Can You Copyright a Pose?

An interesting case caught my eye this week, and piqued my interest enough to explore further. In Folkens v. Wyland Worldwide the Ninth Circuit considered whether Wyland's depiction of crossing dolphins copied from Folkens's original. Below is a reproduction from the complaint, but it doesn't really do them justice. Better versions of Folkens (pen and ink) and Wyland (color) highlight the similarities and differences. [UPDATED to include the closely related Rentmeester v. Nike]

Folkens (left) v. Wyland (right)

The differences between these two are relatively clear: coloring, "lighting," background, and so forth. But there are undeniable similarities, and the primary similarity is the dolphin "pose," which is strikingly similar. It is this similarity (and the Ninth Circuit's treatment of it) that I'd like to explore. Nothing in this analysis, however, should be taken to mean that I think Folkens should necessarily win here. My concern is only with how the court got there, as I discuss below.

Beebe & Hemphill: Superstrong Trademarks Should Receive Less Protection

I have taught the multifactor test for trademark infringement four times now (using the 9th Cir. Sleekcraft test), and each time, some student has questioned which way the "strength of the mark" factor should cut. As a matter of current doctrine, stronger marks receive a broader scope of protection. But smart Stanford Law students who are not yet indoctrinated with longstanding trademark practices ask: in practice, isn't there less likely to be confusion with a strong mark?

In their new article, The Scope of Strong Marks: Should Trademark Law Protect the Strong More than the Weak?, Barton Beebe and Scott Hemphill expand on this intuition: "We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks."

The doctrinal relationship between trademark strength and protection was not always as clear as it is today. For example, Beebe and Hemphill point to a 1988 decision by Judge Rich of the Federal Circuit: "The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference." This more nuanced approach to consumer confusion also finds support in many foreign trademark cases.

To be sure, Beebe and Hemphill are really making an empirical claim about consumer perceptions, and the evidence base is quite limited (though they cite some related studies at notes 102-03). But as they note, the current doctrine relies "on a jumble of untested empirical assertions," and their argument makes a good deal of intuitive sense. At the very least, this article should spur trademark scholars, practitioners, and judges to reexamine their understanding of the relationship between strength and protection. And the next time one of my students asks about this, I'm glad I'll be able to send Beebe and Hemphill's work their way.

Saying Goodbye to Chief Wahoo?

A couple years ago, my youngest son was “drafted” onto the Indians Little League team. It was cringeworthy. The name was bad enough (and I’m thankful my alma mater had the good sense to abandon it nearly 50 years ago), but right there on the hat was Chief Wahoo. Needless to say, among the many baseball caps we have in our family, that one hasn’t seen the light of day since the season ended.

Yesterday, the Cleveland team and Major League Baseball announced that they are retiring the logo from uniforms in a year (they had already removed it from in and around the stadium apparently). It’s unclear why it cannot be done sooner, but I’ll give them the benefit of the doubt that manufacturing for next season is already underway and cannot be changed. Good riddance.

Buried in this news is an interesting IP theory and policy tidbit worth discussion. The team is not abandoning the logo altogether. To maintain trademark rights, it will continue to sell Chief Wahoo merchandise in the Cleveland area. That’s right, trademark law is forcing the team to keep selling merchandise with an offensive logo that it claims to no longer be using.

As I discuss below, this is an area where I expect folks will be torn.

Evidence of Peer Group Influence on Patent Examiners

Michael Frakes and Melissa Wasserman have gotten a lot of mileage out of their micro data set on patent examiner behavior over time. Prior work includes examination of grant incentives, agency funding, time availability, and user fees.

Their latest paper tackles peer group influence - that is, the effect that both peers at the same level and supervisory examiners have on grant rates. The draft is on SSRN and the abstract is here:

Using application-level data from the Patent Office from 2001 to 2012, merged with personnel data on patent examiners, we explore the extent to which the key decision of examiners — whether to allow a patent — is shaped by the granting styles of her surrounding peers. Taking a number of methodological approaches to dealing with the common obstacles facing peer-effects investigations, we document strong evidence of peer influence. For instance, in the face of a one standard-deviation increase in the grant rate of her peer group, an examiner in her first two years at the Patent Office will experience a 0.15 standard-deviation increase in her own grant rate. Moreover, we document a number of markers suggesting that such influences arise, at least in part, through knowledge spillovers among examiners, as distinct from peer-pressure mechanisms. We even find evidence that some amount of these spillovers may reflect knowledge flows regarding specific pieces of prior art that bear on the patentability of the applications in question, as opposed to just knowledge flows regarding general examination styles. Finally, we find evidence suggesting that the magnitude of these peer examiner influences are just as strong, or stronger, than the influence of the examination styles of supervisors.

I'll admit that I was skeptical upon reading the abstract. After all, I would expect that grant rates would rise and fall together in any given art unit, based on either technology or the trends of the day. Indeed, the effect is not so large as to rule some other influences.

But by the end, I was convinced. Here are a couple of the findings that were most persuasive (in addition to the fact that I think they specified fixed effects nicely):

1. The effect is more present during the early years, and tends to get "locked in" with experience
2. The effect is more present with peers than with supervisory examiners
3. The effect is more present for examiners who do not telecommute - this, to me, was the best robustness check
4. Examiners who do not telecommute tended to behave similarly in obviousness (v. novelty) and also to cite the same prior art (that was not cited as frequently by those to telecommute)

This paper's framing is interesting. I read it, of course, because it is a patent paper, but Frakes & Wasserman open with a more generalized pitch that this is about employment peer effects. I suppose it is about both, really, and it is worth taking a look at if you are interested in either area.

What happened in patent law in the past year?

Last Thursday I gave a 25-min recap patent law update to judges and practitioners at the Northern District Practice Program Patent Law Symposium, and I thought blog readers might be interested in my recap of highlights from the past year:

Patent Case Filings and Procedure: Venue, PTAB, and Stays

Lex Machina reports that there were 4057 cases filed in 2017, down 10% from the 4529 in 2016. The biggest procedural change was to venue. As I have explained, in its May 2017 decision in TC Heartland, the Supreme Court held that for purposes of the patent venue statute, a corporation only "resides" in its state of incorporation. The Federal Circuit has since held that this was a change in law, so the venue defense was not "available" under FRCP 12(g)(2), allowing district courts in pending cases to consider venue arguments that were not previously raised by defendants. And the Federal Circuit has offered guidance on the other possibility for proper venue—"where the defendant has committed acts of infringement and has a regular and established place of business"—saying that this requires (1) a fixed, physical presence that (2) is regular and established (not transient) and that (3) is a place of the defendant (not merely of an employee).

TC Heartland is likely responsible for the decline in cases filed in E.D. Tex. and the uptick in districts like D. Del. and N.D. Cal., though in neither of the latter have filings reached pre-2015 levels:

Crowdsourced Bibliography on IP and Distributive Justice

Professor Estelle Derclaye recently sparked a terrific email thread among IP professors about articles tackling IP from a distributive justice perspective. Here is a lightly edited list of the suggested works, roughly in chronological order, with links (open access, where possible) and, for somewhat arbitrarily selected works, short quotations or descriptions. If you have additions or corrections, feel free to email me or add them to the comments.

A New Trade Secrets Survey of In-House Counsel

It feels like all trade secrets all the time these days, but the hits keep coming. I've got some patent scholarship queued up, but this new survey caught my eye. David Almeling and Darin Snyder have provided some quality empirical analysis of trade secret cases in the past. Their two articles (written with others) cover both state and federal courts, and provided solid empirical support for the proposition that most trade secret cases involve ex-employees rather than strangers.

They have now extended this work with a new study (co-authored with Carolyn Appel) that surveys in-house counsel about trade secret usage.  The study is here, though it is behind the Law360 paywall, which is unfortunate. It is available on Lexis, I believe, or through a free preview.

The authors surveyed 81 in-house counsel from a variety of industries; however, they acknowledge that their sample is self-selected, which means that those who care most about trade secrets may have answered. They did overyield (another 27 people were not such in-house counsel), which lends some support for the idea that answers were not simply driven by those who cared the most. On the other hand, most respondents worked for large, multi-state companies, which makes one wonder why more in-house counsel for smaller companies did not participate and whether their answers would be any different.

In my prior post on the DTSA and in the Evil Twin debate, I ask why there is a sudden push for the DTSA. This survey gives us some answers about the political economy - 75% of respondents said that trade secrets had grown more at risk in the last ten years, and 50% said they were at much more risk. This fear may or may not be well grounded, but if this is the perception, it will certainly drive policy. Relatedly, respondents reported that patent law changes were not driving use of trade secrets -- only 30% reported using trade secrets instead of patenting. Most, I suspect, want more of both.

A whopping 70% reported that their company had been a victim of trade secret misappropriation. Of those, employees or ex-employees were the perceived culprits 90% of the time, confirming (again) that most misappropriation is not stranger misappropriation.

The most surprising finding of the survey, in my view, was a question about whether the DTSA should preempt the UTSA. Non-preemption allows both to stand, which can not only create conflict, but also allows plaintiffs to choose the most favorable law. In my discussions with people after the debate, some thought non-preemption was the part of the DTSA that most showed a desire to expand trade secret's reach.

So, the surprising result was a nearly even three-way split between supporting preemption, opposing preemption, and not caring one way or the other. While academics seem to think that lack of preemption is a big deal, this self-selected group of in-house counsel seem to not care one way or the other. This finding could actually drive policy choices in the future.

I'll conclude with that brief recap - while the article is short, there is more to see, about the types of secrets, the role in innovation, and the cost of misappropriation. I will end on this note, however: the costs borne by most companies from misappropriation were investigation and litigation. This is to be expected, as everyone investigates and litigation costs are high. But the other costs of misappropriation were spread out among price erosion, loss of sales, increased costs of protection (my own personal theory), and even none. I think this shows two things. First, when messaging in this area is not consistent, it may be that companies are perceiving the problem in their own ways. Second, it may be that enforcement efforts wind up dwarfing the actual harm of misappropriation in some cases.

Is the Defending Trade Secret Act Defensible? The Movie

As noted a couple weeks ago, Orly Lobel (San Diego) and I debated the DTSA at the AALS Conference. As promised, I'm posting video of that conference here.

The Powerful Effects of Copyright Reversion

A common type of client I've seen in practice is the founder who sold IP (or company) to another, only to see the creation buried for one reason or another. The client usually wanted the rights back, so as to see the work grow. We invariably had to give the bad news: there was little to do but negotiate for a return (which we sometimes achieved). [Practice tip: build reversion rights into the sales contracts, though the buyer often chokes on such language].

Of course, we explored copyright reversion, which allows for reversion after 35 years for post 1978 works. But in the software area, 3 years might as well be forever. Few software products last 35 years (is Linux a work made for hire? Uh oh).

Paul Heald (Illinois) has done some really useful work in this area. His prior work shows the U-shape curve of books available on Amazon. Recent books are available, and books in the public domain (before the 1920s) are available, but books in copyright but not recent are not available, even those published as few as 20 years ago.

One theme of this work is obviously that copyright terms should be shorter, and that may well be true. But one of my initial takes was that the publishers are to blame - they are sitting on books that authors may well want to publish. Reversion rights are a way to handle this - authors can take over those books and get them published if they want.

In a new article, Paul Heald again looks at this market in a draft article called Copyright Reversion to Authors (and the Rosetta Effect): An Empirical Study of Reappearing Books (located here on SSRN). Here is the abstract:

Copyright keeps out-of-print books unavailable to the public, and commentators speculate that statutes transferring rights back to authors would provide incentives for the republication of books from unexploited back catalogs. This study compares the availability of books whose copyrights are eligible for statutory reversion under US law with books whose copyrights are still exercised by the original publisher. It finds that 17 USC § 203, which permits reversion to authors in year 35 after publication, and 17 USC § 304, which permits reversion 56 years after publication, significantly increase in-print status for important classes of books. Several reasons are offered as to why the § 203 effect seems stronger. The 2002 decision in Random House v. Rosetta Books, which worked a one-time de facto reversion of ebook rights to authors, has an even greater effect on in-print status than the statutory schemes.

Heald gathers three different data sets: bestselling authors, bestselling books, general population of reviewed books. He looks at whether they were available, who published them (big publisher v. independent), and where (paper or ebook). In the rest of the post, I'll briefly discuss the findings and some thoughts.

Extraterritorial Reach Of The Defend Trade Secrets Act: How Far Did Congress Go?

In the aftermath of the Defend Trade Secrets Act (DTSA), a little discussed, but potentially quite significant, issue is whether civil trade secret plaintiffs can now use federal trade secret law to reach misappropriation that occurs in other countries pursuant to DTSA Section 1837. See 18 U.S.C. § 1837.  This post is a follow-up to my prior post on presentations at last spring's conference "The New Era of Trade Secret Law: The DTSA and other Developments", hosted by the IP Institute at Mitchell/Hamline School of Law. Professor Rochelle Dreyfuss spoke at the conference about her work-in-progress with Professor Linda Silberman, discussed herein.

Defending the DTSA

I'm excited to be a participant in the annual Evil Twin debate, coming this Friday in San Diego in connection with the AALS conference. The debate is sponsored by the University of Richmond Law School and will take place at 4:30 at the Thomas Jefferson Law School.

The topic this year is: "Is the Defend Trade Secrets Act Defensible?" I'm taking the "yes" side. My Evil Twin is Orly Lobel, the Don Weckstein Professor of Labor and Employment Law at the University of San Diego Law School.

As a prelude to give her a head start, I thought I would share a recent essay by Professor Lobel: The DTSA and the New Secrecy Ecology, available on SSRN. The abstract is here

The Defend Trade Secrets Act (“DTSA”), which passed in May 2016, amends the Economic Espionage Act (“EEA”), a 1996 federal statute that criminalizes trade secret misappropriation. The EEA has been amended several times in the past five years to increase penalties for violations and expand the available causes of action, the definition of a trade secret, and the types behaviors that are deemed illegal. The creation of a federal civil cause of action is a further expansion of the secrecy ecology, and the DTSA includes several provisions that broaden the reach of trade secrets and their protection. This article raises questions about the expansive trajectory of trade secret law and its relationship to entrepreneurship, information flow, and job mobility. Lobel argues that an ecosystem that supports innovation must balance secrecy with a culture of openness and exchanges of knowledge. This symposium article is based on Professor Orly Lobel’s keynote presentation at the March 10, 2017 symposium entitles “Implementing and Interpreting the Defend Trade Secrets Act of 2016,” hosted by the University of Missouri School of Law’s Center for Intellectual Property and Entrepreneurship and the School’s Inaugural Issue of the Business, Entrepreneurship & Tax Law Review.

The essay lays out a good background of the DTSA and points to some of its key drawbacks. It's a useful read for anyone looking for a relatively balanced synopsis of concerns about the DTSA some experience with it.

Happy New Year!

It's time to start bringing in the lights! Wishing our readers a great new year. I'll be back with posts in the next couple weeks.

How Do We Know What's Government Speech? Ask the Listeners (with Daniel Hemel)

Note: This post is co-authored with Daniel Hemel, an assistant professor of law at the University of Chicago Law School, and cross-posted at Whatever Source Derived. Follow him on Twitter: @DanielJHemel. This project may be of particular interest to the many Written Description readers who followed Matal v. Tam and its recent follow-up, In re Brunetti.

The distinction between private expression and government speech is fundamental to First Amendment jurisprudence. As the Supreme Court has held repeatedly, the government must be viewpoint-neutral when it regulates private expression, but not when it engages in speech of its own. For example, a public school cannot prohibit students from expressing anti-war views, but the government is free to propagate its own messages in support of a war effort without any need to simultaneously promote pacifism. Yet despite the doctrinal significance of the distinction between private expression and government speech, the line that separates these two categories is often quite fuzzy. A private billboard is clearly private expression, and the Lincoln Memorial is paradigmatic government speech, but what about a temporary privately donated exhibit in a state capitol? Privately produced visitors’ guides at a state highway rest area? A state university name and logo on a student group’s T-shirt? These are a few of the scenarios federal courts have wrestled with in recent cases.

To identify government speech in close cases, the Supreme Court has placed increasing emphasis on whether members of the public reasonably perceive the relevant expression to be private or government speech. As explained below, we think this turn toward public perception is a welcome development. But the Court has so far failed to develop a reliable method for determining how ordinary citizens distinguish between private and government messages.

The Court’s three most recent government speech decisions are illustrative. In the 2009 case Pleasant Grove City v. Summum, the Court said that there was “little chance” that observers would think that monuments in a public park were anything except government speech, even when those monuments were designed and donated by private organizations. Six years later, in Walker v. Texas Division, Sons of Confederate Veterans, the justices split 5–4 as to whether specialty license plate designs submitted by private organizations constituted government speech, with the majority asserting that members of the public perceive these designs to come from the government and the dissent insisting that members of the public hold the opposite view. And this past term, in Matal v. Tam, the Court confidently concluded that members of the public do not perceive federal trademark registration to be government speech. In none of these cases did the justices or the parties bring to bear any evidence as to how members of the public actually perceive the expression in question.

In an article forthcoming in the Supreme Court Review, we begin to fill that empirical void. We presented a variety of speech scenarios to a nationally representative sample of more than 1200 respondents and asked the respondents to assess whether the speech in question was the government’s. Some of the speculative claims made by the justices in recent government speech cases are borne out by our survey: for example, we find that members of the public do routinely interpret monuments on government land as conveying a message on the government’s behalf. In other respects, however, the justices’ speculation proves less accurate: for instance, while the Court in Tam says that it is “far-fetched” to suggest that “the federal registration of a trademark makes the mark government speech,” we find that nearly half of respondents hold this “far-fetched” view. (This does not imply that Tam was wrong—just that the question of whether members of the public perceive federal trademark registration to be government speech is much closer than the Court suggests.)

IP and the Soccer, er, Football

Just a short note this winter break week about a short essay that I enjoyed. Mike Madison (Pitt) has put The Football as Intellectual Property Object on SSRN. At first, I was really excited - looking forward to hearing about the pigskin's development from rugby. But, apparently, there's another kind of football around, but the essay was interesting just the same. Here's the abstract:

The histories of technology and culture are filled with innovations that emerged and took root by being shared widely, only to be succeeded by eras of growth framed by intellectual property. The Internet is a modern example. The football, also known as the pelota, ballon, bola, balón, and soccer ball, is another, older, and broader one. The football lies at the core of football. Intersections between the football and intellectual property law are relatively few in number, but the football supplies a focal object through which the great themes of intellectual property have shaped the game: origins; innovation and standardization; and relationships among law and rules, on the one hand, and the organization of society, culture, and the economy, on the other.

The essay details some of the history of soccer and the soccer ball from a variety of IP and innovation standpoints - sponsorships, standardization, unintended consequences of innovation, etc. The discussion provides a nice, brief survey of the untold life of an everyday object. The essay is part of a larger book that I look forward to reading: A History of Intellectual Property in 50 Objects.

Big Patent Data from Google

UPDATE: I got some new information from the folks at Google, discussed below.

Getting patent data should be easier, but it's not. It is public information, but gathering, organizing, and cleaning it takes time. Combining data sets also takes time. Companies charging a fee do a good job providing different data, but none of them have it all, and some of the best ones can be costly for regular access.

Google has long had patent data, and it has been helpful. Google patents is way easier to use than the USPTO website (though I think their "improvements" have actually made it worse for my purposes, but that's for another day). They also had "bulk" data from the PTO, but those data dumps required work to import into a usable form. I spent 2 days writing a python script that would parse the xml assignment files, but then I had to keep running it to get it updated, as well as pay for storage of the huge database. The PTO Chief Economist has since released (and kept up to date) the same data in Stata format, which is a big help. But it's still not tied to, say, inventor data or litigation data.

So, now, Google is trying to change that. It has announced the Google Patents Public Datasets service on its Cloud Platform and in Google BigQuery. A blog post describing the setup is here and the actual service is here. With the service, you can use SQL search commands to search across multiple databases, including: patent data, assignment data, patent claim data, ptab data, litigation notice data, examiner data, and so forth.

There's good news and bad news with the system. The good news is that it seems to work pretty well. I was able to construct a basic query, though I thought the user interface could be improved with some of the features you see in better DB drag and drop systems (especially where there are so many long database names).

The other good news is that it is apparently expandable. Google will be working with data aggregators to include their data (assuming a membership, I presume), so that you can easily combine from multiple sources at once. Further, there is other data in the system, including Hathi Trust books - so you could, for example, see if inventors have written books, or tie book publishing to inventing over periods of years.

Now, the bad news. First, some of the databases haven't been updated in a while - they are what they were when first released. This leads to second, you are at the mercy of the the PTO and Google. If all is well, then that's great. But if the PTO doesn't update, or Google decides this isn't important any more (any Google Reader fans out there?) then bye-bye.

I look forward to using this as long as I can - it's definitely worth a look.

UPDATE:
Here is what I learned from Google:
1. Beyond data vendors, anyone can upload their own tables to BigQuery and choose who has access. This makes it a great fit for research groups analyzing private data before publication, as well as operating companies and law firms generating reports that combine private portfolio information with paid and public datasets.

2. Each incremental data addition expands the potential queries to be done, and you're no longer limited by what a single vendor can collect and license.

3. The core tables are updated quarterly, so the next update is due out shortly. As Google adds more data vendors, alternatives for the core tables will appear and be interchangeable with different update frequencies.