Works-in-Progress Intellectual Property Colloquium
Boston University School of Law
Opening Plenary [missed beginning due to travel]
Timothy K. Armstrong, Symbols, Systems, and Software as Intellectual Property: Time for CONTU, Part II?
Functionality is still a problem. Altai seemed to work well for a while; at least intellectually consistent w/treating software as variety of literary work. But Oracle v. Google threw that out; said it only applied to infringement, not to scope of protection for software. If there’s different ways to write code, then your particular way is copyrightable. Meanwhile, patentability of software advanced here, though not in many other countries. Congress might not have considered patentability in AIA.
CONTU as a process: that was a worthwhile exercise, even if you don’t like the results. Consider pros and cons of various types of protections—we should do it again.
Wendy Gordon: maybe we should just punt—any functionality concerns, court should not give TM/©.
A: Loath to endorse a result that might lead to thick patent protection for software.
Dogan: if Oracle hadn’t happened, would you need this?
A: there’s still an Alice question, but yes, Oracle is a big deal.
Lunney: if you argue for CONTU 2, shouldn’t you think that CONTU 1 did a good job? CONTU specified specific amendments & Congress followed, but you’re not happy w/specificity of results—any reason to think it would be better this time?
A: That’s a question of outputs and I’d like to get some input.
Betsy Rosenblatt: Look at current USPTO/NTIA/Copyright Office roundtables etc.—may or may not be a black hole; §512 best practices was totally anodyne. Can we really get a good agreement out of any group these days?
A: Worth a try.
Rebecca Schoff Curtin, Zombie Cinderella and the Undead Public Domain
ZOMBIE CINDERELLA for dolls initially refused for Disney’s Cinderella for dolls—would have implied that Disney had exclusive rights to Cinderella for dolls. Overturned on appeal, but TTAB relied on the idea that it was a weak component b/c others were using the term in the market; at best highly suggestive. Denies rights merely b/c commercial appropriation of the character wasn’t complete enough. We should deny the first entrant into the doll market the right to control the public domain character. Thus, we should extend aesthetic functionality to cover elements in the public domain. Cinderella, when used w/dolls, connects the dolls to the public domain figure, amplifying the possibilities for play. So too w/features of the tale that connect to the tale—for Snow White, hair as dark as ebony and skin as white as snow. Non-reputation-related competitive advantage is conferred by these elements.
Others have suggested aesthetic functionality for characters; Zombie Cinderella enables us to step back from fraught cases of characters that actually emerged under modern copyright (e.g., Betty Boop, Dorothy Gale).
Generic or functional for dolls? Rosenblatt has pointed out that it may be hard to think of a character name as generic for the character. The goods are dolls, not Cinderellas. [Hm. I think they might be Cinderellas, just like my son was a Stormtrooper for Halloween.] Genericity focuses too much on linguistics and not enough on the cultural work the term is doing, a problem that could be exacerbated in a trade dress situation.
Wyatt Earp—public figure. Similar argument. However, actual applications haven’t been good. Superman, Batman, and Joker drawings as TMs for dolls; CCPA said that there was no merit in the argument that the aesthetic features of the drawings prevented TM function. 9th Cir.: Betty Boop case; withdrew opinion applying aesthetic functionality. On remand, the dct turned again to aesthetic functionality, but relied heavily on finding D’s uses ornamental, not TM, use. Protection of feature as TM would thus impose significant non-reputation-related advantage. That limits the potential for this defense a lot—would not have helped ZOMBIE CINDERELLA, but why not recognize the functional portions of each mark?
Lunney: Merry Xmas case for words on Xmas ribbon: words that are functional; Damn I’m good TTAB decision w/that phrase for a bracelet. Why focus on non-reputation-related disadvantage and not other language, like important commercial ingredient in success.
A: I’m afraid of Pagliero: Justin Hughes says it’s been rejected.
Lunney: but it’s quoted directly by Breyer in Qualitex. Brand value v. intrinsic value: ask whether consumers would be better off if they were subject to competition in the market for Disney character dolls.
Mark McKenna: be more radical—say it’s not for TM at all. It’s not genericism, functionality: it’s Dastar—trying to capture stuff that should be in ©. However badly © does with characters, that’s copyright problem. Mickey Mouse may be hard, but the rest are all easy.
Q: explore failure to function/use as a mark.
Rosenblatt: aren’t you coming back to genericity? The signal being given is “this is a Cinderella.”
A: I’m not saying just signalling is aesthetic functionality—Cinderella Maids Service, Cinderella Eyebrows Spa, Cinderella Soap Co. There is a lot of overlap w/genericity, but it’s harder for product design.
Concurrent Sessions 1
Andres Sawicki, The Law of Creativity?
Replication crisis in social sciences. Social psychology is the main source of the creativity literature—Teresa Amabile et al. Another red flag: creativity studies usually feature between-subject study design, replicates at a lower rate than within-subject studies. P values: doesn’t know the extent to which the literature upon which we’re relying is at the .05 threshold; next step in project is to check this. Effect sizes, another topic of investigated: the larger an effect you see, the more likely it is that it’s replicable. Studies may be underpowered; there may be effects but you don’t see it in the subsequent studies.
Model specificity: standard IP (patent and copyright) model is an artist or inventor facing choices whether to create. Standard incentive thesis. Creativity literature: we need a different model; not sure what it is. IP creativity literature has adopted a motivation model or a cultural conditions model. Motivation: incentive thesis all over again. Should we be measuring the number of works created over a certain threshold? More people choosing creative careers? We should be more precise about the marginal benefit we want to measure for giving IP rights. Creativity literature opens up the idea that we don’t just care about the $ going back to the creator—attribution, control, something in addition to or instead of the cash.
Existing normative theories: incentive, natural rights, capabilities. Implicit normative theory in the new literature: we should maximize creativity. It’s a good, but at the cost of what? Does the literature itself have a normative theory other than the maximization of creativity?
Jessica Silbey: When we’re comparing social psychology literature to legal analysis of creativity through social psychology, there’s an overarching disciplinary q of what/why those disciplines are asking when they ask questions. I appreciate the replicability issue, but the larger q is whether we’re running experiments for the same purposes, or what the import is for the discipline in which we’re working. Add to this project: theory of what the law is supposed to accomplish in the first place. Most of the social psych, sociology, anthro work has a theory of the discipline that informs the experiment.
A: As legal scholars, what is our goal/responsibility in drawing on other disciplines? An opportunity for interdisciplinary work. It’s not just an idea of describing creativity; he sees the idea as maximizing creativity—or well-being, autonomy, competence, relatedness: we should have debates about whether those are the normative aims we want to promote.
Sean Pager, A Unified Theory of Authors and Incentives
Criticism: current law’s “© directly induces creativity” model relies on demonstrably false theories about creativity; sometimes copy-skeptics want courts to call into Q the whole idea of copyright—straw man. I think this model oversimplifies and I want to rescue the incentive model from the cloud it’s under. Reframe what © incentivizes: creative investments, not creative works. Piggybacking on Jonathan Barnett’s Copyright Without Creators. Investments in post-creation commercialization. This explains a number of features of copyright doctrine. He’s persuaded by most, but wants to refine sharp dichotomy b/t creation and commercialization. The commercialization process is chock-full of creative acts/talent, that progressively adapt original authorial work into derivative forms that represent original works of authorship. Script development. The industries are motivated by copyright; that’s authorship that’s happening. Most clear in AV industries, but also recording, even publishing.
What about individual authors? Are they just intrinsically motivated or does © change the way authors behave? There are different types of authors. Two such types: the commercially minded creators—mercenary, Samuel Johnson non-blockhead types. Plenty of examples. But what about the intrinsically motivated—does © change their behavior? Maybe they’re creating out of love, but they also need to eat and pay rent, and sometimes need inputs to create. © leads people to invest more resources, creating works of higher social value. Does the market value social value directly? That’s a caveat/something he wants to bracket. What about works the market doesn’t value? They’re not left entirely out of the cold because of the derivative rights market. People who want to direct films serve as camerapeople on films—commercialization process puts more money in the system that provides often well-paying jobs to creators while they’re waiting to succeed; they gain training, skills, experience, personal contacts—so when they can engage in passion projects they’re able to do so. A particular kind of cross-subsidy. Also creative clusters subsidize individually motivated creativity. Lifetime career arc of investment also leads to more investment in better creativity—just like pickup softball players are intrinsically motivated, but pro sports leagues have higher investments in skill and creativity and thus more entertainment value.
Q: Does anyone disagree w/your basic thesis? Or are we arguing about what’s necessary to get creativity if that’s what we want, given insistence by MPAA et al who show up to Congress claiming that “we won’t get any creativity at all unless you make Google filter its search results”? That is, we are interested whether Johnson was right about blockheads or whether he was at best joking since that sentence is in his own diaries—and also in what tradeoffs we are willing to accept in order to get these investments in specific types of works, which may crowd out or suppress other types of works. Perhaps we don’t want to bracket the question of what’s valued by the market versus what we want in the universe of creation. Perhaps we’re interested in the gendered and raced ways in which the standard paths of access are open to certain people—another way to describe what you’re describing is ‘the old boys network.’
A: I was myself constructing a straw man of objections. There’s an awful lot written that has oversimplified incentives. If you want to disagree w/©’s incentives having acknowledged them, he’s cool with that.
Silbey: How important is the anti-copying protection that exists today to the argument that they need to make money? That is, money as an incentive versus © as an incentive. The equation w/needing to earn a living and © as the means to earn a living is not entirely clear to her.
A: not claiming that no one would engage in commercial creativity w/o ©. Marginal increase. Counterfactual models/marginality is addressed in other papers.
Silbey: so anti-copying is the lynchpin?
A: other things too—moral rights, attribution—© has a mismatch in the US but it does some work in this direction. Some publish more b/c they have control.
Silbey: Control is different from $.
Sawicki: compare © to other mechanisms by which people earn money for creativity. Instead of NEA, consider uniform basic income for creators.
Jorge L. Contreras & Jacob S. Sherkow, Dividing the Spoils of CRISPR
CRISP is a way to edit DNA by removing, adding or altering specific DNA sequences—like word processing for genetic sequences. Many applications—disease-resistant crops, therapies for genetic disorders, etc. Discussion of exclusive licenses from universities—controversial in that they cede control to private companies not bound by principles of more open practices. Surrogate licensing, to avoid obligations—including NIH models. It’s profitable as a model and it has existed since Bayh-Dole. Licenses can be made non-exclusive. Groups will need cross-licenses from each other—opportunity to take a step back and rethink exclusive licensing.
Q: don’t you need exclusive license to enforce?
A: that’s the concern—they can shut competitors out by refusing to license; companies have legitimate economic rationale for foreclosing competition. Socially suboptimal.
Aman Gebru, A Model Legal Framework for Intellectual Property Protection of Traditional Medicinal Knowledge
The Hoodia story: patent granted on extract for weight loss. Companies eventually felt they couldn’t produce a drug that would meet regulatory standards. There was no provision for communities at first but companies were ultimately willing to share profits w/them because of public backlash.
Traditional medical knowledge can be a shortcut in the drug discovery process—one study found that TMK increased the chances of getting a preliminary hit in plant screening from 6% to 25%. But it’s easily lost b/c of primarily oral nature. Encourage investment in codification? Gov’t investment or subsidy; private investment (he thinks most efficient); secrecy (inefficient); group cooperation (highly limited); first mover advantage (little potential).
Contreras: hard to bind 100s of thousands of community members w/o draconian legal regime.