Wednesday, May 30, 2012
America's First Patents
My post today is a pointer to my guest post at the Patently-O blog called America's First Patents. Here is the first paragraph:
My forthcoming Florida Law Review article, America’s First Patents, examines every available patent issued during the first 50 years of patenting in the United States. A full draft is accessible at this SSRN page. The article reaches three conclusions:
- Our patentable subject matter jurisprudence with respect to methods can, in part, blame its current unclarity on early decisions by a few important judges to import British law into the new patent system.
- Early patenting trends suggest that Congress has never intended new subject areas be limited until Congress explicitly allowed the new subject area.
- The machine-or-transformation test, which allows a method patent only if the process involves a machine or transforms matter, has no basis in historic patenting practices.
Tuesday, May 29, 2012
School of Rock
I had a unique experience last Friday, teaching some copyright law basics to music students at a local high school. The instructor invited me to present to the class in part because he wanted a better understanding of his own potential liability for arranging song for performances, and in part because he suspected his students were, by and large, frequently downloading music and movies without the permission of copyright owners, and he thought they should understand the legal implications of that behavior. The students were far more interested in the inconsistencies they perceived in the current copyright system. I'll discuss a few of those after the break.
First, the Copyright Act grants the exclusive right to publicly perform a musical work, or authorize such a performance, to the author of the work, but there is no right public performance right granted to the author or owner of a sound recording. See 17 U.S.C. § 114. In other words, Rod Temperton, the author of the song "Thriller," has the right to collect money paid to secure permission to publicly perform the song, but neither Michael Jackson's estate nor Epic Records holds any such right, although it's hard to discount the creative choices of Michael Jackson, Quincy Jones and their collaborators in making much of what the public values about that recording. To those who had tried their hands at writing songs, however, the disparity made a lot of sense because "Thriller" should be Temperton's song because of his creative labors.
Second, the Copyright Act makes specific allowance for what I call "faithful" cover tunes, but not beat sampling or mashups. If a song (the musical work) has been commercially released, another artist can make a cover of the song and sell recordings of it without securing the permission of the copyright owner, so long as the cover artist provides notice, pays a compulsory license (currenty $0.091 per physical or digital recording) and doesn't change the song too much. See 17 U.S.C. § 115. If the cover artist makes a change in "the basic melody or fundamental character of the work," then the compulsory license in unavailable, and the cover artist must get permission and pay what the copyright owner asks. In addition, the compulsory license does not cover the sound recording, so there is no compulsory license for a "sampling right." Thus, Van Halen can make a cover of "Oh, Pretty Woman," without Roy Orbison's permission, but Two Live Crew cannot (unless the rap version ends up qualifying for the fair use privilege).
It was also interesting to me that at least one student in each class was of the opinion that once the owner of a copyrighted work put the work on the Internet, the owner was ceding control of the work, and should expect people to download it for free. It's an observation consistent with my own analysis about why copyright owners should have a strong, if not absolute, right to decide if and when to release a work online.
On a personal level, I confirmed a suspicion about my own teaching: if I try to teach the same subject six different times on the same day, it is guaranteed to come out six different ways, and indeed, it is likely there will be significant differences in what I cover in each class. This is in part because I have way more material at my fingertips than I can cram into any 45 minute class, and so I can be somewhat flexible about what I present, and in what order. I like that, because it allows me to teach in a manner more responsive to student questions. On the other hand, it may expose a failure to determine what are the 20-30 minutes of critical material I need to cover in an introduction to copyright law.
Thursday, May 24, 2012
Oracle v. Google - Round II Jury Verdict (patent infringement)
Earlier this month, I wrote about the first part of the of the trial between Oracle and Google. I predicted that the Court would eventually rule that the elements of Java that were copied were functional, and thus not infringed. There's been no ruling on that point, but the show went on, with a trial on patents that Oracle alleged Google had infringed. Once again, I thank the folks at Groklaw for the great coverage of the case.
Yesterday, the jury ruled that there was no patent infringement of the two patents asserted. I must say that this surprised me - a lot. A finding of non-infringement of a couple narrow patents is not all that surprising. What surprised me was that these were all the patents asserted. I believed that - if Google was really trying to mimic the functionality of Java - surely there was an infringed claim of at least one patent in the portfolio.
I guess not.
How did the parties get here? I would say that it was a combination of a great aggressive strategy by Google and some strategic decisions by Oracle. First, many of the patents were re-examined at the Patent and Trademark Office. Re-exam is a method whereby the PTO gets another try to determine whether a patent is invalid, usually with more historical data (prior art) than was available the first time around. Note also that the PTO and courts have become more hostile to software patents over the years. Just this week, the Supreme Court granted cert, vacated, and remanded a software patent case back to the Federal Circuit.
The PTO had issued "final" rulings on most of the patents invalidating all the relevant claims, though Oracle could have kept fighting or appealed the rulings. Instead Oracle made the strategic decision to proceed on fewer patents (only two). It must have been pretty confident, but it lost the jury at some point, and these two patents were not infringed. I was also surprised at how short the trial was, but I guess a lot of background came out in the copyright portion.
I think we can generalize a few things from this outcome, some of which (surprise) support the conclusion in my article "Patent Troll Myths." First, it's not all about trolls; we should look at the patents rather than the person asserting them to decide whether there is merit to the case. Second, no matter how big your portfolio is, you are at risk of losing your key patents. It makes sense, then, to time actions after reexamination, and to attempt to bulletproof the patent before filing suit. Maybe Oracle couldn't wait here. Third, this was a victory for the system without knocking out software patents wholesale. There were some valid claims, and they were not infringed, and others were found invalid. I believe this is a better outcome than removing the patent incentive altogether. Sure, this was an expensive trial, but it only lasted a few days in front of the jury. My former firm tried cases of this number of patents for a lot less than this one cost. Thus, the final point is that perhaps more cases should be tried by smaller firms for les money- something I doubt big companies are willing to do.
Wednesday, May 16, 2012
Fair Use and Electronic Reserves
For several years Georgia State was involved in litigation over the fair use doctrine. Specifically a consortium of publishers backed by Oxford, Cambridge and Sage sued Georgia State over copyright violations by many of the faculty. Many of my colleagues in the department were specifically named in the suit. A decision has now been rendered. You can read abou the decision here, and you can read the decision here.
The Court backed Georgia State in almost every instance, finding no copyright violation. However, the Court did lay down some rules - in particular you can use no more than 10% or one chapter, whichever is shorter, of any book.
Oh, and my colleagues were all found to have not violated copyright laws. For two of them the Court found that the plaintiffs could even prove a copyright.
Wednesday, May 09, 2012
Oracle v. Google: Digging Deeper
This follows my recent post about Oracle v. Google. At the behest of commenters, both online and offline, I decided to dig a bit deeper to see exactly what level of abstraction is at issue in this case. The reason is simple: I made some assumptions in the last post about what the jury must have found, and it turns out that the assumption was wrong. Before anyone accuses me of changing my mind, I want to note that in my last post I made a guess, and that guess was wrong once I read the actual evidence. My view of the law hasn't changed. More after the jump.
For the masochistic, Groklaw has compiled the expert reports in an accessible fashion here and here. Why do I look at the reports, and not the briefs? It turns out that lawyers will make all sorts of arguments about what the evidence will say, but what is really relevant is the evidence actually presented. The expert reports, submitted before trial, are the broadest form of evidence that can be admitted - the court can whittle down what the jury hears, but typically experts are not allowed to go much beyond their reports.
These reports represent the best evidentiary presentation the parties have on the technical merits. It turns out that as a factual matter, both reports overlap quite a bit, and neither seems "wrong" as a matter of technical fact. I would sure hope so - these are pretty well respected professors and, quite frankly, the issues in this case are just not that complicated from a coding standpoint. (Note: for those wonder what gives me the authority to say that, I could say a lot, but I'll just note that in a prior life I wrote a book about software programming for an electronic mail API).
What level of abstraction was presented and argued to the jury? As far as I can tell from the reports, other than a couple or three routines that were directly copied, the Oracle's expert found little or no similar structures or sequences in the main body source code - the part that actually does the work. The only similarity - and it was nearly identical - was in the structure, sequence and organization of the grouping of function names, and the "packages" or files that they were located in.
For computer nerds, also identical were function names, parameter orders, and variable structures passed in as parameters. In other words, the header files were essentially identical. And they would have to be, if the goal is to have a compatible system. The inputs (the function names and parameters) and the outputs need to be the same. The only way you can disallow this usage of the API is to say that you cannot create an independent software program (even one of this size) that mimics the inputs and outputs of the original program.
To say that would be bad policy, and as I discuss below, probably not in accordance with precedent. This is why the experts are both right. Oracle's expert says they are identical, and Google copied because that was the best way to lure application developers - by providing compatibility (and the jury agreed, as to the copying part). Google's expert says, so what? The only thing copied was functional, and that's legal. It's this last part that a) led to the hung jury, and b) the court will have to rule on.
In my last post, I assumed that the level of abstraction must have been at a deeper level than just the names of the methods. Why did I do that?
First, the court's jury instructions make clear that function names are not at issue. But I guess the court left it to the jury whether the collection could be infringed.
Second, the idea that an API could be infringed is usually something courts decide well in advance of trial, and it's a question that doesn't usually make it to trial.
Third, based on media accounts, it appeared that there was more testimony about deeper similarities in the code. The copied functions, I argued in my prior post, supported that view. Except that there were no other similarities. I think it is a testament to Oracle's lawyers (and experts) that this misperception of a dirty clean room shone through in media reports, because the actual evidence belies the media accounts.
This is why I decided to dig deeper, and why one should not rely on second hand reports of important evidence. Based on my reading of the reports (and I admit that I could be missing something - I wasn't in the courtroom), I think that the court will have no choice but to hold that the collection of API names is uncopyrightable - at least at this level of abstraction and claimed infringement.
To the extent that there are bits of non-functional code, I would say that's probably fair use as a matter of law to implement a compatible system. I made a very similar argument in an article I wrote 12 years ago - long before I went into academia.
Prof. Boyden asked in a comment to my prior post whether there was any law that supported the copying of APIs structure and header files. I think there is: Lotus v. Borland. That case is famous for allowing Borland to mimic the Lotus structure, but there was also an API of sorts. Lotus macros were based on the menu structure, and to provide program compatiblity with Lotus, Borland implemented the same structure. So, for example, in Lotus, a user would hit "/" to bring up the menus, "F" to bring up the file menu, and "O" to bring up the open menu. As a result, the macro "/FO" would mimic this, to bring up the open menu.
Borland's product would "read" macro programs written for Lotus, and perform the same operation. No underlying similarity of the computer code, but an identical API that took the same inputs to create the same output the user expected.
Like the lower court here, the lower court there found infringement of the structure, sequence, and organization of the menu structure. Like the lower court here, the court there found it irrelevant that Borland got the menu structure from third-party books rather than Lotus's own product. (Here, Google asserts that it got the API's from Apache Harmony, a compatible Java system, rather than the Java documents themselves). There is some dispute about whether Sun sanctioned the Apache project, and what effect that should have on the case. I think that the Harmony is a red herring.The reality is that it does not matter either way - a copy is a copy is a copy - if the copy is illicit that is.
In Lotus, the lower court found the API creative and copyrightable, the very question facing the court here. On appeal, however, the First Circuit ruled that the API was a method of operation, likening it to the buttons on a VCR. I think that's a bit simplistic, but it was definitely the right ruling. The case went up to the Supreme Court, and it was a blockbuster case, expected to -- once and for all -- put this question to rest.
Alas, the Supreme Court affirmed without opinion by an evenly divided court. And the circuit court ruling stood. And it still stands - the court never took another case, and the gist of Lotus v. Borland has been applied over and over, but rarely as directly as it might apply here.
Wholesale, direct compatibility copying of APIs just doesn't happen very often, and certainly not on the scale and with the stakes of that at issue here. Perhaps that is why there is no definitive case holding that an entire API structure is uncopyrightable. You would think we would have by 2012, but nope. Lotus comes close, but it is not identical. In Lotus, the menu structure was much smaller, and the names and structure were far less creative. Further, the concern was macro programming written by users for internal use that would not allow them to switch to a new spreadsheet program. Java programs, on the other hand, are designed to be distributed to the public in most cases.
Then again, the core issue is the same: the ability to switch the underlying program while maintaining compatibility of programs that have already been written. Based on this similarity, my prediction is that Judge Alsup will say that the collection of names is not copyrightable, or at the very least usage of the API in this manner is fair use as a matter of law. We'll see if I'm right, and whether an appeals court affirms it.
Monday, May 07, 2012
Oracle v. Google - Round I jury verdict (or not)
The jury came back today with its verdict in round one of the epic trial between two giants: Oracle v. Google. This first phase was for copyright infringement. In many ways, this was a run of the mill case, but the stakes are something we haven't seen in a technology copyright trial in quite some time.
Here's the short story of what happened, as far as I can gather.
1. Google needed an application platform for its Android phones. This platform allows software developers to write programs (or "apps" in mobile device lingo) that will run on the phone.
2. Google decided that Sun's (now Oracle's) Java was the best way to go.
3. Google didn't want to pay Sun for a license to a "virtual machine" that would run on Android phones.
4. Google developed its own virtual machine that is compatible with the Java programming language. To do so, Google had to make "APIs" that were compatible with Java. These APIs are essentially modules that provide functionality on the phone based on a keywords (instructions) from a Java language computer program. For example, if I want to display "Hello World" on the phone screen, I need only call print("Hello World"). The API module has a bunch of hidden functionality that takes "Hello World" and sends it out to the display on the screen - manipulating memory, manipulating the display, etc.
5. The key dispute is just how much of the Java source code was copied, if any to create the Google version.
The jury today held the following:
1. One small routine (9 lines) was copied directly - line for line. The court said no damages for this, but this finding will be relevant later
2. Google copied the "structure, sequence, and organization" of 37 Java API modules. I'll discuss what this means later.
3. There was no finding on whether the copying was fair use - the jury deadlocked.
4. Google did not copy any "documentation" including comments in the source code.
5. Google was not fooled into thinking it had a license from Sun.
To understand any of this, one must understand the levels of abstraction in computer code. Some options are as follows:
A. Line by line copying of the entire source code.
B. Line by line paraphrasing of the source code (changing variable names, for example, but otherwise idential lines).
C. Copying of the structure, sequence and organization of the source code - deciding what functions to include or not, creative ways to implement them, creative ways to solve problems, creative ways to name and structure variables, etc. (The creativity can't be based on functionality)
D. Copying of the functionality, but not the stucture, sequence and organization - you usually find this with reverse engineering or independent development
E. Copying of just the names of functions with similar functionality - the structure and sequence is the same, but only as far as the names go (like print, save, etc.). The Court ruled already that this is not protected.
F. Completely different functionality, including different structure, sequence, organization, names, and functionality.
Obviously F was out if Google wanted to maintain compatibility with the Java programming language (which is not copyrightable).
So, Google set up what is often called a "cleanroom." The idea is not new - AMD famously set up a cleanroom to develop copyrighted aspects of its x86 compatible microprocessors back in the early 1990's. Like Google now (according to the jury), AMD famously failed to keep its cleanroom clean.
Here's how a cleanroom works. One group develops a specification of functionality for each of the API function names (which are, remember, not protected - people are allowed to make compatible programs using the same names, like print and save). Ideally, you do this through reverse engineering, but arguably it can be done by reading copyrighted specifications/manuals, and extracting the functionality. Quite frankly, you could probably use the original documentation as well, but it does not appear as "clean" when you do so.
Then, a second group takes the "pure functionality" description, and writes its own implementation. If it is done properly, you find no overlapping source code or comments, and no overlapping structure, sequence and organization. If there happens to be similar structure, sequence and organization, then the cleanroom still wins, because that similarity must have been dictated by functionality. After all, the whole point of the cleanroom is that the people writing the software could not copy because they did not have the original to copy from.
So, where did it all go wrong? There were a few smoking guns that the jury might have latched on to:
1. Google had some emails early on that said there was no way to duplicate the functionality, and thus Google should just take a license.
2. Some of the code (specifically, the 9 lines) were copied directly. While not big in itself, it makes one wonder how clean the team was.
3. The head of development noted in an email that it was a problem for the cleanroom people to have had Sun experience, but some apparently did.
4. Oracle's expert testified (I believe) that some of the similarities were not based on functionality, or were so close as to have been copied. Google's expert, of course, said the opposite, and the jury made its choice. It probably didn't help Google that Oracle's expert came from hometown Stanford, while Google's came from far-away Duke.
So, the jury may have just discounted the Google cleanroom story, and believed Oracle's. And that's what it found. As someone who litigated many copyight cases between competing companies, this is not a shocking outcome. This issue will not doubt bring the copyright v. functionality issue to the forefront (as it did in Lotus v. Borland and Intel v. AMD), this stuff is bread and butter for most technology copyright lawyers. It's almost always factually determined. Only the scope of this case is different in my book - everything else looks like many cases I've litigated (and a couple that I've tried).
So, what happens now in the copyright phase? (A trial on patent infringement started today.) Judge Alsup has two important decisions to make.
First, the court has to decide what to do with the fair use ruling. Many say that a mistrial is warranted since fair use is a question of fact and the jury deadlocked. I'm not so sure. The facts on fair use are not really disputed here - only the legal interpretation of them; my experience is that courts are more than willing to make a ruling one way or the other when copying is clear (as the jury now says it is). I don't know what the court will do, but my gut says no fair use here. My experience is that failed cleanrooms fail fair use - it means that what was copied was more than pure functionality, and it is for commercial use with market substitution. The only real basis for fair use is that the material copied was pure functionality, and that's the next inquiry.
Second, the court must determine whether the structure, sequence, and organization of these APIs can be copyrightable, or whether they are pure functionality. I don't know the answer to that question. It will depend in large part on:
a. whether the structure, etc., copied was at a high level (e.g. structure of functions) or at a low level (e.g. line by line and function by function);
b. the volume of copied (something like 11,000 lines is at issue);
c. the credibility of the experts in testifying to how much of structure that is similar is functionally based. On a related note, the folks over at groklaw think for the most part think this is not copyrightable. They have had tremendous coverage of this case.
I've been on both sides of this argument, and I've seen it go both ways, so I don't have any predictions. I do look forward to seeing the outcome, though. It has been a while since I've written about copyright law and computer software; this case makes me want to rejoin the fray.
Tuesday, May 01, 2012
Who Are You Wearing? Part 3: The Reveal
At the start of my stint here on Prawfs, I noted the high stakes of intellectual property enforcement in the luxury goods market. A bit later, I returned to the subject by noting that the form of intellectual property law that regulates this market--the trademark doctrine of post-sale confusion. But again, this doctrine imposes infringement liability based on the fact that someone might see the purchaser of a knock-off luxury good--who knew full well that they were buying a knock-off--and mistakenly believe they were actually carrying a genuine luxury good. In my last post on the subject, I asked what social or moral ill is threatened in such a circumstance. Courts have given two different answers to this question, one of which I find plausible in theory but problematic in practice, and the other of which I find morally and perhaps even constitutionally repugnant. I'll review each (incorporating shameless plugs for my prior writings on the subject) after the jump.
The first justification for imposing liability in these circumstances is what I have called in previous work the “bystander confusion” theory. This is the situation in which a defendant sells a knock-off product to a non-confused purchaser; observers who see the non-confused purchaser using the knock-off product mistake it for the genuine product; and those observers draw conclusions from their observations about the quality of the genuine product that influence their future purchasing decisions. In theory, this sounds like a real problem. One could understand why, say, Christian Louboutin might be worried that someone who sees a woman fall and shatter her ankle when the heel breaks off her red-soled stiletto pump might blame his fashion house for shoddy workmanship and decide never to purchase his shoes again. So bystander confusion theory has some intuitive appeal.
The problem is that bystander confusion is, in practice, a hopelessly speculative theory of liability. Direct evidence of such mistaken attributions of quality based on second-hand observation is essentially non-existent; the theory is often little more than a just-so story. This is especially so in the luxury goods market, where the purchasers of genuine luxury goods are typically highly sophisticated consumers who are aware of the wide availability of knock-offs. That isn't to say that courts don't invoke bystander confusion theory, it's just that in doing so they often end up shifting the burden of proof on the question of trademark infringement from the plaintif to the defendant, in essence demanding that the defedant prove two negatives: that potential customers of the plaintiff will not observe knock-offs being consumed, and that even if they do observe such consumption these customers will not attribute the poor quality of the observed goods to the plaintiff.
This might seem bad enough as a matter of basic civil litigation principles, but the real problem with the law of luxury goods is that it seldom turns on bystander confusion at all. Rather, courts in knock-off luxury goods cases tend to rely on a theory I've referred to as "status confusion." In the clearest statement of the theory, the Second Circuit in Hermès International v. Lederer de Paris Fifth Avenue, Inc. stated that an injury "to the public" occurs "when a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knockoff price."
What is interesting to me about this explanation of status confusion theory is that it has nothing at all to do with the quality assurance function that trademarks are usually thought to provide, or indeed with products in any sense. Rather, it is all about the effect of consumption of trademarked goods on social relations: about the level of social status afforded the surreptitious consumer of knock-off goods who has not paid an appropriate price for that status. The real knock-off, in the Second Circuit's analysis, isn't the cheap handbag, it's the woman carrying it. My own view, laid out more fully in my recent article in the Minnesota Law Review, is that policing this kind of social hierarchy ought not to be the business of the federal courts.
Of course, some type of social comparison based on consumption is natural and perhaps inevitable--as Thorstein Veblen documented over a century ago. And the Second Circuit is clearly right that modern brands serve more functions than merely indicating source or guaranteeing quality of products. Brands are increasingly freighted with social meaning--what you consume sends a message about who you are. As I've written in the NYU Journal of IP and Entertainment Law, the social dimension of even everyday brands has given rise to a fragile symbiosis between the brand owner, its customers, and the social audience, and law is increasingly being called on to mediate this web of relationships. But because brands are increasingly used to construct social meaning, and because social meaning can only be constructed through exchange among individuals and groups, the consumption of branded goods as social signals has not only a commercial dimension, but also an expressive one. And when it comes to expression, our legal system has a thumb on the scale in favor of speakers and against those who would suppress their chosen expression. Socially competitive consumption may be inevitable, but that does not mean the government should referee the competition.
Once we see consumption as a form of social expression, giving brand owners control over how we use their brands to convey and understand social identities and affiliations is troubling enough. Giving them the right to comandeer the federal courts into enforcing social hierarchies based on something as arbitrary as wealth--as status confusion doctrine does--is something else entirely. I would go so far as to say it is fundamentally anti-democratic--the kind of use of state power that the Founders fought a revolution to prevent. That this power is exercised in the context of an intellectual property claim should not obscure the profound state interference in the process of social identification, affiliation, and differentiation that post-sale confusion doctrine represents.
Nor is the troubling entanglement of courts in policing social expression limited to trademark law. Indeed, the Supreme Court this very term is considering the extent to which the government may constitutionally proscribe even a patently false factual statement made in an effort to win social acclaim. As TJ Chiang noted in an earlier post here at Prawfs, and as the Justices themselves seem at least dimly aware, the conceptual connections between the Stolen Valor Act and trademark law, between bogus boasting and modern branding, run very deep; and they all implicate core First Amendment values. It may be a cliché to observe that we all wear masks, that even misleading claims about who we are implicate universal human processes of self-expression and self-definition. But cliché or no, it bears remembering as we consider how law intervenes in those processes, and whether we are content with such intervention, or would rather defend some broader sphere of freedom to form social identities and bonds without paying a licensing fee or getting a government seal of approval.
It's the First of May
Glad to be back in the Blogosphere. Liz Phair's "Cinco de Mayo" has been in my mind nonstop today. You may ask yourself whether there is also a "First of May" song. It turns out there are at least two.
One, by the BeeGees, is a song about lost love and lost connections. The other, by geek rocker Jonathan Coulton, is about <ahem> making intimate connections in the great outdoors (and is explicit about such connections in a way that is probably NSFW).
Could the BeeGees go after JoCo for the use of the same song title? (Answer after the break)Probably not. Duplicate song titles happen all the time, and are almost never protectable under copyright law because they are too short / not sufficiently expressive. Every once in a while, we do see cases that recognize protectable trademark rights in song titles. See, for example, EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, Inc.
EMI asserted trademark rights in the title of the Benny Goodman hit "Sing, Sing, Sing (with a Swing)." The Second Circuit reversed the district court's grant of summary judgment in favor of defendant who used the phrase "Swing, Swing, Swing," in a commercial for golf clubs, accompanied by a swing tune which may or may not have been similar to the plaintiff's song.
The Second Circuit didn't resolve the defendant's fair use argument, and it's fairly solid, at least at first blush: why shouldn't an advertisement for golf clubs be able to use the phrase "swing, swing, swing"? That's what you do with a golf club. The court reversed because it felt the district court too quickly discounted the defendant's selection of a "Benny Goodman-type song like 'Swing Swing Swing.'" In fact, the advertisement in question was originally going to use the Goodman song, but the client didn't want (or couldn't affort) to pay the licensing fee. Thus, the court concluded "there are sufficient facts upon which a reasonable jury could conclude that defendants intended, in bad faith, to trade on EMI's good will in the title of the song by using the phrase 'Swing Swing Swing' in the final commercial."
The result here reminds me of the Bette Midler and Tom Waits right of publicity cases, where the respective artists turned down an invitation to sing their hit for a commercial jingle, and in both instances, the ad agency went out and hired a soundalike. As I see it, all three cases went against the defendant because of arguably bad faith attempts to either circumvent a licensing fee or circumvent the artists desire not to be associated with the client's product. You may disagree on whether EMI, Midler or Waits should have the right to say "yes but," or "no, never," but once a court is persuaded that such a right exists, the workaround seems troubling at best.
So it's the first of May, and a wonderful time to blog about the intersection of intellectual property and music, among other things. I hope you'll chime in as you have the time.
Monday, April 30, 2012
This post is cross-posted on the Patently-O blog.
Self-replicating technologies, once the subject of theory and fantasy, are now upon us. The original self-replicating machine—the living organism—has already been harnessed by biotechnology engineers and, more to the point, their lawyers. The next wave of self-replicating technologies, be they nanomedical robots or organic computers, are not far behind. Rather than triggering a “grey goo” apocalypse, these technologies are, at present, raising far more prosaic issues of intellectual property and antitrust law.
Those issues have now apparently caught the attention of the Supreme Court. A few weeks ago, the Court called for the views of the solicitor general on the certiorari petition in the case of Bowman v. Monsanto. This is the latest in a series of cases in which the Federal Circuit has addressed the application of the doctrine of patent exhaustion to the genetic engineering technology embodied in Monsanto's "Roundup-Ready" herbicide-resistant seeds. Seeds are the prototypical self-replicating technology, and a number of similar herbicide-resistant crops are in the pipeline of the largest agribusiness concerns. In each of the Roundup-Ready cases, a farmer has argued that Monsanto's patent rights do not extend to the second generation of soybeans grown from a patented first-generation seed. In each case, the Federal Circuit found for Monsanto and against the farmers.
Patent exhaustion (or "first sale") doctrine serves as a limit on patent rights, and provides that once a patentee has made an authorized sale of an embodiment of its patented invention, its patent rights with respect to that embodiment are exhausted, and the purchaser is free to use or re-sell the embodiment as it sees fit. Like analogous doctrines in copyright and trademark, it is motivated by competition concerns. Its aim is to enable the creation of downstream or secondary markets in patented articles, and to prevent patentees from using their intellectual property rights to gain market power in markets other than the market for the patented technology. When the Supreme Court last spoke on the issue, it rebuked the Federal Circuit for giving these pro-competitive policies insufficient weight. It seems to be considering an encore in the Roundup-Ready cases. For reasons I'll explain after the jump, I think that would be a mistake.The Federal Circuit's analysis of patent exhaustion in the Roundup-Ready cases is admittedly not a model of the judicial craft. Framing the issue as a formal question whether a second-generation soybean is a different "article" than the first generation seed from which it grew, the court's main justification for its result was the bare assertion that any alternative result would "eviscerate" Monsanto's patent. But this is a question-begging explanation, and there are other, better reasons why a patentee's sale of a single embodiment of its self-replicating technology ought not to exhaust patent rights with respect to the second, third, or nth generation of the technology that is propagated from that first embodiment. Moreover, these reasons are consistent not only with the reasons for granting patent rights in the first place, but with the pro-competitive principles that justify limiting those rights through exhaustion doctrine.
To get at these reasons, I propose a thought exercise. Let's imagine that the Roundup-Ready cases came out the other way--that purchasers of Roundup-Ready seed from Monsanto were free, as a matter of patent law, to use all subsequent generations of soybeans grown from those first purchased seeds however they saw fit. What would we expect the Monsantos of the world to do? How do we believe their behavior might be influenced by this new legal framework?
One possible answer to this question is: not at all. It may be that the additional revenues to be derived from selling additional embodiments of a self-replicating technology to the same customer are trivial (perhaps due to the structure of demand), and that the prospect of any one customer re-selling a subsequent generation of the technology to another potential customer of the patentee is remote. Nanomedicine, particularly personalized nanomedicine, may one day prove that this is a possible result. But in the agriculture context, it strikes me as unlikely.
Where the technology at issue is an input for the production of a commodity, and the demand for that technology is broad and essentially undifferentiated, I would expect that the possibility of re-sale of nth generation seeds by the patentee's customers would significantly eat into the patentee's revenue stream, potentially making it impossible for the patentee to recoup the investment in research and development required to develop the technology in the first place. This is the classic free-rider problem that patent law is supposed to prevent: we preserve the incentive to engage in costly research and development by giving the inventor a limited-time monopoly. Other scholars have noted that this free-rider rationale is particularly salient for inherently self-disclosing inventions (inventions that are easy to copy once they have been introduced to the public). I would add that self-replication exacerbates the problem of self-disclosure: the patentee selling an embodiment of its invention would not only be teaching competitors how to practice the invention, it would in essence be building their factories as well.
So there are sound justifications grounded in the innovation policies underlying patent law for the Federal Circuit's rulings in the Roundup-Ready cases. But of course, patent exhaustion doctrine is concerned not only with innovation policy, but also with competition policy. This brings me back to my earlier question: how would we expect the Monsantos of the world to react to the free-rider problem if patent law did not protect them against competition from nth generation copies of their own first-generation products? I can imagine two possible strategies a technologist might pursue to circumvent the free-rider problem: contract and secrecy. And I think both of these alternatives are inferior to the patent solution crafted by the Federal Circuit on competition grounds.
Take the contract approach, which has been explicitly advocated by Yee Wah Chin, one of the attorneys representing the interests of Monsanto's farmer customers. To avoid the problem of free-riders Monsanto might, for example, restrict sales of its seeds to customers who sign a license agreement in which the customers undertake to monitor the uses of nth generation embodiments. So, a farmer might have to agree to sell his soybean crop only to buyers who have their own license agreement with Monsanto, or to Monsanto itself. Or Monsanto could include field-of-use restrictions in its licenses, as Ms. Chin proposes: "Monsanto could have licensed seedmakers to sell seed embodying Monsanto technology on condition that the second-generation seed be either consumed or sold to buyers who agree to either consume the seed or isolate that seed from other seed and sell the seed only for consumption."
This does not strike me as a pro-competitive result, for a few reasons. First, it incentivizes Monsanto to extend its influence into downstream markets--such as the market for commodity soybeans and their derivative products--in ways that it would have little incentive for under the Federal Circuit's approach. This downstream market creep is precisely the type of expansion of patent rights that exhaustion doctrine is supposed to prevent, out of fear that the patentee's interests are not likely to be consistent with the efficient functioning of those downstream markets. Second, and perhaps more importantly, forcing Monsanto to look to contract rights to protect its investment in research and development shifts the costs of monitoring and enforcing the Roundup-Ready patents from Monsanto itself onto its customers, who are likely to face higher monitoring costs.
We must remember, Monsanto's customers are largely farmers, who lack Monsanto's economies of scale, its greater expertise with its own technology, and its understanding of the functioning of the markets for that technology. Moreover, shifting enforcement responsibility from the patentee to its customers is likely to create agency costs where they would not otherwise exist. A farmer who is paying Monsanto a premium for Roundup-Ready seeds probably has far weaker incentives to vigorously monitor for violation of Monsanto's license terms than does Monsanto itself, which is reaping the premium. Finally, in the event that a customer breaches these monitoring obligations, either maliciously or negligently, Monsanto's technology could fall into the hands of a competitor who is not in privity of contract with Monsanto and thus (absent any unfair competition type of claim) would be free to use the nth generation seed (in which Monsanto's patent rights are exhausted) to compete with Monsanto. An individual farmer is likely to be judgment-proof in the face of the claims Monsanto might make should such a competitive threat emerge outside the reach of its licensing provisions, which once again leads us to the original problem: how would we expect Monsanto to respond to this risk of free-riding?
This brings me to the last alternative to the Federal Circuit's solution in the Roundup-Ready cases: secrecy. Monsanto might seek to prevent free-riding by refusing to release its technology to public view, and relying on trade secret protection to protect against free-riding. But in order to preserve its secret (a prerequisite of trade secret protection), Monsanto would have to ensure that nothing it released into the market disclosed its genetic technology. As I noted above, self-replication can be seen as a heightened form of self-disclosure, and so this type of secrecy would be fairly hard to maintain. Indeed, I think the only plausible way of doing so would be to pursue a course of comprehensive vertical integration. Monsanto would not only have to be in the business of propagating seeds, but also in the business of cultivating and harvesting soybeans, and processing them into useful products (oil, animal feed, industrial adhesives, tofu, you name it) that do not reveal the genetic material at the core of Monsanto's invention. Even if this were technically possible (a big if), the effect on all sorts of markets, both for inputs and outputs of the soybean market, is likely to be catastrophically anti-competitive. Where the alternative is such drastic shocks to competition in the market for, e.g., miso paste, soy-fed livestock, and arable land, the Federal Circuit's decisions in the Roundup-Ready cases start to look surprisingly pro-competitive.
The big question in my mind, then, is not whether the Federal Circuit's reached the right result in the Roundup-Ready cases. Given the factual setting of those cases, I think the answer to that question is a relatively uncontroversial yes. The real question, to me, is whether the same holds true for self-replicating technologies other than seeds for agricultural commodities. I already noted above one type of self-replicating technology--personalized nanomedicine--that may not present the same incentives for patentees, their customers, and their competitors, as do herbicide-resistant soybeans. Given how little we can presume to know about the future development of other self-replicating technologies, it is likely unwise to try to set a rule today to govern the rights of downstream users for all such technologies that may arise tomorrow. And for this reason alone, it may be worth getting some discussion of the issue from the Supreme Court, which seems particularly sensitive (almost to a fault) to the hazards of establishing brittle legal rules to govern the unknown future of technology. If the analysis that emerges is more substantive and functionally-minded than the under-argued, formalist analysis of the Federal Circuit (admittedly, another big if), I would be happy to see the Court take the case, if only to put the type of issues I've discussed in this post on the table.
Friday, April 27, 2012
In IP3, Madhavi Sunder considered the cultural impact of intelletual property rights on those in need. Her piece refers to "compassionate uses" of patented pharmaceuticals to distribute to those unable to afford them. As she describes, such uses "would permit countries where urgently needed medicines are unaffordable at market prices to temporarily distribute these medicines at cost for 'compassionate use.'"
This morning's The New York Times describes infringement of an entirely different kind. There, a 92-year-old copyist known as "Big Hy" likely spent $30,000 of his own funds to ship bootlegged DVD's to miliatary service personnnel overseas. According to the piece, "in black grandpa shoes and blue suspenders that hoisted his trousers up to his sternum," Hy ripped bootleg films, placed them in boxes, and shipped at least some of them to an Army Chaplain, because they are (apparently) part of an effective distribution system. Once received, members of the troops would watch them, sometimes at the same time that the films were being released in theaters here.
A spokesperson for the Motion Picture Association of America appeared to acknowledge that "we produce can bring some enjoyment to them while they are away from home." This rather unaggressive stance is unusual for that organization, which is known to advocate strong copyright enforcement. Whether this response arises from compassion or a sophisticated understanding of press relations, it is good to see the organization acknowledge uses beyond those categorically permitted by the law.
Thursday, April 26, 2012
Who Are You Wearing? Part 2: The Law
In an earlier post, I flagged the high stakes surrounding intellectual property disputes over luxury goods, but questioned the rationale for making a federal case out of, say, a fake purse. In this post, I'll be examining the legal regime that allows such a case to be made.
That regime, in the United States at least, comprises a particular sub-field of federal trademark law. Section 43(a) of the Lanham Act provides the primary statutory authority for the federal law of trademark infringement and unfair competition. It imposes civil liability against any person who uses a trademark in commerce that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods...." But if you know the market for knock-off luxury goods, you know that the people who buy them almost always know full well that they're buying fakes. Nobody thinks the Rolex he bought for $10 in Times Square has any actual relationship to the Rolex company, nor does anybody think the vinyl Kelly Bag she bought for $20 on Canal Street has any relationship to the house of Hermès. So what is the "confusion, or... mistake, or... dece[ption]" that provides the basis for trademark liability against the makers and sellers of such knock-offs?
The answer that courts have come up with has come to be known as "post-sale confusion." Luxury knock-offs do not infringe the luxury house's trademark because of their effect on the purchaser of the knock-offs, but because of their effect on people who observe that purchaser consuming the product after it has been purchased. Such observers, the theory goes, will see the non-confused purchaser consuming the defendant's product, but mistake it for the plaintiff's product due to the similarity of the products' trademarks or overall designs. This "mistake" is the hook on which trademark liability hangs in the luxury knock-off arena, and the question I'm interested is why this type of mistake is something the federal government ought to concern itself with.
What is the social or moral ill that results if I mistakenly believe that a woman walking down Fifth Avenue is carrying an authentic Louis Vuitton purse when in fact she is carrying a cheap imitation? Trademark law is often thought to be designed to prevent producers from misleading consumers as to unobservable product qualities, either to lower consumers' search costs (as Judge Posner and Professor Landes have famously argued) or out of respect for consumers' autonomy (as I argue in a forthcoming piece in the Stanford Law Review). But, again, the purchasers of luxury knock-offs know exactly what they're buying; they aren't being deceived at all. So what gives? Why should we make post-sale confusion actionable, let alone criminal?
Once again, I'll throw this open to commenters before revealing my own thoughts in a future post; those who can't wait for the reveal can read my take in the latest issue of the Minnesota Law Review.
Tuesday, April 24, 2012
I'm a big fan of Dropbox. With a full schedule of professional travel, a need to work at home and on the go, and a less-than-perfectly-reliable university-issued computer, I've learned the hard way that I need dependable, easy-to-use cloud-based storage for my important data. But Dropbox has always targeted the casual data-sharer as much as the power user, and yesterday the company unveiled a new feature of its software that allows users to share files on their computers with anyone using an http link to a copy of the file stored on Dropbox's cloud-storage servers. The thing about this service, as some tech commentators have pointed out, is that it implements essentially the same technology that led to the federal government's recent criminal indictment of file-sharing juggernaut MegaUpload and its eccentric founder, Kim Dotcom.
So does Dropbox have a date with the feds in its future? I think most would agree the answer is no, but getting to that answer reveals the problems we've created in trying to manage the social, legal, and technological issues that surround the exchange of information. More after the jump...
The big story in copyright law for the past two or three decades has been the ongoing battle between the forces of "content" and "distribution"--between the owners of intellectual property rights in information and the sellers of technology that makes the distribution of that information cheaper, easier, and broader. This is nothing particularly new; those who make their living off of the creation and sale of new information have always been wary of technological progress. But mass adoption of digital technology and high-speed data networks have significantly raised the stakes.
In Section 512(c) of the Copyright Act (the so-called "DMCA safe-harbor") and in the case of Sony Corp. v. Universal City Studios, Congress and the Supreme Court, respectively, attempted to strike what turns out to be an uneasy balance between these competing interests. Section 512(c) immunizes the sellers of technology that facilitates the distribution of copyrighted information from liability for infringing uses of their services by customers, provided the technologists meet certain conditions. In Sony, the Court announced that technology itself is not a copyright outlaw so long as it is capable of substantial non-infringing uses. But of course, individuals and institutions may well use such technology for infringing purposes, and such uses remain actionable. We thus have a distinction set up within copyright law itself between the power of a technology in itself and the use of that technology by real people in real social settings. While we may hold individuals responsible for uses of technology that infringe a copyright, we do not hold the technology itself responsible for such uses.
This leads to the odd situation in which we now find ourselves, where the viability of entire segments of the digital economy, and of some of the largest and fastest-growing businesses in the world, come to turn on the thorniest and most contentious questions of fact the legal system can ever grapple with--questions of intent. In MGM v. Grokster, for example, the defendant companies were denied summary judgment on grounds that there was sufficient evidence that they intended to induce third parties to infringe the plaintiff's copyrights using their peer-to-peer file sharing services. But of course, intent is not a fact that can be proven by prying open the skull of a defendant and looking inside. Intent must always be proven circumstantially. In Grokster, the most important category of circumstantial evidence cited by the Court as sufficient to create a triable issue of fact (and likely sufficient to award summary judgment to the plaintiff--which was eventually granted) was evidence tending to show that the defendants targeted the cast-off customers of adjudged secondary infringer Napster. But "complement[ing]" that evidence, the court said, was the defendants' failure to impose filtering systems on their services that Section 512(c) arguably makes legally unnecessary, as well as evidence that the defendants--gasp!--were interested in growing their user base to maximize advertising revenues.
This is what Larry Lessig once referred to as "the monster Grokster created": the inquiry into a particular defendant's state of mind is now part and parcel of the legal battle between content and distribution. And because evidence of intent is necessarily circumstantial, these cases are likely to turn on a factfinder's response to the overall story woven by the parties' lawyers--a gut reaction as to whether the defendant is a good guy or a bad guy. Facts that might otherwise seem innocuous can be cited as circumstantial evidence of intent to commit secondary infringement if the factfinder just doesn't trust the defendant.
Which brings me back back to Dropbox and its new link-to-share service. Dropbox, it seems, is not maintaining a searchable index of the files its customers share via link--the type of activity that got Napster in trouble. One might think that this fact suggests the company has no interest in attracting customers who are interested in using its services to locate and freely download copyrighted content. But take a look at Paragraph 10 of the MegaUpload indictment, which alleges that MegaUpload did not maintain a searchable index of content on its servers in order to "conceal the scope of its [copyright] infringement." That paragraph also notes that MegaUpload provided financial incentives to customers whose uploaded files increased traffic on MegaUpload's website and, thereby, increasing the company's revenue base. Dropbox, in turn provides existing customers with additional free cloud storage for referring new customers to the service. If, as Grokster suggests, a desire to broaden one's customer base is circumstantial evidence of an intent to induce infringement, should we expect the refer-a-friend program to be cited in a federal indictment or a civil complaint in the near future?
I don't think so, but I can't be sure, and that is ultimately the point. The social dynamics of information exchange that new technologies like Dropbox (and, frankly, MegaUpload) make possible are unpredictable and often out of the direct control of the service providers themselves. Such exchanges can be public or private, shared or hidden, broadcast or narrowcast, and everywhere in between. Section 512(c) attempts to account for this, for example by making knowledge of specific infringing activity a prerequisite for secondary liability. But like intent, knowledge is a thorny factual issue that courts continue to disagree about, often based on differing views of the inferences that can be drawn from a particular mix of circumstantial evidence.
For my part, I look at all this as a lawyer who, in a former life, was sometimes called on to give clients guidance as to whether a course of action they were considering for their business would be likely to generate legal liability. I have to admit, I'd have a hard time giving a client like Dropbox useful advice today. And it strikes me that a legal regime that doesn't allow a segment of our economic and social lives as fundamental as the information we exchange with one another to be planned with some degree of certainty isn't doing its job very well.
Monday, April 23, 2012
Recently I learned that I'll be teaching Copyright law for the first time, a circumstance that launched my search for casebook. One of the ones that I considered was Brauneis and Schechter's Copyright: A Contemporary Approach, which is an interactive casebook just published by West. The book is released in a paper format, along with a one-year subscription to an electronic version of the book. Prawfs using a West/Westlaw password can obtain access to the electronic version.
The authors used the electronic format of the book nicely. I liked the links to the subject matter of the cases, such as clips of songs, images and the like. For example, one link which allowed me to play the video game that was the subject of Williams Electronics v. Artic Int'l. The links to the statutory text were particularly useful.
Although I ultimatley didn't end up going with this one (at least this year), I found the format helpful and intriguing, particularly for courses where there are strong visual components. If you've used any of the interactive casebooks in your courses, your feedback about your experience would be very helpful.
Sunday, April 22, 2012
80,000? That's a Lot of Patents
I just saw this Mercedes ad, intended to celebrate the innovation of the company's engineers. As a patent prawf, I was struck by the image of patents protecting the car.
80,000 patents can be a signal of serious advances. As Clarissa Long has observed, "patents can serve as a signal of firm quality." Or, it might just be indicative of a lot of patenting.
Wednesday, April 04, 2012
Who Are You Wearing? Part 1: The Stakes
It's a pleasure to be making my first appearance on PrawfsBlawg, where I have long turned for thoughtful commentary on weighty issues such as the ACA, religious liberty, workplace discrimination, the politics of judicial review, and the crisis in legal education. I hope to do my own part to uphold this tradition by talking about luxury handbags.
My own scholarship focuses on intellectual property, and mainly trademark law. These days, most of the highest-profile trademark disputes involve luxury goods: the red-soled Louboutin, the Louis Vuitton monogram, or Tiffany's blue box. We might dismiss the legal wrangling over such baubles as frivolous, but there are, quite literally, billions of dollars at stake: the premier luxury conglomerate LVMH reported revenues of over 23 billion euros last year, 22% of which came from the United States. And that's just for sales of genuine products; Congress has found that trademark counterfeiting saps our national economy of $200 billion annually, losing us "millions of dollars in tax revenue and tens of thousands of jobs" (though there are many who cast doubt on this claim, notably including the GAO). So perhaps it's not surprising that so many lawyers (and their clients) are ready to make a federal case out of a fake purse.
The question I've been investigating recently is whether we ought to allow such a federal case to be made. I think we can all intuitively appreciate the desire to police the stream of commerce for knock-off pharmaceuticals, baby formula, or brake pads--there's a public safety issue at stake. But what is the public interest in knock-off watches and open-toe pumps? This turns out to be a complicated question, and I'll be fleshing out my own view in the coming days. But before I give my take, I'm curious what the Prawfs readership thinks. Feel free to give your views in the comments.
Sunday, April 01, 2012
Federal Agency Humor?
Thanks to Dan asking me back to Prawfsblawg.
I'm an Intellectual Property prawf, with a focus on patents. This recent post at the Hollywood Reporter caught my eye this morning, noting that a U.S. PTO Examiner recently rejected a 2008 patent application for a male support garment. In support of the rejection, the Examiner cited the 2006 film Borat, in which Sacha Baron Cohen wore a similar garment. This is apparently not an April Fool's joke, as I was able to find the Examiner's rejection on the US PTO's website.
Well, really, what else can be said about this? I guess it's nice to see more examples of the agency opening up its examination of patents to well-known information. The days of limited searches (prior art patents and a few well-known articles) seems to be over.
The last time I remember the agency citing a film was the Board of Patent Appeals and Interferences' citation to a line from the Pirates the Carribean "the code is more what you call guidelines than actual rules" when discussing its authority to interpret the law in a very early proceeding in In re Bilski. As IP prawfs will note, Bilski later made its way all the way to the Supreme Court, which stayed well clear of the Pirates genre in its citation to authority.
Looking forward to a great month here at Prawfsblawg.
Tuesday, March 06, 2012
Pinterest, Jigidi, and factor four of the fair use defense
One of the best things about being a law professor is that your students leave your classroom and, if you’ve done your job right, see things in and about the world that they may not have before. Recently, two of my copyright students wrote to call my attention to two sites that raise the same interesting emergent online copyright issue.
Pinterest describes itself as an “online pinboard” that allows users to “organize and share things you love.” Pinterest users each have a space on the site (their “pinboard”) that allows them to re-post images they like from around the internet, and organize them into categories (e.g., food, pets, etc.). Jigidi enables users to post images in the form of online jigsaw puzzles that users can solve. (N.B. I solved one and found it fun as hell.) Of course, many other sites like Facebook enable possibly infringing reposting of images, but the difference with Pinterest/Jigidi, I think, is that they function exclusively to enable reposting of photos, so the infringement concern is central to their site’s main purpose.
Both sites are careful to admonish users to respect the copyrights of the photos they post. And even if users post infringing content, both sites might be able to avoid secondary liability by taking advantage of the DMCA’s sec 512 safe harbor provisions. Regardless, though, users who post copyright protected photos to either site without authorization would be liable for infringement, unless of course they could take advantage of copyright’s infamously slippery fair use defense.
There is already some writing around the blogosphere about possible fair use arguments with respect to these sites. In connection with Pinterest, at least, here is a very thoughtful and detailed post from a lawyer and Pinterest user named kirsten, who chose to take down her page on the site due to copyright concerns. Rather than recapitulating the entire fair use argument, I want to focus on how one particular element of the fair use defense—factor four—has played out in this dialogue.
This factor requires that courts considering fair use assess “the effect of the use upon the potential market for or value of the copyrighted work.” Thinking about Pinterest and Jigidi in light of factor four raises interesting issues not only about its application to those sites, but also about the meaning and function of that element of the fair use defense, in the digital world and beyond. I explore this issue below the fold.First, factor four disfavors uses that harm the “potential market for or value of the copyrighted work.” One suggestion about this factor in connection with Pinterest (that might also apply to Jigidi) is that because the photos appear as full-size reproductions (rather than, say, mere thumbnails), they’re market substitutes. The flaw in this argument is that not all substitutes are market substitutes. If a user pins a photo to her pinboard that doesn’t harm the market for the original unless somehow it leads to lost revenue for the owner. In other words, merely causing someone to experience the photo outside the owner’s sphere of control doesn’t per se harm the owner’s market for that photo.
A plausible answer to this point is that re-postings like Pinterest enable photos to be pirated, eviscerating sales of the original. True that this is a concern, but you gotta prove it. Mere conjecture about theoretical market harm doesn’t do the trick under factor four. The Second Circuit held as much in Texaco, when they emphasized that only harm to “traditional, reasonable, or likely to develop markets” counts. Conjecture doesn’t. This also answers a possible objection one might make in the Jigidi context. Perhaps, one might say, Jigidi users have undermined the jigsaw puzzle market for owners of the rights in some of the featured photos. This is possible, but depends on whether there actually is such a market (or whether one is reasonably likely to emerge). The sort of theoretical market that economists are so good at imagining doesn’t do the trick.
This limit exists for a good reason: If any conceivable or imaginable market harm caused factor four to weigh in favor of fair use, then users could never win on that factor. Owners can always make the point that a fair user could have just sought a license, and that their failure to pay that license is a lost royalty that establishes market harm. And while that claim is always theoretically true, it often isn’t practically plausible. If users had to negotiate a little royalty with each owner before posting their work on Pinterest or Jigidi, the transaction costs of the hassle would swamp the marginal benefit of re-posting the image at all. And while it would be great to have an efficient online licensing clearinghouse enabling users to clear and pay cheaply for rights whenever they re-posted an image (sort of like the App Store), we don’t have that yet.
A second issue with both Pinterest and Jigidi is that one might imagine that factor four helps, rather than hurts, the case for fair use because by re-posting images on either site, users have created publicity for an owner’s work and provided a marginal lift (rather than a hit) to the owner’s economic well-being. However plausible this claim, most courts have been skeptical of it. Their take has been that owners, not users, should have the final say in determining what the highest and best use of a work should be. Blogger kirsten makes a similar point in explaining her decision to take down her Pinterest page:
“what finally sealed the deal for me as I tried desperately to talk myself out of deleting my gorgeous inspiration boards, was when I thought of some of the photographers whose work I had pinned from other websites. Would they want me posting their images? My initial response is probably the same as most of yours: “why not? I’m giving them credit and it’s only creating more exposure for them and I LOVE when people pin my stuff!” But then I realized, I was unilaterally making the decision FOR that other photographer. And I thought back to the thread on Facebook where the photographers were complaining about clients posting photos without their consent and I realized this rationale is no different than what those clients argue: “why can’t I post them – it’s just more exposure for you.” Bottom line is that it is not my decision to make. Not legally and not ethically.”
I think kirsten made a thoughtful decision, and likely a rational one given the heavy liability associated with copyright infringement. (Even a single act can lead to penalties of up to $150k, regardless of the economic harm you cause the owner.) But two things about this rationale concern me.
First, the statute nowhere delegates exclusively to owners the decision to determine the highest and best use of a work. It merely says that if a use harms “the potential market for or value of the copyrighted work,” it is less likely to be fair. This is an objective test about the actual effect of a use on the value of a work. It should make no difference what the subjective opinion of the owner is. To hold otherwise, as so many courts have, is to confuse copyright (a suite of six and only six exclusive rights) with control. Owners may not like that copyright does not extend them complete control over their works, but as a matter of law, it plainly does not.
Second, if pinning on Pinterest or making puzzles on Jigidi is fair use, then it is something users are free, indeed entitled, to do. There is a very plausible argument that users enjoy such an entitlement in this case. And given that, it seems concerning that users of these sites would stop making uses to which they may be fully entitled due to the fear engendered by the threat of infringement. This isn’t to fault their decision—on the contrary, it’s likely a rational one. This is to fault copyright law for making it possible for owners to threaten innocuous uses like the ones on Pinterest and Jigidi with massive infringement judgments. This is a systematic problem rather than one local to the Pinterest/Jigidi issue, as Jim Gibson and many other writers have plausibly warned. Since owners will almost always have more resources than individual users, the threat of massive infringement liability affects the entire digital world, encroaching on space that Congress carved out in the interest of users to maintain a healthy public/private balance in our copyright law.
Monday, February 27, 2012
Copyright Arbitrage in Action
Meet Aereo, a new way to watch TV on the Internet. Aereo plans to capture over-the-air TV signals and stream them to customers in the New York area. Aereo's low, low $12-a-month prices are made possible by the fact that it doesn't pay licensing fees: Aereo insists that everything it's doing is legal under copyright law because Aereo gives each user her own individual TV tuner. That's right, Areeo is filling a Brooklyn office with thousands of TV antennas.
In any sane world, Aereo would not exist. There is no practical reason to use thousands of tiny antennas rather than a few good ones; reencoding the same signals again and again is pure waste. And sending these signals from Aereo's premises to customers' homes over the Internet is intensely silly, given that these customers already have the option of video service from their cable companies.
But our world is demonstrably insane; witness the Copyright Act. One-to-many retransmission are governed by the complex "retransmission consent" rules at the intersection of copyright and communications law. But one-to-one transmissions of the sort Aereo is making are arguably not "public performances" under the Second Circuit's 2008 Cartoon Network decision. More antennas, less risk. Aereo is engaged in copyright arbitrage: it's trying to stitch together a chain of explicitly legal acts until it reaches a result that would be infringing if done directly.
It's hardly alone. ivi tried (and failed) to pull an Aereo by calling itself a "cable system" under Section 111 of the Copyright Act. ReDigi is trying to cobble together Cartoon Network and a few other precedents to make something that looks like digital first sale. Zediva tried to run this one in reverse: it filled a data center with DVD players in an attempt to bootstrap first sale rights (in the DVDs) into streaming video-on-demand. I could go on.
None of these businesses ought to exist. In a world where copyright and communications law worked cleanly, copyright owners would be licensing their works over efficient transmission paths directly to users. These technical workarounds would be unnecessary. Of course, this point can be taken in one of two ways, depending on whether you think these entrepreneurs are a second-best response to a legal system that makes arbitrary distinctions or taking unfair advantage of a legal system that makes arbitrary distinctions. But either way, their proliferation is an indication of just how badly the wheels are coming off the bus of copyright law's conceptual framework.
Saturday, February 18, 2012
In early 2010, Google apologized for the way Google Buzz had revealed people's Gmail contacts to the world. Later that year, the company announced that its Street View cars had been recording the data being transmitted over WiFi networks they drove by. And just this week, the Wall Street Journal and privacy researcher Jonathan Mayer revealed that Google had been using cookies in a way that directly contradicted what it had been telling users to do if they didn't want cookies.
Once is an accident, and twice a coincidence, but three times is a sign of a company with a compliance problem. All three of these botches went down the same way. A Google programmer implemented a feature with obvious and serious privacy implications. The programmer's goal in each case was relatively innocuous. But in each case he or she designed the feature in a way that had the predictable effect of handing people's private information in a way that blatantly violated the company's purported privacy principles. Then--and this is the scary part--Google let the feature ship without noticing the privacy time bomb it contained.
Google was founded and is run as an engineering-driven company, which has given it amazing vitality and energy and the ability to produce world-changing products. But even as the company has become a dominant powerhouse on which hundreds of millions of people depend, it continues to insist that it can run itself as a freewheeling scrum because, er, um, Google is special, Google's values are better than the competition's, and Google employees are smarter than your average bear. All of these may be true, but adult companies have adult responsibilities, and one of them is to train and supervise their employees. Google is stuck in a perpetual adolescence, and it's getting old fast.
The only other firms I can think of with this kind of sustained inability to make their internal controls stick are on Wall Street. (See, e.g.) Google has already had to pay out a $500 million fine for running advertisements for illegal pharmaceutical imports. And the company is already operating under a stringent consent decree with the FTC from the Buzz debacle. If those weren't sufficient to convince Larry Page to put his house in order, it's hard to know what will be. Sooner or later, the company will unleash on the Internet a piece of software written by the programmer equivalent of a Jérôme Kerviel or a Kweku Adoboli and it won't be pretty, for the public or for Google.
Friday, February 17, 2012
More Unforced Errors in the Copyright Act
My belief that termination of transfers is the worst provision in the Copyright Act is apparently not widely shared. Here are some of the other sections that commenters nominated instead:
- Aaron Perzanowski suggested Section 119, a 9000-word monstrosity that creates a statutory license for satellite retransmissions. It's probably the single worst offender in the Act in terms of sheer verbiage. Along similar lines, Bruce Boyden suggested Section 114(d), which deals with webcasting, but weighs in at a mere 7000 words. Both licenses "work" in the sense that they're actually used, but other than that it's hard to have much positive to say about their labyrinthine complexity. Jeffery Harrison went with Section 110(5), which is supposed to let small businesses turn on the radio. Not only does this one pack a long section's ambiguity into a short section's text, it's also gotten the United States slapped down by the World Trade Organization for violating its copyright treaty obligations.
- Paul Gowder objected to statutory damages. I'm not so sure that these are really a disaster area. Congress wanted to bring the hammer down on copyright defendants even in the absence of proof of actual harm, and while it's possible to disagree with that policy judgment, there's also a strong argument that copyright infringement frequently by its nature will result in hard-to-measure damages. If I were going to pick on a copyright remedy, I'd pick attorneys fees--and there, the problem is not bad drafting by Congress but rather loose-cannon lower courts that award fees to prevailing plaintiffs at the drop of a hat.
- "Mike" complained about fair use because it was going away. Here, I simply disagree. Fair use has to be a case-by-case balancing act requiring discretion. Section 107 does, all in all, a pretty good job of giving courts the ability to shape a common law of fair use while also directing their attention to important considerations. And, as Patricia Aufderheide and Peter Jazsi have shown, fair use remains a vibrant and useful doctrine when wielded by defendants who understand how it works.
- C.E. Petit fingered the works-made-for-hire provision in Section 201(b), together with its supporting definitions. This one probably takes home the prize for most mayhem per word. It leaves what ought to be one of the clearest questions in copyright--initial ownership of a work--under a perpetual cloud. And by vesting ownership of some works in someone other than the author, in Petit's words, it "has the additional bonus of being inconsistent with the copyright scheme of every other nation in the Berne Convention."
Tuesday, February 14, 2012
The Worst Part of Copyright: Termination of Transfers
There were some great responses to my survey about the worst provision in the Copyright Act. Bruce Boyden nailed it when he guessed I was thinking about termination of transfers. This rule lets authors revoke any licensing contract between 35 and 40 years after they enter into it. (There was a similar but different system for renewals under the 1909 Act, which also survives in modified form in the 1976 Act, just to add to the confusion.)
This is an inalienability rule. But it's not an inalienability rule that rests on a deep and shared moral intuition, like the rule prohibiting people from selling their organs as meat for the super-rich. Termination of transfers rests instead on a view that authors are "congenitally irresponsible" to the point that they can't be trusted to make licensing decisions for themselves. They need to be given a second bite at the apple because they're not smart enough to negotiate fair deals the first time around. As for the theory that it's hard to value creative works up front, apparently percentage royalties and reversion clauses are too complex for authors to understand or insist on.
Trying to impose an inalienability rule on authors and publishers who don't want it at the time they strike their original licensing deals leads to no end of practical trouble. Making the rule stick means overriding any number of contracts, including contracts specifically drafted to get around it. Litigation over decades-old agreements, frequently with intervening modifications and regrants, is virtually guaranteed to be a morass--and so it has been, with well-publicized disputes like the fight over the termination rights in Action Comics #1 dragging on for years at ridiculous expense. The courts have been fighting against this system for much of the century, but all they've really accomplished is to increase its complexity. And Congress has done its part to make the statute incomprehensible: I dare you to read Section 203(b) and explain what it's supposed to mean.
But the demented logic of inalienability doesn't stop there: it continues beyond the grave. The termination rights of a deceased author vest in the widow or widower, then the children, and then the grandchildren, on a per stirpes basis. That's right: the Copyright Act displaces state probate law by creating future estates. And it does so in the form of byzantine set of fractional shares subject to an idiosyncratic voting rule requiring a majority of majorities to exercise the termination right. (Need I add that the drafters of the Uniform Probate Code concluded that a vast majority of Americans wouldn't want per stirpes distribution if they understood how it worked? No. That would be overkill.)
The underlying assumptions behind this postmortem provision are creepy, too. The romantic author, it would appear, is both the family breadwinner and a bad provider. His family, having sacrificed for decades to support his creative efforts, will receive their reward after his passing, when his genius is belatedly recognized. Copyright law has a theory of the family: it's nuclear and dominated by a single individual on whom the rest depend. The statutory text is gender-neutral, but its assumptions aren't.
As an incentive for authorship, this a terrible one. If authors make bad up-front deals because they're unmindful of future revenues, it follows that those same future revenues won't operate as an ex ante incentive for creativity. As a welfare system to support deserving authors in their old age, it's also terrible, since it bestows large windfalls on a very small number of them, at immense administrative cost. If this is a welfare system to support the families of authors, it's beyond terrible, since it bestows windfalls on a small number of people with the good fortune to be related to a commercially successful author, while doing nothing for the families of those who toiled their whole lives in some other, equally worthy calling.
There is, I recognize, essentially zero chance that this system will be modified for the better any time soon. But that doesn't mean we have to like it.
Tomorrow: comments on readers' choices of their own least-favorite copyright rules. There's still time to add your suggestion to the list!
Monday, February 13, 2012
What's the Worst Provision in the Copyright Act?
I spend a lot of time regarding the Copyright Act with a kind of horrified fascination. Although parts are elegantly drafted, most of it is, quite frankly, a mess. So here's a quick survey: what's your least favorite provision in U.S. copyright law? Ideally, it should be one or more of the following:
- Incomprehensibly drafted
- Unpredictably applied by the courts
- Economically inefficient
- Full of traps for the unwary
- Unfair to the well-intentioned
- Ineffective at its stated purpose
- Demeaning to personal autonomy
- Disruptive to other areas of law
- (Bonus) Racist, sexist, or homophobic
I'll report on the results of the survey tomorrow, along with my own candidate.
Wednesday, February 08, 2012
ReDigi and the Purpose of First Sale
For now, at least, ReDigi lives. Judge Sullivan denied the preliminary injunction, but according to the transcript, on irreparable harm grounds rather than a lack of likelihood of success on the merits. The case is set for rapid progress towards trial, quite possibly on stipulated facts.
I'd like to take up one of the central questions in the case: first sale. Whether you think ReDigi ought to win certainly turns on your view of what first sale is for. So too, may the legal merits. How you interpret statutory text like "owner" or "sell" may depend on on your theory of what kinds of transfers Congress meant to protect. And even if ReDigi's particular form of transfer falls outside of the text of first sale itself, the arguments for and against fair use can draw on first sale principles. Here, then, are some competing theories:
Conservation of copies: Copyright is fundamentally copy-right: the ability to prevent unauthorized copying. Practices that don't increase the total number of copies in existence don't fundamentally threaten the copyright owner's core interests. First sale blesses one of those practices: moving a copy for which the copyright owner has already been paid from one set of hands to another. On this theory, ReDigi is okay because it forces sellers to delete their copy of the music, thereby keeping the number of extant copies constant.
Freedom of alienation: First sale protects the rights of owners of personal property against copyright claims that might interfere with their right to use their property as they wish. This idea is sometimes described in terms of "servitudes on chattels" or "exhaustion" of the copyright owner's rights. We could also think of it as a negotiability regime promoting free transferability of personal property, given the information and transaction costs involved in allowing third-party copyright claims. On this theory, ReDigi is in trouble because it deals in information, rather than in tangible objects.
Copyright balancing: First sale is one of a cluster of doctrines that shape the level of control copyright owners have over the market (economic and cultural) for their works. If that balance changes over time, the doctrines should be recalibrated to restore it. Since the reproduction right has expanded to cover all sorts of computer-based uses such as loading a file into memory, the first sale defense should expand to maintain the same rough level of control. On this theory, ReDigi should win, because it would preserve roughly the same levels of freedom for users and control for owners as they had in an analog era.
Copyright balancing: Or wait ... if the goal is balancing, then perhaps ReDigi should lose. First sale used to be practically restricted by the facts that physical copies wear out and that exchanging physical objects takes time and money. ReDigi would blow those practical limits away, disrupting the first sale balance in the direction of too little control for copyright owners. In the face of rampant illegal file-sharing, why should a court, in effect, legalize the process by allowing ReDigi to serve as a super-low-friction intermediary?
What I love about this case is that it pushes and pulls our intuitions about copyright in so many different directions. It brings up fundamental questions not just about unsettled corners of doctrine, but also about what copyright is for. It offers grist for every mill, food for every kind of thought.
Friday, February 03, 2012
The Used CD Store Goes Online
On Monday, Judge Sullivan of the Southern District of New York will hear argument on a preliminary injunction motion in Capitol Records v. ReDigi, a copyright case that could be one of the sleeper hits of the season. ReDigi is engaged in the seemingly oxymoronic business of "pre-owned digital music" sales: it lets its customers sell their music files to each other. Capitol Records, unamused, thinks the whole thing is blatantly infringing and wants it shut down, NOW.
There are oodles of meaty copyright issues in the case -- including many that one would not think would still be unresolved at this late date. ReDigi is arguing that what it's doing is protected by first sale: just as with physical CDs, resale of legally purchased copies is legal. Capitol's counter is that no physical "copy" changes hands when a ReDigi user uploads a file and another user downloads it. This disagreement cuts to the heart of what first sale means and is for in this digital age. ReDigi is also making a quiver's worth of arguments about fair use (when users upload files that they then stream back to themselves), public performance (too painfuly technical to get into on a general-interest blog), and the responsibility of intermediaries for infringements initiated by users.
I'd like to dwell briefly on one particular argument that ReDigi is making: that what it is doing is fully protected under section 117 of the Copyright Act. That rarely-used section says it's not an infringement to make a copy of a "computer program" as "an essential step in the utilization of the computer program." In ReDigi's view, the "mp3" files that its users download from iTunes and then sell through ReDigi are "computer programs" that qualify for this defense. Capitol responds that in the ontology of the Copyright Act, MP3s are data ("sound recordings," to be precise), not programs.
I winced when I read these portions of the briefs.
In the first place, none of the files being transferred through ReDigi are MP3s. ReDigi only works with files downloaded from the iTunes Store, and the only format that iTunes sells in is AAC (Advanced Audio Coding), not MP3. It's a small detail, but the parties' agreement to a false "fact" virtually guarantees that their error will be enshrined in a judicial opinion, leading future lawyers and courts to think that any digital music file is an "MP3."
Worse still, the distinction that divides ReDigi and Capitol -- between programs and data -- is untenable. Even before there were actual computers, Alan Turing proved that there is no difference between program and data. In a brilliant 1936 paper, he showed that any computer program can be treated as the data input to another program. We could think of an MP3 as a bunch of "data" that is used as an input to a music player. Or we could think of the MP3 as a "program" that, when run correctly, produces sound as an output. Both views are correct -- which is to say, that to the extent that the Copyright Act distinguishes a "program" from any other information stored in a computer, it rests on a distinction that collapses if you push too hard on it. Whether ReDigi should be able to use this "essential step" defense, therefore, has to rest on a policy judgment that cannot be derived solely from the technical facts of what AAC files are and how they work. But again, since the parties agree that there is a technical distinction and that it matters, we can only hope that the court realizes they're both blowing smoke.
Saturday, December 24, 2011
From the Dumb Props Department Files...
So, I read that Louis Vuitton is suing Warner Brothers for the line "Careful, that is a Louis Vuitton" in the movie "The Hangover II." This got my hackles up - after all this IS a nominative use, unlike Bella's Twighlight Jacket, and it is a non-trademark use - a description of the bag that's presumably being damaged by hijinx and shenanigans (I haven't seen the movie yet, so I don't know).
Except, of course, that it wasn't a Louis Vuitton bag - it was a knockoff. And that can create problems. After all, the use is no longer nominative, and no longer a fair description. Now there is a chance of consumer confusion - people might think the knockoff is a Louis Vuitton and be fooled into thinking that the sub-par stitching (so clearly visible on the screen - yeah right) is Louis Vuitton's and of poor quality. Trademark people call this "post-sale confusion," like the kind that comes when you wear a $10 Rolexxx. You weren't fooled, but others might be fooled.
There's one problem with the argument - under the Lanham Act, Section 43(a), the unlawful behavior must use the mark in connection with goods and services. That is, a trademark use. Thus, we hold the seller of the Rolexxx liable, but not the wearer, because the wearer is not making a trademark use - they are not using it in connection with goods and services.
That, I suspect, won't stop Louis Vuitton (or sadly, the courts) here. I suspect that the finding will be that the movie is a "good or service" and that use of the name "Louis Vuitton" will be "in connection" with the movie, and confusing, and thus create liability. I can't imagine this is what the authors of the Lanham Act had in mind. Nevertheless, courts have accepted survey evidence that credits consumers who think that the movie must have gotten a sponsorship deal with Louis Vuitton, even if they did not. In other words, courts are willing to find a trademark use just because consumers think there was one, even if there wasn't.
So, this is another one of those "don't do it" cases. I'm all for pushing the envelope of non-trademark use by having studios refuse to pay just for the right to utter the name of a famous mark. But it is a bad idea indeed to then use a knockoff in the movie.
Tuesday, December 20, 2011
Patenting Medical Diagnostics...
The Supreme Court heard oral argument in Mayo v. Prometheus Labs. The case will hopefully provide some guidance on the patenting of medical diagnostics, but because the patent suffers from some real drawbacks, I'm not so sure. I'll explain why below. If you are interested in more detail, my 2008 article "Everything is Patentable" discusses the issues in depth.
The types of patents we are talking about are methods, not things. So, let's say I discover that pregnant women have measurable levels of the hCG hormone, where non-pregnant women do not. Having discovered this, I might try to claim the following:
A method for diagnosing pregnancy in a human female, comprising:
a) testing for the presence of hCG in blood; and
b) diagnosing pregnancyif such hCG is present.
This is not a patent on any particular test - it is a patent on every use of the test that measures for the hormone. Of course, one can measure for hCG without trying to diagnose pregnancy, and that would not be infringing. That said - and here's the problem for labs - if there is no other purpose for the test, or if the test is ordered for a particular purpose, then one may be liable for administering the test even if one is not doing the last step - the diagnosing.
Among others, there are three primary complaints about these types of claims.
First, some worry that such claims bar thought (the diagnosing). I'm not worried much about such worries. The claim is for more than thought - it is for the ordering of a particular test to diagnose a particular condition (and note that doctors are generally immune from infringement). Also, it should make little difference that the diagnosing step is in the mind - imagine a machine that reads the number and a light goes off (or a stick that shows a plus sign if you are pregnant). Whether you think that these types of methods should be patented or not, the reason to go one way or the other shouldn't depend on the happenstance of form.
Second, some worry that such claims are simply a patent on the prior art with thought added to the end. For example, if there were pre-existing hCG tests, then one should not be able to patent practicing the prior art with the added "correlative" step of diagnosing a pregnancy. I'm on the fence about this concern. On the one hand, if the solution is obvious, then we shouldn't allow patents. On the other hand, we have long given patents for new uses of old stuff. This includes new treatments using known medicine - Viagra, for example, was developed to treat blood pressure. We grant such patents because we want inventive activity to find these new uses, and it is not clear why new uses of old tests should be any different. Of course, people may develop better tests, or use existing tests for other purposes.
Third, some worry that this type of claim covers "laws of nature." This is where the action is. Courts have long said (mostly in repeated dicta rather than actual rulings on disputed patent claims) that laws of nature are not patentable. But what exactly is an unpatented law of nature, and what is a patentable application of a law of nature? Even if we were to accept that laws of nature are unpatentable, the natural law in the above example appears to be the production of hCG by pregnant women. So, if I tried to claim production of hCG by pregnant women, I could not patent that.
Viewed this way, of course laws of nature are not patentable - they aren't new, they aren't invented by the patentee, and they lack practical utility because they don't do anything - they just are. Furthermore, they aren't processes at all because they are not a series of steps that achieve some end. But when you use the law of nature to provide some new public benefit that is discovered by the patentee, that is an application of a law of nature, and that is patentable. My coauthors and I make a similar argument with respect to the application of abstract ideas in our Stanford Law Review article "Life After Bilski." Indeed, there are many, many creative diagnostic/measurement tests dating back to the early 1800's for measuring one thing by looking at something else that's "naturally" related. These are not all laws of nature - they are applications of newly discovered laws of nature to a useful end.
Despite the seemingly unassailable logic of the preceding argument, many people (shockingly!) disagree with me. Their argument is that allowing the application of the law of nature would preempt all uses of the law of nature itself, and that is a bad thing. I'm skeptical of this counter-argument for three reasons. One, everything boils down to something natural, and deciding when naturalness ends is too difficult an inquiry. Two, except in very rare cases, a diagnostic test does not bar the natural principle, it just rewards those who figure out why the principle is important. If we are worried about the inability to perform medical tests, then we should handle the problem with compulsory licenses rather than removing the incentive to invest in invention from the equation. Three, there is nothing naturally occuring about the test in the Prometheus case. The drug administered is human-made, and the metabolite measured in the claim does not exist in nature. Thus, testing for the metabolite is something that only happens if you change nature with something unnatural. But it would make little sense for that to be the dividing line on diagnostics - whatever concerns one has about them, they don't go away if just because they are measuring something that doesn't happen naturally.
Both those who agree with me and those who don't are hoping for some clarity from the Prometheus case. Sadly, I think that clarity is not going to come, just like it did not come in Bilski with software and business methods patents. I think clarity is elusive in these cases because clarity is impossible to achieve, as I argue in Everything is Patentable; defining the exception is just too difficult.
But, more than that, clarity won't come because of the peculiar facts of this case - in short, the patent claim is problematic:
(1) A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8x10^8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8x10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
Here are some of the problems:
- There is no diagnosing step. It's a minor point, but an important one. If there is no diagnosing step, then one can infringe the patent by merely performing the test - a test that I believe was already known. It may be a small point to add an element of actually adjusting the dosage, but doing so takes the claim out of the realm of exactly the prior art and into the realm of diagnosing. Bear in mind that Mayo was sued in part because it developed a new test for the metabolite.
- This is not really a diagnostic patent. It is not measuring something to determine some condition. Instead, it is a dosage adjustment patent. This, too, should be patentable on general principles, but it seems awfully obvious. If there's too little, then give more. If there's too much, then give less. Granted, the patent claims specific numbers, but finding the right range is something that would be obvious to try once you have a test in the first place. Anyone with a thyroid disease knows this - you start with the lowest dosage of synthroid and then go up until the TSH falls within a range. The patent here is claiming such a range, but finding the range seems obvious- when people get sicker or have side effects, you are outside the range and when people get better, you are inside the range. The real invention is discovering how to measure the metabolite of the drug, but the test for finding the metabolite isn't a subject of this patent.
These two problems mean that the patent should be rejected outright, and that the patent isn't really even claiming a natural principle. Instead, it is claiming the use of a pre-existing test and some obvious thought about one might do about the test (but holding people liable even if they don't do it). Thus, there are many reasons to reject this patent without speaking to the core question - what to do about patenting medical diagnostics. We'll see how the Court handles it, but my worry is (as it was in Bilski) that a problematic claim will cloud the key issue. A better test would have been a really great, inventive diagnostic test that relies on a natural principle. The Court had such a case in the past (the Lab Corp. case), but procedural failures by the defendant precluded real consideration of the issue.
Monday, December 19, 2011
Breaking the Net
Mark Lemley, David Post, and Dave Levine have an excellent article in the Stanford Law Review Online, Don't Break the Internet. It explains why proposed legislation, such as SOPA and PROTECT IP, is so badly-designed and pernicious. It's not quite clear what is happening with SOPA, but it appears to be scheduled for mark-up this week. SOPA has, ironically, generated some highly thoughtful writing and commentary - I recently read pieces by Marvin Ammori, Zach Carter, Rebecca MacKinnon / Ivan Sigal, and Rob Fischer.
There are two additional, disturbing developments. First, the public choice problems that Jessica Litman identifies with copyright legislation more generally are manifestly evident in SOPA: Rep. Lamar Smith, the SOPA sponsor, gets more campaign donations from the TV / movie / music industries than any other source. He's not the only one. These bills are rent-seeking by politically powerful industries; those campaign donations are hardly altruistic. The 99% - the people who use the Internet - don't get a seat at the bargaining table when these bills are drafted, negotiated, and pushed forward.
Second, representatives such as Mel Watt and Maxine Waters have not only admitted to ignorance about how the Internet works, but have been proud of that fact. They've been dismissive of technical experts such as Vint Cerf - he's only the father of TCP/IP - and folks such as Steve King of Iowa can't even be bothered to pay attention to debate over the bill. I don't mind that our Congresspeople are not knowledgeable about every subject they must consider - there are simply too many - but I am both concerned and offended that legislators like Watt and Waters are proud of being fools. This is what breeds inattention to serious cybersecurity problems while lawmakers freak out over terrorists on Twitter. (If I could have one wish for Christmas, it would be that every terrorist would use Twitter. The number of Navy SEALs following them would be... sizeable.) It is worrisome when our lawmakers not only don't know how their proposals will affect the most important communications platform in human history, but overtly don't care. Ignorance is not bliss, it is embarrassment.
Cross-posted at Info/Law.
Posted by Derek Bambauer on December 19, 2011 at 01:49 PM in Blogging, Constitutional thoughts, Corporate, Current Affairs, Film, First Amendment, Information and Technology, Intellectual Property, Law and Politics, Music, Property, Television, Web/Tech | Permalink | Comments (1) | TrackBack
Wednesday, December 14, 2011
Six Things Wrong with SOPA
America is moving to censor the Internet. The PROTECT IP and Stop Online Piracy Acts have received considerable attention in the legal and tech world; SOPA's markup in the House occurs tomorrow. I'm not opposed to blacklisting Internet sites on principle; however, I think that thoughtful procedural protections are vital to doing so in a legitimate way. Let me offer six things that are wrong with SOPA and PROTECT IP: they harm cybersecurity, are wildly overbroad and vague, enable unconstitutional prior restraint, undercut American credibility on Internet freedom, damage a well-working system for online infringement, and lack any empirical justification whatsoever. And, let me address briefly Floyd Abrams's letter in support of PROTECT IP, as it is frequently adverted to by supporters of the legislation. (The one-word summary: "sellout." The longer summary: The PROTECT IP letter will be to Abrams' career what the Transformersmovie was to that of Orson Welles.)
- Cybersecurity - the bills make cybersecurity worse. The most significant risk is that they impede - in fact, they'd prevent - the deployment of DNSSEC, which is vitally important to reducing phishing, man-in-the-middle attacks, and similar threats. Technical experts are unanimous on this - see, for example, Sandia National Laboratories, or Steve Crocker / Paul Vixie / Dan Kaminsky et al. Idiots, like the MPAA's Michael O'Leary, disagree, and simply assert that "the codes change." (This is what I call "magic elf" thinking: we can just get magic elves to change the Internet to solve all of our problems. Congress does this, too, as when it includes imaginary age-verifying technologies in Internet legislation.) Both bills would mandate that ISPs redirect users away from targeted sites, to government warning notices such as those employed in domain name seizure cases. But, this is exactly what DNSSEC seeks to prevent - it ensures that the only content returned in response to a request for a Web site is that authorized by the site's owner. There are similar problems with IP-based redirection, as Pakistan's inadvertent hijacking of YouTube demonstrated. It is ironic that at a time when the Obama administration has designated cybersecurity as a major priority, Congress is prepared to adopt legislation that makes the Net markedly less secure.
- Wildly overbroad and vague- the legislation (particularly SOPA) is a blunderbuss, not a scalpel. Sites eligible for censoring include those:
- primarily designed or operated for copyright infringement, trademark infringement, or DMCA § 1201 infringement
- with a limited purpose or use other than such infringement
- that facilitate or enable such infringement
- that promote their use to engage in infringement
- that take deliberate actions to avoid confirming high probability of such use
If Flickr, Dropbox, and YouTube were located overseas, they would plainly qualify. Targeting sites that "facilitate or enable" infringement is particularly worrisome - this charge can be brought against a huge range of sites, such as proxy services or anonymizers. User-generated content sites are clearly dead. And the vagueness inherent in these terms means two things: a wave of litigation as courts try to sort out what the terminology means, and a chilling of innovation by tech startups.
- Unconstitutional prior restraint - the legislation engages in unconstitutional prior restraint. On filing an action, the Attorney General can obtain an injunction that mandates blocking of a site, or the cutoff of advertising and financial services to it - before the site's owner has had a chance to answer, or even appear. This is exactly backwards: the Constitution teaches that the government cannot censor speech until it has made the necessary showing, in an adversarial proceeding - typically under strict scrutiny. Even under the more relaxed, intermediate scrutiny that characterizes review of IP law, censorship based solely on the government's say-so is forbidden. The prior restraint problem is worsened as the bills target the entire site via its domain name, rather than focusing on individualized infringing content, as the DMCA does. Finally, SOPA's mandatory notice-and-takedown procedure is entirely one-sided: it requires intermediaries to cease doing business with alleged infringers, but does not create any counter-notification akin to Section 512(g) of the DMCA. The bills tilt the table towards censorship. They're unconstitutional, although it may well take long and expensive litigation to demonstrate that.
- Undercuts America's moral legitimacy - there is an irreconciliable tension between these bills and the position of the Obama administration - especially Secretary of State Hillary Clinton - on Internet freedom. States such as Iran also mandate blocking of unlawful content; that's why Iran blocked our "virtual embassy" there. America surrenders the rhetorical and moral advantage when it, too, censors on-line content with minimal process. SOPA goes one step farther: it permits injunctions against technologies that circumvent blocking - such as those funded by the State Department. This is fine with SOPA adherents; the MPAA's Chris Dodd is a fan of Chinese-style censorship. But it ought to worry the rest of us, who have a stake in uncensored Internet communication.
- Undercuts DMCA - the notice-and-takedown provisions of the DMCA are reasonably well-working. They're predictable, they scale for both discovering infringing content and removing it, and they enable innovation, such as both YouTube itself and YouTube's system of monetizing potentially infringing content. The bills shift the burden of enforcement from IP owners - which is where it has traditionally rested, and where it belongs - onto intermediaries. SOPA in particular increases the burden, since sites must respond within 5 days of a notification of claimed infringement, with no exception for holidays or weekends. The content industries do not like the DMCA. That is no evidence at all that it is not functioning well.
- No empirical evidence - put simply, there is no empirical data suggesting these bills are necessary. The content industries routinely throw around made-up numbers, but they have been frequently debunked. How important are losses from foreign sites that are beyond the reach of standard infringement litigation, versus losses from domestic P2P networks, physical infringement, and the like? Data from places like Switzerland suggests that losses are, at best, minimal. If Hollywood wants America to censor the Internet, it needs to make a convincing case based on actual data, and not moronic analogies to stealing things off trucks. The bills, at their core, are rent-seeking: they would rewrite the law and alter fundamentally Internet free expression to benefit relatively small yet politically powerful industries. (It's no shock two key Congressional aides who worked on the legislation have taken jobs in Hollywood - they're just following Mitch Glazier, Dan Glickman, and Chris Dodd through the revolving door.) The bills are likely to impede innovation by the far larger information technology industry, and indeed to drive some economic activity in IT offshore.
The bills are bad policy and bad law. And yet I expect one of them to pass and be signed into law. Lastly, the Abrams letter: Noted First Amendment attorney Floyd Abrams wrote a letter in favor of PROTECT IP. Abrams's letter is long, but surprisingly thin on substantive legal analysis of PROTECT IP's provisions. It looks like advocacy, but in reality, it is Abrams selling his (fading) reputation as a First Amendment defender to Hollywood. The letter rehearses standard copyright and First Amendment doctrine, and then tries to portray PROTECT IP as a bill firmly in line with First Amendment jurisprudence. It isn't, as Marvin Ammori and Larry Tribe note, and Abrams embarrasses himself by pretending otherwise. Having the government target Internet sites for pre-emptive censorship, and permitting them to do so before a hearing on the merits, is extraordinary. It is error-prone - look at Dajaz1 and mooo.com. And it runs afoul of not only traditional First Amendment doctrine, but in particular the current Court's heightened protection of speech in a wave of cases last term. Injunctions affecting speech are different in character than injunctions affecting other things, such as conduct, and even the cases that Abrams cites (such as Universal City Studios v. Corley) acknowledge this. According to Abrams, the constitutionality of PROTECT IP is an easy call. That's only true if you're Hollywood's sockpuppet. Thoughtful analysis is far harder.
Cross-posted at Info/Law.
Posted by Derek Bambauer on December 14, 2011 at 09:07 PM in Constitutional thoughts, Culture, Current Affairs, Film, First Amendment, Information and Technology, Intellectual Property, Law and Politics, Music, Property, Web/Tech | Permalink | Comments (1) | TrackBack
On the Move
Jane Yakowitz and I have accepted offers from the University of Arizona James E. Rogers College of Law. We're excited to join such a talented group! But, we'll miss our Brooklyn friends. Come visit us in Tucson!
Posted by Derek Bambauer on December 14, 2011 at 05:39 PM in Current Affairs, Getting a Job on the Law Teaching Market, Housekeeping, Information and Technology, Intellectual Property, Life of Law Schools, Teaching Law, Travel | Permalink | Comments (2) | TrackBack
Saturday, December 10, 2011
Copyright and Your Face
The Federal Trade Commission recently held a workshop on facial recognition technology, such as Facebook's much-hated system, and its privacy implications. The FTC has promised to come down hard on companies who abuse these capabilities, but privacy advocates are seeking even stronger protections. One proposal raised was to provide people with copyright in their faceprints or facial features. This idea has two demerits: it is unconstitutional, and it is insane. Otherwise, it seems fine.
Let's start with the idea's constitutional flaws. There are relatively few constitutional limits on Congressional power to regulate copyright: you cannot, for example, have perpetual copyright. And yet, this proposal runs afoul of two of them. First, imagine that I take a photo of you, and upload it to Facebook. Congress is free to establish a copyright system that protects that photo, with one key limitation: I am the only person who can obtain copyright initially. That's because the IP Clause of the Constitution says that Congress may "secur[e] for limited Times to Authors... the exclusive Right to their respective Writings." I'm the author: I took the photograph (copyright nerds would say that I "fixed" it in my camera's memory). The drafters of the Constitution had good reason to limit grants of copyright to authors: England spent almost 150 years operating under a copyright-like monopoly system that awarded entitlements to a distributor, the Stationer's Company. The British crown had an excellent reason for giving the Company a monopoly - the Stationer's Company implemented censorship. Having a single distributor with exclusive rights gives a government but one choke point to control. This is all to say that Congress can only give copyright to the author of a work, and the author is the person who creates / fixes it (here, the photographer). It's unconstitutional to award it to anyone else.
Second, Congress cannot permit facts to be copyrighted. That's partly for policy reasons - we don't want one person locking up facts for life plus seventy years (the duration of copyright) - and partly for definitional ones. Copyright applies only to works of creative expression, and facts don't qualify. They aren't created - they're already extant. Your face is a fact: it's naturally occurring, and you haven't created it. (A fun question, though, is whether a good plastic surgeon might be able to copyright the appearance of your surgically altered nose. Scholars disagree on this one.) So, attempting to work around the author problem by giving you copyright protection over the configuration of your face is also out. So, the proposal is unconstitutional.
It's also stupid: fixing privacy with copyright is like fixing alcoholism with heroin. Copyright infringement is ubiquitous in a world of digital networked computers. Similarly, if we get copyright in our facial features, every bystander who inadvertently snaps our picture with her iPhone becomes an infringer - subject to statutory damages of between $750 and $30,000. Even if few people sue, those who do have a powerful weapon on their side. Courts would inevitably try to mitigate the harsh effects of this regime, probably by finding most such incidents to be fair use. But that imposes high administrative costs, and fair use is an equitable doctrine - it invites courts to inject their normative views into the analysis. It also creates extraordinarily high administrative costs. It's already expensive for filmmakers, for example, to clear all trademarked and copyrighted items from the zones they film (which is why they have errors and omissions insurance). Now, multiply that permissions problem by every single person captured in a film or photograph. It becomes costly even to do the right thing - and leads to strategic behavior by people who see a potential defendant with deep pockets.
Finally, we already have an IP doctrine that covers this area: the right of publicity (which is based in state tort law). The right of publicity at least has some built-in doctrinal elements that deal with the problems outlined above, such as exceptions when one's likeness is used in a newsworthy fashion. It's not as absolute as copyright, and it lacks the hammer of statutory damages, which is probably why advocates aren't turning to it. But those are features, not bugs.
Privacy problems on social networks are real. But we need to address them with thoughtful, tailored solutions, not by slapping copyright on the problem and calling it done.
Cross-posted at Info/Law.
Posted by Derek Bambauer on December 10, 2011 at 06:03 PM in Constitutional thoughts, Corporate, Culture, Current Affairs, Film, First Amendment, Information and Technology, Intellectual Property, Property, Torts | Permalink | Comments (4) | TrackBack
Tuesday, December 06, 2011
Cry Baby Cry
The project to crowdsource a Tighter White Album (hereinafter TWA) is done, and we’ve come up with a list of 15 songs that might have made a better end product than the original. Today I want to discuss whether I've done something wrong, legally or morally.
I am no expert on European law, or its protection of the moral rights of the author, but I was reminded by Howard Knopf that my hypothetical exercise could generate litigation, as the author has rights against the distortion or mutilation of the work, separate from copyright protection. The current copyright act in the UK bars derogatory "treatments" of the work. A treatment can include "deletion from" the original, and the TWA is just that -- 15 songs were trimmed from the trimmed White Album, ostensibly to make something "better than" the original. To the extent the remaining Beatles and their heirs can agree on anything, it might be the sanctity of the existing discography in its extant form, at least as it encapsulates the end product stemming from the individual proclivities of the Beatles at the time. But see Free as a Bird. Fans and critics reacted strongly to Danger Mouse's recent splice of Jay-Z's Black Album and the Beatles' White Album, with one critic describing it as "an insult to the legacy of the Beatles (though ironically, probably intended as a tribute)". Could the TWA implicate the moral rights of the Beatles?
On one level, I and my (perhaps unwitting) co-conspirators are doing nothing more than music fans have done for generations: debating which songs of an artist's body of work merit approval and which merit approbrium. Coffee houses and bars are often filled with these discussions. Rolling Stones has made a cottage industry of ranking and reranking the top songs and albums of the recent past and in recent memory. This project is no different.
On the other hand, I am suggesting, by having the audacity to conduct this survey and publish the results, that the lads from Liverpool did it wrong, were too indulgent, etc., in releasing the White Album in its official form. That's different from saying "Revolution #9" is "not as good" as "Back in the U.S.S.R." (or vice versa). But to my eyes, it falls short of distortion.
Moral rights in sound recordings and musical compositions are not explicitly protected under the Copyright Act. In one case predating the effective date of the current Act, the Monty Python troupe was granted an injunction against the broadcast of its skits in heavily edited form on U.S. television, but that case was grounded more in contract law (ABC having exceded the scope of its license) and a right not to have the hack job attributed to the Pythons under the Lanham Act.* The TWA doesn't edit individual songs, and whilte the Monty Python case protected 30 minute Python episodes as a cohesive whole, it is difficult to argue that the copyright owners of the White Album are necessarily committed to the same cohesive view of the White Album, to the extent they sell individual songs online. One can buy individual Beatles songs, even from the White Album. Once you can buy individual tracks, can there really be moral rights implications in posting my preferred version of the album in a format that allows you to go and buy it?
On to the standard rights protected under U.S. copyright law. Yesterday, I talked about the possibility that the list itself might be a compilation, with protectable creativity in the selection. Might the TWA also be an unauthorized derivative work, exposing me to copyright liability? A derivative work is one "based on" a preexisting work, in which the original is "recast, transformed or adapted." That's similar to the language used to describe a treatment under UK law. Owners of sound recordings often release new versions, with songs added, outtakes included, and bonus art, ostensibly to sell copies to consumers who already purchased them. I certainly didn't ask the Beatles (or more precisely, the copyright owner of the White Album) for permission to propose a shortened album, but what I have done looks like an abridgement of the sort that might fall into traditional notions of fair use.
Once upon a time, I might have made a mixtape and distributed it to my dearest friends (although when I was young, the 45 minute tape was optimal, so I might have been forced to cut another song or two). Committing my findings to vinyl, compact disc, or mp3, using the original recordings, technically violate 17 USC 106(1)'s prohibition on unauthorized reproduction. If I give an unauthorized copy to someone else, I violate the exclusive right to distribute under section 106(3). Unlike the public performance and display rights, there is no express carve out for "private" copying and/or distribution, although it was historically hard to detect. The mixtape in its analog form seems like the type of private use that should be permitted under any reasonable interpretation of fair use, if not insulated by statute.
If I send my digital mixtape to all of my Facebook friends, that seems a bridge too far. However, Megan Carpenter has suggested that by failing to make room for the mix tape in the digital environment, copyright law "breeds contempt." 11 Nev. L.J. 44, 79-80 (2010). Jessica Litman, Joseph Liu, Glynn Lunney and Rebecca Tushnet, among others, have argued that space for personal consumption is as important in the digital realm as it was in the good old days when everything was analog.
If I instead use social networking tools like Spotify Social** to share my playlist, I probably don't infringe the 106(4, 6) public performance right. Because I use authorized channels, any streaming you do to preview my playlist is likely authorized. And if I post the playlist on iTunes, you can go and buy it as constituted. That seems somewhat closer to an unauthorized copy, but it's not actually unauthorized. The Beatles sell individual singles through iTunes, so it seems problematic to conclude that consumers are not authorized to buy only those songs they prefer.
So all in all, given that I'm not running a CD burner in my office, I think I'm in the clear. What do you think?
*A recent Supreme Court decision puts in doubt the Lanham Act portion of the Monty Python holding.
**The Spotify Social example is complicated by the fact that the Beatles aren't included, although I have found reasonable covers of all the songs included on the TWA. The copyright act explicitly provides for a compulsory license to make cover tunes, so long as the cover doesn't deviate too drastically from the original. 17 USC § 115(a). If the license was paid, and the copyright owner notified, those songs are authorized. My repackaging of them in a virtual mixtape, however, is not. 17 U.S.C. § 114(b).
Monday, December 05, 2011
While My (Favorite Beatles Song) Gently Weeps
The voting is done and the world has (or 264 entities voting in unique user sessions have) selected the songs for "The Tighter" White Album (hereinafter TWA). The survey invited voters to make pairwise comparisons between two Beatles songs, under the premise that one could be kept, and one would be cut.
There are several copyright-related implications of my experiment, and I wanted to unpack a few of them. Today, my thoughts on the potential authorship and ownership of the list itself. Tomorrow, a few thoughts on moral rights, whether I’ve done something wrong, and whether what I've done is actionable. [Edited to add hyperlink to Part II]
But first, the results -- An album's worth of music (two sides no longer than 24:25 each, the length of Side Four of the original), ranked from strongest to weakest:
While My Guitar Gently Weeps
Back in the USSR
Happiness is a Warm Gun
I'm So Tired
Mother Nature's Son
Cry Baby Cry
How did the voters do? Very well, by my estimation. I was pleasantly surprised by the balance. McCartney and Lennon each sang (which by this point in their career was a strong signal of primary authorship) 12 of the 30 tracks, and each had 7 selections on the TWA. (John also wrote "Good Night," which was sung by Ringo and overproduced at Paul's behest, so I think it can be safely cabined.) Only one of George Harrison's four compositions, "While My Guitar Gently Weeps," made the cut, but was the strongest finalist. Ringo's "Don't Pass Me By," no critical darling, did poorly in the final assessment.*
It's possible, although highly unlikely in this instance, that the list of songs is copyrightable expression. As a matter of black letter law, one who compiles other copyrighted works may secure copyright protection in the
collection and assembiling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.
Protection only extends to the material contributed by the author. The Second Circuit has found copyrightable expression in the exercise of judgment as expressed in a prediction about the price of used cars over the next six months, even where the prediction was striving to map as close as possible to the actual value of cars in those markets. Other Second Circuit cases recognize copyright protection in the selection of terms of venery -- labels for groups of animals (e.g., a pride of lions) and in the selection of nine pitching statistics from among scores of potential stats. In each of these cases, there was some judgment exercised about what to include or what not to include.
In this case, I proposed the question, put together the survey, monitored the queue, and recruited respondents through various channels. The voting, however, was actually done by multiple individuals selecting between pairs of songs. It's difficult to paint that as a "work of authorship" in any traditional sense of the phrase. I set up the experiment and then cut it loose. I could have made my own list (and have, but I won't bore you with that), and that list would have been my own work of authorship. This seems like something different, because I'm not making any independent judgment (other than the decision to limit the length of the TWA to twice the length of the longest side of the White Album).
Let's assume for a moment that there is protectable expression, even though I crowdsourced the selection process. Could it be that all 246 voters are joint authors with me in this work? It seems unlikely. The black letter test asks (1) whether we all intended our independent, copyrightable contributions to merge into an inseparable whole, and (2) whether we intended everyone to be a co-author. It's hard to call an individual vote between two songs a separately copyrightable contribution, even with the prompt: "The Beatles' White Album might have been stronger with fewer songs. Which song would you keep?" By atomizing the decision, I might be insulated from claims that individual voters are co-authors of the final list, although I suggested that there was something cooperative about this event in my description of the vote:
We’re crowdsourcing a “Tighter White Album.” Some say the White Album would have been better if it was shorter, which requires cutting some songs. Together, we can work it out. For each pair, vote for the song you would keep. Vote early and often, and share this with your friends. The voting will go through the end of November.
Still, to the extent they took seriously my admonitions, the readers were endeavoring to decide which of the two songs presented belonged on the TWA, whatever the factors that played into the decision. Might that choice also be protected in individual opinions sorted in a certain fashion? This really only matters if I make money from the proposed TWA. I would then need to make an accounting to my joint authors. And even if the vote itself was copyrightable expression, the voter likely granted me an implied license to include it in my final tally.
Should I have copyright protection in this list? Copyright protection is arguably granted to give authors (term of art) the incentive to create expressive works. I didn't need copyright protection as an incentive: I ran the survey so that I could talk about the results (and to satify my own curiosity). And my purposes are served if others take the results and run with them (although I would prefer to be attributed). Maybe no one else needs copyright protection, either, as lists ranking Beatles songs abound on the internet. Rolling Stone magazine has built a cottage industry on ranking and reranking the popular music output of the last 60 years, but uses its archives of rankings as an incentive to pay for a subscription. If the rankings didn't sell, magazines would likely do something else.
As an alternative, Rolling Stone might also arguably benefit from common law protection against the misappropriation of hot news, granted by the Supreme Court in INS v. AP, which would provide narrow injunctive relief to allow it to sell its news before others can copy without permission. The magazine might have trouble with recent precedent from the 2d Circuit which held that making the news does not qualify for hot news protection, although reporting the news might. So if I reproduce Rolling Stone's list (breaking news: Rolling Stone prefers Sonic Youth to Brittany Spears), that might fall outside of hot news misappropriation, although perhaps not outside of copyright protection itself.
*Two personal reflections: (1) I am astounded that Honey Pie didn't make the cut. Perhaps voters confused it with Wild Honey Pie, which probably deserved its lowest ranking. (2) I sing Good Night to my five-year old each night as a lullaby, and my world would be different without it. That is the inherent danger in a project like mine, and those who criticize the very idea that the White Album would have been the better had it been shorter can marshall my own anecdotal evidence in support of their skepticism.
Friday, December 02, 2011
When Easy Cases Make Bad Law
I'm glad to be back, and thanks to Prawfs for having me. I hope to blog on a few different issues, and use my visit to rejuvinate my permablogging at Madisonian. I want to start by picking up a topic nicely covered by my Madisonian co-blogger, Greg Lastowka -- the recent case involving Bella's jacket from the movie Twilight. Perhaps you've heard of it -- the movie, I mean, not the case.
There is a maxim that "Hard Cases Make Bad Law." Today I want to talk about a lesser used maxim - when easy cases make bad law. But first, a bit about the case after the jump.
I've never seen the movie, but apparently the Bella Swan character wears this jacket. A jacket so popular that...it was discontinued before the movie ever came out. Not surprisingly, the jacket became wildly popular. Indeed, Bella wears the jacket in key promo photos, in this country and others. As Greg notes, the image is everywhere.
And so the manufacturer, BB Dakota, brought the jacket back. But here's the kicker. They renamed it the "Twilight" jacket. And, they put a hang-tag on it that used the very same promo photo described above. Here is one on sale at eBay. To be fair, BB Dakota did not just use the picture - it added information - here is an image of the hangtag, which BB Dakota sent widely with instructions to use the image in advertising, which retailers did.
See how the words "BB Dakota as seen in Twilight" were added the image? This is where things get interesting. BB Dakota argued that the purpose of the hangtag was "nominative." That is, it used the image to call Twilight by name, much in the same way I might say, "Did you see Twilight?" The idea is that it can't be trademark infringement if you are just calling a product by its name.
This is also where things get seriously confused. As Greg makes clear (and others of my IP colleagues have noted offline), nominative use doctrine - though well meaning - is a real mess. The district court here goes down the rabbit hole and does little to clarify things.
Thus, I want to make clear that I agree with my colleagues that the state of the law is a mess, and this opinion is not so great. Greg does a great job of analyzing the problems. Instead, I want to take a step back. Specifically, this was a ridiculously easy case. Greg notes: "What distresses me is not so much the ruling, but how much the opinion exemplifies the general trend in trademark doctrine of ignoring the interests of consumers in favor of the proprietary claims of powerful franchises."
I would go a step further and say that despite the troubling general trend this is not a case BB Dakota was ever going to win, any time, in front of any judge. This was not a case to make policy, and at no time, whether before or after I entered academia, would I have ever counseled a client to pursue this strategy.
Don't get me wrong - there has to be a way for BB Dakota to communicate that this was the jacket worn. The added language for example. A poster next to the display with a screen cap from the actual movie. Something, anything, other than renaming the jacket the "Twilight" jacket and putting a promotional poster image on a hangtag.
Note that I say this is an easy case holistically, without reference to specific doctrine (which I will do in a bit). Instead, I say it as a rule of thumb - when you name your product after a well known movie that it appears in, and put the movie poster on a hangtag, you lose. In the same way that you lose if you try to argue that peer to peer music sharing is fair use. You just can't win, and you never could.
Now, to the part where some of my colleagues might disagree with me. BB Dakota should have lost in this case, as a matter of doctrine and as a matter of policy.
Start with copyright. Yes, the image is everywhere, thanks to fan sites. That's a fair use and I would say should be protected. Greg takes issue with the court giving dispositive weight to the fact that the whole image was copied. I agree that this has the potential to create bad precedent, but it's not the first time a court spent little time on a weak fair use argument. Greg worries that cases like this make fair use unpredictable, but (if I haven't said it already) this one was a predictable loss.
Let's look at the fair use factors:
1. Nature of the use: non-transformative, slavish copying, and commercial.
2. Nature of the copyrighted work: creative photography that is much more than point and shoot, though admittedly it does have the product at issue in it
3. Amount copied: all of it
4. Effect on the market: It might look like there isn't any, but consider that the plaintiff Summit might have wanted to license the image for use on sanctioned products (vampire teeth or what have you). If everyone could use this image on products (and this isn't trademark, so we aren't limited to non-confusing uses), then the value of that opportunity is reduced.
And the policy: The image was used on the product, in ads, in marketing, etc. There are few (and I can't think of any) cases where this kind of use is considered fair. It is just not the type of activity that fair use is intended to protect. I can see an argument for a screen capture, or some other image, but the promotional poster? No way.
On to trademark. The first mistake - and I think the one that proves the maxim that easy cases make bad law - was for the court to entertain the nominative use defense at all. This was not a nominative use. A nominative use might have been just the red inset "BB Dakota as seen in 'Twilight'" That's information. That's the name of the movie.
Instead of nominative use, this was a trademark use. They called it "The Twilight Jacket." They used the promotional poster as a hangtag not only in advertising but on every jacket sold. That's not naming Twilight, that's branding the jacket. When viewed this way, you get right to the likelihood of confusion factors. And under those factors there is certainly confusion - it's the promotional poster! You don't get much closer to appearing to be sponsored by the makers of Twilight than that. My "actual confusion" survey of one (my wife, who has seen the movie) pretty clearly thought that the moviemakers had sponsored or otherwise were associated with the jacket makers. I won't go through the confusion factors here, but I believe they clearly favor a finding of likely confusion as to source, sponsorship, or association.
The irony here is that the nominative use defense is suppose to help the defense, but the law in the Ninth Circuit is such a disaster that when you assert it wrongly (as BB Dakota did here) you are almost sure to lose. But sometimes that's the right outcome. In an effort to give BB Dakota the benefit of the doubt, it considered this ill-applied defense to make this easy case more difficult than it had to be, making the law worse.
And a point about policy. While I agree with Greg about the trend in general, the traditional consumer confusion policies might apply here. I suspect that a) the costume crew used multiple jackets, b) that the jacket survived apparent harms it might not have because those harms were actually special effects, and c) there were repairs made to the jackets over time in shooting. In other words, clothes in movies are indestructible. (Jack Bauer in 24, anyone?). Perhaps someone buying the "Twilight" jacket might have expected that indestructibility. Or more simply, what if manufacturing efficiencies meant that the coloring was off a bit - the Twilight folks, if sponsoring, might want some quality control over that. Or what if the price is higher at retail and secondary markets than it might have been for a jacket that did not have the imprimatur of sponsorship? In all of those cases, consumers suffer, and that is the policy of trademark law.
And that's why I see this as an easy case - and why the court should have treated it as such with a straightforward slapdown rather than a convoluted application of inapt rules.
Sunday, November 27, 2011
Threading the Needle
Imagine that Ron Wyden fails: either PROTECT IP or SoPA / E-PARASITE passes and is signed into law by President Obama. Advocacy groups such as the EFF would launch an immediate constitutional challenge to the bill’s censorship mandates. I believe the outcome of such litigation is far less certain than either side believes. American censorship legislation would keep lots of lawyers employed (always a good thing in a down economy), and might generate some useful First Amendment jurisprudence. Let me sketch three areas of uncertainty that the courts would have to resolve, and that improve the odds that such a bill would survive.
First, how high is the constitutional barrier to the legislation? Both bills look like systems of prior restraint, which loads the government with a “heavy presumption” against their constitutionality . The Supreme Court’s jurisprudence in the two most relevant prior cases, Reno v. ACLU and Ashcroft v. ACLU, applied strict scrutiny: laws must serve a compelling government interest, and be narrowly tailored to that interest. This looks bad for the state, but wait: we’re dealing with laws regulating intellectual property, and such laws draw intermediate scrutiny at most. This is what I call the IP loophole in the First Amendment. Copyright law, for example, enjoys more lenient treatment under free speech examination because the law has built-in safeguards such as fair use, the idea-expression dichotomy, and the (ever-lengthening) limited term of rights.
Moreover, it’s not certain that the bills even regulate speech. Here, I mean “speech” in its First Amendment sense, not the colloquial one. Burning one’s draft card at a protest seems like speech to most of us – the anti-war message is embodied within the act – but the Supreme Court views it as conduct. And conduct can be regulated so long as the government meets the minimal strictures of rational review. The two bills focus on domain name filtering – they impede users from reaching certain on-line material, but formally limit only the conversion of domain name to IP address by an Internet service provider. (I’m skipping over the requirement that search engines de-list such sites, which is a much clearer case of regulating speech.) DNS lookups seem akin to conduct, although the Court’s precedent in this area is hardly a model of lucidity. (Burning the American flag = speech; burning a draft card = conduct. QED.) Other courts have struggled, most notably in the context of the anti-circumvention provisions of the Digital Millennium Copyright Act, to categorize domain names as speech or not-speech, and thus far have found a kind of Hegelian duality to them. That suggests an intermediate level of scrutiny, which would resonate with the IP loophole analysis above.
Second, who has standing? It seems that our plaintiffs would need to find a site that conceded it met the definition of a site “dedicated to the theft of U.S. property.” That seems hard to do until filtering begins – at which point whatever ills the legislation creates will have materialized. (It might also expose the site to suits from affected IP owners.) Perhaps Internet service providers could bring a challenge based on either third-party standing (on behalf of their users, if we think users’ rights are implicated, or the foreign sites) or their own speech interests. However, I think it’s unlikely that users would have standing, particularly given the somewhat dilute harm of being unable to reach material on allegedly infringing sites. And, as described above, it’s not clear that ISPs have a speech interest at all: domain name services simply may be conduct.
Finally, how can we distinguish E-PARASITE or PROTECT IP from similar legislation that passes constitutional muster? Section 1201 of the DMCA, for example, permits liability to be imposed not only on those who make tools for circumventing access controls available, but even on those who knowingly link to such tools on-line. The government can limit distribution of encryption technology – at least as object code – overseas, by treating it as a munition. And thus far, the federal government has been able to seize domain names under civil forfeiture provisions, with nary a quibble from the federal courts.
To be plain: I think both bills are terrible legislation. They’re certain to damage America’s technology innovation industries, which are the crown jewels of our economy and our future competitiveness. They turn over censorship decisions to private actors with no interest whatsoever in countervailing values such as free expression or, indeed, anything other than their own profit margins. And their procedural protections are utterly inadequate – in my view. But I think it is possible that these bills may thread the constitutional needle, particularly given the one-way ratchet of copyright protection before the federal courts. The decision in Ashcroft, for instance, found that end user filtering was a narrower alternative than the Children’s Online Protection Act. But end user filtering doesn’t work when the person installing the software is not a parent concerned about on-line filth, but one eager to download infringing movies. And that means that legislation may escape narrowness analysis as well. As I wrote in Orwell’s Armchair:
focusing only on content that is clearly unlawful – such as child pornography, obscenity, or intellectual property infringement – has constitutional benefits that can help a statute survive. These categories of material do not count as “speech” for First Amendment analysis, and hence the government need not satisfy strict scrutiny in attacking them. Recent bills seem to show that legislators have learned this lesson – the PROTECT IP Act, for example, targets only those Web sites with “no significant use other than engaging in, enabling, or facilitating” IP infringement. Banning only unprotected material could move censorial legislation past overbreadth objections.
So: the outcome of any litigation is not only highly uncertain, but more uncertain than free speech advocates believe. Please paint a more hopeful story for me, and tell me why I’m wrong.
Cross-posted at Info/Law.
Posted by Derek Bambauer on November 27, 2011 at 08:37 PM in Civil Procedure, Constitutional thoughts, Current Affairs, First Amendment, Information and Technology, Intellectual Property, Law and Politics, Web/Tech | Permalink | Comments (0) | TrackBack
Monday, November 21, 2011
How Not To Secure the Net
In the wake of credible allegations of hacking of a water utility, including physical damage, attention has turned to software security weaknesses. One might think that we'd want independent experts - call them whistleblowers, busticati, or hackers - out there testing, and reporting, important software bugs. But it turns out that overblown cease-and-desist letters still rule the day for software companies. Fortunately, when software vendor Carrier IQ attempted to misstate IP law to silence security researcher Trevor Eckhart, the EFF took up his cause. But this brings to mind three problems.
First, unfortunately, EFF doesn't scale. We need a larger-scale effort to represent threatened researchers. I've been thinking about how we might accomplish this, and would invite comments on the topic.
Second, IP law's strict liability, significant penalties, and increasing criminalization can create significant chilling effects for valuable security research. This is why Oliver Day and I propose a shield against IP claims for researchers who follow the responsible disclosure model.
Finally, vendors really need to have their general counsel run these efforts past outside counsel who know IP. Carrier IQ's C&D reads like a high school student did some basic Wikipedia research on copyright law and then ran the resulting letter through Google Translate (English to Lawyer). If this is the aptitude that Carrier IQ brings to IP, they'd better not be counting on their IP portfolio for their market cap.
When IP law suppresses valuable research, it demonstrates, in Oliver's words, that lawyers have hacked East Coast Code in a way it was not designed for. Props to EFF for hacking back.
Cross-posted at Info/Law.
Posted by Derek Bambauer on November 21, 2011 at 09:33 PM in Corporate, Current Affairs, First Amendment, Information and Technology, Intellectual Property, Science, Web/Tech | Permalink | Comments (2) | TrackBack
Friday, November 18, 2011
A Soap Impression of His Wife
As I previewed earlier this week, I want to talk about the copyright implications for 3D printers. A 3D printer is a device that can reproduce a 3-dimensional object by spraying layers of plastic, metal, or ceramic into a given shape. (I imagine the process smelling like those Mold-a-Rama plastic souvenir vending machines prevalent in many museums, a thought simultaneously nostalgic and sickening). Apparently, early adopters are already purchasing the first generation of 3D printers, and there are websites like Thingiverse where you can find plans for items you can print in your home, like these Tardis salt shakers.*
Perhaps unsurprisingly, there can be copyright implications. A recent NY Times blog post correctly notes that the 3D printer is primarily suited to reproduce what § 101 of the Copyright Act calls "useful articles," physical objects that have "an intrinsic utilitarian function," and which, by definition, receive no copyright protection...except when they do.A useful article can include elements that are protectable as a "pictorial, graphic, [or] sculptural work." The elements are protectable to the extent "the pictorial, graphic, or sculptural features...can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." There are half a dozen tests courts have employed to determine whether protectable features can be separated from utilitarian aspects. Courts have rejected copyright protection for mannequin torsos and the ubiquitous ribbon bike rack, but granted it for belt buckles with ornamental elements that were not a necessary part of a functioning belt.
Print out a "functional" mannequin torso (or post your plans for it on the internet) and you should have no trouble. Post a schematic for the Vaquero belt buckle, and you may well be violating the copyright protection in the sculptural elements. But even that can be convoluted. The case law is mixed on how to think about 2D works derived from 3Dworks, and vice versa. A substantially similar 3D work can infringe a 2D graphic or pictorial work (Ideal Toy Corp. v. Kenner Prods. Div., 443 F. Supp. 291 (S.D.N.Y. 1977)), but constructing a building without permission from protectable architectural plans was not infringement, prior to a recent revision to the Copyright Act. Likewise, adrawing of a utilitarian item might be protectable as a drawing, but does not grant the copyright holder the right to control the manufacture of the item.
And if consumers are infringing, there is a significant risk that the manufacturer of the 3D printer could be vicariously or contributorily liable for that infringement. The famous Sony decision, which insulated the distribution of devices capable of commercially significant noninfringing uses, even if they could also be used for copyright infringement, has been narrowed both by recent Grokster filesharing decision and by the DMCA anticircumvention provisions. The easy, but unsatisfying takeaway is that 3D printers will keep copyright lawyers employed for years to come.
Back to the Tardis shakers, for a moment: the individual who posted them to the Thingiverse noted that the shaker "is derivative of thingiverse.com/thing:1528 and thingiverse.com/thing:12278", a Tardis sculpture and the lid of bottle, respectively. I found this striking for two reasons. First, it suggests a custom of attribution on thingiverse, but I don't yet have a sense for whether it's widespread. Second, if either of those first things are protectable as copyrighted works, (which seems more likely for the Tardis sculpture, and less so for the lid) then the Tardis salt shaker may be an unauthorized, and infringing, derivative work, and the decision to offer attribution perhaps unwise in retrospect.
* The TARDIS is the preferred means of locomotion of Doctor Who, the titular character of the long-running BBC science fiction program. It's a time machine / space ship disguised as a 1960s-era London police call box. The shape of the TARDIS, in its distinctive blue color, is protected by three registered trademarks in the UK.
Thursday, November 17, 2011
Yesterday, the House of Representatives held hearings on the Stop Online Piracy Act (it's being called SOPA, but I like E-PARASITE tons better). There's been a lot of good coverage in the media and on the blogs. Jason Mazzone had a great piece in TorrentFreak about SOPA, and see also stories about how the bill would re-write the DMCA, about Google's perspective, and about the Global Network Initiative's perspective.
My interest is in the public choice aspect of the hearings, and indeed the legislation. The tech sector dwarfs the movie and music industries economically - heck, the video game industry is bigger. Why, then, do we propose to censor the Internet to protect Hollywood's business model? I think there are two answers. First, these particular content industries are politically astute. They've effectively lobbied Congress for decades; Larry Lessig and Bill Patry among others have documented Jack Valenti's persuasive powers. They have more lobbyists and donate more money than companies like Google, Yahoo, and Facebook, which are neophytes at this game.
Second, they have a simpler story: property rights good, theft bad. The AFL-CIO representative who testified said that "the First Amendment does not protect stealing goods off trucks." That is perfectly true, and of course perfectly irrelevant. (More accurately: it is idiotic, but the AFL-CIO is a useful idiot for pro-SOPA forces.) The anti-SOPA forces can wheel to a simple argument themselves - censorship is bad - but that's somewhat misleading, too. The more complicated, and accurate, arguments are that SOPA lacks sufficient procedural safeguards; that it will break DNSSEC, one of the most important cybersecurity moves in a decade; that it fatally undermines our ability to advocate credibly for Internet freedom in countries like China and Burma; and that IP infringement is not always harmful and not always undesirable. But those arguments don't fit on a bumper sticker or the lede in a news story.
I am interested in how we decide on censorship because I'm not an absolutist: I believe that censorship - prior restraint - can have a legitimate role in a democracy. But everything depends on the processes by which we arrive at decisions about what to censor, and how. Jessica Litman powerfully documents the tilted table of IP legislation in Digital Copyright. Her story is being replayed now with the debates over SOPA and PROTECT IP: we're rushing into decisions about censoring the most important and innovative medium in history to protect a few small, politically powerful interest groups. That's unwise. And the irony is that a completely undemocratic move - Ron Wyden's hold, and threatened filibuster, in the Senate - is the only thing that may force us into more fulsome consideration of this measure. I am having to think hard about my confidence in process as legitimating censorship.
Cross-posted at Info/Law.
Posted by Derek Bambauer on November 17, 2011 at 09:15 PM in Constitutional thoughts, Corporate, Culture, Current Affairs, Deliberation and voices, First Amendment, Information and Technology, Intellectual Property, Music, Property, Web/Tech | Permalink | Comments (9) | TrackBack
Tuesday, November 15, 2011
You Say You Want a Revolution
Two potentially revolutionary "disruptive technologies" were back in the news this week. The first is ReDigi, a marketplace for the sale of used "legally downloaded digital music." For over 100 years, copyright law has included a first sale doctrine, which says I can transfer "lawfully made" copy* (a material object in which a copyrighted work is fixed) by sale or other means, without permission of the copyright owner. The case law is codified at 17 U.S.C. § 109.
ReDigi says its marketplace falls squarely within the first sale limitation on the copyright owner's right to distribute, because it verifies that copies are "from a legitimate source," and it deletes the original from all the seller's devices. The Recording Industry Association of America has objected to ReDigi's characterization of the fair use claim on two primary grounds,** as seen in this cease and desist letter.First, as ReDigi describes its technology, it makes a copy for the buyer, and deletes the original copy from the computer of the seller. The RIAA finds fault with the copying. Section 109 insulates against liability for unauthorized redistribution of a work, but not for making an unauthorized copy of a work. Second, the RIAA is unpersuaded there are ReDigi can guarantee that sellers are selling "lawfully made" digital files. ReDigi's initial response can be found here.
At a first cut, ReDigi might find it difficult to ever satisfy the RIAA that it was only allowing the resale of lawfully made digital files. Whether it can satisfy a court is another matter. It might be easier for an authorized vendor, like iTunes or Kindle, to mark legitimate copies going forward, but probably not to detect prior infringement.
Still, verifying legitimate copies may be easier than shoehorning the "copy and delete" business model into the language of § 109. Deleting the original and moving a copy seems in line with the spirit of the law, but not its letter. Should that matter? ReDigi attempts to position itself as close as technologically possible to the framework spelled out in the statute, but that's a framework designed to handle the sale of physical objects that embody copyrightable works.
This is not the only area where complying with statutory requirements can tie businesses in knots. Courts have consistently struggled with how to think about digital files. In London-Sire Records v. Does, the court had to puzzle out whether a digital file can be a material object and thus a copy* distributed in violation of § 106(3). The policy question is easy to articulate, if reasonable minds still differ about the answer: is the sale and distribution of digital files something we want the copyright owner to control or not?
As a statutory matter, the court in London-Sire concluded that material didn't mean material in its sense as "a tangible object with a certain heft," but instead "as a medium in which a copyrighted work can be 'fixed.'" This definition is, of course, driven by the statute: copyright subsists once an original work of authorship is fixed in a tangible medium of expression from which it can be reproduced, and the Second Circuit has recently held in the Cablevision case that a work must also be fixed -- embodied in a copy or phonorecord for a period of more than transitory duration -- for infringement to occur. Policy intuitions may be clear, but fitting the solution in the statutory language sometimes is not. And a business model designed to fit existing statutory safe harbors might do things that appear otherwise nonsensical, like Cablevision's decision to keep individual copies of digital videos recorded by consumers on its servers, to avoid copyright liability.
Potentially even more disruptive is the 3D printer, prototypes of which already exist in the wild, and which I will talk more about tomorrow.
* Technically, a digital audio file is a phonorecord, and not a copy, but that's a distinction without a difference here.
** The RIAA also claims that ReDigi violates the exclusive right of public performance by playing 30 second samples of members' songs on its website, but that's not a first sale issue.
Saturday, November 05, 2011
The House of Representatives is considering the disturbingly-named E-PARASITE Act. The bill, which is intended to curb copyright infringment on-line, is similar to the Senate's PROTECT IP Act, but much much worse. It's as though George Lucas came out with the director's cut of "The Phantom Menace," but added in another half-hour of Jar Jar Binks.
As with PROTECT IP, the provisions allowing the Attorney General to obtain a court order to block sites that engage in criminal copyright violations are, in theory, less objectionable. But they're quite problematic in their particulars. Let me give three examples.
First, the orders not only block access through ISPs, but also require search engines to de-list objectionable sites. That not only places a burden on Google, Bing, and other search sites, but it "vaporizes" (to use George Orwell's term) the targeted sites until they can prove they're licit. That has things exactly backwards: the government must prove that material is unlawful before restraining it. This aspect of the order is likely constitutionally infirm.
Second, the bill attacks circumvention as well: MAFIAAFire and its ilk become unlawful immediately. Filtering creep is inevitable: you have to target circumvention, and the scope of circumvention targeted widens with time. Proxy services like Anonymizer are likely next.
Finally, commentators have noted that the bill relies on DNS blocking, but they're actually underestimating its impact. The legislation says ISPs must take "technically feasible and reasonable measures designed to prevent access by its subscribers located within the United States" to Web sites targeted under the bill, "including measures designed to prevent the domain name of the foreign infringing site (or portion thereof) from resolvingto that domain name's Internet protocol address." The definitional section of the bill says that "including" does not mean "limited to." In other words, if an ISP can engage in technically feasible, reasonable IP address blocking or URL blocking - which is increasingly possible with providers who employ deep packet inspection - it must do so. The bill, in other words, targets more than the DNS.
On the plus side, the bill does provide notice to users (the AG must specify text to display when users try to access the site), and it allows for amended orders to deal with the whack-a-mole problem of illegal content evading restrictions by changing domain names or Web hosting providers.
The private action section of the bill is extremely problematic. Under its provisions, YouTube is clearly unlawful, and neither advertising or payment providers would be able to transact business with it. The content industry doesn't like YouTube - see the Viacom litigation - but it's plainly a powerful and important innovation. This part of E-PARASITE targets sites "dedicated to the theft of U.S. property." (Side note: sorry, it's not theft. This is a rhetorical trope in the IP wars, but IP infringement simply is not the same as theft. Theft deals with rivalrous goods. In addition, physical property rights do not expire with time. If this is theft, why aren't copyright and patent expirations a regulatory taking? Why not just call it "property terrorism"?)
So, what defines such a site? It is:
- "primarily designed or operated for the purpose of, has only limited purpose or use other than, or is marketed by its operator or another acting in concert with that operator for use in, offering goods or services in a manner that engages in, enables, or facilitates" violations of the Copyright Act, Title I of the Digital Millennium Copyright Act, or anti-counterfeiting laws; or,
- "is taking, or has taken, deliberate actions to avoid confirming a high probability of the use of the U.S.-directed site to carry out the acts that constitute a violation" of those laws; or,
- the owner "operates the U.S.-directed site with the object of promoting, or has promoted, its use to carry out acts that constitute a violation" of those laws.
That is an extraordinarily broad ambit. Would buying keywords, for example, that mention a popular brand constitute a violation? And how do we know what a site is "primarily designed for"? YouTube seems to have limited purpose or use other than facilitating copyright infringement. Heck, if the VCR were a Web site, it'd be unlawful, too.
The bill purports to establish a DMCA-like regime for such sites: the IP owner provides notice, and the site's owner can challenge via counter-notification. But the defaults matter here, a lot: payment providers and advertisers must cease doing business with such sites unless the site owner counter-notifies, and even then, the IP owner can obtain an injunction to the same effect. Moreover, to counter-notify, a site owner must concede jurisdiction, which foreign sites will undoubtedly be reluctant to do. (Litigating in the U.S. is expensive, and the courts tend to be friendly towards local IP owners. See, for example, Judge Crotty's slipshod opinion in the Rojadirecta case.)
I've argued in a new paper that using direct, open, and transparent methods to censor the Internet is preferable to our current system of "soft" censorship via domain name seizures and backdoor arm-twisting of private firms, but E-PARASITE shows that it's entirely possible for hard censorship to be badly designed. The major problem is that it outsources censorship decisions to private companies. Prior restraint is an incredibly powerful tool, and we need the accountability that derives from having elected officials make these decisions. Private firms have one-sided incentives, as we've seen with DMCA take-downs.
In short, the private action measures make it remarkably easy for IP owners to cut off funding for sites to which they object. These include Torrent tracker sites, on-line video sites, sites that host mash-ups, and so forth. The procedural provisions tilt the table strongly towards IP owners, including by establishing very short time periods by which advertisers and payment providers have to comply. Money matters: WikiLeaks is going under because of exactly these sort of tactics.
America is getting into the Internet censorship business. We started down this path to deal with pornographic and obscene content; our focus has shifted to intellectual property. I've argued that this is because IP legislation draws lower First Amendment scrutiny than other speech restrictions, and interest groups are taking advantage of that loophole. It's strange to me that Congress would damage innovation on the Internet - only the most powerful communications medium since words on paper - to protect movies and music, which are relatively small-scale in the U.S. economy. But, as always with IP, the political economy matters.
I predict that a bill like PROTECT IP or E-PARASITE will become law. Then, we'll fight out again what the First Amendment means on the Internet, and then the myth of America's free speech exceptionalism on-line will likely be dead.
Cross-posted at Info/Law.
Posted by Derek Bambauer on November 5, 2011 at 05:06 PM in Civil Procedure, Constitutional thoughts, Culture, Current Affairs, First Amendment, Information and Technology, Intellectual Property, Law and Politics, Music, Property, Web/Tech | Permalink | Comments (2) | TrackBack
Wednesday, November 02, 2011
Back in the B.L.O.G.
I'm glad for the invitation to return to the friendly confines of the Prawfsblawg to kick around some ideas. I was fascinated by earlier attempts to rank law schools and law journals using pairwise comparisons, but was concerned that the list was guaranteed to be underinclusive, due to the number of pairwise comparisons to be made. So I'll start the month with a question that has fewer items to compare, and where the stakes are much lower.
George Martin, the producer of the Beatles' oeuvre, argued that the eponymous two-disc release we tend to call the White Album would have been a stronger final product if the weaker songs had been culled. I doubt the remaining lads from Liverpool are likely to take a stab at this, but you can have your say on which songs should be included on what I'm calling the "Tighter White Album." The question will be presented by offering two songs. You vote for the song you think should be kept. Rinse. Repeat. In honor of the old LP format, the highest-ranked 45 minutes of music will be included in the imaginary album after Thanksgiving.
Is this a legal question? Perhaps yes, but I want to get into the details of why I think so at the end of the month, so as not to sway your vote.
Wednesday, October 26, 2011
How Baseball Made Me a PirateMajor League Baseball has made me a pirate, with no regrets. Nick Ross, on Australia's ABC, makes "The Case for Piracy." His article argues that piracy often results, essentially, from market failure: customers are willing to pay content owners for access to material, and the content owners refuse - because they can't be bothered to serve that market or geography, because they are trying to force consumers onto another platform, or because they are trying to leverage interest in, say, Premier League matches as a means of getting cable customers to buy the Golf Network. The music industry made exactly these mistakes before the combination of Napster and iTunes forced them into better behavior: MusicNow and Pressplay were expensive disasters, loaded with DRM restrictions and focused on preventing any possible re-use of content rather than delivering actual value. TV content owners are now making the same mistake. Take, for example, MLB. I tried to purchase a plan to watch the baseball playoffs on mlb.com - I don't own a TV, and it's a bit awkward to hang out at the local pub for 3 hours. MLB didn't make it obvious how to do this. Eventually, I clicked a plan that indicated it would allow me to watch the entire postseason for $19.99, and gladly put in my credit card number. My mistake. It turns out that option is apparently for non-U.S. customers. I learned this the hard way when I tried to watch an ALDS game, only to get... nothing. No content, except an ad that tried to get me to buy an additional plan. That's right, for my $19.99, I receive literally nothing of value. When I e-mailed MLB Customer Service to try to get a refund, here's the answer I received: "Dear Valued Subscriber: Your request for a refund in connection with your 2011 MLB.TV Postseason Package subscription has been denied in accordance with the terms of your purchase." Apparently the terms allow fraud. Naturally, I'm going to dispute the charge with my credit card company. But here's the thing: I love baseball. I would gladly pay MLB to watch the postseason on-line. And yet there's no way to do so, legally. In fact, apparently the only people who can are folks outside the U.S. And if you try to give them your money anyway, they'll take it, and then tell you how valued you are. But you're not. So, I'm finding ways to watch MLB anyway. If you have suggestions or tips, offer 'em in the comments - there must be a Rojadirecta for baseball. And next season, when I want to watch the Red Sox, that's the medium I'll use - not MLB's Extra Innings. MLB has turned me into a pirate, with no regrets.Cross-posted at Info/Law.
Posted by Derek Bambauer on October 26, 2011 at 07:48 PM in Criminal Law, Culture, Information and Technology, Intellectual Property, International Law, Music, Odd World, Sports, Television, Web/Tech | Permalink | Comments (34) | TrackBack
Thursday, October 20, 2011
Policing Copyright Infringement on the Net
Mark Lemley has a smart editorial up at Law.com on the hearings at the Second Circuit Court of Appeals in Viacom v. YouTube. The question is, formally, one of interpreting Title II of the Digital Millennium Copyright Act (17 U.S.C. 512), and determining whether YouTube meets the statutory requirements for immunity from liability. But this is really a fight about how much on-line service providers must do to police, or protect against, copyright infringement. Mark, and the district court in the case, think that Congress answered this question rather clearly: services such as YouTube need to respond promptly to notifications of claimed infringement, and to avoid business models where they profit directly from infringement. The fact that a site attracts infringing content (which YouTube indubitably does) can't wipe out the safe harbor, because then the DMCA would be a nullity. It may be that the burden of policing copyrights should fall more heavily on services such as YouTube than it currently does. But, if that's the case, Viacom should be lobbying Congress, not the Second Circuit. I predict a clean win for YouTube.
Tuesday, October 18, 2011
Guest Post by TJ Chiang: The Stolen Valor Act as Trademark Protection
The following post is from GMU's TJ Chiang, an occasional guest with Prawfs:
On Monday, the Supreme Court granted certiorari in United States v. Alvarez, on whether the Stolen Valor Act, which criminalizes falsely representing oneself as having been awarded a military medal, violates the First Amendment. Most of the debate so far has focused on whether the First Amendment contains a categorical exclusion for false speech, and the primary analogy the Solicitor-General has tried to draw is to defamation. In my view, this is the wrong way to view the problem. The far better analogy is trademark law.
If one thinks about it, labels like “Medal of Honor” and “Purple Heart” would not have much intrinsic value but for the fact that Congress has chosen these names as the names of military decorations. The only reason that these labels have value is that Congress has built a brand around them, associating the brand only with people having desirable characteristics such as courage and valor. This is much the same as the fact that the label “Prada” has built-up value, because the company has associated the brand only with products that have desirable characteristics.
What Congress is trying to counter with the Stolen Valor Act is basically what a manufacturer is trying to counter when it sues counterfeiters for trademark infringement: If other people who do not have the desirable characteristics come to be associated with the brand, then the brand will lose its value. And this means three things. First, the closest common law analogy to the Stolen Valor Act is not defamation, but the old tort of “passing off”—the product being passed off is the defendant himself, who wishes to pass himself off as having desirable characteristics such as courage and valor, but it is still passing off. Second, if one regards federal or state trademark law as constitutional, then there is almost no argument that the Stolen Valor Act is not. Third, the problem with stealing valor is not its falsity as such, but also the fact that the falsity diminishes Congress’s investment in the brand, which the presentation of the problem as a falsity issue does not capture.
Friday, October 14, 2011
Behind the Scenes of Six Strikes
Wired has a story on the cozy relationship between content industries and the Obama administration, which resulted in the deployment of the new "six strikes" plan to combat on-line copyright infringement. Internet security and privacy researcher Chris Soghoian obtained e-mail communication between administration officials and industry via a Freedom of Information Act (FoIA) request. (Disclosure: Jonathan Askin and I represent Chris in his appeal regarding this FoIA request.) The e-mails demonstrate vividly what everyone suspected: Hollywood - in the form of the music and movie industries - has an administration eager to be helpful, including by pressuring ISPs. Stay tuned.
Posted by Derek Bambauer on October 14, 2011 at 11:10 AM in Blogging, Culture, Current Affairs, Film, Information and Technology, Intellectual Property, Judicial Process, Law and Politics, Music, Web/Tech | Permalink | Comments (0) | TrackBack
Thursday, October 13, 2011
The Pirates' Code
There have been a number of attempts to alter consumer norms about copyright infringement (especially those of teenagers). The MPAA has its campaigns; the BSA has its ferret; and now New York City has a crowdsourced initiative to design a new public service announcement. At first blush, the plan looks smart: rather than have studio executives try to figure out what will appeal to kids (Sorcerer's Apprentice, anyone?), leave it to the kids themselves.
On further inspection, though, the plan seems a bit shaky. First, it's not actually a NYC campaign: the Bloomberg administration is sockpuppeting for NBC Universal. Second, why is the City even spending scarce taxpayer funds on this? Copyright enforcement is primarily private, although the Obama administration is lending a helping hand. Third, is this the most effective tactic? It seems more efficient to go after the street vendors who sell bootleg DVDs, for example - I can buy a Blockbuster Video store's worth of movies just by walking out the front door of my office.
Yogi Berra (or was it Niels Bohr?) said that the hardest thing to predict is the future. And the hardest thing about norms is changing them. Larry Lessig's New Chicago framework not only points to the power of norms regulation (along the lines of Bob Ellickson), but suggests that norms are effectively free - no one has to pay to enforce them. This makes them attractive as a means of regulation. The problem, though, is that norms tend to be resistant to overt efforts to shift them. Think of how long it took to change norms around smoking - a practice proven to kill you - and you'll appreciate the scope of the challenge. The Bloomberg administration should save its resources for moving snow this winter...
Tuesday, October 04, 2011
America Censors the Internet
If you're an on-line poker player, a fan of the Premier League, or someone who'd like to visit Cuba, you probably already know this. Most people, though, aren't aware that America censors the Internet. Lawyers tend to believe that a pair of Supreme Court cases, Reno v. ACLU (1997) and Ashcroft v. ACLU (2004), permanently interred government censorship of the Net in the U.S. Not so.
In a new paper, Orwell's Armchair (forthcoming in the University of Chicago Law Review), I argue that government censors retain a potent set of tools to block disfavored on-line content, from using unrelated laws (like civil forfeiture statutes) as a pretext to paying intermediaries to filter to pressuring private actors into blocking. These methods are not only indirect, they are less legitimate than overt, transparent regulation of Internet content. In the piece, I analyze the constraints that exist to check such soft censorship, and find that they are weak at best. So, I argue, if we're going to censor the Internet, let's be clear about it: the paper concludes by proposing elements of a prior restraint statute for on-line content that could both operate legitimately and survive constitutional scrutiny.
Jerry Brito of George Mason University's Mercatus Center kindly interviewed me about the issues the article raises for his Surprisingly Free podcast. It's worth a listen, even though my voice is surprisingly annoying.
Cross-posted at Info/Law.
Posted by Derek Bambauer on October 4, 2011 at 06:14 PM in Civil Procedure, Constitutional thoughts, Current Affairs, First Amendment, Information and Technology, Intellectual Property, Law and Politics, Web/Tech | Permalink | Comments (3) | TrackBack
Sunday, October 02, 2011
What Commons Have in Common
Thanks to Dan and the Prawfs crew for having me! Blogging here is a nice distraction from the Red Sox late-season collapse.
Last week, NYU Law School hosted Convening Cultural Commons, a two-day workshop intended to accelerate the work on information commons begun by Carol Rose, Elinor Ostrom, and Mike Madison / Kathy Strandburg / Brett Frischmann. All four of the above were presented as case studies (by Dave Fagundes, Sonali Shah, Charles Schweik, and Mike Madison, respectively). Elinor Ostrom gave the keynote address, and sat in on most of the presentations. It's exciting stuff: Mike, Kathy, and Brett have worked hard to adapt Ostrom's Institutional Analysis and Development framework to analysis of information commons such as Wikipedia, the Associated Press, and jambands. Yet, there was one looming issue that the conferees couldn't resolve: what, exactly, is a commons?
The short answer is: no one knows. Ostrom's work counsels a bottom-up, accretive way to answer this question. Over time, with enough case studies, the boundaries of what constitutes a "commons" become clear. So, the conventional answer, and one supported by a lot of folks at the NYU conference, is to go forth and, in the spirit of Clifford Geertz, engage in collection and thick description of things that look like, or might be, commons.
As an outsider to the field, I think that's a mistake.What commons research in law (and allied disciplines) needs is some theories of the middle range. There is no Platonic or canonical commons out there. Instead, there are a number of dimensions along which a particular set of information can be measured, and which make it more or less "commons-like." Let me suggest a few as food for thought:
- Barriers to access - some information, like Wikipedia, is available to all comers; other data, like pooled patents, are only available to members of the club. The lower the barriers to access, the more commons-like a resource is.
- State role in management - government may be involved in managing resources directly (for example, data in the National Practitioner Data Bank), indirectly (for example, via intellectual property laws), or not at all. I think a resource is more commons-like as it is less managed by the state.
- Ability to privatize - information resources are more and less subject to privatization. Information in the public domain, such as Shakespeare's plays, cannot be privatized - no one can assert rights over them (at least, not under American copyright law). Some information commons protected by IP law cannot be privatized, such as software developed under the GPL, and some can be, such as software developed under the Apache License. The greater the ability to privatize, I'd argue, the less commons-like.
- Depletability - classic commons resources (such as fisheries or grazing land) are subject to depletion. Information resources can be depleted, though depletion here may come more in the form of congestion, as Yochai Benkler argues. Internet infrastructure is somewhat subject to depletion, while ideas or prices are not. The greater the risk of depletion,the less commons-like.
Finally, why do we care about the commons? I think that commons studies are a reaction to the IP wars: they are a form of resistance to IP maximalism. By showing that information commons are not only ubiquitous, but vital to innovation and even a market economy, legal scholars can offer a principled means of arguing against ever-increasing IP rights. That makes studying these resources - and, hopefully, putting forward testable theories about what are and are not attributes of a commons - vital to enlightened policymaking.
(Cross-posted to Info/Law.)
Tuesday, September 27, 2011
Some Proposed Changes to e-Discovery/ Patent Cases
The Federal Circuit Bar Association has posted a link to Judge Randall R. Radar's September 27, 2011 discussion of "The State of Patent Litigation." Of the six areas of improvement, Judge Radar discussed a "Model Order on e-Discovery for Patent Cases" which includes presumptive limits on the number of custodians and search terms for electronic documents (scroll to the end of the speech transcript).
The model order presumes a limit of five (5) custodians, for a total of five (5) search terms per custodian. Certainly, any such proposal can be modified by the district court or the agreement of the parties. It strikes me that the presumptive limits on depositions and interrogatories provided a welcome change when they were instituted. Particularly because courts retain discretion to modify these limits in appropriate case, there were several results that occured. As one, the rules introduced the principle that there should be some limits. As another, presumptive limits serve as a benchmark. That is, counsel are operating from the principle that five (5) is a norm, rather than infinity. Third, it may reduce the number and type of discovery disputes because these limits set up the framework for the parties' obligations.
Overall, these same results may occur for e-discovery. Although discovery costs for patent cases may be particularly high, I wonder whether this might serve as a template for other types of cases.
Thursday, September 08, 2011
Patent Reform Pending
It's expected that the Senate is likely to vote on significant patent reform legislation today at 4 pm Eastern time.
Some of the most significant changes in the proposed legislation include:
- The U.S. Patent system will discontinue the first-to-invent system in favor of the first-to-file priority system used by nearly all other countries
- The first to file system will be accompanied by a 1-year grace period for disclosures by an inventor, joint inventor or a disclosure that is derived from either an inventor or joint inventor (personal grace period)
- There will be a prior commercial user defense for those who had been practicing a claim in a patent that has been issued on or after the date of enactment
- Priority disputes in interference proceedings will be eliminated; instead, derivation proceedings will be added to ensure that patentees are not obtaining patents on inventions derived from another
- Additional post-grant procedures will be changed and/or added
- The Patent & Trademark Office will have an increased ability to set fees
The patent world is watching with considerable interest. In a survey conducted on Dennis Crouch's PatentlyO blog, respondents showed a notable lack of support for reforms. Also, this draft article by David Abrams and Polk Wagner suggests that first-to-file systems impact solo inventors.
If enacted, changes will begin quickly. There are over a dozen effective dates in the bill, some of which begin immediately upon enactment, and some as soon as 10 days thereafter. One helpful resource for sifting through these implementation dates is here on Fish & Richardson's website.
Friday, September 02, 2011
Madonna's Rights to "Material Girl"
A few days ago, a district court denied Madonna's effort to establish rights to the name "Material Girl" for her clothing line. The case was brought by L.A. Triumph, a company that has been selling women's clothes under the name "Material Girl" since 1997.
Despite The Cut's observation that L.A. Triumph was "piggybacking off [Madonna's] title," it's true that trademarks are not about originality. In an interesting turn, the order referred to the "concert style shirts and tops" sold at Madonna concerts beginning in the 1980's were not clothing, but rather "concert paraphernalia."
Reports are that trial is set for mid-October. I'm curious to see whether the case will settle now that summary judgment has been decided, or whether we'll be able to see what a jury does with this.