The Journal of Things We Like (Lots)
Select Page

Are Intellectual Property Retaliations Against Violators of WTO Agreements Ineffective?

Sarah R. Wasserman Rajec, The Intellectual Property Hostage in Trade Retaliation, 76 Md. L. Rev. 169 (2016), available at SSRN.

Twenty-some years ago, there was much speculation about how well the World Trade Organization (WTO) dispute resolution process would work, and in particular, whether developed countries would be more likely to comply with their WTO obligations in respect of developing nations because the latter would have the right, subject to approval by the relevant WTO Dispute Settlement Body (DSB), to retaliate against violations of WTO obligations by suspending enforcement of intellectual property rights (IPRs) affecting the violator’s industries.

A central premise of creating the right to retaliate against IPRs was that developed countries’ interests in ensuring respect for its nationals’ IPRs would create a more powerful inducement to treaty compliance than the opportunity to retaliate only against similar types of goods (e.g., bananas or cotton).

So here we are in 2016. After more than two decades of experience with dispute settlements under the WTO agreements, there is a tale to be told about IPR cross-retaliation, and Rajec tells that tale very well. The WTO agreements established a dispute resolution procedure under which nations can formally complain about another nation’s claimed violations to a DSB that will then adjudicate the dispute. If the complaint has merit, the DSB will consider what remedial measures the complainant should be able to take against the violator if it does not respond by coming into compliance. Rajec reports that in a substantial majority of cases, nations decide to comply with their treaty obligations once the DSB has ruled that a violation has occurred, although in about nine percent of cases, violators have remained “unabashed[ly]” noncompliant.

In three cases, the DSB has approved a complainant’s request to retaliate against a violator by suspending IPR enforcement. Yet in none of these cases has the complainant nation followed through by actually going forward with the IPR suspension. Rajec is curious to understand why and what lessons might be learned by understanding what happened.

One case involved Antigua and the United States over the latter’s online gambling ban, which harmed Antigua’s industry. The DSB found that the U.S. was in violation of WTO treaty obligations by imposing this ban. The U.S. refused to change its law to comply with the treaty. Recognizing that it was infeasible for Antigua to retaliate effectively in the same sector as that in which the U.S. violation had taken place, the DSB approved cross-retaliation against U.S. film and music industries through a suspension of Antigua’s obligation to enforce U.S. copyrights.

Despite the DSB approval of this measure, Antigua has not actually suspended copyright enforcement. Rajec offers some possible explanations for the non-suspension, including some concern that Antigua might have about possible U.S. retaliation against the Antiguan tourism industry. She notes that it would also be costly for Antigua to set up a website to allow users to get access to infringing copies of U.S. films and sound recordings. Another consideration is that the DSB did not permit unlimited infringements to occur, but only at a level of $21 million annually, which might be difficult for an infringement-enabling site to calibrate. (Quite recently, however, Antigua announced it is planning to suspend copyright enforcement, so the drama continues.)

A second dispute was between Brazil and the United States over U.S. subsidies to its cotton industry. A DSB found the U.S. in violation of its treaty obligations because of these subsidies. It approved a Brazilian proposal to retaliate against the U.S. in part by suspending enforcement of U.S. pharmaceutical patents. Because Brazil has a domestic pharmaceutical industry and a large market for pharmaceutical products, a suspension of these IPRs posed a credible threat to U.S. industry interests. While the U.S. chose to remain noncompliant with its treaty obligations, it offered a financial settlement that, in effect, provided subsidies to Brazilian cotton producers. Rajec points out that this type of resolution is consistent with the theory that DSB remedy rulings should aim to provide compensation for violations rather than only inducing compliance with treaty obligations, as some commentators have assumed.

A third case involved a dispute between Ecuador and the European Union over the latter’s tariffs on bananas. DSB arbitrators recommended $201 million annual suspension of EU rights in sound recordings, industrial designs, and geographic indicators as retaliation for violating WTO agreements. Because the EU negotiated a settlement for tariff reductions over time, Ecuador did not go forward with retaliating against EU nationals’ IPRs.

The Ecuadorian and the Brazilian cases exemplify IPR cross-retaliation as a useful mechanism for encouraging nations to find a way to settle their differences, even if the settlement does not result in bringing the violator into full compliance with treaty obligations.

Much of Rajec’s article is devoted to a theoretical exposition about the purpose(s) of the WTO remedial scheme. Some commentators endorse compliance-inducement as the proper purpose of the remedies scheme, while others think that the WTO regime works as well as it does because nations can opt out of compliance on some occasions when their idiosyncratic national interests make noncompliance a better option than compliance, as long as the nations are willing to provide some compensation when they violate WTO agreements in a manner that harms other nations’ industries. Rajec’s treatment of these issues is nuanced and well-developed.

As a pragmatist, it struck me that the two purposes Rajec discusses may be more compatible than they might initially seem: The dispute settlement process may aim mainly to encourage compliance with treaty obligations, but it also provides a mechanism for inducing violators to provide some compensation for harms caused to other nations’ industries, albeit obliquely, when violators choose to remain noncompliant.

Rajec’s main thesis is that the ability to engage in IPR cross-retaliation is not as effective in inducing compliance with WTO treaty obligations as some have posited. This is partly due to inherent structural imbalances among nations. Small developing nations (e.g., Antigua) often lack the bargaining power and infrastructure to make the threat of IPR retaliation seem powerful enough to change a large developed nation’s practices and willingness to violate treaty norms.

In addition, IPR retaliation is not as simple to achieve as tariff-based retaliations are. Tariff retaliations are easy because the government must only establish the higher tariff rate and enforce it. However, to retaliate as to IPRs, the complaining nation must motivate other actors (e.g., domestic pharmaceutical manufacturers) to take advantage of an IPR suspension, even though that suspension may not last all that long, so an investment in authorized infringement may be undermined once the authorization to infringe ceases, as the WTO scheme assumes will happen.

Having followed the debate over IPR retaliations in the 1990s and wondered what happened, I was very pleased to have Rajec’s report on its conditional success.

Cite as: Pamela Samuelson, Are Intellectual Property Retaliations Against Violators of WTO Agreements Ineffective?, JOTWELL (March 2, 2017) (reviewing Sarah R. Wasserman Rajec, The Intellectual Property Hostage in Trade Retaliation, 76 Md. L. Rev. 169 (2016), available at SSRN),

Whittling Away at Trademark Law’s Notions of Harm

In recent decades, numerous scholars have challenged trademark law’s various conceptions of harm. Unlike copyright and patent law, trademark law positions itself as a harm-avoidance regime, rather than a mechanism for capturing economic rents. At least under the dominant theoretical model, the law seeks to promote competition by ensuring the accuracy and reliability of source-indicating symbols in markets. In practice, however, the harm narrative often breaks down under scrutiny. Recent articles have taken issue with the assorted harms that trademark law purports to prevent. From dilution by blurring to “irrelevant” confusion, critics have argued that at least some of the injuries targeted by trademark law are illusory.

In What Can Harm the Reputation of a Trademark?, Michael Handler adds to this literature with a critical look at dilution by tarnishment. Tarnishment, defined in the Lanham Act as “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark,” explicitly addresses itself to harm. On its face, it requires not only proof of some association between the famous mark and the diluting one, but a demonstrable risk that the challenged use is likely to harm the famous mark’s reputation. Yet courts have suggested (and some have held) that they will presume such a risk when marks resembling famous ones appear on unsavory products. Tarnishment, in other words, assumes that creating a mental association between a famous mark and some distasteful product can sully the trademark’s reputation, even when consumers realize that there’s no relationship between the two parties. Handler questions that presumption. In particular, he “quer[ies] whether this form of dilution – to the extent it encompasses conduct beyond the boundaries of the traditional, confusion-based, trademark infringement action – is, in fact, a ‘harm’ of which the law should take cognizance.”

After a readable, informative, and insightful journey through history, theory, and doctrine, Handler answers his query with a confident “no.” The harms presumed from tarnishment, he concludes, have no more basis in experience or reason than those of its counterpart, blurring. At the end of the day, he sees tarnishment, like blurring, as an excuse to regulate “the morality of trade behavior.”

Handler makes his case in three steps. First, he demonstrates that the roots of dilution law in the U.S. and Europe were more equivocal than commonly believed, and provided no clear mandate for protection against tarnishment. For U.S. readers, the historical account is especially interesting in explaining the history of Benelux trademark law and the way that it shaped European Community-wide trademark doctrine.

Second, he deconstructs the notion of “reputation” and the law’s assumption that it correlates positively with dilution’s concept of fame. This inquiry has both normative and doctrinal implications. Normatively, it raises questions about whether the law should support producers’ attempts to curate the meaning associated with marks, rather than recognizing marks as complex informational vessels to which producers, consumers, commentators, and others all contribute. Doctrinally, it suggests that, by treating all famous marks as venerable and avoiding inquiry into their actual reputations, courts are missing the ultimate question in tarnishment cases – “whether the defendant’s conduct causes an association likely to damage [that] reputation.”

Finally, Handler turns to the question at the heart of his article: even assuming that the law seeks to protect producers’ curated brand identity, do non-confusing uses on unsavory products in fact “harm” the mark’s reputation? After reviewing case law and literature, Handler finds scant support for the notion that tasteless but non-confusing uses have any impact on famous brands’ identity, and even less for the idea that any such impact could have economic consequences. Especially given the threat that tarnishment claims can pose for parody and other forms of speech, Handler views the specter of harm-avoidance as an inadequate justification for the doctrine.

So why do we have tarnishment law, if not to avoid harm? Like critics of blurring and some forms of confusion, Handler suggests that tarnishment is “ultimately more about enforcing moral standards than regulating economic behavior.” And he saves a critical look at that justification – and its implications – for another day. “For now,” he writes, “it is enough to note that there are real dangers in maintaining a normatively hollow cause of action” for tarnishment, “given that it is not at all clear that, in the absence of confusion,” third-party uses of trademarks can cause any real harm.

Handler’s article is a welcome addition to the growing body of scholarship that questions trademark law’s narrative of harm. Although his punchline may not be surprising for readers familiar with that literature, Handler’s treatment of the topic is careful, thoughtful, and rigorous, and offers an historical and comparative context that I found informative and interesting.

Cite as: Stacey L. Dogan, Whittling Away at Trademark Law’s Notions of Harm, JOTWELL (January 30, 2017) (reviewing Michael Handler, What Can Harm the Reputation of a Trademark? A Critical Re-Evaluation of Dilution by Tarnishment, 106 Trademark Rep. 639 (2016)),

Copyright Law’s Origin Stories

Shyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis, 68 Stan. L. Rev. 791 (2016).

One particularly engaging genre of legal scholarship is the deep historical dive into an appellate opinion that has become a classic in a field. In volumes such as Torts Stories, Contracts Stories, and Intellectual Property Stories, scholars resurrect the history leading to landmark cases: the cast of characters involved in the dispute, the lower court wrangling that led to the more famous appeal, the aftermath of the case, and the lasting impact of the court’s opinion.

While we must constantly remind ourselves that each case we analyze or teach involves real individuals with real disputes that affected real lives, there is a certain fictional quality to these stories precisely because the judicial opinion is the lead character. Judicial opinions can never be more than an abstract, a description of events that then becomes the accepted narrative. Paul Robert Cohen’s expletive-bearing jacket was expression serving an “emotive function,” according to the Court, not an “absurd and immature antic,” as the dissent would have it, and that made all the difference. Opinions have authors, and authors are necessarily engaged in a project of crafting narratives with a result in mind.

Yet knowing more about how an opinion came to be does give us a richer understanding of its context and, perhaps, some guidance on how to interpret the opinion going forward. This is the project that Shyamkrishna Balganesh undertakes in his compelling and entertaining article The Questionable Origins of the Copyright Infringement Analysis.

The article tells the story of the landmark copyright case Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). Ira Arnstein, a frequent plaintiff in copyright infringement cases, representing himself pro se, brought suit against Cole Porter, alleging infringement of several musical compositions. Porter, through deposition, denied having any access to the plaintiff’s works. The district court, relying only on the parties’ depositions, concluded that the plaintiff’s theory of copying was appropriately characterized as “fantastic” and so granted summary judgment for Porter. (P. 803.) On appeal, the U.S. Court of Appeals for the Second Circuit held that because copyright infringement is a question of fact for the jury, the lower court should have given Arnstein the opportunity to present evidence and cross-examine witnesses at trial. Summary judgment based on the judge’s own view of the facts was inappropriate.

Under Arnstein, determining whether a defendant infringed a plaintiff’s protected work requires resolution of two questions: (1) did the defendant copy from the plaintiff rather than independently create the work (since one must copy to infringe), and (2) did the defendant copy a legally relevant amount of what was covered by the plaintiff’s copyright? The first of these inquiries is predominantly a question of fact, although, like all factual questions, it may be legally shown by circumstantial evidence. (For example, a plaintiff can show that the available evidence — the defendant’s access to the work and the degree of similarity between the two works — would reasonably lead to the conclusion that the defendant did not independently create the work.) The second of these inquiries, usually phrased as whether the two works are “substantially similar,” should be viewed as predominantly a question of law, since it asks whether the defendant’s copying is legally significant. For example, it may be the case that the defendant copied from the plaintiff, but if all that was copied were elements of the plaintiff’s work that were drawn from the public domain, no legally cognizable harm under copyright law exists.

Despite the fact that the second question asks whether the copying is legally relevant, Arnstein holds — and subsequent courts have generally agreed — that this question is also one of fact, to be given to the jury, without the benefit of expert opinion. The rationale, ostensibly, is that because the harm caused by the defendant is presumed to be one of economic substitution, whether the two works are similar enough such that one is substantially the equivalent of the other should be determined via a lay audience’s perspective.

Balganesh’s project is to find out why the Arnstein court assigned this essentially legal question to the jury, and to do so, he looks back at how the opinion developed. Balganesh tells the story elegantly and deftly, taking the reader first through the majority and dissenting opinions; then providing descriptions of the philosophies and personalities of each of the judges involved (Jerome Frank, Learned Hand, and Charles Clark); then moving to a narrative, using judicial correspondence and memoranda, of how the judges’ philosophies and personalities led to the opinions in Arnstein; and concluding by considering what this exegesis should tell us about the continuing influence of the case. Along the way, Balganesh demonstrates an admirable diligence in interrogating the historical record. For example, in recounting the nature of a memorandum that Frank distributed to his co-panelists outlining a series of cases supporting his view, Balganesh goes back to each of those authorities and notes that they do not provide the level of support that Frank suggests in his memo. (P. 843.)

The author of the majority opinion, Jerome Frank, was “an outspoken and acerbic critic of the jury system” who believed that it was inappropriate to allow juries to determine the rule of law. (P. 797.) Nevertheless, as a legal realist, Frank also believed that legal results were indeterminate and factfinding inherently subjective. Given the choice between having a district court judge rule on an issue as a matter of law (and possibly shading his or her factual conclusions to do so) and a lay jury deciding questions as a matter of fact, Frank preferred to send such decisions to the jury. Balganesh contends that Arnstein therefore became less about the copyright issues in the case and more about the opportunity the case presented Frank to put his fact skepticism into practice.

Thus, Frank emphasized that to his ears — and those of his secretary, “who improvise[d] music” (P. 832) — Arnstein’s and Porter’s compositions could be found to be similar enough. Charles Clark, in dissent, bolstered his conclusion that no copying had occurred, and that there was no need for a trial, by citing the opinion of his friend, “a Yale University organist,” who had played each of the pieces for him. (Id.) (It was no coincidence that Clark was a drafter of the Federal Rules of Civil Procedure and so had a personal investment in the procedure for summary judgment.)

This dispute proved Frank’s point: the issue needed to be resolved by a jury, without reliance on expert opinion, and so the case was remanded. (As Balganesh notes, the district court’s opinion focused only on copying, not on substantial similarity, but that seems not to have mattered to Frank’s agenda.) Frank did not waver from this view even when the jury, on remand, reached the same result as had the district court, finding in favor of Porter. (P. 841-42.) Thus, Balganesh suggests persuasively, what could have been a narrow opinion focusing only on the decision of the district court as to copying became a more sweeping opinion on the nature of decisionmaking regarding copyright infringement more generally, motivated by Frank’s desire to leave as much of the decisionmaking as possible to the jury.

Subsequent courts have generally accepted Arnstein’s structure without question (although it has been the target of considerable scholarly critique), holding that both the question of copying and the question of substantial similarity are questions of fact, the latter to be decided by the jury without the benefit of expert advice. As some modern cases have demonstrated, however, this is a difficult and highly unpredictable approach. Whether the defendant copied from the plaintiff or created independently is a factual question that juries can more easily decide; whether one work holds the legal status of “infringing” is a question rife with interpretative and analytical complexities more properly considered questions of law. Indeed, as Frank suggested in an earlier work with respect to legal rights and duties generally, one might say that copyright infringement cannot even exist prior to a judicial ruling; infringement, as a legal status, comes into being only when a court declares it thus.

Having revealed that Arnstein was driven more by procedure than by copyright doctrine, Balganesh concludes by suggesting that this new understanding of Arnstein’s origin story can free courts from its influence, giving way to new approaches to infringement cases. He proposes one such approach as an example: that the infringement analysis start with the legal question of “whether there is sufficient similarity between the two works at issue to render the claim cognizable for copyright infringement purposes,” which, he argues, will result in more highly developed copyright jurisprudence than the current jury-focused system. (P. 859.)

But the judge-made nature of much of copyright law means, of course, that many courts have always been free to do this. Arnstein’s holding was derived from, but is no longer dependent on, its ostensible factual history. If it now turns out that Ira Arnstein wasn’t the troubled individual the district court believed him to be, or Cole Porter really did copy Arnstein’s work when he composed “Night and Day,” that matters not to the authority of the Second Circuit’s opinion or the nature of its influence on other courts. The revelation that Frank was motivated not by what was best for copyright law but rather by his legal realist views on factfinding more generally doesn’t itself free courts to challenge Arnstein; rather, it starkly reveals the influence of the appellate narrative as truth.

None of this, of course, is to diminish one bit the significant contributions of Balganesh’s wonderfully engaging article. Rather, it is simply a reminder that appellate opinions are often a narrative means to an analytical end, even when they are not as strategically authored as Balganesh has shown Arnstein v. Porter to be. We should be prepared to deploy our own fact skepticism as we interpret them.

Cite as: Laura A. Heymann, Copyright Law’s Origin Stories, JOTWELL (December 16, 2016) (reviewing Shyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis, 68 Stan. L. Rev. 791 (2016)),

Registration and its Discontents

Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 Harv. L. Rev. (forthcoming), available at SSRN.

Much work has been done on the theoretical foundations of trademark law generally, but very little on trademark registration specifically (at least in the U.S.). The reason is that, for most of the last fifty years, courts have been telling us that, with a few exceptions, registration really doesn’t matter. Courts evaluate the validity of an unregistered mark under essentially the same standards as registered marks, and they use the same likelihood-of-confusion analysis to determine infringement.

But it turns out to be hard to maintain a rule that registration means nothing when the Lanham Act clearly was intended to create some substantive rights that did not previously exist. It’s also difficult to ignore the elaborate regulatory apparatus the PTO has constructed to evaluate applications to register – one that includes detailed rules about the format in which a mark is claimed and the goods and services are described, and that provides for administrative proceedings to oppose or cancel registrations. Why would any of that exist, and why would companies spend so much time and money dealing with registration, if it was meaningless?

So, not surprisingly, registration does sometimes matter to courts – indeed, in its recent B&B Hardware decision, the Supreme Court described it as significant. But how is it significant, and when? As Rebecca Tushnet wonderfully demonstrates in her terrific new article Registering Disagreement: Registration in Modern American Trademark Law, there is no consistent answer to that question, because trademark law has no theory of registration.

We should start with a little background here, because registration’s insignificance was not inevitable. It is, rather, the result of changes courts have made to trademark and unfair competition law over the last half century. Once upon a time, registration was clearly understood to be procedural. Only certain signs (“technical trademarks”) were federally registrable, and only federally registrable marks could be enforced in federal court. But registrations did not create trademark rights – those were always understood to arise through use, and registration simply acknowledged those rights and provided a federal enforcement mechanism. Parties that lacked a federal registration might have had a cause of action for unfair competition, but that was a common law claim (not federal) with additional proof requirements.

After Congress passed the Lanham Act, however, courts began assimilating unfair competition law into trademark law by equating registered and unregistered marks. They did so (without any clear statutory authority) because they wanted to create a federal cause of action for unregistered marks – which is to say that they denied registration’s significance in cases in which the question was whether unregistered marks should have some lower status than registered marks. Put simply, courts assimilated unfair competition law into trademark law by leveling up – by giving to unregistered marks essentially the same status as registered marks. And they did so without giving much consideration to the policy reasons behind the particular requirements of registration.

The project was enormously successful – so much so that, with the exception of priority and the geographic scope of rights, registration is largely irrelevant to civil litigation. Parties spend significant resources crafting trademark applications and resolving disputes over registrability even though the resulting register has almost nothing to say about the scope of any party’s rights. Even incontestability, probably the most controversial concept when the Lanham Act was drafted, doesn’t often make much difference, simply shifting the focus of a case from validity (where incontestability can be dispositive) to infringement (where it makes virtually no difference).

And yet, the question of the significance of registration and the registration process keeps popping up, precisely because it’s hard to believe registration is actually so inconsequential. The problem, as Tushnet persuasively argues, is that registration seems increasingly a conceptual misfit; trademark law’s modern emphasis on confusion over everything else makes it that much harder to attribute distinctive importance to registration. Because courts tend to think of trademark law nearly exclusively as a tool for eliminating consumer confusion, they conceive of its ends in empirical terms, focusing on the contexts in which consumers actually encounter marks. But registration isn’t about consumer understanding. The registration system is motivated primarily by nation-building and market regulation goals that fit uneasily with an empirical, consumer-confusion orientation. As Tushnet argues, “even if trademark is a matter of consumer protection, trademark registration is a matter of industrial policy, contributing to a national unified market by providing incentives for registration, including nationwide priority over other users.” (P. 10.)  

The consequence has been deep disagreement over the role of registration, and a remarkable lack of clarity. For example, decades of post-Lanham Act case law hadn’t worked out the extent to which decisions of the PTO and its administrative tribunal the Trademark Trial and Appeal Board (TTAB) have preclusive effect in civil litigation. While the standards used in both settings often look (at least superficially) the same, those standards are applied in very different ways. Thus, when the Supreme Court took up the question in B&B Hardware, it insisted that registration is indeed significant and that TTAB decisions can have preclusive effect. But it then limited the practical significance of that conclusion, acknowledging that preclusion will not apply in “some or even many cases” because the TTAB so often approaches questions differently than do courts. That result seems plausible enough, given the differences between the approaches in the TTAB and courts. But left entirely unanswered is why the approaches differ so much. If courts recognized the primary business regulation function of registration, they might well put more emphasis on registration status and the content of registrations despite registration’s disconnect from consumer understanding.

Perhaps even more remarkably, it remains unclear some seventy years after passage of the Lanham Act what effect refusal or cancellation of a registration has on the protectability of a mark. On the one hand, unfair competition doctrine once existed precisely to offer some protection for unregistrable subject matter. Thus, historical practice suggests that bars on registration have nothing to say about the availability of claims based on unregistered rights. On the other hand, when courts assimilated unfair competition into trademark law, they eviscerated the important differences between trademark infringement and unfair competition more generally, so it’s hard to see anymore why unregistered marks should get (mostly) the same treatment as registered marks but not be subject to the same limitations. On that reasoning, in its recent In re Tam decision, the Federal Circuit suggested that marks that are unregistrable under section 2(a) likely are unprotectable.

This state of affairs seems intractable, and Tushnet candidly acknowledges that there are good arguments both for making registration more substantive, such that the system does more to “manage relationships between businesses regardless of consumer confusion or nonconfusion,” and for making registration purely procedural. (P. 5.) Indeed, she admits that “none of the tensions in current law can be entirely resolved to favor only one side.” (Id.)

But that doesn’t stop Tushnet from offering a number of ideas about how a system that took registration more seriously might look. Her discussion here is characteristically thoughtful and nuanced. One of the things I appreciate most about the paper is the way Tushnet demonstrates that taking registration more seriously would not necessarily mean broader protection; indeed, it might provide some new tools for limiting the scope of trademark rights – a conclusion many readers might find counterintuitive.

In the end, consideration of any of the possible solutions requires frank discussion of political choices that mostly have been excluded from conversation about trademark law. How do we rank priorities in nation-building (or global economy-building) against concerns about consumer interests? Surely the answer isn’t that we pretend that those interests are the same. But resolution of that issue is critical to thinking about the importance of registration in at least some contexts. In my view, this paper is the beginning of a sustained inquiry into the role of registration in various settings, and the paper is going to be cited heavily. Not because it has all the answers, but because it asks all of the right questions. It’s an excellent piece of work.

Cite as: Mark McKenna, Registration and its Discontents, JOTWELL (November 16, 2016) (reviewing Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 Harv. L. Rev. (forthcoming), available at SSRN),

Patenting the Social: A Non-Economic Take on Alice

Laura R. Ford, Patenting the Social: Alice, Abstraction, & Functionalism in Software Patent Claims, 14 Cardozo Pub. L. Pol’y & Ethics J. 259 (2016).

“Where does technology stop and humanity begin?” This is the weighty opening question in Laura Ford’s recent article Patenting the Social. Ford, a sociologist and lawyer, offers a novel contribution to the debates raging in the courts and law reviews after the Supreme Court opinion in Alice v. CLS Bank about what constitutes a patent-ineligible abstract idea and, relatedly, why abstract ideas should be patent-ineligible. She proposes that claims describing novel computer-mediated social relationships and interactions (“the social”) are core examples of claims to abstract ideas, but that claims to novel means of achieving those social ends are not. Ford then draws on sociological concerns and moral theory to defend her interpretation of Alice. She argues that patents that privatize social progress, as opposed to the technological progress, are bad policy based on concerns about human flourishing, politics, and culture—i.e., reasons other than the conventional, economically oriented reasons for limits on patentability that focus on innovation incentives.

I found Patenting the Social to be both interesting and timely for two reasons. First, I believe that defining the abstract with reference to the social offers a plausible story for explaining, at least in part, why the Supreme Court reached the conclusion that it did in its Alice opinion and, perhaps more importantly, its earlier opinion in Bilski v. Kappos, on which Alice relies. The Court’s choice not to even attempt to define an abstract idea in these opinions is by now infamous. Whether you personally agree with it as a policy matter or not, this hypothesis that the Court’s discomfort with the privatization of new patterns of contractual commitments—which are nothing but legally enforceable patterns of social obligations—is grounded in part in non-economic reasoning should not be lightly dismissed. Patenting the Social gives voice to this hypothesis more thoroughly than other academics have to date managed to do. Second, I find the notion that privatization of the social is problematic to be an interesting counterpoint to the message of the Supreme Court’s other opinions on patent-ineligibility in Association for Molecular Pathology v. Myriad Genetics and Mayo v. Prometheus. In these biomedical cases, the Court focused on the privatization of the natural as the crux of the problem that limits on patent-eligibility can solve. Under Ford’s interpretation, Bilski and Alice provide an intriguing bookend to Myriad and Mayo: both the social and the natural are off limits.

To illustrate what patents on computer-mediated social relationships and interactions might look like, Patenting the Social offers a deep dive into a number of Facebook patents. It is unclear whether these patents are representative of the bulk of patents that the courts have invalidated in the wake of Alice, but the laser-like focus of Patenting the Social on such patents only goes to show that the concept of an abstract idea does not have a single definition. Rather, it is a poly-nodal or multiply ambiguous concept. It means different things when used in reference to different patents.

Patenting the Social offers a line-drawing proposal under which social ends are patent-ineligible but “efficient causal means of achieving social ends” are patent-eligible. This proposal clearly echoes the Court’s line articulated in Alice—namely that improvements in the functioning of a computer itself are patent-eligible—but its intellectual origins are, curiously, entirely different. The proposal draws from sociology’s response to the now-discredited functionalist explanation of social phenomena, rather than the economics of patent scope, to suggest this focus on causal means rather than social ends as the locus of patent-eligible invention.

A number of additional, well-articulated arguments fill out the pages of Patenting the Social. But, rather than plumb any specific, individual argument in greater depth, I want to conclude by reiterating my principal point. You may or may not believe that sociological concerns about patenting the social should limit the reach of patent-eligibility. However, given the plausibility of the hypothesis that such concerns did in fact motivate, at least in part, the Supreme Court’s Bilski opinion that set the course for the doctrine of patent-eligibility on which we find ourselves today, I believe that Patenting the Social is a worthwhile read for anyone thinking about what courses can and should be charted for tomorrow.

Cite as: Kevin E. Collins, Patenting the Social: A Non-Economic Take on Alice, JOTWELL (October 18, 2016) (reviewing Laura R. Ford, Patenting the Social: Alice, Abstraction, & Functionalism in Software Patent Claims, 14 Cardozo Pub. L. Pol’y & Ethics J. 259 (2016)),

Speaking from the Grave. Should Copyright Listen?

Eva E. Subotnik, Artistic Control After Death, 92 Wash. L. Rev. (forthcoming 2017), available at SSRN.

Should authors be able to control the use of their work after they die? It’s a question that touches deep personal and public concerns. It resonates with longstanding debates in literary studies over the “death of the author” and “authorial intent,” and is an issue that Professor Eva Subotnik tackles in her latest article, Artistic Control After Death (forthcoming in the Washington Law Review).

Currently, U.S. copyright expires 70 years after the author’s death so that control of an author’s copyrights extends far into the future. Long after an author creates a work, often decades after publication and the work’s integration into artistic or literary culture, under the law, heirs and literary estates have the power to exercise control over the work’s continued use and dissemination.

This enduring control may be troublesome for reasons related to the special contours of intellectual property shaped by both private rights of exclusion and public rights of access to culture and knowledge. The longer that exclusive control over works is exercised into the future, the slower the public domain is enriched to promote the constitutional prerogative of “progress of science and the useful arts” through copyright.

This is not just a problem of copyright duration, which has continued to lengthen since its U.S. origins of fourteen years in 1790. It is also a problem for an author’s purposes and hopes for a work, which can shift over a lifetime with changes to cultural production, aesthetics, and business practices, to say nothing of personal predilections and personality.

Many authors (e.g., J.D. Salinger) are deeply attached to their works and exercise particularized and sometimes parent-like control during their lifetimes. Others are more liberal with copying and transformation by fans and other noncommercial or noncompeting uses (e.g., J.K. Rowling and Neil Gaiman).

Upon death, how much should authorial intent and past practices guide the living who now own the copyrighted works? How should authorial intent as opposed to the concerns of the living (be they monetary, reputational, charitable, or cultural concerns) shape the stewardship of inherited copyrighted works? These questions become particularly acute in the context of authors who have left specific instructions and for works that remain unpublished or unfinished.

Professor Subotnik’s article addresses just this debate in the contemporary context of extended copyright terms and copyright heirs’ legal rights and obligations. This article couldn’t be more timely given concerns raised over the estates of Harper Lee and Prince. Both Harper Lee and Prince intentionally left work unpublished, work that contemporary audiences would love to read and hear. Harper Lee’s agent and lawyer in control of Lee’s finances for some time published the work under suspicious circumstances. The book received negative reviews and arguably affected Harper Lee’s literary reputation, although it certainly enriched her heirs. Many recordings in Prince’s musical estate remain unreleased as his heirs debate what to do. How should copyright law resolve these tensions?

Professor Subotnik’s contribution introduces to the intellectual property literature the rich debate in trusts and estates law concerning “dead hand control” of assets through trust instruments and fiduciary relations. In trusts and estates law, this debate has long raged: how much can grantors of property control its use after their deaths, especially in light of changing circumstances, both societal and personal?

For someone (like me) who knows next to nothing about trusts and estates law, but regularly follows developments in copyright law, the article is informative and provocative. The article does not propose a balancing test, but rather a rule. Professor Subotnik argues that enforceability of post-mortem instructions over copyrighted work should be guided by federal copyright policy, which favors the living, even if that means overriding the author’s wishes. She makes an especially strong case for this rule “where [the] authors seek to bar entire categories of uses of their works and where … enforcement [of post-mortem instructions] is … not needed to protect against the premature destruction of the work by the author.” This rule would arguably support the publication of Harper Lee’s prequel to To Kill a Mockingbird and of Prince’s unreleased recordings, despite the sequestration of both during the authors’ lifetimes.

Subotnik’s article proceeds in three parts. It begins by recounting the diverse ways authors control their work through their heirs, by means of formal mechanisms (residuary gifts, wills, and trusts) and informal mechanisms (leading by example and discussions with the living). This part is full of engaging accounts from various authors’ estates as Professor Subotnik digs into the literary history and details of famous authors.

Animating this first part is a photograph of the will of Beastie Boys’ Adam Yauch, displaying his hand-written directive that “in no event may my image or name or any music or any artistic property created by me be used for advertising purposes.” A year after Yauch’s death, the remaining Beastie Boys invoked this directive to enjoin the toymaker Goldiblox from using the 1987 Beastie Boys song “Girls” in an advertisement that celebrated young girls as aspiring engineers. The toymaker altered the lyrics of the song to describe the company’s mission (“Girls to build a spaceship / Girls to code the new app / Girls to grow up knowing / That they can engineer that”).

Surely, this kind of social commentary and transformation of “Girls” is fair use under copyright law (the 1994 Supreme Court case of Campbell v. Acuff Rose strongly suggests as much). And yet because of Yauch’s will, and the devoted heirs of Yauch’s musical copyrights, the lawsuit persisted until Goldiblox withdrew the commercial. Is this what someone like Yauch intended? The legal and ethical ambiguity surrounding such instructions, in light of copyright’s purposes of promoting cultural conversations consistent with First Amendment principles, leads us inevitably to a discussion of what to do.

In the second part of the paper, Subotnik discusses the debates within trusts and estates law about the proper extent of dead-hand control. Arguments for control include natural law, incentivizing wealth accumulation, promoting industry and productivity, self-expression and personal satisfaction, and reinforcing essential relationships. These mirror arguments from an author-centered view of copyright, contending that moral rights, personal control, and private incentives are critical to the making and dissemination of creative work.

Arguments in favor of diminishing post-mortem control include changed circumstances, intergenerational equity, imperfect information, negative externalities, and the welfare of the beneficiaries. These arguments reflect concerns in copyright doctrine (and in intellectual property doctrine generally) that dead-hand control not fetter IP’s mission of enriching science and art for the benefit of society and the public domain. Authors’ rights are an intermediary step and can be trumped by the ultimate goal of society-wide human flourishing.

Subotnik concludes by embracing the “benefit the beneficiaries” rule, highlighting the policy of benefiting the living in both trust and intellectual property law. Subotnik persuasively argues that living decision-makers should be given more deference to manage artistic assets. If our concern is whether the work will be read, viewed, or put in contexts in which it can be maximally appreciated – all copyright interests to be sure – “[t]here is no reason to think that a dead author is in a better position to track a work’s success in the marketplace and ensure its place in history than are the living.”

And when the author’s wishes were to restrain use of the work – quashing its enjoyment by audiences as well as its financial benefits for heirs – post-mortem instructions are antithetical to copyright interests of dissemination and cultural progress. “[Indeed] an author’s stringent controls on access and use of copyrighted materials can sound a death knell for a work” if not also an author’s continued literary existence. And so Professor Subotnik puts a thumb on the scale for heirs to override authorial control.

Subotnik provides one caveat, however: when there is a risk that artists will destroy works before their deaths out of fear their heirs won’t shepherd the work as desired, following post-mortem instructions makes better sense. Because society has an interest in preserving work – unpublished or published, personal documents of all sorts (letters and journals) – dead-hand guided preservation, which could last up to 70 years after death, is better than the alternative. Given that the public interest never dies, but authors do, I applaud this conclusion. Eventually the work will enter the public domain, and then dead-hand control ends.

Of course, control by heirs (as opposed to dead authors) is not necessarily in the public interest. But by favoring freer use by the living, Professor Subotnik refers to living successors as well as living audiences and fair users. Indeed, this article ably engages various interdisciplinary dimensions (of literary studies, trusts and estates, and intellectual property) relying on important prior work by Deven Desai, Ray Madoff, and Robert Spoo, whose scholarship grounds these debates in the public interest and social welfare. Subotnik’s contribution enriches these debates and should guide future policy in this area.

Cite as: Jessica Silbey, Speaking from the Grave. Should Copyright Listen?, JOTWELL (September 19, 2016) (reviewing Eva E. Subotnik, Artistic Control After Death, 92 Wash. L. Rev. (forthcoming 2017), available at SSRN),

The Plural Tort Structure of Copyright Law

Patrick Goold, Unbundling the 'Tort' of Copyright Infringement, 102 Va. L. Rev. (forthcoming 2016), available at SSRN.

What kind of legal wrong is copyright infringement? Scholars tend to unreflectively regard copyright infringement as a tort. In his elegant and insightful recent article, Unbundling the ‘Tort’ of Copyright Infringement, Patrick Goold complicates this received wisdom by applying rigorous conceptual analysis to a body of law—copyright—that is rarely analyzed in those terms. In so doing, Goold invites us to see copyright law in a new and more nuanced light, and also seeks to show that courts’ purportedly scattered approach to infringement may not be so incoherent after all.

The central premise of Goold’s article is simple: the orthodox view of copyright infringement as a single tort mischaracterizes how courts actually resolve infringement cases. Calling on Prosser’s classic disaggregation of privacy into a “gallery of torts,” Goold identifies five different “copy-torts”: consumer copying, competitor copying, expressive privacy invasion, artistic reputation injury, and breach of creative control. Each of these different copy-torts, Goold argues, reflects the distinct interests that courts seek to vindicate using copyright law.

Goold’s copy-torts insight is descriptively fascinating on its own terms, but also delivers numerous important insights. First, this approach lays bare the underappreciated complexity of the tort of copyright infringement itself, belying the standard view that all copyright infringement amounts to the same cause of action protecting the same kinds of interest. Second, and more ambitiously, Goold presents his copy-torts framework as a positive theory of copyright. That is, he argues that this lens can explain why and how courts appear to resolve infringement cases in radically different ways. Goold’s copy-tort framework shows that this variation is not inconsistent, but in fact a logical response to the need to respond differently to the distinct copy-torts at issue in different kinds of infringement cases.

This article is a sparkling example of the value that conceptual analysis can deliver in copyright (and other fields of legal study). Goold’s thesis is simple and elegant, and bears enormous promise as an analytical tool, one that can help us understand the idea of infringement better by providing a structural tool for elucidating the very different interests that exclusive rights in works of authorship may seek to protect.

Goold’s disaggregation of copyright torts also invites consideration of this approach in other areas. For example, the dominant physical property tort is trespass, which addresses all unauthorized entry to land regardless of the owner’s motivation for bringing suit. Trespass to land protects a multiplicity of interests—economic concerns, dignitary interests, privacy—in much the same way that the unitary tort of copyright infringement currently does. Goold’s insight about copyright suggests that property scholarship would do well to think about the value of recalibrating property’s torts to better reflect the different interests they protect.

The claim that the torts of copyright infringement capture a multiplicity of interests that may justify different infringement standards is an important one. Goold’s aim in this article is more descriptive than normative: He argues not that we should reframe infringement doctrine in terms of copy-torts, but that copy-torts framework is already implicitly at work in doctrine, and that the plural tort structure of copyright infringement explains extant divergences in judicial approaches to copyright law (and, moreover, that these approaches reflect “the correct legal standards in infringement actions”).

There is a core of truth to this claim. In many instances, courts’ different approaches to infringement seem to track on to different interests of owners. This alone stands as an important and novel contribution to copyright scholarship. But whether the copy-tort framework also explains how judges resolve infringement cases is much harder to prove. In making this argument, Goold’s case may have been stronger if he had more often wrestled with cases that complicate his theory, in addition to listing the many cases that support his claim. Consider, for example, the distinction between consumer copying (which he claims typically does not entail proof of reduced consumer demand for the plaintiff’s work) and competitor copying (which he argues typically does entail such proof).

This claim lies in tension with numerous cases in which courts have held defendants liable for infringement asserted by competitors even when there was no evidence that the infringement inflicted any negative effects on third parties. To take just one example, in Walt Disney Co. v. Filmation Associates, a court held that the defendants’ unauthorized use of film storyboards created by the plaintiff, a competitor film production company, amounted to copyright infringement even though its use did not (and indeed could not) divert any consumer demand away from the plaintiff’s movies. This and other cases do not pose a fatal challenge to Goold’s thesis, of course. All descriptive theories have to meet the challenge of explaining cases that do not seem to fit, and it is a measure of the breadth of Goold’s claim that it invites these kinds of hard questions.

Copy-torts provide an important conceptual tool for making sense of infringement analysis going forward even if the theory still requires refinement. They provide a coherent and useful account of the different interests at play in infringement cases, even if the distinctions between the copy-torts are not entirely hermetic. Goold’s insightful and excellently written article represents a major contribution to our understanding of copyright law and litigation that scholars and lawyers alike will find useful in disentangling some of copyright’s most difficult doctrinal challenges.

Cite as: David Fagundes, The Plural Tort Structure of Copyright Law, JOTWELL (August 4, 2016) (reviewing Patrick Goold, Unbundling the 'Tort' of Copyright Infringement, 102 Va. L. Rev. (forthcoming 2016), available at SSRN),

Patent Law’s Gordian Knot

Jonathan S. Masur, The Use and Misuse of Patent Licenses, 110 Nw. U. L. Rev. 115 (2015).

When a patent holder does not manufacture or sell a product, it cannot seek “lost profits” in the event the patent is infringed. Rather, courts must determine a “reasonable royalty”—generally, what an infringer hypothetically would have paid if the patent holder had licensed the patent, assuming it was valid and infringed, in the private market before the infringer began its unlawful acts. Such market rates are usually determined by examining other licenses for the patent-in-suit, or for patents sufficiently similar to the patent-in-suit.

In the brilliant article The Use and Misuse of Patent Licenses, Jonathan S. Masur unpacks what is often expressed but not suitably explained: that reasonable royalty determinations in the law of patent damages are substantially circular, leading to paradoxes and other conundrums that cannot easily be solved. The basic intuition is straightforward. Courts attempt to value patents in reasonable royalty determinations by looking to the market. Yet, market actors must bargain in the shadow of the law. Hence, a circularity.

For ordinary private law scholars, the response generally would be, “Who cares?” Assuming violations of the law are not a regular occurrence, then the market can still set reliable rates sufficiently divorced from judicial pronouncements. Slightly modifying an example in Masur’s article, take for instance the tort of conversion. This cause of action allows private owners of goods that have been stolen, or simply borrowed and damaged substantially, to recover the fair market value of the good from the wrongdoer.

In conversion, determining the fair market value of an ordinary good—say a bicycle that has been stolen—isn’t too difficult. Just assess what the good is selling for on average, and damages are fairly well-determined. However, imagine that the government and courts decided today that conversion was the only legal action owners could take for damages if their goods were stolen and the only punishment inflicted on the wrongdoer (i.e., criminal theft is abolished). In this instance, there would be a huge incentive to steal the bicycle in the street, because the worst that could happen for the wrongdoer is paying the fair market value of the bicycle (setting aside litigation costs for a moment), and the best would be getting the bicycle for essentially nothing. As Masur indicates, such an instance is akin to a “heads I win, tails I tie” outcome, not providing much of a deterrent.

The result is that the price of bicycles would fall—because they could be easily stolen or, alternatively, to compensate for increased amounts spent on locks and other theft-prevention devices (which I assume, for sake of argument, are separate products from the bicycle). Of course, the price could fall only so far because the marginal cost to produce a bicycle sets a minimum price floor. But, again, for the sake of argument, imagine that these costs are negligible. As prices fall, courts set the damages from conversion lower and lower, thereby increasing the incentive to steal bicycles even more. The feedback loop between the market and courts would eventually cause the price of bicycles to decline rapidly, potentially killing the market itself.

What a bizarre hypothetical, one might quip. Well, bizarre perhaps for bicycles, but not for patented inventions. Why? As Masur insightfully recognizes, for unpracticed patents, a civil suit for reasonable royalties is typically the only way to recover for infringement. In this regard, since the Supreme Court’s eBay decision, for most patentees seeking reasonable royalties, injunctive relief is unavailable, implying that the only remedy is money damages—for past and future infringement. Next, because the marginal costs of producing an additional good covered by a patent are often small—think pharmaceutical drugs—there is often no hard floor to stop prices from falling, at least ex post. Finally, unlike bicycles, patents are relatively unique assets, making them very difficult to value, and the key information to determine reasonable royalties lies with the parties, who tend to massively exaggerate or undervalue patent value, as the case may be, via their experts in court.

Thus, Masur properly concludes that the usual way out of the circularity dilemma of contract and tort remedies is not typically available for reasonable royalties. Masur masterfully spells out this argument in extensive detail, all the while digging quite a deep conceptual hole for the ostensible foundation of a sizeable share of patent law remedies as practiced. Like conversion absent criminal or other sanctions, as courts look to the marketplace and as infringers take their chances, reasonable royalties will generally spiral downward to the potential demise of patents altogether.

Further complicating this landscape, Masur rightly contends, patentees—realizing as much—will, like someone engaging in a fraudulent insurance scheme, do all they can to inflate the nominal value of licenses so that courts impose damages greater than the “fair market value” of the patent. For example, in addition to providing a naked license to the patent, patentees can offer consulting services, know-how, or other benefits but price them into the apparent “royalty rate.” For patentees that sell products to licensees, they can inflate the royalty rate and discount product prices. As courts look to these increased licensing rates, the market will respond by increasing the rates on ordinary licenses, ballooning licensing awards in the courts.

Perhaps all of these effects negate each other? Unfortunately (for us), Masur is again dead on the mark: “It may be tempting to conclude that these effects will balance one another out, or at least come close enough to doing so that it is safe to ignore them. But this would be error. It would be pure fortuity….” (P. 144.) Of course, these negating effects – as well as the other factors used to determine reasonable royalties – while not fully in balance, do keep the system from completely collapsing. With that said, there is little belief that current royalty determinations are fairly accurate, even on average, across large numbers of cases.

So, what is the upshot? Although Masur recounts that it is usually “in the nature of legal scholarship to write comedies rather than tragedies” (P. 156), reasonable royalties appear to be the recalcitrant exception. Masur suggests in this and later work that courts wholly abandon reliance on comparable licenses. Yet, he and others have yet to propose workable alternatives that suitably further the aims of the patent system. While actual valuation of the benefit of the patented invention relative to the next best alternative would escape these dilemmas, estimating these amounts is notoriously difficult.

So is there no hope? Instead of attempting to cut this Gordian Knot, I have proposed in previous work that we essentially burn it. Rather than restoring the patent holder to some mythical “state of nature of the market,” courts would do better to focus on damages that adequately reward the patentee for its innovative contribution so as to set appropriate ex ante incentives to innovate. Market transactions may be one input into such a determination, but other factors, such as the patentee’s research and development costs, commercialization costs, opportunity costs, and risk of failure would arguably better calibrate with the aim of patent law to promote innovation. More on that in future work. In the meantime, we are left with the maelstrom so ably explicated by Masur. Anyone seeking to understand the precise headwinds, tailwinds, and sidewinds of this storm is well-advised to read Masur’s meticulous depiction.

Cite as: Ted Sichelman, Patent Law’s Gordian Knot, JOTWELL (July 7, 2016) (reviewing Jonathan S. Masur, The Use and Misuse of Patent Licenses, 110 Nw. U. L. Rev. 115 (2015)),

Copyright’s Interpretive Turn

Zahr Said, Reforming Copyright Interpretation, 28 Harv. J. of L. & Tech. 469 (2015).

Zahr Said’s Reforming Copyright Interpretation puts its finger on an important, yet little studied, aspect of copyright law: judicial interpretation. It pushes the ball quite a bit by providing a descriptive taxonomy of courts’ interpretive approaches in copyright law, advancing and defending an interpretive approach that it considers best overall, and applying and exemplifying its framework and arguments with a good number of cases while situating it all within a larger body of law and literature scholarship. For me, that’s tons of progress in one article, and the reason why I like it lots.

In resolving copyright disputes, judges must make interpretive decisions. Decisions regarding interpretation are often outcome-relevant – for example, when they lead a judge to decide whether an issue is a matter of law or fact or whether expert testimony may be admitted or not. These decisions can also be outcome-determinative – for example, when a judge makes an interpretive decision that resolves a case on summary judgment or finds an allegedly infringing use to be fair. The interpretive judgment that these decisions involve often flies under readers’ radars. Said draws our attention to judges’ interpretive choices and to the systemic effect that they have, or could have if they were to be conducted appropriately, on copyright law.

Descriptively, Said organizes judges’ interpretive choices along two axes. First, judges decide what to focus on in their interpretation. In doing so, they choose a point on a Text/Context spectrum. By analogy to patent law, this could be thought of as the proper mix of intrinsic and extrinsic evidence in claim construction. “Text” here stands for any interpretive decision drawn out of, or relying on, the copyrighted work itself—be it textual, pictorial, musical, etc. “Context” stands for interpretive decisions relying on evidence outside the work such as the author’s intent, expert opinion, or readers’ perception or response.

For example, a court may need to decide whether a work is substantially similar to another. It may make this determination by comparing the two texts. Or, it can rely on the author’s (or alleged infringer’s) intent, the lay reader’s view, community perceptions, expert opinion, or even the court’s own subjective impression of the works. Each choice vests the interpretive authority over the text in a different source. This decision can be outcome-determinative: a judge reviewing a defendant’s motion for summary judgment may grant it based on reviewing the text alone and conclude that no similarities exist. But if the judge’s interpretive approach gives weight to the author’s intentions or to audience perceptions, then she may deny the motion.

Second, judges choose an interpretive method along an Analysis/Intuition axis. The interpretive method helps the judge reach her legal conclusion from her chosen source of authority over the work. “Analysis” stands for careful explanation of the judge’s reasoning, applying doctrine to facts, a practice that may constrain a court’s future analysis or subject it to appellate review. An example of analysis is Mannion v. Coors Brewing Co. (SDNY 2005), where the court identified three potential loci of originality in photographs generally, and then moved to determine whether any of the three were present in the photograph before it. Alternatively, courts can assert conclusions about the works at issue that appear to be based on nothing more than intuition. An example of intuition is Roth Greeting Cards v. United Card Co. (9th Cir. 1970), where the court found infringement by noting that the defendant’s greeting card copied the plaintiff’s “total concept and feel.”

Underlying Said’s perspective is the notion that interpretation is inevitable. Courts engage in it whether they acknowledge it or not. Said wants judges to be aware of the interpretive phase of their decision-making process, and to choose and defend their points of choice along the two axes deliberately. Said suggests that it would be better if doctrine provided judges with an interpretive roadmap – perhaps like patent doctrine does – rather than assuming that judges already own the enterprise of formulating interpretive methodology.  An agreed-upon methodology would enhance the enterprise’s predictability and fairness, and subject it to more effective appellate review.

Said laments judges’ tendency to view artistic, expressive, “nontechnical” copyrighted works as “self-interpreting” or “facially clear” and thus semiotically accessible and in no need of interpretation. This is different from the case of more technical works, such as software, where courts recognize the need for interpretation and for following an interpretive framework. Said resists this technical-artistic distinction for interpretation. Every text is complex, and meaning is not clear on the face of the work. Accessing works requires an act of interpretation.

Normatively, Said provides two prescriptions for a desirable approach to copyright interpretation. First, she suggests that judges lean toward the text side on the Text/Context continuum. Text is an easy-to-locate, objective source that both parties have access to. Focusing on text tends to minimize the amount of evidence presented in trial, and thus minimizes litigation costs and trial uncertainty. Second, Said prefers that judges use analysis over intuition because of current doctrinal confusion with the “total concept and feel” test, because different judges have different intuitions, and because intuition allows little ground for appellate review. Analysis, on the other hand, tends to create precedents, interpretive roadmaps, and case law consistency.

Said acknowledges that her prescription-favoring, text-based formalism may resolve most infringement cases, but that it may not suffice for cases turning on issues such as contested authorship or transfers of copyrights. Here, courts’ decision-making will often have to go outside the four corners of the work, such as by considering the parties’ intentions and community norms. Said acknowledges fair use as another context in which text-based formalism may prove inadequate, and where courts will have to look at contextual considerations, such as social meaning in finding a work transformative.

Said’s work is rich and intriguing. Paralleling its insight and direction, it also opens up new questions and possible extensions, and here I would like to mention two. First is a possible empirical extension. As for the descriptive portion of the article, it would be interesting to know what more could be said to portray a more accurate descriptive model of courts’ interpretive choices. Take the Text/Context axis, for example: what ideal points do courts tend to choose in deciding cases? If I had to guess, a uniform distribution would seem unlikely: while I can see courts choosing points ranging from the text end of the spectrum up to about the midpoint or even beyond, I would be surprised if many cases gave exclusive or predominant weight to context, and little or no weight to the text. The article’s descriptive insight could be augmented here with an empirical component. Further, one may wonder about whether courts’ choices of ideal points along the two axes in particular cases are independent of each other. Again, if I had to guess (and as the article recognizes in passing), I would think that there is some correlation. It seems that choosing a point involving a high degree of intuition and little analysis on that spectrum would correlate with a preference of text over context. Again, mapping these correlations would enhance the article’s descriptive power.

A second possible extension may be tying Said’s work on copyright interpretation to other bodies of IP. The framework might be extendable to patent and trademark laws, for example, perhaps with some adjustment. In patent law, the Text/Context axis seems readily applicable, as it can be used to model courts’ and commentators’ preferences as between intrinsic and extrinsic evidence in claim construction, for example. What about the Intuition/Analysis axis? How many patent law summary judgments could be described as founded on little more than intuition as to the meaning of patent claims? Can patent courts be characterized as distinguishing between “simple” and “complex” technologies, so that patent cases reflect (an implicit) judgment that the former require little interpretation of claims while leaving more room for interpretation in the latter category (paralleling copyright courts’ distinguishing between technical and nontechnical works)? Trademark infringement’s test calls for a mix of textual and contextual considerations, such that its choice and direction could be mapped using that axis as well. Perhaps the framework could be used across all IP fields, even if the normatively desirable “ideal point” may differ among them, and perhaps it is even of broader application in interpretation generally. These are for sure laborious and non-trivial questions that go well beyond the scope of Said’s article, which already does a lot. They are, however, a testament to the article’s utility and insight.

Cite as: Dotan Oliar, Copyright’s Interpretive Turn, JOTWELL (June 10, 2016) (reviewing Zahr Said, Reforming Copyright Interpretation, 28 Harv. J. of L. & Tech. 469 (2015)),

Is it Time to Overrule the Trademark Classification Scheme?

Jake Linford, Are Trademarks Ever Fanciful?, 105 Geo. L.J. (forthcoming), available at SSRN.

Trademark law protects distinctive marks: ones that identify the source of goods or services and distinguish them from others in the marketplace. But how should courts determine whether consumers view a mark as distinctive? In an attempt to provide some analytical rigor to this essential question, courts have developed a complicated two-prong test: they look to both “inherent distinctiveness” (i.e., linguistic uniqueness) and “acquired distinctiveness” (i.e., whether consumers have come to see the mark as distinctive of source). Inherent distinctiveness for word marks is based on the so-called Abercrombie spectrum (named after the 1976 2d Cir. case that most famously articulated it), which classifies marks from most to least distinctive as fanciful (KODAK cameras), arbitrary (APPLE computers), suggestive (COPPERTONE suntan lotion), descriptive (AMERICAN airlines), or generic (“apple” for apples). Marks like AMERICAN can become strong, protectable marks only by developing “acquired distinctiveness”; marks like COPPERTONE and APPLE are presumed to be protectable at birth; and coined marks like KODAK are the strongest of all.

As Barton Beebe notes in his casebook, Abercrombie‘s “influence on U.S. and even foreign trademark law cannot be overstated.” But Abercrombie‘s foundation has been slowly crumbling. For example, in a 2009 study, Thomas Lee and colleagues found that consumers are far more influenced by how and where a mark is placed on a box than by where the mark falls on the Abercrombie spectrum. Rebecca Tushnet has explained that Abercrombie “lacks empirical foundation” and is out of step with basic marketing knowledge, such as that an ostensibly fanciful mark like VIAGRA is already imbued with “suggestions of virility, viability, and Niagara Falls (a classic sexual image).” And now, in an impressive trifecta of recent articles, Jake Linford has further dismantled the key theoretical assumptions underlying the Abercrombie classification scheme for word marks.

Linford has tackled Abercrombie from all sides: First, in A Linguistic Justification for ‘Generic’ Trademarks, Linford argued that categorically denying protection to “generic” marks ignores processes of language change through which once-generic terms can acquire source significance. He then moved to the middle of the spectrum with The False Dichotomy Between Suggestive and Descriptive Trademarks, which drew on “semantic shift” research to explain that suggestive and descriptive marks are likely to confuse consumers in similar ways. Linford argued that suggestive marks, like descriptive marks, should be protected only upon a showing of acquired distinctiveness rather than receiving automatic protection. Most recently, in Are Trademarks Ever Fanciful?, he attacks the other end of the spectrum, arguing that courts are wrong to assume that made-up words are empty vessels without source significance that should receive automatic, robust protection.

The key to Linford’s argument on fanciful marks is research on “sound symbolism,” or the strong connection between word sound and word meaning. For example, most people think that a table named MAL is larger than one named MIL, and that a product named TAKETE is spikier than one named MALUMA. Want your product to seem small and fast? Choose the vowel /i/ over /u/, voiceless consonants like /t/ over voiced ones like /d/, fricatives like /s/ over vocal stops like /k/. One recent review of this literature concluded that “the sounds of words can convey meaning apart from their actual definitions, and this meaning can systematically bias perceptions and judgments.”

Marketing research has demonstrated that sound symbolism can be used to choose more effective trademarks. Consumers prefer fictitious brand names that match perceived attributes of a product, such as GODAN over GIDAN for a dark beer, NELLAR over NULLAR for a fast Internet service, KUTUM over KITUM for male deodorant, GOMMEL over GIMMEL for SUVs (but vice versa for convertibles). Marketers use this research when coining fanciful trademarks. By cataloging the sound symbolism literature, Linford makes a strong case that fanciful trademarks are not empty vessels: rather, they “trigger powerful associations in the minds of consumers, which can be used to transmit both source- and product-related information.”

What are the implications of sound symbolism for trademark law? As Linford explains, this research undermines the justifications courts have offered for granting strong protection to fanciful marks, and it can impose unjustified costs on competitors. “Courts often find similarity between a fanciful mark and a competitor’s mark to indicate bad faith adoption by the competitor,” but Linford argues that “sound symbolism provides a reason for the competitor to adopt a mark with some similar characteristics: to communicate product features to consumers.”

At the very least, in light of Linford’s work, courts should discount the use of similar sound symbols by alleged trademark infringers rather than presuming bad faith. Linford also tentatively proposes “[t]wo more radical shifts”: requiring every mark to show acquired distinctiveness in order to receive protection, and holding that some sound symbols are “essentially functional” and thus not protectable. He acknowledges the concern that weaker protection for fanciful marks would lead to more firms choosing descriptive marks, which might ultimately impose even greater costs on competitors, but he argues that “sound symbolism is a phenomenon with real power” such that there may be little competitive difference. And while abandoning Abercrombie would be a big change in practice, there are few trademark scholars who strongly defend this doctrine. Rather than advocating artificial linguistic distinctions, scholars have increasingly argued that trademark law should be more attuned to how consumers actually view different types of marks. (An excellent recent example is Alexandra Roberts’s explanation of why Abercrombie does not reflect consumer perceptions of whether hashtags like #IceBucketChallenge are source-indicating trademarks.)

Perhaps a bigger concern with Linford’s sustained attack on Abercrombie is that it would increase administrative costs. Under current law, choosing an “inherently distinctive” suggestive, arbitrary, or fanciful mark is a shortcut around the costs of developing evidence of acquired distinctiveness. And the categorical bar on generic marks makes it easy for courts to explain why certain marks are undeserving of protection no matter how much consumers have come to view them as source-indicating. But the lower administrative cost of a bright-line rule over a more flexible standard is of little comfort when the error costs associated with the rule outweigh that administrative cost savings, and Linford has provided numerous reasons to suspect high error costs at each point of the Abercrombie spectrum.

Would abandoning Abercrombie and just looking for evidence of acquired distinctiveness actually lead to lower error costs? It would at least focus courts on the right question, but trademark cases rarely involve reliable evidence for assessing how consumers actually view a mark. Consumer surveys are expensive and unreliable, so courts often turn to circumstantial evidence such as advertising spending on the asserted mark, but such evidence is only a very weak proxy for how distinctive the mark actually has become to consumers.

What courts really need is a simpler way to tell whether consumers associate a mark with a certain product. In The Google Shortcut to Trademark Law, I argued that one cost-effective way to do this is to look at online search results, which allow us to collapse the two prongs of the distinctiveness test: if a word mark is distinctive (i.e., if consumers tend to primarily associate it with a certain product), then most of the top search results will use that mark to refer to that product. I don’t know whether this test will gain traction, or whether better consumer surveys will be developed, or whether creative scholars (or judges) will come up with an entirely new way to assess distinctiveness. But Linford does a terrific job explaining why it is a mistake to stick with the status quo.

Cite as: Lisa Larrimore Ouellette, Is it Time to Overrule the Trademark Classification Scheme?, JOTWELL (May 6, 2016) (reviewing Jake Linford, Are Trademarks Ever Fanciful?, 105 Geo. L.J. (forthcoming), available at SSRN),