law: background: nonconsensual use of someone’s identity,
sometimes limited to commercial purpose (not commercial speech)
1) The origins of the right of publicity: we have some
mythologies about its development; reality takes us in a different
direction.  Right to privacy origins: we
now think of privacy and publicity as almost opposites—one focused on dignitary
harms/secrecy, other on property.  But
they originate together—the first right to privacy cases in NY etc. were what
we’d now consider prototypical right of publicity cases: Pavesich, etc. Claimed
harm was emotional/dignitary, but information was not private (ordinary photo,
used on ads).  Instinct that person
should be able to control how/when image is used in public, at least for
commercial purposes, exists still.
 
2) Its Evolution: Common story of shift to publicity: actors
etc. wanted to commercialize identities; not injured in dignity, but just
wanted to be paid for use.  More like an
IP right. But this is only part of the story. 
(1) Series of decisions that were, I think, a wrong turn—that public
figures couldn’t suffer privacy harm from use of images w/o permission. (2)
Corporations wanted to take control for themselves of profitable control of
individual identities.  Haelan Labs: Romantic language of
baseball player’s ability to commercialize identity for own well-being, but
this was actually a suit b/t two corporations, both of whom had been given
permission by the baseball player—the case was about which corporation would be
able to control him. Thus movie studios were advocates of ROP at that time—Nimmer
was lawyer for MPAA when he wrote his big article advocating for it.  Maybe movie studios have had cause to regret
this!
 
Zacchini opened the
floodgates by rejecting a 1A defense in the context of a news broadcast. 
 
3) Some Current Contested Places: Many states recognize
misappropriation only; some statutory and common law.  States vary in what’s covered—name, likeness
(Tenn.); + voice (NY); any indicia of identity (Ala.); evokes the identity
(Cal. as interpreted by 9th Cir.); postmortem rights vary widely (NY
none, Ky. 50 years for public figures; Tenn. 10 years unless commercialized,
then forever; Ind. 100 years). Some states allow anyone to sue; others require
commercial value; others require commercial exploitation.  Some who require commercial value assume that
use in commercial context evidences commercial value.  Most states limit to domiciliaries, Wash.
& Haw. don’t.  Some states require
use in ads, but very few. Others: commercial purpose, trade purpose, advantage,
any purpose. Forthcoming article in Georgetown Law about this. Utah limits to
use that rises to the level of false endorsement.  Exemptions also vary: expressive works, news,
sports broadcasts.  Defenses vary too.  Rothman’s ROP roadmap—shocking
level of variation.
 
Contests over evocation of identity; expansion by states in
Ala., S.D.; pending NY law for postmortem rights.  Transferability problems; particularly concerning
that there could be involuntary transfers in bankruptcy, marital dissolution,
NCAA contracts of student athletes.
 
Conflict with © law; elephant in room: conflict w/1A.
 
2.  Introduction to
the current relationship of right of publicity to copyright, trademark and
privacy principles:
 
A.        Preemption:
301 © preemption and conflict preemption. 
Current status: incoherence—some cases find preemption with respect to
core uses of copyrighted works used with authorization from the copyright owner,
at least for film and photos; others do not; the distinctions offered depend on
metaphysical claims that in one instance a copyrighted work is being copied—this
is usually offered as the reason when a court approves a standard nonadvertising
economic exploitation of a full copyrighted work—and in another an
uncopyrightable face or voice is being copied—this is usually offered as the
reason when a court condemns an advertising use or the use of a photograph or
other image; this distinction doesn’t make any sense even in statutory terms,
much less in logic.  §301 preempts causes
of action that fall within the subject matter of copyright, even if they are excluded from copyright protection—for example
a state claim that tried to protect the uncopyrightable facts in a copyrighted
work from copying would clearly be within the subject matter of copyright and
be preempted absent an extra element; by the same logic, a state claim that
tries to protect the uncopyrightable face or voice in a copyrighted work from
copying should also be preempted, absent an extra element such as a false
endorsement.  I have also argued, with
Jennifer Rothman, that conflict preemption is appropriate in many cases, even
if §301 doesn’t apply.
 
Particularly notable because the ROP as accepted in Zacchini is arguably simply common-law
copyright: the relevant question should be who is the owner/author of the
unfixed performance.  Siegel article
makes the point that Zacchini’s harm claim here would be the same if he’d
launched a pig out of a cannon instead of himself: his claim is not a personal,
dignitary one, but an economic one, similar to the dominant US account of ©.  If the common-law copyright reading is
correct, then preemption would be broad, although the issues would then
intersect with the current ferment surrounding performers’ ability to claim
authorship rights in works of performance that they haven’t exactly consented
to being filmed in.
 
B.        Ownership of
creative works/interference with exercise of copyright rights even without
preemption. Question of whether people are any better off when dealing with
large entities or whether contracts are just written more broadly: the right
protects people who made their deals before the right exploded, not afterwards.
 
C.        Incompatibility
of First Amendment defenses/theories between TM and right of publicity: 9th
Circuit cases in which TM claims fail on First Amendment grounds, Brown v. Electronic
Arts, but RoP claims based on the same acts—presence of depictions in a video
game—succeed, Keller v. Electronic Arts, because the RoP case uses
transformativeness as its test.  RoP
broader even though its justification is purely private, as opposed to the
ostensible consumer protection objectives of trademark.
 
Note previous discussion of exemption for “expressive”
works.  1A perspective: Say what? They’re
all expressive.
 
D.        Privacy: in
general something that is truthful and open to the public is fair game, at
least as to well-known figures; right of publicity breaks through the barriers
otherwise used to limit privacy torts’ interference with First Amendment
interests.  Commerciality might be used
as a limit that had an internal relationship to the justification for the
right, but presently it’s not, at least in California. 
 
3.  First Amendment
theories relevant to thinking about right of publicity
 
Strategic point of view: Bias against the visual; not just
from the law—it’s a human reaction. 
Affects willingness of people to approve control—a written work of
fiction is deemed more ok than an image. 
How do you deal with that from a 1A advocacy perspective?  Here, more than in other areas, standard of
review matters enormously.  Reed v. City of Gilbert: enormous
significance.  [I agree, except I also
think w/the concurrences that the Court can’t possibly mean what it says; if it
does, then the 1A is Lochner and
regulation is basically over.  If it
doesn’t, though, we’re in for years of incoherence as it’s applied in some cases
and not applied in others.  But see below
for a cogent critique of my blitheness.] 
Reed majority says a law is
content based if, on its face, the state has to look at content to figure out
if it’s protected, and then it’s strict scrutiny/presumptively
unconsititutional. Combined w/Sorrell,
a big deal.  Breyer concurrence: result
will be watering down of strict scrutiny, which is not so good.
 
Lawyers have a tendency not to take cases as seriously as
the judges who write them meant them.  Twombly rewrote the law of civil litig. by
having district judges pass on litigation by reading a complaint.  Bar didn’t believe it, and lower ct judges
for a while didn’t believe it.  That’s
not what they thought a motion to dismiss meant; but now it’s cited in every
case.  Same was true of Goodyear about personal jurisdiction—J.
Ginsburg rejected Cardozo’s opinion of years before, scores of years of litig.
and said there’s no general juris. over a corp. except where it’s “at home”—principal
place of business/registered to do business. 
Thought the Ct. couldn’t have meant that, but it’s clear that it
did.  Also true of NYT v. Sullivan; no defense bar as such when the case came down,
when such cases were dealt w/by private detectives and not 1A lawyers—thought it
was specific to the civil rights context. But we learned that libel law had
been federalized and constitutionalized. 
Reed will be the same.  1A side has a much better chance of getting
strict scrutiny than previously.
 
A particularly attractive way to think about Davis v. EA from 1A perspective is to
view video games as a new form of fiction. Syllogistically true: fiction is
protected if not defamatory; video games are fiction; thus unless there’s
discrimination against video games/the visual, video games should be protected.  But there is!
 
Bottom line advice: be careful not to seem to mock the
notion that there could be protection in this area, given the fact that lawyers
who don’t work in ROP context think there should be ROP in images.
 
What is the nature of the “right”?
With most IP rights, there are lots of predicates.  With ROP, the only standards are there must
be some kind of evocation and some kind of use—lack of clarity on what right
does/doesn’t protect is intimately bound up with lack of clarity on why we have
the right in and of itself.  So if we
could justify the ROP we could think about how that translated into rules and
limitations.
 
(1)  
Incentive-based. 
But incentive to do what? Become a celebrity?  Efficiently manage your image?  More IP-oriented.
(2)  
Consumer protection mechanism, way of preventing
false endorsement/misleading consumers.
(3)  
Privacy-based.
(4)  
Self-expression/self-definition from control
over one’s image to constitute self as human being.
(5)  
Inherent moral right: it is me and therefore I
own it.
(6)  
Unjust enrichment/fairness.
(7)  
Labor/reward—moral right that isn’t dignitary
(8)  
Economic harm: use could harm the person’s
career b/c of the way in which someone is used in the ad—compare Google v.
Garcia
 
No one can realistically believe that people want to become
star athletes to get endorsements. [I’m not so sure.]
 
But what about people who are famous for being famous?  Didn’t mean looking ahead to exploitation—they
wanted to be famous.
 
But these people work hard to become something, and you’re
exploiting that—free riding.
 
Even if we thought it gave you an incentive, whether we
thought the law needed to encourage it would be different. But anti-free riding
impulse is different from incentive story.
 
Incentive story is ex ante; free riding story is ex
post.  People who’ve invested their labor
in sports, or in being famous, have done something society considers to have
value and as a moral/natural rights matter they and not someone else deserve
the rewards. Unjust enrichment.

If a bunch of fans got together and programmed a noncommercial football game
using images of the players, bets that courts would feel very differently about
it.
 
Ability to make a lot of money off of Nike shoes seems like
a fair reward for working hard to be a celebrity. A fairness concept.  The difficulty is that spread well beyond
Nike shoes to other expressive media just b/c people pay for expressive media.
 
Expansion of law happened on advertising side—using a name
to promote a commercial product isn’t fair; meanwhile, the media bar ignored it
b/c we weren’t concerned about advertising until it bled over to (other) 1A
issues.  [Which was always weird b/c
those ads were always protected by the 1A if not false/misleading.]
 
But if it’s unfairness, not clear why it would be limited to
advertising.  If I make a lot of money
from a movie, why is that any better than making a lot of money from a car
dealership?  False endorsement.  But false endorsement also crept into movie
cases!  Theory of harm from use of the
image where people might believe you signed on to this and that might harm your
image or block you from other deals.
 
UK—no right of publicity as such.
 
Unjust enrichment doesn’t fully capture it—litigation is always
after the fact; it’s principally whether someone should be paid for it.  One side: person ought to have the right to
say no ex ante, whether you can do it or not, even if you’re willing to pay—that
aspect got lost in Keller and Hart where after the fact it seems so
easy to just create a settlement/pay. Principal reason to distinguish b/t
advertising and non-ads is that we don’t want that kind of control to exist
over non-commercial speech.  Not fair to
give people ex ante control over non-advertising speech about them.
 
Boundaries of what is perceived as commercial goods/services.
Box of cereal = yes.  Description of me
in a textbook = no.  But T-shirt with
picture on it?  What is that: expression
or product?
 
We have in the 1A a doctrine that is supposed to do that:
commercial speech.  Box of cereal = yes;
you in movie/game = pretty clearly no. 
Merchandising right: interesting. 
Poster of Che Guevara, bust of Martin Luther King—it’s not advertising,
but the right of publicity is the
expressive use.  Who thinks rights should
cover merchandise like T-shirts? Basically no one in this room.  But most of the litigators in the room would
accept such ROP coverage to save the other stuff.
 
But unjust enrichment has bite in that case, where the only thing being sold is a representation
of the celebrity—T-shirt w/Rihanna, bust of MLK.  Money solely by capitalizing on fame.  May also be a dignitary issue that underlies
it—Tom Waits’ distaste for advertising. 
Maybe we’d like to be able to give people control over what types of
products their image appears on.
 
Conflating two separate discussions: we don’t value most of
these interests highly.  Can we identify
the motivations for the recognitions of the right?  Do we accept any of them.
 
Strongest claims are Bette Midler-type: I don’t do ads and
you made me look like I did. But you could structure the law just to protect
that.  Could allow people to get
injunctions, but not damages and not alienable right to injunctions.  No right to trade it for money.  Kim Davis bobblehead doll: if she doesn’t
want a doll that says “praise Jesus” every time you shake it, should she be
able to effectuate that?
 
John Gotti has a more valuable ROP than the current Nobel
Prize winner in chemistry—what does that tell us about incentives?
 
Political economy: they find a celebrity from the state and
argue for protection based on the value of their persona. 
 
Tort rights exist for the mishandling of a dead body; but
are ROP the same kind of rights?  Stated
as control over economic value—not the same as dignity.  Why not postmortem defamation law to protect
dignity/family?
 
If we talk about the deceased celebrities’ rights, the
justifications above often go away.  The
issue of endorsement by the estate is accepted in TM law; though that
acceptance is circular/we don’t really ask about whether people think the estate
has actual interests.  Astaire’s widow
promoted postmortem rights b/c her husband was an in an ad dancing with a
vacuum, but it turned out she licensed that. 
Legislature responds to dignity, but that’s not how people behave and it
ends up being about money.
 
9 times out of 10, when someone calls looking for money b/c
the image is already out there, the reason that they are mad is that their
friends saw it and made fun of them/thought they endorsed it.  The moment you think of that as being you, your reaction is “they shouldn’t be
able to do that to me.”
 
Many comments here have depended on lesser protection for
commercial speech. If SCt abandons that distinction, have to wonder if the
result on noncommercial speech would wind up being less protective. 
 
Yes!  B/c scrutiny would
diminish, but also in terms of Jacobellis/Bose issue of appellate review of
initial determination (e.g., of deception/endorsement, as w/the findings of the
FDA/SEC etc.). 
 
© gets a 1A free pass; we don’t even ask the question.  My worry is that ROP will be put in that
category—it’s ©-like and therefore we don’t have to ask the 1A question, per Zacchini.
 
We’re not going to escape false endorsement as a successful
theory, but commercial speech doctrine is the only way to protect media
companies. 
 
You’re making money = commercial speech is an error courts
are too willing to fall into.
 
SCt has been inconsistent w/its definitions of commercial
speech.  Doctrine is important, but bad
cases make bad law, like Midler v. Ford
where she didn’t want to be in ads (though note she changed her mind); White v. Samsung (they called it “the
Vanna White ad”); Facenda (didn’t
help that internal email said that this was just about exploiting the NFL
brand).  That’s the problem w/video game
cases too—you can say the SCt has decided that video games are like books, but lower
courts still think it’s merchandise. 
[Here is where the caution about the Court being serious may help: the
Court was almost certainly serious about the video game thing, so if EA gets cert the chances of being
reversed on this are high.]  It’s not just
video games; it’s comics, it’s low art, it’s Saderup’s cheap drawings.
 
Merchandise: similar to ads in the substitutionary effect;
if the person wants to sell themselves, there’s a big difference b/t
single/small numbers of prints and multiple copies, which you do see in some of
the statutes.  If an unauthorized
producer makes the bobblehead, you can’t make your own and make as much
money. 
 
Like the myth of “life story rights” need for the movie
industry. The only reason for them is release from defamation/privacy claims,
and maybe cooperation; it’s also a signal to the industry that “we’ve got this
guy.”  But you don’t need them if you’re willing to take those risks. Does freedom to
make a biopic w/o “life story rights” decrease the value of those rights?  Sure. But so what?
 
Technology: came across in Keller arguments that there’s a fear of replacing people with
avatars, and you can make anyone into a movie. Tupac can sing on stage again.
Fear that the law needs to address that in a new way.  Nobody in the motion picture industry will
ever use actors again!  That got dampened
in the written decision, but came across clearly in argument—recognize that
this fear is driving decisions.
 
Would have been a different decision if it had been a NCAA
board game with player cards. Interactivity seems dangerous.
 
Could be captured by a false endorsement theory.  [Except that false endorsement itself can be
read so broadly as to suppress speech, which is why we got Rogers v. Grimaldi.]  Judges
would also likely be willing to expand the concept of false endorsement to
ensure that even pretty clear disclaimers didn’t work.
 
It’s really an unfair competition claim—usurping Tom Cruise’s
ability to work if you replace him with an avatar.  If people invest in something valuable and
someone else completely appropriates your value, that’s unfair
competition. 
 
Tom Cruise might have a dignity interest too, but if you
just use dead celebrities, it’s just like using robots. Visual image thinking
is magical thinking—a picture of you is more of a capture of you than writing
about you.  Versus “robots will destroy
everyone’s job.”  [See the movie The Congress.]
 
But Motorola v. NBA destroyed that broad concept of unfair
competition—also the Restatement of Unfair Competition, which says all that’s
left is hot news and false endorsement.
 
If courts felt like the level of appropriation was
significant enough, courts would expand the tort again.  If I fly a drone over the stadium, or stream a
prize fight through my cellphone, wouldn’t that count?  Some disagreement on this point.
 
False endorsement is something we have to accept, even if it
can be misused—we’ll never win that allowing false endorsement is ok.  [Again, I think Rogers v. Grimaldi weighs against that in its strong form.]  But we can get freedom to operate for other
things outside the scope of false endorsement.
 
In 4 states this year, SAG argued that Zacchini supports their view that you can’t have avatars.  They see this as a labor issue, and they want
to extend it, at least for a while, to the families of deceased
celebrities.  We have Tom Cruise in
movies all the time through parodies—have lookalike actors. 
 
At the same time, Elvis estate goes after Elvis
impersonators. 
 
We have to try to explain why none of the interests outside
false endorsement are enough to justify a cause of action, or what the place to
stop is.  Very strong anti-free riding
impulse in courts and in society generally, even though society couldn’t exist
without free riding.
 
Do we value copyright more than we value the right of
publicity?  It’s nonutilitarian.  Free speech is supposedly embedded in © but
it’s alien to the ROP—burden is on defendant to prove that free speech
outweighs ROP, but that’s backwards.
 
Avatars v. cartoons: people are used in the Flinstones (and the
Simpsons) all the time—judges are worried about replacing the real people.  But what would the narrow rule protecting
them be?
 
The only original thing Tom Cruise does is act—if you can
recreate that digitally, he’s gone. But live football games are different—Brett
Favre can play live football and no digital substitute exists for that. 

But the same is true for acting! Live theater remains a separate option, and G-d
doesn’t give you a right to a business model.
 
The contracts will also change so that an actor will have to
consent to being used in subsequent video games (and even movies) in order to
get the contract to make the initial movie.
 
Interests change from case to case, so you’re fighting with
a phantom.  We need to put the burden on
the other side w/strict scrutiny to show what gov’t interests are at
stake.  Presumptions matter in
litigation.
 
Avoiding the 1A: the Restatement (3d) of Unfair Competition test
for ROP has very clear exclusions.  But
the problem is that the states have ignored it.
 
Alabama: had an exception to an exemption MPAA didn’t like—as
a sop to MPAA, they threw in “for purposes of trade” and then commented that
they were using the Restatement (3d) of Unfair Competition.  So that’s better than Cal./Mo./etc.
 
Look at exemptions for creating a piece of art, but not reproductions—you
didn’t need high tech to put mass art in disrepute.  The next Andy Warhol is not safe.  The role of the visual/embodiment v. the word
is a real discrimination.
 
Less confident of variety of state courts’ ability to
implement non-constitutional limits. 
 
If courts perceive this as on the boundaries of the 1A, one
risk is that faced with too much 1A judges will say, treat it like the FDA on
labeling, SEC, etc.: throw it all out of 1A if bringing it in will involve
strict scrutiny.
 
More likely: we’ll get more strict scrutiny like review of
FDA and SEC.
 
More likely: ROP will be treated like ©, largely outside the
1A—real risk; no 1A scrutiny. But in contrast to © we lack robust internal
limitations. 
 
But ROP is not a matter of federal constitutional provision.
 
Cf. Gay Olympics case: property right in name or
likeness.  We won’t get strict scrutiny
b/c will be viewed as part of IP exception/independent and unique [or,
actually, not unique!]
 
Principles similar to fair comment would lessen the pressure
to impose a 1A constraint—it’s only in the 1960s when pressure comes to a head
on defamation. So a good enough definition of the tort would take care of a lot
of const’l problems.
 
But then you wind up w/50 different states and a whackamole
problem—can Alabama have these books or not?
 
This leads to a question: should we have a federal ROP?
 
But defamation didn’t have 50 different flavors—the flavors
aren’t all that different. There were uniform law types of movements. Such have
failed w/ROP.
 
Problem is trying to create 50 states w/sufficient
carveouts. What if statute in California had the same carveout for live people
as it did for dead? Then Keller comes
out the other way. But California will never do that.
 
Important people live in all jurisdictions, but famous
people are concentrated.  But it doesn’t
take many famous people to get a ROP passed in a state. 
 
Only a fed statute or 1A will answer the question. We need
to make consistent arguments about why the 1A mandates strict scrutiny.
 
Ohio and several other states have bright line exemptions.
 
A SCt decision is the only practical solution b/c that wipes
out the differences.  But that brings us
back to offering a coherent definition of what the right should be.  The justifications offered may or may not
withstand strict scrutiny: we need to think about how that might go. 

False endorsement: that will withstand strict scrutiny/commercial speech
scrutiny.  Unfairness—unlikely to
survive.

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Factor four: the most interesting part of the Google Books decision

Posted on October 16, 2015 by rtushnet

Authors Guild v. Google, Inc., No. 13-4829-cv (2d Cir. Oct. 16, 2015)

Today’s Google Books decision breaks no new ground in terms of transformativeness.  It is perhaps most interesting in its finessing of the question “what is a derivative work?” while suggesting that the answer may be a functional one based on similarity to the statutory list, as Pam Samuelson has argued in her own work. 

I was most struck by two related comments on factor four, which the court deemed the most important factor–perhaps a retreat from earlier post-Campbell cases–albeit one that had to be understood in light of factor one.  (The court didn’t repeat the Second Circuit’s previous statements that copyright owners can’t create market harm by being willing to license transformative uses, but such repetition wasn’t required.)  Though factor four is the most important, there are limits on its scope:

 

Lost sales must be substantial to make the fourth factor
weigh against a transformative fair use:

But the possibility, or even the
probability or certainty, of some loss of sales does not suffice to make the
copy an effectively competing substitute that would tilt the weighty fourth
factor in favor of the rights holder in the original. There must be a
meaningful or significant effect “upon the potential market for or value of the
copyrighted work.” 17 U.S.C. § 107(4).. . .

 

Also, lost sales must be based on protectable aspects of the
work to count:

By entering “Roosevelt polio” in a
Google Books search, the student would be taken to (among numerous sites) a
snippet from page 31 of Richard Thayer Goldberg’s The Making of Franklin D.
Roosevelt (1981), telling that the polio attack occurred in 1921. This would
satisfy the searcher’s need for the book, eliminating any need to purchase it
or acquire it from a library. But what the searcher derived from the snippet
was a historical fact. Author Goldberg’s copyright does not extend to the facts
communicated by his book. It protects only the author’s manner of expression.  Google would be entitled, without infringement
of Goldberg’s copyright, to answer the student’s query about the year Roosevelt
was afflicted, taking the information from Goldberg’s book. The fact that, in
the case of the student’s snippet search, the information came embedded in
three lines of Goldberg’s writing, which were superfluous to the searcher’s
needs, would not change the taking of an unprotected fact into a copyright
infringement.

Even if the snippet reveals some
authorial expression, because of the brevity of a single snippet and the
cumbersome, disjointed, and incomplete nature of the aggregation of snippets
made available through snippet view, we think it would be a rare case in which
the searcher’s interest in the protected
aspect of the author’s work would be satisfied by what is available from
snippet view, and rarer still—because of the cumbersome, disjointed, and
incomplete nature of the aggregation of snippets made available through snippet
view—that snippet view could provide a significant substitute for the purchase
of the author’s book.

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Dastar bars website trade dress claim that just repeats copyright allegations

Posted on October 16, 2015 by rtushnet
Touchpoint Communications, LLC v. DentalFone, LLC, No.
15-cv-05240 (W.D. Wash. Oct. 9, 2015)
 
Touchpoint and DentalFone are Internet dental marketing
companies.  Touchpoint filed a
declaratory judgment action seeking a judgment of noninfringement of
DentalFone’s copyrights and trade dress/lack of protectable rights.  Touchpoint also alleged that DentalFone engaged
in unfair trade practices by attempting to unfairly remove competition from the
marketplace through its C&D letters, and also engaged in tortious
interference.  DentalFone responded with
the expected claims.
 
Here, the court gets rid of the non-copyright claims.  After incorporating its copyright allegations
by reference in its Lanham Act claim, DentalFone alleged that “[Plaintiff’s]
unauthorized use of a trade dress for its infringing mobile applications and
websites that is confusingly similar to the trade dress in the [Defendant’s]
Design constitutes trade dress infringement.” 
Beyond being a mere formulaic recitation of the elements of a cause of
action, this was a specific problem in the trade dress infringement
context. 
 
A party claiming trade dress infringement “should clearly
articulate its claimed trade dress to give a defendant sufficient notice.”  An alleged “look and feel” that was “a unique
and proprietary home page design developed by [defendant] that embodies a
protectable trade dress” was just not enough. 
Though there might be cases in which a website trade dress claim could
be protectable, the allegations of the complaint provided no explanation of
what was being claimed other than an exact duplicate of the copyright
claim.  And exact duplication of the
copyright claim creates a Dastar problem.  (I’d say Dastar
here stands in for a constellation of arguments—realistically, if the
elements claimed as trade dress of the website are also the copyrighted work
plaintiff claims to own, I doubt they could function as a mark; this isn’t a
case of a distinct cartoon character allegedly being copied.)  If defendant “intends to maintain an Lanham
Act claim based on its website’s ‘look and feel,’ in addition to articulating
clearly the website features that comprise its alleged trade dress, [it] must
plead a ‘look and feel’ that does not fall under the purview of the Copyright
Act.”
 
Reading this might sound like an overextension of Dastar, but note defendant’s concession that not all double claims are Dastar-barred. The court’s conclusion makes a lot more sense when you look at the accusing and accused designs.  Here are several examples of DentalFone’s site designs:

Defendant contended that this was nothing more than standard “tiling” design.  Here are examples of the accused design–the first from Touchpoint’s website, the second from the threat letters from DentalFone:

 
NB: after examining these pictures, it would be surprising to me if the copyright claims had any more merit.  Even assuming a wafer-thin copyright in the selection, coordination and arrangement of menu items, I don’t see how infringing similarity could be shown.  (Also, I’d want to know more about who exactly owns the copyright in each individual website–having the mobile service provider do so seems like a risky business for the individual dental offices.  If they leave DentalFone, do they have to shut down their mobile sites?)
 
Unsurprisingly, the Dastar conclusion also proved fatal to the
state law claims.  Neither the Washington
Consumer Protection Act nor the common-law claims evaded preemption just by
alleging that there was an extra element of “deception or misrepresentation.”  That isn’t an extra element when the
deception allegedly comes just from the copying.  The gravamen of the action here was copying.

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