Thursday, February 22, 2007

Fair Use and Fee Shifting

Well, it's been a pretty busy week for Mr. IPNotions. Not so much online, but I've been scampering around IRL, and now I'm gonna talk about (some) of it.

On Wednesday, I went to the Modest Proposals 3.0 conference at Cardozo. There were five really interesting proposals made, but I want to focus on Mike Carroll's "Fixing Fair Use" proposal.

Unfairly distilling a significant paper, a four-page proposed statute, and an hour's worth of speech and question-and-answer to a three-line summary, the Professor Carroll's proposal comes down to setting up a three-judge panel to adjudicate fair use questions ex-ante the putative use, resulting in narrowly binding but published decisions. The decision is formally reviewable by Circuit courts, and de facto reviewable by District courts.

The proposal was evocative of a presentation Professor Nimmer made last year (when I was still in flagrante LL.M.) that he called FUDGSICLE. I don't remember how the acronym unpacked, but his idea (again, unfairly distilled) was to set up voluntary, non-binding arbitration on the question of fair use ex-ante the putative use, resulting in decisions probative to any later inquiry into good-faith or willfulness. As I recall, in fact, Nimmer's proposal was that (for instance) if the arbitration panel deemed a particular use fair, then the copyright holder would be barred in later litigation from claiming bad faith or willfulness.

Carroll and Nimmer are both addressing a very real problem with fair use. Or rather two connected problems: the lack of certainty ex-ante the use (multiplied in any risk analysis by the potential for large statutory damages), and the high cost of defending against a charge of copyright infringement. And they both address the problem in a similar way, to wit, by introducing an element of certainty ex-ante (at a reduced cost) and relying on copyright holders to act in reasonable self-interest by only bringing suit in the very close cases, where the holder has a good chance of flipping the previous determination.

The issue I have involves the tendency of copyright holders - especially large IP-based businesses - to have an almost trademark-like protect-or-lose overzealousness when it comes to enforcing copyright. Neither of these ex-ante proposals prevents the copyright holder from holding the threat of an expensive suit in court over the heads of the risk-averse and/or cost-averse putative user. Disney or Viacom or someone will send a letter that comes just short of actually threatening suit (avoiding declaratory judgment actions) and that's usually more than enough to scare most users off. If you've already included the work in the new work, then go back and edit or just don't publish; if you haven't, then you find another way. In either case the fair use exception/limitation/defense/whatever is basically eliminated.

Setting up a cheap system for ex-ante determinations without making that system mandatory does little to eliminate the effectiveness of that kind of threat, particularly because the threat is leveraging not the possible loss attendant to a failure on the merits, but the certain loss attendant to defending the case - attorney's fees.

So what needs to be done is that these ex-ante determination processes need to be given teeth with regard to attorney's fees, so as to neutralize that part of the threat.

Right now, under Section 505, the court has discretion to award a prevailing party fees. In practice, it doesn't happen that often, and that's due in large part to the overwhelming reluctance to deviate from the US rule in US courts. That's fair, usually, but in the context of copyright cases - and the different ways they generally come to the court (or should come to the court) - it would be worthwhile to maybe skew that a little.

So, for instance, under Professor Carroll's proposal, the initiation of the fair-use adjudication process could trigger an automatic fee shifting provision in the event the matter goes to District Court, such that the party that initiates the inquiry in District Court (short-circuiting the Carroll adjudication process) would be liable for some or all of the attorney's fees of the other side in defending that case, to the extent that the defense had to do with fair use.

Under Professor Nimmer's idea, a party who acts in a manner to instigate suit after a a determination by the arbitration panel could be held for the attorney's fees of the other party if they prevail.

In either case, the ex-ante determination of fair use would then have the weight sufficient to defeat the threat posed by the cost of defense. Let's just put the metaphor in the blender: It would turn the Sword of Damocles into a shield. But not, you know, a shield hanging over your head...

--Ben D. Manevitz

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Sunday, February 18, 2007

Trademark Full of Stuffin!

In the universe of blogs I frequent - many of which will, eventually, make it to my blogroll - I think this is a scoop, of sorts. Via the SND Blog, a surprising (to me at least) loss for Disney in the Very Serious Litigashun about Pooh. (Comprehensive repository of documents at LaughingPlace.)

What's the take-away?

Draft your documents VERY CAREFULLY, try your best to anticipate... everything. And then pray.

--Ben D. Manevitz

Friday, February 16, 2007

Me Am Rite Good! So Gimme Patent!

I wanted to shamelessly promote my recent publication:

Manevitz, Ben D., What's the Story with Storyline Patents - An Argument Against the Allowance of Proposed Storyline Patents and for the Rejection of Currently Pending Storyline Patent Applications, 24 Cardozo Arts & Ent. L. J. 717 (2006).

SSRN Link:

Consider this post (and the comments thereto) space for feedback on the paper and its subject.

I understand if you don't want to read the whole paper. (The last section is a lot of fun, though the most narrow legally.)

Essentially, this guy has come up with a Brand! New! Idea! where he wants to patent storylines. Yeah, you read that right. Just to be clear, the website is As in patenting plots. He builds his argument on the foundation of software and method patents, and what he claims is the demise of the printed matter doctrine. Knight's gone so far as to apply for a number of patents under the theory.

My paper proceeds in three parts. First, I argue that plots are not (and can not be) proper subject matter - a storyline is not a "useful art" as required by the Constitution and a storyline can not satisfy the constitutionally grounded utility requirement of the patent statute. Second, I argue that storyline patents should be disallowed as a matter of policy; allowing such patents would do violence to the patent/copyright bargain, and allowing such patents would place an enormous burden on the courts and the PTO in exchange for only the slimmest possible benefit. Finally, I argue against the particular storyline patents that Knight has filed, looking at specific novelty/obviousness issues.

I also spend a little time talking about the printed matter doctrine, and the reports of its death.

I do have some ideas that didn't make it into the paper, and I've got some other thoughts on the subject that I'd like to poke at some more, but I'll do that some other time.

For now I just wanted recommend the article to you. Read it, know it, love it, cite it often, laminate it and put it under your pillow at night or otherwise fetishize it... whatever.

Have a good weekend.

--Ben D. Manevitz

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Wednesday, February 14, 2007

The Shifting Sands of Terroir

Yesterday afternoon, I was discussing with a friend the differences between English and American chocolate (specifically Cadbury's), which devolved into jokes about the temperaments of cows in different countries and how that would affect the milk chocolate.

I know; I have odd friends. The point is, though, that it shouldn't have surprised me that I woke up this morning thinking about Geographical Indications (GI's).

The TRIPS definition of a GI is a good place to start, with slight editing. GI's are "indications which identify a good as originating in the [a certain geographical region], where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

Pay attention to that last bit, essentially attributable. The idea is that there's something ineffably particular in the combination of local factors -- including soil, microclimate, trace elements in the water, whatever -- that makes a product from a certain place unique and at some level not reproducable if grown in another place. The term for that is terroir, particularly with respect to wine; when I'm in my less charitable moods I think of it as the magically delicious principle.

(I'm eliding, for this discussion, the idea of GI as it applies to traditional handiwork and goods produced by labor; there is a line of thought that applies a quasi-terroir to crafts, such that the basket woven by an indigenous basket weaver in Region X is somehow different from the basket woven by the same basket weaver, even using materials imported from Region X, once that basket weaver moves to someplace that's not Region X. It's so dumb it makes my head hurt.)

GI protection can be accomplished either by a sui generis scheme of protection (the French model) or by looking at already existing protections and seeing how they can be made to cover GI's. In the US, trademark law is generally considered to adequately protect GI designations, particularly under the rubrics of Certification Marks and Collective Marks.

The "regular" level of GI protection (as reflected in TRIPS 22.2) doesn't really raise any hackles; it requires protection against the use of GI's in a manner that US practitioners would recognize. You can't mark a good as RegionX unless it's actually from Region X or if it's not from Region X but the public isn't going to be mislead into thinking it is.

It takes only a little imagination to understand how that level of protection fits nicely inside of Certification or Collective Marks. The US system pays no attention to terroir, and so far it doesn't really have to.

Problems arise, though, when it comes to TRIPS Section 23, which covers heightened protection for Wines and Spirits. A number of countries are looking to extend that heightened protection beyond Wines and Spirits, as well. The protection under Section 23 is much more dilution-ish. There's no inquiry as to whether or not the use of the term in question causes confusion or misleads the public. The protection afforded is more similar to ownership of term per se; even use of "kind," "type," "style," "imitation," or the like is banned at this level.

What I was thinking about this morning was as follows, though. If terroir is real, then you don't really need the second level of protection. That is to say, if it's really true that something in the dirt (or the water, or the slant of the sun, or the wind, or whatever the wind passed before it hit the vines) in the Champagne region of France makes the grapes there somehow different from grapes anywhere else, then it's really true that {sparkling wine made by the same process with grapes from California} is really different from Champagne. You could even make a good argument that the one from California isn't even Champagne-like, or -style, or -imitation.

On the other hand, if terroir is not real, then it's hard to think of a good justification for the heightened GI protection of Article 23. If Champagne that's not from Champagne can still be Champagne, then it can certainly be Champagne-style.

Moreover, even if terroir is real, what happens when the magically delicious principle begins to fail? As technology advances, perhaps that essentially attributable aspect of the land will become less ineffable. (See, for example, the advances in understanding red wine.) As that happens, the arguments underpinning the heightened GI protection will become less and less compelling, and it's not impossible to imagine the entire structure of GI protection trembling as its foundation is weakened.

It might be worthwhile for the bodies looking into GI protection to more explicitly address the question of terroir; particularly interesting would be to see some explicit recognition or (more likely) disavowal of terroir in the US Code.

--Ben D. Manevitz

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Wednesday, February 7, 2007

Here we go.

Well, here we go, then.

Welcome to my nascent blog. I've been a pretty regular visitor to the various legal blogs (I resent the word blawg as much as I embrace the word blog) for a while now, and have found myself thinking, once in a while, that I should get me one of those. And here we are.

Does the blog world need one more legal blog? Does the legal world need one more IP blog? Maybe. Here's hoping you what you encounter here is more signal than noise.

--Ben D. Manevitz

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