PrawfsBlawg

(Guest post): Complex Textualism and the Foreign Litigant in U.S. Court After Abitron and WesternGeco

The following post is by my FIU colleague Hannibal Travis, to whom I turn for all things IP.

The United States has enacted a patchwork of trademark and patent laws that make it confusing to determine whether a particular transnational course of conduct can be litigated in federal courts. Suppose the publicity surrounding a foreign corporation’s widespread counterfeiting of U.S. products, completed entirely within a foreign country, damages the fame or goodwill of a U.S. brand. Or imagine that U.S. consumers purchase misbranded jewelry or handbags in foreign countries and see it fall apart upon their return from vacation, and then develop a poor reputation of the U.S. manufacturer when it refuses to repair or replace these copycat products. Finally, assume that a course of conduct amounting to patent infringement begins in the United States but is only completed with the final assembly and sale of the infringing devices overseas: may the U.S. patent holder recover damages on foreign sales?

The Supreme Court, according to Justice Sotomayor, joined by the Chief Justice Roberts and two other concurring justices, has recently developed new, short-sighted, and groundless rules for governing such disputes. Rather than the place of the conduct, the allegiances of the parties, or the extent of the injury inside the United States, the majority in Abitron Austria GmbH v. Hetronic International, Inc., 143 S. Ct. --- (2023), uses a disjunctive “clear statement” and “domestic conduct” test.  The first part of the test invokes a presumption going back at least a century, and articulated in the famous case of the United Fruit Company monopoly buying up land and controlling politicians in Central America. To paraphrase Justice Holmes in that case, if the United States “should happen to lay hold of the actor, to treat him according to its own notions rather than those of the place where he did the acts, not only would be unjust, but would be an interference with the authority of another sovereign, contrary to the comity of nations, which the other state concerned justly might resent.” The second part of the test deals with whether the conduct “relevant to the statute’s focus” took place in the United States. Even if the presumption of U.S. coverage only is not rebutted, domestic application of a statute may be allowed. What conduct a statute is aimed at can be a complex question, however, because statutes are not atomistic but must be analyzed together with the rest of the statutory scheme.

In applying the two-step framework in two recent cases, the Court came to different conclusions.  In the unanimous judgment in Abitron, a U.S. manufacturer of remote controls used around the world on construction equipment could not recover tens of millions of dollars on foreign sales simply by using a small percentage of infringing domestic sales as a jumping-off point. The problem was that Congress did not expressly refer to foreign conduct or effects in drafting statutes that regulated the use in interstate or foreign commerce of trademarks or false statements, and its general goal of extending U.S. trademark law to the international trade of the United States was not adequately clear as a statement of an intention to override the comity of nations. In WesternGeco LLC v. Ion Geophysical Corp., 138 S. Ct. 2129 (2018), by contrast, the Court (over a dissent by Justices Gorsuch and Breyer) permitted a U.S. developer of a system for generating better data about the ocean floor for oil and gas exploration and the like to recover lost profits on the infringer’s lucrative foreign sales. In that case, the Federal Circuit would basically have ruled for the defendant for reasons to those relied upon by the majority in Abitron: the presumption that the U.S. does not rule the world applies, whether in cases of fully foreign patent infringement or in those involving manufacture of noninfringing components in the United States for infringing assembly and sale abroad. The Supreme Court reversed, essentially because Congress had expressed a clear intention to override the default rule in patent cases that the assembly of components has to occur inside the United States to be an infringing manufacture or sale of a system or machine. The statute was specifically drawn to a form of exports involving foreign assembly, in other words, unlike the Lanham Act or trademark statutes which the Abitron majority deemed to be “domestic” in orientation.

Jurisprudentially, Abitron and WesternGeco sit at the crossroads of three important debates. First, the four-justice concurrence in Abitron emphasizes the vast case law on subject matter jurisdiction based on the domestic effects of foreign conduct. For example, the antitrust laws "reflect a legislative effort to redress domestic antitrust injury that foreign anticompetitive conduct has caused." Thus, in the United Fruit case, Justice Holmes remarked that many countries “punish any one, subject or not, who shall do certain things, if they can catch him, as in the case of pirates on the high seas. In cases immediately affecting national interests they may go further still and may make, and, if they get the chance, execute similar threats as to acts done within another recognized jurisdiction.” Justice Sotomayor’s concurrence (like the brief amicus curiae of the United States upon which it draws for support) would have rejected a bright-line rule that there must be “domestic conduct in order for there to be a domestic application of a statute.” A domestic effect tethered to statutory text, in other words, should suffice for domestic application of a U.S. law to foreign acts even when Congress is not altogether clear on extraterritoriality.

Second, the majority adheres to past precedent sharply circumscribing broad statutes’ effect on conduct inside foreign jurisdictions, ranging from sales of securities to foreign purchasers, to the plunder of natural resources and killing of persons abroad with the complicity of U.S. multinational corporations, to conspiring with transnational organized crime and alleged international terrorist organizations. There is a normative if not a strictly doctrinal parallel here with decisions of some courts that applying the U.S. Constitution to the conduct abroad of U.S. officials who violate the rights of foreign persons would be abnormal in comparative perspective and unintended by the Constitution’s drafters and ratifiers. (Boumediene v. Bush departed from this line of decisions, based in significant part on the distinctive history of the writ of habeas corpus, but with a dissent joined by the justices who wrote for the Court in both Abitron and WesternGeco. Professor Jordan Paust and Professor Andrew Kent described the stakes of this debate well in 2001/2003 and 2012, respectively.) One might (with the ABA) imagine a more flexible approach balancing two or more factors to assess whether a statute or constitutional right or provision applies extraterritorially: the citizenship of the parties to the controversy, the effect on U.S. commerce or U.S. persons’ rights, and any conflict with foreign national or multi-national laws.

In economic terms, Congress confronts problem of drafting “incompletely realized” legislation. Should it cover every eventuality and controversial potential application in a costly drafting process, or agree efficiently on broad principles, leaving it to courts and agencies to fill gaps? With the pace of legislation in Congress slowing, the problem is becoming more serious. Abitron was one of three or four cases in 2023 in which the Court used some version of a clear statement rule to address a question of critical economic significance, the others including the wetlands case (EPA overly broadly construed “waters of the United States”), the student loan waiver case (Biden administration claimed authority it did not have to “modify” student loans), and the Navajo Nation’s water rights case (treaty said to be unclear about duties of the United States to guarantee adequate water to Navajo homes and buildings). The four cases involve clear statement rules allocating different types of authority: the authority of coordinate national sovereigns in Abitron, the authority of Congress and executive agencies and departments in Sackett v. EPA and the student loan case of Biden v. Nebraska, and the water rights of the Navajo Nation versus the discretion of the United States and Arizona to manage the waters of the Colorado River Basin in Navajo Nation v. Arizona.

The opinion for the Court explains persuasively that an effect in the United States involving the “likelihood of confusion” that the trademark laws aim at would be an insufficient basis, given the territorial nature of trademarks, to dispense with the need for registration or protection in multiple jurisdictions. The concurring justices agree that a U.S. trademark confers no rights in other countries, in contrast arguably to a patent with the benefit of WesternGeco. The International Trademark Association, ABA, and Second Circuit, on the other hand, would apparently allow a remedy in the United States for at least some foreign conduct not expressly permitted in a foreign country, which has a “substantial effect on U.S. commerce….” This argument enjoys some support in the trademark law’s reference to the constitutional scope of congressional power – which extends beyond conduct committed on U.S. soil – but threatened to undermine the territorial registration and protection regime under the Paris Convention for the Protection of Industrial Property and the Madrid Protocol on cross-border registration of marks. An effects-based balancing test seems better suited to antitrust, securities, and other areas where there are not difficult questions concerning overlapping rights, priority, and the like.

Third, the decision in Abitron arguably loses sight of the complex textualism called for by the Court’s earlier decisions. As the International Trademark Association pointed out, Congress specified the type of commerce it intended to regulate in the civil liability provisions relating to federal trademark infringement: all the commerce which may be constitutionally regulated by Congress, which of course includes the “foreign commerce” of the United States. Other statutes, relating to interstate communications, fur labeling, and milk products, for example, define their jurisdictional scope as including only commerce among the States, districts, territories, and possessions of the United States. Justice Sotomayor’s concurring opinion emphasizes that the two provisions at issue in Abitron should have been read together with the rest of the U.S. Code to construct a coherent whole, rather than in a “vacuum.” The majority opinion arguably fails to give effect to each contrasting definition of commerce enacted by Congress, contrary to a canon the Court applies that Congress knows how to use precise language in one statute and not in another, and probably does so on purpose. As Justice Gorsuch explained for four justices in another case, the Court does or should “not normally suppose that Congress blithely includes words in its laws that perform no work.” Yet this is what the Court’s reading of the jurisdictional provisions of the trademark, securities, and international-torts statutes may do

(Guest Post) Judicial Politics and Legal Scholarship in Warhol Foundation v. Goldsmith

I meant it when i said I have no idea who had the better of Warhol. So the following is from my FIU colleague Hannibal Travis, who does.

The majority opinion in Warhol carries forward certain recent trends in decisionmaking at the Supreme Court.  As others have noted, there is a "David and Goliath" quality to the ruling that photographer Lynn Goldsmith, breaking barriers as a woman in the male-dominated rock-n-roll photography field and earning a modest living from selling photographs to magazines for around $400, was entitled to compensation for Andy Warhol making an unauthorized tracing and silkscreen of her photograph of the rock star Prince and licensing it to Vanity Fair for $10,000.  It is reminiscent of the celebrated ruling in NCAA v. Alston (2021) that college athletes had been unlawfully exploited when colleges conspired to limit their education-related benefits for playing, and that the NCAA had no right to define intercollegiate athletics as a market in which cost-of-attendance scholarships are the fundamental cap on scholarships to ensure amateur play.  The majority also attempts to return fair use doctrine to what it sees as first principles, contrary to certain lower court rulings that supposedly overemphasized one aspect of one fair use factor.  This continues a trend of swatting away overly formalistic or innovative circuit court tests, some of the more notorious being "design marketability," "likelihood of dilution," the "machine-or-transformation" test for concrete patentable ideas, and the "teaching-suggestion-motivation test" for obvious improvements to existing technologies for patentability purposes.

Henry Mistry suggests that judicial opinions -- including dissents -- are a kind of performative ritual that is intended to alter social perceptions and bolster the legitimacy of the ritual's practitioner.  From this point of view, decisions like Warhol that make up the trend of Supreme Court decisions against various "Goliaths" are not only norm-clarifying but legitimacy-building.  As a related form of performative judicial politics, a dissent calls aspects of the legal system into question while underlining the system's legitimacy as a responsive and "dynamic" one.  In this instance, the majority mobilizes a constituency for its view from the factual background of Goldsmith's craft to its attempt to reassure artists that not much will change in the last paragraph. 

One of the critical points of contention in Warhol is the relationship between the defense of fair use and the exclusive right of Goldsmith and other copyright holders to prepare "derivative works."  As Justice Sonia Sotomayor's opinion for the Court explains:

[T]he owner has a right to derivative transformations of her work. Such transformations may be substantial, like the adaptation of a book into a movie. To be sure, this right is “[s]ubject to” fair use. § 106; see also § 107. The two are not mutually exclusive. But an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner's exclusive right to create derivative works. To preserve that right, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative.... See ... Authors Guild v. Google, Inc., 804 F. 3d 202, 214 (CA2 2015) (Leval, J.) (“The more the appropriator is using the copied material for new, transformative purposes, the more it serves copyright's goal of enriching public knowledge and the less likely it is that the appropriation will serve as a substitute for the original or its plausible derivatives, shrinking the protected market opportunities of the copyrighted work”). A use that shares the purpose of a copyrighted work, by contrast, is more likely to provide “the public with a substantial substitute....” [Id.] at 207....

Similarly, Justices Neil Gorsuch and Ketanji Brown Jackson state in their concurring opinion:

[T]he copyright statute expressly protects a copyright holder's exclusive right to create “derivative works” that “transfor[m]” or “adap[t]” his original work. §§ 101, 106(2). So saying that a later user of a copyrighted work “transformed” its message and endowed it with a “new aesthetic” cannot automatically mean he has made fair use of it. Contra, post, at 1–2, 22–23, 34–36 (Kagan, J., dissenting). To hold otherwise would risk making a nonsense of the statutory scheme—suggesting that transformative uses of originals belong to the copyright holder (under § 106) but that others may simultaneously claim those transformative uses for themselves (under § 107). We aren't normally in the business of putting a statute “at war with itself ” in this way. United States v. American Tobacco Co., 221 U.S. 106, 180 (1911).

The opinion in American Tobacco was not about a contradiction between two provisions, however, but between a reasonable reading of a single provision and another proposed reading that would seemingly undermine the legislative objective (freedom of interstate commerce).  In Warhol, the justices were at loggerheads over whether presumptively vesting the ability to adapt, recast, or transform a work in its original author would thwart the very creativity that copyright is deemed to promote.  For dissenting Justice Elena Kagan and Chief Justice John Roberts, there is no tension between finding a work to be an infringing derivative yet favored under fair use as having a "purpose or character" that is akin to comment, criticism, research, or scholarship.  The derivative work right is not eliminated despite this approach because the amount and importance of material taken and any economic harm to the original author can outweigh the purpose factor.  Even more importantly, the derivative work right is "[s]ubject to" section 107 (the fair use statute) and other defenses/limitations.  In 2013, for example, the Court found that even though copyright infringement includes unauthorized distribution of copies, the first-sale (or resale of a lawful copy) defense applied.  The strength of the argument that an unlawful distribution occurred could not eliminate the first-sale doctrine's role (because distribution exclusivity is subject to it).  Thus, ruling against Goldsmith on the question presented (that the unauthorized Prince art based on a Goldsmith photo was "transformative" under the fair use doctrine) would conflict with neither the fundamental goal of copyright nor with the derivative work language.

The legislative history of the Copyright Act further illustrates why allowing fair uses of some derivative works would not make nonsense of the statute.  Both the definition of a derivative work, and that of fair use, refer to a "portion of [the] ... work" being used.  Unlike the majority opinion in Warhol, which defines fair use as necessarily excluding "plausible derivatives," the legislative history states that "no real definition" of fair use even exists.  Several of the examples of fair uses in the legislative history amount to a "recast[ing]" of the original work, and are therefore "plausible derivatives," including: "illustration or clarification of the author’s observations" and "summary of an address or article, with brief quotations, in a news report."  Both of these examples are captured in the preamble to the fair use statute under "comment," "research," or "scholarship," so that criticism or parody does not exhaust the world of fair uses.  Nevertheless, the majority opinion starkly contrasts comment and criticism, and greatly disadvantages commentary and research in comparison to "target[ing] an original work."

By excluding illustrative or summative commentary and other plausible derivatives from the scope of the first factor of the fair use doctrine, the majority opinion will confine fair use to a very minor domain because it did not want to "narrow" the derivative or adaptation right.  As the dissent points out, the first factor ensures a "'breathing space' for artists to use existing materials to make fundamentally new works, for the public's enjoyment and benefit."  Courts formerly utilized the first factor to outweigh aspects of the new work that might otherwise negate a fair use, such as use of the entire work or use of the "heart" of the work such as a song's refrain.  The dissent goes on to criticize the majority's move here:

[T]he preamble ... gives examples of uses often thought fair: “criticism, comment, news reporting, teaching[,] ... scholarship, or research.” § 107. As we have explained, an emphasis on commercialism would “swallow” those uses—that is, would mostly deprive them of fair-use protection.... [¶]  [Yet o]n the majority's view, an artist had best not attempt to market even a transformative follow-on work—one that adds significant new expression, meaning, or message. That added value (unless it comes from critiquing the original) will no longer receive credit under factor 1. And so it can never hope to outweigh factor 4's assessment of the copyright holder's [economic] interests.

The dissent in Warhol recalls on earlier dissent on an even weightier issue.  In 1984, the Court ruled 6-3 that paraphrasing and selectively quoting choice passages from the memoirs of a former president and potential presidential primary candidate Gerald Ford were consumptive and exploitive uses of his manuscript, rather than fair news reporting with a more beneficial purpose of conveying uncopyrightable facts without scooping a new book.  Building on this approach, courts  ruled that even liberally quoting unpublished letters could result in a copyright ban on a biography.  Justices William Brennan, Byron White, and Thurgood Marshall issued one of the great First Amendment dissents in the Ford case, warning that news reporting, which was a "prime example" of fair use according to the statutory text, had been disfavored by the majority, threatening open discussion and debate on public figures and official measures.  Scholars  have often confirmed that this danger has indeed materialized.

The Warhol dissent takes a minimalistic approach.  The First Amendment right to make art of a postmodern or even simply a "pop art" variety is not discussed, despite effective briefs on the topic by art law professors and copyright law professors.  Even the legislative history, which contains important discussions of the scope of fair use and of the derivative right, makes no appearance.  Cass Sunstein conceived of judicial minimalism as different from judicial restraint in that it promotes core principles on which supposedly everyone can agree, while striking down laws when necessary to shield traditional rights.  It is not "skeptical" of the judicial role so much as committed to a broad scope of political branch discretion, and confident that judges committed to various ideologies and legal theories can agree in reasonable and circumscribed decisions.  In this way, the Warhol majority explains its ruling as an interative development of existing precedents and a straightforward application of statutory text.  The dissent invites readers to review the precedents and read the text differently.  Neither opinion returns to first principles and opens a destabilizing inquiry into their contemporary implications.

Sunstein noted that a minimalistic opinion may fail to provide "justification or guidance for the future" in "wider judgments."  The majority does not even draw much of an explicit distinction between submitting art to a magazine for a fee -- where the art is based on a photograph to illustrate a magazine article or cover about the photograph's subject -- and either displaying similar art in a nonprofit museum or art history textbook.  Thus, Justices Gorsuch and Jackson wrote a concurrence to point out that the first fair use factor might favor such a use in an appropriate case.  The majority is unwilling even to state that a critical book review necessarily benefits from the first factor, because certain quoted passages might satisfy consumer demand for part of the book and therefore lose the benefit of the first factor. 

The majority does offer guidance on a number of important topics.  It concedes that when a creator uses only a tiny portion of what came before or hides whatever is created in the classroom or private quarters, the "plausible derivatives" test may support a fair use under the first factor.  It approvingly cites cases stating that reproducing a photograph that is "the story" unaltered alongside a news article could be a fair purpose, as could altering a photograph for parodic effect.  It reaffirms a decision from 2021 that it could be a fair purpose to make use of "primarily functional" computer software elements to create a new programming "environment" with "shared interfaces" and the ability to attract programmers from earlier coding environments.  It even analyzes Andy Warhol's Campbell Soup Cans from 1962 (part of a series continuing through at least 1969) as having a purpose and character consistent with a fair use because advertisements have a different purpose and the series "target[ed]" the ads, presumably for being "ordinary."  Finally, the majority declares -- with no precedential or theoretical support -- that film adaptations are unfair uses. (The Court ruled in 1911 that a film could be an infringing dramatization of a book under the copyright act of 1891, but fair use did not come up.)

There can be no presumption that a particular type of work is a fair use or even has a fair "purpose and character," for the majority.  As noted above, even book reviews are now at risk even though they were one of the first types of fair uses recognized, alongside abridgements.

The dissent argues that despite the guidance provided, the majority's minimalism and solicitude towards authors' commercial aims will leave subsequent authors and musicians in a very uncertain position as to quoting others' original work.  Were Warhol's Marilyn Monroe series of paintings and screenprints all infringements?  The dissent is unsure, althugh the majority notes that Warhol paid to license the photographic source material of some of his works, so the scope of said licenses might be important.  How could future artists or musicians possibly rely on fair use if even an "avatar" of a bracing and revolutionary form of recontextualizing art worthy of museum exhibition and inclusion in art history's pantheon, had an insufficient legal justification for the "purpose and character" of (at least some of) his works?  No matter, say the majority and the concurrence: a narrow question was asked, and answered.

The majority opinion, like the Campbell case it applies, adopts an analysis from a Harvard Law Review article by Judge Pierre Leval.  Leval argued that the further removed the purposes of the user are from those of the original author, the more excusing an unauthorized use will advance the aims of copyright law .  On the other hand, subsequent authors who share purposes or characteristics of their work with the original author's work threaten to divert income from him or her and harm the mechanism with which copyright adds to knowledge via incentives. 

The central question under this approach is whether an interference with a "plausible derivative" is made by the subsequent author.  As Leval's article put it, any "reasonably substantial" loss of revenue due to the substitutionary effect of a use may negate its fairness. In the Google Books decision, Leval expanded on the proposal:

Even if the purpose of the copying is for a valuably transformative purpose, such copying might nonetheless harm the value of the copyrighted original if done in a manner that results in widespread revelation of sufficiently significant portions of the original as to make available a significantly competing substitute....

There must be a meaningful or significant effect "upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4).

However, Leval's discussion of derivative substitution in his article and in the Google Books opinion dealt with the fourth fair use factor.  The Warhol majority's use of significant-impact-on-plausible-derivatives to inform the first factor will lead to confusion between the purpose and character factor and the effect on value of markets factor, the dissent argues.  The majority denies this, leading to various skirmishes in the footnotes.  The most clarifying statement by the majority is that a significant effect on derivative markets may be correlated with but is not a cause of a purpose and character that is unfair (for being too close to that of the original work).

This analysis by Leval, mediated by its reception in Campbell, is about the sum total of the influence of legal scholarship on the majority opinion.  As with the First Amendment issue and the postmodern art briefs, this was a minimalist move, as legal scholarship is rife with theories about the history and optimal development of fair use. 

In the Warhol concurrence, however, legal scholarship makes a tantalizing appearance.  It is suggested that while fair use may not be viable for the Warhol foundation due to losing the first factor, a defense of outright noninfringement may have had more success.  The Nimmer on Copyright treatise appears for the proposition that "even when two works are substantially similar, if both the plaintiff’s and the defendant's works copy from a third source (reworking, say, a traditional artistic or literary theme), a claim for infringement generally will not succeed."  This, for me, evoked an opinion by then-judge Gorsuch on copyright infringement, in Meshwerks, Inc. v. Toyota Motor Sales USA, Inc. (10th Cir. 2009).  There, the plaintiff digitally sculpted lines and frames initially derived from Toyota vehicle measuresments, for purposes of painstakingly generating all the fine nuances of a vehicle's appearance in a computer-based model.  Its infringement claim against Toyota for subsequent unauthorized uses ran up against a "bedrock" principle of copyright law that aspects of the plaintiff's model attributable to copying the underlying object had to be ignored, and could not form the basis of a claim.  The shape of a vehicle was unprotected or owned by Toyota, not owned by the plaintiff who first traced it.  Analogously, the concurrence seems to suggest that the Warholized image of Prince (which the dissent describes as resulting in "isolated and exaggerated ... differently-colored, out-of-kilter lines around Prince's face and hair") might be noninfringing once Prince's features are ignored.  Scholars (who unfortunately the Court does not engage with to provide more guidance to those using images of people for various purposes) explore this as the "photograph as database" theory, with the photograph as a mirror, repository, or taking of data points preexisting in the world. 

It is, in a way, appropriate that Warhol's work should cause us to reevaluate the dynamic between the creator as generator of meaning and the creator as consumer of meaning.  The majority opinion paints Warhol and similarly situated artists (like Richard Prince or Jeff Koons) as grabbing value from others, as being engaged in "wholesale takings."  Warhol described what he was doing as driving the seemingly strong meaning of ordinary images to a vanishing point.  Repetition, iconography, discoloration, and the like produce a distancing or alienation effect (Verfremdungseffekt or priyom ostraneniya).  The comforting and community-binding aura around popular images takes on a different hue.  Richard Prince and Koons achieve something similar in cases they lost in pertinent part, in the rulings on Graduation and the String of Puppies.  This kind of art will continue to be possible to release without a license, but perhaps only if the source images are obscured in such a way that the alienation effect is not really achieved.  Thus, Richard Prince and Koons prevailed (under pre-Warhol standards) as to works jumbled up or covered over in larger collages and the like.  Warhol, in this way, bans a type of Warholist art. 

Not Nike’s “Satan Shoes:" Is it Trademark Infringement & Dilution? (Updated)

The following guest post is by my FIU colleague Julia Jan Osei-Tutu, who teaches and writes on IP and fashion.

Update, April 2: The district court issued a TRO.

“Satan Shoes” are Nike shoes that have been modified by MSCHF. Should one applaud the creativity or is this simply causing mischief and harming the brand?

MSCHF, a New York based company, is marketing and selling a modified Nike AirMax 97 as its “Satan Shoes.” This shoe is a collaboration between MSCHF and Little Nas X, who became well known for his hit song, “Old Town Road” with Billy Ray Cyrus. Lil Nas X is currently promoting his new song “Montero (Call Me By Your Name).” The video for the new song has scenes where Lil Nas X descends to hell and dances with the devil, hence the connection to the satanic theme for the shoe collaboration.

The Satan Shoe has Luke 10:18 written on the front part of the sole, referring to the Bible verse, and 666 near the rear. According to reporting by the New York Times and based on the product description on the website, a drop of human blood from the MSCHF staff members is mixed with ink that fills an air bubble in the Nike Air Max 97. The six hundred and sixty pairs of the shoe that were offered for sale by MSCHF for over $1000.00 per shoe were sold in less than one minute, with one pair remaining for a contest winner.  

Shoe reselling is a lucrative industry, and it is normally not a violation of trademark law to resell those expensive sneakers that you legally purchased. But what happens when the shoe is modified by a third-party and the brand receives a lot of negative public reaction to the customized shoe? Nike filed a complaint, alleging trademark infringement and dilution.

In its complaint, Nike quotes social media posts as evidence of the significant public criticism it received on social media when people assumed that Satan Shoes was a Nike product. Nike asserts that its brand suffered as a result, referencing a call to boycott Nike due to the MSCHF Satan Shoes, which Nike describes as unauthorized and materially altered. Nike seeks an injunction to prevent MSCHF from fulfilling its order for the modified shoe.

 Nike presents a compelling case that the affiliation with demonic imagery is hurting its brand, but is the law really behind Nike? Describing the MSCHF customization, Nike asserts that a “genuine Nike Air Max 97 shoe does not contain any of these customized features.” The customization makes the shoe a new, unauthorized product, according to the Nike complaint. It is worth nothing that the Satan Shoe is not the first modified Nike shoe that MSCHF has sold. MSCHF also sold a customized Nike shoe called “Jesus Shoes” that had “holy water” injected into the soles. Nike did not file suit in relation to the Jesus Shoes, which also sold out.

To establish trademark infringement, Nike needs to demonstrate that there is a likelihood of confusion between its valid trademark and the MSCHF Satan shoe, which also uses the Nike mark since it is a Nike shoe. In evaluating trademark infringement, courts will consider a non-exhaustive list of factors, such as the strength of the brand, the similarity of the marks and products, the intent of the defendant, and evidence of actual confusion, among other factors.  The goal is to ascertain whether consumers are likely to be confused, not whether they are actually confused. However, evidence of actual confusion, which appears to be present here, is helpful to the plaintiff’s case.

There is no question that Nike is a very well-known brand that would be entitled to broad protection. However, the argument for likelihood of confusion at the point of sale is weak because the purchaser knows whether they are buying from Nike or MSCHF. There is possibly some initial interest confusion or post-sale confusion, which Nike also alleges in its complaint, because potential purchasers may think the MSCHF shoe is made by Nike when they see it online or on someone’s feet. Remember that MSCHF is not applying the Nike marks to its own shoe. It is purchasing, customizing and reselling a Nike shoe, which bears the Nike logo.

The public backlash, including the call to boycott Nike for its apparent association with Satan Shoes is relevant to the question of dilution. Dilution is available to famous marks, such as Nike. Dilution by blurring impairs the distinctiveness of a mark and dilution by tarnishment refers to an association arising from the similarity between the marks that harms the reputation of the famous mark. The dilution provision in the federal Trademark statute, the Lanham Act, makes it clear that a successful dilution claim under federal law does not require actual or likely confusion, competition, or economic injury.

Though there is no statutory definition of harm in the statute, courts have tended to find tarnishment in cases where there is some sexual connotation. It is not clear whether simply having the word “Satan” in the title of the shoe, the Biblical references on the shoe, and the human blood injected into the sole of the shoe would be sufficient to amount to tarnishment. While some segment of the population was upset and offended, the shoes seem to have been quite popular, selling out very quickly, and at a price several times higher than the price for the original Nike shoe.

Since it is a resale of a Nike shoe, there may be an argument for trademark exhaustion or first sale doctrine, which provides that the resale of the original article by the first purchaser is neither trademark infringement nor unfair competition. Once a product has been sold by the trademark owner, the purchaser is generally free to resell the product, subject to some limited exceptions. Courts have held that where repackaged products are marked accurately so that the purchaser is put on notice about the source of the product, then there is no infringement or dilution. This is not a case involving repackaging of goods, but if, for instance, it is clear that the modified shoe comes from MSCHF and not directly from Nike, this could be sufficient because the potential confusion would be minimized or eliminated. If it is not clear, this strengthens the argument for infringement and dilution. 

Another exception to the first sale doctrine is the material differences rule, which tends to arise in cases involving parallel imports of goods that are first sold by the trademark owner in another country. However, the rule is not limited to such cases. Goods that are resold are materially different from the original goods if they would affect the consumer decision to purchase the altered product. These differences could be physical differences, such as those contained in the customized shoe. This is a fact specific case by case assessment, which makes it somewhat difficult to predict.

Since the resale of a shoe by the first purchaser is legally permissible, Nike may need to show that the customization of the Satan Shoe has led to material differences between the original shoe and the MSCHF version, thereby causing confusion in the marketplace and diluting the brand. Since Nike has asserted in its complaint that the shoes have been materially altered, this may be part of the Nike strategy.

Ultimately, Lil Nas X’s popular “Montero” single and MSCHF Satan Shoes have successfully launched with significant public attention.

Third Annual Law and STEM Junior Scholars' Conference

THIRD ANNUAL JUNIOR FACULTY FORUM FOR LAW AND STEM

Stanford Law School, Stanford, California
September 27-28, 2019

Call for Papers

The Northwestern, Penn and Stanford Law Schools are pleased to announce that the Third Annual Junior Faculty Forum will be held at Stanford on September 27-28, 2019. The Forum is dedicated to interdisciplinary scholarship focusing on the intersection of Law and Science-Technology-Engineering-Mathematics (STEM).  The Inaugural Forum was held in October 2017 at Penn Law, and the second Forum in September 2018 at Northwestern. The forum is currently seeking submissions from junior faculty interested in presenting papers at the forum.  The deadline for submissions is Friday, June 14. 

Presenters will be chosen on a blind basis from among those submitting papers.  Senior scholars, not necessarily from Northwestern, Penn, and Stanford, will comment on each paper.  The audience will include the participating junior faculty, faculty from the host institutions, and invited guests. Participating junior faculty are expected to stay for the full duration of the Forum.

Our goal is to promote interdisciplinary research exploring how developments in STEM are affecting law and vice versa.  Preference will be given to papers with the strong interdisciplinary approaches integrating these two areas of study.

The Forum invites submissions on any topic related to the intersection of law and any STEM field.  Potential topics include (but are not limited to):

• 3D printing
• Artificial intelligence
• Autonomous vehicles
• Bitcoin and other blockchain technologies
• Computational law
• Customized medicine
• Genetics and epigenetics
• Machine learning and predictive analytics
• Nanotechnology
• Neuroscience and law
• Online security and privacy
• Regulation of online platforms
• Robotics
• Synthetic biology
• Virtual and augmented reality

A jury of accomplished scholars with expertise in the particular topic will select the papers to be presented.  Suggestions of possible commentators are also welcome.

There is no publication commitment.  Northwestern, Penn, and Stanford will pay presenters’ and commentators’ travel expenses, though international flights may be only partially reimbursed.

QUALIFICATIONS: To be eligible, an author must be teaching at a U.S. school of higher education in a tenured or tenure-track position and must have received their first tenure-track appointment no more than seven years before the conference.  American citizens or permanent residents teaching abroad are also eligible to submit provided that they have held a faculty position or the equivalent, including positions comparable to junior faculty positions in research institutions, for less than seven years, and that they earned their last degree after 2008.  We accept jointly authored submissions so long as the presenting coauthor is individually eligible to participate in the Forum and none of the other coauthors has taught in a tenured or tenure-track position for more than seven years. Papers that will be published prior to the meeting in September 28-29, 2018, are not eligible.  Authors may submit more than one paper, but no author will be allowed to present more than one paper.

PAPER SUBMISSION PROCEDURE: Electronic submissions should be sent to [email protected].  The deadline for submissions is Friday, June 14, 2019.  Please remove all references to the author(s) in the paper.  Please include in the text of the email a cover note listing your name, the title of your paper, and the general topic under which your paper falls.  Any questions about the submission procedure should be directed both to Professor Mark Lemley ([email protected]) and Jeff Spencer ([email protected]).

FURTHER INFORMATION: Inquiries concerning the Forum should be sent to David Schwartz at the Northwestern University School of Law, Christopher Yoo at the University of Pennsylvania Law School, or Mark Lemley at the Stanford Law School.

The Judicial Power Over Patents and the Future of Administrative Adjudication after Oil States

The following guest post is by my FIU colleague Hannibal Travis, Professor of Law at FIU College of Law and this semester the Irving Cypen Visiting Professor of Law at University of Florida. He wrote about Oil States prior to argument.
OiOI

Although in a less spectacular way that in some other oral arguments, yesterday’s oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC put competing judicial philosophies on brief display.  Emily Bazelon, Eric Posner, Cass Sunstein, and others argue that one major “judicial philosophy,” by seeking to limit the discretion of administrative agencies, “would do nothing less than undermine the structure of modern government — including the rules that keep our water clean, regulate the financial markets and protect workers and consumers.”  Another judicial philosophy of “minimalism” and “majoritarianism,” according to Sunstein, would result in “reasonable” regulations being upheld from constitutional challenges.  There was a subtext of this struggle between constitutional worldviews as the justices questioned attorneys in Oil States.

The Ancient Doctrine of Vested Rights

Apart from the private rights theory of Article III that has been the focus of most briefing and commentary on Oil States, Justice Breyer highlighted the “vested rights” theory, commenting that it “had great popularity in the 19th century and might have moved Justice Story but in fact has happily sunk from sight.”  Justice Gorsuch had described Justice Story as concluding that once a patent is granted, it is a private right secured to its owner.  This sets up a potential 5-4 or 6-3 split in which Justice Breyer writes or joins an opinion strongly defending the administrative state from constitutional counter-majoritarianism, with Justice Gorsuch on the other side.

Constructing Left and Right in Article III Jurisprudence

In the era of the Greatest Generation, the Supreme Court’s left tended to take the side of due process and an independent judiciary, while the right found administrative adjudication to be acceptable.  This may play out a little bit differently in Oil States than in Northern Pipeline.  In the latter, Justice Brennan, typically associated with the judicial left, wrote a plurality opinion seemingly confining Article I courts to a small area covered by three categories, adding that an independent judiciary shields litigants from judges subject to “improper influences not only by other branches but by colleagues as well.”  Three conservative justices, led by Justice White, maintained that Article III’s preference for an independent judiciary should be balanced in an ad hoc fashion with “congressional values and … responsibilities.”

However, even Justice Brennan wanted to distinguish, and perhaps allow non-Article III courts to adjudicate, rights created by Congress as opposed to by the common law or state statutes.  This possibility led to much dialogue at yesterday’s oral argument about whether, not being obligated to create patent rights, Congress may condition them upon post-grant agency proceedings, or whether on the other hand, as Allyson Ho argued for Oil States, “in the Article III context, where Congress is taking a category of cases that have been adjudicated in courts for centuries and removes those cases -- withdraws those cases to a non-Article III tribunal, that impacts … the individual rights guarantees that Article III [contains]….”

The Oil States oral argument is being presented as a clash between a left that supports the PTO, and a right led by Justice Gorsuch that is defending private property.  In 2011, the four justice who are often portrayed as the Court’s liberals rejected Justice Brennan’s opinion in Northern Pipeline as an “analysis that did not command a Court majority …. and that was subsequently disavowed” in, among other cases, CFTC v. Schor, 478 U. S. 833 (1986).  They would have revived the principle from Crowell v. Benson, 285 U. S. 22 (1932), that Article III provides a right to appeal a judgment to an independent judge, not a right to a judge who initially decides all factual issues.  Therefore, in Crowell, an administrative adjudication of a private employer’s liability to an employee under a federal harbor worker’s compensation law, subject to appeal to federal district court for noncompliance with law or lack of support in the record, was consistent with Article III.  Except for patents being “property,” perhaps unlike an employer’s defense to a federal statutory claim, it would be a small step from that premise to say that the PTO can revoke patents, subject to appeal to the Federal Circuit for legal error or lack of evidence.

Defusing the Northern Pipeline Bomb

Justice Kennedy possibly signaled a fifth vote in favor of inter partes reviews passing Article III muster when he distinguished Stern v. Marshall, 564 U.S. 462 (2011), as involving a right not created by Congress.  In Stern, the Court held that a non-Article III court could not render a final judgment on a state law counterclaim, despite its relationship to a claim voluntarily filed in bankruptcy court by the counterclaim defendant.  As Malcolm Stewart pointed out for the government, “Stern versus Marshall and Northern Pipeline … are really directed at a different sort of problem,” because the “adjudicator was being asked to determine whether one party was liable to another for a violation of [state] law.”  This argument might be gaining some traction, despite the argument that Northern Pipeline merely echoed McCormick Harvesting and American Bell in insisting that private rights be enforced (or set aside) in Article III courts.

Introducing a Parade of Horribles

Justices Ginsburg and Sotomayor questioned counsel for Oil States about whether the PTO must allow its worst mistakes to be perpetuated if patents are private rights immune from revocation by the PTO, or by anyone other than a lay jury for that matter (assuming genuine issues of fact as to validity).  Justice Sotomayor asked whether, “somehow at the founding in 1789, given the replete English history of the crown and the Privy Council … sidestepping any judicial adjudication of validity, …  in 1789 the founders intended to change that system as radically as to say, no, we're not going to permit … the legislature to change the terms of a patent grant?” 

None of the justices seemed to question whether the Privy Council was thought in 1789 to have the power to revoke issued patents.  For justices who share this premise of the government in the case, it may seem to open Pandora’s Box to make flawed and foolishly granted patents administratively irrevocable, without a good constitutional reason to do so.  (Incidentally, patent law historians H. Tomás Gómez-Arostegui and Sean Bottomley make a strong case in their amicus brief that between 1780 and 1800, the Court of Chancery sitting as a law court sent patent validity issues for final judgment to the King’s Bench, and that the Privy Council’s power to revoke patents had fallen into disuse and virtually out of living memory.)

The Takings Turn

Justices Breyer and Gorsuch seemed concerned that a patent owner who has invested large sums of money in manufacturing a product may be divested of the patent rights by a non-Article III court.  This led to a line of questioning about whether the government could declare land held for decades to be subject to revocation by administrative panels within the Department of the Interior, before the landowners could sue other private parties for trespass.  

As Justice Kennedy pointed out, the Constitution refers to a congressional power for “securing” to inventors the “exclusive right” to their discoveries, not securing to Congress or the presidency the discretion to adjust issued patents in the public interest, etc.  The observation echoed a statement by the Supreme Court in 1888: “The patent, then, is not the exercise of any prerogative power or discretion by the president, or by any other officer of the government, but it is the result of a course of proceeding quasi judicial in its character, and is not subject to be repealed or revoked by the president … or the commissioner of patents, when once issued.”

The Takings Clause analogy to the Article III problem may cut both ways for Oil States, however.  Justice Roberts asked:

What is … the relationship between your position and the takings clause? The government can certainly diminish the value of your property rights quite extensively when it comes up with [a] new regulation. You have a lot that you think you could have built a mansion on, and then the government passes a law and you can only build a shed on it and … yet we often … give the government a lot of leeway in saying that … that they don't have to pay compensation. So, if the government can restrict your property right in real property to that extent, why can't it do so with respect to patent rights?

Most of the way through Mr. Stewart’s argument, Justice Breyer suggested reserving the Takings Clause question for another day, perhaps after a ruling in favor of the government on Article III.  Interestingly, these portions of the argument invert the supposed politics of the Court, as Chief Justice Roberts normalizes the regulatory erosion of property rights in the public interest, and Justice Breyer suggests that a massive disruption of investment-backed expectations is a taking.

Shoring up the Schor Test

One outcome of Oil States might be a decision upholding the inter partes review system of the America Invents Act, but clarifying why it is a special case and that other investments are not at risk of being caught up in administrative revocation under White House pressure.  Chief Justice Roberts asked whether the multi-factor Article III test articulated in Schor provides sufficient guidance to investors contemplating the manufacture and launch of a patented product.  Schor seemingly expanded Crowell into Justice White’s ad hoc balancing test from Northern Pipeline for sustaining non-Article III procedures.  Schor, which had the backing of seven justices, Justices Brennan and Marshall dissenting, looks to broadly-framed “factors”: whether the courts maintain the “‘essential attributes of judicial power’” despite the administrative adjudication at issue, “whether the non-Article III forum exercises the range of jurisdiction and powers normally vested only in Article III courts, the origins and importance of the right to be adjudicated, and the concerns that drove Congress to depart from the requirements of Article III.”  A firm requirement of historical understandings that a claim did not exist or was decided administratively and outside of law courts in 1789 would be more protective of judicial independence under Article III, and of the right to a civil jury.  Alternatively, a consent theory based on the possibility of a reexamination of patent claims by the PTO under a 1980 statute at the time Oil States filed could decide this case, without endorsing Schor.

Copyright Lurking in the Background

Although the government was asked whether the PTO could hear infringement actions consistent with Article III, copyright small claims and initiatives such as the Stop Online Piracy Act did not come up.  The government’s response to the question, however, indicated that such evasions of Article III would be difficult to sustain due to the lack of historical precedents.  Presumably the answer was aimed at compulsory agency adjudication and not to voluntary small claims tribunals like the proposed Copyright Claims Board.  If Oil States is based on a consent theory tied to a patent application being filed subject to a statutory scheme that warns the applicant that an issued patent may be reexamined or revoked, there will be few implications for copyright damages actions outside of Article III courts.  However, if five or more justices adopt broad readings of Crowell, Schor, or the Northern Pipeline dicta concerning congressionally-created rights being subject to congressional remedies and limitations, the copyright small claims movement will have a major precedent to draw on in Congress and during constitutional challenges.  

From a copyright perspective, the Oil States oral argument was noteworthy for what was not said.  Given the briefing on the Seventh Amendment and the fact that Justice Thomas wrote one of the landmark opinions in Seventh Amendment jurisprudence, some might have looked forward to a discussion of the right to a jury trial and the implications of Feltner v. Columbia Pictures, 523 U.S. 340 (1998).  The Seventh Amendment and the concept that jury trials shall be “preserved” did not come up, other than in the start of the government’s argument.  Justice Thomas did not ask any questions, and Justice Alito asked only one: whether Congress, which had the power not to enact any patent regime, was within its rights to enact one issuing patents subject to post-grant cancellation.  If the Court lumps the Seventh Amendment inquiry together with the jurisprudentially distinct Article III inquiry, and resolves the latter by expanding Crowell, Schor, or some other doctrine justifying non-Article III courts, collateral attacks on default judgments involving small copyright claims may fail.

The future of intellectual property and the administrative state: Oil States v. Greene’s Energy (Guest Post)

The following guest post is by my FIU colleague Hannibal Travis, Professor of Law at FIU College of Law and this semester the Irving Cypen Visiting Professor of Law at University of Florida.

The Future of Intellectual Property and the Administrative State: Oil States v. Greene’s Energy

Efficient dispute resolution is something of a Holy Grail in intellectual property (IP).  Several of the major innovations in the field over the past two decades chased it: WIPO domain name dispute resolution, the statutory license process for webcasters and digital downloads of cover songs, the introduction of an theory of induced infringement into copyright jurisprudence affecting online intermediaries, the evolution of copyright filters such as ContentID and Audible Magic CopySense, and the America Invents Act of 2011.  The results have been mixed in many cases. 

The question being presented to the Supreme Court this week is whether the Constitution limits the trend towards dispensing with the trappings of federal civil procedure in certain IP disputes.  The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (PTO) has been considering more than 1,000 petitions per year, on average, for inter partes review (IPR) of patent claims that were not novel or that were obvious considering the prior art.  Patent law specialists comb through voluminous filings citing often obscure technical publications and foreign patents in a way that would be too time-consuming and expensive if done for each of the 500,000 patent applications submitted annually.

While the cancellation of an improvidently issued patent is a relatively narrow issue, the broader questions of when an Article III court should review the validity of rights underlying a claim for money damages, and when a jury trial is available as of right for such a claim, will have broader implications.  Most notably, the Court’s opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, will affect the default judgments that are likely to multiply in copyright cases if small claims legislation is passed to reduce the cost of enforcing copyrights.

Many years ago, the Federal Circuit resolved a constitutional challenge to the system of reexamining issued patents whose validity would traditionally have been handed to a jury for resolution.  The court began with the principles that patents are property rights protected by the Fifth Amendment from deprivation without due process and from takings without just compensation and public use.  It emphasized that a patent is a right to exclude granted to generate value through licensing, and to encourage risk-taking that will advance the useful arts.  Prior to a 1980 statute, which became effective in 1981, Article III courts handled the cancellation of issued patents’ claims.  The plaintiff in the challenge had been issued patents in the late 1970s based on an application from 1959, but on the eve of jury trial in 1982, the case had been continued pending a reexamination under the new statute.  The Federal Circuit rejected the plaintiff’s Fifth Amendment, Seventh Amendment, and Article III claims against the Commissioner of Patents and Trademarks, holding that patents are “public rights” dependent on a government grant under Northern Pipeline Construction Co. v. Marathon Pipe Line Co., 458 U.S. 50 (1982).  The Court in Northern Pipeline looked for a textual commitment of a class of cases to the executive branch to limit the Article III power, or a comparable “historical understanding” that executive officials could decide certain matters.

The basic premise of Northern Pipeline and its predecessors is somewhat problematic.  The fact that England had certain practices does not necessarily make them compatible with the Bill of Rights.  The Seventh Amendment and Article III Judicial Power were intended to protect life, liberty, and property from the executive and legislative branches, which could “overwhelm[]” the British judiciary.  Even Northern Pipeline distinguished territorial courts, courts-martial, and other traditionally non-“judicial” forms of dispute resolution from Congress enacting legislation to assign issues to Article I courts under an Article I power such as the Commerce Clause or the Copyright and Patent Clause.  As the Civil Jury Project at NYU argues in its amicus brief, the exemption of “public rights” from the Seventh Amendment lacks “support in the amendment’s history or text, and if interpreted too broadly would empower Congress to sidestep civil juries altogether.”  Justice White articulated better and more manageable distinction between public rights and private ones in 1977, in holding that the Seventh Amendment is not violated when Congress “created a new cause of action, and remedies therefor, unknown to the common law….”  Causes of action known to the common law are different, this theory would suggest. 

The Solicitor General of the United States and the PTO point out, as do many amici, that the Supreme Court adopted a seemingly broad standard for public rights in 2015, that bills seeking to cancel a patent were historically equitable in nature and therefore not subject to jury trial, and that the Privy Council--an entity linked to the English Crown--could void patents based on lack of novelty or filing by someone other than the true inventor.  The executive branch frequently strips individuals of their property rights, and IPRs are an easier way to do so, they claim.

The Obama administration defended the AIA as alleviating “problematic” aspects of patent litigation by enabling or accelerating post-grant review of issued patents.  It criticized the court system as allowing “legitimate innovators” to be “tied up” in litigation.  Some innovators even had to settle cases, the administration lamented.

In the New York Times, Eduardo Porter argues that drug prices will be lower under the AIA, and that there is no evidence that a “stringent” patent system helps the economy in any event.  The first point seems to be undermined by evidence that pharmaceutical prices have risen more rapidly under the AIA regime, reaching an annual percentage rate of increase in 2015 that was double the rate in 2010 (p. 29 of the link).

A better argument is that the PTAB will save potential infringers litigation costs.  Perhaps this argument proves too much, however.  How would many of the companies seeking to preserve a low-cost way to invalidate patents feel about low-cost methods to uncover accounting irregularities, wage and hour violations, or unpaid copyright royalties to musicians?

Another interesting question is whether the AIA will reduce prices, which are kept high by patents.  Professor Porter links “stringent” patents to research claiming that there has been a “drastic increase” in pricing power – or markups (roughly sales minus cost of goods sold) – among all publicly-traded firms, and also among the larger set of all IRS tax filers.  Interestingly, the trend line on markups starts to change dramatically in about 1980, just before efforts to strengthen U.S. patentholders’ positions.

Again, there are reasons to doubt this claim. 

First, the research on markups attributes the enhancement of pricing power to a broad array of intangibles, which have increased in number and in strength alongside patents: copyrights, trademarks, franchises, and other intangible assets.  Starting with brand value alone, it reached the impressive level of $790 billion in 2017 at 10 companies alone, including $184 billion for Apple and $48 billion for Facebook’s.  Patents like those on the iPhone interface can be invented around without too much difficulty many times, even when they aren’t canceled under the AIA, but brand value is elusive.  Trade secrets can also be quite valuable, as Alphabet’s Waymo alleges in its lawsuit against Uber.  Perhaps trade secret theft does not cost the economy $300 billion annually, as an advocacy group asserts, but trade secrets in aggregate may be worth tens of billions of dollars.  Disney’s effort to take in 65% of the revenue from screenings of next month’s The Last Jedi illustrates how copyrights can drive markups, especially after a transaction like the $4 billion deal for Lucasfilm.  Intangibles other than trademarks, copyrights, and trade secrets have also proliferated, such as the millions of derivatives contracts on five U.S. banks’ balance sheets, bearing a notional value of more than $220 trillion.   

Second, the most patent-intensive products see some of the most remarkable declines in price despite increases in quality.  This contrasts with books, for example, which are sold today at quality levels often no better than those our forebears had access to, but at prices two to 15 times what they would have paid.  The very rich in the 1970s or 1980s might have paid millions of dollars for an iPhone, but it could not be had at any price.  Another interesting example is the PlayStation 2, presumably another “victim” of patents due to the many overlapping rights implicated by its games processor and graphics synthesizer chips, possibly including Nintendo’s 3D image processing patents.  The PS2 fell in price from $299 at launch to $99 in 2009, before the AIA was passed.  The Playstation 3, which had more than 100 times the power of the PS2, fell in price by Cyber Week 2012 to less than the PS2 at launch, or $219.

Third, the decline of startup activity that is supposed to be the mechanism for high markups – because large firms increasingly lack vigorous competition from newcomers – could just as easily be blamed on weaker patents as on “stringent” protection of patents.  The research in this area points to “transformational” entrepreneurs who want to revolutionize a product category or service sector, and who account for a disproportionate share of growth within industries.  Like many famous inventors who go on to become billionaires, such entrepreneurs may seek patent protection.  The PTO released a working paper in 2015 finding that among thousands of startups that went public or were acquired, those that had a patent application approved were 53% more likely to obtain venture capital or similar investments.  The National Venture Capital Association argues that patents “are the main way in which potential investors, namely venture capitalists, can assess whether a company has … a unique advantage.”

In any event, the AIA would not be the only or even the most efficient way to address high drug prices, even if that had been the goal of Congress or the White House.  The Patent and Trademark Office could simply issue a memorandum suggesting that examiners reject the sort of patents found invalid by the PTAB for combining existing dosing methods with expiring chemical compound (or drug) patents.

Turning to the issue of whether Oil States could help reign in a “stringent” patent system that is unhelpful by academic consensus, the system may be no stronger than years or decades ago, even as we learn more about its potential economic benefits.  The median patent damages award in 2016 was $6.1 million, down from 1997-2006.   Moreover, nearly two-thirds of patent holders are unsuccessful in court, not counting settlements, and only 2% of cases result in a damages award.  Recent research into innovation suggests that most significant inventions were not patented, and that Switzerland and the Netherlands were as innovative without patent systems as other countries with them were.  Even this work, on the other hand, emphasizes that correlation studies indicate that patentability is a “primary driver of innovation.”   For example, a study of inventions originating in 27 countries showed that the number of patent applications from a given country in the United States is strongly correlated with research and development investment by private industry in that country.  Brazil, China, India, and Russia have seen innovation and foreign investment increase markedly after providing stronger patent and trademark protection.  Global research and development spending has doubled in a 25-year period.

Critics of the PTAB suggest that it often comes out with conclusory and arguably wrong decisions.  So-called “objective evidence” that an invention is not obvious, for example, is typically downplayed by the PTAB, even though the Federal Circuit calls such evidence “critical.”  Vital discovery into documents probative of this issue is often denied to patentees.  Moreover, the PTAB arguably misapplied the definition of a “covered business method” from the American Invents Act in at least two cases.  It is possible that PTAB judges whose firm represented a party on a related matter more than one year prior to the institution of IPRs could decide IPRs in which the party is involved.  Finally, the pharmaceutical industry argues that IPRs have an “extraordinarily lopsided track record” and that “the PTO has admitted to reconfiguring panels to alter outcomes,” threatening due process.  While appeal to the Federal Circuit can and should cure most errors, the practice of summary affirmances undermines this safeguard.

Looking to the future, there are several ways in which a decision favorable to the PTO could affect the copyright system.  Congress might be encouraged to pass small claims legislation, and even to make it mandatory rather than voluntary subject to a potential default judgment, as current drafts envisage.  Although an action for damages involving copyright infringement is distinguishable from cancellation of a patent, which has more obvious equitable analogues, many of the arguments in Oil States point more broadly to considerations of deference to Congress, expert panels, cost reduction, and comprehensive statutory schemes.  If accepted by the Supreme Court, these theories may apply to a Copyright Claims Board staffed by copyright experts and handing out awards of up to $30,000 per proceeding, plus up to $5,000 in attorney’s fees against defendants who maintain unreasonable defenses.  The Copyright Office has even asked for comments as to whether injunctive relief should be included in such a regime.  Like the PTAB, such a regime might accelerate the process of dispensing with probing examinations of applicable arguments, and their submission to civil juries, in favor of fast and cheap decisions.

Prenups, Millenials, IP & Gender

Should prenups assigning ideas and inventions not yet born be enforced? In my book Talent Wants to be Free I analyze the vast expansion of pre-innovation assignment agreements in employment relations -- generic employment contracts that assign in advance any idea, whether patentable or not, whether copyrightable or not, whether it was conceived during work hours or not, whether it builds on company R&D or not -- to the employer. In related research, including The New Cognitive Property, Driving Performance, and Enforceability TBD: From Status to Contract in IP, I warn that these developments can have negative effects on innovation as well as problematic distributional effects. 

A related trend is the rise of couples signing prenups which pre-assign ideas and not-yet-developed IP --  films, songs, software, brands and apps - to the partner who plans to develop them. Today in the New York Times I write about this rising trend and in particular raise the question about potential gender inequities. Are millennial-dominated start-up communities prone to the following pattern: The wife holds a steady job while the husband works on his app. They share the risk now, but if they divorce, the husband reaps the rewards of his intellectual property, and the prenup ensures his ex-wife, often wife # 1, gets nothing.

Would love to hear your thoughts - comment here or in the comments section of the NYT.

Blowin' Down the Road

I had good intentions to post a few more times, but Hurricane Hermine had other plans. And so it goes. But I'm glad that Prawfs provided a platform for my live-blogging experiment from the Intellectual Property Scholars Conference at Stanford. I hoped for a bigger turnout, but a few dedicated souls shared some wonderful summaries of fascinating scholarship. Perhaps I'll try again next year. If you have clever ideas to encourage more scholars attending multi-track conferences to live-blog or tweet the panels they attend, please share your ideas in the comments.

In the meantime, I'm thankful that Hermine only landed a glancing blow on funky Tallahassee, and that family, friends, and community members made the experience bearable. Hermine may spend more time in the North Atlantic, so I hope my northern colleagues stay safe.

Until next time!

Sound Symbolism, Trademarks, and Consumer Experience

A recent tweet from Ed Timberlake brought a new study to my attention. According to the authors of the study, beer tastes better when paired with the right music. (It also works with chocolate, among other foods). Possible applications include pairing a six-pack of beer with an mp3 for a curated listening experience.

This connection between hearing and taste reminded me of another line of research I recently mined for my article, Are Trademarks Ever Fanciful? (105 Georgetown L.J., forthcoming 2017). Trademark law presumes that when a word is coined for use as a trademark (like XEROX for photocopiers or SWIFFER for dust mops) the word can't carry any product signifying meaning, so it must be inherently source signifying. That presumption about coined words is not entirely true. In fact, there is a significant body of research into sound symbolism that indicates many sounds carry meaning independent of the words to which they belong. This is true for consonants and vowels, and true even if the word at issue is a nonsense word (like XEROX or SWIFFER).

Courts haven't realized that sounds convey meaning in this way. This is unsurprising because most consumers don't realize it either. But marketers know, and they spend a significant amount of time trying to craft marks that take advantage of sound symbols. In light of this research, the presumption that a fanciful (coined) mark is entitled to instant and broad protection may require some rethinking.

I'm excited to hear your observations about sound symbols and trademarks, or your favorite food/beverage and music pairings, in the comments below.

Patent Doctrine (& Copyrightable) Subject Matter - IPSC 2016

Patent Doctrine (& Copyrightable) Subject Matter - IPSC 2016

Guest Post by Andres Sawicki, U. Miami

Are Engineered Genetic Sequences Copyrightable?: The U.S. Copyright Office Addresses a Matter of First Impression – Chris Holman, Claes Gustafsson& Andrew Torrance

Data-Generated Patents, Eligibility, & Information Flow –Brenda Simon

Inventive Application, Legal Transplants, Pre-Funk, and Judicial Policymaking –Josh Sarnoff

The Impact on Investment in Research and Development of the Supreme Court’s Eligibility Decisions – David Taylor

The Fallacy of Mayo’s Double Invention Requirement for Patenting of Scientific Discoveries – Peter Menell &Jeffrey Lefstin

 

Holman, Gustaffson, & Torrance—Are Engineered Sequences Copyrightable?: The U.S. Copyright Office Addresses a Matter of First Impression

Holman: Couple years ago, talked about why engineered DNA should be copyrightable. Big conceptual leap was extending c to software, so going to DNA no big deal. A lot of people have made this argument. Irving Kayton around the time when software was deemed copyrightable was shocked, perplexed when asked whether DNA should be too. And then wrote that it should be copyrightable. Drew Endy—synthentic biologist at Stanford—anyone who is involved in synthetic biology can’t understand why you can’t copyright genetic code. Holman worked with founders of DNA 2.0. It’s like Microsoft saying they sell plastic because they sell DVDs with software on it—DNA 2.0 doesn’t sell DNA, they sell the content encoded in it.

Holman and Torrance got the Prancer sequence from DNA 2.0 and submitted registration request to Copyright Office in July 2012. Received generic form rejection in August 2012. In November 2012, submitted appeal requesting reconsideration. Took 14 months until they heard from Director of Copyright Policy, apologizing for delay saying it’s a matter of first impression and an important issue. Director ultimately rejected registration with six reasons. Holman going to refute each.

Main argument from Copyright Office is that engineered sequences don’t fall with statutorily enumerated category. But statute uses “include” and legislative history shows the list is illustrative and not limitative. A lot of this came up in Bikram yoga case too. Nimmer similarly says if something is sufficiently analogous to existing subject matter, it should fit. Goldstein makes similar points, citing House Report.

Copyright Office says Congress amended statute to include software. Holman & Torrance draw analogy between software and genetic code. Amendment introduced limitations on software copyright, and defined computer programs. The CONTU report form 1979 is the basis for why Congress believed that software is copyrightable. Conclusion of report was that no legislative change required to make software copyrightable because it already was. Compare to architectural works amendment, which did add category. CONTU report was policy-based: large investment to create, cheap to copy, needs IP. Same applies to engineered DNA. History, in 1960s, Copyright Office took position software not copyrightable, but led to rule of doubt.

Office also said we can’t do prior art search. But Office doesn’t do searches for anything. Plus, it had no ability back in the 1960s with software. And it should be incumbent on Office to develop capacity.

Office also said no overlapping copyright and patent protection. But Oracle v Google and JEM v Pioneer to the contrary.

Office also said 102(b). But engineered DNA can be protected without violating 102(b).

Functionality arg. But so are copyrightable software programs, which don’t need artistic expression.

Bias against copyrightable expression in a biological system.

Q: Agree with first premise that software can be covered by both copyright and patent. But disagree with ultimate arg, and Oracle is mistaken. You can’t protect functional things under copyright. Software was done for anti-piracy benefits. CONTU retained idea-expression dichotomy. You can protect code, but not underlying functionality. Can you do that for DNA?

A: Yes, lots of redundancy in DNA.

Q: Oh so you can use junk code?

A: It’s not junk. There are an astronomical number of ways of coding for a protein.

Q: So if someone were to take our code for fluorescent protein and reverse engineer, you can prevent piracy of your version, but not their reverse engineered effort.

A: That’s exactly right. There is merger analysis and inoperability and a bunch of things you can import from software. The advantage over patent—imagine these in PAE hands. A troll asserted fluorescent protein patent. DNA 2.0 doesn’t want to prevent others from using function. They just want to prevent piracy.

Church wrote book in English letters and in DNA. So you can use DNA to encode English language.

Q: Why is life plus 70 the right regime?

A: I think it should be shorter, but I still think it’s not so bad because scope of protection isn’t terrible.

Q: Analogy to software a great start, but need to talk more about merger discussions. The premise was that if you can’t implement functionality another way, no protection. For the moment, we don’t know how to code DNA functionality multiple ways. What are the implications of locking up DNA code?

A: Think about Monstano—a farmer saving seeds. That’s piracy. They aren’t changing the code. But, if you have another company with a lab that does same function with different code, that should be permitted. For a small protein, because there are multiple ways to code, if you tried to make the identical protein, there are so many redundancies, if you make one code, there isn’t enough matter in universe to make all possible versions of that function.

Q: In software, I started my career talking about tailoring for software. I think software is a different animal because of functionality and interoperability. I think you’d be better off following a hybrid or sui generis proposal like semiconductor. If industry wants to support you, they might be able to get it. It’s just DNA is not close enough to other copyrightable stuff aside from software.

A: Yeah, when I got the rejection from the Office, DNA 2.0 didn’t want to appeal to federal court. But we are getting a lot of interest from lawyers who are pushing for these kinds of cases. And yeah, I agree that semiconductors and other countries’ fashion design protections might be a better model.

 

Simon—Data-Generating Patents, Eligibility, and Information Flow

Simon: I’ll discuss intersection of patent eligibility and info flow. Sup Ct has expressed concern about patent exclusivity impeding flow of info. Sichelman and I introduced idea of patents that generate data. They are patents that by design generate valuable data. Will talk about Sup Ct language reflecting info-flow concerns. Will discuss whether those decisions express concern not only about downstream tech, but also downstream data. Will also talk about unintended consequences of restricting eligibility.

Examples of data-generating patents. Genetic testing, sleep trackers, heart-rate monitors. True, ordinary use of patented inventions might generate data about ways to improve the design of that invention—e.g., garden hose. Data-generating patents different because data about users or world itself distinct from information about the patented invention. When these patents are issued, might create market power over not only invention, but data as well. Unlike trade secret law that has safeguards like reverse engineering or independent discovery. Tech advances in big data era have made this protection even more valuable.

Sup Ct decisions have expressed concern about some patents impeding flow of info. Karshtedt has a nice paper on Breyer’s parallels between copyright and patent. In Mayo, Breyer pointed to possibility that exclusivity might impede flow of info, and provided some examples. Raising price of using ideas. Cost of searching. Costly licensing agreements. Court later describes ways that patents on laws of nature can impede technology on later discovered features of metabolites, and individual patient characteristics. This latter stuff is something that the patent holder may have exclusive access to because of its data-generating patent.

AMP v. Myriad denied patentability to naturally-occurring genes and the info they encode. Thomas referred back to Mayo, balance between incentives and impeding info flow. Emphasizing info flow characteristics may show court’s concern with patentee leveraging patent exclusivity to exercise power over data gathered as a result of its patent. Myriad refuses to contribute patient data to public databases. That means competitors have limited data to use for their own research. Myriad reaped a bunch of lead-time advantages.

Final decision is Breyer’s LabCorp dissent from cert dismissal. Even way back in 2006, three Justices were commenting that patents can restrict flow of information. Also note that more recent case—Bilski—used similar language. Methods of hedging risk unpatentable. Stevens concurrence cited LabCorp and expressed concern with “Information Age” issues. Patent on foundational technology—sequencing or internet search—that provides for preclusive effect can prevent competitors from generating or accessing data.

Typically, concerns about info flow in patent seem puzzling. Disclosure is the quid pro quo, although we can argue about how effective it is. Data-generating patents raise a distinct issue—the patent allows for the generation of data that is then protected via trade secret.

Primary factor for determining whether they restrict info flow is whether they have a preemptive effect on marketplace competition for data. Contact lens with info about diabetes wouldn’t have preemptive effect because there are other ways to get the info about diabetes. May be problematic from ethical or privacy perspective, but not from info flow perspective.

Unintended consequences. Even if we can narrowly tailor restrictions, we have a problem that we will reduce disclosure overall because inventors will keep these inventions as trade secrets. Maybe we can counterbalance by imposing some data disclosure requirements. Might need some data exclusivity period to ensure that incentives are maintained. Prizes and rewards and sui generis protection possible too.

Q: Will this be industry-specific? Could imagine in software or electronics patents, the data re sales, usage, etc would be valuable in the same way that patient data might be valuable, so unless you want all of the data, you will have to limit by industry.

A: Most concerning patents at first blush are medical for public health reasons. But some of the data you are talking about, there’s a little bit of a blur. Imagine a deep brain stimulator measuring information from consumers. Is that commercial data? For some of these implementable devices or similar things like fitbit—how many hours of sleep you get—how much of that is health data? I would hesitate to implement strong industry-specific limitations. I would focus on preemptive character.

Q: To extent you identify a different class of invention, maybe there is an enablement angle. Maybe some of the data has to be accessible? That would need a significant rethinking of enablement, but it suggests that the standard might be different by data-generating patents.

A: But we’d have to dramatically change enablement requirement because it’s set at time of filing. Some have proposed something like this—maybe at time of maintenance fees. I can only imagine can of worms. It’s an interesting suggestion though.

Q: Can make the case that a lot of data wouldn’t be generated at all. Myriad a great example. Patients’ complaint was that medical community said patients shouldn’t be able to look at their own data.

A: Ted and I wrote a bit about prospect theory and coordination considerations. I think the conclusion to draw from this is that information flow concerns might be undercut by overly limiting patentable subject matters.

 

Inventive Application, Legal Transplants, Pre-Funk, and Judicial Policymaking –Josh Sarnoff

Sarnoff: Lefstin has a very good and thorough discussion of Neilson. Established line between principles in the abstract, which weren’t patentable, and applications, which were patentable. I think Lefstin does a great job of explaining that this is a practical application. From brief, legislative record says no inventive application hurdle. Not sure I agree. Might be overstated, especially with respect to composition of matter. LeRoy and O’Reilly. O’Reilly in particular brings Neilson to US. Two years before these cases was Hotchkiss,

which had human creativity and ingenuity requirement. So question is what do we do with the discovery itself—is that part of the creativity or not? My view is that when the dicta comes to US, we have the inventive application requirement.

I don’t think the true origin of inventive application is Funk Bros. I think Jeff does great job with 1952 Act legislative history, which decided not to overturn Funk. So if that case was inventive application, it would still be the law post-1952. Cases shortly after the Act made clear they understood inventive application is part of the law. Question whether it’s a good thing. And Congress didn’t eliminate ability of courts to modify law, subject to one constraint.

Flook relied on Funk too. Congress hasn’t reputed Funk. Should courts repudiate inventive application? I argued before, Ansonia Brass has the non-analogous use requirement, Reisenfeld said it too; non-analogous use is there for a good reason. We don’t want to lock up what the previous world of human inventions has given us. We want creative advances. There are earlier strains on non-analogous uses. Robinson and Leck say discovery of what nature can do is good, but lock up with patent rights only things that nature doesn’t itself do. Non-analogous things of what nature does. If new use is inventive in the other sense, it is non-obvious.

Why should we care? Mostly non-utilitarian moral views from 18th century. McCleod says this is God’s gift and locking up is a moral sin. Lockean view that we owe equal concern for each other. I think this is a better way to put it. Science itself shouldn’t be protected by patent rights. We can allow patents for inventive applications that aren’t just the world itself. If there are applications that allow you to effectively lock up the natural thing, then just do away with restriction on locking up natural thing.

Comparative perspective—scientific results are the common property of all mankind.

Prior art treatment dicta are followed, inventive application is required. Courts remain free to establish eligibility rules regarding applications of nature according to best policy.

Q: Under your view, you give Morse a claim—why not recognize that a lot of this area is overclaiming, and that was something potentially at issue in Neilson. Having a practical application is good. When you have a scientific law or principle, implicit in that is some fairly substantial scientific advance. What we don’t have is when is a discovery eligible?

A: If we’re gonna allow non-practical application, we might as well allow patenting discovery. If that stuff should be free for all to use, then granting a limited application just because you were the first makes no sense. If you can write the seventeen applications, that makes no sense too.

Q: Does statute matter at all? Two points. At time of Funk, for many authors, ingenuity was tied to [didn’t catch this]? How do we deal with Federico, finding a new property of a substance is ok—why?

A: You still had to have a non-analogous use. In terms of statute, it matters as a presumption. Once you recognize Funk was the law, Congress didn’t reverse, courts after

recognize it, then the answer is the law. Since then, other courts have played around and changed it. Now the Supreme Court is changing too. If you care about fidelity to 1952, fine. But I think Congress left it open in 1952. Didn’t change it but also didn’t prevent changes. Only question if there is a constitutional constraint on treatment of scientific discoveries. I don’t think Court will go there, esp post Eldred, but there’s a non-frivolous argument.

Q: Court has tended to lump all the excluded categories together. And Mayo suggests it doesn’t matter how narrow or specific your principle is.

A: Science and nature is pre-existing. Abstract ideas—we have no idea what that means. I view it as some abstract ideas are fundamental to how the world works. I am more sympathetic to smaller things that should be treated as human creativity. But we have no theory of abstract ideas so it’s a total mess. Still doesn’t tell you most important question—what level of incremental creativity, which requires some theory of difference. If we went to invention, we would have some theory. That’s something courts can build over time. Preemption makes no sense. I think Breyer has made a hash of the law. I would rather see us fund scientific discovery through taxes, but who knows.

 

The Impact on Investment in Research and Development of the Supreme Court’s Eligibility Decisions – David Taylor

Taylor: Haven’t done the empirical work on this yet, but just getting started. Interested in impact of 101 on R&D. We all know the two-part test. Caveat that I am reporter for AIPLA 101 task force, and this doesn’t represent their views. But lots of people view the current test as bad and are thinking about going to Congress. Would be nice to have data about extent to which Court’s decisions have impacted investment. I want to study that by surveying VC to test hypotheses. First hypo: four recent decisions have impacted decisions. Second: Impact significant. Third: Impact negative.

Want to look at diverse firms at various stages of VC funding and tech areas. Two types of questions. Have Court decisions impacted, including knowledge of decisions. And then indirectly without mentioning decisions, how has decision-making changed over time. I want database of VC firms from 2016 and from 2009. Plan to ask about activities from 2006-15. Survey only about US.

Some ideas. “In your opinion” questions about effect of patents on investment in invention and marketing. Meat of survey—on the left are tech areas and then effect on each area. Next question is on effect on each industry area. Are they aware of the decisions by name. Effects of particular cases on financing. How much, which decisions, and what has impact been—direction, tech, and industry. Between which tech areas—out of which and into which. Some broad questions about type of financing in time period. Then, if willing, amount of money invested by year. Want to go to 2006 to get behind Fed Circ Bilski decision. Can also look at size of investor.

Where it gets difficult and ugly is to ask particular questions about type of tech are by percentage by year. And then more complicated by industry. That’s it.

Q: Useful to get more granular to ask about whether decisions change to ability to get patent, changes to likelihood of getting sued, and then changes to uncertainty?

A: I like that. Especially the question about uncertainty.

Q: A question to get a bead on—decision of VC to fund a company is hugely complex. Questions to get directly at that? How do patent eligibility cases affect your decisions?

A: Maybe ask some sorting or ranking of factors about relevant importance?

Q: I’d change order of questions. You raise salience of decisions at the outset. I’d ask questions about investments first. And make them coarser so your response rate goes up. And then you will want to bury salience of eligibility. Also, you should do a five-point scale rather than three-point.

A: Great. Thanks.

Q: Narrow point—is patent protection important at all? And why? Often hear that it is part of an exit strategy. Broader question—why should we care? Real question is substitution effects. Ask legislators if they are going to change funding decisions in response.

A: Also why limit to patents?

Q: That’s my question too. Ask about non-patent appropriability mechanisms. For the people who answer no, this isn’t important to me. Question if that’s because they have substitutes available.

Q: You can still ask patent-specific questions, just do it at the end, and don’t let them go back.

A: Thanks.

 

The Fallacy of Mayo’s Double Invention Requirement for Patenting of Scientific Discoveries – Peter Menell &Jeffrey Lefstin

Menell: Want to fully credit Josh for his influence on Mayo. This is unusual for me because I usually do normative work, but this is historical, and Jeff is great with that. So we are doing a historical, interpretive paper. We agree that biosciences is an area where patents have been relatively successful. Four points. First, not explicitly in brief, when you peel back layers of Mayo, you realize Josh wrote it. Second, we don’t have any briefing or cases on a key word in the statute: “discovers.” Then we’ll go to a couple of historical points.

One q I have come to appreciate, it would be amazing if Justices could figure out everything on their own. This idea of omniscience is under-addressed. But they are human. Opening brief and petitioner briefs, mostly short. Most influential was Josh’s. Then a bunch on either side, including the government, saying this patent is just garbage on 102 or 103, and leave it at that. When we get to the outcome, the Court got the language from Josh. He talks about the requirement of prior art treatment, from O’Reilly. I think it was a mistake, though.

I’ll talk about the statute. There is this word “discovers.” I was taught to start with text, then structure, and then go higher up if you like. It is in Constitution, and then in patent acts throughout the years carry the language. Order has changed, but we’ve had discoveries throughout. Then a finding from Senate Report in 1836, that talks about much has been discovered but much unrevealed, and the mysteries of nature unfolded. He was talking about science. So no question at beginning of industrial revolution we are talking about science. And then it’s not discussed until the Plant Patent Act of 1930.

Lefstin: Assuming we care about statutory text, if you go to legislative history, a lot of concern about whether discovery of plant was constitutionally patentable. The meaning of invent at time of Constitution included discovery. For Plant Patent Act, we get some examples of what it means to invent or discover. Includes finding a plant in your backyard. Why do we care? Because Congress uses utility patent statute as home for Plant Patent Act. It reads “invented or discovered.” Maybe text doesn’t matter. Or maybe conventional propagation was in first and second. Or maybe they mean different things in the two places it comes up in statute, which I don’t think is tenable. 1952 reports indicate no change. I am less convinced than Josh about Funk Bros implications—don’t think Congress knew about it.

Menell: Another great discovery. Credit Jeff for discovering true meaning of Morse case. He claimed all uses of electromagnetism. In doing so, they cite to hot blast cases. The language is we must treat the case as if the principle was well known. Why? Out of context, Stevens and Breyer are making a plausible interpretation, but it’s completely incorrect. They were using this to postulate that if this were the same as the Minter case, it would still fit within the category of a machine. Morse got it right—unlike Neilson, where all methods of pre-heating improved blast furnace, not all methods of electromagnetism communicate at a distance. Stevens found that same language out of context in Flook and said treat the algorithm as unknown. We forgot about this because Diehr, which we thought overruled it.

Then we get to Mayo. Quotes the same passage. The question was: did Neilson inventively apply pre-heating? Yes, says Breyer, here are the unconventional steps. Jeff points out that Neilson case rejects inventive application argument.

Jeff: Main challenge of Neilson was enablement problem.

Menell: Treating the principle as well-known was about whether this qualifies as a machine. Under the Minter case, which had to do with self-adjusting chair, they decided it was a machine. We wanted in Sequenom to realize they misread the case. If you look at district courts now, it’s a disaster. And Patent Office is worse. So now algorithms are no longer relevant to invention. Go ask Forsyth Hall people. Can’t do AI without algorithms. I would take view that let’s take software out. But I think we’re going to spend another decade chasing our tails with a dysfunctional system.

Q: Quick point. I totally agree with Jeff on discussion of English cases. Clearly, they didn’t understand language they were reporting. They didn’t have substantial novelty requirement. We had just gone to non-obviousness. Then what do we make of the import of the language into our system, which was different from the other system. Who knows? But we did build on it in a variety of ways. Point is Congress hasn’t adequately addressed. Courts

have gone back and forth, and it’s really an open question. Courts are free to enforce inventive application, Congress is free to get rid of it entirely.

A: If Court wants to adopt the rule, then that would be fine. But they have to deal with text. Yours was the only brief with any substance on this issue. There is no case dealing with “discovers.” There are people who think—I don’t think religion solves the problem. A lot of my students say E=mc2, but the annealing patent is just understanding the properties of copper.

Q: How much has to do with the loss of a real utility requirement in patent law? In terms of practical application, seems that we’re just talking about utility requirement. Why aren’t people pushing the reinvigoration of that doctrine? One of the old cases talked about practical utility. That gets rid of a lot of the abstract idea problems.

A: But that creates the problems of State Street. A useful Arts test with utility req might work. Even in Alice, there was concurring opinion that said Stevens was right. Court should’ve taken State Street. Unfortunately, Court isn’t selecting cases right. I’m really upset they took Apple v. Samsung on the wrong issue. And then they take the cheerleader case, which is much worse if you want to define functionality. They aren’t getting the right issues. Maybe there were other things about Sequenom that troubled them. We need to error correct. But I don’t think the Court will.

Industrial utility highlights for me that these are legislative determinations.

Q: Alex Kasner piece in Stanford is great. What did they mean by “discovery”? And he does a long historical analysis.

A: When I think about Sequenom, I am astounded that the Supreme Court didn’t want to take this on. It is a breakthrough. It is a woman’s health issue. I’ve been told by Ariosa representatives that the patent was poorly drafted. But why wouldn’t it make sense to at least say this is the kind of breakthrough that is eligible. I don’t see that the Court has a good grasp of how people will respond. Seems odd to say if you do Nobel quality research, you are ineligible.

Commons - IPSC 2016

Commons - Breakout Session IV - IPSC 2016

 

Licensing Open Government Data – Jyh-An Lee

The Romance of the Commons – Sean Pager

3d Bioprinting Patent Boundaries – Tabrez Ebrahim

Governing Medical Commons – Mike Madison, Brett Frischmann & Katherine Strandburg

The North American Mitochondrial Disease Consortium:  An Emerging Knowledge Commons – Brett Frischmann & Katherine Strandburg

 

Licensing Open Government Data – Jyh-An Lee

Abstract: Governments around the world create and collect enormous amount of a wide range of data. For various policy reasons, open data has become a popular government practice and international movement in recent years. It is estimated that more than 250 national or local governments from around 50 developed and developing countries have launched open government data initiatives. Businesses have developed innovative applications, products, and services based on open government data. Open data policies have wide been recognized as a tool to foster government transparency and economic growth. Open data policy involves various legal issues. Among others, it is critically important for governments involved in the open data movement to devise a most appropriate legal way to release its data, and intellectual property (IP) licensing has been viewed as one of the main obstacles for governments’ open data releasing. Entrepreneurs may hesitate to use or re-use government data if there is no reliable licensing or clear legal arrangement. This Article focuses on legal issues associated with open government data licenses. Different government agencies with different policy goals have chosen different licensing terms to release their data. This Article compares current open data licenses and argues that licenses terms reflects policy considerations, which are quite different from those contemplated in business transactions or shared in typical commons communities. The licensing of government data also concerns some fundamental IP issues, which are not covered or analyzed in depth in current literature.

Victoria Stodden: Two questions about incrementalism - 1) What happens when someone applies a totally inappropriate license to data (share-alike, etc.)? 2) How do you cope with evolving / changing data sets?

A: 1) Compatability is the issue. For a creative common license, they can be interoperable. Some regions have taken account of compatibility in the license. But you are right that share-alike is not the most appropriate for government data licenses. In this paper, I argue that preventing commons from shrinking is not a policy goal, because the data is always there. 2) In regions that protect data, there is a danger that if you make a significant addition every year, you could protect data forever.

Sean Pager: <Couldn't hear Sean's question over some construction noise>

A: It's not easy to apply commercial concepts to a publicly funded database.

Brett Frischmann: In the U.S., there was a debate about needing to grant patent rights to incentivize universities to use information generated. Does that pop up in the public sector data context, like weather or traffic data? Do we need exclusive rights to incentivize use of the data?

A: One example, in the Netherlands, data generated about the city of Amsterdam has been made open access.

 

The Romance of the Commons – Sean Pager

I may be the anti-commons paper. I'm trying to push back on some rhetoric used by commons proponents in the copyright context that borders on magical thinking. Romantic commons theory is the opposite of romantic authorship, but ends up at the same dystopian endpoint. Romantic authorship critique: Copyright skeptics picked up a French deconstruction of the importance of authors. Copyright skeptics suggest that corporate entities usurp the benefits and use authors like a stalking horse to that end. 

Now, the romantic commons critique engages in some of the same magical thinking about the Internet and its ability to suspend the gravity of economic and commercial reality. Authors are undervalued and under-rewarded, while powerful corporate entities take advantage of the primacy of free movement of information on the Internet to usurp profits while authors fail to benefit. But the romantic commons critique mistakes volume for quality. People still send money to acquire commercial, professional content. Beyond a certain scale, it is difficult to make creative content for free. The romantic commons critique also mistakes technology for talent: home computers that duplicate 20th century technology doesn't turn the owner of the tech into a valuable creator. There is abundant content, but not of sufficient scope and ambition made by people with sufficient talent. Failing to compensate authors and incentivize creativity leaves us in a situation where, like the Olympics in the early 20th century, the only one who can afford to train / create are the ones who are independently wealthy.

Annemarie Bridy: 1) Define copyright skeptic. 2) Are we undervaluing authors, or simply a certain type of author? You seem focused on a certain type of professional, commercial level author. Why?

Sean Pager: 1) I am responding in part to the logic in papers like Lemley -  IP in a World with No Scarcity. That paper makes a number of the claims I'm directly critiquing. Diane Zimmerman, Eric Johnson - These are the copyright skeptics to whom I'm responding. 2) I think copyright needs to make allowances for non-professional authors, but I think the magic commons thinking undervalues professional level authorship.

Annemarie: You seem to be making a value judgment.

Sean: I am, measured economically, the money people are willing to spend.

Brett Frischmann / Victoria: Can you back that claim in aggregate value?

Sean: I'm thinking per work.

Victoria: If everyone were willing to part with 1/8 of a cent, frictionless, it might generate more money than fewer $5 tickets.

Brett: Are they necessarily mutually exclusive?

Sean: Not necessarily.

<Eager cross-talk>

Mike Madison: Scholars who make your style of argument more powerfully - Jane Ginsburg, among others, are making an express value-based, ethical argument. They are making a desert argument that isn't captured by a value-based, economic argument. The economic argument you are making may not be supportable. You are saying the dynamics of the system aren't making the things we (should) value.\

Sean: I'm talking about the rhetoric, not the economics per se.

Brett: McKenna is working about ambiguity of normative ends. There are a variety of ways to construct the world: fully supported professional class. You may need to think through the tradeoffs, and it may be difficult to make strong claims. 2) I'm not sure this is "commons" - you are using a romantic version of commons that is convenient for you, but I don't know if this is commons.

Mike: It sounds like you are talking to John Perry Barlow in 1996. That's not commons.

Brett: We commons scholars don't talk about commons this way.

Jyh-An Lee: Is there another term that might work?

Mike: I don't know what it is.

 

3d Bioprinting Patent Boundaries – Tabrez Ebrahim

3d Printing is an additive form of printing objects. 3d Bioprinting is a means of printing biologic material (tissues, organs) using the same additive process. For example, you can take tissue from someone's genetic makeup and print a tissue or organ. A potential problem - this sounds like a human organism, and under patent law, you can't patent a human organism. My paper is aims to define the boundaries of patentability and patent scope, and to analyze the ethics and morality involved.

Even if human organisms are not patentable, method claims, for example, might be patentable. In Europe, there is a morality test for living organisms (Article 53(a)).

With regard to ethics / morals, I'm investigating, in part whether patent law does / should embody ethical values in addition to economic values.  

Is 3D bioprinting different from and deserving greater scrutiny than 3D printing? Should it be regulated differently than 3D printing? 

I make two proposals: 1) claims of 3D printing should be shourter to avoid overreacher. 2) patent law should develop ethical limits, perhaps an "ethical PHOSITA (person having ordinary skill in the art), and perhaps the PTO should hire examiners with an ethical background.

One potential patentable claim: a Beauregard claim structure to claim what is printed in an electronic CAD file (storage medium). Are there limits when there are biologic elements? Is this "abstract material," post Alice? Is this a type of manufacture, or just abstract data?

I propose limiting the duration of the patent if we patent it, to enable quicker access. We might also consider regulatory limits on what can be marketed, although still patented.

 

Brett: Say more about ethical PHOSITAs.

Tabrez: I claim that there are ethical norms embedded, but not clearly defined, and we should clarify the ethics. There should be a morality inquiry regarding the PHOSITA.

Sapna Kumar: From an institutional design perspective, the PTO doesn't show any talent for ethical judgment. The FDA, on the other hand, is an entity that makes ethical judgments. Why not the FDA?

Jyh-An: When you say "needs more scrutiny," what needs more scrutiny?

Tabrez: Patentable subject matter - we should be making an ethical inquiry.

Mike: Deven Desai has been doing the most interesting big-picture examination of 3d printing technologies generally. His view is that 3d technology heralds the cusp of another industrial revolution - 3d printing is the steam. By raising the ethical implications of mechanical production and bioethics, you are adding something to the big picture. You have the introduction to a really interesting project, if you think beyond the technical questions for a certain subset of patents, and think broader about the intersection of 3d printing, health law, and ethics.

Brett: I find the patentability of this technology least interesting, and ethical, moral, and regulatory questions more interesting. In these sorts of fields, its often all about the upside. It's hard for me to know what the downsides are. Classifying and describing the downsides of what we do and don't know would be useful from an ethical / regulatory perspective. That's where I want to see you go.

 

Governing Medical Commons – Mike Madison, Brett Frischmann & Katherine Strandburg

This is a descriptive project. Knowledge commons = knowledge and information sharing institutions. The knowledge commons framework is a template for empirical research. We are trying to untangle empirical questions about tragic commons, scarcity, and abundance questions. We are looking at the institutions that try to solve knowledge and information production and distribution questions, coordination of researchers, preservation of information, etc. We are trying to capture what's actually going on, over time, systematically. We argue that collective action to solve these collective action dilemmas is 1) possible 2) without state intervention or strong IP rights. We are inspired by Elinor Ostrom's Instututional Analysis framework. 

Our first book, Governing Knowledge Commons, collects case studies on how knowledge commons are working. Our new book takes the same research framework looking at a more specific framework, Governing Medical Commons. We'll probably focus domain by domain in the future. 

What have we learned so far? No strong conclusions, but here are the headline takeaways: 1) knowledge commons may confront diverse obstacles / social dilemmas, which are not as simple as the free rider / tragic commons binary. 2) Knowledge commons operate / are nested within other complex systems. 3) Knowledge commons often depend on shared infrastructure. 4) Informal governance institutions, including trusted leadership, often play key roles. 5) Commons seem to play an important role in early stages of some industries. 6) There are many and complex motivations for individual participants.

In the medical commons context, we see the same things, but here are a few specific insights: 1) clustering and nesting - we see supply side, demand side, and infrastructural commons. 2) Data curation and coordination problems become clear. 3) Trusted leadership becomes critical. Social hierarchies continue to play a role - not clearly egalitarian systems. 4) Commons, esp. in this context, doesn't mean the absence of state intervention.

 Jyh-An: What's unique about medical commons?

Mike: It's hard to say in the abstract. This is our first domain specific book. But we chose medicine first in part because Brett and Kathy conducted an early case study in a medical area. Many scholars were engaging in relevant research in health and biotech. It's hard to say that knowledge commons are dominant / particularly salient in medicine. I want to do research into education knowledge commons. Michael Burstein is interested in entrepreneur knowledge commons. Then we can start explaining how different knowledge commons are distinctive, if they are. 

Amy Kapczynski: It may be interesting to ask, for example, how communities handle disputes. And it may be value to import this to conventional IP regimes / thinking.

Mike: Ostrom's design principles are curious, because they seem more like rules and guidelines. We spend 6-7 years trying to figure out how to do Ostrom-like inquiry that was flexible enough to investigate what we want to. It is important to think about porting into standard IP literature, and also information science people / IS community. Political scientists, institutional economists, are asking similar questions.

 

The North American Mitochondrial Disease Consortium:  An Emerging Knowledge Commons – Brett Frischmann & Katherine Strandburg

To respond to Amy's last question, we've looked at dispute resolution. For some knowledge commons, it ends up being unimportant. 

Amy: We made need more systematic inquiry into dispute resolution. Some case studies get at it, and some don't.

Brett: Ostrom's design principles arose from 30 years of case studies. We need to cast a broad net as we figure out how to get at what we want to know.

Our latest case study looks at another rare disease and a consortium looking at how to treat the disease. Rare disease researchers face challenges - they are treating a relatively small community, and information sharing and coordination is a critical issue. They want drugs / pharma, but you need data to attract pharma, so you need cooperation from a small community of patients and researchers. The consortium we studied, NAMDC, is a nested commons. The network and the consortium within the network is a good test bed for our framework and methodology.

A nested commons is various consortia that share protocols and research ideas at the macro level, and we zoom in on one member of these Rare Disease Consortia. The consortium we looked at has different members of the commons that belong to different institutions, like NIH, Pharma companies, and clinical research sites. And you can zoom in on a clinical research site like a hospital, and find another commons - different researchers, patients, families, and etc.

Main objectives for RDCRCs: 1) Creating pool of research subjects / patient data; 2) sustain / grow community 3) promote knowledge sharing among members of community, and to outsiders; 4) cooperate with patients in setting research agenda priorities; 5) translating research into treatment.

Consortia are complex environments. Researchers hope that solving mitochondrial disease may actually provide information that helps with other treatment.

In applying the knowledge commons framework to our study of this commons, we focused on seven "action areas", grouped in three categories: 1) Creating / sustaining collaborative research community 2) developing / managing shared pool of research subjects / patient data / biological specimens; and 3) managing relationships with pre-existing mitochondrial disease organizations. NAMDC is a new organization facing two challenges - a) treating patients, and dealing with the diagnostic dilemma - how best to treat patients when you have little data and b) developing a community and governance institutions. This lets us see an early history of a knowledge commons. 

Two problems manifest: research criteria is sometimes too strict, and sometimes there are data entry problems and conflicting opinions about how to code data received.

Sean Pager: A law question / datapoint. A researcher had a relationship with a group of patients, in a quasi-contractual relationship with patients. When the researcher left, the university kept the data, and a court concluded the university could do so, despite patient displeasure, and patient understanding that their relationship was with the researcher. Are these consortiums thinking about the ownership question?

Brett: Interesting question.

Mike: Data ownership is the undiscovered country w/r/t university research. Despite the facts there are massive amounts of data generated, stored, and used, the lack of attention at all to basic law / governance questions is striking.

Victoria: Or everyone assumes they own it.

Brett: Not held as a trade secret.

Annemarie: My husband works in this field, and there are many collective action / coordination problems.

<Excited cross-talk>

Brett: NAMDC owns / restricts access to data. Data is deposited at multiple institutions. 

Victoria: Participants say they want their data to be open, but standard informed consent principles seem to cut in the other direction.

Brett: There is a data use policy. If you are a NAMDC researcher, you can get access, buy you have to have your research project approved. Universities haven't asserted ownership to date. The NIH grants anonymized public access after five years. And I'm not seeing that patients in this research consortium about open access as much as privacy.

Yvette Liebesman: Some members of these communities are willing to take greater risks.

Amy: If hacking data is a crime, you do own data. People can't use property, so they are trying to use contract to govern data, which functionally works a lot like property. Contract does allow for some control over third parties.

Mike: Who the "my" is in "my data" is a complicated question, between patients, researchers, and the university.

IP, The Constitution, and the Courts - IPSC 2016

IPSC 2016 - Breakout Session III - IP, The Constitution, and the Courts

Lexmark and the Holding Dicta Distinction – Andrew Michaels

A Problem of Subject Matter: Patent Demand Letters and the Federal Circuit’s Jurisdiction – Charles Duan & Kerry Sheehan

Established Rights, the Takings Clause, and Patent Law – Jason Rantanen

A Free Speech Right to Trademark Protection? – Lisa Ramsey 

Lexmark and the Holding Dicta Distinction – Andrew Michaels

How do we distinguish dicta from holding? This project uses the Federal Circuit's dispute in Lexmark (on remand) over the breadth of the holding in Quanta. As Paul Gugliuzza summarized it for me (I was a late arriver), Michael's argument is that, rather than treating holding/dicta as a binary distinction, we should envision a spectrum of the types of things that courts say in their opinions. 

A spectrum approach to holding v. dicta might helpfully restrict courts. If a holding says "No red convertibles in the park", we might worry about a case where a subsequent court says the opinion requires a holding of no vehicles in the park. They are not unrelated, but perhaps still dicta. Broader statements should have less capacity to bind than narrower holdings.

Jason Rantanen: This is interesting. We often see doctrinal pronouncement in Federal Circuit's case, much broader than necessary to decide the case. We also see language from earlier court opinions that are clearly dicta. Panels in the Federal Circuit nevertheless use it later. I wonder, however, whether we should take into account how the court is using the language. For example, do we bind the court to holding language only, or might they be appealing to the persuasiveness of early reasoning. Your spectrum focuses on text as it appears in the early opinion, but is that too narrow? Can dicta apply? 

Andrew - Sometimes dicta is well considered. But if the court pretends it's a holding, and acts as if it is bound, then they are failing to adjudicate the dispute, and that's a problem.

Paul Gugliuzza - I think the Federal Circuit may engage in some over-use of dicta. Is there a prescriptive payoff to this spectrum? How does the court determine whether to follow the statement or not?

Andrew - The payoff is to require courts to deal more directly with the question of dicta.

Pam Samuelson - I think it's interesting when dicta becomes a holding, over time, and solves a problem. For example, the 3rd Circuit (Whelan) case had a lot of broad dicta that led to a lot of litigation. But the 2d Circuit also included a lot of dicta in Computer Assocs. v. Altai, and the dicta from the that case seems to have knocked out Whelan, and been followed, correctly from Pam's view, in many other circuits.

A subsequent observation from Paul: I think the spectrum provides an interesting descriptive contribution, but I wonder whether, instead of arguing whether a statement is holding or dicta, we'd just end up arguing about (1) where on the spectrum a particular statement falls and (2) whether, given its location on the spectrum, it's binding law or not.

 

A Problem of Subject Matter: Patent Demand Letters and the Federal Circuit’s Jurisdiction – Charles Duan & Kerry Sheehan

States are passing laws designed to cabin patent demand letters. We might presume that the Federal Circuit has primacy, but this paper argues the question isn't so cut and dried. The Supreme Court, in a case about attorney malpractice, held that there should be a balance struck between the interests of the federal courts and the state's consumer protection laws.

In a demand letter case, we could ask whether 1) this raises a sufficient issue of federal patent law, and 2) is the law unconstitutional or improper. To understand the second question, look to the Federal Circuit's Globetrotter case. The patent holder threatened to send letters to the defendant's clients. The defendants sued for tortious interference, and Fed. Cir. held that the Patent Act preempted acts that prevent sending demand letters.

We argue there is an odd disconnect in the Federal Circuit's analysis. It's a mistake that makes the Federal Circuit's jurisdiction appear larger than it is.

What is the right policy outcome? Should the Federal Circuit have primacy here? The uniformity issues that inspired the creation of the Federal Circuit doesn't necessarily reach every case that touches on patent law, and perhaps these demand letter cases are outside the needs of the uniformity requirement.

Jake Linford: I'm unclear on where the line is between the stuff the Federal Circuit controls and the stuff it doesn't. It sounds circular to me. Help me understand.

Charles: The Supreme Court doesn't take the view that the Federal Circuit is the final arbiter of all patent issues. The Christensen and Gund cases are examples where the Supreme Court put the responsibility with the Seventh Circuit and Texas courts respectively. Questions of validity of the patent may go to the Federal Circuit, but not claims about a clearly invalid patent.

Lisa Ramsey: One of the reasons this is so important is because people will get different results before a state court than the Federal Circuit. Is that right?

Charles: It's unclear. If we sort some cases for the Federal Circuit and others for the states, we might get divergent outcomes.

Pam Samuelson: How does the issue of validity of the patent get to the Federal Circuit if the case starts in state courts? 

Charles: Removal is the mechanism. 

Pam: If so, then how do we take the ability of the Federal Circuit away? If the Federal Circuit decides whether it has jurisdiction...

Charles: Perhaps the Supreme Court takes cert?

Paul Gugliuzza: What triggers the arising under jurisdiction of the patent clause? Isn't this a matter of patent jurisdiction?

Charles: I'm not sure this meets the Constitutional language...

Paul: The Federal Circuit may rely on Globetrotter, even if I disagree with them. 

 

Paul Gugliuzza sent me the following summary of the Duan - Sheehan paper, which I find much better than my own:

The paper focuses on state law tort/unfair competition claims against patent holders, such those brought under the new anti-troll statutes adopted in over half the states.  As a substantive matter, Duan and Sheehan criticize the Federal Circuit for giving patent holders nearly absolute immunity from civil claims based on their enforcement behavior, an issue I’ve written about here:  http://ssrn.com/abstract=2539280.  As a matter of institutional policy, they argue that the Federal Circuit is poorly suited to assess the constitutionality of laws regulating patent assertions because the court has embodied various problems theorized to be associated with specialized courts, such as rule-orientedness, a detachment from broad policy concerns, and, perhaps most importantly, capture.  The Federal Circuit’s orientation toward patent holders, they seem to be arguing, would make the court too suspicious of government efforts to regulate patent holders.  Accordingly, they make a doctrinal argument that a challenge to the constitutionality of an anti-troll statute does not “arise under” patent law, as is required for the Federal Circuit to have appellate jurisdiction.  

 

I’m not sure about this.  I agree that, after the Supreme Court’s 2013 decision in Gunn v. Minton, a civil case challenging patent enforcement behavior does not “arise under” patent law.  The embedded patent law issues would be about the validity or infringement of a particular patent—the sort of case-specific issues that are not sufficient to create “arising under” jurisdiction.  But, in my mind, there’s a distinction between those case-specific issues and those that would be raised by a counterclaim seeking a declaratory judgment that a state anti-troll law is unconstitutional.  I suspect the Federal Circuit would say that THAT claim DOES “arise under” patent law, as it raises the issue of whether federal patent law “preempts” state law.  After the AIA’s so-called Holmes Group fix, that counterclaim would be sufficient to confer jurisdiction on the Federal Circuit.  Perhaps a better argument against Federal Circuit jurisdiction is that the federal issue is not preemption by the Patent Act, but the constitutionality of the statute under the First Amendment.  In that circumstance, the case would arise under federal law, but perhaps not federal PATENT LAW, meaning that the Federal Circuit would NOT have jurisdiction.  (In the article linked above, I argue that the Federal Circuit has erroneously stated that immunity for patent holders is about “preemption” of state law when, in fact, the court is actually drawing on the First Amendment right to petition to the government.)  In any event, this is an interesting and provocative project.  And if you’re still reading at this point, cheers to you for your commendable enthusiasm about patents and procedure!

 

Established Rights, the Takings Clause, and Patent Law – Jason Rantanen

Recent arguments have suggested that when patent laws change, the takings clause may be implicated. I wanted to understand the analytical reasoning behind the takings claim. Takings case law is a deep, Alice-in-Wonderland rabbit hole.  How does it actually apply to patent law?

1) Jason agrees that patents are property subject to takings clause. (The Federal Circuit said no, in Zoltec, when the government infringes the patent. The Supreme Court, instead, suggested in dicta in the raisin takings case, that patents are the type of property subject to the takings clause)

2) But it's inappropriate to cut and paste takings case law to patent cases. Patents aren't like rights in real property. We know what a takings of a coal mind looks like. Patents aren't the same. In addition, one key right "taken" is the right to use, and the patent holder doesn't lose the right to use, only the right to exclude or alienate. So application of standard takings cases is difficult.

3) The question is instead whether the new law changes or destroys an "established property right" in the patent. That's the taking, if there is one. What's an established property right? The type associated with property, established with a high degree of legal certainty. See, for example, the Penn Central case, where the Supreme Court is looking for certain rights. If we are looking for high degree of legal certainty, many aspects of patent law has changed significantly and frequently over time. Patent has replaced the entire statutory framework at least four times, with only very minor exceptions. For example, when Congress passed the 1836 Patent Act, it replaced the prior act, and also applied the new act to pending litigation. There are many similarities, but this is a new draft. Same with the 1952 Act: "It shall apply to unexpired patents." Damages changed dramatically, as summarized in Halo v. Pulse. Patent owners used to get treble damages automatically, and they don't anymore. Patent holders in 1836 lost that right while claims were pending.

Lisa Ramsey: One argument against cancellation in the Redskins case is takings. 

Jason Rantanen: The Redskins case considers whether the right was valid in the first place, which falls outside of standard takings analysis.

Camilla Hrdy: You may want to consider why the Supreme Court has held a trade secret can be taken. If so, why not a patent?

 

A Free Speech Right to Trademark Protection? – Lisa Ramsey 

The Federal Circuit recently held that the 2(a) bar against registering disparaging trademarks is unconstitutional. Lisa's paper aims to make two unique contributions to literature on disparaging trademarks and the First Amendment:

1. Is there a right under international treaties to be able to register a disparaging or scandalous trademark? The answer is no.
2. A framework of six elements that should be applied in deciding whether laws against offensive trademarks run afoul of free speech rights.

The U.S. is not the only country that bans registration of scandalous marks. Canada even bans use. 

We are members of the Paris Convention, which gives signees the discretion to decide whether to deny a registration on the grounds that a mark is contrary to morality or public order.

Lisa's framework (and 2(a) seems to meet most of these conditions):

1. Is there government action? Who regulates the expression?
2. Suppression, punishment, or harm: How does the regulation harm expression? Are there unconstitutional conditions imposed on speakers by denying the benefit? Lisa says no, because the benefit being denied is the right to restrict the speech of others.
3. Expression. What is being regulated?
4. Is this individual or government speech? Whose expression is regulated?
5. No categorical exclusion for the expression: Is the regulation justified because of a categorical exclusion, like obscenity or misleading commercial expression?
6. Does the regulation fail constitutional scrutiny? Is it content-neutral or content-based? That triggers different levels of scrutiny in the U.S.

What could the Court do if it wants to uphold 2(a)? 1) Say it's not suppression or punishment, and the unconditional conditions doctrine does not apply, under factor 2. 2) It satisfies the scrutiny under 6. 3) Make a "traditional contours" argument like in Eldred and Golan. 

Saurabh Vishnubhakat: Pushing on Lisa's state action analysis, if we apply Shelly v. Kramer broadly (where the Supreme Court refused to allow the enforcement of racially restrictive covenants in court, and which may be limited to its fact), that may suggest everything is potentially a state action?

Rebecca Tushnet: If the Court is taking a "hands off" approach to conflicts between trademarks and the First Amendment, then doesn't hands off mean no registration? Isn't that state action?

Lisa: It is state action.

Rebecca: Then isn't everything state action.

Lisa: There are real benefits to registration that impacts the first amendment. Demand letters work better when backed by a registration. And when you have a registration, it's easier to push claims that some see as questionable, like dilution and merchandising cases.

Charles Duan: When it comes to disparaging marks, those have particularly strong expression value - used to express feelings, and therefore even worse to restrict than other registrations.

Lisa: Exactly!

Pam: Is there an international standard?

Lisa: No, as I read the law, each country has discretion to set up the system it prefers.

Copyright Doctrine: IPSC2016

IPSC - Breakout Session II - Copyright Doctrine

Summaries and discussion below the break. If I didn't know the questioner, I didn't guess. If you asked a question and I missed you, feel free to identify yourself in the comments.

Copyright State of Mind – Edward Lee

Reforming Infringement – Abraham Bell & Gideon Parchomovsky

Authorship and Audience Appeal – Tim McFarlin

Free as the Heir?: Contextualizing the Role of Copyright Successors – Eva Subotnik

 Leveraging Death: IP Estates and Shared Mourning – Andrew Gilden

 

Copyright State of Mind – Edward Lee

Offering a descriptive taxonomy about how state of mind is used in copyright law.

2d Circuit in Prince v. Cariou: transformative use, the first factor in the fair use test: objective state of mind

9th Circuit in Lenz v. Universal: DMCA 512(f) violation: subjective state of mind

State of mind re: copyright liability - it is often said that copyright infringement strict liability. This differs from criminal law, where mens rea (criminal intent) typically matters.

If we look beyond liability, state of mind figures prominently in many different copyright doctrine. For example, authorship, including intent to be joint authors (both objective indicia and subjective intent). We haven't considered the intent of the lawsuit - are we protecting copyright or privacy, for example, but Judge McKeown on the Ninth Circuit recently argued we should. For ISPs, we have the red flag cases which have both subjective and objective elements.

Dave Fagundes: Property also deals with intent. Adverse possession and first possession have a whole mess of intent-related doctrines. Perhaps the ownership intent doctrines might help conceptualize these issues.

Pam Samuelson: Think about remedies as well. Innocent infringement, as well as willful infringement. It can play out also in relation to injunctive relief. Plaintiff's state of mind might matter with regard to obtaining injunctive relief. See also the new Kirtsaeng attorneys' fee case.

Ed Lee: Perhaps I should also look at the Supreme Court's patent cases.

Matthew Sag: If there is a universal theory about what state of mind should be for any of these doctrines, is there a logic that connects us to why we have copyright in the first place?

Ed Lee: I'm skeptical of a uniform theory. See, for instance, DMCA which is a negotiation between stakeholders.

Dmitry Karshtedt: My understanding is that civil liability more objective than subjective, while for criminal liability, intent is more subjective. and should we see the same play out in copyright?

 

Reforming Infringement – Abraham Bell & Gideon Parchomovsky

We have an immodest goal of reforming remedies in copyright, more systematically including culpability in the analysis. Under the reformed regime, we would treat inadvertent infringement (where the infringer was unaware and couldn't reasonable become aware) and willful infringement (blatant disregard of copyright law) different from standard infringements (with a reasonable risk assumption).

The close cases are in the middle category of standard infringement. The default is standard infringement. Compensatory damages should be awarded in every case. Injunctions would be rare and no restitution for lost profits awarded in the inadvertent cases. We are trying to preserve statutory damages only for cases where it is difficult to prove actual damages. So the defendant in the standard infringement case could argue that statutory damages exceed actual damages.

Why bring it in? 1) Information forcing - incentivize owners of copyright to clarify ownership and terms of licenses. 2) Avoid overdeterrence of follow-on creation. 3) Increase fairness.

Ted Sichelman: In the patent context, we worry about transaction / licensing costs. It may matter for copyright as well. For example, if the work is an orphan work, why should I face huge potential liability?

Abraham: The inquiry should account for the difficulty of finding the copyright owner.

Ian Ayres: Does any kind of negligence go to willfulness because there is no reasonable basis for non-infringement?

Abraham: It's not clear how we would calculate such a thing: What is a reasonable risk, re: evaluation of risk of law. We're treating standard as a residual category. But we are still arguing about this point.

Pam Samuelson: Have you been thinking about remedies re: secondary liability? The framework appears to deal with direct liability, but secondary liability cases may be the more complicated cases, where we wonder how culpable is the platform? The statute tries to grapple with through 512.

Abraham: We didn't think about secondary liability until we talked with Lisa Ramsey last week.

Pam: Secondary liability is the area that needs the most reform!

Abraham: We'll have to bracket this right now. Secondary seems to follow primary, and we don't have a better model right now.

Shyam Balganesh: How much of your proposal unravels other parts of the system? Are you accounting for systemic effects? For example, if information forcing matters, why not deal with that through a heightened notice requirement? Do you think infringement is independently problematic, or is it the best place for achieving information forcing goals?

Abraham: Unlike information forcing, overdeterrence is harder to fix with levers in other places. This isn't the only way to accomplish these goals, and we don't claim that, or that it's the best way.

Jerry Liu: Is it necessary, from an overdeterrence standpoint, to distinguish between willful and standard infringement? Google Books was arguably willful infringement, but it was also efficient infringement.

Abraham: I think Google probably was a standard infringer, from a culpability standpoint. They took a fair use gamble, and they won.

Jerry: How about the MP3.com case?

Abraham: You can make an argument that format change / transferring medium is fair use, so standard.

 

Authorship and Audience Appeal – Tim McFarlin

Recent projects have looked at disputes between Chuck Berry and his piano player, and Orson Welles and a script-writer. In both cases, questions of audience appeal have been nagging at me, and I want to explore that further.

Can we better use audience appeal in the infringement context than the authorship context?

Audience appeal, from the Aalmuhammed v. Lee case (9th Cir 2000), is an important factor. Audience appeal turns on both contributions, (by potential coauthors), but "the share of each in the success cannot be appraised," citing Learned Hand.  If that's right, and we can't evaluate audience appeal in the authorship context, is it a junk factor? If we can, how do we do it? And if we can, should we?

What do courts do with audience appeal? Mentioned in 21 cases, but 9 ignored it in reaching the decision. 9 found it weighed in favor of joint authorship, and 3 found it weighed against joint authorship?

How do we appraise it? If we find evidence of audience appeal from both contributions, at what point is the smaller contribution too small? 60/40?

Might audience appeal help with questions of infringement, for example in the Taurus / Led Zepellin case? Might we consider the appeal of Stairway to Heaven v. the appeal of Spirit's Taurus as a reason for public interest to weigh against injunctive relief? See Abend v. MCA (9th Cir. 1998).

Jake Linford: Perhaps talk to Paul Heald about his research on how musicians copy from each other. There is some potential danger in using audience appeal to decide infringement, injunctive relief, or damages, because that leads to a copyright regime where the party who is best-placed to take advantage of the works gets to use and make money with it, even if that party doesn't pay.

Peter DiCola: You are right to challenge Learned Hand. Audience appeal can be appraised. The question is whether it can be appraised convincingly. The part about in general where does audience appeal matter may be too general, and may not be at the heart of your paper.

Pam Samuelson: Some works have audience appeal, some don't, and it might not be relevant for unconventional expressive works For example, the internal design of computer programs are not appealing. You may need to unpack works where appeal matters and where it doesn't.

Jani McCutcheon: Watch where trademark and copyright protection overlap on this issue.

 

Free as the Heir?: Contextualizing the Role of Copyright Successors – Eva Subotnik

This paper is inspired by two recent controversies surrounding Harper Lee and To Kill a Mockingbird: the appearance of Go Set a Watchmen, and the decision by her estate to pull the student-priced paperback from the marketplace. Both of these stories are murky. Lee may not have been in her right mind when Go Set a Watchmen was released, and the announcement from Hachette about the student-priced paperback suggest both the estate and Lee wanted the low-priced version discontinued.

Should motivations of the author or the heir matter for copyright decisions? Eva argues that it should. The law should be tougher on post-death copyright successors. We should treat them more like stewards, and require some duties on their part. If copyright ownership limits post-mordem access, heirs should be encouraged to take care.

What might stewardship mean? It has its origins in theology, traditionally applied to land. It's taken on a secular cast today. Stewardship suggests that the owner has duties as well as rights. Stewardship has something in common with commons advocates - copyright should be forward looking, and concerned about future generations. Bobbi Kwall has argued that authors are stewards, and I think it should be applied to heirs as well. Unlike authors, publishers, and distributors who did work with the work, stewardships step in as recipients of a gift, and perhaps they should step into some duties.

Application: Eva doesn't argue for a statutory change, and it's not clear stewardship would change the analysis of the Harper Lee issues, but stewardship could change fair use analysis, for example with biographers and scholars. When the heir has the ownership of a sole copy, stewardship could matter [JL: unclear to me how]. Perhaps stewardship could allow authors to better shape stewardship of their legacy. [JL: Doesn't the termination provision already exclude wills?]

Brad Greenberg: A potential disconnect between assignments and statutory heirs of termination rights. What if the author's assignee is a good steward, and the children are poor heirs, from a stewardship standpoint? Is Stewart v. Abend's analysis of the renewal right a problem for your analysis? Should we also apply stewardship duties to non-author copyright owners?

Eva: To my mind, a post-death successor gains enhanced prominence in managing the copyright after death, and I'm trying to say something specific to that group of copyright owners.

Dave Fagundes: I like the idea of stewardship, but it's still inchoate, and I can't tell to whom is the steward responsible? The work? The public? The author's intent? What if authors wanted their families to be taken care of?

Eva: You could also add the author's legacy, which may differ from author's intent. [JL: This reminds me of Mira Sundara Rajan's project from the first breakout session.] 

Ed Lee: Perhaps the moral rights of integrity literature could also be helpful, which is more about legacy than children.

Giancarlo Frosio: French case 2007 might be helpful. See also Kant.

 

Leveraging Death: IP Estates and Shared Mourning – Andrew Gilden

Scholars seem to distrust claims by estates and heirs, but the tend to succeed in advocating for statutory change, and winning cases before the courts. But I found some recent claims that sound in mourning and grief that perhaps we shouldn't discount in copyright and right of publicity cases.

IP Narratives that are traditionally invoked:

1) Anti-exploitation. Randy California was badgered for years to sue Jimmy Page, but his heirs stepped in to claim some recognition for him.

2) Family privacy. James Joyce / J.D. Salinger estates

3) Purity narratives. Limit downstream uses, especially those that raise potential sexual purity. 

4) Inheritance. It's all that the author left to the family.

5) Custody (like child custody). Children as caretakers of the work.

Copyright scholarship tends to ignore these types of claims, but we see them invoked successfully in cases like family businesses, bodily disposition, organs and genetic information, digital assets, like email, and succession laws dealing with omitted family members.

What would happen if IP took these interests seriously? Perhaps there is a desire for shared mourning and grief, both by authors' heir and fans. Fans circulate and disseminate broadly as part of public mourning, but mourning families look inward, seek silence, achieve some semblance of privacy. These interests might not be as irrational as we might think.

One solution might be to bring issues of estate planning more to the fore. Marvin Gaye and Frank Sinatra created a family business when they secured copyright, whether they meant to or not.

Rebecca Curtin: You've made a very sympathetic case, and you've repeatedly spoken about family. Do you mean family, or could you include designated heirs, like the Ray Charles foundation? What might that mean?

Andrew: We may need to think differently about those who inherit intestate and those who don't.

Brad Greenberg: The incentive theory of inheritance suggests that authors will create in part to benefit children. But there could be a labor theory of inheritance: this was the authors, like the children, and it goes to the children. In addition, is this really about IP, or just copyright?

Andrew: Copyright and right of publicity. My take is more of the labor than the incentive theory.

Q: Why does the right publicity survive death?

Andrew: Jennifer Rothman has a very good paper on this. Right of publicity is labelled as property, and property descends, so in some states it descends.

Peter DiCola: I enjoy the presentation, and I ask not to upset the applecart, but what might the First Amendment tell us about these arguments about importance of controlling meaning?

Andrew: I don't think these insights should change fair use outcomes, but my concern is that heirs' motivations are okay, especially in light of how they work in other cases. The emotional appeals are not inherently problematic. (Although I have some problems with the purity rationale).

Jake Linford: Is this project normative as well as descriptive?

Andrew: It started more descriptive, but normatively, I see no problem. Prescriptively, perhaps we could ask authors to be more clear about how their intent at registration / protection, for example.

Giancarlo: Is there space for a moral rights style argument here? 

Andrew: Perhaps attribution is the best moral rights claim.

Giancarlo: Is there a mechanism is the composers of Blurred Lines had said no? Can you make the heirs grant a license?

Andrew: Blurred Lines is a declaratory judgment action - the derivative authors brought the case to foreclose liability.

Tim: The estate's emotional appeal in the Taurus complaint may have been somewhat strategic, trying to deal with the perception of greedy, rent-seeking heirs by promising to give money to sick children.

 

 

IP for Characters & Symbols: IPSC 2016

IPSC 2016 Breakout Session I: IP for Characters and Symbols

I summarize the following presentations, and the discussions about them, below the fold. If I didn't know an audience participant, I didn't include a name, but if you are an anonymous commenter,  tell us who you are in the comments.

Is Copyright an Author’s Right? An Authorship Perspective on Copyright Law – Mira Sundara Rajan

Works of Fiction: The Misconception of Literary Characters as Copyright Works – Jani McCutcheon

Zombie Cinderella and the Undead Public Domain – Rebecca Curtin

Trademarks, Core Values and Cultural Leadership – Deborah Gerhardt

Intellectual Property in Internet Folklore – Cathay Smith

Mira Sundara Rajan, Is Copyright an Author's Right? An Authorship Perspective on Copyright Law

Copyright is arguably the only regime designed to promote culture, and that should mean providing income to creators. But many authors struggle to make a legitimate income. Mira is concerned that copyright isn't correctly calibrated to that end. At a minimum, authors need more voice.

Lisa Ramsey asks whether Mira plans to frame this as a human right or some other way.

Mira: International law mentions a moral right of authors as a form of human rights. But the Berne treaty may effectively embody human rights in automatic protection at creation.

LRamsey: But then might the human right to copyright conflict with a human right to free speech? And if corporations hold copyright, is it proper to think about copyright as a human right?

Shyam Balganesh: There are two ways to look at copyright - looking at authors rights, and looking at the acts that authors take. You propose that the net income of authors is low, but it's not clear that copyright is the right mechanism to enhance their welfare. Perhaps authorship is the better focus than authors.

Mira: Japan grants to corporations something that looks like a human right in authorship functions, and Japan is an outlier here.

 

Jani McCutcheon, Works of Fiction: The Misconception of Literary Characters as Copyright Works

Fictional characters qualify as protectable copyright works in large part because of a problematic Learned Hand opinion, Nichols v. Universal Pictures Corp.  But to protect characters as works, they must be identifiable. But where is the character perceived? You can't excise the character from the text, and characters are more abstraction than expression. If we are separating characters out as works, is there a right and a wrong way to read or construct the character. If not, it may be impossible to define the character as a protectable work. Characters traverse different media, which further complicates the question.

Deborah Gerhardt: Copyright has so many tests for the same thing. I love clear rules, I love the Feist opinion because it is clear. I'm resistant to your analysis because it gives us an entirely different originality test for characters than anything else.

Jani: I'm not sure we should be looking for a way to define the character, and I wouldn't apply the test to characters at all.

Betsy Rosenblatt: I'm quite sympathetic to the project, but I'll ask a question I've been asked. Why isn't this a problem for all of copyright? Reader response theory suggests all interaction with copyrighted works is dialogic. If so, this is a universal problem for copyrighted works. Perhaps this is similar to [Guy Rub and Margot Kaminski's] zoom-in, zoom-0ut problem.

Jani: This may be a broader phenomenon.

Lisa Ramsey: This reminds me of Betsy's work on Sherlock Holmes. But I'm conflicted. Some characters are well-delineated. If I add Harry Potter to my law school novel, is there any infringement? Of what?

Jami: What do we mean by take Harry Potter? Under my analysis, if little of the expression has been taken, and there is little / no substantial similarity between the works, there is no infringement. Admittedly, the name is potent, but because of trademark significance. 

Inayat Chaudhry: What if there are characters like Calvin & Hobbes, and the whole work is based on the characters?

Jami: This is a hybrid work, with visual and literary components, which complicates the analysis. 

Seagull Haiyan Song: I agree the current test doesn't work. But if copyright protection isn't the right solution, should there be something else? Protection of character rights as such?

 

Rebecca Curtin, Zombie Cinderella and the Undead Public Domain

[Is this the best title of the conference?]

Someone tried to register "Zombie Cinderella" as a mark for a doll. There was an initial refusal grounded in confusion with Disney's Cinderella. The Trademark Trial & Appeal Board reversed the refusal, holding the "Cinderella" part of Disney's mark was a conceptually weak indicator, in part b/c of third party dolls on the market, and in part b/c of long history of the Cinderella story.

The danger here is that the signal sent is that Disney should have worked harder to protect the mark. And we see protectable marks for Cinderella soap, cosmetics, etc., and that doesn't seem problematic in the same way. Is Cinderella generic for dolls? That doesn't seem quite right, and genericism doesn't fully animate what the public domain story lends to the underlying good.

Instead, I'm thinking in terms of extending the aesthetic functionality doctrine to cultural elements. Trademark needs a doctrine to deal with the use of fairy tale princesses as trademarks or brands.

Betsy: Aesthetic functionality is what Tyler Ochoa suggested to me instead of genericism as the solution to the Sherlock Holmes problem. I want to make a push for genericism (I'm glad you didn't go to descriptive). You are right - it's not descriptive for dolls, but it is the generic descriptor for the character. You can't call Sherlock anything other than Sherlock, and you can't call Cinderella anything other than Cinderella. We use nominative fair use to deal with it on the infringement side, but we should have to. Here, the term Cinderella is generic for what the product represents. AF is a poor fit: oxymoronic, and it seems to ask whether we buy something because it is pretty / attractive.

Deborah Gerhardt: Perhaps we need a public domain for characters like these.

Ann Bartow: Is this like copyright title, where you don't get protection in titles? [Jake: trademark handles title differently, for books - no protection for a single book, but protection for a series of books (Harry Potter & ___) or magazines.

Ed Lee: I would prefer a more full-throated defense of the public domain created by the copyrighted work aspect. You could try to recapture a trademark public domain - what's the proper boundary of a copyrighted [cultural?] character in the public domain. [JL: Is this then a Dastar problem - no trademark protection because the character as cultural artifact in doll context belongs in the copyright bucket, and protection has expired?]

Laura Heymann: You may benefit from disaggregating the individual aspects of Cinderella and her characteristics. United used Rhapsody in Blue - the fact that it's in the public domain doesn't necessarily mean it cannot have some trademark function, so more careful pulling apart may be valuable.

 

Deborah Gerhardt, Trademarks, Core Values and Cultural Leadership

A trademark may represent core values around which a community can coalesce. When you look at a brand community, what values does it have? Is the communal identity potential harmed by dilution, for example?

For example, brands are now pressured to make a stand on cultural issues. Target, for example, acted to restrict open gun carry in its stores. Here the brand is used as a tool for political reform. PayPal refused to bring in a business center in direct response to North Carolina's HB 2.

To have a mark strong enough to support a dilution claim, perhaps some identifiable core value is the minimum. If so, dilution harm is a disruption between the core value and the ostensibly diluting use. Goldfish crackers with marijuana - there may be disruption between core values and the brand. Louis Vuitton parody toy handbags? No disruption of the core value, merely playing with the core value. [JL: If that's right, is this anything more than a parody non-parody analysis? Not clear to me.]

Andrew Gilden: Does your "core values" require a popular political stance, or cultural buy in? If the majority turns in favor of equality, is this really a "core" value.

Deborah: Imagine that someone else had interfered with Ashley Madison's ability to signal its core value of secrecy and discretion. That might be a core value that the majority of Americans doesn't "value," but it at the core of Ashley Madison's brand identity.

Andrew: What if Christian Mingle tried to adopt an abandoned Ashley Madison brand.

Deborah: Sometimes core values are forged in crisis.

Seagull: Core values, under your definition, seem like they must be shifting.

Laura Heymann: Do you need to distinguish between value and core attribute?

 

Cathay Smith - Intellectual Property in Internet Folklore

Are there protectable rights in internet folklore? My project looks at the evolution of Slenderman, his propertization, and the coming movie, to investigate this question, and ask who is benefitted and harmed.

The character first showed up on the Something Awful website, in an image posted by Victor Surge.  At first, people posted their own "sightings" of Slenderman without claiming any ownership of the character. But as the character has become more popular, parties have begun claiming ownership rights. At least two short films posted online were taken down after receiving a takedown notice. But the provenance of the ownership is uncertain. The claims lead to a chilling effect.

Is there ownership in Slenderman? Cathay argues no - Slenderman as we understand him wasn't fully developed with the first Victor Surge posts, but collectively as he became popular. She also argues factual estoppel - if the author(s) claim Slenderman is a real person and posted sightings are factual, then copyright claims might be estopped. Rights in the name of the title / name are also weak, under Rogers v. Grimaldi.

Normatively, property rights seem unjust. The Hollywood blockbuster isn't giving back to the community. This is also a nice example of chilling effects. In addition, propertization runs counter to community norms and ethos.

Ed Lee: Copyright might be a bad fit. Perhaps attribution, as a sui generis right, should be respected.

Cathay: Do you mean giving rights to the community, or preventing propertization of something created by the community.

Ed Lee: There are a range of options. I mean something more unleashed / free than standard property rights.

Lisa Ramsey: This reminds me of the orphan works problem - who is the owner? There are also joint works problems. So under current copyright doctrine, if people are fixing individual images, those seem independently protectable. Are the derivative works, derived from what version of the character, and if so, can you get protection in them? 

Q: Is this character just a standard bogeyman? How much of this is really new? [Lisa Ramsey: Scenes-a-faire]

Seagull: Might we get something from creative commons analysis.

Q: Other commons uses of musical communities might also be valuable to consider.

IPSC 2016 First Plenary Session

Thanks to Rachel Sachs for the following summary of the opening plenary session at IPSC! The following papers are summarized, and Q&A recounted, below the fold.

Scarcity of Attention in a World without IP
Jake Linford

What’s In vs. What’s Out: How IP’s Boundary Rules Shape Innovation
Mark McKenna & Christopher Sprigman

Patent Clutter
Janet Freilich

What We Buy When We “Buy Now”
Aaron Perzanowski & Chris Hoofnagle

 

Jake Linford: Attention Scarcity in a World without Copyright

The standard account of copyright is that we have it and impose artificial scarcity so that artists can recoup their sunk costs in creating information. But the costs of creating/disseminating information have fallen, and some argue that maybe we should narrow copyright as a result.

This paper argues that narrowing copyright for this reason may be too hasty! It does so by introducing a complicating wrinkle: attention scarcity. The cheaper it is to disseminate information and the more information we get, it may create information gluts. Information gluts can impose costs on consumers, including consumers of copyrighted expression. And the competition for scarce attention is often a zero-sum affair, in which competitors benefit by using copyrighted expression (some of which they don’t pay for and thus use impermissibly) to attract and manipulate scarce attention. As such, some calls to reduce copyright protection may worsen these problems of attention scarcity and information gluts.

Linford does consider the possibility that less copyright protection is better for attention scarcity. What might happen if we reduce copyright protection? One option is that we have less entry. If we have narrower protection then there’s less incentive to enter, but then at the same time there are lower “expression costs.” With copyright retained, you have a relatively higher incentive to create, but you also have higher expression costs. Linford’s concern is that lowering protection might result in less creative or distinct entry, things that are more similar to each other, which is duplicative and results in wasteful racing to capture the first-mover advantages for derivative works. Here, Linford relies on recent work by Joe Fishman (Vanderbilt) arguing that constraints imposed by copyright can sometimes push creators to be even more creative, work that is supported by recent psychological research.

Lemley question: It turns out that crowdsourcing is at least as good and maybe better than expert selection in helping us separate good from bad creative works. So yes, if twenty people make a derivative Star Wars movie, the crowd is good at telling us which is good and bad. Are we really worse off?

Linford: One key danger is that Lucas has to rush out The Empire Strikes Back to compete with those twenty derivative movies, and we may be concerned about the effect of that pressure.

Betsy Rosenblatt: We live in a world where trends are pervasive, even in a world with heavy copyright. One successful horror film leads to twenty more mediocre ones. People tire of sameness. The solution doesn’t seem to be “stop the trend from happening,” it seems to be “let the trend run itself out.” Information scarcity may not create the problem/solution set Linford is describing.

Linford: Thinks what’s more likely is that trends will purge themselves by, instead of having 20 horror movies that pick up the tropes of the genre, you end up with 20 more identical horror movies. The more you narrow it, the more similar those interpretations are.

Mark McKenna & Chris Sprigman: What’s In vs. What’s Out: How IP’s Boundary Rules Shape Innovation

Central question: What sorts of things are sorted into the utility patent system rather than design patent, copyright, or trademark law? This matters for the current utility patent debates over patentable subject matter but more importantly for the tructure of the system overall. Copyright, trademark, and design patents all have doctrines designed to exclude useful or functional matter on the grounds that such matter is the proper domain of utility patent law. They define themselves in opposition to utility patent law. They all police the boundaries differently, and with different levels of rigor. They don’t do it because the material doesn’t otherwise meet the requirement of those systems – functional material may still indicate source (trademark) or have expressive content (copyright) – but they do it because we think it’s the domain of utility patent law. Mark & Kathy STrandburg have called this the Utility Patent Supremacy Principle. This only works if the other systems have a reasonably clear view of what belongs to the utility patent system.

However, in their view the sense of utility patents deployed in other areas of IP is quite reductive and intuitive, and lack of a clear sense of patent law’s boundaries creates problems both for patent law and these other fields. It’s especially hard to apply when utility patent eligibility is in flux, as it is now. Patent law itself has an inconsistent sense of its own grounding – what counts as technological innovation?

Conundrum: there’s a widespread belief that utility patent law focuses on technological innovation, but in practice that’s inconsistently enforced. Yet all other areas of IP act as if there’s a clear sense of what utility patent law is about (technological innovation) and that other areas of IP should defer to utility patents in that area.

Provides as an example the Varsity Brands case, decided by the Sixth Circuit and scheduled to be heard at the Supreme Court this upcoming term. What divided the appellate opinions in that case was their assessment of functionality. For the majority, the chevrons on the cheerleader uniforms just served to cover the body. But for the dissent, the function is to identify the wearer as a cheerleader. And in that chase, the chevrons are not separable. But if the function is just to cover the body, chevrons are separable and thus copyrightable. This case turns on the definition of functionality and what kinds of functionality the courts are supposed to keep out of copyright, which is undertheorized, as they’ve been arguing.

Linford: What’s the right answer in terms of which way should we push the doctrine?

McKenna: The paper is mostly diagnostic, it’s not prescriptive. The primary point is to identify a paradox at the heart of the system, if you think of the various forms of IP as a cohesive system. We don’t have a particular answer yet.

Ouellette: Where do you think this causes the most difficulty? Overlap may not obviously create problems.

McKenna: Overlap does create some problems, makes it more difficult for people to know what the bounds are of permissible conduct and expression. The accumulation of rights is a problem at least some times for overprotection. When we think about what kind of fair use rights we want to give, as an example, we don’t account for the possibility of overlap.

Sprigman: Some things will end up being protected in multiple ways, but some things won’t end up being protected at all – patent law may kick things out on grounds of novelty or non-obviousness, but other fields will kick it out as being functional.

Janet Freilich: Patent Clutter

Patent claims point out and distinctly claim the invention, and they’re often thought to be shorthand for and synonymous with the invention. But there are few empirical studies of these claims. This study asks whether claims are really only about the invention, or whether claims do a lot more than just point out the invention. The method she uses is to look at whether language appearing in the claim language also appears in the specification. We should care about this because if something in the claim isn’t discussed in the specification, it’s unlikely to be new or used in a new way, or alternatively it may fail the enablement or written description requirements.

Freilich finds that a great deal of claim language (roughly 25%) appears rarely or never in the specification. An average of 9.4% of claim words appear nowhere in the specification, 8.3% appear once, 7.5% appear twice. She calls this non-inventive language, and about 90% of it appears in dependent claims. Patents that have more non-inventive language have fewer forward citations and it’s less likely that the patent is maintained, two common measures (though imperfect) of patent value. Her theory is that language in the claims but not the specification is not part of the core invention of the patent.

Freilich considers limitations of her study. For instance, her methodology can’t account for drawings. She also can’t account for genus/species discussions.

Why do patentees do this? There’s an information transmission functions for the patentees. It may also serve a decoy function – competitors may not be sure what you’re planning to do with an invention. It might help to avoid rejection during prosecution. And it might provide insurance against future commercial uncertainty or litigation.

Freilich argues that some of these claims may not satisfy the enablement and written description requirements. There’s also a clarity difficulty here. Claims are already hard to read – non-inventive language makes claims more difficult to read even, especially because the additions by definition are not defined in the specification. Examiners also report struggling with non-inventive language, making their jobs harder. It also makes patents hard to search, when you use keyword searches (a lot of false positives). It may also create the illusion of a patent thicket in an area.

Ultimately, Freilich urges us to think of claims as very complicated and doing more than just describing the invention. It opens up questions like what does the ideal claim look like? There is a tradeoff between precisions and concision. It may not be practical to get rid of all of this, but some of this is clearly problematic.

Fromer: Troubled by the assumption that what’s in the claim language is the only thing that relates to the invention. The specification is frozen at the time the patent is filed, but claims may be amended throughout prosecution. Without looking at the original claim language, it’s difficult to make these kinds of conclusions. More generally, there are many ways to express something and often in practice the specification is more heavily written by the inventors, while the claims are written by lawyers. It doesn’t mean it’s not inventive, just that different people write something in different ways.

Freilich: This is not a precise proxy, but in general patent prosecutors try to ensure that what’sin the claims is reflected in the specification. And she does have some data on claims as proposed versus

granted. A good amount of patents add non-inventive language during prosecution, but others take it out or remain the same.

Vishnubhakat: What you describe as non-inventive language could be language in the claim and simply be what the inventor regards as her invention. If you have it in the claims and not the specification, it could be ill-enabled and described but still satisfy novelty and nonobviousness. So the finding that 9.4% of words never appear in the specification suggests that if this is a story about people who are inventing things and not describing well enough to claim the full scope of the invention is that they’re leaving claim scope on the table, and that seems consistent with a finding that about 10% of patent grants are first-action allowances where there’s not a back-and-forth between examiners and patent applications.

Aaron Perzanowski & Chris Hoofnagle: What We Buy When We “Buy Now”

This project builds on a big question: what does it mean to own something? What does it mean to buy something? The now-famous Amazon 1984 case is a big example of why this is a difficult question. Some people look at this and say that consumers understand that they’re buying a license to something, not a copy of it. Perzanowski has never heard a consumer say this. Perzanowski & Hoofnagle set out to understand how consumers perceive this language.

They created a fictitious marketplace and surveyed almost 1300 consumers and asked them about what the “buy now” language means. They screened consumers to be sure that they were all in the market for digital books, music, or movies, and ensured representativeness – pretty close to census data on nearly all metrics. They sorted them into three categories. They saw a page for an ebook, an mp3 album, or a digital movie. Each respondent could also choose between different titles within those media forms. Look at the ebook category as an example. Some people got the “buy now” button for a digital item, some people got “buy now” for a paperback copy, some people got a “license now” button for a digital item, and some people got a little notice about what they were permitted to do with the digital item they were paying for.

Key findings: 1. The “Buy Now” button misleads a substantial number of consumers about the rights they acquire in digital media. Substantial numbers of people think they can lend, gift, or devise these copies by will. The number of people who think they “own” a product drops significantly between people who saw “buy now” or “license now,” although the “license now” group still had a high percentage of people in the lending and gift categories. Many subjects, though, chose “don’t know” in the “license now” group.

2. Those misperceptions are material to consumer decision making. More than half of the respondents would pay more for digital goods that enabled lending, reselling, or using device of that choice, and respondents said they would prefer to retain those rights. And many consumers said they were more likely to download things illegally or stream them if they didn’t have those rights.

3. Replacing the buy now button with a short notice explaining the rights coming with the copy significantly reduced misperceptions. The short notice group seeing the ebook shows significant reductions in the owning, lending, gift, will, and resale categories. However, this wasn’t true for the digital movie group.

Goldman: I wonder if you can tell a different story from the data, which is that it’s really hard to educate consumers. You can still argue that most consumers aren’t getting the message even in the short notice group. What is the best way to educate them?

Perzanowski: Keep in mind that these people had precisely one exposure for ten or fifteen seconds to the short notice. He’d imagine that with repeated exposure you might see those results increasing more. Further, he’s not a professional user interface developer, and someone who has expertise in this might be able to improve it. It’s a promising avenue for improving consumer understanding but more work needs to be done. What we might see is instead of consumers learning is that they don’t bother to read it, which is the opposite of what we’d hope for.

The Stanford Live-Blogging Experiment

This weekend, August 11-12, Stanford Law School hosts the Intellectual Property Scholars Conference. My colleagues and I will present 146 papers in two days. That requires concurrent tracks, and I inevitably miss hearing some brilliant scholars present interesting projects. I'm going to use my platform on Prawfs to contribute to the solution: I'm live-blogging the panels I attend. You can follow along here this weekend.

I didn't invent live-blogging at academic conferences; I assume Rebecca Tushnet did. At a minimum, she's a prolific live-blogger, and I expect she'll provide excellent summaries of those panels she attends at IPSC. But Rebecca and I can't cover every panel. That's where you come in. If you are attending IPSC, you can send a summary of the panels you attend to jlinford(at)law.fsu.edu, and I will post them here on Prawfsblawg. With your help, we can cover every session.

In addition, if you plan to live-tweet IPSC 2016, send me your twitter handle, and I'll post it as well. I'll do some IPSC-related tweeting @LinfordInfo, and I expect to see frequent updates from @scholzlauren and others.

Subotnik on Copyright and T&E

In a post last week, I emphasized the need for a better grasp on what motivates intellectual property estates.  Well, hot off the SSRN press is Eva Subotnik's excellent new article, Copyright and the Living Dead? Succession Law and the Postmortem Term, forthcoming in Harvard J. L. & Tech.  Here's the abstract:

A number of commentators have recently objected to the existence of any postmortem period of copyright protection. Absent from the contemporary debate over this issue, however, is a systematic study of how longstanding succession law theories and doctrines, which govern the at-death transmission of other forms of property, bear on the justifications for, and scope of, postmortem copyrights. This Article takes up that task. It applies the justifications for, and incidents of, the generally robust principle of testamentary freedom to the particular case of copyrights.

The comparative analysis undertaken here suggests two principal lessons. First, succession law principles do provide discrete, though qualified, support for a postmortem term that, in addition to property theories more generally, should be considered in any rigorous debate over copyright duration. Second, more precision should be used in categorizing the costs associated with postmortem protection. In particular, in many instances the costs should be conceptualized as resulting from suboptimal stewardship by the living rather than from dead-hand control. This is not merely a matter of semantics. Distilling the most pressing costs is key to identifying the most appropriate means of addressing them, such as the shortening of the postmortem term, the reining in of dead-hand control where it does exist, and/or the instantiation of better stewardship practices among the living.

From my perspective, Subotnik's article makes at least two important contributions to the literature:

First, she brings copyright law more explicitly into conversation with trusts & estates theory and scholarship.  The basic term of copyright is the author's life plus an additional 70 years, meaning that succession law issues are baked deeply into the structure and day-to-day practice of copyright.  Yet although copyright scholars have looked to a variety of other fields in/outside the law (e.g. property law, economics, psychology, literary theory) to unravel some of the difficult questions at the core of copyright (e.g. author incentives, dissemination of creative works, and cultural "progress"), only a small body of scholarship has grappled with how wills, trusts, and intestacy laws can help mediate competing claims to valuable resources.  Subotnik provides some useful new ways of using succession law to think about the very long postmortem copyright term, and her article more broadly reads as a blueprint for some fruitful conversations between and among copyright and T&E scholars.  

Second, Subotnik's article begins the useful task of disaggregating the initial "life" term from the "plus 70."  Often in debates around the lengthy copyright term, the life+70 term is treated as one continuous time period, in which the marginal incentive to an author of each additional year of exclusivity declines into essentially nothing.  However, recognizing the discontinuities between the life and postmortem terms can shed light on questions of both author incentives and cultural stewardship.  As Subotnik observes, succession laws generally recognize the strong desire for individuals to provide for their loved ones, the sentimental attachment to particular items, and an interest in preserving legacy.  Structuring copyright around a postmortem term might accordingly provide a qualitatively different set of incentives than the financial incentives typically acknowledged in the case law.  On the cultural stewardship issues, authors and their heirs are often differently situated with respect to downstream uses of copyrighted work--e.g. Sub0tnik mentions that Kurt Vonnegut gave permission to a biographer to publish portions of his private letters, only to be revoked by his children after his death.  She accordingly usefully suggests that problems with a postmortem copyright term should not be thought of solely in terms of the author's deadhand control of the living but in terms of suboptimal stewardship by the living.  Definitely worth a read!

Sinatra's Mug and Postmortem Publicity Rights

Yesterday I listened to an entertaining and fairly illuminating Planet Money podcast about Frank Sinatra's publicity rights and his estate's (officially, Frank Sinatra Enterprises') control over the commercial use of his image.  Aside from a light-hearted, music-filled history of California's right of publicity statute--which Sinatra helped spearhead in the wake of Elvis Presley's death--I was particularly taken by the journalist's interview with his daughter, Tina, who heads FSE.  The interview raises important questions about children serving as stewards for their parents' cultural legacies.

Publicity rights are often justified via an analogy to patent and copyright; they incentivize investment in celebrity persona and/or ensure that celebrity laborers reap the commercial value of their efforts.  At times in the podcast, both the producers and Tina Sinatra speak in these terms and emphasize Frank's financial legacy to his children and the concern with others free-riding--"ripping him off"--after he died.  Although Frank did not leave his children much in the way of cash, he left lots in the way of valuable IP, which FSE has used to develop an "upscale luxury brand" around Frank's image, e.g. lounges, restaurants, special edition whiskeys.

On the other hand, much of the rhetoric in the podcast is focused on nostalgia, Frank's cultural legacy, and the integrity of his image.  Tina confesses that she can't "separate [her]self" from him; that her father is with her "every second of every minute of every hour of every day."  She is looking for opportunities to "honor her father" and to make sure that licensees of his image "keep it classy."  Although compared with other IP estates, the Sinatras appear relatively sane in terms of allowing third-party uses (but no Bobbleheads!), it's important to acknowledge the role of a family's emotional attachments in driving its decisions about the use of celebrity imagery (or popular culture in the analogous copyright context).  Publicity rights are asserted not just against traditional merchandising like t-shirts and coffee mugs, but against a range of commercial goods with a strong expressive element, such as video games.  (See cert petitions in Davis v. EA).  Accordingly, in trying to achieve a better balance between IP rights and free speech, it's crucial for scholars, judges, and lawmakers to see how family members' feelings of nostalgia, prestige, and legacy can skew the equation.  Estates are often some of the most notoriously litigious IP holders, and it's important to account for the differences in motivations and incentives between the initial rights holder and his or her successors.  There's wide variation in the postmortem terms between states (zero in New York; 100 years in Indiana), so any effort to amend/harmonize these protections would ideally account for the psychology of the IP estate. 

Lastly, in light of the substantial postmortem term in many states (and the life +70 term in copyright), this story does point to the importance for celebrities, artists, and authors to actively think about and plan for cultural stewardship of their works after they die.  Frank Sinatra sat down with his children long before he died and asked them to take the helm of Sinatra licensing.  He also communicated to them, "I don't want to end up on a f***ing coffee mug."  While as a matter of cultural policy we might not want to defer categorically to the wishes of deceased celebrities, much of the mess around postmortem rights arises when the rights holder dies intestate.  See, e.g., MLK, Jr. and Marvin Gaye.  

To keep up on all things publicity rights, I want to second last month's endorsement of Jennifer Rothman's new website.

 

World AIDS Day: Non-disclosure, Criminal Law, and Contracts

Many thanks to Prawfsblawg for hosting me this month!  I look forward to discussing my scholarship and sharing some of my favorite cat videos in the coming weeks.  I thought I'd start, however, on a more sober note:

Today is World AIDS Day, and I wanted to share two recent items about how the law handles--and mishandles--issues of HIV disclosure.  The first is this excellent, yet disturbing, write-up of the trial of Michael Johnson, a black, gay, HIV-positive college wrestler given a 30 year sentence for not disclosing his HIV status to his sexual partners.  Although Johnson maintains that he in fact disclosed his status, the article does a good job connecting his conviction to issues of racism, homophobia, and a widely held (and mistaken) belief that no one would have consensual sex with someone HIV-positive.  Johnson's case highlights an increasingly wide schism between highly punitive non-disclosure laws and today's reality of HIV treatment and prevention.  Current treatments allow HIV-positive people to have a life expectancy roughly comparable to the average US population and can reduce viral loads to undetectable, nontransmittable levels.  The best way to prevent the spread of HIV is through testing and treatment, yet criminalizing non-disclosure can deter people from getting tested and taking on the legal obligations that might come with their results.

The other item concerns, perhaps unsurprisingly, Charlie Sheen.  Much has been written about Sheen's potential legal issues in the wake of his HIV disclosure (see, e.g., here, here, and here), but I wanted to focus on one interesting detail.  Sheen reportedly required his sexual partners to sign a non-disclosure agreement, with liquidated damages of $100,000, covering any personal or business information obtained during time spent with him.  The NDA was exclusively leaked to the esteemed repository of legal research, InTouch Weekly.  My initial reaction to the NDA was in line with with most others: forcing young women to sign a contract before sex seems sleazy and censorial, designed to insulate potentially humiliating, abusive, or exploitative behavior.  After thinking some more about Sheen's circumstances, however, things may be a bit more complex and perhaps sympathetic.  As highlighted in the previous paragraph, Sheen's HIV status put him in a rather difficult bind.  If he complied with his legal obligation to disclose his status, he faced the high likelihood that his status would either be sold to the press or used as blackmail (which reportedly it was).  And even though Sheen had an undetectable viral load--and thus posed minimal risk of infection to his partners--he was at the very least arguably under a moral obligation to disclose that risk.  An NDA in these circumstances might thus be a way for Sheen to disclose his status while navigating the unique circumstance of being an HIV-positive celebrity.  This is certainly not meant to beatify Sheen, but it highlights an effort to use contract law to organize intimate affairs in the face of continued fear, stigma, and misinformation about sex and HIV. 

(By the way, aside from the bigger policy issues, Sheen's NDA is chock full of geekery: sexual consideration (see my student note!); arbitration clauses; copyright assignments (more here); and contracting for irreparable harm) 

In the spirit of World AIDS Day, I hope this post will encourage a few more people to learn about the current state of HIV and AIDS, both in the US and abroad.  Here are a few useful links I've come across in the past few weeks:

The HIV/AIDS pandemic, explained in 9 maps and charts

Things You Should Know Before Discussing Charlie Sheen's HIV Status

Pill to prevent HIV faces critics, stigma

 

Introduction and Dedication

Hello Prawfs! It is already August 12, and I am posting my first post to Prawfs this month. For that, I apologize. But I will make up for it in the coming weeks.

First, some introductions. My name is Ari Ezra Waldman. I'm on the faculty at New York Law School, where, in addition to teaching intellectual property, internet law, privacy, and torts, I run our academic center focused on law, technology, and society. My research and writing focus on privacy, the bridge between privacy and intellectual property, and cyberharassment. You can find some of my publications on SSRN, although I have a handful in the works or under submission at the moment. More on that later. My partner and I are the human parents to a wonderful dog named Scholar. She's a dachshund-beagle mix.

Second, I would like to dedicate all my posts this month to Dan. I didn't know Dan as well as some others, but in the short time I knew him, he was a friend and mentor.

Now on to substance. In my short time at Prawfs, I would like to use several posts to talk about teaching and some other posts to tell one story, hoping to flesh out ideas about an ongoing project about information diffusion, privacy, and intellectual property. I start with identifying a theoretical problem.

In an important and oft-cited essay, Professor Jonathan Zittrain came to the profound conclusion that intellectual property owners and personal data owners want the same thing: “control over information.” That control was being eroded by the early internet: “perfect, cheap, anonymous, and quick copying of data” endangered copyright owners’ ability to control dissemination of their content and threatened to make private personal data a market commodity. Using the illustrative case studies of copyrighted music and patient health data, Zittrain suggested that privacy advocates could learn from content owners’ use technological systems that prevented the unlawful mass distribution of copyrighted data.

Professor Zittrain’s view that copyright owners and patients both shared the same fear of loss of control over data makes a great deal of sense: it appeals to an intuitive and dominant understanding of privacy as control over information and reflects centuries of legal thought, from British common law to Samuel Warren’s and Louis Brandeis’s groundbreaking article, The Right to Privacy, that saw the overlap between privacy and intellectual property. But recognizing that the fields share the same “deep problem” of loss of control is only a first step. We all want to maintain control over the dissemination of our data, whether it’s Taylor Swift removing her music from Spotify or internet users opting out of the use of cookies. But musicians also want many people to buy and listen to their songs, and individuals need at least some other people to have access to their data. Loss of control and, thus, loss of legal protection, has to happen sometime later, after some other publicity trigger. This suggests that the word “control” does not fully capture the problem; rather, it is about the social process that transforms information from under control to out of control.

This correlative inquiry is important. Control is an empty concept without knowing what it means to lose it, and the conceptual vacuum has contributed to haphazard and, at times, harsh, unjust results. Often, courts conclude that personal information and intellectual property is out of an individual’s control if even just a few other people know or have access to it. At other times, decisions are more nuanced. But they all ask the same question: When is information, already known by some, sufficiently out of the owner’s control such that it can be deemed public? Conceptualizing the problem of privacy and intellectual property merely as loss of control does not give us the tools to answer this question.

In subsequent posts, I will lay out a proposed answer to this second inquiry. In short, I argue that loss/retention of control has everything to do with information diffusion, social networks, and trust. 

 

General Jurisdiction After Daimler

In Daimler AG v. Bauman and Goodyear v. Brown, the Supreme Court held that corporations do not subject themselves to general--or "all purpose"--jurisdiction simply by conducting continuous business in a state.  Instead, a corporation's contacts with a state are only sufficient for general jurisdiction if they are so "constant and pervasive" as to render the corporation "essentially at home."  But Daimler and Goodyear left open some important questions about general jurisdiction--for example, whether a corporation that registers to do business and appoints an agent for service of process in a state consents to general jurisdiction there.

The U.S. Court of Appeals for the Federal Circuit is poised to decide that question in Acorda v. Mylan and AstraZeneca v. Mylan, two patent cases coming out of the District of Delaware.  As I've written about, personal jurisdiction is generally not an issue in patent infringement cases because defendants are usually subject to specific jurisdiction in the forum state (i.e., defendant sells the accused product in the forum state, and that contact gives rise to plaintiff's claim).  However, Acorda and AstraZeneca are pharmaceutical patent cases governed by the Hatch-Waxman Act, so the specific jurisdiction analysis is more complicated.  (For the record, I believe Mylan is subject to specific jurisdiction in Delaware in both of these cases, but the focus of this post is general jurisdiction).

The question in Acorda and AstraZeneca is whether, after Daimler, registering to do business in Delaware constitutes consent to general jurisdiction, as the Delaware Supreme Court decided long before Daimler.  See Sternberg v. O'Neil, 550 A.2d 1105 (Del. 1988).  The district judges split on the question; Judge Stark held in Acorda that Mylan consented to general jurisdiction, while Judge Sleet reached the opposite conclusion in AstraZeneca.  I agree with Judge Stark that Daimler did not "sub silentio, [] eliminate consent as a basis for jurisdiction."  In other words, Daimler addressed non-consensual submission to general jurisdiction through contacts, not through consent.   

The cases are currently being briefed at the Federal Circuit (which granted interlocutory review), and will likely be argued in the fall.

Judicial Specialization, Patent Cases, and Juries

Judicial specialization has long been a topic of debate among patent lawyers and scholars.  In recent years, critics (including Seventh Circuit Judges Diane Wood and Richard Posner) have questioned the wisdom of granting the U.S. Court of Appeals for the Federal Circuit exclusive jurisdiction over patent cases.  Yet, judicial specialization in patent cases is not limited to the Federal Circuit.  Over the past decade or so, certain federal district courts--particularly, the Eastern District of Texas and the District of Delaware--have become patent litigation "hot spots," and the judges in those districts have developed substantial patent expertise.  Moreover, Congress established the Patent Pilot Program in 2011 "to encourage enhancement of expertise in patent cases among district judges" by funneling patent cases in certain districts to designated judges.

Proponents of judicial specialization argue that it promotes efficiency, uniformity, and predictability for litigants, while opponents claim that specialized courts are subject to bias, capture, and tunnel vision.  Recent scholarship also addresses the question whether specialized courts are more likely to compete for lawsuits, or participate in "forum selling," as discussed here and here.

I am currently working on a paper, Influencing Juries in Litigation Hot Spots, that explores a different problem with specialized trial courts: the potential to improperly influence the jury pool.  The situation with patent cases in the Eastern District of Texas, recently highlighted on John Oliver's show, provides a prime example.  In the Eastern District of Texas, repeat litigants like Samsung have attempted to generate goodwill with the citizens of Marshall and Tyler (i.e., potential jurors) by sponsoring an ice skating rink outside the courthouse, granting college scholarships to Marshall and Tyler students, and donating television monitors to the local high school.  While the small towns of Marshall and Tyler have no doubt benefitted from Samsung's public relations campaign, the cost to our justice system--where juries are supposed to be impartial--is arguably too high.  

 

 

Patent Reform and Substance-Specific Procedural Rules

In 2011, Congress passed the America Invents Act, the most comprehensive patent reform legislation in more than half a century.  Yet, Congress is currently considering further patent reform, which appears to be moving forward with the Senate Judiciary Committee approving the bill yesterday.  The current reform measures are designed primarily to curb "patent litigation abuse" by creating special procedural rules for patent cases, including heightened pleading standards, restricted discovery, and more liberal fee-shifting. 

This latest reform effort raises a number of questions.  Some scholars argue that there's simply not enough data to support the legislation, while others say the reforms are unnecessary because courts and other institutional actors have already taken steps to address patent litigation abuse.  Commentators have also claimed that the reforms may seem reasonable in theory, but the actual proposed legislation is too broad and will harm our innovation economy.  I would like to focus on a different question: Are substance-specific procedural rules for patent cases appropriate and, if so, who should make those rules?

Although trans-substantivity is a hallmark of the Federal Rules of Civil Procedure (FRCP), there has been some movement away from this principle recently.  As I discuss in a recent article, that trend is particularly pronounced in the patent context where almost a third of federal district courts have adopted patent-specific local rules, and many individual judges use special standing orders for patent cases.  So there seems to be some consensus about the utility of specialized procedural rules in patent cases, but should it be Congress, district judges, or the Judicial Conference that decides the content of those rules?  I believe the Judicial Conference, which is responsible for proposing amendments to the FRCP, is in the best position to draft a uniform set of procedural rules for patent cases.  While far from perfect, the FRCP rulemaking process is more transparent, balanced, inclusive, and deliberate than the process for enacting legislation or adopting local district court rules.   

 

The Federalist Structure of Trademark Law Fosters Robust Public Debate

The following post is by Robert L. Tsai and Christine Haight Farley (both of American); it is their third guest post on the Washington Professional Football Team trademark case. It is cross-posted at the Sports Law Blog.

 In recent days, following a Federal Circuit ruling in one disparaging marks case (“the Slants”) and briefing in another (“Redskins”), civil libertarians and artists have joined forces to cry that the applicable provision in federal trademark law suppresses speech.  But does it?  In this post, we wish to suggest that the ban on registering disparaging marks not only does not suppress any high value speech, but might actually enhance freedom of expression.

Strong First Amendment regimes are valuable when political, social, or artistic creativity is endangered by direct regulation.  Weaker First Amendment regimes are more sensible when a complicated mix of government objectives and expressive risks is at stake. In our view, whatever doctrinal tools are ultimately used (e.g., government speech or commercial speech), a weak role for the First Amendment is most sensible in this area.

We begin with the observation that trademarks are expressive in a specific but limited commercial sense:  they are distinctive words, names, or symbols used to designate the source of a good or service and distinguish it from others in the marketplace.  Most marks by themselves are not coherent enough to constitute political or social expression.  Occasionally, one comes across a symbol that might have artistic value, but even then its contribution to public debate on matters of public importance is likely to be extremely limited.  Thus, regulation of brand names does not implicate the core of the First Amendment.

Then, there is the most obvious point: denial of registration does nothing to prevent the owner of a mark from using that mark.  We have already detailed the ways in which the registration framework does not actually suppress speech.  Beyond the fact that the Lanham Act does not inhibit speech directly, however, it also contemplates a federalist structure that helps to promote free speech.  Federal law does not create trademark rights, but merely seeks to streamline this area of law by building new federal remedies on the edifice of state law.  As the Supreme Court explained in the Trade-Mark Cases, “This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement.”  Because federal law did not preempt state trademark law, the absence of Lanham Act remedies does not extinguish state law claims.

When no federal registration exists, a trademark owner can sue an alleged infringer in the jurisdiction where the mark is used and where the infringement occurred.  It is said that under the common law, one cannot protect a trademark that violates public policy.  But it would be up to each state to determine whether certain kinds of marks contravene that state’s established public policy.  Maine, for instance, apparently has no trouble with disparaging marks, barring only marks that are “obscene, contemptuous, profane or prejudicial… [or i]nappropriately promotes abusive or unlawful activity.”

Most states have adopted the model trademark bill patterned on the Lanham Act.  This is true in California, which also prohibits the registration of immoral, scandalous, and disparaging marks.  A trademark owner such the Slants can argue that the mark is not disparaging under California law. Even with identical statutory provisions, different outcomes in different jurisdictions are possible.  State law may base determinations on local perceptions of the mark, which may deviate from national views, and may develop different doctrines such as taking into account the mark owner’s intent to re-appropriate slurs.  Thus it is conceivable that states may reach a different conclusion about the same mark.

Does refusal to register raise the costs of enforcement?  It might very well do so, but such differences in enforcement regimes has never been enough to raise constitutional difficulties, especially in a federal system of laws that includes many built-in inefficiencies. 

These inherent inefficiencies could actually enhance liberty better in the long run than a First Amendment dominated system.  Some states would surely follow the federal government’s lead by broadly disallowing registration/enforcement of certain slurs as trademarks.  They would prefer to withdraw the state’s imprimatur from illiberal ideas and hope to discourage their use.  The fact that copycats and counterfeiters might make widespread use of the same design or logo, perhaps even to coopt the ideas for benevolent goals, would be taken as evidence of healthy public discourse.  

On the other hand, other states might see value in granting legal protection to certain taboo ideas disallowed by the federal government, by finding that particular terms are not offensive to local communities.  Or perhaps states might do so on the theory that legal protection of coopted epithets promotes dissent within ethnic communities.  Madhavi Sunder has made just this kind of argument, but the rationale does not depend on a nationwide rule.  States themselves could decide to strike their own path on how to determine when a mark “disparages.”

The key to a system characterized by a weak First Amendment is that no jurisdiction—neither federal nor state—has the obligation to reject or endorse disparaging marks.  Rather, the government’s power to ensure broad participation in the marketplace and guard against illiberal business practices are treated as just as important as an individual right to expression.  It is worth remembering that even in a weak First Amendment regime, the Constitution would still remain powerfully available in the background, protecting against direct efforts to stamp out disparaging ideas.

This more nuanced approach that can only flourish if the First Amendment is not deployed in a one-size-fits-all manner requiring government to protect whatever a trademark applicant demands.  If the strong First Amendment position prevails, then state and federal restrictions on trademark content would be swept aside, across the board.  By operation of the Fourteenth Amendment, every level of government would have to endorse and subsidize morally repugnant marks.

The people of each state would no longer be allowed to determine public policy in this domain or to express their view that certain commercial practices are illiberal.  In such a world, free speech principles might reign nationally in trademark law, but one should wonder whether they would really promote robust debate.       

 

F. Gregory Lastowka

It is with deep regret that I write that law prawf Greg Lastowka is no longer with us. He passed away yesterday. His home institution, Rutgers, has published this announcement here.  He will be greatly missed by all who knew him and his extraordinary work. 

Natural Rights and the "Human Right" to Intellectual Property

I am picking up from where I left off in my prior post on human rights and intellectual property. My concern with embracing a human right to intellectual property arises from the possibility that it will lead to more expansive intellectual property protections. I would tend to agree, therefore, with the report by the United Nations Special Rapporteur in the field of cultural rights (mentioned by Lea Shaver in her comment), which characterizes copyright as distinct from the human right to authorship.

Human rights are generally understood to be natural rights. If one accepts this proposition, how does treating intellectual property protection as a human right relate to the natural rights intellectual property scholarship? The intellectual property and human rights conversation is primarily an international intellectual property conversation. However, the natural rights framing of intellectual property rights is primarily a domestic intellectual property conversation. Both of these frameworks are based on natural rights theories, yet they appear to reach opposite conclusions. With some exceptions, proponents of natural rights justifications for intellectual property tend to support more expansive intellectual property protections. On the other hand, proponents of a human right to intellectual property speak of “balance” and of using human rights frameworks to respond to excessive intellectual property rights.

One might be inclined to dismiss the theoretical foundations for intellectual property as irrelevant to the practical aspects of intellectual property law. However, the framing of intellectual property rights can impact the way private citizens, including judges and policy makers, view intellectual property protection and infringement. Gregory Mandel’s study on the public perception of intellectual property rights, for instance, found that individuals who view intellectual property rights as natural rights tend to support more expansive intellectual property protection. This is consistent with legal scholarship that takes a natural rights approach to intellectual property. My inclination, then,  is that distinguishing between copyright protection and the human right to the moral and material interests arising from one’s literary or artistic production is a step in the right direction.

Google Announces Patent Purchase Experiment

 

Today, Google announced a patent purchase promotion, which is an open call for those who wish to sell their patents to the company. Some details are here, while others are here. The terms are remarkably simple--between May 8 and May 22, sellers must provide Google with the patent number and a proposed price. As part of the transaction, sellers obtain a non-exclusive license to practice the patent together with the purchase price if the offer is accepted.

In typical Google-style, the company states that this call is an experiment and an effort to eliminate the middle-man. In the company's words:

Unfortunately, the usual patent marketplace can sometimes be challenging, especially for smaller participants who sometimes end up working with patent trolls. Then bad things happen, like lawsuits, lots of wasted effort, and generally bad karma. Rarely does this provide any meaningful benefit to the original patent owner.

Of course, the looming question is what will Google do with any patents that it buys? Whatever it wants, of course. According to Google's FAQ on this issue:

Google maintains a large patent portfolio. Any patents purchased by Google through this program will join our portfolio and can be used by Google in all the normal ways that patents can be used (e​.g.​, we can license them to others, etc.) 

One interesting aspect of the program is the speed at which it is moving--sellers will be notified at the end of June, and the sales are expected to be closed by the end of August. 

The First Amendment and the Redskins’ Trademark, Part II: A Shot Across the Bow from the Federal Circuit

The following post is by Christine Haight Farley and Robert L. Tsai  (both of American); it is their second guest post on the Washington Professional Football Team trademark case. It is cross-posted at the Sports Law Blog.

On Tuesday, the Federal Circuit issued a unanimous decision (In re Tam) holding that the mark THE SLANTS was properly refused registration because it is disparaging to people of Asian descent.  Since 2010, Simon Shiao Tam, the front man for the Asian-American rock band “The Slants,” has been trying to obtain trademark recognition for the name of his band.  The record shows that the band picked the name by thinking of “things that people associate with Asians. Obviously, one of the first things people say is that we have slanted eyes.”  The record of the case confirmed that “slants,” used in the way proposed, would likely be received as a racial slur.

The fact that the registrant wished to re-appropriate an ethnic slur and try to create a positive connotation did not alter the outcome. Nor was the Court troubled that the user’s own race formed part of the background for assessing the objective meaning of the mark in commerce. Both of these jurisprudential choices are consistent with the Federal Circuit’s approach to statutory interpretation, which strives for an objective meaning of trademarks in actual use.  In our view, the private cooptation of illiberal ideas can generate terrific art and might very well help to change social meaning in the long run.  But you don’t need trademark protection to engage in such projects of appropriation; indeed, granting one user legal protection might even stifle others who would like to experiment further with taboo ideas.

In re Tam now makes it two cases on trademark disparagement that the Federal Circuit has ever decided—both have been in the past year and both affirmed the TTAB’s finding of disparagement.  The court obviously felt bound by precedent.  Nevertheless, Judge Moore, the author of the 11-page majority opinion, offered 24 pages of what was styled “additional views," but which read more like a petition for rehearing en banc on the constitutionality of § 2(a) of the Lanham Act.

Though not binding, this last bit by Judge Moore may prove most interesting of all.  The judge offered many reasons for wanting to revisit the Federal Circuit’s position on the constitutionality of § 2(a): its 1981 decision In re McGinley did not cite any authority, its analysis consists of only a few sentences, the decision has been criticized in the intervening years, jurisprudence on the unconstitutional conditions doctrine and the protection accorded commercial speech has since evolved, and the source of the PTO’s funding has shifted from tax payers to user fees.

The judge contends that In re Tam presents an unusually strong case for considering trademarks as protected speech since the applicant intended to use the mark to reclaim Asian stereotypes and to participate in a political and cultural discourse about race as a musical artist.  At oral argument, the judge tried to distinguish this feature of the case from the Redskins case.

But the main thrust of Judge Moore's constitutional challenge to § 2(a) is based on the unconstitutional conditions doctrine, which holds that the government cannot deny access to a government benefit on the basis of the recipients exercise of constitutionally protected speech.

In claiming that the benefits of registration are not just procedural, but are also substantive, Judge Moore states that a disparaging mark “cannot be protected by its owner by virtue of a § 43(a) unfair competition claim” because “§ 43(a) protection is only available for unregistered trademarks that could have qualified for federal registration.” (emphasis in original).  This is a bold claim not exactly supported by the cases she cites.  The Supreme Court’s Taco Cabana decision simply says that “the general principles” under § 2 are “for the most part applicable” in determining whether an unregistered mark is protectable.  That’s right because for the most part, these general principles are common law doctrine codified in the Lanham Act.  No case yet holds that the owner of a disparaging mark would not be able to assert common law rights against an infringer, but in a 2013 decision the Federal Circuit did suggest that an unregistrable common law mark may receive protection under § 43.  As we argued in a previous post, variations in the availability of legal remedies are better understood as procedural changes rather than subsidies of private speech.

By focusing on the benefits of registration, Judge Moore loses sight of the significance of registration.  Although in civil law countries trademark registration generally confers rights, in the US trademark rights are created by using a mark in commerce and developing good will.  Registration is “essentially a recognition of a right already acquired by use.”  At the same time registration is encouraged because it provides notice of rights—hence the benefits that flow from registration.  These benefits, however, are distinguishable from benefits conferred by the government in other unconstitutional conditions cases, which typically involve direct subsidies of speech.  In the case of trademark registration, the government is literally approving of certain trademarks; the symbol of trademark registration—the “R” in a circle—is a statement by the trademark owner that the government has approved, not its business or its goods, but the mark itself.  Such approved trademarks are included in the government’s registry, or list of marks certified by the government.  No other unconstitutional conditions case involves such symbolic acts of endorsement by the government, but instead involve unseen deeds such as exemptions from taxes or import duties.

The limited nature of the denial of registration seems to be lost on Judge Moore.  The PTO’s refusal to register disparaging trademarks does not force the owner of a disparaging mark to relinquish a constitutional right.  The owner can continue to use the mark.  In cases where the Supreme Court has found an unconstitutional condition, the speaker has few realistic options other than to cease engaging in a particular form of speech in order to avail itself of a valuable government benefit.  No such forced choice results from § 2(a).  Because the registration system parallels common law trademark protection, some of which is enshrined in the Lanham Act, the owner of a disparaging mark can continue to engage in its chosen speech and endeavor to have it protected as a common law trademark.

Perhaps worst of all, Judge Moore's application of the presumption against content-based regulations to § 2(a) has no limit.  If all trademarks are constitutionally protected speech and the act of registration is the conferral of a substantive benefit, then when may the PTO make a content-based determination that affects registration without violating the First Amendment?  The Lanham Act also requires the PTO to refuse registration to marks that consists of simulations of state insignia and marks that include the name of a president.  There’s no doubt that these determinations involve trademark owners as speakers and the denial of benefits.  They also require the PTO to evaluate the content of the mark.  Should the constitutionality of these provisions also be revisited?  And what about the denial of registration to merely descriptive marks, deceptive marks, and marks that falsely suggest connections?  Under Judge Moore’s logic, these determinations are as unconstitutional as direct content-based regulations of speech.  Moreover, it is worth noting that none of these kinds of marks would fall within traditionally unprotected categories of speech (e.g., libel, incitement, obscenity).  So applying the First Amendment full bore as Judge Moore proposes would also disable the PTO from barring the registration of these marks as well.

The broader point is that all trademark registration determinations under § 2 are content-based because they all involve an evaluation of the meaning of the mark in the context of its use and analysis of whether it is disparaging, descriptive, deceptive, etc.  Thus, if strict scrutiny is applied to the ban on disparaging or scandalous marks, it is also required in evaluating the constitutionality of all the other trademark restrictions contained in § 2.  If a court were truly serious about apply this presumption, there would be little left of trademark law.

Finally, Judge Moore asserts that trademarks are private speech, not government speech. Judge Moore asserts that when “the government publishes registered trademarks in the Trademark Principal Register, it does so not to communicate a particular message or select a particular viewpoint.”  But it is hard to get around the fact that the Register is a list of marks that the government has approved and that when a trademark owner uses the registered “R” symbol along with its mark, it is using that symbol precisely as a certification that the government has approved its mark.  It is only when the PTO rejects the registration of a mark that its use is purely private.  There are a host of reasons why the government should have the power to distance itself from odious speech and illiberal business practices.  As we argued in a recent Slate article, all of these are compelling features of the federal government’s power to regulate interstate commerce. 

More IP Prawf Lateral Moves...

In addition to the four additions to Texas A&M discussed here, Scott Hemphill (Columbia) will be joining NYU Law (the announcement is here). In addition, Ann Bartow (Pace) will be joining the University of New Hampshire School of Law as the Director of the Franklin Pierce Center for Intellectual Property (this announcement is here). Congratulations!

A Human Right to Intellectual Property?

The merger between trade and intellectual property, referred to as “strange bedfellows” in the 1990’s, has become the norm as a result of the WTO Agreement on Trade-related Intellectual Property Rights, and subsequent agreements. Intellectual property and human rights may seem like strange bedfellows as well. However, there is a greater connection between these two areas of law than one might imagine.

Article 27(2) of the Universal Declaration of Human Rights (UDHR) provides that “everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” The International Covenant on Economic, Social, and Cultural Rights contains similar language. A number of scholars have considered the relationship between human rights instruments and intellectual property rights (i.e. Helfer, Yu, Shaver, Land, Chapman, Carpenter, and others). Some (Chapman, for instance) have suggested that this UDHR provision provides a basis for a human right to copyright or patent protection.

Writing on corporations and the possible human right to intellectual property, I found myself reluctant to accept the notion of a right to intellectual property as a human right. I like the idea of considering the impact of intellectual property rights on human rights, as has been done in the access to medicines debate, for instance. However, I am generally uncomfortable with the notion of a human right to intellectual property. Equating the UDHR human right to a right to copyright or patent protection raises a number of issues, and I doubt that it is ultimately a good idea. However, I am willing to be convinced otherwise. 

Chanel and Mrs. Jones

Last fall, fashion house Chanel filed a trademark action against hairstylist Chanel Jones (discussed here at The Fashion Law), to prevent Jones from using her first name in connection with her business. The case was notable given the relative size of the parties and the distance between their markets--Jones' hair salon is in Merrillville, Indiana, which seems more than a stone's throw from the Rue Cambon in Paris which Chanel calls home. Why bother? 

Moreover, the press' attention was undoubtedly caught by the fact that the company filed suit against an owner using her first name for her business, which is a common practice for personal service concerns. As Gene Quinn remarked in a different context, "How crazy would it be if you couldn’t even use your own name on your store front?" Well, as this survey of the case law by Christopher Bussert points out, in the past courts have enjoined companies from using their founder's name on their products and/or services when a senior (read: prior) user has established rights to the same name. 

As background, since the 1960's, Chanel (or alternatively Shanelle) has become an increasingly popular first name.

Since Gabrielle Chanel started her brand in the earlier part of the 20th century, the fashion house has grown in size and repute. Today, Chanel primarily sells clothing, accessories and beauty items. Although Chanel does not currently offer hair salons, the line does sells some hair accessories and a shower wash that can be used for hair. Further, Chanel's complaint asserts that its name is a "famous mark," which in trademark parlance means that the company asserts strong rights that allow the prohibition of non-competing uses that are likely to dilute its fame. Moreover, the law requires mark holders to police unauthorized uses of their marks lest they become generic (and consequently unenforceable).

I did some digging into the disposition of Chanel's case on Lex Machina, a great resource for those looking into pleadings and analytics of IP cases to find out more. According to Chanel's complaint, the brand sent five letters to Chanel Jones before filing suit but obtained no response. It did not seek damages. It does not appear from the docket that Chanel Jones secured representation. Indeed, the Court sua sponte struck the answer filed on behalf of Chanel Jones' business because LLCs cannot appear pro se. The matter settled with a consent judgment in which Chanel Jones agreed not to use the term "Chanel" in connection with her business. According to the minutes of a status conference before the court, Chanel indicated its willingness to help with any costs associated with the change, although the record does not disclose whether this occurred in fact. So ends that one. 

More broadly, trademark law is designed for a one-winner-take-all approach rather than a bargained solution that permits peaceful co-existence. Is this area of the law is well designed for creative industries? It seems as those Chanel could be using resources to do whatever it does best, rather than using them to defend its mark (for more on this point, see Devin Desai and Sandra Pierson's Confronting the Genericism Condundrum). At the same time, I can imagine that these disputes create significant wear and tear on those who must respond. As Chanel Jones stated in her answer, "I am just trying to make an honest living for my family and myself." As I argue here, design houses like Chanel contribute a fair share of positive externalities in the creative ecosphere, and fine-tuning rewards for those efforts appears to be more in line with the public interest.

Intellectual Property Conversations: International & Domestic

I think it is fair to say that international intellectual property is generally seen as distinct from general (i.e. domestic) intellectual property (IP), both in terms of scholarship and teaching. Thus, from what I gather, international intellectual property panels tend not to draw huge crowds during the annual IP scholars meetings. However, I see a fair amount of overlap between general IP scholarship and the international IP issues that some of us tend to explore. Among others, I see overlap when it comes to questions about the role of IP, the scope of IP rights, and whether the current international model and the mandated levels of intellectual property protection align with societal goals.

Writing international intellectual property scholarship requires an understanding of international law, and trade law in particular. This is due to the merger between trade law and intellectual property law that came about as a result of the World Trade Organization Agreement on Trade-Related Intellectual Property, commonly referred to as TRIPS. Post-TRIPS, there have been a number of other “trade-related” agreements that aim to protect intellectual property rights in the global arena. In addition to various bilateral trade agreements and investment treaties, there are multilateral agreements that have chapters or provisions on intellectual property. These include the Anti-counterfeiting Trade Agreement, the Trans-Pacific Partnership, and the Trans-Atlantic Trade and Investment Partnership.  The two latter agreements are currently being negotiated.  

There are complexities to the international discussion insofar as it involves some analysis of international legal obligations. However, the intellectual property aspects often address similar issues to those raised by some of the domestic scholarship. The articles discussed by Amy Landers and Dave Fagundes in their recent posts, for instance, are pertinent to some of the recurring themes in international intellectual property scholarship. Both international and domestic scholars might ask: what is the utilitarian calculus, and is society being well served? If not, is there some assumption (i.e. “faith”) that IP rights must be protected due to some natural entitlement? If so, is this beneficial to society or just to the IP producer? 

Those of us who write primarily on international IP issues can, and do, draw on domestic IP scholarship for our analysis of international issues. In this globalized economy, maybe it’s time for international IP scholarship to become more integrated into the mainstream so that there can be a greater exchange of ideas between general IP and international IP scholars. Making connections between domestic and international IP, where possible, can only enrich the conversation. 

Diversifying Startup Funding Sources

As someone interested in the growth of new ideas and innovation, I'm very interested in the financial infrastructure required to undertake creative activity. Although there is a high level of disagreement about the appropriate legal incentives needed to create new medicines, new technologies, new films and works of art, at a certain point there can be little dispute that time, resources, and dollars are required to create and ultimately bring products to market. Indeed, some work in the economics field has considered that the U.S.'s venture capital funding system has been a major factor to this country's ability to develop groundbreaking solutions. All puns aside about Snoop Dogg's recent decision to provide seed funding for weed startups (sorry! someone had to say it), there appears to be no limit to the types of funding sources.

For example, there has been a spate of recent press about mutual funds who are quietly beginning to provide startup funding in exchange for private stock. According to The New York Times, the growth potential of startups has attracted funding from more conservative sectors who are attracted by success of companies with high valuations including Uber, Airbnb, and Pintrest. Of course, there are limitations on the level of risk that these funds will tolerate. Balance is everything--according to the piece, "Fidelity’s Uber stock, for example, represents less than 1 percent of each fund’s total holdings."

I cannot help but wonder at the role that these funds will play to the overall management and direction of startups. Innovation isn't all about the money. Some of the value that many venture capitalists provide includes making introductions, advising, pointing out potential pitfalls and professionalizing operations. It isn't clear from the press whether mutual funds are providing these same benefits, although it may exist. Moreover, it may be that the mutual funds'  decision to invest in more mature startups will alleviate this issue. 

Nonetheless, in my view it is a very positive development to see more dollars moving toward the creation of new businesses. I am hopeful that some of this work will result in more invention, research, innovation and all of the benefits that those things can provide.

The Moral Psychology of the Fair Play, Fair Pay Act

Yesterday, four members of Congress introduced the “Fair Pay, Fair Play Act,” a bill that would entitle owners of copyrights in sound recordings to recover royalties for radio airplay of those tracks on terrestrial radio stations. That performers don’t receive such royalties may seem surprising, but it’s just one of many strange outcomes generated by the statutory labyrinth that is the Copyright Act.

At first blush, the rationale for such a revision seems simple and appealing. Performers work hard to create sound recordings, so when radio stations broadcast those recordings, why shouldn’t they get paid? After all, the songwriters who wrote those tunes get a royalty each time they are played. But upon closer examination, this rationale is more puzzling. The purpose of copyright law, expressed in the Constitution, is to promote the progress of science and the useful arts (including creative innovation) by means of financial incentives secured by exclusive rights in authors’ works of authorship.

Copyright’s incentives story may explain the FPFPA going forward (performers may be more likely to create future sound recordings if they can expect more remuneration via performance rights), but this account cannot make sense of the retroactive application of the law to already-created songs. And much of the industry force behind the act comes from performers who recorded older, classic tracks who feel aggrieved that they have not gotten royalties from their hit recordings for decades.

So if incentives cannot explain this sense of entitlement to recover additional royalties for past creation, what does? One account may lie in Mark Lemley’s snappy new essay, Faith-Based IP, discussed by Amy Landers in her earlier post on this site. The musicians and Congresspeople behind FPFPA may simply be relying on the notion that copyright owners have pre-political rights that should be recognized regardless of whether the existence of those rights would drive innovation, or even regardless of whether those rights would generate social welfare. At the surface, this may be a plausible account, but I want to propound a different account, one that draws on a forthcoming paper I co-authored with Chris Buccafusco, The Moral Foundations of Copyright Infringement. I elaborate this alternative theory below the fold.

In our paper, Chris and I show that the FPFPA is hardly unique. There are countless examples in which owners of copyrighted works express outrage over unauthorized use in ways that bear no relationship to the classic IP incentives account, and that may even bear no relationship to their economic interests at all. Sometimes people even seek suppression of unauthorized use that might help them economically, such as when fashion designers sought stronger IP protection despite evidence that design piracy may actually help their brands.

This only shows the depth of the puzzle, though, not its solution. And while some have argued that authors deserve non-economically based rights in their works of authorship for reasons divorced from welfare considerations, Chris and I look instead to contemporary cognitive science for an explanation. In particular, our account invokes moral foundations theory, which posits the existence of at least five different heuristic dyads—harm/care, fairness/cheating, loyalty/subversion, purity/degradation, and authority/subversion—that describe the mental architecture of our experience of transgression.

It’s easy to explain why authors of extant sound recordings would root for the FPFPA. Everyone wants more money. But why would the situation of such authors case strike a chord with unaffected third parties such as the bill’s congressional sponsors, and even the public more broadly? Our moral-psychological account indicates that what is afoot here is instead the intuitive sense shared by many people that formal inequities (such as compensating songwriters but not performers for radio play of the same track) grate on our moral sensibilities, regardless of welfare considerations. Unlike the incentives theory, our account explains the FPFPA in its prospective and retrospective applications, since in both instances performers are equally aggrieved by the fact that songwriters get performance royalties but they do not.

This is different than a mere “rights” account because such accounts often (though not always or necessarily) descend into conclusory circularity. The idea of a right is a legal conclusion about relative entitlements, but is often used instead (and especially in some of the high-flown rhetoric about the FPFPA) as an argument for that conclusion instead (or as well). Hence the dismissals, like Lemley’s, of rights-based arguments about IP as rootless and “faith-based.”

But while Chris and I argue that the moral-psychological account provides a richer sense of non-welfarist approaches to IP (especially the instinctive responses of laypeople, including creators and owners of works of authorship, to unauthorized use) than simply dismissing them as rights-voodoo, this does not mean that copyright law should be determined by moral-psychological considerations. Our moral intuitions may feel righteous but that does not at all mean that acting on those intuitions serves the social good. After all, some of the great evil done in human history has likely been animated by a sense (however wrong) of moral righteousness.

What we end up suggesting is a moral-psychological realist approach to IP law. You can still be committed to the incentivist story of copyright while acknowledging that our moral intuitions operate in tension with those welfarist aims. In fact, you might get better outcomes from the incentivist perspective by basing copyright law on a vision of actors that acknowledges their complex moral psychology rather than assuming that they are simple utility-maximizing homines economici. How to do this, of course, is a harder question, but one suggestion we make in the paper is that copyright law should respect only lawsuits motivated by copyright-relevant harm (i.e., attempts to protect a copyright monopoly, not to seek revenge or vindicate a sense of injustice or grab extra rents).

The Moral Psychology of Copyright Infringement (available on SSRN) is forthcoming later this year in the Minnesota Law Review, but we are still making revisions, so comments are most welcome.

Law and Social Change

Law has an ill-defined relationship to culture. Certainly, some legal rules seek to standardize norms in the way that the reasonable person operates in tort law or custom sets interpretive principles for contractual relations. Law may push against culture, such as the way anti-discrimination laws attempt to eradicate bias.

Further, culture can seek to change law. One recent example that caught my eye is the transport of films, TV shows and other media into North Korea via weather balloons. Among other things, these balloons carry TV shows including Desperate Housewives and The Mentalist, so that those who find the USB drives on which this entertainment is stored can be exposed to cultural information about those outside North Korea's borders. This is one way that the Human Rights Foundation is seeking to reach out to North Korean citizens to open up the government's information block.

Where do such efforts come from? Recently, Peter Lee (UC Davis School of Law) has posted an interesting piece on social innovation that is insightful for those interested in innovation, the theory of the firm, distributive justice, and/or intellectual property. In it, he contrasts the formal incentive system of the intellectual property system to:

...the altruistic motivations and public funding that drive social innovations. . . Beyond efficiency considerations, however, social innovations often play a distributive role in shifting resources to underserved communities. Social innovations address underserved markets, such as when microfinance entities provide loans to populations who do not qualify for traditional financing. Going further, social innovations sometimes provide essential goods and services to entirely neglected populations on a charitable basis. 

I found that Lee's piece opens a new door on the mechanisms that foster the creation of public goods. The piece is replete with insights about the interaction between government and private entities in both the IP and social innovation spheres. He argues that these systems have much to learn from each other. This is downloadable here and certainly worth a read.

Mark Lemley's "Faith Based Intellectual Property"

I'm still processing a draft posted yesterday by Mark Lemley, "Faith Based Intellectual Property," here at ssrn. Like many of Mark's pieces, it is a clear, succinct read. In it, he points out that "IP rights are a form of government regulation of the free market designed to serve a useful social end—encouraging innovation and creation." The paper cites numerous pieces of empirical research conducted over the past several decades by both legal and economic scholars concluding that these goals have not been well met.  

Faith Based Intellectual Property asserts that a divide, of sorts, is occurring in the field of IP scholarship, between those who write that, despite such scholarship, IP is justifiable as a legal constraint on creativity for other reasons. According to the piece, "this retreat from evidence [is called] faith-based IP, both because adherents are taking the validity of the IP system on faith and because the rationale for doing so is a form of religious belief." Lemley writes that non-utilitarian support for the system ignore important evidence and represent difficulty for the system as a whole. As he states, IP "intervenes in the market to interfere with the freedom of others to do what they want in hopes of achieving the end of encouraging creativity. If we take that purpose out of the equation, we are left with a belief system that says the government should restrict your speech and freedom of action in favor of mine, not because doing so will improve the world, but simply because I spoke first."

His conclusion goes further--that "we have nothing to say to each other." To explain:

I don’t mean by that that I am giving up on you, deciding that you’re not worth my time to persuade. Rather, I mean that we simply cannot speak the same language. There is no principled way to compare one person’s claim to lost freedom to another’s claim to a right to ownership. Nor is there a way to weigh your claim of moral entitlement against evidence that the exercise of that right actually reduces creativity by others.

Undoubtedly, it's an important piece, will foster discussion and further thought.

The New Cognitive Property & Human Capital Law

Intellectual property is all about the bargain, no absolutes. But below the radar, a patchwork of law and contract is operating to expand the types of knowledge and information that become propertized. My new article, The New Cognitive Property: Human Capital Law and the Reach of Intellectual Property, forthcoming Texas Law Review 2015 is now up on ssrn. Here is the abstract and as always, I would love to get your thoughts and comments:

Contemporary law has become grounded in the conviction that not only the outputs of innovation – artistic expressions, scientific methods, and technological advances – but also the inputs of innovation – skills, experience, know-how, professional relationships, creativity and entrepreneurial energies – are subject to control and propertization. In other words, we now face a reality of not only the expansion of intellectual property but also cognitive property. The new cognitive property has emerged under the radar, commodifying intellectual intangibles which have traditionally been kept outside of the scope of intellectual property law. Regulatory and contractual controls on human capital – post-employment restrictions including non-competition contracts, non-solicitation, non-poaching, and anti-dealing agreements; collusive do-not-hire talent cartels; pre-invention assignment agreements of patents, copyright, as well as non-patentable and non-copyrightable ideas; and non-disclosure agreements, expansion of trade secret laws, and economic espionage prosecution against former insiders – are among the fastest growing frontiers of market battles. This article introduces the growing field of human capital law, at the intersections of IP, contract and employment law, and antitrust law, and cautions against the devastating effects of the growing enclosure of cognitive capacities in contemporary markets.

SEALS

Think about proposing programming for the annual meeting, or participating in a junior scholars workshop. And if you are ever interested in serving on a committee, let Russ Weaver (the executive director) know. The appointments usually happen in the summer, but he keeps track of volunteers all year long.

The Washington Redskins, the Lanham Act, and Article III

As the Associated Press reported yesterday, the five Native Americans who prevailed earlier this year before the U.S. Trademark Trial and Appeal Board (TTAB) in their effort to have the Washington Redskins' trademarks cancelled have now moved to dismiss the lawsuit that the Redskins ("Pro-Football, Inc.") filed against them in the U.S. District Court for the Eastern District of Virginia under the Lanham Act, 15 U.S.C. § 1071(b)(4). As I endeavor to explain in the post that follows, it certainly appears that their motion should be granted--and the Redskins' lawsuit dismissed either because the Lanham Act doesn't actually authorize such a suit, or, insofar as it does, it trascends Article III's case-or-controversy requirement in this case.

I.  The Lanham Act's Cause of Action for "Adverse" Parties

In their Complaint in Pro-Football, Inc. v. Blackhorse, the Redskins explained that they were seeking:

an Order of this Court: (1) reversing the TTAB Order scheduling the cancellation ofthe Redskins Marks; (2) declaring that the word "Redskins" or derivations thereof contained in the Redskins Marks, as identifiers ofthe Washington, D.C. professional football team, do not consist of or comprise matter that may disparage Native Americans; (3) declaring that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a),is unconstitutional, both on its face and as applied to Pro-Football by the TTAB, under the First Amendment of the U.S. Constitution, and is void for vagueness; (4) declaring that the TTAB Order violates Pro-Football's rights under the Fifth Amendment of the U.S. Constitution; and (5) declaring that Defendants' petition for cancellation in the TTAB challenging the Redskins Marks under Section 2(a) was barred at the time it was brought by the doctrine of laches.

But whereas the Redskins' Complaint routinely describes their lawsuit as an "appeal" of the decision by the TTAB (where it wouldn't be that weird to have the complaining party before the TTAB--the Blackhorse defendants--as the putative appellees), the Lanham Act actually authorizes something else altogether--a standalone, new civil action against an "adverse party" so long as that party was "the party in interest as shown by the records of the United States Patent and Trademark Office at the time of the decision complained of." The problem with application of that provision here, as the motion to dismiss quite persuasively explains, is that it's not at all clear how the defendants here are "the party in interest," at least in light of the specific nature of the Redskins' challenge:

Ordinarily, the adverse parties in an opposition or cancellation proceeding before the TTAB are two businesses claiming rights to the same or similar trademarks. Thus, when a party dissatisfied with a decision of the TTAB brings actions under 15 U.S.C. § 1071(b)(4), it is usually involved in a dispute with a business that uses a similar trademark, with the parties often joining claims for trademark infringement, unfair competition and other causes of action.

Here in contrast, there's no such relationship, and "PFI does not allege any wrongdoing on the part of the Blackhorse Defendants. PFI does not allege that they breached a contract, committed a tort, or violated any law. Instead, PFI’s allegations are directed solely against the USPTO and PFI seeks relief only against the USPTO." In effect, the Redskins' claim is that the TTAB wrongly cancelled their trademarks--which, for better or worse, has rather little to do at this point with the complainants who initiated the cancellation proceedings in the first place. Thus, it certainly appears as if 15 U.S.C. § 1071(b)(4) does not in fact provide the Redskins with a cause of action against the Blackhorse defendants--and that the suit should be dismissed for failure to state a claim upon which relief can be granted.

II.  The Case-or-Controversy Requirement

But imagine, for a moment, that the Lanham Act does so provide--and that § 1071(b)(4) actually authorizes this suit. The motion to dismiss argues that, so construed, the Lanham Act would violate Article III's case-or-controversy requirement, and that seems right to me--albeit for slightly different reasons than those offered by the Blackhorse defendants.

The motion argues that "The Blackhorse Defendants’ legal and economic interests are not affected by the registration cancellations and they will not be affected by this litigation." But I think the case-or-controversy defect here goes to the Redskins' Article III standing. After all, it's black-letter law that a plaintiff must allege (1) a personal injury [“injury in fact”]; (2) that is fairly traceable to the defendant’s allegedly wrongful conduct [“causation”]; and (3) that is likely to be redressed by the requested relief [“redressability”]. Although the Redskins were clearly injured, it's not at all clear to me how the Redskins satisfy either the causation or redressability prongs.

On causation, as should be clear from the above recitation of the Redskins' claims, none of them even as alleged in the Complaint run against the Blackhorse defendants--who were the complaining parties before the TTAB. After all, even though they initiated the proceeding that produced the TTAB order the Redskins seek to challenge, they did not themselves issue that order, nor are they a competing business somehow reaping financial or noneconomic advantage from the deregistration of the Redskins' trademark.

As for redressability, neither the TTAB nor the Director of the U.S. Patent & Trademark Office are parties to the Redskins' suit, and so it is impossible to see how the relief the Redskins are seeking could be provided by the Blackhorse defendants. Again, one can imagine a different set of facts where the adverse party before the TTAB could have both (1) caused the plaintiff's injuries; and (2) be in a position to redress them, but I just don't see how either is true, here. It's certainly odd to think that the defect in this suit goes to the Redskins' standing--after all, if nothing else is clear, the Redskins are certainly injured by the TTAB's cancellation decision. But standing isn't just about the plaintiff being injured by a party nominally connected to the injury...

III.  The Equities

Finally, although the motion to dismiss doesn't make this point, there's an equitable point here that I think deserves mention. Whatever the merits of the TTAB's underlying ruling, I have to think that the Lanham Act was not designed to disincentive individuals like the Blackhorse defendants from bringing non-frivolous claims seeking the cancellation of registered trademarks on the ground that they are disparaging. But if the Redskins are right, here, then any party that pursues such a proceeding before the TTAB is necessarily opening itself up to the (rather substantial) costs of a new federal civil action if it prevails, even when the subject-matter of the suit is simply an effort to relitigate the TTAB's underlying cancellation decision. (All the more so because the standard of review in the new lawsuit is de novo, with full discovery.)

Such a result strikes me not only as unwise, but as not possibly being what Congress could have intended when it enacted § 1071(b)(4). Indeed, in many ways, the Redskins' claims sure seem analogous to a SLAPP suit--all the more so when you consider that the Redskins could have, but did not, directly appeal the TTAB ruling to the Federal Circuit.

Intellectual Property Infringement as Vandalism (Part 2)

I would like to continue the discussion I began in Part 1 about my co-authored paper Intellectual Property Infringement as Vandalism, which is forthcoming in the Stanford Technology Law Review.

We first explore in the paper why the theft label for IP infringement has become so sticky in many milieus. We believe that the main reason that content owners and their associates use the rhetoric of theft is that they want to emphasize the gravity of the conduct. The average downloader might tell herself that it makes little to no difference in the grand scheme of things if she illegally downloads music or movies, or if she shares such materials with friends and even a few strangers. Basically everybody, however, understands the concept of theft and has been raised to understand, often axiomatically, that stealing is wrong.

If one were to ask content owners and other proponents of the “IP infringement as theft” theory to explain their views in greater detail, they would cite to a number of factors that create parallels between the two types of violations. The IP owner, just like the property owner, generally mixes her labor with pre-existing materials to provide society with goods and help it to flourish. She will sometimes only do so, however, if provided with a critical mass of remuneration, or at least that remuneration will affect her level of productivity and of her efforts to distribute her work. To the intellectual property owner, large-scale illegitimate distribution of her works may economically create the same effect as a horde of potato thieves does for a farmer. In the farmer’s case, there will be nothing left to buy if all the potatoes are gone. In the infringer’s, even though the song will still “be” there at the end, few people may want to buy it if they can obtain it at zero cost elsewhere.

Looking at it from the other end, the potato thief ends up with a good for which he provided no labor or other valuable effort in exchange. Thieves, by definition, free-ride on others’ efforts (although not all free-riding constitutes theft). Similarly, the IP infringer is just a few clicks away from illicit goods that he can obtain without in turn contributing to society. Had the infringer not downloaded illegally, for example, one of two things would have happened. For one, he may have bought the good legally and the owner would have made more money. Or, he may not have bought the good at all and while the intellectual property owner would have felt no financial difference, the infringer would not have been free-riding and would not have had the opportunity to distribute that good to people that would have purchased the good legally but for this opportunity. There is a further possible loss that arises from the fact that intellectual property can—contrary to popular wisdom—be rivalrous at times. In the case of trademarks, the fact that lots of people use fake Louis Vuitton bags could disincentivize legitimate buyers from buying that brand if they value exclusivity or fear being viewed as potential infringers themselves, as I discussed in my article Hedonic Trademarks, 74 Ohio State Law Journal 241 (2013). In the copyright world, some legitimate buyers of concert tickets may no longer be willing to pay the same amounts of money for what should have been an exclusive show if they know that illegal tapings of that show will circulate later. The more rivalrous intellectual property turns out to be in a given case, the more it resembles property and the more its infringement parallels theft.

There has been strong opposition, however, to the idea that the harm to an intellectual property owner that originates in infringement can be equated to the plight of the potato farmer in the example used above. For one, critics have suggested that the intellectual property owner retains the original work at all times even if it is infringed, whereas theft deprives an owner of a good, including the ability to enjoy it himself or sell it to someone else. Second, it is virtually impossible to remove all value from a good even through a large-scale infringement operation, which again distinguishes this scenario from theft.  Third, the individual culpability of a given infringer tends to be much smaller than the culpability of a thief. Even if an infringer would have bought an artist’s work, she would have perhaps paid a few dollars in most cases given the high proportion of infringement that consists of illegal file sharing, and so a few dollars is the most that the artist is likely to lose. While many infringers together can occasion a large loss to a copyright owner, the infringers each tend to only chip away at the value of the work. Put differently, few infringers can truly be called the “cause” of a loss in this context, which is not true of thieves.

Some have argued that from a safety perspective, intellectual property infringement also simply tends to involve a much lower risk to the public than theft does because the latter could lead to physical altercations and the like. From a moral (and practical) viewpoint, a number of scholars have questioned what it means to say that what has become routine behavior for many is genuinely reprehensible. Scholars have argued that current intellectual property law makes infringers out of everyone, even people that do not engage in blatant behaviors like illegal downloading. Tying that in with theft and with the fact that the thief is generally viewed as an outcast of society who disrespects its rules, the concept of vast proportions of the population as thieves is puzzling. In the next part of this post, I will delve more deeply into why vandalism and trespass may provide better analogies for IP infringement than theft does. 

Related articles

Manta & Wagner on Intellectual Property Infringement as Vandalism

Is intellectual property infringement a property crime?

Intellectual Property Infringement as Vandalism (Part 1)

In addition to empirical work in intellectual property, another area that has been keeping me occupied is the intersection between IP and criminal law. A few years ago, I wrote an article entitled The Puzzle of Criminal Sanctions for Intellectual Property Infringement, 24 Harvard Journal of Law and Technology 469 (2011), in which I explored why we have criminal sanctions for copyright and trademark infringement but not for patent violations. Earlier this year, I published a paper called The High Cost of Low Sanctions, 66 Florida Law Review 157 (2014), that examined how low sanctions can lead undesirable laws to be passed and can eventually morph into high sanctions, an analysis whose focus was partly on copyright law. I then moved on to study, in an article called Intellectual Property and the Presumption of Innocence that is forthcoming in the William & Mary Law Review next year, the constitutional dimension of intellectual property criminal cases. I argued that prosecutors should have to prove that every element of such crimes, including the jurisdictional element, has been met beyond a reasonable doubt before convictions can occur. Most recently, I turned my attention to the relationship between the criminal (and civil) sanctions in intellectual property and those that we observe in property. This project, co-authored with Robert E. Wagner, is entitled Intellectual Property Infringement as Vandalism, and I would like to take the opportunity to describe it further here.

One of the recurring questions in scholarship is whether intellectual property qualifies as property and, as a correlative matter, whether IP infringement is theft. Content owners significantly push this analogy, including in heavy-handed ads that seek to remind people not to “steal” songs or movies. Meanwhile, critics have chipped away at the theft label. They have argued that when an object is stolen, the owner is entirely deprived of it, whereas IP owners maintain integral copies of their works when infringement takes place. Unlike in the case of theft, the intellectual property owner can also continue to sell copies of said work to willing buyers, if the market will bear it. Furthermore, to the extent the owner suffers a loss at the hands of the IP infringer, that loss is difficult to calculate. Not every infringer would have bought the work had he lacked the opportunity to infringe. At the same time, nobody can say with certainty about herself—even assuming perfect honesty—which works she would have bought in a zero-infringement world because the impulse to rationalize one’s actions in this setting is strong.

The sphere that discusses intellectual property infringement is thus mostly split between two camps. One of them believes that infringement is theft and concludes that if it is theft, the criminal sanctions and harsh civil sanctions that we have on the books are warranted. The other side denies that infringement is theft, sometimes downplays the gravity of infringement behavior, and regularly believes that the level of sanctions that American law provides is unjustified. We argue in our paper that the dichotomy that these two camps endorse is faulty, and that the question of whether intellectual property infringement parallels violations of property law requires much more nuanced analysis before it can influence the calibration of sanctions for intellectual property infringement. We seek to show that there is little meaningful difference between intellectual property infringement and property violations, but that the question of whether infringement is theft has led to the creation of an unnecessarily confusing and polarized discussion framework. While many scholars are correct to state that intellectual property infringement is not and cannot be literally the same as theft for the reasons briefly delineated above, such infringement bears significant similarities to and few distinctions from lesser property-related offenses such as vandalism or in some cases trespass. 

If one accepts the idea that IP infringement does at times parallel property violations, albeit not necessarily theft per se, the startling realization emerges that IP laws actually may punish wrongdoers more harshly than property law punishes defendants for equivalent offenses. After creating an analytical model to determine the content of “equivalence” in this context, we demonstrate that adopting a truly property-oriented IP legal regime may actually mandate a view of lowered criminal and civil sanctions. I will explore the ideas from this paper in more detail in future posts.

Related articles

Is intellectual property infringement a property crime?

Manta & Wagner on Intellectual Property Infringement as Vandalism

Using GoFundMe for Litigation

Here is a creative way this local news anchor is trying to raise public awareness and money for defending his case against a non-compete he had signed with his former employer. Watch him and his litigation team explain their woes. 

 

Substantial Similarity and Music

From Guest Irina Manta.

For those interested in more scholarship on the topic of substantial similarity in copyright law, Carys J. Craig and Guillaume Laroche (York University-Osgoode Hall Law School) recently posted a piece entitled Out of Tune: Why Copyright Law Needs Music Lessons. Here is the abstract:

This chapter offers a critical analysis of copyright law that integrates insights from music. The authors argue that the unique qualities of musical works magnify the mismatch between creative practices and copyright doctrine, and suggest that an interdisciplinary analysis can shine a revealing light on both the problem and potential paths to improvement. Beginning with an overview of copyright doctrine in Canada in respect of musical works and music infringement claims, the authors then borrow analytical concepts from the discipline of music theory to problematize copyright’s “reasonable listener” test for determining substantial copying. Using a specially-designed musical composition, the authors illustrate how and why this test may fail to perform its necessary role in the infringement analysis. The authors conclude by identifying some ways in which the legal analysis could be improved, including a more extensive use of both expert and survey evidence, and greater consideration of the accepted norms and practices of the relevant creative community. The overarching aim of this chapter is to demonstrate the importance of bringing the insights from musical and other creative disciplines to bear on the law of copyright, so that it might more accurately reflect the very practices it is meant to encourage.

Rebecca Tushnet has posted some of the key excerpts here. The authors give an interesting overview of the special problems entailed in similarity determinations for musical works and show that Canadian law largely suffers from the same problems as U.S. law in that area. They are also open to the possibility of introducing surveys in copyright litigation (similar to the ones we use in trademarks cases), as I suggested in previous work.

Judging Similarity (Part 3)

This post is by guest Irina Manta

Now that I have discussed the background and methodology of the studies in “Judging Similarity”, it is time to turn to a fuller discussion of the implications of our results for the third and last part of this post.

We had three key findings:

1)   Knowledge of copying significantly raises the similarity rating.

2)   Knowledge that a high level of labor went into creating the original work significantly raises the similarity rating.

3)   Knowledge that market substitution occurred does not appear to significantly raise the similarity rating.

As discussed in Part 2, we have reason to believe that the first finding is the result of confirmation bias. This finding is troubling in that it suggests that, at the most basic level, decision-makers may be unable to separate the two prongs of the substantial similarity test and that the copying prong (to borrow rhetoric from Barton Beebe’s work on the trademark multi-factor test) is “stampeding” the similarity prong.

Unlike in a trial setting, where the facts in copyright cases greatly differ from one situation to another, our first study enabled us to isolate the copying element. Nothing changed between the two conditions aside from the statement that the creator of the junior work copied from the original. Given our research design and the fact that we purposefully picked work pairings that are the type likely to go to court, there is reason to believe that the powerful effect of the knowledge of copying may sway decisions on infringement at the margin.

The second finding raises its own problems. We believe that knowledge of a high versus low expenditure of labor played a role in two possible ways. First, it might have triggered the intuition that the greater expenditure of labor ought to correlate to a stronger property right or ownership interest. Generally associated with Lockean ideals, this intuition is thought to map onto people’s beliefs about owning the products and fruits of their labor-intensive activities. The association with “stronger protection” for the work may have translated into a looser standard for similarity. Second, the expenditure of labor may not have triggered subjects’ beliefs about the strength of the property right, but instead directly affected their intuitions about the wrongfulness of the copying. Copying is commonly perceived as a form of free riding and is often associated with plagiarism or cheating. It is therefore conceivable that the creator’s expenditure of labor led subjects to view the copying involved as entailing greater (and more morally outrageous) free riding, which they treated as wrongful.

If our interpretation of subjects’ reasoning is correct, it suggests that copyright law and policy have done a poor job of cabining labor-based considerations. In its now notorious decision in Feist Publications, Inc. v. Rural Telephone Services Co., 499 U.S. 340 (1991), the Supreme Court categorically concluded that “sweat of the brow” considerations—i.e., that copyright should be used as a reward for hard work—are largely irrelevant to copyright law, especially in determining whether and how much protection works obtain. While this may be true as a formal matter, our study shows that decision-makers have a tendency to re-introduce these labor-based considerations during their assessments of similarity as part of the copyright infringement analysis. Interestingly, while scholars usually try to adjust copyright law based on utilitarian considerations, subjects were swayed in their similarity ratings at a statistically significant level by labor considerations (finding 2) but not by market substitution ones (finding 3).

Our study suggests that instead of claiming to have labor-based considerations play no part whatsoever in its working, copyright law should do one of two things. First, it could make a more concerted effort to eliminate labor-based considerations from the different elements of the analysis. Alternatively, it could embrace the reality that moral intuitions relating to labor and free riding directly influence the assessment of similarity, which in turn serves as a simple proxy for wrongfulness. I have written previously about how we might work toward the first goal, but much research remains to be done in this area.

Judging Similarity (Part 2)

This post is by August/September GuestPrawf Irina Manta.

In my first post on this subject, I wrote about the background that motivated us to conduct our studies on copyright infringement for our paper “Judging Similarity”. Today, I would like to discuss our methodology and results in more depth.

In the first study, we tested the hypothesis that images seem more similar simply by virtue of being copies. We used an online format and recruited subjects on Amazon Turk. Subjects were told that they would be shown image pairs and would be asked to rate their similarity on a numerical scale. We specified that subjects had to base their answers entirely on a comparison of the works themselves. We also told subjects that while there would be both similarities and dissimilarities, they had to judge the works as a whole. Further, we told them to assume each time that the work shown on the left was created before the work shown on the right. Subjects were randomly assigned to either the independent group or the copy group. The former group was told that the creator of the work on the right did not know about the work on the left during the process of creation. The latter group received the instruction that the creator of the work on the right copied from the work on the left during the process of creation. Subjects then proceeded to view image pairs such as this one.

We conducted statistical analyses and found that the individuals who were told that copying occurred rated works as significantly more similar to one another than did individuals who believed that the creation process had been independent.

The results of the first study can mainly be explained in one of two ways. First, confirmation bias may lead individuals to find similarities more easily when told that a work was copied. Alternatively, motivated reasoning may influence people to punish copiers as part of the similarity analysis because they find copying morally distasteful. The first explanation struck us as more plausible in this case because subjects were not told about the consequences of the similarity judgment.

We then conducted a second study that would provide more legal context for the similarity judgment. Our goal was to test two hypotheses about how moral intuitions about unfairness of copying might affect judgments of similarity. We tested the effect of information about high versus low effort invested by the original creator. We separately tested the effect of information about negative versus no change in market demand for the original since the copy became available. This study used a single image pair in hopes of eliciting a clean response and approximating the conditions that a jury or judge would encounter in a trial. We changed our instructions to include explanations of copyright infringement and of the types of consequences that could result from a finding of liability. We also briefly explained “substantial similarity” and how it had to be present for a claim to succeed. The rest of our instructions resembled those from the first study, and subjects were told to rate similarity on a numerical scale comparing only the works themselves and viewing them as a whole. We told subjects across conditions that the work on the left is the original and the one on the right is the copy. We used this image pair.

We used four conditions. In our “high labor” condition, we told subjects that the creator of the original spent about two months designing and setting up the shot on the left. In the “low labor” condition, we said that this process had taken ten minutes. In the “market effect” condition, we told subjects that since the copy has become available, it has had a strong negative effect on the demand for prints and licenses of the original and that sales of the original decreased by over 60% since the copy came on the market. In the “no market effect” condition, we told subjects that the arrival on the market of the copy had no effect on sales of the original.

When we compared the two labor conditions, we found a significantly higher similarity rating for the group that believed that the original work had taken a high level of labor to create. When we analyzed the two market substitution conditions, however, we found no statistically significant difference between the groups. In part 3 of my post, I will discuss the implications of our findings.

Judging Similarity (Part 1)

This post is by GuestPrawf Irina Manta.

I thought I would kick things off by talking a bit about the empirical intellectual property work in which I have been and continue to be engaged. Empirical work in this subject matter has been increasing in popularity in recent years after some pioneers like Barton Beebe and other scholars led the way. The relationship between social science and IP issues has fascinated me for years, so it is a much welcome trend in my eyes. Most recently, I collaborated on my own first project in that area with co-authors Shyam Balganesh and Tess Wilkinson-Ryan. The paper that resulted, Judging Similarity, will appear in the Iowa Law Review later this year, and I would like to offer a sneak peek here into some of the issues we examined.

The test for copyright infringement asks in part that fact-finders determine whether the original work and the allegedly infringing work are “substantially similar” to one another. Put differently, fact-finders—usually jurors—have to decide whether a “reasonable observer” would believe that the similarities between two works were of such a high degree as to involve wrongful appropriation. Further, fact-finders have to establish that actual copying took place, and similarity often plays a role to meet that prong as well when there is no admission of copying. While different circuits each have their own version of the copyright infringement test, they all require a showing of substantial similarity in some form or another. I expressed the concern in my earlier article “Reasonable Copyright”, 53 Boston College Law Review 1303 (2012), that the seemingly simple matter of determining similarity may create an inquiry that is particularly open to numerous cognitive biases. These biases, I argued, would distort the judicial process in a way that would likely generally benefit plaintiffs. My empirical work with Shyam and Tess allowed me to test some of these earlier intuitions I generated.

The first issue in the context of substantial similarity is that by the time the question of similarity reaches a jury, its members have already heard a great deal of evidence about the plaintiff, the defendant, the creativity involved, the process through which the work was created, the reasons for which the work was produced, the defendant’s own creative efforts and behavior, and, on occasion, the market effects of the defendant’s copying. Although the similarity finding is meant to involve no more than a comparison of the two works to assess whether they are sufficiently similar to render the copying problematic (i.e., improper), that judgment may be affected by the availability of this other evidence. The fact-finder is required to answer the question of substantial similarity through a mere comparison of the two works, which will often involve actively ignoring instinctively relevant and highly salient information. Copyright law thus seems to assume that the inquiry into substantial similarity can serve as a simple comparison of the two works, even in the face of extensive factual evidence that bears directly on the dispute in question. The fact-finder is presumed to be able to cabin and exclude from the analysis all of the evidence with which the court has been presented in the lead-up to the issue of substantial similarity.

We know from other contexts that it is very difficult to ignore salient information when performing difficult cognitive tasks. In the judicial world, for instance, many have attacked the instructions to ignore inadmissible evidence as often not only failing to alleviate the problem but in fact aggravating it by actually making the information more salient. The similarity determination may have traditionally lulled people into a false sense of confidence by creating the impression that it involves a purely perceptual task that does not contain complex moral judgments. We posited, however, that similarities would appear as more similar and dissimilarities as less obvious when the judgment was embedded in a narrative that identified an actor who intentionally engaged in copying.

As I will describe in more detail in my next post, we conducted two different studies that asked subjects to rate the level of similarity between pairs of images. We varied the instructions and extraneous information with which we provided subjects so that we could determine which factors, if any, influence what the legal system would like to see involve an entirely perceptual task. We were able to show through these studies that knowledge of copying led subjects to view two works as significantly more similar than otherwise. In addition, the belief that the original work had taken a lot of labor to create also significantly increased the similarity rating. Meanwhile, information that suggested that the junior work partially supplanted the original work in the market, i.e., that market substitution took place, did not affect the similarity rating. I will discuss our methodology and explain our results in part 2 of this post.

Fair Use and News Reporting

The US Court of Appeals for the Ninth Circuit has stated that "[w]aving the news reporting flag is not a get out of jail free card in the copyright arena." In Swatch Group Mgmt. Services v. Bloomberg L.P., __ F.3d __, 2014 WL 2219162 (2014), however, the Second Circuit took a charitable view of such flag waving and interpreted fair use broadly to protect a news organization's dissemination of a highly newsworthy recording. The Second Circuit's broad interpretation of fair use to accommodate news reporting is especially noteworthy in an era in which news organizations are often faced with difficult questions about whether they may legally reproduce "user-generated content."

In Swatch Group Management Services v. Bloomberg, Swatch Group sued for copyright infringement because Bloomberg disseminated a sound recording of a conference call between Swatch and investment analysts to discuss the company's earnings report. Swatch did not admit the press to the conference call, but Bloomberg nonetheless obtained and disseminated a recording of the call to its paid subscribers. A district court granted summary judgment for Bloomberg on fair use grounds, and the Second Circuit affirmed.

First, the court found that “whether one describes Bloomberg’s activities as ‘news reporting,’ ‘data delivery,’ or any other turn of phrase, there can be no doubt that Bloomberg’s purpose in obtaining and disseminating the recording at issue was to make important financial information about Swatch Group available to investors and analysts.” That Bloomberg profited from the dissemination of the recording did not alter the court’s analysis, because almost all news services obtain profits by publishing factual information. The court further observed that the nature of Bloomberg’s use of the recording supported a finding of fair use even though Bloomberg reproduced the original verbatim: “[T]he need to convey information to the public accurately may in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work without alteration.” (emphasis added) This use even could be considered “transformative” because Bloomberg was publishing “factual information to an audience from which Swatch Group’s purpose was to withhold it.” [!]

 Analyzing the second fair use factor (i.e., the nature of the copyrighted work), the court found that Bloomberg’s use of the recording did not threaten Swatch’s copyright interests because the information disseminated was entirely factual, and Swatch had already “publicly disseminated the spoken performance embodied in the recording.” Third, the court assessed “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Although Bloomberg used the entire work, the use “was reasonable in light of its purpose of disseminating important financial information to investors and analysts.” Fourth, Bloomberg’s use of the sound recording had no market effect on the value of Swatch’s unpublished recording, and Swatch created the recording for other advantages unrelated to “the possibility of receiving royalties.” Finally, the “balance of factors” favored Bloomberg’s dissemination being treated as a fair use, particularly given the importance of the public interest in financial information.

From a media law scholar's perspective, this decision  is praiseworthy because the court clearly recognizes that the public interest should play an important role in fair use analysis. (Compare the Ninth Circuit's decision in Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1183 (2012), in which it said "fair use has bounds even in news reporting, and no per se public interest exception exists.").  Instead of getting hung up on technical application of the fair use factors, the court implicitly looked to the broader goals of copyright law and found that the newsworthiness of (and lack of originality in) the recording trumped the fact that Bloomberg had used the whole thing without alteration. 

Whether other courts will interpret the fair use factors as broadly when a defendant uses an entire copyrighted work remains to be seen. But in an era when copyright law is being (mis)used in an attempt to force takedowns of photos taken by monkeys, the Second Circuit's decision provides a neeeded dose of common sense.

 

Schemas, Shortcuts, and Software

We are constantly being provided with information -- whether we want it or not -- about what is going on in the world around us.  Luckily our brains are equipped to handle the data (at least most of the time).  In cognitive science, schemas are structures that help us to organize and interpret this information efficiently.  We also use heuristics, or shortcuts, to process information quickly.  And for the most part, these are good things.  We may have a schema that organizes the data we need to drive safely and when faced with an unexpected obstacle, we have heuristics that help us to avoid that obstacle in time.  

(NB - I'm still making sure I'm understanding the cognitive science terminology, etc. - see my earlier post on the subject...the point of this post isn't the precision of the cognitive terms but rather some implications in law.)

 This raises at least two concerns for me.  First - while it certainly is important to be able to process legal issues quickly,  when considering questions about the law and its applications, should we always be focused on efficiency and speed or are there times when getting it right, even when it is slow or inefficient, should take precedence?  Second - what happens when the schemas and heuristics we are working under are wrong?

I have an article that's coming out later this year in the George Washington Law Review that looks at the schemas and some of the heuristics that have arisen around the question of whether software and computer-related inventions should be eligible to receive patents.  My arguments are basically that there are two schemas that are driving the software patent conversation -- the bad patent schema and the troll schema.  In very brief, the schemas go like this:  the Patent Office can't properly examine patent applications on software and computer-related inventions so it is issuing many invalid patents in this area -- therefore we should ban software patents.  And because a lot of these patents are invalid and because they are easy to obtain, etc., patent trolls assert software patents in disproportionate numbers and trolls are bad -- therefore we should ban software patents.

Basically there is a framework set up underneath the software patent discussion that has very little to do with whether we want good software patents -- in my opinion, a bad schema.  This problem is exacerbated by some flawed shortcuts, which I won't go into here.

But I don't want to make this post all about my paper or software patents or patent trolls (regardless of how much I like all three of those things).  I'm wondering where, besides this question in patent law, is the conversation being had largely unrelated to the central question.  Patent law can't be unique in this area - at least I hope not.  Any thoughts of other flawed schemas??  Are there other important areas of law where the conversations are being misdirected by the structure set up to examine the problems?  

Research on heuristics and the implications of these on law are much more common.  In fact, much work has been done on flawed shortcuts.  For example, stereotyping is one prominent heuristic that has been given a lot of ink in scholarly literature - in part because it often strikes us as just plain wrong.  I imagine its a lot harder to sell you on a stereotype narrative about patent trolls, isn't it?  This brings me back to my troll taxonomy - as long as patent trolls are seen as universally bad, it is unlikely that any argument that the stereotype is flawed will succeed.

Troll Taxonomy - Why Does It Matter?

It's a question that always evokes a love/hate relationship for me when I hear it at academic conferences or works-in-progress events...so what?  It's painful, but if I can answer it, the paper will always be more valuable.  (You think I would have caught on and started answering the "so what" question preemptively...but I'm a bit thick sometimes.)

Anyway, going back to the idea of a troll taxonomy that I mentioned last week...so what?

Why does it matter what kind of patent troll you are?  As one commenter noted, if you need to throw the baby out with the bathwater to end the types of litigation abuse that are associated with trolls, then so be it.  Is this just a useless exercise in classifying, counting, sorting, and grouping? 

Here's why it does matter.  We already break out certain types of non-practicing entities -- for example universities.  Why?  Because we are willing to accept some non-beneficial behavior (patents being held on inventions that are not commercialized by the patent holder) to receive other beneficial behaviors that this particular type of troll -- universities -- are good at (upstream research, medical research, etc.).  My argument is that other types of patent trolls might similarly provide beneficial behaviors that outweigh (or at least counteract) the non-beneficial behavior of holding patents without practicing the technology.  Without looking more closely at these trolls, it's hard to know what behaviors they engage in.  And that's where I step in.

Notice, though, that I'm not pointing to the non-beneficial behavior of vexatious litigation or sketchy cease-and-demand letters, because those behaviors are not how we sort patent trolls now.  We look only at whether or not they practice the patented technology - so when we're doing the beneficial/non-beneficial calculus, we should be using the non-beneficial behavior that landed the patent troll in the category to start with.  If Congress and the courts want to start classifying patent trolls based on their litigation behaviors, then the conversation would be different and maybe a taxonomy wouldn't matter.  However, as long as patent troll reform starts from the grouping of non-practicing entities, a troll taxonomy does matter.

 

A Taxonomy of Trolls

I want to start with a little story - I'm at an academic roundtable in the land of the snowbird, so please don't take offense.  Everyone knows that old people drive slowly.  They keep young, vibrant folks from getting to where they want to get to, clogging up the roads with their big old cars.  No one would argue that this is a problem that needs to be solved, so let's pass laws to get these old people off the road, right?

The legislators propose a set of laws to fix the problem:

1)  Old people are no longer permitted to drive; and

2)  Because it isn't easy to identify an old person without looking at who is driving, any person driving a late model Lincoln Towncar or any similar type vehicle is also prohibited from driving.

3)  There is an exception for old people who are driving to work at soup kitchens or other charitable activities are allowed to drive, no matter how slowly and even if they impede the driving of other people.

If you don't see any problems with this story, then you're probably OK with the pending patent troll reform bills...but I'm not.

Patent troll legislation looks an awful lot like the laws above.  Patent trolls purportedly get in the way of companies that are making and selling stuff, most egregiously by bringing nuisance litigation suits or sending fraudulent cease and desist demand letters.  To deter this trollish behavior, many reform provisions have been proposed.  By way of analogy to the old person driver laws above, if you don't make something, you are a patent troll subject to any number of limitations on your behaviors.  If we can't tell whether you make something, you are a patent troll subject to said limitations.  There are some people who don't make things, like universities; however, we like them, so they aren't subject to the limitations. 

What's going on here can be attributed to cognitive biases - most prominently, the stereotyping or grouping bias, whereby certain characteristics are imputed to a group without regard to individual differences among the members of the group.  Although the term "cognitive biases" usually carries negative connotations, cognitive biases actually help us get through life in an age when we are constantly bombarded with information - so much information that it is not possible to process it all.  So instead of simply giving up, our brains use various heuristics and cognitive biases to lump the information and process it quickly. 

Similarly, it is very difficult to craft legislation that can take into account all possible information - and so legislators need to take shortcuts and create groupings.  But pending patent troll reform is simply too broad and ignores the fact that many of the behaviors that are driving the legislation are not captured by the stereotypical definition of patent troll.  There are old people who drive fast (and young people who drive slow and impede traffic).  And there are companies that do not make things that do not engage in the harmful behavior (and companies that make things and also file nuisance lawsuits, etc.).  

I have begun a research agenda that is looking behind the broad definition of "patent troll."  The overarching theme of my project is to develop a taxonomy of patent trolls, looking behind the curtains to tell the stories of these different groups.  A few empirical studies have broken the group of patent trolls into types, but only for the purposes of counting.  I, instead, want to study the entities behind the label, to tell the stories of the entities, and to compare the actual stories to the fairy tales and fables that are being built up around these patent trolls.  The narratives, in many cases, will illustrate that the problems that Congress is looking to solve are not present for certain classes of these trolls.  

My first stab at digging into the taxonomy of patent trolls is to look at formerly manufacturing entity.  In a piece forthcoming in the University of Connecticut Law Review (that I'll talk more about shortly), I provide case study data on these entities that used to make something but for any number of reasons no longer do.  While they fall squarely in the definition of patent troll (an entity that does not make things), they are not the same as other types of patent trolls.  Are they engaging in the purportedly bad trollish behavior?  If not, why are we comfortable with including them in the broad patent troll category?  Maybe we shouldn't be.

As my guest term here goes on, I'll tell you more about the taxonomy I'm laying out, as well as giving you a peek behind the curtain at the stories of these different types of patent trolls.  (And I'll try not to offend old people any further!)