Mar 8, 2013 Christopher J. Sprigman
Thanks in large measure to the ongoing worldwide smartphone patent brawl between Apple and Samsung, patents are in the news a lot these days. And that is especially true of design patents – i.e., the branch of the patent law that grants rights in novel, non-obvious and ornamental designs. Apple pressed design patent claims against Samsung that included broad claims of ownership over rectangularly-shaped electronic devices. To many observers, these seemed . . . well . . . crazy. Take Apple’s patents on the shape of the iPhone. Here’s a design drawing from the Apple D677 patent.
The patent claims the shaded portion of the iPhone’s shape – the rectangular shape of the face, the edge-to-edge screen, the shape and placement of the mic. But is this a good patent? The overall shape claimed doesn’t seem novel. Today’s smartphones are increasingly just pocket-sized screens, and screens have been rectangular for a long time. Some have responded that this patent is novel to the extent it claims a rectangle with rounded corners, but the rounded corners are functional – just try carrying a smartphone with sharp corners. And unlike utility patents, which, as their name suggests, protect useful things, functionality is a disqualifier for a design patent, which is concerned only with a design’s ornamental quality. What about the shape and placement of the mic? Well, if this is the ground of novelty, it’s a trifling one. But for the moment, give the benefit of the doubt to Apple, and say that they are entitled to a monopoly on their claimed shape and placement of a smartphone mic. We still have a problem. How do we get a jury to focus on whether Samsung copied the mic, and only the mic, and not the other features included in the patent drawing – features that, if what’s said above is right, cannot properly be owned by Apple?
This is a problem that recurs constantly in design patent disputes, and one which brings us to Rebecca Tushnet’s new piece in the Intellectual Property Law Journal, The Eye Alone is the Judge: Images and Design Patents. Tushnet’s piece is short and characteristically lucid, and I would recommend it to anyone interested in grappling with how best to understand the breadth of design patent claims and the test for design patent infringement – both key inquiries in a field that seems to be growing in importance to IP scholars and the public debate about innovation and copying.
As Tushnet notes, most designs involve a mix of novel and non-novel or functional features. These designs are protectable only to the extent of their novelty, or to the extent they offer a novel combination of otherwise familiar features. But how to separate the novel wheat from the non-novel chaff? Relying on the design drawing pushes us toward a gestalt evaluation of overall appearance, and away from the dissection into novel and non-novel elements that is required to ensure that a patentee monopolizes only those design elements that are truly new. If the overall impression of the design, as conveyed by the design drawing, is the measure of infringement, how are factfinders to avoid expanding the scope of the design patent past its proper limits when an accused design looks like a patented design because of similarities in unprotectable features?
The same problem comes up in copyright, and that branch of the law doesn’t deal with it very well. The “substantial similarity” test invites comparisons that include non-copyrightable elements, despite some courts’ attempts to “filter” such elements out of the analysis.
So should we have a written description requirement for design patents, as we have for utility patents? That is, should we require would-be patentees to describe in words the novel features of their design, and separate those features from other parts of the design that cannot properly be claimed in the patent?
The Federal Circuit, in a case called Egyptian Goddess, Inc. v. Swisa, Inc., rejected a general written description requirement for design patents and held that, in most cases, design patent images should be left to speak for themselves. And the Supreme Court has held that the standard for infringement in design patent disputes is also purely visual. In Gorham Co. v. White, the Supreme Court stated that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” In sum, the Court held that “the eye alone is the judge of the identity of the two things.”
So in most design patent cases we rely on “the eye alone.” Is this a good idea?
At least three arguments have been assayed against a written description requirement for design patents. The first is that proper infringement analysis shouldn’t involve any dissection, because ordinary observers view designs as a whole and don’t decompose them into their constituent elements or filter out functional or unprotectable parts. That argument is probably an accurate description of how consumers view designs. But it is nonetheless a weak justification for an “eye alone” approach to design patent. Taking it seriously would require us to abandon the novelty screen for design patent, and this we cannot do without violating the constitutional command that patents be granted only for “inventions.”
The second argument against written description focuses on the difficulty of describing complex designs in words. There is certainly truth in this. Tushnet gives the example of a star-shaped ceiling fan. The written description for the design requires more than 400 words, and proves difficult to digest, even for someone practiced in the art of understanding patent claims. But even if words are difficult, they often prove necessary, not least because design patent images often fail to speak for themselves. Tushnet points out that courts dutifully recite the Egyptian Goddess injunction against the need for written description in design patent cases, but then engage in lengthy written analysis comparing the design drawing at issue to the prior art. Obviously, in the view of these courts, it is far from clear that any fair-minded person, viewing the patentee’s image and comparing it with the prior art, would reach the same result the court reaches in a particular case.
The third argument against written description is harder to dismiss. Written description is undesirable, this argument holds, because once you introduce a textual description of the claimed design, it inevitably alters the way we see that design – to wit, written description makes us see the design less well.
Read Tushnet’s article to see her careful response to this argument in full. If you do, you may be left, as I was, with the following thought. The primary function of a written description requirement would be to push back against the tendency of the “eye alone” approach to grant rights in features that are not novel and properly belong in the public domain. The effect of this would be to narrow design patents overall, and, as a consequence, to dull the incentives of firms to obtain them. But would that potential disincentive to patent designs, in turn, reduce the incentives of firms in a variety of markets to invest in new designs? That depends on whether competitive forces – including the ways in which design contributes to function – are sufficient to provoke substantial investment in improving product aesthetics. And on that overriding question, we know very little.
Jan 23, 2013 Michael Madison
Aaron Perzanowski, Intellectual Property Norms in the Tattoo Industry, Wayne State University Law School Research Paper No. 12-14, available at SSRN.
Tattooing has gone mainstream. In the introduction to Intellectual Property Norms in the Tattoo Industry, Aaron Perzanowski lets the facts speak for themselves: “An estimated twenty-one percent of adults in the United States—more than sixty-five million Americans—have at least one tattoo. For those under the age of 40, that percentage nearly doubles. Not surprisingly, the tattoo business is booming. By some estimates, the U.S. tattoo industry generates $2.3 billion in annual revenue.”
Small wonder, then, that Perzanowski has tackled the originality and copying norms adopted by the communities of tattooers, extending in certain respects – and distinguishing in others – recent work on informal IP norms among stand-up comics, fashion designers, French chefs, magicians, roller derby queens, and fans of jam bands. The first great contribution that Perzanowski makes in this paper is assembling and describing a collection of qualitative data about the relationship between formal IP rules and informal norms among yet another group of people with their own distinct sets of creative and copying practices. It’s not surprising, perhaps, that despite the mainstream popularity of tattooing, tattooers continue to regard themselves as outsiders, pirates even, and that they have little use for or reliance on formal IP rules. Yet unlike their counterpart comics, designers, chefs, and magicians, tattooers have ample opportunity to integrate their work with copyright law. Tattoos are copyrightable subject matter, and infringement claims, while rare in practice, are hardly unimaginable legally.
What makes this paper compelling is that Perzanowski goes beyond the instinct to look at informal anti-copying norms in tattooer communities primarily as substitutes for or complements to formal copyright law. The insight offered by earlier work on comics, fashion designers, and so on has been that copyright’s formal structure is often overbroad, because creative communities may thrive even when copyright falls short. Informal social norms can pick up the slack, guiding creative practice and policing copying where needed. The lesson is specific: efforts to extend and broaden copyright law in those domains may cause more harm than good.
The lesson in Intellectual Property Norms in the Tattoo Industry, and its second great contribution, is broader. Norms guiding creative practice and copying can be constitutive of groups themselves, quite independent of their members’ places and times. That’s a point that cyberlaw scholarship has argued strenuously for decades but primarily from a theoretical perspective. Cyberlaw scholars have often wanted it to be true more often than they have managed to demonstrate it with evidence. Work on open source software developers has come closest to documenting the point, but open source communities are constituted legally by the structure of open source software licenses, making the independent role of the group itself somewhat difficult to dis-entangle. Perzanowski takes us from free software coders to tattoers, from one group of self-conscious outsiders to another. And we re-learn what Mencken taught with infant baptism. We need not merely believe in the existence of communities defined by creative and anti-copying practices that specifically depart from formal legal norms. We’ve seen it done. For good measure, we see it in among practitioners of an art that consists of the antithesis of the disembodied, dematerialized communication and expression that usually defines the Internet. As one of the tattooers quoted in this paper said, “A tattoo is an affirmation that it is your body, … that you own your own self, because you’ll put whatever you want on your own body.”
To illustrate the point, the article reports and analyzes more than a dozen in-person qualitative interviews with a diverse group of tattooers throughout the United States, identified through snowball sampling. It situates the results in a brief but illuminating history of tattoo art and an overview of the market structure of contemporary tattooing. Communities of tattoers distinguish between custom tattooers, who collaborate with their clients in designing and applying bespoke tattoos – subject to relative strict anti-copying norms – and older-style street tattooers, who trade mostly in flash or books of standard designs that are meant to be re-used. Perzanowski teases from his interviews a series of core creative and anti-copying norms. One group of norms can be clustered around the idea that tattooers rely heavily on the autonomy interests of their clients in creating custom designs and in protecting those designs from re-use. A second group can be clustered around the acceptance of flash as a re-usable commodity. A third group centers on acceptance of borrowing ideas and even details from visual art found in other media. Perzanowski never overstates his case; the history of tattooing and distinctions between custom tattooers and classic tattooers give the piece a lot of useful nuance without undermining the integrity of the picture of the discipline as a whole. Tattooers are creators and copyists, but they have clients. Their norms honor all three dimensions of their practice.
The piece analyzes these norms via the framework introduced by Robert Ellickson. Ellickson situated his study of Shasta County cattle ranchers in a theory of social norms supported by tight-knit communities characterized by lots of repeat workaday interactions. He concluded that the ranchers’ norms were sustained because they were welfare-enhancing from the community’s standpoint. Perzanowski likewise argues that tattooers constitute a tight-knit community (he invokes the metaphor of a medieval guild to describe the apprenticeship obligations of new trainees and the suggestion of some interviewees that the group has gotten too open and too big), that their norms emerged from workaday interactions, and that tattooers’ norms are welfare-enhancing in the sense that the norms preserve the integrity of the group qua group, particularly in the extent to which the group cultivates a market that supplies unique custom tattoos. Individual tattooers could profit by defecting, but they don’t, because defection would undermine demand for unique tattoos. A system of informal norms supplies a cheaper and easier way to police the market than a comparable anti-copying regime policed by formal IP rules or by a system of anti-copying contracts with clients.
As careful and disciplined as this piece is from an intellectual property standpoint, its broader themes warrant greater attention by readers. Perzanowski’s efforts to analyze tattooer practices in Ellicksonian terms may fall a little short, I think, on their own terms. First, as Perzonowski notes, tattooers themselves do not see themselves as dealing in creative objects or things. He writes: “As [tattoers] see it, they are in a service profession. They sell an experience, perhaps even an attitude. Clients don’t pay for a drawing; they pay for the time the tattooer spends rendering that image on their skin.” If the hypothesis is that Ellicksonian norms in the tattoo industry are explainable as substitutes for enforcement of formal IP rules as incentives for the production of creative objects, then the fact that the artists see themselves as service providers rather than (or in addition to) object producers means that the relevant norms may be doing different work. Second, as Perzanowski emphasizes throughout the piece, tattooers are not in the creative and copying business only for themselves; they are bound, even at times obligated ethically, to the autonomy of their clients. That complicates the social welfare calculus associated with tattooer norms. Third, it is a little speculative to treat tattooers as a close-knit community of the sort that Ellickson experienced and anticipated. As the piece makes clear, there are thousands and thousands of tattoers in the United States alone. It is likewise clear that their “community” is not so much tight-knit as it is loosely grouped by shared history and training, increasingly mediated (like many distributed groups) by online experiences, and linked by tattooers’ self-imposed outsider status, by a particular set of economic expectations (some linked to custom designs, some to flash), and by shared perspectives on their art. IP scholarship (and Cyberlaw scholarship, too) should take those insights to heart. It would do well to continue to explore how IP norms drive group identity, as well as how group identity drives IP norms.
Cite as: Michael Madison,
Tattoo You, JOTWELL
(January 23, 2013) (reviewing Aaron Perzanowski,
Intellectual Property Norms in the Tattoo Industry, Wayne State University Law School Research Paper No. 12-14, available at SSRN),
https://ip.jotwell.com/tattoo-you/.
Dec 5, 2012 Stacey L. Dogan
Trademark law is in the midst of an identity crisis. The prevailing economic account of the law has come under sustained attack by scholars, who have both challenged its descriptive accuracy and blamed it for many of the expansions of trademark rights in recent decades. The likelihood of confusion test – long the nucleus of infringement analysis – has been roundly condemned as indeterminate, incoherent, and normatively empty. No one seems to agree about why we have trademark law and how best to implement it. Scholars have cast about for explanations of how we got here and ideas of how to get out of this mess.
In this article, Bob Bone tries his hand at both diagnosis and cure. His focus is the much-maligned likelihood of confusion standard. The article (1) explains how we ended up with such a curious test for infringement, (2) critiques the standard, finding it internally inconsistent, normatively deficient, and dangerous, and (3) proposes an alternative that Bone views as more consistent with trademark law’s goals. To do all of this, of course, Bone must endorse some version of those goals. It all adds up to an ambitious undertaking, to put it mildly. And while the article inevitably falls short of fulfilling all of these ambitions, it offers some wonderful insights and enriches the conversation about the values that shape our trademark laws.
After a brief overview of trademark doctrine, the article turns to an engaging account of the history behind the likelihood-of-confusion test. Bone focuses on the Second Circuit in the mid-twentieth century, given the centrality of that circuit’s Polaroid test in the trademark infringement landscape. He contends that the Second Circuit crafted the likelihood-of-confusion test as a sort of compromise between two competing visions of trademark law’s goals. One faction of the Second Circuit had insisted on a showing of either harm or moral culpability as a threshold requirement in trademark cases, while another faction viewed consumer confusion, alone, as an evil to avoid. The Polaroid test for infringement, Bone contends, reflects an amalgam of these two approaches, incorporating harm and bad faith as factors rather than a threshold requirement, and making likelihood of confusion the ultimate question in trademark infringement suits. The result is a rudderless, normatively vacuous standard. I found this portion of the article terrific. It brings to life the intellectual and legal history of the period, and offers a compelling explanation for some of the standard’s most puzzling factors. More generally, it powerfully demonstrates the reality that legal rules result as often from happenstance and patchwork as from thoughtful, considered evolution.
The next chunk of the article exposes the inadequacies of the likelihood-of-confusion standard. Bone contends that the standard “produces bad results, … is doctrinally incoherent, … and is inadequately supported on normative grounds.” He explains and defends each of these points, drawing upon existing commentary and adding some insightful critique. One comes away from this discussion convinced that the likelihood-of-confusion test is badly in need of repair.
Having persuaded the reader that trademark law needs better normative footing and doctrine that reflects its goals, Bone turns in the latter half of the article to his alternative formulation. The article’s essential premise is that trademark law should protect against confusion only when it either causes real harm or results from “morally blameworthy conduct.” Confusion, Bone declares, “is not a problem in itself. People are confused all the time and the law does nothing to lend assistance. Thus, preventing consumer confusion is justified only if the confusion is associated with morally culpable conduct or causes sufficient harm.” Infringement, in other words, can be proven through one of two things: a showing of morally blameworthy acts, or a likelihood of confusion that will cause “sufficient harm.”
The notion that trademark law should focus more on harm is a popular one; Bone generally endorses the idea but proposes a somewhat different approach than other harm-requirement advocates. To me, the more intriguing aspect of his framework is the morality-based alternative. I found this portion of the article thought provoking, although it left me eager for more. In developing his moral arguments – i.e., that “morally blameworthy conduct” deserves condemnation regardless of any proof of harm – Bone assumes that society has an interest in punishing those engaged in deliberate deception, without regard to whether their deception causes any harm. This assumption raised a whole host of questions. How, for example, do we assess whether someone is engaged in purposeful deception? Why should we punish deliberate but non-material deception in the trademark context, when the law does not generally punish those who harmlessly lie? At the other extreme, one might ask why we limit “morally blameworthy conduct” to deliberate deception, and exclude free riding and other acts that at least some people view as morally wrong? In parts of Europe, for example, it’s viewed as morally problematic to take “unfair advantage” of a mark’s reputation. If we base the law strictly on morals, whose morality should dictate the rules? By adopting a non-consequentialist approach to the “moral” branch of trademark infringement, Bone invites questions about the source of his moral compass. Bone touches upon some of these issues, but they could well absorb a full article by themselves.
All in all, this article sheds important new light on the source and the shortcomings of the likelihood of confusion standard. Just as importantly, it opens a fascinating conversation about the appropriate role of “morality” in trademark law. I look forward to the next chapter.
Cite as: Stacey L. Dogan,
Beyond Confusion?, JOTWELL
(December 5, 2012) (reviewing Robert G. Bone,
Taking the Confusion Out of “Likelihood of Confusion”: Toward a More Sensible Approach to Trademark Infringement, 106 Nw. U. L. Rev. 1307 (2012)),
https://ip.jotwell.com/beyond-confusion/.
Oct 17, 2012 Michael W. Carroll
Michael Frakes & Melissa F. Wasserman
, Does Agency Funding Affect Decisionmaking?: An Empirical Assessment of the PTO's Granting Patterns,
66
Vand. L. Rev. (forthcoming, 2013), available at
SSRN.
As patent law has grown in social and economic importance, a growing number of scholars have given attention to analyzing the structure of the patent system. The number of patents issued per year has increased significantly in the past few decades, and, in at least some fields, the breadth of products or activities on which these issued patent claims read has also increased. Scholars studying the system have given the design and functioning of the U.S. Patent and Trademark Office (PTO) increased scrutiny on a number of fronts. Among its many duties, central is the PTO’s power and obligation to decide whether the rights to control a putative invention belong to the patent applicant, to a different applicant, or to the public.
Although patent prosecution is an ex parte proceeding, the patent examiner stands between the applicant and the public in deciding who shall receive the entitlement to use, or exclude others from using, the invention. Due process norms usually require such decisionmakers to be unbiased and free from conflicts of interest. However, since 1991, the PTO has been paid to make this decision from fees paid by one of the parties to the decision: the applicants or patentees. Not surprisingly, senior PTO officials have on more than one occasion referred to applicants and patentees as the office’s “customers.” Might this financing arrangement affect the agency’s interpretation and application of the law? Most scholars have assumed that it does to some extent, but this extent and the operation of this assumed bias has been underexamined. Until now.
Michael Frakes and Melissa Wasserman rightly decided that the hypothesis of PTO bias was testable. They have done a very nice job in identifying which aspects of the agency’s funding scheme exert the greatest incentives toward favoring a patent grant in a close case. In particular, more than half of the PTO’s budget is funded from issuance and renewal fees, which are paid only after the agency has made a positive patentability determination. The key takeaways from their paper, Does Agency Funding Affect Decisionmaking?: An Empirical Assessment of the PTO’s Granting Patterns, are these:
[O]ur findings suggest the PTO is preferentially granting patents on technologies with high renewal rates and patents filed by large entities, as the PTO stands to earn the most revenue by granting additional patents of these types. Furthermore, we also find that these distortions are more likely to occur when markers indicative of an underfunded PTO are present.
By using the 1991 change in financing to test for decisionmaker bias, the authors had to control for a number of other variables. They detail how they did so in Appendix B of the paper. Further details on the methodology are well explained in the paper. (A note to the reader: I am conversant in basic statistics, but I admit that I lack the qualifications to conduct rigorous peer review of the statistical methodology used. The authors appear to have considered and accounted for the likely confounding influences that would undermine confidence in their causality inferences. There may be some minor corrections needed, but given the care and detail with which the authors have designed their study and reported their findings, I am sufficiently confident in the soundness of their work to recommend their article.)
To those who may object to the selection of this article for review because it primarily reports the result of empirical analysis rather than legal analysis, I have two responses. First, while most legal scholars lack the training and expertise to conduct empirical studies of the legal system, some do, and that’s a good thing. Those who study law and policy are particularly well-suited to design studies such as this. While many other legal scholars were willing to simply assume bias, these authors dug in to examine the evidence. Second, legal scholars will always have to make certain empirical assumptions when conducting policy or legal analysis because not all empirical hypotheses are testable, and, even when they are, time and research funding constrain our collective ability to test these. Meanwhile, the world turns on. So, it becomes a matter of judgment to determine which hypotheses are testable and worth testing. Kudos to Professors Frakes and Wasserman for judging this to be one such hypothesis.
Sep 18, 2012 Laura A. Heymann
Until about a year ago, as the New York Times recently reported, Todd Rutherford had a successful business working with writers to help them market their self-published books on the Internet. Rutherford’s previous career had involved more traditional publicity efforts — talking up his clients’ work in the hope that a reviewer at a newspaper or a blog would take notice. But eventually he realized that it made more sense to “cut out the middleman and write the review himself.” And so GettingBookReviews.com was born, a business that, depending on how much the author was willing to pay, would write one, twenty, or even fifty online reviews singing a book’s praises. “Before he knew it,” the Times reported, “he was taking in $28,000 a month” and had to hire freelancers to keep up with the demand. Rutherford may have been particularly up-front about the nature of his business practices, but he was by no means an outlier; one estimate is that about one-third of online reviews purporting to be by actual consumers are marketing schemes rather than genuine reviews.
Rutherford did not, apparently, assert a proprietary interest in his company’s reviews; in any event, the service later foundered when Google, and then Amazon, took notice. But one might suggest that the inherently creative nature of the reviews – at least one of the freelancers admitted that she hadn’t actually read the books she “reviewed” – would put them squarely at the heart of copyright law’s scope of protectability. If this is the case, does that suggest something troubling about ratings? Or about copyright law more generally?
A recent article by James Grimmelmann seems to pose a simple question: Are ratings copyrightable? But what makes this short piece especially thought-provoking is the way in which Prof. Grimmelmann uses this question as a way of interrogating various fundamental doctrines of copyright law: the idea/expression dichotomy, the originality and creativity requirements, and the nature of fact versus opinion among them.
Prof. Grimmelmann begins by providing an overview of the case law considering the copyrightability of ratings. Because individual ratings are too short to be copyrightable, post-1976 Copyright Act courts analyze ratings systems as potentially copyrightable compilations. In some cases, courts treat ratings as statements of fact, capable of being proved true or false (such as the ranking of a particular CEO as receiving the fifth highest income in the country). In other cases, courts treat ratings as an opinion, entirely the product of their creator (such as the typical restaurant or product review). And in a third category of cases, courts treat ratings as “self-fulfilling prophecies, which remake the world in their own image” (854). Akin to John Searle’s social fact, a “self-fulfilling prophecy” takes on factual status because the relevant community treats it as such. A reporter’s prediction that a new comedy will be the highest grossing film of the upcoming weekend may itself cause audiences to flock to see the film, thus “proving” the reporter correct. The use of such ratings by others cannot be condemned as infringement; rather, it “reflect[s] the plaintiff’s influence” (864) in determining the price, value, or quality of the subject of the rating. Like a trademark that eventually becomes the generic name for a good, a self-fulfilling prophecy may have started life as the product of creative effort but eventually becomes a basic tool of communication for the public.
As Prof. Grimmelmann explains, however, these categories are not particularly rigid, as various ratings and rankings incorporate more than one of these features. The U.S. News & World Report rankings of U.S. law schools are based in part on data such as acceptance rates and LSAT scores (which are only as accurate as the information the schools themselves supply) but also on more subjective factors such as the reputation scores accorded by a sample of law school faculty and administrators. A restaurant critic’s award of one to four stars to a local restaurant may be seen by readers as subjective opinion, but those readers no doubt assume that the rating is based on the reviewer’s own experience at the restaurant and not on a grudge she holds against the manager. And, of course, even the most fact-driven rating derives from choices about what types of data to include in the analysis, as Malcolm Gladwell has demonstrated, and some courts that have found ratings to be copyrightable typically focus on such choices as providing the necessary modicum of creativity.
This kind of evaluation matters because copyrightability depends, in part, on whether the work at issue represents facts (which should be available to all) or creative expression. The problem with focusing on the process used to produce the rankings as the source of creativity, as Prof. Grimmelmann explains, is that copyright law is ultimately concerned with works of authorship. As he perceptively notes, a photographer who takes a photo with the lens cap on may have engaged in a variety of creative decisions up to that point regarding lighting, framing, positioning, and so forth, but her error means that she has failed to create a copyrightable work. And to the extent that copyright law is about economic or other incentives (a conventional wisdom that has been increasingly challenged of late), Prof. Grimmelmann notes that the idea/expression distinction may get things exactly backward. If the creators of ratings are told that they can protect their work only if they are opinions, then the ratings will become increasingly less fact-bound and, presumably, less useful to users.
But is utility copyright’s proper focus? If copyright law should set aside notions of aesthetics, as Bleistein suggests (however impossible or inadvisable the task), why should it care about the Todd Rutherfords of the world? Here, Prof. Grimmelmann concludes with a gentle encouragement to reconsider first principles. Perhaps we should evaluate not only whether ratings (or any such effort) are copyrightable but also what is gained or lost by such a decision. Perhaps copyright law would benefit from more direct consideration of the social utility of various works, taking its cues from doctrines (such as defamation law) that more directly address the value of various forms of speech. Or perhaps (to invoke one of my own hobbyhorses) copyrightability is not the driving force here at all; validating reputational or attributional concerns may provide creators with all the incentive they need while increasing the availability of the underlying work.
Prof. Grimmelmann does not presume to answer these questions in the space of his short article. But his recognition that a deceptively simple question —are ratings copyrightable? — can give rise to many further, and interrelated, avenues of inquiry makes the article well worth reading.
Jul 30, 2012 Kevin E. Collins
Peter S. Menell & Michael J. Meurer,
Notice Failure and Notice Externalities, (Boston Univ. School of Law, Public Law Research Paper No. 11-58, 2011),
available at SSRN.
In Notice Failure and Notice Externalities, Peter S. Menell and Michael J. Meurer coin a new term—a “notice externality.” In the process, they do nothing less than turn the conventional story about property rights and externalities on its head and reconceptualize many of the inefficiencies of contemporary intellectual property regimes.
The externality part of the term should be familiar by now, given the extent to which economic thinking has permeated intellectual property discourse. An externality arises whenever one party’s conduct has consequences for other parties that are not considered—read “internalized”—by the decision maker. In some of the classic examples, the externalities are negative: the conduct of sending pollution out a smokestack generates negative externalities for neighbors. In other classic examples, the externalities are positive: the conduct of inventing new technologies generates benefits for all those whose lives are improved by using the technology.
Externalities may lead to market failure as the private and social welfare implications of undertaking the activity diverge. Polluters over-pollute. Inventors under-invent. In the conventional story of property rights and externalities, property rights are seen as one way, among others, of eliminating externalities and staving off market failures. Neighbors can bring nuisance suits to prevent levels of pollution above the social optimum by forcing the land owner to internalize the negative externality. Intellectual property rights allow inventors and creators to internalize some of the social welfare gains attributable to their technologies and creative works, bringing investment in innovation and creativity closer to the socially optimal level. In both cases, property rights serve the function of internalizing externalities and decreasing the divergence between the private and social welfare implications of an individual’s conduct. (There are many subtleties in, and problems with, this conventional story, but this is not the place to pursue them.)
Menell and Meurer offer a mind-bending twist on the conventional story of the relationship between property rights and externalities. In their story, the act of claiming property rights in a resource is the conduct that creates the negative externalities. They argue that my act of claiming a copyright or patent has welfare-decreasing consequences for you (if you are an author or inventor, respectively) and that I do not internalize those consequences. More specifically, Menell and Meurer argue that the negative externalities derive from the fact that you had poor notice of my rights—hence the term “notice externality.” In a world of costless, perfect information and unambiguous property rights, there would be no notice externalities. In the actual world, however, Menell and Meurer argue you suffer the following costs because I claim property rights in the “neighborhood” or “vicinity” of your authorial or inventive pursuits: “(1) costs of determining owners of potentially conflicting property rights; (2) costs of ascertaining boundaries of those properties; (3) costs of assessing the scope of those property rights; and (4) dispute resolution costs.”
The crux of the argument is that property may mitigate some externality problems, but that it can also generate a new externality problem. Notice externalities are therefore second-order externalities. We created legal property regimes precisely because we wanted to ensure that actors would internalize the externalities of non-legal conduct such as manufacturing or inventing. Think of these as the first-order externalities. Menell and Meurer demonstrate that we need to take into account the second-order externalities that result from using the legal property regime to achieve the goal of internalizing the first-order externalities.
In an unpublished book review of Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk by James Bessen and Michael Meurer that I wrote a number of years ago, I mulled on one possible equilibrium that could result from understanding the act of claiming property as an act with negative externalities. If what Menell and Meurer refer to as notice externalities are sufficiently large, individuals who claim property rights in resources could generate what I called a tragedy of property. “A tragedy of property results from the inefficient, externality-generating overuse of the institution of property itself.” The private benefit that each individual receives from claiming a patent may be positive, but the negative externalities that the property claimant imposes on others may be greater in magnitude. The tragedy of property is symmetrical to the tragedy of the commons, but it focuses on the second-order externalities generated by property claims rather than first-order externalities that are mitigated by property claims.
This short review has framed Notice Failure and Notice Externalities as an article about the relationship between property rights and externalities, and it thus may be taken to suggest that Menell and Meurer have written an article that is chock full of high-level property theory. In actuality, however, that is far from the truth. The article is drafted as an eminently practical piece. In part, the article is a descriptive exercise—a reconeptualization of the inefficiencies of intellectual property that makes us see many problems of which we are already aware in a new light. Picking up on a now-familiar theme, Menell and Meurer argue that real property and intellectual property differ in the magnitude of the notice externalities that they generate. The nature of real property rights and the institutions that have developed to administer them is such that one person’s land claims impose only minor notice externalities on other land developers. Menell and Meurer develop an extensive and detailed taxonomy of differences between real property and intellectual property regimes to explain why notice externalities are much more significant in the latter. In part, the article also provides a platform for some innovative reform proposals. Because they see the problems differently, Menell and Meurer offer different remedies. Because the problems are revealed as externality problems, they are able to bring the full slate of responses to externality problems that have been developed in other contexts to bear on intellectual property. They develop some original solutions that hybridize the traditional responses, too.
Jun 14, 2012 Christopher J. Buccafusco
Last semester, I taught Comparative Intellectual Property Law in London, and I enjoyed the opportunity to think about different ways of structuring IP regimes. One of the more interesting differences is the use of jury trials in U.S.intellectual property litigation. Other countries are much less likely to have juries pass on such questions as the obviousness of an invention, the confusion created by different trademarks, or the similarity of two copyrighted works.
Whether juries are capable of making these determinations is ultimately an empirical question, and it is one that Jamie Lund from St. Mary’s University School of Law has sought to answer. Her recently posted paper on the “lay listener” test in music composition copyright cases suggests that our trust in juries may be poorly placed. I like her article, An Empirical Examination of the Lay Listener Test in Music Composition Copyright Infringement, lots.
Music copyright is a strange bird. When you hear a new song on the radio, that song is generally protected by two different copyrights, one in the underlying composition (composition copyright) and one in the particular recording of the composition (recording copyright). The composition copyright protects the author’s use of melody, harmony, rhythm, and lyrics to create a musical work, while the recording copyright protects the performer’s decisions regarding phrasing, style, genre, tempo, key, timbre, and orchestration. These are separate copyrights, often owned by different people, to which different sets of rights attach.
The bifurcated music copyright creates a number of difficulties, perhaps the most challenging of which is ascertaining whether a song by artist B infringes one or both or neither of the copyrights in a song by artist A. If A alleges that B violated the composition copyright of her song, how should the law determine whether B copied from A and whether B took “too much” of A’s song? The solution that copyright law typically adopts is the jury-centered “Lay Listener” test. Because the market for the music is the consuming public, courts believe that jurors are best positioned to determine whether the defendant took “so much of what is pleasing to the ears.” Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946).
The difficulty is that the lay public, and the jurors that come from it, have only indirect access to the underlying composition. Given the state of musical education, they are typically unable to read sheet music, so they only experience the composition through the recording. Courts have responded to this dilemma by allowing jurors to listen to the recorded versions of the plaintiff’s and defendant’s songs, usually unguided by expert evidence. But this means that some aspects of the musical work the jurors are hearing (those relating strictly to performance) are irrelevant to the task of comparing compositions. Jurors are asked to decide both whether the defendant actually copied from the plaintiff as opposed to independently creating the work or copying it from another source (the Copying in Fact inquiry) and, if so, whether the defendant’s copy of the song was “substantially similar” or took too much of the heart of the plaintiff’s song (the Substantial Similarity inquiry).
Lund suspected that jurors might not be particularly adept at answering these questions, and she set up a delightful study to test whether this was the case. Her main hypothesis was that aspects of the musical recording would unduly influence jurors’ likelihood of finding infringement of the musical composition. The study, in brief, compared the responses of two different sets of subjects to questions about Copying in Fact and Substantial Similarity between two songs that were actually litigated. The first set of subjects heard the two songs performed in a similar manner (tempo, orchestration, key, and style), while the other group heard the songs performed differently. Lund has posted the recordings to her website. Take a listen.
With one of the pairs of songs, Lund strongly confirmed her hypothesis. Subjects who heard the songs performed similarly were much more likely to report a higher degree of similarity between the compositions, higher likelihood of copying, and higher degree of substantial similarity. For example, when subjects heard the songs performed similarly, 86% of them thought the songs were substantially similar, but when they heard them performed differently, 85% thought the songs were not substantially similar. That’s quite a reversal! (Note that Lund’s data on a second pair of songs were not quite as striking, although this could have been due to order effects, the underlying similarity of the songs, or other experimental factors).
These findings should cause serious concern not just for music composition copyrights, but for the role of juries in IP cases more broadly. Lund discusses a number of possible solutions to the problem including using expert evidence, special verdict forms, or multiple recordings of the same piece of music. But as Lund herself notes, these tools may have little effect considering the poor understanding that jurors are likely to have regarding essential issues of a copyright lawsuits, such as the meaning of “originality” in copyright law and the relationship between litigated works and their public domain forbears. Maybe, and I never said this last semester, the U.S. should follow the French example and get rid of juries in IP cases. My other proposal is to have jurors watch this video before hearing the songs.
Cite as: Christopher J. Buccafusco,
The Same Old Song?, JOTWELL
(June 14, 2012) (reviewing Jamie Lund,
An Empirical Examination of the Lay Listener Test in Music Composition Copyright Infringement (March 2012)),
https://ip.jotwell.com/the-same-old-song/.
May 14, 2012 Jason Schultz
Christopher Jon Sprigman, Christopher Buccafusco, & Zachary Burns,
Valuing Attribution and Publication in Intellectual Property (Va L. & Econ. Rev Research Paper No. 2012-02),
available at SSRN.
We all like to get credit where credit is due, but how much is it really worth to us? In another installment of their provocative series of IP experiments, Sprigman and Buccafusco team up with Burns to test that question specifically in the context of online photography.
The setup is similar to their past papers – subjects are given the opportunity to sell their chance at winning a prize in a creativity contest. The amount they are willing to sell for stands as a proxy for how much they think their IP might be worth. In the past, these experiments demonstrated a tendency for those who owned IP to fall prey to an “endowment effect” and those who created the IP to a “creativity effect,” both of which artificially inflated subjects’ perceptions of the IP’s value, thus leading to market inefficiencies and higher transaction costs. Sprigman and Buccafusco then argued that this differential supports the use of liability rules over property rules for IP, as liability rules tend to mitigate the costs incurred from such irrational holdouts.
In this paper, the focus is on two experiments investigating how creators value attribution and publication, and how those valuations might affect IP market transactions and policies. Subjects in the first experiment were casual amateur photographers who submitted nature photos into a contest to win $1000 dollars. They are then randomly given one of three conditions: (1) an offer to buy their right to win the contest; (2) the same offer with an additional opportunity to have their photo published without attribution if the parties are able to reach a deal and the photo also wins the contest; and (3) the same offer but with publication and attribution if the parties are able to reach a deal and the photo wins.
Not surprisingly, the study found that subjects were willing to accept much less money for the possibility of having their photo published with attribution, thus showing the value of the attribution. This was reinforced by the finding that publication without attribution was even less valuable than winning the contest, meaning that many photographers might even forego publication if attribution was unavailable.
The second experiment focused on differentials that might exist between professional and amateur photographers. The contest conditions were the same, but the subject population was more professional than amateur. Here, the response to the attribution condition was even stronger, with professional photographers valuing attribution even more than casual amateurs.
The implications of the paper are quite interesting and timely. With the rise of more and more social economies and reputational systems online, norms for appropriate attribution are becoming a flashpoint. For example, the social image curation site Pinterest recently experienced blowback over its “Pin Etiquette” and Terms of Use which both discouraged self-promotion and posting third-party content without permission (leaving one to wonder what, exactly, users should “pin” to their boards). At the heart of the conflict was copyright and in particular, norms around who gets the credit for producing and “pinning” works of art.
The authors provide a useful framework for helping us understand their data and, by analogy, conflicts such as the Pinterest one by breaking attribution down into three types of value – extrinsic value (promoting additional commercial success), intrinsic value (positive emotional experiences), and moral value (the proper treatment of art and artists). In the Pinterest conflict, complaints ranged along all three lines. Unfortunately, as the authors admit, they were unable to distinguish in their experiments between these different types, so it is unknown which and to what extent each drove the behavior of the photographers they studied.
Still, one wonders if artists were given a choice, which of the three types of value they would prioritize in a given situation. Identifying the appropriate value could allow both online platforms and policy makers to craft appropriate tools to respond to attribution failures. For instance, YouTube’s ContentID provides rightholders with options to monetize, attach attribution, or removal content posted by third parties without permission. While the removal option reinforces the property rights approach that the authors criticize, the attribution and monetization seem to be rational approaches by YouTube to the attribution needs of creators.
So what are we to take from all this? In the end, the paper is less about new information on attribution and more about the accuracy of our intuitions. Attribution is clearly important to artists and to the extent it has become normatively dominant online, it can help mitigate any potential loss of economic value that artist and other creators might feel (however irrationally) when they find their work posted without payment. Thus, it continues to be a smart strategy for those who post, pin, or publish images without permission. However, I agree with the authors that this does not mean we should adopt mandatory attribution or any other form of property-like reputational right as a matter of policy. As their data shows, this would only lead to greater presumptions of irrational economic value and the ability to control content – two concepts which are increasingly problematic in networked economies.
Feb 29, 2012 Christopher J. Sprigman
So what does my frustration with the New York Mets have to do with copyright law? A surprising amount. And I say this even though the Mets have done a lot of things to make life difficult for their fans. Over the years, I’ve watched my ballclub pay insane money to a series of pitchers who could not pitch, hitters who could not hit, managers who could not manage. I’ve endured a seemingly endless string of Subway Series failures against the hated Yankees. I’ve celebrated the demise of the awful Shea Stadium, only to see it replaced with a new ballpark named for a bank that combined greed, arrogance, and ineptitude at a scale nearly sufficient to destroy the American economy.
And yet, from an IP geek like me, the ways in which the New York Mets have abused the copyright laws of the United States are even worse.
At some point during the telecast of every Met game, we are treated to this announcement:
This copyrighted telecast is presented by authority of Sterling Mets. It may not be reproduced or retransmitted in any form, and the accounts and descriptions of this game may not be disseminated, without the express written consent of Sterling Mets.
Which is a lie. Or at least a gross overstatement. And it isn’t just the Mets. It’s all of Major League Baseball, which inserts a similar warning into the broadcast of every baseball game.
So, what’s the problem? It’s hard to know where to start. First off, it’s just wrong to assert that a broadcast of a baseball game “may not be reproduced or retransmitted in any form.” To say this ignores the fact that snippets of the game will appear on all of the local evening newscasts, and on ESPN’s “Baseball Tonight”. Of course Major League Baseball and its teams are probably thrilled to have this coverage, but even if they weren’t, they couldn’t stop these news organizations from using short clips of the telecast to recap the game. Copyright’s fair use doctrine almost certainly allows the use of short clips from a baseball game for the purpose of news reporting. But the Mets’ copyright warning acts as if the fair use doctrine doesn’t exist.
Worse is the assertion that “the accounts and descriptions of the game may not be disseminated” without the Mets’ consent. Let’s say I take to my blog to complain about yet another Mets late-inning collapse. I angrily bang out a blog post describing the series of mishaps, bad decisions, and plain awfulness that led to the loss. In doing so, I am certainly “disseminating” “accounts and descriptions of the game.” Am I violating the copyright law in doing so? Certainly not. Copyright protects original expression. It does not allow anyone to assert ownership of facts. My “accounts and descriptions” of how the Mets lost are cold, hard facts; they are not copyrightable. And, consequently, the Mets’ stern warning against disseminating “accounts and descriptions” of the game is a sort of fraud. It’s an assertion of copyright rights where none exist. Or at least an assertion of rights that is far broader than what the law actually provides.
This sort of thing happens a lot, and a few years ago, Brooklyn law professor Jason Mazzone gave the phenomenon a name – “copyfraud”. Mazzone first limned the term in an article published in the New York University Law Review in 2006. And he’s now expanded his analysis in a new book, Copyfraud and Other Abuses of Intellectual Property Law (Stanford Law Books, 2011).
According to Mazzone, the clearest example of copyfraud is the act of attaching a copyright notice to a public domain work. Mazzone gives many examples, including claims of copyright in the U.S. Constitution, sheet music of compositions by Beethoven, Chopin, Handel, and Bach, posters of paintings by Monet, Van Gogh, and Cezanne, the plays of Shakespeare, the Federalist Papers, and the opinions of federal judges. In all of these instances, property rights are asserted that simply do not exist. And that, Mazzone argues, is a fraud on the public. Copyright provides temporary property rights designed as inducements – i.e., as bait to lure creators to produce new works. Copyright does not need to last forever to do that job – a fact which the Constitution recognizes by restricting copyright to “limited Times”. And this conduct, Mazzone argues, is damaging to all of us:
“Copyfraud stifles creativity and imposes financial costs upon consumers. False copyright claims lead individuals to pay unnecessarily for licenses and to forego entirely projects that make legitimate uses of public domain materials. Copyfraud is a land grab. It represents private control over the public domain. Copyfraud upsets the balance that the law has struck between private rights and the interests of the public in creative works.”
More broadly, Mazzone describes other kinds of copyright overreaching – in particular, dubious claims by copyright owners that are made possible by the law’s lack of clarity, and by the severe consequences that defendants may suffer if they lose in a lawsuit. The Mets’ copyright warning is an example. So too is the copyright warning attached by Adobe to its ebook version of Lewis Carroll’s Alice’s Adventures in Wonderland – a work that is in the public domain. The warning reads like something the Mad Hatter would have come up with:
Permissions on: Alice’s Adventures in Wonderland
Copy – No text selections can be copied from this book to the clipboard.
Print – No printing is permitted on this book.
Lend – This book cannot be lent or given to someone else.
Give – This book cannot be given to someone else.
Read Aloud – This book cannot be read aloud.
Or consider the execrable conduct of the estate of James Joyce, which has repeatedly threatened copyright lawsuits against scholars and others who make use of materials owned by the Joyce estate – even when those uses should obviously fall within the ambit of fair use. The Joyce estate threatened a choral production that used 18 words from a Joyce novel. And the estate’s copyright threats forced English professor Carol Schloss to cut crucial evidence from her book detailing the important relationship between Joyce and his daughter, Lucia. Schloss eventually sued the Joyce estate (with the help of lawyers from the Stanford Law School Center for Internet and Society) and prevailed. But in many other cases, overzealous assertion of copyright has chilled or altered academic projects – in part because academic publishers lack both the stomach and the wallet to fight back hard against dubious copyright claims.
By detailing these examples and many, many others, Mazzone’s book convinced me that copyfraud happens often enough to be worth noticing. And Mazzone does a great job explaining the many ways in which copyright overclaiming leads to mischief. If this was its only achievement, Mazzone’s slender and readable book would be worth your time. But the real value of Mazzone’s book lies in the way in which it links to a broader issue. The copyright law on the books is not the copyright law we have out in the world. The rights of copyright owners are both broad and relatively clear, and the remedies available for infringement of those rights are very powerful – indeed, they are purposely designed to be supra-compensatory. But the rights of users – i.e., of the public at large – are both narrow and poorly defined. The result of this mismatch is predictable: over-assertion of copyright is unlikely, in the run of cases, successfully to be resisted. This fact contributes in turn to a slow shift in the real-world content of the copyright law toward broader property claims, and away from the careful balance that copyright law attempts to achieve between private rights and public access to our culture. And this means that in considering changes to copyright law in the future, Congress should not presume that its understanding of the proper copyright balance will be the rule that governs conduct. Out in the real world, people take what they can grab, and our current copyright law puts a lot within reach.
So what can we do about it? Mazzone proposes a number of cures. He suggests we should treat copyfraud as fraud – and deter it by toughening penalties for false copyright claims and dialing back evidentiary requirements required to impose copyfraud liability. He also proposes a number of ways in which we could make copyright’s fair use doctrine a more effective shield against copyfraud. His principal suggestion in this regard is that we gin up a federal agency responsible for developing and enforcing the fair use doctrine. Oh how I wish this would help, but I fear that Mazzone’s proposal to create a federal Fair Use Agency would more likely make things worse. Narrowly focused federal agencies are subject to capture, and it’s difficult to imagine a environment more ripe for capture than a federal fair use agency. What fair use bureaucrat wouldn’t dream of escaping the dreary confines of DC for a job in Hollywood? More seriously, the content producers would be repeat players before the agency, and the principal source of employment for former federal fair use agency workers. The likely result is that fair use would come to be exactly what content producers would prefer: fairly useless.
So Mazzone’s book misfires a bit on the proposed solution. But that is far from a fatal critique. The book is a good, quick, bracing read, and it details a piece of the copyright debate that no one had properly understood before Mazzone got to it. In my view, that’s a fair achievement.
Feb 1, 2012 Ann Bartow
Yvette Joy Liebesman,
Downstream Copyright Infringers,
Kan. L. Rev (forthcoming), available on
SSRN.
This article is a fine example of smart and accessible copyright scholarship that identifies and clearly describes a perplexing aspect of the current law, and then succinctly proposes sensible solutions. The somewhat startling problem that Saint Louis University Law Prof Yvette Joy Liebesman identifies is this: A consumer who purchases authorized downloads of musical recordings, intending to behave legally and in consummately copyright law compliant manner, may actually be guilty of copyright infringement if the songs she purchases in digital format turn out to infringe the copyrights of other songs, such as by including unauthorized samples of vocal or instrumental riffs.
Liebesman points out that based on the ways the pertinent statutory provisions of the Copyright Act were written and interpreted, had the same people purchased the same songs, but with the copies embedded in vinyl or written on a compact disk, they would not be vulnerable to liability infringement for owning them. But the recording industry has been so eager to frighten off prospective unauthorized downloading of music that it persuaded Congress and the courts to construct a legal regime under which even legal downloaders are at risk, facing strict infringement liability for completely innocent acts of (e.g.) purchasing songs from iTunes and loading them on an iPod. This group of potential defendants includes me, and most of you reading this.
Suing people who had paid for authorized downloads would, of course, make the large music companies look preternaturally nasty and greedy. While they have not hesitated to aggressively pursue their own customers in the past, the goal of that litigation was to persuade the public to engage in only legal downloading of music. To suddenly signal to the world that not even purchasing songs from mainstream online outlets will keep consumers safe from copyright suits would seem against the rational self-interest of the entire industry. Consumers would reasonably conclude they might as well engage in illegal downloads if the risks of legal downloads are comparable, or forgo downloading altogether.
So perhaps it seems upon preliminary consideration that Liebesman has simply identified an arcane legal anomaly that while interesting, is unlikely to have significant practical importance. But in an age of so called “copyright trolls” it would be unwise to be so sanguine. As Liebebsman explains, an individual copyright holder who had won an infringement claim against a commercially successful musician could see a class action as a money machine. A musician who had part of her song non-permissively copied may never have a hit song herself, but could “hit the lottery” by suing the millions of customers who downloaded a hit song that had infringed her copyright. The logistics might be complicated, but a lawyer with free time and a fast Internet connection could plausibly convince a large number of consumers they were better off paying a few hundred dollars to settle quickly than trying to defend against a complicated law suit.
Liebesman ends the piece by proposing several legislative solutions. I’m inclined to endorse her suggestion of express immunity for consumers who made good faith legal downloads because I think it would be the most palatable to the music companies, and therefore the simplest to adopt. I highly recommend this article for its clear and entertaining presentation of what might seem like turgid copyright law geekery in the voice of a less gifted writer.
