Today, the Supreme Court ruled (8-1) that merely adding ".com" to a generic term may allow the combination to be protected as a non-generic trademark. In other words, adding ".com" can confer meaning to the consuming public, and thus is not the same as adding "company" or "inc," which does not confer meaning. That was really the linguistic question in the case. Case law has long held that "Booking, Inc." is really "Booking." So, is "Booking.com" also "Booking"? Or is it "Booking.com"?
As a reminder, a mark is generic when it describes what the product is, and not who makes the product. So, Booking.com would refer to a single company (who) that makes bookings, and not to just any booking company (what). A generic term might be lawyer - it refers to what (legal services) and not to who (there are many lawyers). As the Court puts it, Travelocity is a booking company, but is it a booking.com company?
I signed on to an amicus brief supporting Booking.com, and I'll tell a story why (and why I so keenly followed this case). Way back in the beginning of the commercial internet, my firm registered the domain computerlaw.com. This was a big deal - making it work for email required complicated email gateways, etc. I hadn't even gone to law school yet, and I was in charge of setting it up. Connectivity looked a lot different for a small firm in 1994 than it does now.
Showing posts with label courts. Show all posts
Showing posts with label courts. Show all posts
Tuesday, June 30, 2020
Tuesday, April 24, 2018
Naruto, the Article III monkey
The Ninth Circuit released its opinion in the "monkey selfie" case, reasonably ruling that Naruto the monkey doesn't have standing under the Copyright laws. The opinion dodges the hard questions about who can be an author (thus leaving for another day questions about artificial intelligence, for example) by instead focusing on mundane things like the ability to have heirs. As a result, it's not the strongest opinion, but one that's hard to take issue with.
But I'd like to focus on an issue that's received much less attention in the press and among my colleagues. The court ruled that Naruto has Article III standing because there is a case or controversy. I'll admit that I hadn't thought about this angle, having instead gone right to the copyright authorship question (when you're a hammer, everything looks like a nail). But I guess when you're an appellate court, that whole "jurisdiction and standing section" means something even though we often skim that in our non-civ pro/con law/fed courts classes in law school.
I'll first note that the court is doubtful that PETA has standing as "next friend." Footnote 3 is a scathing indictment of its actions in this case, essentially arguing that PETA leveraged the case for its own political ends rather than for any benefit of Naruto. Youch! More on this aspect here. The court also finds that the copyright statute does not allow for next friend standing, a completely non-shocking result given precedent.
Even so, the court looks to whether Naruto has individual standing even without some sort of guardian. Surprisingly enough, this was not an issue of first impression. The Ninth Circuit had already ruled that a group of whales had Article III standing. From this, the court very quickly decides that Naruto has standing: the allegation of ownership in the photograph easily creates a case or controversy.
Once again, the best part is in the footnotes. I'll reproduce part of note 5 here:
I'll end with perhaps my favorite part of the opinion: the award of attorneys' fees. The award itself is not surprising, but the commentary is. It notes that the court does not know how or whether the settlement in the case dealt with the possibility of such an award, but also that Naruto was not part of such a settlement. It's unclear what this means. Can Slater collect from Naruto? How would that happen? Can Slater collect from PETA because Naruto was not part of the settlement? The court, I'm sure, would say to blame any complexity on the whale case.
But I'd like to focus on an issue that's received much less attention in the press and among my colleagues. The court ruled that Naruto has Article III standing because there is a case or controversy. I'll admit that I hadn't thought about this angle, having instead gone right to the copyright authorship question (when you're a hammer, everything looks like a nail). But I guess when you're an appellate court, that whole "jurisdiction and standing section" means something even though we often skim that in our non-civ pro/con law/fed courts classes in law school.
I'll first note that the court is doubtful that PETA has standing as "next friend." Footnote 3 is a scathing indictment of its actions in this case, essentially arguing that PETA leveraged the case for its own political ends rather than for any benefit of Naruto. Youch! More on this aspect here. The court also finds that the copyright statute does not allow for next friend standing, a completely non-shocking result given precedent.
Even so, the court looks to whether Naruto has individual standing even without some sort of guardian. Surprisingly enough, this was not an issue of first impression. The Ninth Circuit had already ruled that a group of whales had Article III standing. From this, the court very quickly decides that Naruto has standing: the allegation of ownership in the photograph easily creates a case or controversy.
Once again, the best part is in the footnotes. I'll reproduce part of note 5 here:
In our view, the question of standing was explicitly decided in Cetacean. Although, as we explain later, we believe Cetacean was wrongly decided, we are bound by it. Short of an intervening decision from the Supreme Court or from an en banc panel of this court, [] we cannot escape the proposition that animals have Article III standing to sue....
[The concurrence] insightfully identifies a series of issues raised by the prospect of allowing animals to sue. For example, if animals may sue, who may represent their interests? If animals have property rights, do they also have corresponding duties? How do we prevent people (or organizations, like PETA) from using animals to advance their human agendas? In reflecting on these questions, Judge Smith [in the concurrence] reaches the reasonable conclusion that animals should not be permitted to sue in human courts. As a pure policy matter, we agree. But we are not a legislature, and this court’s decision in Cetacean limits our options. What we can do is urge this court to reexamine Cetacean. See infra note 6. What we cannot do is pretend Cetacean does not exist, or that it states something other, or milder, or more ambiguous on whether cetaceans have Article III standing.I was glad to see this, because when I read the initial account that Article III standing had been granted, I wondered why the court would come to that decision and thought of many of these questions (and more - like what if there's no statute to deny standing, like diversity tort liability).
I'll end with perhaps my favorite part of the opinion: the award of attorneys' fees. The award itself is not surprising, but the commentary is. It notes that the court does not know how or whether the settlement in the case dealt with the possibility of such an award, but also that Naruto was not part of such a settlement. It's unclear what this means. Can Slater collect from Naruto? How would that happen? Can Slater collect from PETA because Naruto was not part of the settlement? The court, I'm sure, would say to blame any complexity on the whale case.
Monday, April 2, 2018
Masur & Mortara on Prospective Patent Decisions
Judicial patent decisions are retroactive. When the Supreme Court changed the standard for assessing obviousness in 2007 with KSR v. Teleflex, it affected not just patents filed after 2007, but also all of the existing patents that had been filed and granted under a different legal standard—upsetting existing reliance interests. But in a terrific new article, Patents, Property, and Prospectivity (forthcoming in the Stanford Law Review), Jonathan Masur and Adam Mortara argue that it doesn't have to be this way, and that in some cases, purely prospective patent changes make more sense.
As Masur and Mortara explain, retroactive changes might have benefits in terms of imposing an improved legal rule, but these changes also have social costs. Most notably, future innovators may invest less in R&D because they realize that they will not be able to rely on the law preserving their future patent rights. (Note that the private harm to existing reliance interests from past innovators is merely a wealth transfer from the public's perspective; the social harm comes from future innovators.) Moreover, courts may be less likely to implement improvements in patent law from the fear of upsetting reliance interests. Allowing courts to choose to make certain changes purely prospectively would ameliorate these concerns, and Masur and Mortara have a helpful discussion of how judges already do this in the habeas context.
The idea that judges should be able to make prospective patent rulings (and prospective judicial rulings more generally, outside habeas cases) seems novel and nonobvious and right, and I highly recommend the article. But I had lots of thoughts while reading about potential ways to further strengthen the argument:
As Masur and Mortara explain, retroactive changes might have benefits in terms of imposing an improved legal rule, but these changes also have social costs. Most notably, future innovators may invest less in R&D because they realize that they will not be able to rely on the law preserving their future patent rights. (Note that the private harm to existing reliance interests from past innovators is merely a wealth transfer from the public's perspective; the social harm comes from future innovators.) Moreover, courts may be less likely to implement improvements in patent law from the fear of upsetting reliance interests. Allowing courts to choose to make certain changes purely prospectively would ameliorate these concerns, and Masur and Mortara have a helpful discussion of how judges already do this in the habeas context.
The idea that judges should be able to make prospective patent rulings (and prospective judicial rulings more generally, outside habeas cases) seems novel and nonobvious and right, and I highly recommend the article. But I had lots of thoughts while reading about potential ways to further strengthen the argument:
Thursday, September 1, 2016
Mark Rose: The Authors and their Personalities that Shaped Copyright Law
“Great cases like hard cases make bad law” said Justice Holmes at the turn of the twentieth century. By contrast in copyright law, complex personalities and facts seem to allow the law to work itself pure. That seems to be the principal takeaway from Mark Rose’s illuminating new book Authors in Court: Scenes from the Theater of Copyright.
A literary historian of copyright whose prior book is considered a seminal contribution to the field, Rose sets out in Authors in Court to tell the story behind several of copyright’s leading cases through an investigation of the personalities that prompted the dispute and its eventual resolution. The book’s main chapters each tell the story of a major copyright case that is today part of the copyright canon: Pope v. Curll, Stowe v. Thomas, Burrow-Giles v. Sarony, Nichols v. Universal, Salinger v. Random House, and Rogers v. Koons. Some of these cases (e.g., Nichols, Koons) continue to be cited by courts to this day.
Rich in detail, and lucidly written, each chapter showcases what the idea of “authorship” meant to the protagonists in each dispute and the range of values and influences that motivated the construct. To some, it involved the maintenance and policing of their public personae (e.g. Pope), to others it involved balancing the conflation of art and value (e.g. Sarony), and to yet others it involved melding authorship with narratives of honesty and authenticity. Rose does an excellent job of bringing to life the colorful personalities that initiated these famed copyright disputes.
A literary historian of copyright whose prior book is considered a seminal contribution to the field, Rose sets out in Authors in Court to tell the story behind several of copyright’s leading cases through an investigation of the personalities that prompted the dispute and its eventual resolution. The book’s main chapters each tell the story of a major copyright case that is today part of the copyright canon: Pope v. Curll, Stowe v. Thomas, Burrow-Giles v. Sarony, Nichols v. Universal, Salinger v. Random House, and Rogers v. Koons. Some of these cases (e.g., Nichols, Koons) continue to be cited by courts to this day.
Rich in detail, and lucidly written, each chapter showcases what the idea of “authorship” meant to the protagonists in each dispute and the range of values and influences that motivated the construct. To some, it involved the maintenance and policing of their public personae (e.g. Pope), to others it involved balancing the conflation of art and value (e.g. Sarony), and to yet others it involved melding authorship with narratives of honesty and authenticity. Rose does an excellent job of bringing to life the colorful personalities that initiated these famed copyright disputes.
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