Saturday, February 28, 2009

IP Scholars Roundtable at Drake

Peter Yu continues his awesome conference run, now at Drake.

Panel 1: Copyright and Fair Use

Jason Mazzone, Brooklyn Law School ―Administering Fair Use

Based on the paper he presented at William & Mary. Administrative agencies play a bigger role in other areas of law than in IP/copyright. Here, he wants to fix fair use: its lack of clarity, and the ability of copyright owners to leverage uncertainty to expand their rights. Fair use is a classic case for rulemaking: Congress didn’t want a specific standard because it didn’t anticipate everything that could happen, and courts decide cases that are so specific that they aren’t good general guides. A key part of whatever scheme, whether the agency had advisory or adjudicatory authority, would be preempting attempts to use contract law to get around fair use.
Agencies can provide predictability for large numbers of users at once.

Alina Ng, Mississippi College School of Law ―Property Rights and Access to Information

Copyright optimists have a market-based approach: property rights are necessary and sufficient to get optimal creativity. Minimalists tend more to civil rights, constitutional, social rights arguments: copyright limits spur creativity. §106 rights are given to encourage dissemination. Compare to §102, which says rights are limited to original works in tangible media, which is designed to encourage creativity/innovation. We should think of §106 as privileges, with an economic basis. Hohfeld’s right/privilege distinction can be of use here. Any property rights should be rights of the owner/author; more limited rights should go to the distributor.

Mark Schultz, Southern Illinois University School of Law ―Tolerated Uses and Property Rights in Copyright

Customary, permissive uses are becoming more pervasive and important as digital media are becoming more prevalent. Users don’t bump up against copyright law as much as we often think, but when they do the potential harm is quite high because of things like statutory damages. Wants to respond to skepticism about the use of customary practices—Tim Wu, Jennifer Rothman. He thinks tolerated use is helpful and productive.

Implied license is a good start, but isn’t robust enough. Look to property law: a rich body of insights and theory regarding how we should reconcile adverse or permissive uses of others’ property with property rights. Importing these doctrines by analogy will give us greater certainty and flexibility. We don’t want to encourage copyright owners to put fences around their works to avoid the development of permissive customs.

Examples of custom: The practice of quoting text with attribution: Bridgeport and Ringgold show that text is for some reason treated differently from AV works. Is it fair use? It’s a custom from time immemorial. (Or are Bridgeport and Ringgold just wrong?) Email quoting is similar.

Second, dedication to the public. Are CC licenses revocable? Applying the doctrine of dedication to the public could build a defense against such revocation.

Third, an implied license arises more often when property owners use it defensively, to defend against a claimed easement/adverse use. They say that the use was by permission—it’s understood in the community that neighbors allow each other to do such things; therefore, the use was not adverse and I can revoke my permission. In copyright, this could be potentially important: when you make a use that most copyright owners tolerate, the one who doesn’t (like Prince in Lenz) can currently assert a claim for statutory damages. Treating customary uses as subject to revocable licenses would (1) encourage toleration, because toleration wouldn’t create a risk of losing rights, and (2) protect users from big damages when the copyright owner behaves unusually.

Ned Snow, University of Arkansas School of Law ―Proving Fair Use: Burden of Proof as Burden of Speech

Key question for his project on shifting the burden of proof: Does shifting the burden of proof really matter? Many readers said: only at the margin would it make a difference. But a burden of proof is more than getting evidence. The market impact factor certainly raises concerns of the burden of production—potential markets are speculative—but there is also a burden of persuasion with respect to the first three fair use factors. These aren’t matters of law, but matters of fact as courts deal with them.

First factor inquiry into transformation: that factor is at least as weighty as the fourth, after Campbell. So how would a burden of proof shift affect it? Transformativeness is a qualitative inquiry. This means subjectivity in determinations. People are often confident in their assessments of transformativeness, based on their own idiosyncratic experiences and backgrounds. It can be hard to see a middle ground, and empirically people are often quite convinced that something is either highly transformative or not transformative at all: e.g., CleanFlicks case, where Hollywood movies are edited to remove objectionable content. This inflated certainty is a problem for arguing that a burden of proof shift will make a difference, especially when we’re dealing with a single fact-finder, the judge, on summary judgment—a common scenario. In a jury, there’s more opportunity for different confident people to talk to each other and shake each other up. We might need a clear and convincing standard to matter.

Nonetheless, Snow thinks that burden of proof could make a difference, and that recognizing that transformativeness is an issue of fact would be an important step forward. This has implications for First Amendment analysis as well. (Query: how would this affect the determination in Mattel v. Walking Mountain that survey evidence on transformativeness was irrelevant?)

Sun Haochen, Visiting Researcher, Harvard Law School ―Toward a Public Trust Doctrine in Copyright Law

Copyright has an environmental crisis: copyright industries had all the power in making the law. Expansion of copyright has significantly harmed the public interest in the free flow of knowledge.
Solution: The public trust doctrine from property, where certain areas are naturally and irrevocably committed to the public, even if the government attempts to privatize them. These resources are held in trust for the public. (Funny, we recently touched on trusts in property; trustees now generally have the power to alienate underlying property as long as it’s for the benefit of the beneficiaries. The public trust doctrine seems a little inconsistent with modern private trust doctrine.)

Public trust allows us to implement the insights of public sphere theorists like Habermas: open spaces where everyone can enter on equal terms. By enacting copyright law, the government gives private parties exclusive control of what was free for the public to use. It affects public access to knowledge. And the copyright law we actually have has been manipulated.

If knowledge and information were held in trust for the public, the public would be entitled to them by virtue of membership in the human community. Think of it as a collective right: a right to environmental protection, cultural participation, and/or benefit from technological development. Fair use then is not just an individual affirmative defense but an assertion of public right.

Courts could require copyright owners to allow the use of their works as a social responsibility.

Discussants: Michael J. Madison, University of Pittsburgh School of Law

Everybody talks about the weather, but no one does anything about it: The papers are all about how to fix doctrine. They don’t generally address actual creative practices out there, except in individual cases.

For Mazzone: If the primary goal is to infuse the doctrine with predictability, it seems odd to add administrative to judicial procedures, which seems like it just adds another layer of unpredictability.

For Ng: Focusing on appropriability is an interesting idea. The historic copyright law challenge has been to divide private production, not typically a concern, from public exploitation. This is a different conceptual framework and raises the question what the standard should be—should the standard for originality/creativity be higher? Copyright scholars don’t like to talk about that, partly because of the long shadow of Holmes, but we do often think that some content is good and some is bad, and often that’s driving the discussion—we make fun of Britney Spears, or whoever, when we teach. It’s useful to have that discussion out in public. Eldred was in part about skepticism about Disney; Disney makes bad stuff, therefore we don’t want to make it so easy for Disney to make more stuff.

For Schultz: Wants to solve the problem at the back end, whereas Ng is about the front end. Madison isn’t sure that all the issues Schultz covers fit into “tolerated use”—the question is how long we look at things from the copyright owner’s perspective and when we start to look at things from the user’s perspective.

For Snow: Third-party intermediary liability is where the burden of proof becomes really important. Aimster: failure of proof on noninfringing uses. Likewise, the DMCA makes noninfringing uses key, and the burden of proof might matter hugely.

For Haochen: Madison is skeptical that the public trust doctrine helps. Great book: Joseph Sax’s Playing Darts with a Rembrandt—the argument doesn’t work because of the conflict between the intangible work embodied in a physical thing; access becomes a question of access to both. You may have a public trust right to use a beach, but how do you get to the beach? Property owners fight tooth and nail to cut off access to the beach.

Mary Wong, Franklin Pierce Law Center

How might these models work outside the US? The US has influenced lots of other countries, for good or ill. International standards and norms, especially Berne, affect our ability to change the law. Comparatively: Haochen’s paper, for example, invokes concepts that resonate with Canada’s CCH decision.

One thing she’s been thinking about: when we talk about transformativeness, we don’t always mean the same thing. Purpose, process, result—which do courts choose?

Mark McKenna for Schultz: Likes thinking about ways to deal with these problems other than fair use. Normative principle underlying Schultz’s work: these things that are tolerated ought to be within the copyright owner’s control, even if most don’t care; if the unusual copyright owner does care, it should control. That’s a fundamental difference between your approach and fair use. If the analogy is that the unusual copyright owner is like the unusual, annoying neighbor, it’s not just statutory damages that are the problem. The other problem is that you don’t know who you’re dealing with until you get sued.

Llew Gibbons for Snow: How do you reconcile transformative use with the right to prepare a derivative work? And should we have a patent fair use doctrine?

Schultz: Some of what he’s thinking about stems from pragmatic concerns: Berne, political economy. We’re not going to get a detailed code of established fair uses. Thus: statutory damages are permitted, not mandated by Berne and we can limit them. But he agrees there’s a normative assumption; the universe of uses he’s thinking about include many that probably should be within the control of the copyright owner.

McKenna: Spell out the extent to which you agree that these should be controlled, and the extent to which it’s just a second-best solution.

Snow: Transformativeness/derivative works conflict has been around for a while. Most people can’t answer the question clearly, which bolsters the argument that the burden of proof may be controlling.

Haochen: Note how seeing user rights as collective rights backs the idea for shifting the burden of proof—public rights have to be defeated because they win by default.

Doris Long: One of the virtues of fair use over fair dealing is flexibility: Doesn’t predictability have costs for people who don’t fit into preexisting categories? A separate comment: the user rights focus always runs up against the idea that the users need to get the creators to create first. Land is there, but works need incentives. (Me: Well, they don’t always need incentives as conventionally defined, and they regularly don’t need copyright incentives; nor is valuable stuff always on the land first, so that opposition is far from absolute.)

Q: The more we move to constitutionalize, the more we have problems of entanglement. If we add in an administrative agency picking winners and losers, content discrimination seems to become more worrisome from a First Amendment perspective.

Q: The part of Mazzone’s proposal on preempting contracts hasn’t received enough attention. Why shouldn’t people be able to contract around the baseline rules. On Haochen: distinguish between public trust and public domain—what are the differences? We remove things from the public domain for a time for overall social benefit.

Schultz: He has a strong normative preference for a property approach over regulatory, in part because of the problem of regulatory entanglement. There are ways to insulate regulators—the National Endowment for the Arts has actually done a pretty good job—but mostly that’s because it has a small relative role in the arts; mostly we fund the arts in other ways, including by subsidizing choice through charitable deductions.

Snow, in response to my question about Mattel: His knee-jerk reaction is that the survey on transformativeness ought to be admissible, and like other factual issues go to the jury. (I think this is a mistake, though the issue is connected to problems with surveys, including problems with training survey respondents to understand legal categories and problems with deferring to a percentage of people, even a significant one, when some other significant percentage disagree. If 60% of people see no transformative message and 20% do and 20% aren’t sure, has the plaintiff’s burden of proof been satisfied?)

Drake IP Scholars, Panel 5

Panel 5: Copyright

Timothy K. Armstrong, University of Cincinnati College of Law ―Can Authors Shrink the Public Domain? Preliminary Thoughts on the Termination of Copyright Licenses Granted for the Benefit of the Public

Jacobsen v. Katzer: Good news for GPL, but also a worrisome implication. If GPL etc. are copyright licenses, then they’re subject to termination provisions in §203 and §304. The traditional fear of the exploitative publisher is not implicated by the CC/GPL situation. Nevertheless, the statute isn’t limited to terminating licenses procured by economic pressure from a powerful licensee. Are there ways to avoid the practical nightmare of revocation?

Biggest problem: Copyright Act doesn’t provide for permanent renunciation of authors’ rights, but Patent Act does: allows abandonment either expressly or through conduct. Possible solution: amend Copyright Act to conform with Patent Act.

Orit Fischman Afori, College of Management Academic Studies Law School (Israel) ―Judicial Discretion in Granting Injunctive Relief in Cases of Copyright Infringement: A Call for Action

Over time, injunctive relief became automatic, despite multiple invitations by SCt: Stewart v. Abend, Campbell v. Acuff-Rose, and more recent cases.

Three main aspects of reviving equitable considerations: (1) proprietary. Will avoiding injunctions cause copyright to lose its proprietary nature? She prevers a pragmatic answer: all rights are a mix of property and liability elements. There’s no such thing as a pure property rule. Ask instead when it’s appropriate to deny injunctive relief and develop a body of case law. Consider transaction costs, interests in free competition, public interest in use of works and access.

(2) Constitutional aspects: the potential conflict between copyright and free speech. When fair use isn’t good enough, denying injunctive relief can help.

(3) Economic aspects: fair use is all or nothing. Injunctive relief can work as a mid-way solution: the work can be used, but not for free. (This, by the way, is why I fear this solution, as likely to destroy fair use.) Judicial discretion is unlikely to turn into the equivalent of a compulsory license.

Need for legislation. Israeli model, Art. 53: “In an action for copyright infringement the claimant shall be entitled to injunctive relief, unless the court finds that there are reasons which justify not doing so.” (I’m guessing one implies “successful” in front of “claimaint.”) Even better: add an open list of considerations.

Ira Nathenson, St. Thomas University School of Law ―Harry Potter and Muggle Intellectual Property Law

Law and literature approach. Magic is a change to the architecture of the real world. Subject matter of what we call IP can then be regulated differently, through norms and markets.

The HP universe is a laboratory for legal thought experiments, as Aaron Schwabach says. Wizards can use magic to protect themselves without law; Muggles can use technology to protect themselves without law. Use the treatment of IP in HP to rethink IP in the real world.

Do wizards care about IP? Yes, they write books and music and they invent things. How do they regulate it? Books can protect themselves. Spells can prevent copying or reverse engineering. Quiddich Through the Ages bears a warning of dire magical consequences for miscreants.

But wizards fear Muggles and have separated from them. Normatively, guarding the secret of magic is the priority, protecting each group from one another. How does this affect law? It means there’s very little legal regulation of magic. There are only three Unforgivable Curses, resulting in life imprisonment. There’s a law against underage use of magic, though Harry Potter initially escapes punishment for violating the law. Then he’s prosecuted for defending himself against Dementors: selective prosecution based on politics. Law isn’t a regular part of magical life.

Lockhart writes books based on stealing the memories of other wizards. He ends up losing his own memory when his memory charm backfires.

Reference in the books to the Ludicrous Patents Office—possibly an office that goes out and prevents overly broad assertions of proprietary rights. Weasley Bros. have “patented daydream charms”—patent here seems to be used like “patent medicine” in 19th century. Not a granted patent, but an assertion of proprietary rights. A Ludicrous Patent Office stops overly broad and dangerous assertions of such rights. (This is like preempting contracts where contracts have gobbled up law, or regulating tech as the EU is more likely to do than the US.)

Goblins have a very different view of property rights. They don’t consider the purchase of an object to transfer ownership. Selling a bought object is theft. But there are some parallels to human attitudes—Gary Pulsinelli’s piece.

DMCA: Takedown regime shows how architecture affects laws, which then affects markets and norms. New internet architecture led to a demand for changed law. The takedown regime changed the way users thought about remix. And norms changed: Viacom now has a policy against challenging at least some kinds of user-generated content. Many content owners now use fingerprinting to ID copies and monetize them.

Among the law-related HP stories I thought of when I heard this was the classic Lust Over Pendle, which deals more with Muggle law and is a great read. (Pull quote specific to lawyers: “I understand the concept of fiduciary duty all right, but would forgetting to tell the Board that your European landlord’s a gay wizard actually breach it? Even in Virginia? I mean - I'd be very surprised if it were grounds for invalidating the lease - in fact, when I say ‘very surprised’ I mean it was something I insisted Draco’s lawyers got checked, especially.”)

Liam S. O’Melinn, Pettit College of Law, Ohio Northern University ―The Recording Industry v. James Madison, aka ―Publius: An Essay on the Ethos of Intellectual Property

Madison wrote an essay lifting from Hume’s words without attribution, and fragmented nonliteral similarity: plagiarism, and copyright infringement, by today’s standards. These Founders didn’t think they were doing anything wrong. Franklin was also known for plagiarizing (as we’d call it). Quote: the founders were hard-headed amateur economists, for whom the bottom line was everything. They were also writers who plagiarized and scientists who never sought patents.

Judges and lawmakers have consistently been friendlier to copyright claimants than the Founders. One example: protection for sound recordings. Barbara Ringer and others noted that sound recordings really don’t have much resemblance to “Writings,” but they pointed out that judges had rarely bothered with technicalities of that sort and thought, correctly, that they’d be able to secure protection for sound recordings regardless. It got even worse with software, protected as “writings” even though humans can’t even read it.

Lucille M. Ponte, Florida Coastal School of Law ―Echoes of the Sumptuary Impulse: Considering the Threads of Social Identity, Public Morality, and Economic Protectionism under the Proposed Design Piracy Prohibition Act

Sumptuary laws were aimed at consumption of food and clothing. The public shouldn’t squander its resources excessively. The idea came out of funerals, an occasion for public display. This regulation of consumption moved to a regulation of assumption: how dare you wear clothing meant for your superiors. It was a regulation of presentation. There were either privileges—the only one to get to wear purple silk with gold embroidery was the emperor—and prohibitions—those in a certain class couldn’t wear certain clothing.

Justifications: A matter of public morality: controlling individual pride. This was important in colonial America: Puritans didn’t want people inciting lust in their neighbors. Another reason: economic protectionism. Merchants shouldn’t be able to pass themselves off as knights—had to be 5x as wealthy as knights to get to wear the same clothes. (Is this economic protectionism? That seems class-based. I thought she meant that limiting sales of certain clothing supplemented a mercantilist policy in which foreign goods were deemed dangerous to the economic health of the polity.)

The current Design Piracy Prohibition Act also addresses a range of social anxieties. Should elites be privileged over their inferiors? Past testimony for early 20th-century attempts to protect design—rich people don’t want to wear the same designs as their servants. And the arguments are the same now: rich people won’t buy things if those things are everywhere. Response of knock-off makers: I’m a populist, trying to spread the wealth.

The current debate also chastises immoral conduct. Shopping to excess is no longer immoral, so the argument is that knock-offs fund terrorism. Proponents use the language of theft: buying knock-offs is stealing.

Call for economic protectionism: fear of technology—something can be on the Paris catwalks one minute and in China the next. Fear that things can disseminate quickly, speeding the fashion cycle and depriving high-priced designers of revenue. Fear of India and China as emerging economies, even though the US stole Parisian designs for a hundred years. There’s also an idea that we have to keep up with the EU and other international IP schemes; EU protects fashion design, so we should. (My comment: Yeah, how’s that working for databases?)

Sumptuary laws always have trouble with enforcement. The fundamental contradiction: forbidding something makes it much more desirable. Ban on wool imports increased wool smuggling. But when poor people were told to wear wool caps on Sunday, wool became unattractive. Changing views of public morality/social ordering: most people don’t think buying a knock-off is stealing.

Discussants: Michael Landau, Georgia State University College of Law

For Armstrong: Patents have a short term; copyrights have a really long term. Copyrights are supposed to last for two generations after the author, unlike patents, which gives a reason to treat revocation of rights differently. (I expect Deven Desai is going to have something to say about this.) Also, what about derivative rights?

For Afori: He’s a big fan of injunctions for derivative works (which would have been noninfringing before the expansion of rights). US law says injunctions “may” issue, so statutory change may not be necessary.

For Nathenson: We don’t have magic to make books self-destruct, so law may need to play a bigger role. (But see Kindle removing the text-to-speech function after publisher protest.)

For Ponte: The same piracy/helping-terrorists arguments are made outside of design, with respect to copyright infringement and trademark infringement.

Deven Desai, Thomas Jefferson School of Law

For Ponte: Barton Beebe has a useful paper on sumptuary rules in TM.

For O’Melinn: Your account of the Founders has to grapple with the existence of the IP clause. Why’d they put it in, then?

For Nathenson: Reminded him of Jonathan Zittrain’s argument about perfect enforcement. Is the argument that, with tech, law becomes irrelevant?

For Armstrong: What do you really want? A: Allow nonterminable revocations of rights. Desai: This ties in to paternalism: is the author a fool to be protected? The counterargument to paternalism is that the cost is an anticommons—lots of holdups. Misbehaviors in bargaining create risks for later on.

Q from Ponte: Consider post-sale confusion in TM law. The problem of fashion design is similar to INS v. AP—the designer is trying to recoup investment, but it can be dissipated by copying. Derives uniquely from the fact that there’s no protection for inherently distinctive trade dress. (My reaction: it’s far from clear to me that most fashion designs are inherently distinctive, whatever that might mean.)

Mark Schultz for O’Melinn: Many people in our field are philistines about history. Many people in our field use history to tell us that the official story is not actually what happened (Adam Mossoff, Mark McKenna). What are you trying to prove with your counterstory?

Me for Ponte: I want to know more about sumptuary laws as economic protectionism. Marilyn Randall, Pragmatic Plagiarism: Authorship, Profit, and Power has a great discussion of plagiarism as mercantilism. In the 16th/17th-century materials she investigates, imitation and translation of foreign cultural materials is sometimes celebrated, while imitation of nationals is condemned as plagiarism. Cross-cultural appropriation enriches the borrower’s cultural storehouse, while in-culture borrowing just redistributes wealth. Dryden wrote, “If sounding words are not of our growth and manufacture, who shall hinder me to import them from a foreign country? I carry not out the treasure of the nation, which is never to return, but what I bring from Italy, I spend in England: here it remains.”

Me for Nathenson: Every sufficiently advanced technology is indistinguishable from magic. (Arthur C. Clarke, Profiles of The Future, 1961 (Clarke's third law)). So I like the analogy.

O’Melinn: He’s also struggled with the “what’s the point”? The IP clause is shrouded in mystery. They certainly weren’t codifying a practice in existence. He thinks we presently like to default to Lockean, natural rights reasoning: an owner can do what it likes with its property. But that’s not the only way to think. If we protect non-writings like architecture, we have to pay attention to the original purpose of protecting writings, and for example deny injunctive relief when the result would be to prevent the completion of someone’s house.

Nathenson: Magic, like tech, can lead to over-assertions of rights—too much private power, including too much tying to particular businesses (monopoly power). The Ludicrous Patents Office is a public regulatory response. When IP rights are so broad, an administrative response—like that proposed by Jason Mazzone—may be appropriate. See also NFL’s overreaching claims about its rights in broadcast games.

Armstrong: The question then is whether the author is entitled to leave his estate to someone other than his heirs. Congress is unlikely to have wanted to forbid dedications to the public domain in 1976; it probably just didn’t think about the issue. (Indeed, after the 1976 Act it was really easy to put stuff into the public domain by publishing wihtout notice—that would divest your heirs’ rights no matter what. Now that doesn’t work any more.) In patent, you can abandon formally, or you can abandon by putting your invention on sale for a year.

Michael Madison for Ponte: The ratchet for fashion protection is modulated by other things. With the economy the way it is, the aggressively elitist aspect of marketing is being pulled back. He’s reminded of the NFL’s marketing practices during Superbowl season: a sumptuary code of a different flavor, where the NFL is trying to ensure that you only buy the $75 official jersey.

Madison would take Clarke’s line in a different direction. Wouldn’t invest too much in the analogy unless he wants a full-on law and literature piece, based on current theory. If Nathenson doesn’t want that, then the Clarke quotation opens up a way to criticize Lessig’s work on code. Magic has rules and codes; it has to be done properly to work. Also with tech, so you need to know what tech can actually accomplished.

Sandeen for Armstrong: The programmer is unlikely to revoke the license. It’s the heirs we have to worry about. Do the heirs have a vested right in revocation? That might be a problem with a legislative fix. The section is really antiquated in its description of heirs: no rights for same-sex couples, for example.

Vetter for Armstrong: The project is fascinating; the issue is that we don’t know yet, and probably won’t know for seventy years, whether Linus Torvalds’ heirs are going to try to terminate. (Side question: would US law apply to the Torvalds heirs? I’d think that ownership, at least under ITAR-TASS, would be resolved under the law of the author’s nation.)

Friday, February 27, 2009

Drake IP Scholars, Panel 3

Panel 3: Pedagogy in Intellectual Property Law

Christina Bohannan, University of Iowa College of Law

Bohannan teaches mainly copyright. First: the need to use props. Students love it and it really helps them understand. Arnstein v. Porter: the students are bewildered when they hear the actual music. Second: she’s tried to move away from spending lots of time on particular cases, and instead doing problem sets: is X infringing? Substantial similarity is hard to extrapolate from case to case. Third: Trying to get a little transactional stuff in. Casebooks often omit it, and that’s a mistake.

More general point: Teach more by teaching less. She teaches torts, so she thinks of copyright as a tort. Foundational principles from the common law can be really helpful in thinking through IP problems; common law baselines are of increasing importance as IP expands as a way to measure how far we’ve come and whether that’s a good idea. Seminars can be good ways to explore these issues, or other related ones like competition law.

Dan R. Cahoy, Smeal College of Business, Penn State University

Teaches IP at a business school; a patent lawyer by training. Several other business schools teach IP in business school or even at the undergraduate level. The students aren’t looking for how to give advice to clients, but are looking for answers with an applied perspective. It’s common to have students who are business owners. You have to help them go from simple, quick answers to analysis.

Students look at things differently. One student’s reactions “bad patents” are patents that don’t work; patents that don’t work well mis-attract investment.

Lack of formal legal reasoning: Students look for quantitative answers, and don’t expect balancing tests. It’s a negotiation with students, but valuable because that’s really how law will work in their lives.

Because they encounter so many fields in business school, students want to see interdisciplinarity: economics, management theory.

His strategies: focus on large concepts, not exceptions. Teach them to recognize when they’ll need a lawyer: predicting, planning and avoiding problems. He uses a case approach, but focusing on the parties: why they got involved in the dispute, how they could have avoided it. Don’t spend as much time on alternate arguments or alternate versions of law.

Props work wonders with business students and undergraduates too. Shepard Fairey was a great teaching opportunity, as with the dispute over Jessica Seinfeld’s cookbook. He likes to use current cases. And he likes typical cases rather than the most extreme: Bilski is an extreme case, so he complements it with a typical patent infringement case.

Why should you care? Law and business schools should be collaborating more; business schools are aware of the importance of IP.

John T. Cross, University of Louisville School of Law

Incorporating competition law into your IP courses: Most applicable to a survey course. We tend to focus on IP as innovation policy. He tries to weave in three different policies, and even assigns a couple of students to focus on each policy and bring it in. Policies: advancement of knowledge (dissemination); innovation; and competition.

Basic idea: competition is generally free and nontortious, and competition includes copying. IP is a limit on competition by copying. TM is taught as consumer protection; it’s easiest to start talking about competition in TM. Dilution, initial interest confusion seem puzzling, but a case can be made from competition law—to the extent a mark sends a strong signal, then perhaps as a matter of competition law denying consumers a strong signal has anticompetitive effects.

In terms of copyright fair use: we can talk about users’ rights and limits on property rights, but competition policy offers new perspective on things like transformativeness. Copyright owner is protected from some kinds of competition: expression, though not ideas. Fair use may be use in other markets. You can also talk about how competition principles ought to limit IP rights.

Doris E. Long, John Marshall Law School

She teaches a wide range of students, some foreign students with limited IP background, some with extensive background; she also teaches “Patents for Poets,” for people who won’t be taking the patent bar. Patent folk take her TM and copyright classes and just want to get the rules and the right answers; they need to be slowed down.

She does a lot of business modeling issues: specific problems for businesses. Getting students to walk away from the computer and get involved in an activity that is computerless. Students in International IP get assigned to head the IP policy in a foreign country; they have to think with someone else’s goals. And they do a treaty negotiation; sometimes they have to draft a position paper with likeminded representatives. They model real life and get a sense of the difficulty of advising clients and coming up with good treaties. This year: debated whether software protection should be patent, copyright, or sui generis. Limits: they can’t lie. They can’t share what’s on their own fact sheet about their interests. That gives them a sense of what it’s like to have limited information in a real negotiation.

Students don’t like to leave computers, or deal with people they don’t know, but they come out with a better appreciation of practice and why they need to learn the rules and the exceptions.

Michael J. Madison, University of Pittsburgh School of Law

He was asked to put together a teaching portfolio (more common outside law school). Had to identify a philosophy of teaching—his advice is to have one, both at the mission statement level and at the level of applying the philosophy to each class. What you expect students to learn, how you want them to behave outside the class, how you’re going to assess them, etc. He has banned laptops and other computing devices; he recommends this as a way of getting people to look at you instead of looking down.

Copyright: most casebooks start with 30+ pages of narrative on history and theory and policy, then start walking you through the elements. A dry way to begin, though an essential foundation. So: he assigned that as outside background reading and told the students in the syllabus that they’d be expected to know it throughout the semester. Then he moved fair use to the front of the course. Fair use is the one thing that most students, even without exposure to IP, have some intuitive familiarity with, and it’s fun. Get all of the major themes of copyright on the table, at least conceptually. Allows you to plant the seeds, and fill in the details down the road. There’s no natural order of materials you have to follow, whether inherent in the field or because the casebook has an order. Students seemed to enjoy it a lot.

Role of legal theory: Everyone needs to decide how to balance doctrine and theory. Most of his students want to know the facts and law, then go home. Madison is interested in legal theory and policy, and they’re close to the surface of everything we do. He talks about them all the time, which is not what all profs do. He lets the students wander around with the black letter law on their own, and in class they work through examples and talk explicitly about the intersection between doctrinal disputes and the theoretical engines driving those disputes. And he teaches a seminar that is all IP legal theory. This approach is not directly valuable to students, but is revelatory in terms of understanding the legal system: sustained exposure to legal theory helps them map theory back onto other things they will be doing, and gives them a more flexible toolset.

Mark P. McKenna, University of Notre Dame Law School

This community of scholars takes teaching very seriously, which is great for juniors. Big theme: you have to want to be a good teacher, and that goes a long way to making you one. Agrees with Madison; would phrase it as: think hard about what your goals for the class are. The goals may differ from class to class. In torts, his goals are less doctrinal than in other classes. Is your goal to teach them to read statutes? To understand doctrine? To have a good theoretical background? You can’t have too many of them, because they’ll conflict. You will do elements of other things in the class, but having goals helps you decide what takes precedence and what you plan to evaluate at the end of the course. You should then be able to write your exam to test the same thing.

When he teaches the IP survey class: At first, he felt pressure to cover so much. Then he realized that he could change: he teaches a narrow slice of each major area, but focusing on where they intersect and interact, because you can’t do that in any of the other classes. So he’s less concerned with doctrine and more with concepts.

You need to use props! And current issues. Students are amazed that you know current cultural references, and that makes you much cooler. Rather than starting with theory, he starts every class with some current case/excerpt and then they talk about it, forcing out the theory. Then they start to learn the labels for the things they’ve already said. They see the current issues and they hook into the concepts more easily.

Tasking students with particular responsibilities: trying to take advantage of commitment bias. If you tell a student in advance, s/he gets invested in the position. Tell them to prepare to argue the case from one side’s perspective. Rather than one exam, can do three writing assignments—does this in the survey class. In other classes, gives groups of students assignments starting with a problem (Harry Potter Lexicon) and at the end of a syllabus chunk the students lead the class in discussion of the problem.

Connections to other parts of the curriculum: encourage students not to silo themselves. McKenna worked at an IP boutique, and yet for two years all he did was litigate state court counterclaims. If you only study IP, you won’t do well in practice. In copyright, students need to know Erie—why isn’t this just federal common law? They don’t like it, but it’s good for them.

Sharon K. Sandeen, Hamline University School of Law

Learning outcomes assessment used to improve teaching. Law schools outside the US are further on the curve on this (and law schools in the US are behind the higher ed curve). Department of Education has been strongly encouraging the ABA to improve its accreditation of law schools and to consider standards other than bar passage and employment statistics. The ABA created a committee looking into changing the standards, which is likely to happen in a couple of years.

Key: tell the students what your goals and objectives are. We try in our syllabi, but we don’t necessarily do a good job. Start with a verb: at the conclusion of this course, students will be able to: articulate, identify, draft, demonstrate. Then you have a list of things you can test. Students asking what the exam will feature can be pointed at the objectives. So, for her international course, where she doesn’t know the laws of every country, the goals are for students to understand the process, and be able to figure out what a country’s law is, what TRIPs has to say about the issue, whether the country complies with TRIPs, etc.

Our assessment tools: the summative exam. Really not sufficient in terms of adult learning theory. We need earlier assessments and different ways of seeing how our students are progressing. We need to change grading to reward people for where they end up, not where they start.

Rebecca Tushnet, Georgetown University Law Center

I suspect I’m here as a booster. So I will boost. There are multiple online resources for professors, really in their infancy. CALI: nice to have little segments on different parts of courses where students can test themselves; student reaction for TM in particular has been quite positive. Other moves—Collins and Skover on the future of the legal coursebook.

The Georgetown IP Teaching Resources database needs you! Any professor with a guest password can upload as well as download. You can put your name in the “comments” field to ensure you get credit. We in the IP academy talk a lot about the benefits of distributed production. Here’s an example of a system where we can provide a lot of value to other teachers just by uploading stuff we already use in class. Please consider doing so!

Side note: I’m really interested in practices of teaching with PowerPoint. Are there successful uses that include lots of words? I try not to have words unless I can’t help it.

Deven Desai: teaching with complaints—does it work?

Jason Mazzone: Moderated a panel at the Copyright Society on fair use, with high-powered copyright lawyers and advocates (Wendy Seltzer). There was a large division between the academy and practitioners. The lawyers in the room were concerned with why law profs hate copyright and teach their students that it’s broken.

Robert Heverly: Disappointed to find outcomes assessment catching on, because he finds it pro forma and very different from how he thinks.

Gibbons: UCLA’s Music Copyright Infringement project is very good. And many people post their PowerPoints on the web. Here’s a strategy: take pictures with your cellphone camera every time you see an issue.

McKenna: And ask students to do the same!

Vetter: There’s a difference between group projects and the highly immersive Harvard case method. Group stuff was a failure for him for the first few years; people have told him you need to make it at least 20% of the grade for it to matter. Are these replicable in a law school environment?

Sandeen: No Child Left Behind is a really bad implementation of a really good idea; one of the problems with outcomes assessement is that there are a lot of poor implementations. But we have the benefit of 25 years in higher ed; we can do better.

Cahoy: The business school culture is different; they expect to be able to do group assignments and resist individual responsibility, because they don’t think they’ll have to work in isolation in the business world.

McKenna: Group exercises for the sake of group exercises won’t work. If you simulate practice, that works productively. Give them a problem and assign them to a team that has a practice-like goal. On Desai’s question: he sometimes uses pleadings, but it’s hard. Pleadings capture everything you do in class, and so it’s hard to focus on the part you’re working on. You may be able to use one as a case study that holds the class together—use it through the semester, instead of using a bunch of different ones.

Madison: He’s used pleadings to illustrate intersections between IP domains. You may find cases where lawyers, perhaps deliberately, haven’t delineated copyright, TM, and right of publicity—uses pleadings for the Naked Cowboy case and the Guitar Hero/Romantics cases, showing how lawyers blur boundaries (sometimes deliberately).

Long: Her exercises are designed to replicate a real-world example: post an entire complaint and direct students to the part that needs discussion. She has a horror of group projects because of free-riding, but does think that law school is too individualistic and it’s a collaborative profession. She also thinks props—things you can touch—are very important, over and above pictures. Passing around objects really engages students.

Madison: Ford’s A Time to Heal is his best prop: it’s a really thick book, which makes students think differently about the Nation decision.

Bohannon: Goodnight Bush is another good prop, especially with the “explanation” in the back about why they chose Goodnight Moon as the basis of the parody. On another note, she thinks drafting a complaint can be a really good course capstone.

McKenna: We get the real-world criticism all the time. But to do the stuff they would do in practice presumes they know things they don’t know yet. (Bohannon: And takes forever!) Draft a complaint? They could draft a jurisdiction section, maybe.

Madison: re why practicing lawyers think we’re extremists: It’s Tony Falzone! Madison respects Falzone a lot for acting aggressively to assert fair use claims (lawsuit on James Joyce scholarship, Harry Potter Lexicon, declaratory judgment for Shepard Fairey). It’s very disconcerting for standard copyright owners’ lawyers to see someone aggressively bringing declaratory judgments, and it’s coming out of Stanford.

NPR segment on vidders

I’m part of an NPR All Things Considered segment on vidding, available here.

Dilution recommended reading

Katya Assaf’s The Dilution of Culture and the Law of Trademarks, 49 IDEA 1 (2008), is too long but makes a number of nice points, including that trademark owners get to use emotional appeals as they wish, while protection against dilution means that opponents, or even just invokers, can’t: dilution means that trademark owners get to fight freestyle, while others have to play by Marquis of Queensbury rules. Related and equally interesting points are found in Laura Bradford’s new paper on trademarks and emotion, which I recommend highly even if she does disagree with me on the proper role of dilution. Best line from Assaf’s paper, discussing the extent to which we accept that consumers assume that all straight-up uses of a mark are licensed: “If we were told about a society where people believed that every poster bearing the name [or] likeness of their political leader must have been approved by him, we would probably assume that those people live under a strict dictatorship.” Shepard Fairey says: OBEY!

Monday, February 23, 2009

False advertising counterclaim fails for lack of particularity

MapQuest, Inc. v.CIVIX-DDI, LLC, 2009 WL 383476 (N.D. Ill.)

MapQuest sued CIVIX for breach of contract and breach of the covenant of good faith and fair dealing. CIVIX counterclaimed for false advertising, tortious interference with prospective economic advantage, and breach of contract/breach of the covenant of good faith and fair dealing. The court refused to dismiss the last two claims, but I’m only going to talk about the first two.

CIVIX has patents related to geographic search technology; its business is licensing those patents. In 1999, it settled an infringement suit with MapQuest, giving MapQuest a license to use, sell, license, sublicense, transfer, assign, etc. MapQuest technology covered by any claim of the CIVIX patents. The license also granted MapQuest end users a right of use that extended to MapQuest customers’ customers and end users. It was confined to “proprietary” products “created and developed” by MapQuest. CIVIX covenanted not to sue MapQuest, MapQuest customers, or MapQuest customers’ customers or end users, with respect to MapQuest technology. Despite that, MapQuest alleged that CIVIX has filed multiple suits against MapQuest customers based on their use of MapQuest products and services.

CIVIX counterclaimed that MapQuest interfered with CIVIX’s efforts to license its patents by falsely representing to infringers that, by buying MapQuest products, they’re licensed under CIVIX patents, even as to products that MapQuest did not “create and develop,” that are not proprietary, and/or that are merely pass-through products created and developed by third parties. For example, MapQuest resells geocodes, purchased through other vendors. A geocode is a precise latitude/longitude measure corresponding to the location of something, such as a hotel. Though sale/use of a geocode by itself doesn’t infringe any claim of the CIVIX patents, they are allegedly used in systems that infringe. These geocodes are not “created and developed” by MapQuest, nor are they “proprietary.” Allegedly, MapQuest represented that using geocodes supplied by MapQuest conferred a license of the CIVIX patents, encouraging infringers to resist taking a license.

On the Lanham Act claim, CIVIX argued that MapQuests statements were material and likely to mislead consumers. (Note here that the patent-related ad claim—we can give you a license—is clearly unrelated to Dastar’s concerns. I doubt not, however, that some courts would still think that Dastar was relevant.) First, MapQuest argued that it isn’t a CIVIX competitor. The court reasoned that CIVIX had adequately pled that they were competitors in the business of licensing CIVIX patents.

However, the court agreed that CIVIX failed to satisfy the heightened pleading requirements of Rule 9(b). (Not all courts agree that Lanham Act claims are subject to 9(b), and I think the better rule is that they aren’t. False advertising is a business tort, not a fraud claim, just like trademark infringement is. Courts don’t make trademark plaintiffs under §43(a)(1)(A) satisfy 9(b), and I haven’t seen a good reason to treat §43(a)(1)(B) differently.) Here, CIVIX’s factual allegations were thin, alleging only that MapQuest “improperly represented to infringers that by buying products sold by MapQuest they are licensed under the CIVIX patents .... MapQuest has represented that the use of geocodes supplied by MapQuest confers a license of the CIVIX patents, and has encouraged infringers to make such a claim and not pay for a license under the CIVIX patents.” CIVIX and MapQuest have been litigating based on the same patents and licensing agreement for at least five years, and yet it pled no more specifics. That isn’t the “who, what, when” etc. that 9(b) requires. Moreover, these minimal allegations don’t provide the court any basis to conclude that the statements at issue were made in “advertising or promotion,” as required. A person-to-person pitch wouldn’t count as advertising, while widely distributed print ads would. The court declined to speculate.

On the other hand, essentially the same allegations survived a motion to dismiss when pled as tortious interference with prospective economic advantage—which is, by the way, one reason why 9(b) isn’t appropriate here. CIVIX needed only to plead (1) a reasonable expectancy of entering into a valid business relationship, (2) MapQuest’s knowledge of the expectancy, (3) an intentional and unjustified interference by MapQuest that induced or caused a breach or termination of the expectancy, and (4) damage.

MapQuest argued that CIVIX failed to allege any reasonable expectation of entering into a licensing agreement with MapQuest customers. However, the Seventh Circuit has held that the Federal Rules don’t require that a complaint allege the specific third party or class of third parties with whom a claimant had a valid business expectancy. If CIVIX is right that the settlement agreement doesn’t allow sublicensing rights for systems using geocodes (note: whoa! If MapQuest is licensing systems that happen to include geocodes, that seems a far different animal than the raw geocodes, and I see why MapQuest is suing in the first place), then MapQuest’s statements to customers that they were already sublicensed for CIVIX patents meant lost licensing opportunities. This was a reasonable expectancy because two MapQuest customers, Orbitz and Travelocity have—following litigation—bought licenses from CIVIX. Other MapQuest customers might as well.

Friday, February 20, 2009

CleanPlays? Derivative works you might not have expected

Rent: School Edition is still too much for some schools, the NYT reports. The estate authorized the creation of this slightly desexualized version in order to (a) make money and (b) promote awareness of sex ed etc. So, would an even more bowdlerized version be fair use?

Tuesday, February 17, 2009

Pom squad: more Pom Wonderful ads

Along with the "Health's Angels," Pom Wonderful is also courting the fashion-forward. Blurring of Juicy Couture?

Saturday, February 14, 2009

Rebound: basketball false advertising verdict reversed

Baden Sports, Inc. v. Molten USA, Inc. --- F.3d ----, 2009 WL 349358 (Fed.Cir.)

Follow the links to read the saga in the district court, culminating in denial of Molten’s motion for a judgment as a matter of law. The Federal Circuit, applying 9th Circuit law, reversed the jury award of over $8 million against Molten for false advertising.

Baden makes high-quality basketballs, and has a patent on one type of ball with raised seams and a layer of padding, marketing them as containing “cushion control technology.” Molten competes with Baden. In 2002 or 2003, it began selling balls with an inner padded layer, marketing them as containing “dual-cushion technology”—a foam layer around the core of the ball and a second layer of soft rubber seams.

Baden sued for patent infringement and false advertising. The district court found patent infringement, dismissed some false advertising claims and sent others to the jury. The district court rejected claims based on ads using “proprietary” and “exclusive,” as barred by Dastar. The theory was that “proprietary” and “exclusive” signalled that Molten invented the technology. (Why this is barred by Dastar, especially in a §43(a)(1)(B) claim, specifically mentioned by Dastar as remaining available, is a mystery to me.) However, the court let Baden go to trial on “innovative,” which doesn’t necessarily connote who invented the technology.

Trial focused on the claim that Molten falsely advertised that dual cushion technology was a Molten innovation. Based on its prior ruling of patent infringement, the court excluded some of Molten’s proposed evidence, including witness testimony about the differences between the parties’ basketballs. The jury returned a verdict of a little over $38,000 for the patent infringement and, as noted above, $8 million for false advertising.

In its denial of Molten’s motion for judgment as a matter of law, the court acknowledged that, though some testimony at trial conflated “innovative” and “proprietary,” but held that the testimony made clear that the witnesses believed the ads were false because Molten’s product wasn’t new.

The Federal Circuit agreed with Molten that Dastar barred the entire claim. Because of its inherently limited wording, §43(a) can’t be a “federal codification of the overall law of unfair competition.” Molten’s ads don’t concern the “origin of goods” under §43(a)(1)(A), and they aren’t about the “nature, characteristics, [or] qualities” of those goods under §43(a)(1)(B).

True, Dastar said that a false advertising claim could survive if the copiers of the Crusade series gave purchasers the false impression of significant difference from the original Time/Life series, giving rise to a claim for misrepresentation of nature, characteristics or qualities. Baden argued that “innovative” was a similar misrepresentation. But Dastar’s dictum doesn’t mean that false designation of authorship claims are actionable under §43(a)(1)(B). If they were, there’d be overlap between the Lanham and Patent Acts. Moreover, the 9th Circuit has held that “nature, characteristics and qualities” doesn’t refer to the “licensing status” of a copyrighted good. These terms have to refer to things like quality of audio and visual effects, not licensing status; authorship, like licensing status, isn’t covered.

So, the issue is whether the false advertising claims cover anything more than false designation of authorship. But “innovative” doesn’t imply anything physical or functional about the basketballs. All it means is that the manufacturer created something new or that the product is new. (Note that “new and improved” is now apparently fair game for anyone in the 9th Circuit, no matter how old and unimproved the product is.)

Baden repeatedly alleged that Molten falsely claimed that Molten, not Baden, created the innovative dual-cushion technology, and argued that the ads were false precisely because Molten was not the source of the innovation, with statements like “They took our technology and they began to advertise it as their own invention.” Baden waived any claims limited purely to novelty and newness, so the district court’s reasoning doesn’t apply: Baden’s argument is not simply that the claim to be “innovative” is false, but that Molten falsely claimed that the innovation is Molten’s.

Framed like this, I don’t have a huge disagreement with the result, but the reasoning seems overbroad to me. It seems that Baden made this argument so as to avoid a puffery defense on “innovative” alone, but that backed it into a corner on the issue of whether it was alleging that the problem was a false claim of authorship/inventorship. To the extent that Molten was making a false claim of authorship (which I think is kind of shaky, given the context), I think the real problem is materiality, since consumers are unlikely to care about the source of the genius when what they want is innovation.

Finally, the Federal Circuit noted that other courts outside the 9th Circuit might come to a different result.

keyword buys as unfair competition

Heartbrand Beef, Inc. v. Lobel's of New York, LLC, 2009 WL 311087 (S.D. Tex.)

Eric Goldman seems to like this decision, but my read is a little different. Yahoo!’s lawyers here may have assumed the judge knew more TM law than the judge in fact knew. Heartbrand alleged a bait-and-switch scheme by four defendants, including Yahoo!; the other defendants settled out. Heartbrand sells Akaushi beef, a heavily regulated Japanese product, and alleged that it’s the only provider of Akaushi beef in the US. One defendant allegedly operated, which had no content other than links, some of which included “Akaushi.” Clicking on those links took people to; Lobel’s sells beef, but not Akaushi beef.

The complaint against Yahoo!: when a user searched for “Akaushi,” the first paid listing was Heartbrand alleged violations of the Lanham Act and Texas common-law unfair competition.

According to the court, Yahoo! devoted much of its argument to arguing that Heartbrand hadn’t adequately alleged direct or secondary trademark infringement. But, the court reasoned, Heartbrand didn’t make any trademark infringement claims. Its claims were labeled “False Designation of Origin” and “Common Law Unfair Competition.”

Is false designation of origin a claim under 43(a)(1)(A) or (a)(1)(B)? Cases have said different things. However, the Fifth Circuit “consistently” lists five elements to be proven regardless of which section is at issue. (Here we start to go off the rails; this is just not so, though it may be true with respect to false designation of origin claims.) The elements are: (1) The defendant made a false or misleading statement of fact about its product or service (comment: nope; the Lanham Act specifically contemplates that statements about one’s own or someone else’s products or services can be false advertising); (2) deception/capacity to deceive; (3) materiality; (4) interstate commerce; and (5) likely injury to plaintiff.

From faulty premise (1), the court proceeded to get half the right answer. False designation of origin, the court said, is often passing off or reverse passing off, which Yahoo! can’t be doing because it’s not in the business of selling beef. Regardless, Heartbrand didn’t identify any actual statement made by Yahoo! Yahoo! only placed a link to in response to certain searches, which it did at the direction of third parties. That’s not a “statement.” (In other words, Yahoo!’s liability could only be secondary at most.) Anyway, even if Heartbrand had alleged a statement, that statement wasn’t about Yahoo!’s own goods or services. (As noted, not relevant.) So, there’s no false designation of origin claim.

The trouble with not understanding Yahoo!’s arguments—that this conduct of targeting paid ads to search terms, if actionable at all, is only actionable as secondary trademark infringement, or perhaps secondary false advertising—is that it invites repleading. Plus, here the court determined that Yahoo!’s arguments didn’t cover the common law unfair competition claim, which survived. But what was the nature of the unfair competition here? It used to be a standard line, as Mark McKenna has noted, that “unfair competition” requires “competition,” clearly not present here. So the state claim, whatever it means, breathes on.

Wednesday, February 11, 2009

Corrective drug ads

The NYT points out that corrective ads are rare, but Bayer is running them for Yaz, a birth control pill, as part of a settlement with the FDA and state attorneys general. The ads explain that Yaz isn't a treatment for acne or PMS and carries the risk of serious side effects. Here's one of the offending ads; I haven't found the corrective ad yet.

Monday, February 09, 2009

The Boundaries of IP at William & Mary

The Boundaries of Copyright and Trademark/Consumer Protection Law

Jason Mazzone, Brooklyn Law School, Who Should Regulate Fair Use?

Constitutional lawyers thinking about boundaries think about private/state action; separation of powers; division of authority between federal/state. Administrative agencies can develop expertise, fill in details of statutes, aid with enforcement, and provide specific rules to govern private conduct. So his paper is an effort to think about how agencies could play a helpful role in IP, particularly in fair use.

Fair use is a classic case where agencies could help. Standard ad law story: Congress crafted a deliberately broad and open-ended statute. The courts decide fact-specific disputes. Neither Congress nor courts allow us to predict in advance what use would be fair. Strict liability doesn’t tell you where the boundary is, only what happens once you’ve crossed. Result: copyright owners leverage vagueness and take advantage of fear of legal penalty. E.g., notices that claim that no portion of a book can be copied without consent. This chills a lot of valuable conduct. Another problem: contract law is being used to restrict rights that copyright would otherwise grant.

This is undesirable, and Congress and the courts haven’t helped prospective users abide by the law. When things go to private regulation, fair use erodes.

Administrative agency: Two models, though he’s still working through them. First, Congress would (1) make it unlawful to interfere with fair uses of copyrighted works, and subject offenders to civil penalties, a kind of consumer protection statute; (2) create an agency to enforce this statute, perhaps before an ALJ; (3) specify that federal fair use law, including agency regulations, preempt state contracts in case of conflict. The agency would define standards for fair use. Defendants could still assert fair use, but courts would defer to the agency’s regulations, which should be pretty specific, which would help make clear before getting to a judge whether any particular use is fair or not.

Second model: agency would have even more control over infringement determinations, including adjudicative authority. A copyright owner alleging infringement would be required to file a complaint with the agency; if no fair use defense were asserted, the case would proceed. If it were asserted, the agency would have authority to resolve the fair use claim; the case could go forward after, but again there’d be deference.

Agencies are good at adapting.

Rebecca Tushnet, Georgetown University Law Center, Economies of Desire: Fair Use and Marketplace Assumptions

I’m interested in the boundary between incentives and tastes. The incentive story, copyright’s standard justification: people only produce the stuff you want if they’re paid in money or other utility. Taste: people will consume the good at issue up until the cost is no longer worth it to them.

How do we get singers and painters and actors and writers? Creative production often functions like a taste, except instead of consuming creative works, people have a taste to produce them.

Won’t spend much time on the standard justification; just note that it’s everywhere in the literature, even among reform proposals. E.g., Judge Kozinski and Christopher Newman proposed eliminating fair use for derivative works, but requiring profits from derivative works to be shared. This has a baseline assumption that profits will routinely be available; noncommercial production doesn’t fit.

Creators’ accounts of production are about desire: addiction, obsession, excess. Arthur Miller said: “If somebody doesn’t create something, however small it may be, he gets sick.” Michael Chabon writes to entertain; his first story was a Sherlock Holmes pastiche, spurred on by the gaps in the original text that seemed to him an invitation to continue, as all enduring literature offers an invitation to continue. Steven Brust wrote a Firefly novel and released it under a CC license because, he said, “I couldn’t help myself.” Fans working in noncommercial spaces, often with limited cultural capital (though subcultural capital may be available to them), say the same things—writing is like a drug. Clay Shirky says that Perl is a viable programming language because millions of people woke up today loving Perl. People create ship designs for the game Pirates of the Burning Sea, researching in nautical museums, because they love to do it—some of them don’t even play the game; they just like to make ships.

Using the language of incentives is nonsensical with these types of creativity. You don’t need to give people incentives to speak; you need to threaten them to get them to shut up. The desire to create is self-renewing and self-reinforcing.

Implications: (1) Copyright law, even in its own economic terms, plays a minor role. Copyright isn’t the cost/benefit at issue. It’s the jobs the creators would be doing instead of writing/drawing/whatever: most artists pay for their time spent creating out of the opportunity cost.

(2) Incentive stories can mislead us about the value we want to protect. Under the First Amendment, we protect religious conviction not only, and not even primarily, because we worry about the chilling effects of persecution on religion. Devout believers have been willing to go to jail and even die for their causes; they’re hard to chill. We protect religious faith because it’s so important, and a core wrong of suppression is its disrespect of the believer.

(3) The standard move when people start talking about how creators gotta create is to punt to intermediaries/distributors, who are supposed to act like perfectly rational actors even if those crazy artists are unreachable through incentives. That’s not wrong, but it has implications. One of which is that intermediaries are essentially in the position of the proposer in the ultimatum game: Because creators really really want to create, intermediaries can offer a lower price, and creators will accept a lower price, than they would if incentives mattered more, just as proposers will offer a lower price and responders will accept a lower price in the ultimatum game when some reason is offered why the proposer has the role of proposer.

This creates distributional concerns. Themes of exploiting labor turn up both in discussions of the mature copyright industries—music, television (writers), book publishing—and also in discussions of user-generated content. The incentive model, while it has no idea why people create, is happily indifferent to questions of justice as well once people have started producing: people who don’t need incentives wouldn’t participate if they didn’t get sufficient psychic benefits from producing. But failure to interrogate tastes should disturb us when it has significant distributional consequences. How did those tastes get formed? What are the alternatives? Analogy: women’s assumed natural proclivity for housekeeping and childrearing—we haven’t been thought to need incentives/payment, because we do it for free, even as economic structures and social conditions made alternatives hard to find.

(4) Implications for fair use. Joanna Russ, the sf writer, suggested that the “what if” of slash fan fiction was “what if I were free?” What would I do, what would I write? That’s a very different stance than the rhetoric of freedom in open source; I’ve always hated “free as in speech, not free as in beer” because of the unexamined assumptions there about what counts as free speech. What free is for creators from subordinated groups is actually a pretty fraught question, as John Stuart Mill eloquently noted in The Subjection of Women. Women as writers have rarely had the luxury of exclusive control to give away.

Fan fiction foregrounds desire. Desire is of course central to economic life: we have to want stuff to work for it. But desire is hard to contain, and stories about desire tend to make homo economicus uncomfortable. Stories about desire—stories told outside the money economy—are fundamentally based on the inexhaustibility of the imagination. This should lead us to resist any contraction of fair use for noncommercial works, even if licensing markets are said to be developing, and even if the nontraditional sexualities often expressed in fanworks become more accepted in mainstream media. The logic of scarcity that copyright imposes is inappropriate for these creative works.

Jane Winn, University of Washington Law School, Better Regulation for Consumers: Integrating ICT Standards and Consumer Protection (with Nicolas Jondet, University of Edinburgh)

Her focus: ecommerce. Commercial transactions tend to bump into IP.

What is better regulation? Deregulation is widely discredited in the US due to the collapse of capitalism as we know it; in an abstract way, better regulation requires defining the policy objective then achieving it in the most efficient, equitable way. So what are our policy objectives? Balancing interests of consumers, producers, other producers; maximizing gains from trade/return to investors; other complex stuff.

Once we’ve done that, how to match it up with regulation? Language of IP is dominated by ex post government intervention: rights defined and enforced in litigation. Better regulation would have full ex ante consideration.

IP hasn’t yet been integrated with consumer protection law, which hasn’t yet assimilated the effects of information economy. What is consumer protection law? Narrowly: economic, designed to correct market failures. Uncontroversial in the US. Broader: health and safety, social regulation. More controversial in the information economy—we don’t generally have bodily injury from the information economy. Most controversial: dignitary protection. Europe is more open to that.

Standards: the literature is mostly about product standards; what about information standards? Standards tend to increase competition, decrease costs, accelerate adoption of new technology. Costs: tends to reduce choice; problem of the long tail—lots of mainstream applications and fewer for small markets; can be profoundly anticompetitive; can increase switching costs. In information markets, network effects merely intensify these issues.

Common in the US to just dump a standard developed by an outside org into a statute. This is dumb. Problems of obsolescence, ownership of the standard. Technology-forcing standards are controversial. Environmental protection law has left a lot of scars in the US: perverse effects of trying to integrate regulations with standards. But our sense of how to draft statutes has moved on since the 1970s. Everyone understands that there’s a problem with standard development once the drafters know it will have regulatory force: raises the stakes, makes consensus more difficult; political compromise may be wasteful or infeasible.

Legislative solutions in the EU exist. Different countries have different approaches to harmonizing standards and regulation. France got out ahead and decided to have an agency regulate TPMs. Why? Because France is a coordinated market economy; US regulates indirectly by enforcing private entitlements, relying on market discipline, whereas France has a social/political consensus in favor of direct regulation to protect the public interest, which Europeans think can actually be defined despite public choice theory. Europeans see market failures much more readily than Americans do, and they think social concerns can trump economic ones.

Coordinated market economies have de jure standards bodies, which coordinate with regulators. Contrast to informal, voluntary, private-sector standards in the US. US information consortia are relatively non-transparent; they can develop standards relatively quickly, but outside America they’re perceived as illegitimate. In 2006, the French passed a copyright law; they knew they needed to respect TPMs but they were also concerned about interoperability and consumers’ rights. Created an agency, though it’s been paralyzed by controversy and bureaucratic sloth; its mandate is to guarantee things like fair use (how many private copies must be permitted by TPMs). Unfortunately, focus is ex post, not ex ante; no standards for developing technologies. Its goals are unclear, but the strength is that they’ve identified the problem: interoperability and enforceability of limitations on IP rights. The solution needs to be public law.

Opportunity even in a liberal market economy to redefine the scope of consumer protection to include dignitary interests.

Commentators: Steven Hetcher, Vanderbilt University Law School

On Mazzone: The argument is (1) fair use doesn’t work, so (2) let’s have an agency. Important to disaggregate standards from definitions. Problem is that fair use functions like reasonableness; it’s going to be pretty hard to define in more detail unless you want to reject US fair use. Also, if fair use is out of the case, substantial similarity is still an issue—how do we define that? It’s not that courts haven’t gotten around to specifying fair use or substantial similarity standards, it’s that they can’t do it.

Play: Blanche Survives Katrina in a FEMA Trailer Named Desire. Is it a fair use? Other cases won’t tell you because no fair use case is ever on all fours with others, especially if the key question is whether the accused work targets, at least in part, the original.

Possibly the EFF/Prince case requiring copyright owners to do some fair use analysis before sending takedowns will help develop the law further, though.

Agency model: once again, no one’s going to admit that their case is similar to previous ones, so they’ll keep refighting battles even in the agency.

On me: Hetcher is on board with the basic idea that creative production functions like a taste. Everyone’s on Facebook, contributing often copyrighted content. Criticism/question: okay, great, we’re making stuff. What about when we remix using other stuff? Lessig says “make amateur remix legal.” Tushnet says it’s fair use. In the world of fan fiction, the author did all the work—took the characters, but wrote each word. Now, you can copy a whole movie and just do a little change: CleanFlicks making movies family-friendly. Digital remix allows everyone to be a filmmaker. Where do you draw the line? (Note the privileging of the second creator’s use of words over the first’s use of images, and then the privileging of the image over the editing, even though it’s the editing that produces the effect of the image. As someone who’s written fan fiction and made fan videos, I can tell you which one I find harder, and it’s not the former. Broader question: Whose work counts?)

James Gibson, University of Richmond School of Law

On Winn: Captures and describes tech/legal conflicts, but also a depressing read, because the summary of the European efforts look enterprising and even radical in a good way, but they don’t seem to succeed. They managed to harmonize cellphone standards, but that entrenched a 20-year-old standard. Tried to standardize e-signatures, but no one seems to have paid much attention. Similarly with the French law on TPMs and interoperability—cumbersome in administrative terms, rather than mandating interoperability; the only people allowed to petition for interoperability information are other tech companies, who might not be the best stand-ins for consumer interests. The best of a bad lot is still not that good.

Possibilities: be less ambitious. Conflicts in standard-setting have various sources. Microsoft has leveraged network effects, but the cause of standard-setting problem there is different than when the standard comes from an ex ante international consortium, which is different than when the standard comes from the public sector. He’s not really convinced that TPM regulations have huge impacts on how much circumvention goes on, in practice. The government might well be right to back up TPMs at least sometimes, to prevent destructive competition between hackers and content owners. TPM-free music is now becoming available and the market mechanism may be working, even though consumer preferences about TPMs filter less well through the system than preferences about price.

On Mazzone: His paper asks whether fair use should be alienable. Are fair uses just tradeable/waivable default rules. If we think some fair uses should be waivable, then we should ask what counts as waiver; a lot of attention has been paid to shrinkwrap/clickwrap. But now there are these hortatory statements by content owners, saying no use without permission: is seeing them sufficient to remove our rights? There’s no contract, but is notice sufficient? How does it change our behavior when we’ve been given this notice, regardless of its legal effect?

Mazzone: Most law is administrative law; this state is an administrative state. Let’s talk about administrative solutions, even if it’s tough.

Winn: Political scientists in the US are in direct communication with European regulators; what they lack are lawyers/law professors in the US to talk to about alternative theories of regulation.

Mark McKenna: He still doesn’t know what fair use is for. It’s a catchall for a bunch of stuff not covered by copyright. First Amendment, market failure, both, others—all true at times. The agency would need to know what it wanted before it could implement that.

Analogy: UDRP—a cheaper resolution, though not an administrative agency.

For me: McKenna heard two different things: (1) people creating because they have to should be able to do so as a matter of fair use; (2) perhaps people who do this should be paid. These are very different questions. (I think (1) is easy, and (2) very hard. I don’t have a firm conclusion on (2), and in the end we lose so much by trying to assimilate everything to the market that I think it’s not a good idea, but I think it’s what we should be talking about, since someone is getting paid in this exchange—Google, the ISP, etc.)

Jessica Silbey: Creating creates us; it’s constitutive of our lives as people. So rather than asking whether people should get paid, we could also ask why have a market at all? If we are interested in incentives, ask “what would you make if you were free?” We assume markets matter more than they do, and the “intermediaries need incentives” answer is no longer persuasive given current technology.

Samuelson: She thinks fair use is more predictable than others do. If we move away from leading cases and towards policy-relevant clustering, we can make better predictions.

Litman: We have an agency trying to make prospective rules on fair use: that’s the interpretation of the 1201 rulemaking that Judge Kaplan of the SDNY has, as a way to preserve a fair use lifeworld for us. Figure out how your proposal diverges from that model and the degree to which it succeeds or fails in getting anyone any actual fair use rights.

The Boundaries of IP at William & Mary

Belated introduction: What We Talk About When We Talk About Boundaries

Jessica Litman, University of Michigan Law School

Interesting boundary questions this morning: intraregime boundaries rather than extra (what does IP protect). We’ve spent less time thinking these intra-boundaries through than, say, where the public domain starts and copyright ends. All the IP regimes seem to be undergoing a shakeup between traditional roles/interests.

In TM, for example, we think of competitors and consumers, but the rise of viral marketing and the ubiquity of TMs with semantic meaning used regularly in ordinary speech, which undermines producer control, have changed things. Thus, e.g., the TM use doctrine as a way of sorting. In copyright, low-cost digital distribution and ubiquitous sound/image manipulation tools create challenges to what counts as authorship, distribution, exploitation, reading. In patent, the classic notion of the inventor is yielding to the inventor/operator/user amalgamation represented by the patent pool. IP-like interests have also matured and are generating new questions. Interactions inside our particular ponds may shed light on the relations between the different types of IP.

Wendy J. Gordon, Boston University School of Law

Internalizing externalities: people who don’t internalize benefits of production won’t make enough of the thing. Model already doesn’t fit well with patent from the get-go, because patent covers independent invention; the independent inventor is not benefiting from any externality conferred by the patentee. Causation is central to the idea of internalizing externalities. Likewise with TM: TM doesn’t require copying. TM is the most in flux; thus there’s most at stake in having us understand the shortfalls of the internalization model.

Calabresi: “What is the cost of what?” Who is the person who we want to internalize costs? Coase pointed out that in every transaction there’s multiple causes and people who can affect the outcome. More generally, then, Calabresi’s question is “what is the ‘cause’ of what?” When we talk about copying in copyright, we’re talking about causation: the defendant’s work wouldn’t look the way it does without contact with the plaintiff’s work.

Copyright makes mere boundary-crossing actionable. You don’t need to prove intent, or even knowledge (unconscious copying, or mistake about who has the right to grant permission). Why strict liability? Partly historical accident, based on trespass to land model. We should rethink this.

Lockean labor theory only makes sense if the premise is that the claimant does no harm to other people by the claim. In the world of intangibles, intangibles have lots of effects, and to suddenly withdraw it or say you can’t use your knowledge of it, that causes a harm. Gordon would like to see a requirement of proof that winning a lawsuit wouldn’t harm the user (except for disgorgement). When you say “this is the Mercedes of law schools,” that’s not about the car but about the person speaking, their preferences and values; you can’t stop that sentence without changing the person.

Litman: When you say “this is the Mercedes of law schools,” you’re taking a free ride on the characteristics Mercedes has invested in developing. Agrees it should never be actionable, but it has something to do with the car.

Gordon: Agreed, but it’s still also about the person speaking.

Litman: This business of to whom we give the entitlement is incredibly important within each regime, as well as for defining boundaries of the regime. Academics mostly agree the copyright incentive has gotten too large. The entity within the copyright ecosystem holding all the benefits may be the wrong entity: by giving the entrepreneur in the middle all the rights, making transfer of rights from creators to entrepreneurs really easy and recapture really hard, the entrepreneur in the middle has too much incentive because copyright was designed when paper was expensive and you had to bribe entrepreneurs to participate. One possibility, instead of weakening copyright, divest the entrepreneur of those rights and make it harder to acquire them, thus actually compensating authors. Boundaries also concern who gets to control what gets used.

Q: Is this really about strict liability or moving to a liability regime?

Gordon: No, liability rules are tempting. But because of how creativity works, that’s not the right way. Amabile: if you give kids rewards for making pictures, they make more pictures, but they’re less creative. Adults are similar. Compulsion is a bad thing for creativity, but there’s also a growing body of research suggesting that not just is compulsion bad, but so are rewards if they’re too explicit. Liability rules are explicit: your life work is worth X dollars. Copyright looks better as a natural extension of the person: it’s yours. Understands that she’s talking a bit at cross purposes: for granting rights, she wants a different standard than for evaluating remedies, because the remedy standard has independent psychological effects.

Litman: Attribution-only remedy?

Gordon: OK! Reverse Dastar.