Rebecca Tushnet

WIPIP session 5: Anti-Circumvention

Posted on February 3, 2024 by rtushnet

Charles Duan,
Property v. Property

1201 met connected
devices—computers are everywhere. Allowed producers to control coffee machines
by putting software in them; can prevent use, resale, using unsupported coffee.
Harms: speech, consumer protection (false advertising/disappointed
expectations), competition/antitrust, innovation/fair use, interoperability,
accessibility, security and privacy, environmental harms of unrepairable devices.

Project: frame these
as interferences with tangible property rights (don’t even have to get into
digital property claims). Interference with alienability/resale—Molly Van Houweling’s
work on interference
w/numerus clausus, creation of servitudes. Right to exclude: to prevent
others from entering onto our property—1201 interferes w/that, as w/the Sony
rootkit (or the Polish
trains). Usufructuary rights—use and benefit from property; interference
w/right to repair and w/right to use it with other stuff by preventing
interoperability. Right of possession: They can break devices remotely. Amazon went
into users’ Kindles and removed copies of Orwell’s 1984.

Why: Useful way of
organizing concerns and showing how they interfere with specific property
rights.

Takings?

Property v.
property: TM v. domain names; land v. chattels; IP v. consumer goods.

Cathy Gellis:
conflicts b/t two types of property validates propertizing IP, which she doesn’t
want to do.

A: there are disagreements.

Gellis: don’t
concede too much.

Eric Johnson: right
to possess seems difficult—removing 1984 from Kindle seems like interference
w/right to exclude. Not necessary to argument.

[RT: Takings might
be better reframed as trespass; Eric Goldman will hate this, but some courts
are willing to say that having these unwanted bits constitutes a trespass. 1201 is not a property right; it allows these
intrusions in defense of a putative property right—self-help? That is, the
state has both legalized a certain kind of self-help that would otherwise be
illegal and criminalized self-help on the physical property owner side that
would otherwise be legal. Maybe that’s a way to frame the takings issue?]

A: takings: Sony
rootkit is installed, and you’re not allowed to remove it because of the power
of the state; similar to Loretto v. Cablevision. [voluntariness seems like a
problem here]

Doing this without
privity means that even if it could all be done w/contract, 1201 goes beyond
what contract could have done.

Q: virtual goods—contracts
completely control and avoid the property questions, so you don’t even need
1201

[I think the Blizzard
litigation suggests that 1201 does provide an advantage, at least in remedies]

Boyden: It’s not an
accident that we have different intuitions about streaming DVD than controlling
your coffee maker—these are legally dubious interpretations of 1201 in the
first place.

A: Chamberlain highlights
that these are abuses, but you have conflicting precedent w/Blizzard and the
Copyright Office saying no, 1201 is absolutely supposed to cover these situations.
Highlights that Chamberlain and other cases are about personal property versus
1201’s use of copyright.

Pam Samuelson: don’t
forget 1202. You’re forbidden to remove/alter information at pain of
$2500/violation. Include some discussion about remedies, b/c 1201 and 1202
violations don’t depend on registration and no one focused on the remedies.

Cathy Gellis,
Jawboning in Plain Sight: The Unconstitutional Censorship Tolerated by the DMCA

Prior restraint
problem: mere accusation of infringing content online can cause censorship even
before any adjudication. The sanction is applied to the expression itself, and
in the wake of BMG v. Cox, the sanction is applied to the speaker, even in advance
of a finding of wrongfulness.

Safe harbors are
important. Prior restraint creates constitutional problems. “Jawboning”: a way for
gov’t to do end run about 1A by masking attempts to affect speech with
otherwise seemingly legitimate policy actions. Threats to split up FB unless it
moderates content in a certain way: tries to intimidate FB, a classic example
of jawboning.

Apply this to 512:
notice and takedown incorporates prior restraint; mandatory termination
provision; subpoena mechanism. 512(f) is an insufficient constraint. Cox case
is alarming b/c takedown notices were often so bogus that © claims got
dismissed, but they’re still held liable for ignoring bogus notices. It matters
b/c it’s censorship. Jawboning is often directed at specific content, more than
DMCA, but still procedurally prior restraint, and still makes all speech
vulnerable in a way that undermines free expression. Metastasizing of takedown
concept to other areas of disfavored speech.

Eric Goldman:
Jawboning might not be right analogy—think about gov’t instructions to private
speakers, but DMCA notices come from private individuals. The mechanisms are
analogous but the terminology might not be helpful. Question: if there was
strict liability for publishing infringing speech from a third party, then
would a safe harbor be a harm to speech? If it’s fair to have strict liability,
why isn’t it fair to have notice and takedown safe harbor? Or is the argument
that it’s an unconstitutional condition?

RT: Compare reasoning
in Disney case: if you actually retaliate for Disney’s speech, there’s no
claim. Jawboning as a concept may be too nakedly political to apply in any coherent
way. Bigger specific problem: Shelley v. Kraemer & NYT v. Sullivan—previously,
we saw courts unwilling to apply Shelley beyond restrictive racial covenants;
also unwilling to apply Sullivan beyond defamation. Is there anything but
Sullivan that makes private causes of action into state action? Courts don’t
think they’re violating the 1A—Schedule A defendant cases, same set of
problems.

Gibson: doesn’t
think Cox as a DMCA case at all—those weren’t really DMCA notices because
conduits don’t have takedown obligations; they were faux DMCA notices sent w/o
any of the few safeguards that exist under the DMCA. They’re making failure to
monitor repeat infringers into its own independent basis of liability—so it’s
not really a DMCA case, but a conflation of common law and DMCA theories of
liability.

Linford: are you
arguing in favor of a right to trespass on someone else’s property to speak?
Courts won’t want to hear that. Does a strong form of your proposal prevent YT
from agreeing to have Content ID, given that the backdrop is the DMCA [and also
a huge amount of pressure from lawmakers to expand Content ID, by threatening
to amend 512].

Tyler Ochoa:
Zacchini is an example of applying Sullivan principles to the ROP.

Bruce Boyden:
Privacy cases about the privacy torts also do so.

Blake Reid: © Infringement
and Noninfringement Doctrines are Lousy General Purpose Governance Regimes for
Solving Every Single Social Problem Involving Creative Works and Uses Thereof

Why does © show up
at so many socially important issues and take pride of place? Accessibility,
cybersecurity, physical property—making a hash of other areas. AI: © has taken
a dominant role despite a wide range of policy concerns. Adjudicating
noninfringement is procedurally unfair, and often results in wrong decisions
for copyright values, but the bigger problem is that © is fundamentally
unsuited to these tasks.

Governance seam
between fixation and use: at point of fixation a work is of no particular value
to anyone but author; for a work to flourish it needs to be experienced by
others, which requires copying, distribution, display, performance, etc. That
friction creates a governance seam suited to ©: regulatory benefit on
creator/assignee and regulation of downstream uses/users.

Copyright summons its
values, institutions and objects to the imagined regulatory scene. Mostly utilitarian
in the US. Institutions: courts, Copyright Office, Congress. Centers objects:
the work, the infringing/circumventing activity, the rights holder, the
infringer.

Even before an
action is instituted, © makes a powerful set of preliminary judgments: rightsholder
is the hero of the story/presumptive beneficiary of scheme. The work’s
existence benefits the public. The downstream user is presumptively an
infringer. Secondary assessments might lead to noninfringement, but
noncopyright values haven’t entered the story at all. Doctrines of
noninfringement are likewise going to give primacy to © values, and so the
threshold noninfringement defense is to appeal to © values like the
expressiveness of the accusing work. Must invoke limitation or exception on
copyright’s terms, only in the context of ©’s chosen institutions. In fair use,
3 of 4 factors center on the copyrighted work, while the first attends to the
use, but not to the policy implications of the use or the moral/political
status of the user. Instead, vibe check on legitimacy of use. To the extent it
considers noncopyright values, funneled through vague concept of transformativeness.

Specific limitations
and exceptions are no better, and hard fought over years through (captured)
regimes like WIPO or Copyright Office triennial review. At most user can get
use declared outside of copyright’s scope, which can be enough if all the user
wants is use w/o © liability.

But other regimes
might want more outcomes than that—they might seek to afford benefits to
creators beyond mere ability to structure transactions. They might have a
distinct value system w/radically different regulatory goals.

Inaccessible works: ©
asks is it ok for a third party to make the work accessible? Reluctantly said
yes, but accessibility law sees inaccessibility and the persistence of
inaccessible versions as a harm and a barrier to full participation. Might want
to compel creators to create accessible works in the first instance, rendering
remediation irrelevant.

Generative AI: a wide
range of other laws are relevant—transparency, labor law, antidiscrimination,
privacy and data protection. Largely absent from © noninfringement
determination. ©’s occupation of the governance scheme reinforces ©’s values
even when there’s a noninfringement finding that use/user are in ©’s periphery.
Frames wrong questions, diverts resources, yields results hostile to core
values of other regimes.

One set of fixes:
non© bodies of law shouldn’t concede the governance seam—creation and copying
of works that are likely to give rise to other policies. Need stable legal/policy
foundations in advocacy groups—disability law; budding law of repair. Those policy
agendas are necessary for researchers, remixers, librarians, fan authors.

BJ Ard: Why is it occupying
this seam? Access to knowledge mobilization as a response.

A: lots of reasons,
including constitutional foundation/mythology. We have a lot of interests that
haven’t developed stable law & policy communities or their own political
forces to rely on. © gets away with a lot b/c there’s no one there to push back
from outside of copyright’s institutions.

RT: Are privacy,
defamation also at the seam even though they are not applicable to many works?
Accessibility: always applicable. Repair: ??? A distinct set of works. Librarians/archivists/educators
as representing a broad social sector?

A: not arguing that ©
should never be at the seam, or noninfringement never part of the discussion.
Fanworks is a good example where fair use is important. But even there, thinks
about rights of access. Communities who show up at the triennial review care
about access to the work, even more than use in many cases. A
right of access might solve more problems than a right of circumvention.

Yes, privacy, defamation, and property are at the governance
seam. More than one body of law there at the seam. What happens when multiple
bodies of law are there? Unfamiliar territory that needs mapping. Maybe order
of operations is the issue: © should fight it out with defamation, property,
privacy and see what happens.

Van Houweling: Politics of this—© is something we have, and
Congress is something that doesn’t work. Where can one intervene? An
FCC-enforced right of access is not going to happen. What about state law?

A: even in tumultuous legislative times, we’ve had
accessibility laws and policies pass, even in Congress. Repair gives him some
heart. Right of repair started at Copyright Office but people realized that
wasn’t enough so legislation bloomed at the state level; White House and FTC
got interested.

Zahr Said: where there isn’t an express conflict, maybe you
cede ground too quickly. Think about revenge porn—Bambauer v. Tushnet debate,
what is the purpose of © policy? We might not know. Work on disability might
allow you to embrace disability rights as part of the purpose of ©!
Conceptualize it differently as not being outside. Reminds her of “law &”
debates: is economics outside law or better conceived of as within it?

A: happy to go where doors are open, but as someone working
on triennial review for a long time, the internal approach looks appealing and
has low barriers to entry, but over the long term it doesn’t deliver what you
want in full.

from Blogger http://tushnet.blogspot.com/2024/02/wipip-session-5-anti-circumvention.html

Posted in Uncategorized | Tagged 1201, 1202, conferences, drm, first amendment | Leave a comment

WIPIP session 4: ™ & Consumers

Posted on February 3, 2024 by rtushnet

Mary Katherine Amerine,
Reasonably Careless Consumers in TM & False Advertising

How do courts treat
consumers in TM and false advertising cases? Assumption dates back to at least
the 1930s that consumers exercise less care for inexpensive grocery items and
are thus easier to confuse: Brew nuts v. Beer Nuts, Bulls’ Eye v. Raging Bull
for barbecue sauce, Powerbar v. Powerstick for sports energy bars, Huggies v.
Dougies for diapers. Even say that consumers can’t be expected to examine labels
carefully.

False advertising
uses v different framework: consider the challenged ad as a whole, including
disclaimers and qualifying language. Consumers are often expected to pick up
the product, look beyond the initial ambiguous statement, and inspect further.
Inconsistent with idea that consumers just toss things in their carts. Thus,
court said consumers wouldn’t be confused by “Trader Joe’s Manuka Honey 10+,
100% New Zealand Manuka Honey” because they would understand that it was
unlikely that the honey would be purely from bees visiting Manuka flowers; they
should know that Manuka honey is graded from 0-26 and 10+ is not great. Same
result with Ghirardelli “classic white chips” that don’t have any white chocolate.

This is
inconsistent! The consumer who scrutinizes “classic white chips” or googles Manuka
honey ratings will not be confusing Brew Nuts and Beer Nuts or Huggies and
Dougies.

In fact, consumers
are highly involved in grocery shopping; more care than TM cases give consumers
credit for.

RT: What would you
say to the argument that the different treatment is justified by the role of
consumer harm in the two causes of action? That is, TM infringement is a harm to
the TM owner; harm to consumers isn’t necessary so it doesn’t matter if they’re
tossing without thought; but if they don’t care enough to clarify ambiguities,
then there shouldn’t be a consumer claim. Doesn’t totally deal w/Lanham Act
43(a) claims, but it’s notable that your precedents on the false advertising
side are California consumer protection claims.

Jake Linford:
Perhaps the consequences for the defendant are different, so we expect
different behavior from consumers before applying those consequences. [Although
these are presumptions about how consumers will think, so we’re not just
expecting, we’re hypothesizing and holding as a matter of law.]

Eric Johnson: my
confusion is often intrabrand: which variety does my son want? No one is
confused about diapers; they’re very careful about which diaper. [I think of
Eminem’s classic line: “I can’t provide the right diaper.”] Courts love IP and
don’t like torts, which is contributing.

Q: Veuve Cliquot v.
Boutique Cliquot—Canadian case looks at casual consumer somewhat in a hurry.

A: What I’m taking
issue with is that assumption! Doesn’t map into realistic consumer behaviors.

Cathy Gellis: May
depend on what kind of consumer and what kind of product. People who bake know
what they want to cook with, but they might be in a rush and get the wrong one.
Is there a difference in the examples? Ingredients v. end products, or products
where the consumers will care which brand they got more or less.

A: this is the
problem of flattening all these things, especially in TM cases.

Betsy Rosenblatt:
Social justice implications. How much care should people be taking in
the grocery store? And can law make them do it? What makes people take more or
less care? Poverty might mean more care than less. (Poverty makes great
cognitive demands on people!) Who gets harmed by which standard?

Laura Heymann:
Warning labels. Tort context: courts make assumptions about how carefully
consumers will read warning labels that are also inconsistent.

Eric Goldman: Third
player, often ignored: the grocery store and what it does to create meaning
about presenting products, which can be inconsistent and exacerbate potential
problems. If chips are presented along with other chocolate chips, that could
encourage confusion.

Bita Amani: What’s
the endpoint? To change the standards in false advertising, in TM, or to create
a new cross-context standard? Consumers do spend more time scrutinizing labels—if
the empirics show one thing or another, how much should the normative reflect
the descriptive?

Felix Wu: on the TM
side, consumer sophistication is just one factor; on advertising, seems more
directly connected to an element of the claim itself. One way to harmonize might
be to make it more important/more directly connected to TM liability. Are
courts just mistaking the nature of the consumer or just ignoring it and using
other factors?

Laura Heymann

Thinking about how
consumers view their interactions with companies both as a matter of branding
and as a matter of contracts, specifically on social media. Move to “brand
persona” in marketing and law—not a producer but a collection of
characteristics and impression; the source is less important than the
authorization and the meaning. The new model: Dove put out a commercial about
real beautyàconsumer infers that Dove cares about women—using those personality
traits as a reason to engage or not engage with the brand in the future. Relational:
reinforcing and facilitating the relationship so the consumer has a good
experience and feels well treated, so won’t search for alternatives.

Consumer contract
part: consumers don’t read most consumer contracts, which are contracts of
adhesion. It’s often not rational to read the contract, since most terms won’t
end up mattering. Some companies use the contract language to reflect the brand
image and communicate brand persona, but even apart from that, it’s not the
contract or TOS that creates the relationship promise—it’s the brand. Brand
acts as umbrella unifying messages from different parts of company as if they
were talking as one—marketing, legal, billing. Casual speech feels more
friendly. We’ve seen this on Twitter, where people engage in dispute resolution
over social media as if they were resolving a dispute with an individual—they tweet
at the brand. Can lure people into thinking that the relationship is other than
transactional, blur understanding of who contracting partner actually is.
Different brands under helm of same producer can be surprising.

Felicia Caponigri:
what happens when a brand is attached to a founder?

Jeanne Fromer:
celebrity relationships/parasocial relationships seem both similar and also
different in key ways. Consider relevance for TM doctrine even though cases
aren’t brought by consumers. If it’s the case that people are interacting
w/businesses as if they’re people, that might provoke a lens of ways in which
consumers are likely to be confused or not [or what counts as acceptable
criticism, given the comparison to defamation].

Glynn Lunney: why
personalization matters? Most TMs that have value are from repeat purchases—Loehmann’s
brand loyalty [or my loyalty to Crest toothpaste] may or may not be
distinguishable w/o a humanoid relationship.

Eric Johnson:
consider lay dismissiveness towards contracts—it’s just legal stuff, legal
mumbo-jumbo.

A: research on what people
think makes a contract valid—not a meeting of minds, but a signature.

Betsy Rosenblatt: is
there some implied contract to conform to the personality you’ve projected? The
tendency to attribute blame to “the legal people” who aren’t really representative.
[If only the
tsar knew! There’s also resonance with the defense of overreaching C&D
letters—“we have to protect our trademark! The law made us threaten you, not
us!”]

Sari Mazzurco, Trademark
Law’s Consumer/Public Problem:

Tam & Brunetti
focused on the expressive qualities of TMs, and in VIP turned that around to
suppress speech. Lemley/Tushnet
discuss some possibilities. More foundational conflict: who TM law is for? And
why we should care! TM law is supposed to serve consumers as market
participants (reduce search costs) and protect competitors’ goodwill by
allowing them to associate exclusively as source of products. But TM is full of
protections that don’t serve consumers as market participants selecting among
alternative choices. They serve a different legal subject: the public. The public
has always been an intended beneficiary. Section 2 registration bars (public
morals, public order, dignity/personality interests); remedies (disgorgement
and injunctions both incorporate public interest considerations); cancellation
(actions can be brought by anyone who thinks they may be damaged, even if dignitary
interests of goats on a roof aren’t cognizable); dilution by tarnishment;
post-sale confusion; infringement defenses (nominative fair use and Rogers
invoke public interest in discourse, though positioned as a check on TM law
rather than internal to it).

How does this affect
application or development of TM law? Only prescriptive claim: TM should
endogenize the public interest. Doesn’t dictate case outcomes, but lays out
paths in front of court—consumer interests v. public interests. VIP looks to
consumer interests, Tam and Brunetti, look to public interest.

Practical benefits:
broadens potentially relevant public interests; helps articulate conflict in
ongoing disputes; guards against 1A challenges; specifies relevant arguments
in, e.g., domain name litigation, personal name litigation.

Rosenblatt: Already in injunctive relief?

A: when court says public interest is against consumer
confusion, but that’s consumer interest, not the public as a whole. Broadens
perspective.

Jeremy Sheff: If you’re trying to lay out the interests at
stake, producers also have strong interests. If we’re pretending that
consumer/producer interests are aligned, that’s clearly not the case; 2(a)
cases in particular, it’s producer interests that seem to win out over public
or consumer interests, rather than public v consumer.

RT: Another issue to
consider: lack of need to define trade dress in advance or in a way that is
clearly predictable by competitors; compare European registration regime Art.
4, which requires something that is clearly defined (“An EU trade mark may consist
of any signs, in particular words, including personal names, or designs,
letters, numerals, colours, the shape of goods or of the packaging of goods, or
sounds, provided that such signs are capable of:

a) Distinguishing
the goods or services of one undertaking from those of other undertaking; and

b) Being represented
on the register of European Union Trademarks, in a manner which enables the
competent authorities and the public to determine the clear and precise subject
matter afforded to its proprietor”). Difficult issue b/c public also has contending
interest: how can Brunetti and the scandalousness bar both serve the public
interests?

A: the public
interest shifts and evolves over time—the idea of gov’t protecting morals was
the idea of the day at one point; we don’t feel that way any more.

Lunney: do you mean
competitors or TM owners? Producers is a different group from either of those!
Using the public as a convenient fiction to identify and protect it without
acknowledging conflicts: post-sale confusion benefits the wealthy at the expense
of people who can’t afford the original. Not a monolithic group. Courts always
pretend it’s about potential consumers.

A: agree that the
public isn’t monolithic; courts are constructing an idea of the public.

Fromer: should explore
the interests of producers, in a way analogous to what’s been done in the ©
context: the romantic author is often held up to serve the corporate interests
behind them—it’s attractive but serves a different group. Is that going on
here? Who’s bringing the lawsuits, after all?

Felix Wu: More
convinced by some examples than others. Public = nonconsumers? Not sure that
post-confusion is an example; the competing groups are different classes of
consumers rather than nonconsumers. Dilution is also weird: the concept is that
brand consumers are going to be affected somehow. Biggest example is the speech
cases: expressive interests are indeed nonconsumer interests, as you see in
both registration and defenses. Then the Q is whether we’re just talking about
speech interests or is there some other set of nonconsumer, nonproducer
interests?

Linford: Do we care
about the majority of consumers? In genericity, we say that. Is the public a
placeholder for protecting new entrants over incumbents?

A: Concept from
environmental law article by Sagoff: how does concept of public lead you to
think differently about what we owe each other? Surveying involves a thick
concept of interaction with TMs that can’t just be a matter of individual
cognition. Meaning-making is social, so primary meaning is necessarily socially
constructed.

Chris Buccafusco:
Where do you see this entering at the various levels of abstraction/generality?
Sometimes you’re discussing litigation level v. basic contours of the doctrine.

A: higher level
argument goes to endogenizing the public in the contours of the doctrine; that
then has doctrinal payoffs for use in specific litigation contexts.

Matthew Sipe,
Trademarks as Competition Law:

TM as property—historically
accurate but less plausible/supported today. Search-cost reduction/quality
reputation incentive: descriptively accurate as matter of function, but only to
a point (monopoly would diminish search costs most)/still requires resort to other
principles. Promoting competition: common in modern case law, discourse, and
organization; but questionable provenance and not adequately defined or
specified. So what do we mean by promoting competition?

We’re still figuring
this out after 100 years of the Sherman Act. One vision: protecting producers’
investments and interests: Learned Hand, for its own sake and in spite of cost,
protect small units. We do that in TM to punish confusion even w/o demonstrable
harm to consumers; prohibit dilution; protect some aesthetic functionality; we
allow abuse of certification marks for cartelization.

Bork’s version:
consumer welfare, but smuggling in total welfare standard. In TM law: we allow
total cashout in final period, harming consumers; we effectively allow transfers
in gross (maybe justifiable as efficient but transfers wealth from consumers to
producers); we allow protection for rivalrous functionalities, like placebo
marks (again, transfers from consumers to producres); we allow price
discrimination (including same product under national brand and house brands,
which again capture from consumers/avoid deadweight loss). That can drift
towards a thin vision of consumer welfare. Fail to recognize source, origin,
and other nonconsumptive qualities as valuable—you can outsource production and
keep using the same brand; freely permit abandonment, rebranding, and
proliferation of different brands in same space all owned by the same company—obfuscating
market concentration.

Simultaneously
making key mistakes from every law]antitrust era b/c we haven’t thought about
what promotion competition really means.

Structural/institutional
lessons: find a common denominator of what we want. Consumer welfare might be
valuable, but more robust than pure price.

Enable consumer
participation and remedies: the consumer has an interest in TM but right now we
don’t have standing or remedies.

TM law is more
afraid of false negatives than false positives, and it should balance them.

Move from
bright-line rules to flexible standards.

Eric Goldman: the
question is what should be exogenous and what we should import from other laws.
What should we import from antitrust or other areas into TM? What methodologies
should we use for gatekeeping? Maybe we need to rebuild antitrust law on its
own merits. Rules might be better than standards! You could be legal under TM
law but violating antitrust law.

A: at a minimum, TM
shouldn’t frustrate competition law.

Linford: we don’t
want consumers bringing their own TM actions, which is weird if TM is supposed
to be about consumers. But if you take seriously about how consumers think—1/3
of them are just irredeemably confused—maybe keeping them away from the law and
using others as a proxy to represent their interests is a good thing. Descriptively—are
there folks you need to respond to on bright line rules? Lisa Ramsey wants more
bright line rules, as does Bill McGeveran—lots of folks see standards as
problematic.

Jeanne Fromer: Daniel
Francis in antitrust is trying to chart a path between Bork and Kahn in common-law
principles, could be helpful analogue. Antitrust standing is completely the
opposite, w/consumers bringing suits—why is the decision different there?

RT: Consider false
advertising as another kind of competition law. Bright line rules—where are
they located in TM now? Glynn Lunney has a great paper
on this.

Lunney: we don’t
have antitrust nearly right, and it certainly isn’t helping the economy be
optimally competitive today. Hand quote maybe doesn’t mean what you think—it’s
anti monopolization (echoed by Wu).

Buccafusco: do this
one doctrine at a time, not all TM. Find the best thing in antitrust that is
most useful in TM and write that paper showing how it can help TM.

Wu: do you mean to
import a broader consumer welfare standard, or anti-monopolization, which would
mean fewer monopolies/cut against broad producer-friendly doctrines.

Heymann: another
benefit of picking a problem

from Blogger http://tushnet.blogspot.com/2024/02/wipip-session-4-consumers.html

Posted in Uncategorized | Tagged antitrust, conferences, consumer protection, false advertising, trademark | Leave a comment

WIPIP session 3: Cultural Production

Posted on February 3, 2024 by rtushnet

Bita Amani:
Forbidden Arts & Subjugated Knowledges: On the Polemics of Intellectual Property

IP rights are
state-dependent, property-dependent models so make false promises of equality.
History of art as propaganda: art can support war or speak truth to power. Iran
has criminalized expression: rapping, singing, dancing. IP rights are
contingent and state dependent in ways that have nothing to do with the merits
of expression or invention. State doesn’t just “incentivize”—it criminalizes
and tries to generate particular social outputs. Governing people to people
relations is a very different thing from state undermining personhood by
criminalizing dancing.

Q: is this project
about taking away the mythos of IP as equalizer or something else?

A: has broader
implications, including for the concept of incentives. Possible implications
for how we think about refugees, internationalization of rights.

Aman Gebru, Cultural
Appropriation as Passing Off

Motivation started
with OMG Girlz case described as cultural appropriation: OMG Girlz (human
group) v. OMG Dollz that copied their looks. Initial reaction: of course there’s
no claim, as court concluded, but should there be? There’s no authoritative
definition of cultural appropriation, but overlap in definitions: power imbalances
between person using expression and source community (which might not even like
that identification), lack of understanding of user, offensiveness (which may
be based on decontextualization of meaningful symbol).

Mostly this should
be handled through public opinion, public shaming. But should be a limited right
against commercial cultural appropriation. Mostly no, because of the benefits
of cosmopolitanism (Kwame Anthony Appiah): cultures always borrow; there is
nothing “authentic” about a culture and we shouldn’t want there to be, because
that creates stasis when dynamism is needed.

Spectrum: diffused,
when multiple communities claim a symbol; targeted, when there’s only one. Also
a spectrum from noncommercial to commercial—a tattoo on one’s body versus
commercial use. He is suggesting a right against targeted commercial use. Justin
Timberlake’s cornrows shouldn’t be actionable. Turban = diffused. But Urban
Outfitters v. Navajo Nation would count as targeted commercial exploitation;
they used the term “Navajo” to identify the underwear they were selling.

Current doctrines:
passing off/false representation/43(a); Indian Arts & Crafts Act. Mexican
legislation deals w/cultural appropriation. WIPO negotiations on traditional
cultural expressions.

Definitions are challenging, including use in commerce—but that hasn’t stopped
us in other IP.

Marketa Trimble: is
Kokopelli diffuse or targeted b/c multiple tribes see meaning in it?—would communities
have to fight each other over what is theirs?

A: exclusive
interest creation may not be natural to source communities, which is a risk.

Jeremy Sheff:
Remedies—do you see the primary remedy here being injunctive or monetary, and
why? Also, some of these controversies seem more like reverse passing off than
passing off—introducing something to a majority community that doesn’t
recognize it and therefore thinks it’s the creation of the appropriator.

A: Injunctive relief,
though at an early stage in thinking. Money isn’t at the top of minds of
communities.

Sheff/Calboli: it
depends on the community!

Jeanne Fromer: looking
at a snapshot of a moment of time doesn’t address how these symbols came to be
associated with a community, probably through diffusion. There are ways to justify
that but you should explain why you take this as a given.

A: comes from using
an alien worldview for those communities—the legal system. If there’s targeted
appropriation in the present, we can redress it now.

Q: 2016 Kenya law
has a detailed framework for protection, bulldozing through all these issues.
It’s on the books but never tested in courts.

Q: what happens when
brands represent source communities? Gucci: maybe Gucci is reflecting Italian
culture with an archive of its own.

A: maybe we would
say there wasn’t fraudulent intent.

RT: Totally
understand why it seems like definitional challenges shouldn’t stop this if it
didn’t stop other IP rights, but still: The definitional challenges should have
stopped us, and two IP rights can make two wrongs. As Jennifer Rothman has written, different IP
regimes define commercial use differently. You seem to consider fashion/selling
clothes to be commercial; why isn’t selling tattoos also commercial? Should
Timberlake’s hairdresser or the makers of the kente-themed scarves sold to
American politicians be liable? (What if
Timberlake stars in an ad? What if he stars in an ad wearing cloth sold by a
person from the relevant community?)

Irene Calboli: Americans
will be skeptical, so be thorough in definition of community/review previous debates.
What happens when Seminoles are divided on what should happen? Italian culture
is bastardized every day, but there are benefits—cultural goodwill.

Rosenblatt: consider
dividing types—the secret and the sacred are useful concepts.

Xiying Tang:
Deception might not come into it: the question is whether white guys should be
making these things, not whether people are confused about who’s making it.

Deborah Halbert: The
Anarchist Cookbook v. Panther Press: Violence, Books, and Copyright

Originally published
1971: recipes for acid, bomb, booby trap. Left-wing publisher v. right-wing
publisher during the Vietnam Era. Alleged infringement of right-wing publisher’s
150 Questions for a Guerrilla, written by “the man who trained Castro.” 150
Questions seems to have copied from an Army manual itself; the Anarchist
Cookbook used redrawn versions and written narratives like recipes. Defendants won after a day-long trial before a
judge, based on lack of substantial similarity in protected expression.

Panther (renamed Paladin)
continues to publish, including the book Hit Man that was the subject of a
lawsuit in the 4^th Circuit. Publisher came to deeply regret
publishing the Anarchist Cookbook.

Angela Riley, Sonia Katyal,
Rachel Lim, Indigenous Misdescription:

Dilution/erasure of
tribes. Here, facilitated by TM law.

Trademarks and indigeneity:
three ironies. (1) registration—tribal names as such cannot be registered by
tribal entities or anyone else because of 2(b)’s prohibition on registering
insignia—though recognized tribes are neither foreign nations, States, nor
municipalities, 2(b) still applies. But literally anyone, including the tribe
itself, can register as a mark if it functions as a mark.

This leads to
another irony of misappropriation, producing the phenomenon of indigenous
misdescription. Tribal names are registered as commodities.

Purpose of study:
how many names of tribes correspond to registrations not owned by tribes. Also
explore indigenous branding from cultural property perspective. TM’s background
principles, e.g., secondary meaning, perpetuate inequality of ownership.

Dataset: 9025
registered and pending marks 1891-2022 compared to names of 574 federally
recognized American Indian tribes and Alaska Native Villages. Only about 8% are
owned by tribes; dominated by nontribal entities.

Three types of
misdescription: misappropriation; misdisparagement; misdesignation.

Misappropriation:
using tribe name to brand product/service: Boeing Apache Helicopter, Chippewa
Boots, Jeep Grand Cherokee—can exclude the tribe itself from the Register.
Misdesignation: brand based on secondary association—pima cotton named after
Pima tribe; lots of brands use “pima” to brand themselves, Wyandotte chicken
breed, Mohawk hairstyle. Misdisparagement:
anti-indigenous slur/stereotype used as branding (Eskimo pies, Iroquois Indian
Head, Shawnee Baker’s Pipe of Peace)—most susceptible to public shaming.

Focused on brands,
but other part of the study looks at real property—naming of cities and states
and their relations to tribal entities.

Given the 8%
statistic, we wanted to reconsider the limits on the Indian Arts & Crafts
Act, which doesn’t extend to all products/services but does recognize this as a
problem. PTO has tribal insignia database but only for insignia, not extending
to actual words. Also: the limits of doctrines of misdescriptiveness and
deception (fixated on moment in time); don’t provide protection for tribes
because they don’t seem to link to the tribe because there are secondary
meaning rules that prefer “brand” over history of name. Effects on lexicon of
tribal names!

Failure to function
as a potential opening to ask how TMs are operating in the marketplace. Enabling
more registration for tribes? Policing the use of TMs that might be associated
with them? Output: a law review article and toolkit for tribes.

Jeremy Sheff:
registrants who were entities created by tribes v. tribal members? One story
that often comes up is conflicts b/t groups and members of the group. What is
the historical arc? How many have been cancelled for nonuse/failure to renew?

A: we limited our
comparison to tribal entities—it might be that members own some of them. Very
hard to adjudicate. History: based on the data, many are dead. Still
interesting to see the kinds of images that were popular at certain points. 1930s-1040s,
1970s popularity.

Rachel Dixon: TESS issues:
missing dead marks.

Jeanne Fromer: “lands
and brands” is a great concept. Never reflected on this rule—speak on
justification for ban on insignia? There’s a difference b/t saying no one can
own it and saying that an entity can’t own it. Why isn’t it being enforced?

A: need more research on treatment of tribes as dependent domestic entities.

RT: say more about
why you concluded that 2(b) bars registering names of tribes? If it’s 2(b), it’s
absolute, even as against the tribe and even for governmental functions. So
wouldn’t you want 2(b) expanded as to nontribal entities? [Someone else, sorry I can’t remember who, gave a better framing: you could consider the model of 2(c), assuming Elster comes out as we expect.] Separately: Secondary meaning as conquest in
the M’intosh v. Johnson case?

A: secondary meaning
as a prism for all these kinds of things is part of the study.

from Blogger http://tushnet.blogspot.com/2024/02/wipip-session-3-cultural-production.html

Posted in Uncategorized | Tagged conferences, copyright, trademark, traditional knowledge | Leave a comment

WIPIP session 2: ™ Doctrine, © Fair Use

Posted on February 2, 2024 by rtushnet

Barbara Lauriat,
Borrowing Goodwill

Comparative/historical
approach to doctrine/theory. There used to be a big difference between having a
TM and passing off. Bone/McKenna’s history of goodwill: didn’t reflect her
understanding of the history: seen goodwill used as a property right protected
through the tort of passing off. Probably not “property” in the contemporary
understanding if you go back far enough.

UK: TM
protection depends on formalities/registration; registered TMs are property
rights; goodwill in a business is a different property right protected through
the tort of passing off; no generalized unfair competition law.

US: TM is use
based even in the absence of registration; US courts identify goodwill as the
property right protected by common law TM doctrines; generalized unfair
competition protection (limited by confusion?). Increasing blurring between
registered and unregistered rights.

1903 statement
in treatise: in England, TM is practically synonymous with “registered TM.” After
1879, there’s really no
such thing as “Anglo-American” TM law because they are too
different.

SCOTUS’s
decision to ID protection of goodwill as the foundational justification for TM
and unfair competition maintains TM owner’s actions and interests at the center
of legal analysis.

Traditional
narratives about goodwill are flawed b/c they don’t go back before the 19^th
century. They claim that’s when goodwill arrived as a concept. Bone says it was
familiar from law of partnership from at least the early 19^th
century, but what was that concept that was incorporated into TM doctrine?

Goodwill has a
very long history as an intangible, proprietor-focused, use-based asset
independent of TMs and related doctrines. Not trying to view it from modern
lens but what they did at the time with the concept.

OED:
goodwill—the privilege, granted by the seller of a business to the purchaser,
of trading as the successor. From 1500s. 1725: Daniel Defoe discusses how a
widow gets money for the “good-will” of the shop if she didn’t want to carry on
the trade. French in 1700s: good-will = custom or trade, habitual buying of
goods from the same vendor. Lots of ads mention it.

In takings,
goodwill was taken into account separate from the value of the land, e.g. 1802
law. Many cases in the 18^th century use the term in non-TM cases as
property.

Hanover Star v.
Metcalf cited passing off cases from UK even though that was already a
distinctly different doctrine from registered TM protection, by 1916.

Jake Linford:
What is the payoff?

A: It’s hard to
say. Likes Tushnet on problems distinguishing registered
TMs from unregistered;
passing off is more restrictive than unfair competition. Irony: by resisting in
TM cases & Hanover Star calling TM property, you ended up with much more
expansive rights.

Betsy
Rosenblatt: Taxonomy of confusion—source v. sponsorship or approval. One could
argue that passing off is about confusion as to source and the other goodwill
stuff is about confusion as to sponsorship or approval, but maybe that is not
the way to go; does that fit into the history?

A: nomenclature
issue: “US TM goodwill” means something very different than “goodwill for the
purposes of passing off.” Have seen arguments that US unfair competition law
requires confusion and is thus narrower than UK, but that’s only true if you
don’t interpret confusion super super broadly as we do.

RT: might this
help us understand how counterfeiting of a registered TM could be actionable
even without point of sale confusion? does trading on goodwill mean
materiality?

A: around the
world, trading on goodwill is proprietor-based, but does require trading that
causes damage to good will, so some kind of materiality is required.

Bill McGeveran:
mentions in wills and the like: are they rights in gross or coming with
business being transferred?

a: it depends! In the
19^th century, courts start to make these connections w/newfangled tm.

Mark Lemley: a surprising number of your examples
involved women. Seems like relatively few women started business but you’re entitled to pass goodwill and
inherit it and continue to operate. And you could transfer the guild privilege
which was supposed to be based on skill.

A: yes, super
interesting! The guild system took care of its own; this was working-class
stuff and didn’t enter the law often until the 18^th century. In the
guilds, they didn’t need to sell the goodwill b/c they had the guild privilege—a
public house would need goodwill!

Peter Karol,
What’s the Use: The Structural Flaw Undermining Warhol v. Goldsmith

SCOTUS
understood the “use” to be the foundation’s commercial licensing. But licensing
is neither a © use nor an act of infringement. It’s passive grant of
permission/agreement not to sue. Incoherent to raise/evaluate fair use as to an
act that wasn’t a use or infringement.

Error grew out
of weird or misleading posture of the case and lower court treatments of the
issues. DJ sought declaratory judgment that Prince Series as such was transformative,
grounded in the artwork itself; a static claim w/o regard to specific use or
purpose. We don’t know why or how he created. Counterclaim alleged that WF
infringed by reproducing, publicly displaying, commercially licensing, and distributing
the image, and by incorporating the photo into unauthorized derivative works.
One of these things is not like the others! Licensing is not found in 106.

DCt follows WF’s
line of thinking: it’s a static case. 2d Circuit rejects the notion that the task
before it was to assess the Prince Series as artworks, but rather whether the
law permits WF to “exploit” them w/o Goldsmith’s permission. Jacobs,
concurring, says only contemporary commercial exploitation is before the court.
SCOTUS oral argument: Goldsmith waived any claims as to creation.

Sotomayor says,
8 times, that the use at issue is commercial licensing. But real focus is on Conde
Nast’s activities as publisher—the next quote is about how the purpose of the
use was the same: “use in magazines to illustrate stories about Prince.”

There was no
evidence of other use by WF itself. A license is a grant of permission to use,
not a use in itself. Even under Chris Newman’s account, which critiques “covenant
not to sue,” the licensor is not the user of the interest. Licensing is not
covered by 106; “to do and to authorize” just relates to indirect liability. It
is nonsensical to analyze fair use as a defense to something that is not
copyright infringement to begin with.

If we wanted to
fix it: acknowledge the issue and say out loud that the Foundation was the
indirect infringer. Conde Nast was the indirect infringer; Goldsmith perhaps
didn’t want to bite the hand that feeds her. Admittedly, this is an invention
that was never litigated; the analysis of purpose would have to be a little
different.

Jim Gibson: “authorize”
could be read differently: licensing something that will obviously infringe
should be deemed a 106 violation. We can call that a form of indirect
liability, but that’s a big apparatus to put on one word.

A: that would be
a hugely important precedent and a huge change to what we understand 106 to
mean. They should say that out loud if they meant to do that. If licensing is direct
infringement, that’s a really big shift—they do diligence on whether they own
the asset, but not on whether their licensing would infringe.

Cathy Gellis:
what is the actual use? Not sure it’s Conde Nast: the use in question should be
Warhol’s. Goldsmith produced the original thing; Warhol used the original thing
and turned it into something else. Then others used/licensed/profited from the
new thing. But it should still go back to the creation. Potential liability
years downstream if that doesn’t matter. Ticking time bomb of anybody who’s an
assignee of something upstream if we no longer care about whether that use was
fair or not.

A: agree on time
bomb, but when they waived the claim against creation, courts said we don’t
have to think about the 80s at all. Ignore the outstanding declaratory judgment
action.

Tyler Ochoa:
Pushing back on Warhol’s addition: only covers changes made to original and not
underlying work. Need some licensing arrangement to pull use of underlying work
into that. But we could interpret Court to say that CN’s use wasn’t fair.

A: true! But they
weren’t a party and the court never said it, so we have to interpolate that.

Q: is there any
causal relationship with other problems with the opinion?

A: not harmless
error—affects the purposive analysis that many find problematic—they keep
reducing it to “use on a magazine cover” “just like Goldsmith is in the
business of licensing”—you can’t do that if CN is the counterparty.

Bruce Boyden: if
it’s an indirect infringement claim, does it change the analysis? Knowledge
would be an element for contributory infringement—they know a lot about what
the direct infringer intends to do, but not other things.

A: quite possibly.
[FWIW, I think vicarious liability is so broad in © that you might be able to
get it done that way, w/o needing contributory liability.] The counterclaim doesn’t
use the language of inducement.

Jeremy Sheff:
Knowledge question comes up in patent law: do you have to know that there will
be use or that the use will be actionable? Not clear there’s a clear © answer
to that. Also, to the degree © is property-like, authorizing someone else to use
a third party’s property is wrongful. But that may just mean Conde Nast has a
claim against WF.

Pam Samuelson:
what if Goldsmith changes her mind on remand? The statements in oral argument cited
by the Court aren’t a real waiver of claim—she waives her right to certain
remedies, and not the claim itself. What if she changes her mind? Asked one of
Goldsmith’s lawyers, and he wouldn’t answer—the case is ongoing.

A: the litigator
in me says you could never rely on it; but it was enough for the Court.

Glynn Lunney,
Transforming Fair Use. 3 Justices were appointed solely on Roe v. Wade, and we’re
stuck with them; there was no inquiry into anything else. Court has no
conception of itself w/r/t interpretive methodologies, so we get incoherence.
Realism: Sotomayor: “the problem of substitution, ©’s bete noire.” But the
photo isn’t a perfect substitute for Prince, but serve the same purpose,
depicting Prince (as if Goldsmith had a © in his features) and they vie for the
same dollars. That defines substitution so broadly as to cover everything—pepper
and salt are substitutes under this logic. The difference b/t Justice Story’s ©
and today: the derivative work right: why would substitution be the core
problem? A motion picture is a complement, not a substitute, so why aren’t we talking
about more than substitution in the first factor? Because of Google v. Oracle,
which says there’s no substitution.

OK, Textualism:
fair use transformativeness is at war with the derivative work right. How can
transform both excuse a work as fair and render it infringing? Well, plucked
one word out of statutory definition—reproduction, abridgement, condensation
are ignored, and words like “sequel” are added out of nowhere. A translation of
Romeo & Juliet is not a new meaning or message, it’s the same meaning in a
different language. So too with book-to-movie. They’re not really committed to
realism or textualism, but to their desired conclusion.

Purposivism: if Warhol
is fair use, then so are many films made from novels, but Congress intended ©
owner of novel to have exclusive right to control making film based on novel.
They’re presupposing this is an answer when it’s a question. Maybe Congress did
intend that, but it doesn’t mean it’s true for all time—fair use is meant to be
an ongoing limitation as tech and other features of the market change.
Reproducing a whole work by mechanical reproduction is a classic infringement,
by the time of Sony, the economics, tech, and nature of use have all changed,
and what’s once paradigmatic infringement is now fair use.

He finds plenty
of criticism in the contrast b/t the standard photo and the portrayal in the
Warhol image. Courts are good at the facts and bad at the law; Court is
deciding fewer cases and we therefore treat them as the oracle on the mountain.
Every sentence takes on independent legal significance. We shouldn’t treat decisions
like statutes, but the problem is that this is likely to be the only fair use
decision for the next 10 years. One strategy: treat it as narrow on the facts.

Key facts: first
magazine use was licensed. We can use balancing, including ease of licensing, to
calibrate fair use—when first use was licensed, failure to obtain license
second time could be presumptively unfair. That’s his hope for future. Stewart
v. Abend & Harper & Row v. Nation could also fit in that model of
presumptive unfairness. Presumptively fair: Campbell. True balancing: G v O,
Sony.

Q: what do you
make of the “iconic, larger than life figure” argument for transformation?

A: don’t listen to
artists or lawyers; compare the two and say can parodic/critical character
reasonably be perceived. If there’s enough difference between them, they should
compete in the market so consumers could choose which is best suited to them—that’s
market success, not market failure.

RTL Richard
Primus’s concept of underruling might be useful. So just disregard the
statements that nothing is presumptively fair use, even book reviews? In
general courts can create general presumptions, right?

A: only as to
the case or controversy before the Court. We’ve gotten into a bad habit of overreading
SCT decisions b/c we have so few of them.

Zahr Said: whose
accounts should we rely on to determine whether licensing is likely to be
successful? Vying for same consumers: salt and pepper—pushback—salt is often
used for preservation, sweat vegetables, etc. There’s a whole functional use
that pepper isn’t part of. When we’re looking at a Court like this, you’d like
an opinion to be tied to the record, but this Court doesn’t always do that. How
do we know where to go to answer those critical questions?

A: Before
Campbell, both parody and satire were fair use. In oral argument, O’Connor said
we don’t have to consider satire in this case and counsel agreed—ethically,
that was 2 Live Crew’s counsel’s job, to throw satire under the bus to give his
client a better chance. If the adversary process fails because it throws
nonparties under the bus, why should we honor that distinction 20 years later?
Satirists never got their day in court.

Sharon Sandeen:
your approach might help solve the procedural errors in the case/record.

A: just trying
to minimize impact.

Q: lawyers
defending this decision think this is better balancing under factor 1, instead
of making transformativeness sovereign over all. New meaning doesn’t
necessarily trump commerciality.

A: disconnected
from incentive theories: these decisions will not get Dr. Seuss to write more
books or Goldsmith to take more photos.

Pam Samuelson,
Did the SG Hijack Warhol v. Goldsmith?

Lying is wrong,
and the SG did it and got away with it. Some twisting of truth in SG’s brief
about 2d Cir ruling. Most important sentence was in a footnote of Court’s
opinion: G abandoned her larger claims so the Court didn’t need to address the larger
issue on which it granted cert. It said very little to provide guidance about
how to distinguish transformative fair uses from derivative works.

OSG said the
only issue before the Court was the 2016 license, but the 2d Circuit opinion
had held that all 16 works created in 1984 were unfair and nontransformative.
AWF & G’s briefs were focused on 1984 creation; all amicus briefs except
OSG’s addressed the creation issue on which SCT granted cert; nobody else got
to brief it except in reply. The SG’s brief said the creation might have been
fair or authorized under the artist reference license, in which case they
wouldn’t be infringing; introduced the notion that every subsequent use must be
assessed as fair or unfair. G’s lawyers reasonably might have decided to shift
argument based on that.

103(a) is the
missing issue: protection for a derivative work employing preexisting materials
in which (c) subsists doesn’t extend to any part of the work in which such
material has been used unlawfully—Anderson v. Stallone, owns no copyright in
script at all. If that’s right, WF has no (c) in Prince series, and museums
& galleries that own the works can’t publicly display or resell them? DCt,
Ct App, & SCt all ignored §103, as did Goldsmith’s counsel.

G wanted her
claim v. WF to seem modest; besides, if she won her derivative work claim, 103
kicks in automatically, and she could begin commercializing the Prince Series,
make derivative works, & stop displays and resales w/o WF’s permission
since it would no longer have rights.

AWF might not
have wanted to raise this specter; may have been overconfident about fair use;
didn’t want 2d Cir to take away its ©.

Maybe the
narrowness has some benefits for appropriation art, but what on earth is the
status of the Prince Series? If she abandoned her claims of infringement, that
would implicitly include her opposition to WF’s SJ motion that the Prince
Series were fair uses. Should the court now grant WF the declaration it seeks?
What if on remand counsel says there wasn’t an abandonment? She gets some or
all of the 2016 licensing fee, but not statutory damages or fee awards. To what
extent is further licensing of W’s works encumbered by her photo ©? Only
licensing to magazines that want an image of Prince? Do people need permission
both from WF and G?

Alternatives: W’s
creation was fair use; but © in fair use DWs only gives rights in their
original expression. Licensing might be fair use if not in same market, but WF’s
© is partly encumbered by G’s © when markets overlap. Another possibility: W’s
creation was lawful b/c of the artist reference arrangement authorized them free
from G’s claims. Restrictions between Vanity Fair and G’s agent can’t bind W, who
had no notice.

Jim Gibson: do
you think fair use is use-specific? I always thought it worked that way.

A: SG just threw
it out strategically to get rid of an otherwise troubling case. We have to live
with it; we haven’t really had a thorough conversation about this particular
Pandora’s box.

Q: maybe bright
side: injunctions shouldn’t be broad, as shown by G?

A: Big fan of
limiting injunctive relief. But footnote 10 of Campbell, which talks about how
something that goes a bit beyond fair use doesn’t necessarily need to be enjoined,
doesn’t grapple with 103(a)’s automaticity, so we do need to think about that.

from Blogger http://tushnet.blogspot.com/2024/02/wipip-session-2-doctrine-fair-use.html

Posted in Uncategorized | Tagged conferences, copyright, trademark | Leave a comment

WIPIP Session 1: AI

Posted on February 2, 2024 by rtushnet

Nikola Datzov,
Can AI Keep a (Trade) Secret?

We’ve funneled IP
protection for AI generated inventions/information to trade secrecy w/o patent
or copyright for human authors/inventors. But it’s narrow protection b/c there
are no choices.

How can we trust
AI generated trade secrets? Concerns for bias, discrimination, unfair
competition, antitrust. Disclosure to the government has risks for the trade
secret owner; Elizabeth Rowe notes that the risk falls on the owner. Will
companies rely on such limited protection? Is there sufficient incentive for AI
generated innovations?

Disclosure is
not the same thing as transparency: having the trade secret doesn’t mean
understanding it—it’s just turning a black box over to the government.

Instead,
proposes trust but verify: register to certify compliance with regulations,
including limited government inspection, similar to source code review in litigation.
Enforced w/penalties, including litigation/whistleblower protections.

Lisa Macklem, Harnessing
the Robot in the Room

Generative AI
could be a boon for Open Educational Resources. Want to be globally available
so need to consider more than US, EU, UK guidance. Trying to come up with best
practices. International framework does consider education. Transparency
requirements: disclosing that content was generated by AI, designing to prevent
it from generating illegal content.

Don’t use
infringing data; use databases to which you have legitimate access; edit AI generated
work for accuracy and to make sure not too much of the original is used. License
when absolutely necessary but watch for restrictions on purpose or geography.

In response to
Irene Calboli suggesting that this didn’t seem like it would be less
resource-intensive: There’s a difference in effort required for assembling materials
and checking AI output for accuracy.

Victoria Schwartz,
AI Virtual Influencers

ROP covers the
issue of real influencers. Virtual influencer names can be trademarks; actual
images/AV works are copyright-protected as long as human-created. Some VI can
likely receive copyright protection as characters, though not clear what the “work”
is—a body of social media posts? Really a spectrum from unfiltered person with
no makeup in photos, to carefully posed in makeup, to photoshop and filters, to
avatar, to “human created” using CGI, to fully AI created. Claim is that we’re
at the end of the spectrum; we may be near that but not quite today (cf. George
Carlin brouhaha).

If © is
difficult, what about ROP? Lots of people on social media claim to be
AI-generated and complain about “stealing my pics.” McCarthy and INTA say ROP
is for humans; Nimmer in 1954 suggested that animals, inanimate objects, and
business and other institutions could be endowed with “publicity values,” so
there should be publicity rights for them. State laws tend to specify living or
deceased. California common law doesn’t specify that a “plaintiff” has to be human.
Most caselaw on character ROP asks whether an actor playing the character gets
a ROP claim without owning the ©; not on point. © is strong enough that it’s
usually superior to ROP.

Eric Goldman: animals
and buildings don’t have access to the courts; and there are cases saying no
ROP for corporations. (I would also note that the common law clearly doesn’t
apply to deceased persons, which suggests something about the meaning of “plaintiff.”)

Tyler Ochoa: why
won’t TM law be more valuable? AI generation has nothing to do with TM
protectability, and TM need never expire, unlike ROP (in most circumstances). For
entertainment or whatever services they offer.

Zahr Said: Precision
about what we’re trying to protect is useful! Is it the money, the music,
something else? Is there an equitable estoppel element if there’s something
deceptive going on? If AI-generated is inaccurate/puffery, should that bother
us?

A: disclosure
model is already popular for influencers.

Q: will it
matter if more polities grant “citizenship” to virtual AIs? Saudi Arabia
already did it.

Laura Heymann:
Why not start w/potential harms, and then map them onto rights/remedies,
instead of starting w/ the idea that there is something to be protected?

A: good idea: we
don’t think of ROP as protecting consumers.

from Blogger http://tushnet.blogspot.com/2024/02/wipip-session-1-ai.html

Posted in Uncategorized | Tagged conferences, copyright, right of publicity, trade secrets | Leave a comment

reliance can be presumed in NY from material misleadingness, as in California

Posted on February 1, 2024 by rtushnet

Polvay v. FCTI,
Inc., — F.Supp.3d —-, 2024 WL 322050, No. 22-cv-4315 (JSR) (S.D.N.Y. Jan.
29, 2024)

The court certified
a class of New York consumers who were assessed multiple fees for making
balance inquiries at one of defendant FCTI’s ATMs at 7-Eleven stores. During
the relevant period, all New York customers who used one of defendant’s ATMs
saw the same initial prompt: “Would you like to view your account balance?” If
they said yes, a balance inquiry fee would be assessed to the customer. And if
the customer selected an account, a prompt would appear and ask the customer,
“Would you like to print your Balance and continue the Transaction?” If they
continued, this would be treated as a second balance inquiry and a second
balance inquiry fee would be assessed, earning another interchange fee for
FTCI; interchange fees are a major source of its revenue. The class alleged that “Continue/Cancel Prompt” screen was deceptive because it
didn’t reasonably appear to be a second balance inquiry, but defendant FCTI
treated it as such. (Who thought this was ok?!) They brought claims under NYGBL Sections 349 and 350.

FTCI’s key argument
was that causation must be determined on an individual, rather than class,
basis. Instead, the court applied a presumption of reliance.

The court ruled
based on three relevant principles used by the New York Court of Appeals: First,
Sections 349 and 350 do not require proof of reliance. Second, causation is
required. Third, there is a relationship between reliance and causation. This
relationship, the court predicted, was best understood as allowing a
presumption of reliance on a materially misleading statement at the class
certification stage.

The New York Court
of Appeals has explained that under Section 349, an allegation “that
defendant’s material deception caused [plaintiffs] to suffer [a monetary] loss”
is sufficient for purposes of causation; “[p]laintiffs need not additionally
allege that they would not have otherwise entered into the transaction” (as
would be required for showing reliance). Materiality is what satisfies the
causation requirement, as in securities fraud cases and in California consumer
protection cases.

Here, then, if a
plaintiff could prove that (1) each class member was automatically shown the
“Continue/Cancel Prompt” before pressing the “Continue” button and (2) that the
“Continue/Cancel Prompt” was objectively material and misleading, then a
presumption of reliance for purposes of showing causation would apply. Plaintiff
showed (1) and there was enough to go to a jury on (2). Among other things, the
Compliance Department at Pulse Network, an ATM Network, found that the
“Continue/Cancel Prompt” screen violated its rules and that no “reasonable
person would interpret this question to mean the cardholder is actually
requesting a second Inquiry.”

FTCI didn’t rebut
this presumption, merely speculating that some customers were aware that
printing their account balance would result in a second balance inquiry fee
based on agreements, disclosures, and account statements they received from
their banks. But there was no evidence that these disclosures or agreements
stated that printing an account balance would constitute a second balance
inquiry. Moreover, evidence that certain customers incurred two balance inquiry
fees on multiple occasions, was insufficient to show the “Continue/Cancel
Prompt” screen had no effect on their decision to press “Continue.” It was just
as plausible that they didn’t know or understand why they were charged twice.

I’m not going to run
through the rest of the certification analysis, but a declaration from
plaintiff’s expert stated that he could ascertain the members of the class and
calculate damages using an algorithm and that the necessary transactional
information to do so is in possession of defendant and the banks. He didn’t
need to design the algorithm before certification; ascertainability is a
“modest threshold requirement [that] will only preclude certification if a
proposed class definition is indeterminate in some fundamental way.” Speculation
that some third-party banks may refuse to turn over the necessary data wasn’t sufficient
for finding lack of ascertainability.

from Blogger http://tushnet.blogspot.com/2024/02/reliance-can-be-presumed-in-ny-from.html

Posted in Uncategorized | Tagged class actions, consumer protection, false advertising | Leave a comment

no summary judgment on “non-toxic” and “Earth friendly”

Posted on January 30, 2024 by rtushnet

Bush v. Rust-Oleum
Corp., 2024 WL 308263, No. 20-cv-03268-LB (N.D. Cal. Jan. 26, 2024)

Bush alleged that Rust-Oleum
falsely labeled of its “Krud Kutter” cleaning products as “non-toxic” and
“Earth friendly.” Rust-Oleum sought summary judgment on the California
consumer protection claims based on the argument that likely deception was
refuted by disclaimers on the labels themselves and testimony from the
plaintiff and his expert toxicologist. The court declined to grant summary
judgment.

At the pleading
stage in this case, the court held that the plaintiff’s definition of
“non-toxic” — that “the product[s] did not pose any risk to humans, animals, or
the environment” — was sufficient. But “the plaintiff and his expert
toxicologist said during their depositions that risk can never be completely
eliminated (for example, even water can be toxic in excess amounts),” so no
reasonable consumer would believe the Krud Krutter products to be totally free
of risk. Here, whether the plaintiff’s asserted definitions are reasonable were
for the jury to decide as part of the overall reasonable-consumer test.

For the challenged
claim “non-toxic,” Rust-Oleum argued that the plaintiff’s expert toxicologist’s
theory of toxicity is disclosed on the front labels of its products, which say
“Caution: Eye and Skin Irritant” next to the words “Non-Toxic.” But the expert
opinion goes beyond eye and skin irritation, creating a genuine dispute of fact.

For the challenged
claim “Earth friendly,” the rear of the product labels provide a definition of
the claim. “But the definition is in small type and the defendant’s own surveys
provide evidence that most consumers do not read it.” Again, a fact issue, and “Earth
friendly” was not so general or nonspecific as to make it “extremely unlikely”
that a consumer would rely on it. The defendant’s own surveys suggested as much,
and California law did as well. White v. Kroger Co., No. 21-cv-08004-RS, 2022
WL 888657, at *2 (N.D. Cal. Mar. 25, 2022) (“California view[s] terms on the
label or container of a consumer good like … ‘earth friendly’ … to mean
that the product is not harmful to, or is beneficial to, the natural
environment. While … [this] California statute [does not] directly create[ ]
a private cause of action, [it] do[es] undermine any argument that ‘reef
friendly’ can be dismissed as mere puffery.”) (cleaned up).

from Blogger http://tushnet.blogspot.com/2024/01/no-summary-judgment-on-non-toxic-and.html

Posted in Uncategorized | Tagged consumer protection, false advertising | Leave a comment

New article: Three Sizes Fit Some: Why Content Regulation Needs Test Suites

Posted on January 25, 2024 by rtushnet

At the Berkeley Tech LJ:

ABSTRACT

The European Union’s
Digital Services Act (DSA) offers a new model for regulating online services that
allow users to post things. It uses size-based tiers to delineate the different
levels of obligation imposed on various services. Despite the tiers of
regulation in the DSA, and very much in its copyright-specific companion
Article 17, it’s evident that the broad contours of the new rules were written
with insufficient attention to variation. Instead, regulators assumed that “the
internet” largely behaved like YouTube and Facebook. Using three examples of
how that model is likely to be bad for a thriving online ecosystem—counting users,
providing due process, and implementing copyright-specific rules—this Article concludes
that, to improve policymaking, regulators should use test suites of differently
situated services to ensure that they are at least considering existing
diversity and properly identifying their targets.

from Blogger http://tushnet.blogspot.com/2024/01/new-article-three-sizes-fit-some-why.html

Posted in Uncategorized | Tagged content moderation, my writings | Leave a comment

Reading list: geolocation data increased incivility online

Posted on January 19, 2024 by rtushnet

Civilizing social media: The effect of geolocation on the incivility of news comments

Yufan Guo, Yuhan Li, and Tian Yang, New Media & Society (2023)

Abstract

Many social media affordances can affect the quality of online discourse, but such an effect remains understudied for the visibility of geolocation, which is available on most social media platforms. We looked at the event in which Weibo started to display users’ IP locations on 28 April 2022, which was supposed to reduce incivility as the deindividuation hypothesis predicted. Leveraging a natural experiment, we examined the effect of IP location visibility, with special attention to COVID-19-related news posts and location-based, uncivil name-calling. We found that displaying the IP location in the comments section increased location-based incivility, as geolocation can function as an effective cue that signals ideological affiliation and fuels conflicts between users holding different political positions on the Chinese Internet. Meanwhile, we characterized a moderating effect of audience size on this decivilizing effect. Our study suggests that diverse social media affordances can fuel group identification and facilitate intergroup behaviors.

from Blogger http://tushnet.blogspot.com/2024/01/reading-list-geolocation-data-increased.html

Posted in Uncategorized | Tagged reading list | Leave a comment

mistaken calls from nonpurchasers have little weight in real estate TM case

Posted on January 19, 2024 by rtushnet

Rampart Resources,
Inc. v. Rampart/Wurth Holding, Inc., 2024 WL 195999, No. 23-6895 (E.D. La. Jan.
18, 2024)

The court, grappling
with the Fifth Circuit’s rather inconsistent law on misdirected communications,
denies a preliminary injunction (subject easily guessable by party names).

Rampart Resources
was founded in 1989 in Baton Rouge. It provides land and real estate services
including right-of-way acquisition, servitudes, real estate brokerage,
permitting, land services, and property management across several industries
including utilities, oil and gas, renewable energy, and public works. Most of its
current business involves land use issues but does not involve any property
management, though it previously managed residential properties for ExxonMobil
and multifamily apartment units for the City of Baton Rouge. Its website
states: “Our core services include right-of-way acquisition, surveying,
permitting, project planning, and E&P land rights management.” Its clients
are predominately corporate entities and municipalities. Nonetheless, as part
of its business, Rampart Resources regularly interacts with non-client
individual landowners to assist its clients in acquiring land. It has a
registration for its logo, comprising stylized wording and a graphic of roads.
(Note that the current website seems to have removed “resources” from the logo,
which I expect is a big enough change that a new registration ought to be required.)

registered RAMPART RESOURCES mark

today’s website

Rampart/Wurth
Holding is a Louisiana-based real estate company offering: (1) multifamily
management services for multifamily units; (2) commercial management services;
and (3) single-family and small multifamily management and maintenance services,
handled respectively by (1) Rampart Multifamily Management; (2) Rampart
Commercial Management; and (3) Wurth Real Estate Services. Its principal
clients are owners of commercial and residential real estate, but R/W also
occasionally interacts with the residents and tenants of their clients. Its
services include rent collection, resident/tenant placement and screening,
property maintenance and repairs, property inspections, and eviction services.
Its website states: “Property Management is All We Do.” It adopted the
Rampart/Wurth branding in 2023. This lawsuit followed after a FedEx delivery
driver told Rampart Resources’ president that “another Rampart” had recently
opened in Baton Rouge and that she had mistakenly gone to Rampart/Wurth’s
office instead of Rampart Resources.

Several Rampart Resources employees told the president that they had received seven
telephone calls in September and October 2023 from individuals attempting to
contact Rampart/Wurth. The calls generally follow the same pattern: a call asks
about services that Rampart Resources doesn’t provide; the caller is informed
of their mistake. One caller stated that Jefferson Lakes Apartments had given
her Rampart Resources’ phone number to refund a deposit.

Rampart Resources’
mark was legally protected and arbitrary. The evidence didn’t (at this stage) support
a finding of geographic descriptiveness based on the prominence of Rampart
Street in New Orleans, where Rampart Resources was not based. “Unlike, say, ‘Carondelet,’
‘Tchoupitoulas,’ or a host of other well-known New Orleans streets, ‘Rampart’
has no inherent connection to New Orleans or to any specific geographical
feature.”

Strength of mark:
weighed in plaintiff’s favor, though not heavily so, given the arbitrariness of
the mark balanced against substantial third-party use of “Rampart,” albeit
perhaps only one in real estate. “Plaintiff’s sponsorship of certain events and
promotion of branded items does little on its own to counteract Defendant’s
evidence of widespread usage of the key portion of Plaintiff’s mark.”

Similarity: Defendant
used “a key design with its branding of Rampart Multifamily Management and
Rampart Commercial Management,” along with an unchallenged key design with two
Rs and no other text. The only similarity between the two marks was the term
“Rampart.” That was not substantial given the other elements of the marks. The
total effect of the marks was dissimilar, favoring Rampart/Wurth.

not sure this is exactly what is litigated but it’s what I found

Similarity of
services: Where the respective services “are noncompeting, the [possible] confusion
at issue is one of sponsorship, affiliation, or connection.” “The danger of
affiliation or sponsorship confusion increases when the junior user’s services
are in a market that is one into which the senior user would naturally expand.”
Importantly, “[t]he actual intent of the senior user to expand is not
particularly probative of whether the junior user’s market is one into which
the senior user would naturally expand…Consumer perception is the controlling
factor.”

Rampart/Wurth
pointed out that Rampart Resources didn’t even bother to register its mark for “property
management.” There was only a “minor overlap” in services. Property management
constituted “only a small and infrequent portion of Plaintiff’s business.” Still,
an expansion into the property management market was plausible, especially
since Rampart Resources had done it in the past. “Moreover, the diverse array
of services offered by the Plaintiff increases the likelihood of confusion
among the consuming public.” This somewhat weighed in favor of finding
confusion.

Similarity between
parties’ consumers/clients: There was minimal overlap. “Plaintiff’s clientele
includes municipal and corporate entities, particularly those in the utilities,
oil and gas, renewable energy, and public works sectors. Meanwhile, Defendant’s
customers are real estate developers and owners of commercial and multifamily
property.” It was plausible, nonetheless, that there was some overlap.

Advertising
campaigns: Rampart Resources alleged that it promotes its services primarily
through its website, its “sponsorship of prominent charity and other events,”
through branded marketing items such as shirts, cups, jackets, banners, signage
at its offices, fliers, and folders, and, on occasion, print advertising. Both
parties are findable online, and “both parties indicated that word-of-mouth
advertising among their respective customer bases is perhaps their strongest
form of advertising.” This factor wasn’t particularly probative, even though
reliance on word-of-mouth might “diminish the importance of the dissimilarity
between the trademarks.” Without much evidence, this factor was neutral.

Intent: There was no
evidence of bad faith, making this factor neutral. Failing to stop use after
receiving a C&D doesn’t mean bad faith.

Actual confusion: “[T]the
Fifth Circuit requires more substantial evidence of confusion where the
confusion does not result in swayed purchases,” and this should be weighed
against the parties’ total sales volume. “[I]solated instances of confusion
about the affiliation of two companies that do not result in redirected
business are not enough to sustain a finding of actual confusion.”

The evidence here
was entirely anecdotal. The FedEx driver wasn’t a customer/potential customer
of either party and was only “briefly confused” about the names. “Proof of
actual confusion requires more. For the seven phone calls, since they weren’t
about overlapping services, Rampart Resources’ employees quickly identified the
mistake. Maybe they were even calling about Rampart Apartments; there was
limited evidence that they conflated the defendant with the plaintiff.

Even assuming they
were all trying to reach Rampart/Wurth, this wasn’t particularly weighty, given
the lack of evidence that actual customers were confused or swayed into doing
business with Rampart/Wurth. Rampart/Wurth averred that it hadn’t received any
mistaken inquiries or questions about association. Thus, the examples showed only
a “fleeting mix-up of names” by persons who weren’t direct customers of either
party. Also, when weighed against the volume of business conducted by the
parties, the weight of seven phone calls was lessened. “[B]oth parties operate
in several states, provide complex services to sophisticated clients, and
interact with a wide swath of the public. Moreover, the Defendant claims to
manage over 10,000 multifamily units and over eighteen million square feet of
commercial real estate space.”

After all that, the
court still weighed this factor slightly in Rampart Resources’ favor.

Consumer care: High,
given the expense and sophistication of the relevant transactions. Rampart
Resources argued that it “routinely works with property owners who are
laypersons.” But none of these allegedly “unsophisticated” persons were actual
clients or customers; rather they are persons whom Rampart Resources interacts
with “in order for [its] clients to successfully acquire land.” This factor
would become moot if this argument were accepted, given that “nearly every
company, no matter how sophisticated their customers are, necessarily interacts
in some capacity with unsophisticated members of the public.” The factor was
the care exercised by potential purchasers, not the care exercised by anyone who
interacts with the plaintiff. (This argument would be bolstered if the court
were to talk about the reason we care about potential purchasers
and not random people—the potential for harm.) Plus, even if landowners are
unsophisticated, there was no evidence that they had been confused, even
fleetingly.

Ultimately, the
plaintiff showed only a “mere possibility” of confusion, not a “probability.” “The
Court finds it is unlikely that the parties’ sophisticated clientele would
confuse Plaintiff’s mark with that of the Defendant, especially given the
limited similarity of the marks.”

from Blogger http://tushnet.blogspot.com/2024/01/mistaken-calls-from-nonpurchasers-have.html

Posted in Uncategorized | Tagged trademark | Leave a comment

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Rebecca Tushnet

WIPIP session 5: Anti-Circumvention

WIPIP session 4: ™ & Consumers

WIPIP session 3: Cultural Production

WIPIP session 2: ™ Doctrine, © Fair Use

WIPIP Session 1: AI

reliance can be presumed in NY from material misleadingness, as in California

no summary judgment on “non-toxic” and “Earth friendly”

New article: Three Sizes Fit Some: Why Content Regulation Needs Test Suites

Reading list: geolocation data increased incivility online

Abstract

mistaken calls from nonpurchasers have little weight in real estate TM case

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