Punchbowl, punchback: district court finds confusion unlikely between invitation and political news sites

Posted on August 26, 2024 by rtushnet

Punchbowl, Inc. v. AJ Press LLC, 2:21-cv-03010-SVW-MAR (C.D.
Cal. Aug. 22, 2024)

Punchbowl home page

Punchbowl News home page

On remand from the 9th Circuit, the court conducts
a multifactor likely confusion analysis and finds that Punchbowl’s digital invitation
services are too distinct for likely confusion with Punchbowl News’s political reporting.
Two points stand out: first, the court considers it significant that mostly
women use Punchbowl and mostly men use Punchbowl News.

Second, there’s a useful discussion of misdirected
communications in light of the unrelatedness of the services. There were about 100, which in the context of thousands of queries a year for each party was not significant. Moreover, misdirected
communications may be probative of the fact that the names are similar, but not
of likely confusion, because relevant confusion has to relate to some kind of
purchase opportunity. Otherwise, trademark would turn into a right in gross:

Ultimately, the dissimilarity and
lack of proximity between the services provided by Plaintiff and Defendant carry
the day. This conclusion is the obvious one. At worst, some consumers might
mistakenly contact one party when they mean to contact the other party. A
misaddressed email, Facebook comment, or X post is a negligible friction that
stems from the fact that both parties have named their services a common word.
No reasonable consumer would purchase a subscription to a party planning software
platform when they intended to subscribe to a news website (or vice versa)
because they thought they came from the same source. No reasonable jury could
find otherwise.

from Blogger http://tushnet.blogspot.com/2024/08/punchbowl-punchback-district-court.html

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Trademark question of the day

Posted on August 26, 2024 by rtushnet

 Spotted around town:

back of bus ad: "slow down. this isn't a video game" over video game image; "you speed, you lose--DMV" on right, all in Grand Theft Auto font

For reference, here’s the Grand Theft Auto font:

from Blogger http://tushnet.blogspot.com/2024/08/trademark-question-of-day.html

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State Little FTC Acts still have teeth, as Georgia’s proves

Posted on August 26, 2024 by rtushnet

Federal Trade Commission v. Peyroux, — F.Supp.3d —-, 2024
WL 1283344, No. 1:21-cv-3329-AT (N.D. Ga. Mar. 11, 2024)

The FTC and the state of Georgia sued three corporate
defendants and two individual defendants, Peyroux and Detelich. The underlying
acts carried out by various defendants involved promoting stem cell therapy,
which “involves the injection of shots with products containing cells or growth
factors derived from birth tissue, including amniotic tissue or fluid,
placenta, Wharton’s jelly, umbilical cord blood, adipose tissue, and bone
marrow.” To get a sense of the costs at issue, over 2017-2019, at least 485
consumers purchased stem cell therapy injections from one defendant, Superior,
at a total cost of $3,350,416. Many patients were seniors.

The other corporate defendants were consulting services that
advised chiropractors and healthcare clinics on how to increase revenue by
offering additional services to patients. They provided “resources — marketing
manuals, flyers, lectures, sample emails ads, and PowerPoints — and a procedure
to launch advertising campaigns.” They provided coaching on how to deliver
PowerPoint presentations to potential patients, including on “handling
objections” and arranging financing; offered medical training for clinics; ordered
supplies for the stem cell injections, and provided other sales training, for
example, on how to track patients and potential patient responses to marketing
campaigns. Defendant Stem Cell Institute of America (SCIA) also “advertised
stem cell therapy directly to consumers through lectures, postcards, emails,
its website, YouTube, a documentary, and more.”

Peyroux was the 100% owner of all three corporate defendants;
Detelich was, among other things, a co-founder, officer, and director of SCIA,
and directly involved in developing, marketing, and delivering consulting
services about stem cell therapy for the other two corporate defendants.
Superior and SCIA filed for bankruptcy in 2019 (this proceeding continues as an
exercise of the police power, despite the automatic bankruptcy stay).

The ads at issue misrepresented the efficacy of stem cell
therapy, e.g., “stem cells can be used to treat nearly any type of condition
caused by injury or degeneration” and specifically claimed the ability to treat,
inter alia, COPD, Parkinson’s disease, multiple sclerosis, and congestive heart
failure. The ads offered to “reduce and even eliminate your pain without
surgery or additive medications.” Some of the ads claimed FDA approval. One of
the training videos included a role-play about how to respond to customer resistance:
“Over the past few years that we’ve done this, we have treated hundreds of
patients with knee conditions with amazing results. So the level of
degeneration you have in your knee makes you a really good candidate for this
procedure. And I feel very confident in telling you that this is going to be a
positive outcome for you as far as improving your range of motion, quality of
life, and decreasing pain.”

The court granted summary judgment to the FTC and the State
on many issues, including that the corporate defendants engaged in a common
enterprise and that the individual defendants were liable for the corporate
defendants’ acts. In addition, they made false or unsubstantiated efficacy
claims; false claims of FDA and FTC approval; and supplied their client clinics
with false/unsubstantiated ads and so provided clients with the means and
instrumentalities to commit further deceptive acts and practices.

Both the false efficacy claims and the false FDA/FTC
approval claims related to health and thus were presumptively material. And the
defendants supplied the means and instrumentalities of deception to clinics
through their extensive provision of ads and related services.

As to individual liability, this requires (1) control of the
corporation’s relevant acts and (2) some level of knowledge. Where a defendant
is a corporate officer of a small, closely-held corporation, “the individual’s
status gives rise to a presumption of ability to control the corporation.” Knowledge
means that the individual had “ ‘actual knowledge of the [unlawful] conduct,
was recklessly indifferent to its [unlawfulness], or had an awareness of a high
probability of [unlawfulness] and intentionally avoided learning of the truth.’
” Furthermore, “[a]n individual’s degree of participation in the business is
probative of knowledge.” Both of the individual defendants here directly
participated in the unlawful acts and advertising—they even delivered seminars
for the scheme—and also had authority to control the acts.

Georgia’s little FTC law, the GFBPA, outlaws “[u]nfair or
deceptive acts or practices in the conduct of consumer transactions and
consumer acts or practices in trade or commerce.” Examples of such unfair or
deceptive acts and practices include “[r]epresenting that goods or services
have sponsorship, approval, characteristics, ingredients, uses, benefits, or
quantities that they do not have.” It also bars using “a computer or computer
network” to “[e]ngage in any act, practice, or course or business that operates
… as a fraud or deceit upon a person.” “[T]he legislative intent and
interpretation provision of the GFBPA makes clear that the Act should be
interpreted broadly to end deceptive practices, and that the Act should be
interpreted as coterminous with the FTC Act.” The court therefore rejected defendants’
arguments that joint GFBPA liability could only be imposed if the corporate
veil could be pierced under Georgia law, noting that courts applying the laws
of several other states have found similarly.

On remedies, Detelich argued that there should be no injunctive
relief against him because there was no risk that he will engage in similar
conduct again. In determining whether there is “some cognizable danger of a
recurrent violation,” courts consider “the egregiousness of the defendant’s
actions; the isolated or recurrent nature of the actions; the degree of
scienter involved; the sincerity of the defendant’s assurances against future
violations; the defendant’s recognition of the wrongful nature of his conduct;
and the likelihood that the defendant’s occupation will present opportunities
for future violations….”

Using this standard, injunctive relief was appropriate as to
all existing defendants, who engaged in  “a
comprehensive campaign to develop and disseminate misleading advertisements
about the efficacy and approval of stem cell therapy on a massive scale.” The
ads were the focus of their business, and they profited massively therefrom.
The degree of scienter was high, and the individual defendants currently held
interests in many other healthcare companies.

The State also sought monetary relief in the form of civil
penalties and restitution under the GFBPA, which allows civil penalties up to
$5000 per violation (without specifying a method for identifying how many
violations occurred). There are additional penalties for targeting elderly and
disabled people online, up to $10,000 per violation.

Georgia sought $5000/day for misrepresentations on Superior’s
website ($6,650,000), $10,000/violation for 59 online advertising campaigns,
161 brochures downloaded online, 148 seminars delivered, and 335 elderly
consumer purchases of stem cell shots ($7,030,000); $5000 for each individual
consumer who purchased a stem cell shot who was not elderly ($750,000); and (4)
restitution for the 485 customers who purchased stem cell injections from Superior
($3,350,416).

The court declined to decide on an amount at this time and
noted the additional information it sought, but rejected some defense
challenges to the availability of monetary relief. First, civil penalties under
state law can be obtained in federal court, given an amendment specifying that “the
Attorney General is authorized to initiate … or otherwise appear in any
federal court or administrative agency to implement the provisions of this
article.”

Nor was the civil penalty provision unconstitutionally vague,
even though defendants argued that it had no specific method for calculating
the number of violations or setting an amount within the range. The
per-violation language should be interpreted in concert with the rest of the
statute, suggesting that “each unfair or deceptive act or practice, or consumer
transaction, serves as a separate violation of the statute.” Courts
interpreting similar statutes have assessed per violation penalties “based on
the number of ads published, transactions completed, consumer purchases, or a
mix of these measures.”

from Blogger http://tushnet.blogspot.com/2024/08/state-little-ftc-acts-still-have-teeth.html

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Grubhub’s listing of unaffiliated restaurants on its platform could infringe TM

Posted on August 26, 2024 by rtushnet

Lynn Scott, LLC v. Grubhub Inc., 2024 WL 3673718, No. 20 C
6334 (N.D. Ill. Aug. 6, 2024)

Restaurants brought a putative class action alleging that
Grubhub used their names and logos confusingly, asserting claims under the
Lanham Act.

“Grubhub acts as an intermediary between consumers looking
to order food and restaurants looking for additional customers.” Restaurants
who partner with Grubhub pay it a percentage for “an additional way of
generating orders, internet advertising, and a delivery infrastructure.”
Plaintiffs alleged that, since its founding (2004), Grubhub only included
restaurants on its platform who agreed to appear. Thus, consumers allegedly
expected that “restaurants listed on Grubhub’s platform were working
cooperatively with Grubhub to provide takeout and food delivery services.” But
in 2019, Grubhub changed to add more than 150,000 restaurants, including
plaintiffs’, without permission.

Grubhub allegedly used different colors on its mobile app to
help drivers distinguish restaurants who were partners versus unaffiliated
restaurants and further disguised its actions by having drivers place orders
under customer names and pick them up from the regular customer area without
mentioning Grubhub. Customers allegedly erroneously blamed the restaurants for
negative dining experiences.

False association: Some plaintiffs failed to allege
protectable trademarks, but this would be curable in an amended complaint. The
court rejected plaintiffs’ argument that they could bring false association
claims without alleging a protectable trademark; Ҥ 43(a) does not have
boundless application as a remedy for unfair trade practices.” Belmora
was factually and legally distinguishable; there was at least a valid foreign
mark there.

And likely confusion was generally a factual question. Enough
was alleged here, including “exact replicas” of names and logos. For actual
confusion, plaintiffs alleged “multiple accounts of customers who received poor
service from Grubhub and, in turn, blamed Plaintiffs,” e.g., for an “outdated”
menu on Grubhub that meant that orders couldn’t be fulfilled correctly. [I take
it the court wouldn’t find confusion plausible if it was a newspaper review
that became outdated. The usual multifactor test isn’t really suitable for that
(or anyway, all the work in rejecting the plausibility of that theory comes
from the unrelatedness of the goods and services).]

False advertising: Plaintiffs alleged that (1) use of
Plaintiffs’ names and logos, (2) false representations that Plaintiffs’
restaurants are working alongside Grubhub, and (3) false and misleading
statements made in connection with Grubhub’s use of the names and logos, such
as statements that Plaintiffs’ restaurants were closed and the posting of
incorrect pricing and menu items, constituted false advertising. Without
discussing materiality, the court found this adequate.

from Blogger http://tushnet.blogspot.com/2024/08/grubhubs-listing-of-unaffiliated.html

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IPSC Closing Plenary: Fair Use After Warhol

Posted on August 9, 2024 by rtushnet

Christopher Buccafusco, Copyrighting Style

There are plenty of precedents that say style isn’t ©able.
Appropriating the “core” of a work is not infringing in the absence of substantial
similarity.there are also cases suggesting ©ability of style: Steinberg, saying
style is part of expression. Blehm v. Jacobs, Bandana v. TJX, Reece v. Mark
Ecko say that style is an ingredient of expression etc.

Unfortunately, this matters because of AI. Greg Rutkowski is
a more popular prompt than Picasso and he doesn’t like this. Visual art for
examples, but can be extended to music and text.

To some extent, style is ©able and to some extent not. Style
sits between idea/content/subject and method/process, things that are excluded
from ©ability. © attaches to the how, not the what: the means by which the
ideas are given expression. The manner by which the author makes certain
choices. These are forms—but that’s one way of defining style, the manner in
which we clothe our forms of thought. Synonymy: the idea that you can say the
same thing in many different ways. That’s a questionable commitment in
aesthetic philosophy these days.

Same problems if we think of style v. method/process. Style
feels a lot like method/process—ways in which you learn to engage in 2-point
perspective drawing seems like a method for doing things. But not everything
with a bunch of steps in it is uncopyrightable. Choreography can be ©able.

We can also make incentive claims about broader protection
for style. But © doesn’t (shouldn’t) care about fame or distinctiveness.
Copyright attaches to works, not ouvres. The scope of © shouldn’t grow b/c an
author has made six works when the six works made by six different authors
would have a smaller scope of ©. Style inevitably involves authorial choices about
manner and form of expressing ideas; impossible to say with any coherence when
these choices become sufficiently abstract to be ideas. Telling the jury “good
luck” admits that we don’t know how to do this.

Path forward: copyright consists in the original properties by
which a work expresses: by which it represents, denotes, and exemplifies. These
include both formal features and the subject or content of the work. A work is
an expressive unit of both the formal features and the underlying content; the
relationship between those is what constitutes the work. Only when all the
relevant features are substantially similar should we find infringement:
combining formal features and underlying content should be required. Subject of
work acts as a limitation on scope of ©. Monet gets a © in his depiction of
waterlilies but not as against depiction of violets. 2 photos of Michael Jordan
in grande jete pose but with different formal features.

This will get hard: Steinberg-style drawings of other cities
are hard for him.

This is basically what Krofft said in the parts that
are good and not terrible: you need substantial similarity in expression of
ideas, not merely of ideas. Statue of a horse can’t embody the same idea as statue
of a dancer even if formal features are the same, nor would a painting of a
dancer.

Cubism makes it hard: could Braque have sued Picasso? Hard
to figure out what the subjects are.

Is this relevant to fair use? Suggests that satire should
have a greater claim to noninfringement than it historically has. Satire involves
using the same style to clothe different ideas; therefore it shouldn’t infringe
(lack of substantial similarity as in the Greatest American Hero case; German
case law; perhaps the jury’s reasoning in the Kat von D case).

Courts should avoid analyzing “feel” and more focus on
formal features. More about glint in eye than “uncomfortable” versus “larger
than life” in Prince.

[seems like this is going to have trouble with derivative
works]

Amanda Levendowski, Fairer Public Benefit

Bias and harms of works aren’t taken into account in fair
use analysis: recruits a legal tool typically aimed at one set of problems for
the purpose of cleverly addressing a different set of problems. Here the tool
is the “public benefit” subfactor of fair use, aimed at balancing public
benefits with market harms. Novel tech can promote sociotech harms like bias,
mis/disinformation and social/environmental destruction. Particularly
pronounced with algorithms and AI. Defining public benefit could mitigate some
of those harms. [I am v skeptical of this given the inability of courts to do
full cost benefit analysis; 1201 exemption analysis shows that putting downstream
effects into the hopper is generally a way to suppress fair uses, and
competition, in the service of fears of lack of control by big companies like
John Deere.]

Cases that have discussed public benefit in fair use: 19 of
38 involve novel technologies—VCRs, digital libraries, early algorithms.

Defining public benefit is difficult. But deeply troubled by
algorithmic fair use cases that allowed lots of exploitation—iParadigms (plagiarism
detection) and Perfect 10 (exposing women to public view when they contracted
for more restricted nudity). Amplified misinfo: these women didn’t consent to having
their nudity exploited publicly. This is inconsistent w/the promotion of progress,
and misinformation doesn’t do that. [How do you know that viewers received that
message or perceived any difference between “posing for Perfect 10” and “having
images online”?] Not saying Perfect 10 was wrongly decided, but not an uncritical
public benefit. Could have named the costs, which influences how lawyers and
courts think and behave.

Should consider public benefits of use discounted by public
harms. Benefits and harms are both difficult to quantify.

Courts, as well lawyers counseling clients, can do this.
Courts can elevate scholarship into doctrine. [Do we think that today’s courts
will embrace the broader social benefits of a trans
Joker,
or instead consider the film to inflict broader social harm?] This wouldn’t be
dispositive and anyway the harms will already have been caused in litigation.

What about Congress? Codifying this definition is risky.

Fairer public benefit can be operationalized by
client-centered lawyers seeking to help clients develop better technologies—exploring
possible consequences of their actions. Consequences are often sociotechnical,
not legal. Lawyers should be counseling on them. Formalize the tech; assess public
benefits; identify public harms; reconsider public benefits; report to the
client.

[why do you need to bring © into this? If ethical lawyering assesses
sociotech impacts, then © is just a distraction.]

Michael Mattioli, Facilitative Fair Use

Implications of Warhol on training AI: surprising ways that
AI is actually facilitating some good things in © ecosystem. Little AI services
may be much more beneficial than Big AI. Amanda Wood-Shapiro, writer with
dyslexia, describing use of AI as game-changer for author. Ability/desire to tell
stories; difficulty organizing thoughts. More than just spellcheck/grammar checker;
AI was a mentor for her (Grammarly). Not the only neurodivergent person using
LLMs to get ideas out as authors. Publishers drowning under slush piles may be
able to use LLMs to identify the diamond in the rough. Sudowrite and other
editors—help speed of production, looking at narrative consistency and pacing.
Writing ad copy, which authors need to sell their works. Not just books; ScriptBook
for scriptwriting can evaluate potential in script—character likeability,
whether there’s a big enough audience, etc.

Word of pessimism: if it’s not run properly, especially if
trained on limited/biased dataset, could narrow the range of voices. But these
tools are already there. AI models for casting data to determine who to cast—but
trained on existing ads and films. Generating storyboards: directors can
experiment w/different camera angles and scene composition.

AI is used to produce/disseminate games—porting it from
platform to platform.

W/o fair use, these tools are far more limited. Licensing=only
really deep pockets can play, and even they will have access to a far more limited
set of training data, steering © system towards more bias and fewer voices. [Although
the companies didn’t love how much omegaverse showed up in their first few
iterations.]

Pamela Samuelson, Justifications for Fair Uses

Warhol: main opinion uses “justified,” “unjustified,” and “justification”
28 times in discussing factor 1; identified “targeting” as a justification,
with 10 references to “target” (5 in dissent). Warhol Foundation, majority
found, didn’t offer a persuasive justification for offering a license to Conde
Nast to use Orange Prince on a magazine cover. Need justification for each use,
not just initial creation. Will courts interpret Warhol as limiting justifications
to targeting?

Whyte Monkee v. Netflix: court did exactly that—using parts
of a funeral video in documentary was not transformative b/c didn’t comment on
the authorial choices and intended meaning of the video. Fortunately, 10th
Cir. reheard the case; waiting to see whether they don’t mess it up quite as
badly.

Other questions: will/should justification become a new subfactor
in factor 1? She hopes not.

What fair use justifications will/should courts find
sufficient besides targeting the first work for criticism or comment? (lots of
them hopefully)

Are justifications only relevant to factor 1? (no)

Are justifications only needed if the second work has the same
purpose as the first work? (maybe)

What kind of evidence is relevant to proving justifications?
(??)

Leval’s conception of justifications: also uses “justif”
words 33 times, almost all in relation to factor 1. For him, justification
turned on transformativeness, adding something new with a further purpose or
different character, altering the first with new expression, meaning or
message. Historians & journalists need to quote others’ works to support
their arguments/theories—a key concern for Leval. Thus transformativeness
enables © to fulfill its larger public purposes. A justification may exist
under factor 1, and it must be weighed v. other factors, e.g., did D take too
much. Transformativeness is for him the justification—you don’t need a
justification on top of a justification.

Campbell took a holistic conception of fair use
justifications and emphasized the importance of fair use to provide breathing
space; courts must consider all factors together and weigh them in light of the
ends of copyright law. Transformative purpose may have spillover effects in
relation to the amount and market effects factors—the more transformative the
second work, the more spillover effects are likely. Every case to be decided on
its own facts.

Campbell did involve targeting for criticism, but this isn’t
the only kind of targeting in case law. Targeting the author, not the work: New
Era—what a cruel, bigoted person L Ron Hubbard was. Targeting the subject of
the work: Kienitz, saying the mayor was a jerk. Targeting a third person: Hill v.
Public Advocate—photo of gay couple kissing to target legislator who supported gay
marriage. Targeting a theory—Time v. Bernard Geis Assoc.

Justifications beyond factor 1: GvO involves factor 2
justifications; programmer investments in learning Java declarations that were inextricably
bound up with method calls & implementing code

Factor 3 justifications: Faulkner Literary Rights v. Sony: “miniscule
qualitative” part was fair use.

Factor 4 justifications: harm speculative/work not competing—Sony
v. Universal; AG v. HathiTrust.

Other types of justifications? Public interest in access to
info: Warhol gives this as example, making information available, citing
Authors Guild v. Google; search engine cases (Kelly, Perfect 10, Authors Guild
v. Google); online posting of gov’t edicts (ASTM); print disabled access to
books (HathiTrust). Private interest in access to info: reverse engineering
cases (Sega v. Accolade).

Freedom of expression: protests (Kienitz); anti-censorship
(SUntrust)

Evidentiary: documentary film clips used to prove filmmakers
point; evidence in court (Bond v. Blum); court reproducing images in opinion
(Warhol)

Economic justifications can also come in different flavors;
her project is to evaluate different types of justifications.

Post-Warhol caselaw has gotten more boring; courts don’t
seem to understand that works could have more than 1 purpose. A “further”
purpose is what Campbell talked about. Depends on level of generality of “purpose”—watch
out for manipulation. DC Circuit upheld ASTM’s posting as transformative,
Warhol notwithstanding. Cramer v. Netflix—tattoos shown briefly in Tiger King
show fair b/c of transformatively different purpose. Thomson Reuters v. Ross:
jury to decide if training data transformative; Warhol didn’t require TR win. Sedlik
v. Kat von D appeal pending—Sedlik argues that he has to win regardless of jury
verdict b/c of Warhol. Still early to judge impact, but justification not yet
playing major role; most cases involve more than targeting original for
criticism. Bringing that to court’s attention is our job.

Chris Sprigman, Copyright, Meet Antitrust: The Warhol Court
and the Rise of Competition Analysis in Fair Use

Warhol has two innovations. First, the analysis has to be
use by use, not work by work. Imminent in prior jurisprudence, but comes out
roaring here. The use in Warhol is the licensing to Conde Nast for use on an
issue commemorating Prince’s life. Second, a change in the definition of what a
different purpose or character is for transformativeness purposes. Many uses
with new meaning/message will be transformative, but needs to be sufficient to
make the use different in purpose or character from a use the P might want to
make of their work. “[T]he first factor relates to the problem of substitution—©’s
bete noire.” That is, the thing copyright hates most is not copying itself, but
copying that substitutes. Using a work to achieve a purpose the same as or similar
to the original is more likely to supplant the original.

That makes competition key to transformativeness. It was
intuitive to the Court that the images looked alike and could be used on magazines,
and therefore competed. This is wrong. Milk and Coca-Cola can both be drunk;
someone dying of thirst would grab at both; but they are not competitors in any
ordinary sense.

Antitrust has a thicker definition. Start with a candidate
market (e.g. Goldsmith’s photos). If a single firm owned all products in
candidate product market, would it be profit-maximizing to impose a small, significant
nontransitory price increase of 5-10%? If not, add the next closest product and
try again. Does Peets compete with Starbucks? If they both increased prices, would
people defect to Dunkin and defeat the price increase? If they would, you haven’t
defined your market.

This methodology is both empirical and normative. Empirical:
uses data from historical price changes/econometric analysis; customer/user
interviews; objective information re product characteristics. Normative: why 5-10%?
This is the competitive margin on which antitrust should focus. This isn’t
always the lower threshold; sometimes 1% is enormously consequential for an
industry where the margins are very slim. The normativity of the test is
connected to its empirics.

Methodology actually applied to fair use cases: a D who
creates an artwork for exhibition or sale will almost never compete. When you
narrow it to particular uses, as Warhol did, substitutability becomes more
tractable. What about widely distributed works? Empirics of antitrust will work
for you—there will be historical price data that help you assess
cross-elasticity of demand b/t works.

What about Warhol itself, with episodically licensed works
on both sides? Hardest case. Prince is one of most photographed men on planet.
That means that the market for works to illustrate magazine articles is
crowded. Many works available for licensing. Unilateral effects theory:
competitive “nodes.” If you have a crowded market, there can still be a harm if
there’s a competitive node—if competition b/t the Goldsmith photo and the other
photos was much less close than competition b/t Goldsmith photo and Warhol
image. That’s what the Court should have asked. Asking about licensing to magazines
generally is like saying that milk and Coke compete. Photo is a classical
portrait; the Warhol work licensed to Vanity Fair was about iconization—a visual
representation of “Purple Fame.” If they had licensing people, people would
have observed that the Warhol was compatible with the article and the photo was
less so. After Prince’s death, Orange Prince was an icon painting.

Moderator: Pamela Samuelson, Berkeley Law

Lemley for Levendowski: Negative as well as positive public
benefits for the market factor too—why not? Level of generality at which you
assess benefits v. harms: Perfect 10 was not a tech for depicting naked people,
but rather for depicting images. Assess only uses made in particular case, or
all uses and future uses that come from having/not having image search?

A: agree, include market benefits as well. Level of
generality is a tricky question: privacy law can be imported to provide some
frameworks about ©. For Perfect 10, Nissenbaum’s theory of contextual integrity
explains why it’s invasive to take images behind a paywall and reproduce them
outside the paywall. That aligns with courts’ unwillingness to endorse disclosure
of unpublished works.

McKenna for Buccafusco: Formal characteristics and subject
of work—there are levels of abstraction problems in identifying subjects—why is
Monet’s subject lilies and not “flowers”? Steinberg: you said the formal
characteristics were the same but not the subject—do you mean “thing depicted”
or “meaning”?

A: definitely creates another hierarchy problem, but may be
able to get a better handle on it by separating them. Substance hurdle + formal
features hurdle.

Saurabh Vishnubhakat for Sprigman: isn’t your distinction
b/t Warhol and photo snobbish and aesthetic?

A: don’t overread snobbishness—my analysis fits any crowded
market. It’s about consumer preferences, which we take as they are. If they’re
coffee snobs, we let them be; if magazine people think that the Warhol picture
fits a theme, we don’t judge that.

Felix Wu: if the lookalikes generated by AI are
substitutionary relative to original artists, should we worry about that?

Buccafusco: If we think about competition, Moscow on the
Hudson doesn’t compete plausibly with Steinberg; you could increase the price
of the latter a lot and Robin Williams’ presence would still make the former
nonsubstitutionary. This is also probably true of a lot of the derivative work
stuff.

Sprigman: Be disciplined about what part of the FU analysis
we’re doing. Factor 1 involves competition. Steinberg is definitely not
competitive. But it might not add new meaning or message and therefore might
not be transformative. [I thought he was going to pivot to Factor 4 being a distinct
analysis.] The court announces a result in Warhol telling us that competition
is central for transformativeness, but doesn’t explore the dark corners. Let’s
just say we apply substitution analysis to that situation—we would probably
find the same purpose. Is purpose defined by competition? Or is purpose guided
by competition? He thinks the latter is more useful. If they compete b/c of
similarities in nonprotectable expression, that shouldn’t count.

Katrina Geddes for Levendowski: worry about courts’ ability
to handle more capacious understanding of public benefit. Would that devolve
into a battle of experts where whoever hires the best expert wins? Wouldn’t
that harm smaller communities?

A: good question, and part of why I think best way to
implement this is pre-litigation stage. Client may just say “thanks, it’s profitable
to spread disinformation.” That’s the dangerous part of client centered
lawyering. But less a battle of experts and more a battle of amici. [This is
also about resources—they need to know that they need amici, and they often don’t
until it’s too late.] We saw this in the pending Internet Archive case; they
made a robust public benefit argument that the court didn’t like but did
grapple with.

Q: Look at CFR 21 in medical device world—you’re always
talking about reasonable assurance of safety versus benefit/effectiveness. That’s
a way to balance interests. For AI: controls for randomness/going off the rails
need to be taken into account. For Sprigman: is this a noun, verb, or
adjective?

Q: Antitrust: plaintiffs hate market definition; it’s really
hard. Courts hated having patent case inside an antitrust case in pay for delay
and might hate this too.

A: Doesn’t have to be fullscale analysis; Court should have
gotten an explanation that not all magazine licensing is the same/competitive.
Maybe 5-10% isn’t right margin: should look at incentives to create in the
first place.

Stefan Bechtold: Price is probably not the only normative
goal in ©, so SSNIP might not be the right tool.

A: if we’re honest about ©, it’s trying to remove discipline
from prices, so is that right? But what is our specific goal in factor 1
analysis? Court just told us a mission for that, and we can use these tools,
albeit not unthinkingly. Who are the buyers? They may be very different in ©
markets versus commodity market. © has problems; so does antitrust. Every
regulatory system has problems. But we learn something from asking the Qs that
antitrust wants us to ask.

RT: 1201 exemptions suggest to me it’s a bad idea to ask any
authority to do global-cost benefit analysis as part of a fair use inquiry. The
Copyright Office thinks that it should only find circumvention noninfringing if
it won’t risk people crashing Teslas, and it’s not good at that assessment.

A: Clients come in the door thinking that © is the problem;
you need to identify problems earlier, sooner, and louder. It would be better
as a general part of good transactional lawyering, but no one is there yet. If
clients have © Qs, that gives them an opportunity to engage with public law
problems. [I don’t get why that means it’s copyright’s problem. Clients often
confuse TM, ©, ROP, employment law, and lots of other stuff. The lawyer’s job
is to identify their actual problems.]

Rothman: Prince was terrified of being photographed; even with
lots of photos of him, there may be fewer carefully posed photos than you
think. Thinks Warhol is more about misappropriation.

A: Prince contained multitudes; he was photographed a lot
even if he hated it. The Court may be motivated by something other than
substitution, but what it said was substitution.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-closing-plenary-fair-use-after.html

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IPSC Breakout 5 Comparative Approaches

Posted on August 9, 2024 by rtushnet

Stefania Fusco (co-author Valerio Sterzi), Does the EU Need
an EBay-Like Case? Evidence Against Granting Automatic Injunctions in Europe

Patent paper; issues involving NPEs similar to trolling
issues in US. If most infringement cases are between noncompetitors, automatic
injunction is inappropriate and an eBay-like rule is appropriate, and their
research suggests that this is the case.

Justin Hughes, Comparative Online Bad Guys

After issues of application of © online were settled, key
was determining liabilities of intermediaries. A problem of elephants and mice.
Enforcing against mice is difficult, but elephants can’t hide and are subject
to lawsuits. So enforcement for CSAM through © went to platforms. DSM Directive
in EU and US developments were all about enforcement on the elephants. A big
part has been site blocking: a court or admin body orders an ISP to block
internet access to particular online locations. Roots as old as 2001 Directive
ordering methods developed, as well as 512(j)(1) allowing site-blocking
injunctions in the US which has never really been tested in court. Now picking
up speed—over 30 jurisdictions, most democracies, have endorsed site-blocking,
often by the highest court. [defined: no fault injunctions against ISPs, so I
guess China’s Great Wall doesn’t count?]

Early days: there were questions of power to make orders
against innocent third parties. EU: statute. Canada: determined as matter of
common law. EU got proportionality analysis. Early cases, also questions of
technical possibility and burden sharing for site blocking. Can be done with
domain names, IP addresses, a combination, URL blocking. 2014: ECJ said that
the court didn’t need to designate technical measures—could order an outcome
prohibition; transmission entities have to effectively achieve site-blocking.
EU study: most EU jurisdictions have included that intermediaries must pay, also
true in Australia. 2018: UK House of Lords, TM site-blocking case disagreed.

How do you ID the bad guys? Pirates, rogue, flagrantly
infringing online locations (Singapore), infringement-based business models.
This wasn’t an issue in early cases because if you’re asking to block “the
pirate bay” there’s not a big problem, and courts will gloss over the necessary
evidence. But more important with dynamic injunctions, where jurisdictions
adopt some shortcut mechanism whereby an initial injunction against ISPs can be
used by Ps to add URLs/domain names/IP addresses to the injunction. Adopted in
Argentina, Canada, India, Singapore, UK, Netherlands, Germany.

Comparatively, jurisdictions are starting to develop criteria:
Singapore’s “flagrantly infringing online location,” codified 10 years ago.
Primary purpose to infringe ©; directories, indexes, categories of means to
commit or facilitate © infringement. Australia adopted a similar law (includes
weighing of harm to others and whether other injunctions have been issued).
Good to look at what people in other countries are doing. Delhi high court decision
2019 followed Singapore/Australian list. Canada has considered use of new
domain names, IP addresses, etc. to evade site blocking; India and Singapore consider
volume of traffic/frequency of access to the online location; etc.

Many of the things the courts say are separate factors are
going to “is the primary purpose or effect to cause © infringement?”
Directories/indexes for promoting infringement; flagrancy; silence or inaction
on receipt of takedown notices; circumvention instructions. One interesting
factor: looking to whether website has been disabled by orders from one or more
courts in other jurisdictions on © grounds. Australia, Denmark, India,
Singapore all consider this.

Would not be surprised to see legislation coming to US this
year. Hope will consider these models before adopting rules.

Q: how related to SOPA/PIPA?

A: motivated grassroots action—truly believe that American
court could already do this under 512(j). Why didn’t people test 512(j) in
court first? The answer is: most people in DC think that the tech community is
ready for this. We’re in a very different place: now Google can do no right on
Capitol Hill. Balance of power has changed.

Marketa Trimble: Under Nevada law, have to comply with other
countries’ laws to be licensed for online gambling in Nevada.

A: hard to imagine US court doing this on its own initiative.

Peter Yu: duration of blocking? UK careful about that.

A: interesting but not important b/c pirates move on so quickly
that an 18 month period is 5 business models. Might matter to transmission ISP
to clean up their blocklists though.

Cesar Ramirez-Montes, Digital User Rights in the Mexican
Supreme Court

Potential for global South to think of exceptions/limitations
as user rights, using Mexico as a point of reference. Not bashing the country
and its © system as such, but presenting the academic argument for room in
global South to develop this notion, and Mexico specifically. Implementation of
safe harbor provisions under USMCA was challenged before Mexican SCt; two
different rulings.

Descriptively: USMCA provides only for notice and takedown,
lifted from DMCA. Prescriptive: Mexican legislators should rethink their
adoption of DMCA Plus mechanisms such as notice and stay down which was adopted
as part of transposing the USMCA into legislation. Also: Mexican SC should
develop notion of exceptions and limitations as user’s rights as a new rule of interpretation
that provides greater attention to user interests and thereby balance © scope
with larger public interest.

Almost excessive attention paid to rightholders’ interests
and little interest in users’, audience’s, and public’s interest. As if it was
merely a system of protecting authors and nothing else.

The public bears a great cost from this, and © owners gave
nothing in return. Model: Canadian SCt ruling and relevant scholarly
explorations of exceptions and limitations as user rights.

Mexico adopted the safe harbor framework from USMCA, which
was modeled on DMCA. But added staydown obligation: “reasonable measures” to
prevent same content from being uploaded. Implementation also covers TPMs
though overrides protections for out of copyright works. Also funneling WIPO
internet treaties, Marrakesh Treaty, and TPPA implementation. Result: DMCA-Plus
approach to safe harbors.

Challenges before SCt: (1) freedom of expression under
Mexican constitution, contrary to due process and legal principle; (2) lack of
definition of key terms did not provide legal certainty. Notification
requirements didn’t require evidence of infringement; chilling effects and failed
to provide adequate remedies for users entitled to circumvent b/c of tool
prohibitions on DRMs: a disabled person could be entitled to an exception but unable
to get a device that would do the circumvention.

Jan. 2024, Mex. SCt First Chamber dismissed the appeal re
TPMs but found that staydown unduly restricted freedom of expression according
to proportionality test. Previously, Mexican law already had remedies for ©
owners. Comparative analysis of US law; cited EFF on DMCA’s effects. Grand Chamber
arrived at a different conclusion in May/June 2024, but have not published
reasoning.

Marketa Trimble, Cross-Border Exceptions and Limitations to
Copyright: “Powered by AI”

Not interested here in whether training infringes/using AI
as an example of a process. Legislation of exceptions and limitations is often
considered on a single-country basis. But in multi-country transactions, such
as when a library in country A wants to provide an article to a researcher via
a library in country B, we need to know if there are identical or similar
exceptions in A and B that cover the acts in the same manner. Libraries need
cross-border exceptions; the model of AI suggests that we could get them, but
libraries lack the political clout of big companies. Potential solutions:
internationally uniform exception; mutual recognition of national exceptions
(exists in some countries—once it’s permitted in one country, the other country
accepts it as legal); mutual recognition with national verification (we have
the same kind of exception and we check for compliance with our exception).
Localization (no matter what happens across the border, we apply that country’s
exception). Private ordering. Delocalization by brute force: Seen online in
other areas where companies don’t bother to localize TOS, just comply with US
law which is home country law; that solves the problem for them and they wait
for litigation if it materializes. Technological solutions?

International law and EU law are models. Mutual recognition
in EU Orphan Works Directive; mutual recognition with verification in
Marrakesh; localization approaches in EU SatCab directive, EU Portability
regulation, and DSM Directive. But attempt to enlarge localization to other
aspects of © ran into hard wall in EU. Unification of exceptions is unlikely to
do the trick.

Take some lessons from preexisting examples and models,
recognizing that libraries and archives can’t move international change forward
on their own.

Peter Yu (co-author Matthew Sag), The Globalization of Fair
Use Standards for AI

Copyright Office is interested in whether there will be globalization
on training and copyrightability. Different reasons for divergence: author’s
rights/©; civil/common law; developed/developing. We look at training AI
regimes. Group one: fair use. US, Israel (ministry of justice opinion embracing
training); Liberia, Malaysia, South Korea, Sri Lanka, Taiwan. Canada is
somewhat similar to US. Group II: TDM exceptions: Japan, UK, EU, Singapore,
possibly China. Japan was earliest, in 2009. Not using for personal enjoyment =
exception the broadest we’ve seen. Singapore is newest: computational data
analysis (with limits to prevent excess dissemination). Interestingly, Singapore
also has fair use.

Group III: Others, like China’s 3d amendment to Chinese
copyright law. “Other circumstances as provided by laws and administrative
regulations”—allowed limitations and exceptions. Seems to move towards an open-ended
system. We’re waiting for implementing regulations.

UAE: efforts with Falcon AI. Law is very far behind; closest
we’ve found is educational use.

No consensus. Emerging equilibrium. The underlying
grundnorm: idea/expression distinction.

Countries do want to move forward; incentives to allow
creation of systems in US/China/EU race. Gowers Review of IP—not adopted! But
they believe that fair use would be better for UK to advance tech development.
US dominance in AI investment and development.

US developments on deepfakes also matter—new ROP protections
could change the environment. AI Act/not clear whether opt out or remuneration
will proceed in EU. Also EU is trying to reach out with its regulation by being
indifferent to jurisdiction in which AI was trained.

TDM/fair use is the way to go. There won’t be major
international disputes on input end, but different modalities for
implementation. Non IP issues will affect © development. Changes are likely to
be incremental.

Hughes: you assume it’s fair use in the US. But we don’t
know. Isn’t the real lesson that law doesn’t matter in the face of all the
venture capital investment? We may never get a fair use determination b/c
OpenAI and Google are doing deals with Reddit, and maybe the cases will settle.

A: we do think there’s enough case law for fair use, but
what’s unclear is the interface b/t input and output.

AI and Authorship

Margaritha Windisch, Unveiling the Bond Between Artists and
Their Work: A Vignette Study

Personality rights theory of ©: bond between artist and work/work
is part of the personal sphere of the creator and part of their personal
identity. Authors’ rights are designed to protect that intellectual and
emotional bond. Strong emphasis on moral rights in continental Europe.

Fascinating empirical study among European visual artists
randomly assigned to use traditional materials, digital drawing, or AI prompts.
Their connection to their work felt significantly lower with AI prompts
(somewhat lower with digital drawing but not nearly as much).

Time spent on creating matters to bond, but even controlling
for that there is an effect. Whether their personality is reflected in the
work/whether they had freedom of choice in decisionmaking—factors relevant to
EU law; significant decrease for AI condition—whether they perceive the work as
their own intellectual creation is much lower v. physical or digital creation.
Differences b/t German-speaking and French-speaking participants as well!

There’s no threshold for the bond b/t artist and work; what’s
the right policy to protect authors when there is a low bond? UK provides for ©
protection for computer generated work for 50 years, but no moral rights. The
author is defined only as “the person by whom the arrangements necessary for
the creation of the work are undertaken.”

[I’m really interested in Kant’s disrespect for visual art
in initial arguments about authors’ rights, which is right there in the name
(it’s not artists’ rights). Somehow people just skip past the medium in modern
moral rights argument—but how and why?]

Jessica Silbey: We have bonds to lots of things in our lives
that we didn’t create or don’t own.

Josh Sarnoff: rewarding for the bond seems to be rewarding
the wrong thing—acquisitiveness or ownership desires.

A: no, the bond develops through the process of creation—what
makes it difficult to produce is what develops the attachment to the work.

Q: consider storyboarding for a movie—playing with AI might
be different.

A: agreed. Visual art has a tradition and might well be
different for works that have had tech in the creation process from the
beginning.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-breakout-5-comparative-approaches.html

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IPSC Breakout 4 IP and Property/Contract Theory

Posted on August 9, 2024 by rtushnet

Shyam Balganesh, The Eunomics of Intellectual Property

Lon Fuller’s institutional design theory: understand
institutional design as a way of understanding institutions on the
understanding that they’re not infinitely mutable. One shouldn’t begin with an
unilateral approach on their ends. Ordinary assumption: institution is trying
to maximize some goal, so tweak construction based on that goal. Fuller says this
is problematic. We need to understand institutions as means-based. The means
are not fully contingent, but themselves add important values and are not
infinitely mutable. Eunomics is that project.

Don’t understand contracting, mediation, adjudication as
ways to maximize other variables solely. They emerge from ways humans desire to
interact with each other in society—conventional morality. That interjects not
just path dependence but some kind of immutability b/c the normative goals of
that kind of ordering interact are sticky. People desire that contract be in
some part about human relations. Means/forms themselves contribute important
normative goals.

Second: inner morality. Often described as having to do with
morality & general jurisprudence, but Fuller had a simpler understanding:
forms of ordering have their own internal integrity. There are elements in a
form which remain immutable such that if you take it away, it ceases to be that
form. Take away the impartial judge + adversarial system = not a judicial
system. Take away reasoning = ceases to be adjudication. A commitment to
integrity in form.

Third: The forms of ordering in society around resources and
interactions are necessarily limited, not infinite. Limited set allows humans
to channel and recognize how they want to order their lives. The mechanism of
adding to the set is slow and evolutionary. There is a strong resonance to
numerus clausus.

We can apply this to IP. There are three or four major
common forms of ordering IP around which different regimes come to be
structure. Newer kinds of resources may hybridize, but they’re defaults.
Copyright, patent, trademark.

(1)  
Appropriation form. Focuses on nature of wrong,
interpersonal relationship of appropriation that doesn’t begin w/identification
of resource but w/interaction deemed to be a wrong. That generates right/duty
obligation. © is paradigmatic, but expanded to ROP where an intermediary doesn’t
have to define a right in advance.

(2)  
Grant-based: patents, property, prospects. The
resource mediates the interpersonal relation. An impartial third party is
supposed to delineate the resource.

(3)  
Use perfection form: focus on behavior of entity
that can develop over time a right that is perfected through registration or
recordation—trademark.

The list is closed, but not closed at all times. It evolves
and hybridization is possible. The forms themselves, the defaults, are conventionally
determined b/c they come with their own underlying normativity. The means of
institutional forms are not necessarily contingent and bring their own values.

Zachary L. Catanzaro, Algorithmic Deadhands: What is Dead
May Never Die

Idea of AI trustees that enforce rules after individual’s
death. These aren’t conscious systems. Try to get “bounded optimality,” not
exactly replicate testator’s intent. Cognitive processes can be extended after
death through technological artifacts. We could train a system to monitor for
death records and make corresponding dispensations. We could try for active
monitoring of beneficiary behavior: A to B so long as B never smokes. That requires
more surveillance (Zuboff’s Surveillance Capitalism). What about “as long as B
lives a healthy lifestyle”? We could train AI to predict probable intent by
looking at data about O’s behaviors. We could exercise more control, in ways
that are often bad—genetic or political profiling. Coercion of behavior.
In property law today we teach there’s a balance b/t free alienability of
property and honoring testator’s last wishes; there’s conflict in the case law,
but there’s a pendulum between formalism and not.

Allowing AI systems to predict and control the present
creates new digital mortmains; emerging risk of reinforcing this type of
property control. Convoluted way of circumventing abolition of fee
tail/restraints on alienation/longstanding rules of property law that prohibit
conditions on who a person can marry, what religion they can be, etc. Too much
control. Risk of model collapse as systems self-iterate.

Possible solutions: reinforced privacy protection, anti data
scraping laws, temporal limits on behavioral data use, etc. Further research:
deeper into law of perpetuities/trust law. Philosophy of mind and causality for
automated systems. Transhumanist applications. Any hard rule programmed in
systems to limit them will necessarily be formalistic in nature.

James Grimmelmann: what would the legal system do in
response to one of these dead hand systems? The traditional legal rule would be
to void an unenforceable condition. Is that sufficient for a system like this?

A: We do need another form of intervention. The problem w/
relying solely on property law is that most states have weakened dead hand
control to the point of meaninglessness—a Fla trust can last 1000 years.

Jennifer Rothman:

[Along with all these other problems, I just think about “my
abortion is different”—O’s behaviors and O’s beliefs about what others
should do may well differ.]

TJ Chiang, IP Ownership and Penalty Default Rules

Patent v. copyright ownership defaults: employer ownership
of employee creations is WFH in © but patent, employee owns absent assignment.
Every contributor to conception is automatically a joint inventor; © makes
primary author sole author absent agreement. Patent = no duty to account, every
coowner is an owner who can practice without accounting; © is different and
every coowner must account to others (absent agreement).

Penalty default concept can explain the differences. Patent
prosecution is expensive and legally complex, so patents tend to involve at
least one legally sophisticated party and higher stakes, making it suitable for
penalty default rules. © is automatic on fixation and easy, not suitable for
penalty defaults. Criticism of “penalty default”: these aren’t penalties, just
majoritarian defaults and conditions for contract formation. Rules that force
parties to reveal info to courts are very different from rules that force one
party to reveal information to the other; they function quite differently.

His theory: penalty defaults incentivize disclosure of info
to courts. Info asymmetry between parties is not his focus. To be efficient, a
penalty default requires: a party being penalized to be legally sophisticated
enough to know about the rule. Benefit to courts in saved costs must outweigh
transaction costs in contracting around the rule; social loss of bad outcome if/when
parties fail, and cost to devise and apply the penalty default rule. There must
be enough privately at stake to give sufficient incentive to contract around
the penalty default. Should create a high private loss but low social loss if
bad outcome eventuates.

Jeanne Fromer, First Ideas

First is polysemic. Interweaving of earliest in time and
best. We mix these up; it’s important to understand the normativity of choosing
“first,” and think through what we’re trying to accomplish with different forms
of IP to allocate rights.

General rule in real property is first possession. Pierson v.
Post as most famous American case (or McCulloch!). Pursuit isn’t enough;
possession is the key. In patent that is reduction to practice, which can be
actual or constructive. This creates pressure to file early, especially given
statutory time bars after disclosure.

When we think about patent: you have to have actually
created every embodiment you claim w/in the scope of invention—not necessarily
physically but constructively. If you say “I invented all light bulbs with filament
starting with letter T” you have to have constructively enabled tomatoes, thistles,
etc. First is fictional in many ways, and this is a theme. You might have done
some subset but not a full scope and we’ll deem you to have done that.

Things are also carved out of first—law of nature, abstract
idea, natural phenomenon.

Some rules are about not claiming first too quickly: utility
rules—there has to be a specific benefit for the invention. Novelty/nonobviousness;
getting beyond prior art—if not, no one is first. Continuations and doctrine of
equivalents also affect firstness. And people who are prior to first—prior use—are
carved out as well.

Copyright is more generous in allocating firstness b/c
standard is so low. In some ways © rejects firstness because it doesn’t matter
if others are doing the same thing.

TM: use and registration differ in source of firstness;
legal fictions like national use also extend firstness. Lack of rights in gross
mean that firstness is cabined in other ways.

Real property critiques of firstness—appropriation/expropriation
of prior peoples—can also influence IP. Expressive incentives matter as well:
firstness as incentive? What about first losers? We don’t have violence in the same
way as in real property but we do have power dynamics, like first to file being
easier for big entities.

Grimmelmann: there are a lot of similar ambiguities in real
property—disputes over the scope of what people have acquired title to. Biggest
modern survival is adverse possession; always a question about whether you
possessed the whole or only part of the parcel. More continuity than contrast. (I
also think about the work of people like Claire Priest and Gregory Ablatsky’s The
Rise of Federal Title, which emphasize that constructive
possession/allocation from regional capitals was actually a huge driver of US
ownership in contradiction both to native title and to small colonizers.)

Mark McKenna: key to emphasize that first is not found in
nature. Many disputes: Not trying to decide who’s first; which of two people
beat the other to it. Should that make a difference? (Relativity of title!)
Also, consider reverse confusion, which isn’t really a confusion doctrine but a
priority doctrine. Sometimes we have to pretend there’s confusion to honor the
first use or it will be wiped out.

A: We’re often allocating rights and making claims w/o
having to think about other parties in dispute. Maybe we shouldn’t as much—wait
more until there’s an actual dispute. Reverse confusion was one of the things
that got her into this project.

Matthew Murrell, Cyborgs and the Law of the Human Body

Dick Cheney had the wifi for his pacemaker disabled because
of fear of cyberattacks; implants have been with us for a while, especially
cochlear—eye implants are on the way. 3 million Americans have implants now; this
will grow exponentially due to brain/computer interfaces.

Common law: wooden leg is property not person, and no
compensation can be awarded for injury. Some states have updated worker’s comp
but still treat the artificial body parts as property, not part of the body.

Neuroscience: artificial parts of body are unquestionably
part of the body: our brains map our bodies and are constantly updating that map.
Phantom limb syndrome: body schema includes lost arm. If a prosthetic is used,
the brain adapts—tooth fillings, artificial hips, artificial limbs. Interesting
things at edges—in virtual spaces, people can map onto 3 foot long arms, but
not lobster claws—but the brain is adaptable. Our body is our body schema in
the brain. It is wrong to treat them as personal property only.

One path forward: default rule is that cyborg bodies should
be treated the same as corporeal bodies. Privileged lived experience of
individuals with atypical bodies and individuals with modified bodies.
Individuals with modified bodies are going to use cyborg bodies to express
themselves—an important site of political expression. Cyborgness will be
immaterial in the normal run of cases—worker’s comp, tort.

Exceptions: capability of a particular body part. Human
ability=normal vision. Superhuman ability=hawk vision 20/2. This may be
material for, e.g., intrusion on seclusion. Extra-human capability=ability to
see infrared light; police officer with this would still have to follow Kelo.

Corporeality: the further a cyborg body drifts from the human
form, the more it might warrant departure from the default rule—people may be
able to operate spaceships.

Severability: wearables are getting more sophisticated; we
may need to distinguish wearables from body parts.

Andrew Gilden: Haraway’s Cyborg Manifesto is the first thing
he thinks of—we’re all sort of cyborgs. Worry a little bit about overly
focusing on neuroscience and the nervous system as defining what’s a legitimate
body. How does this apply in the context of gender-affirming surgery? Advanced
wheelchairs?

A: The full paper addresses some of this—social theory and
empirical work on virtual spaces—when white subjects are given Black avatars,
their scores on implicit bias tests go down for a while. Struggled with how to
constrain the definition of cyborg, but trying to clamp down on problems—more expansive
you get with the word cyborg, the more it includes wearables. Optional
additions will be a part of this explosion.

RT: Peggy Radin’s concept of property—why shouldn’t
removable property be part of our personhood? Maybe different treatments in
tort and accessibility law are appropriate? How much does it matter if our
minds map onto the body part? High heels can be really important to a person,
but not worn all the time.

A: countervailing: in tort, the idea of the body is hugely
important and expensive—you may be committing battery if you strike a horse and
its owner is riding it.

Q: also consider product liability regimes. Strict liability/design
defect.

Jeremy Sheff, A Heap of IP: Vagueness in the Delineation of
Intellectual Property Rights

Vagueness and notice: a pervasive concern in IP. Vaguely
delineated IP rights are worrisome b/c public won’t know what it can do. Patent:
specifics vital and a goal of the system is to provide specificity. Copyright=exemplar
of work is the work makes the claim inherently vague; TM—vagueness attends both
registered and unregistered marks, especially trade dress.

Can philosophical literature on vagueness help?

Sources of vagueness: at least two dimensions. First:
qualitative. IP rights are not really in things, they more resemble rules. The
property in IP is inevitably a category of possible things.

Second: composite nature of IP rights. IP rights/claims have
elements: limitations of patent claim; features, particularly protectable
features, of © work, and components of a trade dress. Although they might not
be explicit in a claim, in an infringement case the first thing we do is ID the
elements and look for them in the accused embodiment.

Qualitative vagueness turns on imprecision of natural
language: “no vehicles in the park” doesn’t necessarily tell us what’s inside
and outside the rule. More broadly, the idea going to philosophy of language
that we have cause to be skeptical that any rule can define in advance its
application to all situations. Even with nonlinguistic claims like © and TM,
those types of claims often get translated into linguistic terms for purposes
of analysis b/c that’s what legal systems do.

Composite nature: there’s another dimension of vagueness,
the problem of the heap. The sorites paradox/the Ship of Theseus. How many
elements can be removed/replaced before it is no longer the same thing? With
patents, all elements are required—unless the doctrine of equivalents applies!
Figuring out how many elements we can take away before we’re not dealing with
the same thing is a central challenge. How many hairs can be taken away before
a person is bald? People disagree, and the predicate operates on a continuum
rather than hair/no hair.

Vagueness can be multidimensional—qualitative and
quantitative vagueness can occur at the same time and any given element can
also be vague, for infinite regress. Best Cellars TM case: what is the trade
dress and how many things don’t have to be there before it’s not infringing? If
the circles for the wine were hexagons instead, would it be infringing? What if
the wood was dark instead of blonde?

Philosophical approaches may not be available to legal
systems. One response: epistemicism: there is a sharp boundary, but it is unknowable.
Or we could reject bivalence: there is a range of cases for which the predicate
is neither true nor false—or both true and false. Legal systems can’t do that—we
need an answer, infringement or not.

Responses to qualitative vagueness, one approach is
precisification: change the natural language meaning of the term to a
quantifiable technical meaning. But multiple precisifications of a vague predicate
may be plausible; which should we choose? One approach is asocial: we
categorize the range of precisifications and try to determine truth values in
certain situations. Narrows the zone of borderline cases but does not eliminate
them.

Social approaches: associated with crude Wittgensteinian
reading: meaning of vague term is only determined by community’s use. That’s
what IP does: allocates authority to community to figure out whether this embodiment
does or does not infringe a right.

Interesting things about IP’s solution: (1) community
differs across the range of IP. Patent: PHOSITA. Copyright: public. TM:
ordinary consumer. (2) Even though the law creates privileged communities,
decisionmakers who resolve vague rights claims often come from outside the
privileged interpretive community (except in ©). Choices are not about
eliminating vagueness but about defining who gets to do it. That tells us a lot
about who the system is for.

McKenna: how does the overall scope question get allocated?
When a court decides something is a valid trade dress, the court is deciding
what the elements are, including thinking about functional elements, then
throwing the rest of the decision to the jury. Even in ©, idea/expression or
merger has also done definitional work.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-breakout-4-ip-and-propertycontract.html

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IPSC Breakout 3: Trademark and Unfair Competition

Posted on August 9, 2024 by rtushnet

Mary Catherine Amerine, Reasonably Careless Consumers in
False Advertising and Trademark

Consumers can devote much more (or less) time to a decision
than seems rational for the amount of risk/benefit in their lives. Court expects
consumers to be reasonably prudent in both TM and false advertising. But courts
apply this test very differently and in contradictory ways for inexpensive
consumables. In TM, assumption is that consumers will be more careful with
expensive goods and less careful, to downright careless, for cheap grocery
items. This goes back to the 1930s. Consumers can’t be expected to examine
labels carefully—they find confusion for marks that might not be very close,
like BREW NUTS/BEER NUTS, POWERBAR/POWERSTICK energy bars, BULLS’ EYE/RAGINB
BULL for BBQ sauce, HUGGIES/DOUGIES. Ann Bartow points out this also reflects
assumptions about female shoppers, who do 80% of shopping. Class component as
well. More importantly, the assumption may just be wrong. 2019 survey on “low
involvement” and “high involvement” buyers; 53% of grocery shoppers were high
involvement; under age 45 more likely to be high involvement; gender had weak
association with high involvement, but yearly income = more likely high involvement.
So courts might be wrong about half the time.

One question: how does this bear on store brands that mimic
national brands.

Compare: false advertising in product packaging, where
courts have very different expectations for the reasonable consumer, both
Lanham Act and state law unfair competition cases, of which there are far more.
Manuka honey case: court said that reasonable consumers would know rather a lot
about Manuka honey. That’s a much higher standard than required in TM. Is this
disparity justified? She doubts it, even based on history and tradition. Low
cost should not equal low care across the board.

Mark McKenna: Is there any relationship between cost and
care or differences in how that manifests in categories? That is, how should
courts operationalize this? Deep tension b/t empiricism and normativity in both
these areas. Is doctrine really trying to approximate empirical reality or making
decisions about the kinds of consumers we’re willing to protect? [which would
be an additional reason TM would be broader b/c we aren’t distinguishing among types
of producers we’re willing to protect in the same way.]

A: sees false advertising cases as normative.

RT: Lowest common denominator reasoning: one response is that
TM says that if consumers are heterogenous we protect the least sophisticated
group regardless of whether there are costs to the nonconfused group. Consumer
protection law doesn’t do that. If we said that out loud within our discussions
of reasonability maybe there’d be less of a conflict.

Relatedly: probabilistic reasoning: a private plaintiff can
win if a substantial number are likely to be deceived, which can be as low as
15%; in a class action, courts think it has to be presumed that 100% are
deceived, and they don’t seem happy with numbers that low although they might
be willing to go with 40% or 50%

Hughes: Surveys aren’t scrutinized for whether they selected
reasonable consumers—which affects the “empirical” claim. [I love this point.]

TM law may also be contextless b/c they’re about
registration. [That seems unlikely to me, given the number of TM infringement
cases litigated about reasonable consumers.]

Courtney Cox, This is a Talk About Deception

Manipulation is a broader concept than deception. Existing
laws and doctrines targeting fraud may also extend to manipulation that’s not
deceptive. Courts might have more power than we think without additional laws.
If we think of consumer protection law as being in part about manipulation, not
deception—Joe Camel, where children are being manipulated—maybe those are not
sui generis but part of a broader prohibition. There are other ways to muck
with adults’ decisional processes. Methodological point: be careful about
theoretical concepts because of anchoring bias (also a leading tool of
fraudsters) which can lead us astray.

Evidence against this thesis: the name of the ancient tort,
deceit. The name of the modern tort, fraudulent misrepresentation. Restatement
Second of Torts also says misrepresentation. But we should get to ask whether
deceit is about “misrepresentation” or about “deception” (the result).

Deception: A causes B to have a false belief (maybe
intentionally). But a better definition includes A intending for B to conclude
(or to communicate/imply) that P, acts so as to cause B to conclude that P,
where P is false, and where A has the relevant beliefs. Mostly, at the very
least, A can’t believe that P is true. If A doesn’t believe P is true, that may
be misleading but it’s not deceptive.

Who cares? Start w/leading example of law of deception, the
tort of deceit, the leading lies-based cause of action: fraudulently make misrepresentation
for purpose of inducing another to act in reliance: subject to liability for pecuniary
loss caused by justifiable reliance.

The centrality of reliance to this tort according to
Goldberg & Zipursky matters: reliance is not about harmful lies; even if a
misrepresentation harms a victim, there’s no deceit claim unless the victim
relies on it. If a third party pays for a purchase by a second party that she’d
already agreed to pay for (“whichever you pick”), and the misrepresentation
affected what the second party chose and negotiated for, the third party can’t
recover for deceit because she didn’t rely on the misrepresentation. The
deception didn’t play into her decisionmaking process. Thus, it would seem that
deceit is not about deception. But then what is it about? Her suggestion:
manipulation. Covert or hidden influence—surreptitious mucking with the
reasoning process. It’s common to confuse manipulation and deception—trick,
dupe, cheat, cunning.

Once you see that deceit is about manipulation and not
deception, you can choose two deceits: manipulating another to detriment or
manipulating another to detriment by means of deception.

But, surprise! Restatement allows claims for deceit even if
fraudster believes P is true.

RT: Perhaps if these distinctions are too difficult for
philosophers they are definitely too difficult for courts and we should start
looking for harm causation + falsity anywhere in the chain.

However: Joe Camel seems different from causing someone
to have a false belief. “Neither true nor false”—bullshit/puffery. Saying that
you “believe” Joe Camel doesn’t make much sense.

A: if we think about deceit as being about deception, you’d
need a proposition, but if it’s about manipulation, there’s a potential for
manipulation in ways other than a false proposition, including a surreptitious
mucking with the decision process. Puffery can be false, but grownups are
expected to know that “best” is not reliable.

McKenna: simple version of manipulation seems fundamentally
incapable of being a rule that a court could apply; distinguishing between
manipulation and persuasion is an impossible task (as is often whether they
have been “harmed” by being persuaded). That suggests the narrow version—manipulating
by deception—is the only way to make the legal standard manageable. [I
will note that an interventionist state could decide to rely on what you
were persuaded to do as a distinguishing fact, though that has a bad
history.]

A: relevance to dark patterns/behavioral manipulation that we
aren’t aware of and affect our decisions but don’t involve propositions.
Philosophers might be able to learn from consumer protection law about how to
break down the concept of manipulation [and distinguish it from persuasion?]

Barbara Lauriat, Two Nations Separated by a Common Trademark
Law

In UK, goodwill is a different thing from TM protected by
the tort of passing off. TM rights depend on registration, though not unaffected
by use; registered TMs are property rights. UK is not “unfair competition”
regime as such: protects the property right in goodwill through tort.

US: TM is use-based and protected through common law
enhanced by statute; US courts identified goodwill as the property right
protected by common law TM doctrines; blurred distinction between registered
and unregistered marks—all protected by the same doctrine.

Christopher Wadlow identified three doctrinal strains by the
1870s: common law passing off, which required fraud and allowed only damages as
a remedy. Passing off in equity, which could result in injunction without
proving scienter. Statutory doctrine of property in TM, by which infringement
was wrong whether there was knowledge or intent. TM law is messy and these
blend; in the UK, those three strands resolved in early 20th century
into two strands: registered TM rights and tort of passing off which protects
goodwill. In US they turned into one amorphous blob. 1903: Paul’s Law of TMs
says in England “TM has become practically synonymous with registered TM.” 1878
treatise: recent authorities mean that TM is property insofar as an imitation
will be infringement restrained by law even when there has been no fraud. What
about things that couldn’t be registered? Was it supposed to take over from
common law? Wasn’t clear. TMs became increasingly formalities-based: in 1905
Act, registration was source of title to exclusive right as opposed to evidence
of common law right; use was not required for registration. But passing off
required property to protect that wasn’t a TM. By 1915, they used “property in
the business or goodwill likely to be injured by the misrepresentation.”

In the US, goodwill was the object of TM/unfair competition protection;
goodwill is use-based.

Areas that highlight the challenges of combining formalities
based statutory protection with use based common law protection in both jurisdictions:
secondary meaning/acquired distinctiveness; incontestability; prior rights;
assignment in gross; bad faith; dilution; relationship with privacy/personality.

McKenna: Periodization here is tricky b/c registration comes
to UK earlier. Thinks by early 20th century, distinction between
technical TMs and unfair competition was pretty solid, though it then
collapses. Trade names: now thought to be the category of things that need
secondary meaning, but they used to be something different. Lanham Act drafters
understood themselves as covering technical TMs and leaving unfair competition
alone; courts just made up protection for unregistered marks, mostly because of
Erie. There was a distinction in American law, but it got wiped out.

A: broadly agree to a great extent—not as linear as it was
in the UK. US swerves at two and then gets one.

RT: [unjust enrichment: not required to show harm. Starting to
create Article III problems in the US. What about the UK and lack of harm
requirement?

A: there are some cases that definitely verge on harm-free.
Depends on the judge. Unfair advantage—incorporated EU rules—is that unjust
enrichment? Does unjust enrichment start to come naturally when you’re
protecting goodwill? If there’s statutory provision, you just protect against what
the statute says (though you may have to figure out what counts as “unfair
advantage” from the statute).

Vidal v. Elster: Thomas claims that English law protected
against use of name as fraud; no, that’s the opposite of the truth, 1848 Clark
v. Freeman, where P was an eminent physician but not a competitor in the market
for consumption pills; he lost because he had no claim (neither libel nor TM).
English law protected against use of TMs/passing off by competitors,
which could include names under appropriate circumstances.

Matthew Sipe, Trademasks

Ghost kitchens where you think you’re buying from a local
but you’re getting Chili’s wings, which you might already know you hate.
Rebranding after disasters, e.g. AirTran to Southwest. Makes it harder for
consumers to exercise their preferences. New TMs hide from consumers. Companies
also do the opposite: proliferate brands; buy small businesses and keep their
names so the beer you think is local is made by ABInBev. Every beer band you’ve
ever heard of is owned by two sellers. Conceals outsourcing; changes in labor
practices; changes in product quality.

TM law tolerates this; it’s not misuse or abandonment. This is
a problem for our ordinary conception of TM law as protecting consumers against
deception, reducing consumer search costs; protecting producer investments, incentivizing
producers to maintain their reputations. Masking creates deception and
confusion, increases search costs, and reduces the incentive to maintain your
reputation because you can bail at any moment. Even in the heartland—passing off—we
are totally fine with deception and confusion aided and abetted by TMs.

Instead, the only justification for TM law is protecting
producers; benefits to consumers are purely ancillary. TM owners allow
producers to control search costs for consumers—raising and lowering are
both permissible.

Makes TM law as competition story less plausible—not efficiency,
not consumer welfare, so it’s competition law with a producer welfare standard.

Makes TM as property way more plausible: centered on
preventing interference and free riding rather than public benefit; quasi-moralistic;
right to destroy; lack of strong duties for owners; tolerant of inefficiencies.

Proposal: Supplementing trademarks with consumer protection—to
make TMs more acceptable, control TM as vehicles of deception that are
deceptive because of secondary meaning. Maybe InBev needs to put its logo on
the beer brands it acquires, at least for a while. Maybe new formulas need to
be clearly advertised.

Fromer: who would have standing? Competitors might be the
appropriate targets in this story.

McKenna: this isn’t just about when there’s some change in
the mark. Inherent in the fact that the modern source rule doesn’t mean
anything like what “source” means—includes marks adopted in the first instance.
The way they’re used obscures everything about the production process.

Theoretical claims about TM are grossly overbroad: TM has
never been about search costs—only a very tiny range of search costs; there are
millions of other sources of search costs about which TM has nothing to say. If
you really cared about search costs writ large, you’d do cost benefit analysis.
You’re talking about circumstances where the balance changes. But that just
means the scope of TM’s concern for search costs is narrow; the assumption is
that the market polices other aspects of search costs—if they change their
product and it sucks, the best thing they can do is keep their TM because it
allows us to punish them for that.

A: some are self-correcting and others aren’t.  A consumer might never discover that their favorite
microbrewery was purchased by InBev.

Hughes: you’re against versioning? GM makes Cheerios and
Trader Joe’s makes Honey O’s in the same facility. Is that also a problem
because TJ’s sells what are in effect Cheerios? Thinks the deterioration
problem is self-correcting. Ben & Jerry’s says Unilever on the back so it’s
not deceptive.

Rosenblatt: We think of TM as being about deception, but
maybe they should be about manipulation! Also, maybe this is not an acceptable
regulation of interstate commerce any more!

RT: Take a look at treatment of omissions under consumer
protection law/scienter requirements are relevant. Scienter and materiality are
often partners: if it’s material and unexpected, we can often infer that you
intended people to rely on the omission. When you have to read the back of a
package as a reasonable consumer is a question presently setting district and
circuit courts on fire!

A: expects that the lowest likelihood of reading the back of
the box is when you’ve bought it before and already have defined expectations.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-breakout-3-trademark-and-unfair.html

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IPSC session 2 copyright/trademark

Posted on August 8, 2024 by rtushnet

Copyrightable Subject Matter

Kevin Collins, Copyright in Suburbia (Collins is a
registered architect as well as a law prof)

The stakes: whether © is “working” in suburbia matters in
ways that might not be self-evident.

Snack box approach: scattered observations about costs and
benefits; a bit of a wash.

Design of built environment is a tale of two industries.
Custom design: almost all nonresidential buildings; some upper end residential
buildings; employs most architects. Site conditions, budget, programmatic needs
are subject of custom design; a few top-end family homes. Stock design: mostly
residential, and single-family homes in particular. Customers take design as
off-the-shelf, commodity product; architects are scarce. Architects may be
dismissive of these as architectural design at all.

Custom design: © is largely irrelevant. Custom design is
where you’d expect innovation and creativity to be living. But that turns out
not to really be true b/c it’s hard to attribute to © any role at all in the
custom architectural world. Architects don’t use their IP to tamp down on
copying by competitors—as determined by datasets of complaints and trade press.
What architects do is they sue their clients who have them do preliminary
designs and don’t pay, and they sue departing employees. Why? There isn’t close
copying for reasons independent of ©; norm of creativity on supply side among
professionals; demand side—client demands for program, site, budget mean close
copies have little value to clients. They don’t want something tailored to
needs, tastes, and budgets of someone else. [Seems like Amy Adler’s work on “art
world” where © is also not relevant.] Implication: weak incentive to create justification
for ©.

Stock design: Similar houses do exist; © owners, usually not
architects, do use their copyrights against competitors. Copyright has the most
impact on the least creative sector.

Observations: Little evidence of copyright induced
creativity from AWCPA. Originality is minor and incremental at best in the
suburbs. Little evidence of change since 1990. Incremental creativity of the
type one might expect even in a competitive industry w/o ©? Functionality of
layouts helps to explain similarity of floor plans, but not similarities of
elevations, massing, or style.  

High marginal cost of production may also make © less
relevant. Suburban architecture doesn’t respond to © incentives; efficiencies
of scale and production, especially w/in large builders. Demand side:
conservatism due to focus on investment and resale market. Want houses “broadly
attractive to all comers.” [NFTs as contrast? Resale value was a big concern,
maybe creativity not so much.] House as symbol of domesticity and arrival in
middle class: people buy “sanitized versions” of the “riskless familiar” that
seem predictable and safe. Consumers may simply not care about design. Size and
location are all important; money spent on design is wasted.

Troll problem: Highlighted in 7th Circuit Design
Basics cases. That was a problem at one point but doesn’t seem to be so today—a
significant cost, but now mostly in past. Design Basics: stock plan licensor
filed over 120 infringement lawsuits against developers/builders; evidence
suggested that © enforcement was more profitable for them than licensing and
building plans. Trilogy of cases: each one got more severe on Design Basics
than the last—2017: no access, no substantial similarity/© is very narrow; 2021
redlined version in D’s files and still no substantial similarity; 2023 fee
award. Of complaints alleging infringement of stock single-family home designs,
a downward trend to about 10/year. But housing completion has still been on the
rise. Perhaps potential Ds are behaving differently, but Ps may also be. Most
of the repeat players aren’t active any more; most of the remaining involve
homebuyer intermediaries and single infringing houses. Some lapsed-licensee
cases.

Homebuilding industry structure: Not a very concentrated
industry; mom & pop builders are important players. Merchant builders are
large scale, vertically integrated from land acquisition to sale of house;
proprietary portfolio of designs. Mom & pop: build single houses, do
license plans; there’s a role for © there for well-documented plans at the
upper end of the market for stock houses and lower end of market for custom
houses.

Yvette Liebesman: Renovation industry/additions? Landscape
architects?

A: has restricted to types of design protected by AWCPA, and
landscape is outside that, so he hasn’t looked/little © protection for things that
aren’t buildings. He does count renovations within the custom design world b/c
people who want renovations have particular needs, so the same rules apply—©
doesn’t play a real role.

Charles Duan, What is Copyrightable in Software?

Trilemma: (1) methods of operation aren’t eligible for ©;
(2) Congress requires software to be copyright-eligible; (3) software is purely
a method of operating a computer. Courts have tried to bend one or more of (1)
and (2) to make this work. His claim: (3) is the error. There are expressive,
nonfunctional elements of software code, which is what © should protect.

Functionality: an element is functional if changing it would
result in performing different instructions, or in a different order; storing
substantively different information in memory; generating different outputs
given the same inputs. That’s a high bar for functionality. If there are parts
of code like that, then the Fed Cir is wrong (that you have to protect
functionality if software is to be protected).

Spacing code affects how humans look at it, not actual
program operation; that could be expressive. Equivalent grammatical forms = work
same in computer, read very differently to humans. Seems expressive.

Bound variables: names of variables in functions—doesn’t
care whether a function is called r or radius. That name can’t be used anywhere
else or accessed by any other part of the program so its purpose there is
solely to define the function for the reader. Order of declarations is also
optional.

You can structure code in ways that are more or less readable;
straight through or start with summary; ways that convey brilliance or not.
These make programs expressive and don’t have any affect on functionality.

Applications: Literal copying of source code is still infringing.
Nonliteral copying in GvO, though, is unlikely to infringe unless there are
particular elements—the elements to which O pointed were all still functional;
if you changed them you would have gotten different outputs. But ordering of declarations
could have made a difference—but it’s not clear those were copied and they
probably weren’t.

Generative AI code infringement case: Litigation said “other
than spacing, these are identical and that’s evidence of infringement.” But
spacing is what’s expressive! The compact but disorganized example is the
human-written one; means that Copilot recognized the parts that were
nonfunctional/expressive and integrated them into the software—it seemed to
distinguish b/t functional and nonfunctional material, an interesting and
surprising result.

Christian Helmers (co-authors Carsten Fink, Julian Kolev,
Andrew Toole), On your marks! Trademark races and their impact on product
introductions

Some TMs are more competitively effective than others.
Supply of competitively effective TMs is limited: increasing TM depletion. What
is the impact on businesses and consumers?

Aim: identify TM races where demand exceeds supply; estimate
causal impact on product market outcomes; simple counterfactuals allow trading of
priority. Ask about negative effects of not getting first-choice TM, potential
gains from trading TMs; whether trading should be allowed.

Data: look at suspended applications, which can occur with a
potentially confusing TM application w/an effective filing date that predates
the application. Suspension removed when first filed application is abandoned
or registered. Dataset was ITUs only. Being able to introduce first choice mark
makes launching product much more likely.

Priority would be predicted to be transferred in 53% of
races; transfers would boost estimated registration rate from 37% to 41%. Losing
a suspension race leads to 1.5 years longer examination pendency; 50% lower
registration rates; 20-40% slower product introductions; 30% drop in continued
use rate for second-choice marks.

Lunney: you could already pay a first to file person to drop
their ITU; once you’re in a race, if you’ve filed the second ITU and they drop
the first, you get priority over the rest of the world. So why aren’t these
deals already happening?

A: frictions may exist.

Dustin Marlan, Disclosing the Trademark Bargain

Registration offers information: domicile/citizenship; date
of first use; first use in commerce; goods; and drawing. The TM regime hasn’t
been powered by the Progress clause, but there’s still a commerce related bargain:
protect public and protect TM owner. Disclosure: gives registration-based
incentives to disclose; the price is the disclosure allowing the public greater
transparency and perhaps surveillance for the mark owner. Reveals branding
strategies (but can be fought with “submarining” filings and shell companies to
avoid early disclosure).

Lunney: other issues—you may expose yourself to scams—what are
you looking to do?

A: benefit the public more than TM owners. TM owners don’t
get a lot from their disclosures, but that’s not a problem for him. Looking for
disclosure that will benefit the public.

Justin Hughes: Benefits exist for capital markets by reifying
the right; enable examination of product/service categories and comparison/transaction.

Jason Rantanen: Some of the costs seem more like consequences
of registration rather than consequences of disclosure—the risk of getting a
rejection isn’t a result of disclosing, it’s the result of trying to get a registered
mark. Maybe this is just a quid pro quo, and disclosure is only part of it; the
costs of entering the system (e.g. preparing the application) are also there.

Q: if we take disclosure seriously, would that affect how we
think about unregistered marks?

A: Sort of like trade secrecy v. patent—you could use your
common law TM rights but forfeit the benefits of registration.

Sari Mazzurco, Trademark Law’s Public

Challenge received wisdom that TM is for consumers and
producers. Sometimes that’s all there is, but sometimes TM looks to the
interest of the public at large—doctrines historical and contemporary bears out
that public interest. Historically, statutory bars for scandalous, immoral and
disparaging marks didn’t serve producers or consumers. They show that from the start
TM aimed to serve other interests—public morals, standards of respect. Dilution
by tarnishment is similar.

Equitable defenses also go beyond producers and consumers to
consider the public interest more broadly. Genericness and descriptiveness also
probe into communities of meaning and not just individual consumer’s ability to
determine whether a term communicates the product or the producer. TM protects
an evolving and debatable image of the public.

What’s the public? Isn’t it just an aggregation of producers
and consumers? No, it’s from communitarian democratic theory, concerned with
the common good and not just self-interest. Subject to normative standards of
behavior. When TM serves interests other than consumer and producer
self-interest, the results are more aligned with communitarian theory.

Consider suits over unions’ use of employer TMs; NFTs;
people’s rights to use names after they’ve sold the eponymous brands they
started.

Unions: Starbucks; Medieval Times; Trader Joe’s lawsuits
from employer against employee union. That could in theory be about protecting
goodwill, but it’s also about labor organizing and solidarity. If TM also
sometimes serves the public, it’s not off-limits to interpret/apply the law in
a way that serves labor interests. Whether they should is open to debate, but
they should at least be able to evaluate the question on the merits. Could be
different outcomes [note that the two decided cases involve union victories].

Glynn Lunney: Transition from public writ large to specific
case of unions and others may be difficult. We have specific hooks for the
registration exclusions; post-sale confusion has at least a hook in the statute.
What is the statutory hook here? [Preclusion? Dastar-like analysis for
labor law?]

A: not categorically different from how the 1A has been
incorporated into TM law. Could do something like Rogers. [Although with
labor, the relevant labor statute precludes injunctive relief, which might be
read as doing the harmonizing.]

Hughes: What we want TM to do (protect public morality) is
not the same thing as what we want it not to do (interfere with labor law).

A: we can make them part of TM doctrine—internalize things like
1A limits. [Again, maybe Dastar would be a useful comparator—is that an
internal doctrine or an external one?]

Marlan: Maybe consumer is just incomplete metaphor for
public—everyone is a consumer [at least of ideas, and courts protect political
parties and religions through an analogy to market-based consumption].

A: we should call it what it is then: a public.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-session-2-copyrighttrademark.html

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IPSC: IP in the Aftermath of the Supreme Court and some TM

Posted on August 8, 2024 by rtushnet

Mark Bartholomew, Publicity Rights After Warhol

Risk that courts will apply Warhol to ROP cases, but transformativeness
is the only element in the ROP defense as defined by the California SCt rather
than a multifactor fair use test. This could make commerciality more important,
given the Court’s focus on commerciality in identifying transformation. Cal SCt
said that commerciality wasn’t important; this could be a substantial change.
Before 2023, Warhol himself was a super-precedent, cited by Cal SCt and others:
he was so important to art that of course his works must be protected.

“Nihilistic” 1A doctrine unconcerned with policy or
normative claims, after Elster. Elster tells us to look for a
tradition of a particular speech regulation; deals with publicity-like
interests in propertizing identity. JDI also suggests looking for track
record [really? It seems just to announce a conclusion to me—confusion provides
all that’s necessary to protect speech]. Transformativeness has a track record
that can be evaluated. One criticism: not protective enough of speech
interests. He thinks it’s pretty protective—Tiger Woods case, Barbara Kruger,
Noriega Call of Duty case. But is it inconsistent/vague? Video game cases
involving college sports—for the most part, video game cases have gone in favor
of game makers; 2013 cases were just conservative (in nonpolitical sense)
courts getting used to a novel form of art, despite SCt’s instruction—the problem
isn’t transformativeness itself.

Eric Goldman: Stuck on first move of accepting that
importing transformativeness was a good idea in the first place. © and ROP are
different things.

Rothman: Right that Warhol will have reverberations
in ROP cases where the jurisdiction uses transformativeness. Transformativeness
is only one of many 1A approaches in the context of ROP defenses. Maybe Warhol
will just harm transformativeness as a defense in the ROP tout court and we’ll
see other defenses. [The uncertainty of Rogers, a major alternative,
also plays in here.] B/c we only looked at transformativeness in ROP cases, we
rejected defenses where the underlying work doesn’t alter the person’s identity
or appearance—that looks really wrongheaded as a dividing line.

RT: One reason transformativeness differs is that © involves
a work to work comparison. To transform a work into another work is not the
same thing as taking a person and … putting them into a work of some kind;
courts divide on whether you have to alter a person’s appearance or put them
into a different context. [This is related to Rothman’s point that things like
newsworthiness—which is not the same thing as transformativeness—are also 1A
defenses.]

Michael Carroll (co-author Peter Jaszi), Campbell at 30: A
Retrospective Appreciation  

Part of a series based on the history of fair use. Warhol’s
callback to Campbell’s parody/satire discussion and other treatment have focused
new attention on how to interpret Campbell. In context, Warhol’s bark is worse
than its bite. Focus on arguments made by lawyers. Congress endorsed an
incompletely theorized agreement w/o contents of fair use being defined. There
is no theory of fair use, and no agreement on principles, in early fair use
cases like Sony. The briefing reflects that. Sony deals with four
factors in one paragraph. Harper & Row decides the case in O’Connor’s
discussion of the common law right of publication, and the factors don’t do any
work in the case. The briefing by the parties is not different.

Campbell is the first time the Court considers the
four factors as providing a statutory test and tries to establish a methodology.
In Campbell, Leval is barely mentioned in the briefs; Acuff-Rose calls
attention to the article at oral argument b/c Leval recants his view on the
value of some quotes. Rehnquist: doesn’t Leval also say you should withhold
injunctive relief? Acuff-Rose says no; Rehnquist says: you want the sweet
without the bitter. The basic analysis comes from Souter’s chambers, and it’s a
bit of a black box. Oral argument and correspondence indicates Justices had
read Leval’s article and welcomed his general theory while quibbling over the
edges. Souter understands parody and satire as subsets of a larger set of
criticism.

Recharacterized after Warhol: should not be significantly
limited. The goal of Campbell was to adopt a general analytical
framework that could be used beyond parody v. satire; the distinction is used
to focus on the user’s reasons for the use. The analysis accepts that a range
of reasons will justify use. Parody/satire is not a targeting limitation or
requirement for a fair use; it illustrates why the user needs to explain the
reason for the use. Post-Campbell case law mostly focuses on additional reasons
for use beyond satire, which is why parody/satire drops away. Warhol’s callback
is there to illustrate that “further purpose” or “different character” needs an
explanation, nothing more. 

The cert pool memo paraphrased QPs as focusing on commercial
use, including Rule of Evidence 301 and presumption against commerciality.
Parody as a form of social criticism; whether © owner has protected interest in
market for parodies even if there’s no competition with any existing parodies
of the original work. O’Connor proposed reformulating the QP as whether the
commercial parody was fair use. This was the first time the Court addressed
fair use as the sole question (Harper & Row was also about
copyrightability), and one without a constitutional overlay in a QP.

After oral argument, all nine vote to vacate; 3 to outright
reverse; Kennedy argued for a presumption in favor of parody, with a pretty
strict definition of parody. Souter resisted, explaining that some works may
not be parody in their entirety and there could be pure parody or mixed, and
criticism without a touch of irony.

Industry advocates asked the Court to roll back Campbell in
GvO and Warhol, but the Court doubled down on transformative use,
which is to the public’s benefit for the range of uses that it permits.

Q: why is Souter so thoughtful in correspondence but not in
the written opinion?

A: it’s still a parody case. As the courts start to see
other user stories, they find the general framework helpful in evaluating the
specific user story. It’s crazy how explicit the logrolling is—as long as we
think they’re not dead wrong, we need their vote on this other case so we’ll
make the requested change.

Rachael Dickson, Administrative Discrimination in the
Trademark ID Manual

The TM ID manual is a searchable database of over 64000
acceptable IDs for goods and services. Strict requirements for goods/services
identifications to ensure proper appraisal: specific, definite, clear and
precise. They do update levels of definiteness required over time—software used
to basically allow “software,” but that’s not true anymore. You can suggest new
additions to the ID manual via email; they’re processed more quickly than anything
else at PTO, within a week usually. ID/Class also makes their own modifications
to update IDs to conform to Nice Classification system (PTO usually requires
more definition than Nice).

Benefits of ID being in Manual: Lower application filing
fees–$100/class. In the future, that will change to $200/class. You get a lot
of guidance on what IDs are acceptable and faster examination. Potentially less
back and forth between applicant/officer. Response times are so bad now that
you want to minimize back and forth. There’s also a legitimacy impact; in 2010,
some cannabis IDs were accidentally added to the manual and filings went up;
went back down when IDs removed. Also true for other goods/services, such as “sex
therapy,” “gay community,” “sex toys,” IUDs; condoms.

PTO also benefits from IDs being in the Manual, in
efficiency and faster examination.

Evidence of discrimination: Customizable/broad (clothing featuring
X, medical services); unusual: “toy figures in the form of a potato”; “financial
evaluation of alpaca fiber.” Missing IDs: medical services relating to abortion
or contraceptives, sterilizations, gender-affirming medical services, sex or
contraceptive education; proctology; other goods/services relating to sex/sexuality.
Various contraceptives and sex toys were added significantly after the Manual
went online; IUDs were added only in 2009. Adult magazines, adult films, etc.
Sex therapy only added in 2024. But prostitution services in Nevada are in
there! There have been federally lawful cannabis goods/services since 2018 with
very specific chemical definitions. Traditional hemp goods are in the manual,
but not cannabis.

May be related to immoral/scandalous refusals (now not allowed).
It does continue the PTO’s decades-long pursuit of “purification” or prudishness
or fear of Congress.

There are no evident standards for which IDs get refused.
Sometimes decline to add things that are already covered. A pro se applicant
wouldn’t know that “medical services featuring X” is available for abortion and
would have to pay extra. They may look at applicant demand (but see demand for
cannabis). They suggest that the goods/services have to be per se lawful, but
that’s clearly not true. Her experience: suggested medical services in the
nature of providing abortions, but that was refused because of the fill in the
blank option, but there are nearly 100 such specific services including “medical
clowning” already in the Manual. Similar refusals for drugs, sex ed on similar
grounds with similar other IDs.

For cannabis, they said that things requiring further inquiry
into lawfulness weren’t eligible, citing gambling and prostitution and other
things that are definitely in the Manual. NFTs can violate securities law but
there’s no lawfulness refusal there.

7 IDs had Christian in them; PTO added some for Jewish and
Muslim religious ceremonies.

This is going to become a bigger problem as higher fees go
into effect. They should make public standards instead of private standards
that are violated all the time.

Goldman: Anarchy! There’s a financial cost to the anarchy
creating legal friction. Why is the PTO creating this huge database of
classifications? Other gov’ts create their own databases—why is this one so bespoke?

A: good question! Wanted to have a useful resource for
applicants and didn’t realize implications of leaving out goods and services.

Jessica Silbey: Ari Waldman has written about “checking the
box” for gender & identity questions—those lists accrete over time and get
sticky/don’t change. Institutional systems/categorization. Danah boyd has
written a really interesting article about census data—how to be both
totalizing and efficient.

Rothman: Maybe the problem is—why do we need such specific
IDs? That seems to open the door to lots of administrative work and discrimination.
And if they had more general categories, do we really need medical clowning as
an ID. Does the elimination of Chevron alter this?

A: They like having definite IDs so it helps you understand
likely confusion. If you just claim “software” then there can be huge
conflicts. Don’t know about Chevron—the ID manual isn’t even a
regulation, just referred to in TMEP.

RT: If you have relative examination, and not just refusal
on absolute grounds, you really need to know the scope of applicant/registrant
services. And if you accept things that aren’t in the Manual, you’ve already
accepted some openness, so you might as well get it right.  I wonder about an APA challenge—there is
clearly Article III standing if you have to pay extra money.

Q: There’s a benefit on the administrative side and a cost
to the user—how do you weight those?

A: Given size of Register, the specific IDs are so useful to
evaluate risk that we shouldn’t take those away—it helps applicants as well as examiners.
(Examiners sometimes won’t accept Manual and require more definition; also the
fill in the blanks options can be abused.) We could reshuffle classes some but
we shouldn’t discriminate against sex/abortion.

Zaneta Robinson, The Likelihood of Confusing AI

Trademark law and language death: languages are dying around
the world. 300-600 languages may be gone by the end of the century. And there
are a lot of registrations. Should not apply doctrine of foreign equivalents in
many circumstances—rebuttable presumption against translation if the
similarities are only connotative. Presumption should be rebuttable using
evidence from corpus linguistics.

Q: Examiners shouldn’t be using Google Translate in the first
place, since it’s bad!

A: Paper gets into that—evidentiary rules for examiners
allow use of online databases or websites, so they’ll use Google Translate.

Rosenblatt: for a dying language, it’s unlikely to be
translated anyway—so is this really part of the problem for dying languages?

A: Examiners have an opportunity to say that confusion is
unlikely, but there can be problems. Office Actions are where the bad stuff is,
not TTAB. Nigerian client may have trouble—due to the increasing use of African
languages in the US, may be considered a common language.

Question I didn’t get time to ask: I think there might be different
issues with non confusion refusals (geographic descriptiveness)—I’m thinking of
the MOSKOVSKAYA decision where the Fed Cir is skeptical that English speakers
would recognize it as a Moscow-formative. How would a presumption against
translation work when the underlying words are generic or descriptive for the
goods/services? A risk of cultural appropriation?

Betsy Rosenblatt, Schedule A Pleading, Trademark Overreach,
and the Role of E-Commerce Platforms

Starts w/overreaching Schedule A lawsuits against a fan artist
making Sherlock Holmes fan art. Not a counterfeiter. Not acting in concert with
others named. The registrations aren’t for the relevant goods. Eric Goldman and
Sarah Burstein have written about Schedule A litigation as trolling. Often the
complaint is so redacted that the alleged infringer can’t find out what the
accused marks are; the host sites like Etsy/Redbubble just take whole store
down and freeze accounts. This could have been a C&D to the cite, under eBay.
Then there’s the ransom: to get unfrozen, pay us a significant amount. NDIll in
particular is open to this even though these lawsuits are civ pro nightmares.
They don’t satisfy Twiqbal because they don’t examples; there’s no
evidence of jurisdiction; no use of int’l service of process; joinder is all
wrong; sealing and redaction is unjustified; lack of inclusion of platforms is
unjustified under Rule 19 and they should be included parties; default means
none of this is ever adjudicated. The complaints are full of xenophobia—how bad
Asians are.

INFORM Act should make this all unnecessary—TM owners said
that they don’t know who the sellers are, but INFORM requires this information.

Q: Why NDIll?

A: some companies found the vein, starting with what may
have been marginally legit albeit corner-cutting claims against counterfeiters.

from Blogger http://tushnet.blogspot.com/2024/08/ipsc-ip-in-aftermath-of-supreme-court.html

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