Faculty Bibliography

Recent laws in the US, along with the Digital Services Act (DSA), seek to provide “due process” for individual content moderation decisions. Due process, understandably enough, often contains a component of treating like cases alike. It seems to follow, then, that if two relevantly similar users are treated differently, there is a problem of inconsistency, and that problem might be addressed by requiring more “due process” in the forms of appeals and clear rules and explanations of those rules to offenders. But it is said that consistency is the hobgoblin of small minds. In internet regulation, it is a damaging goal if taken as a mandate to make individual decisions uniformly consistent with each other.

The Supreme Court decided two cases of central importance to free speech during the 2022 term – in both cases without addressing the First Amendment implications. In Andy Warhol Foundation v. Goldsmith, the Court upheld a ruling that Andy Warhol’s reworkings of Lynn Goldsmith’s photograph of the artist Prince into highly stylized silkscreens and drawings were not transformative, and thus were unfair, at least when images of the artworks were licensed to illustrate articles about Prince. In Jack Daniel’s v. VIP Products, the court found that a parody dog toy in the general shape of a Jack Daniel’s bottle, with the label “Bad Spaniels,” deserved no special protection for its parody against Jack Daniel’s trademark claim. The Court reached these results using ideas about the lesser status of profitable speech that it flatly rejected in other cases the same term, and with rationales that seem directly at odds with its First Amendment jurisprudence. In this Article, we show that the Court’s decisions cannot be reconciled with its approach to any other area of speech and that they are already having pernicious effects in the lower courts. We consider some possible explanations for the inconsistency: the possibility that the Court just doesn’t see First Amendment issues in IP cases; the possibility that a political realignment has left conservative Justices less enchanted with speech in the marketplace; and the possibility that this is part of a broader trend away from holding courts to the same constitutional standard as the other branches of government, combined with statutes that leave room for substantial judicial discretion in individual cases. Whatever the explanation or explanations, the decisions in Warhol and Jack Daniel’s to cut back dramatically on judicially-created, speech-protective rules may have the ironic effect of forcing the Court to confront directly the constitutional fragility of much modern IP law.

Both antitrust and trademark law are, broadly speaking, “unfair competition” regimes. But the power that the law confers on trademark owners has expanded even as the constraints imposed by antitrust have contracted. In recent years, disputes over the use of trademarks as “keywords” used by search engines and their advertisers to target advertising when a consumer searches online have raised both trademark and antitrust issues. While U.S. trademark law generally considers keyword advertising to be pro-competitive and nonconfusing, a significant court of appeals case held that attempts to suppress such advertising did not violate the antitrust laws. Despite this unfortunate result, disputes over keyword advertising can still teach us important lessons about trademark theory, particularly the economic theory that trademark rights are justified to lower consumers’ search costs.

This Viewpoint looks at the lawsuits brought by pharmaceutical companies to challenge the Inflation Reduction Act of 2022, in particular claims under the First Amendment’s protection of free speech.

Does trademark law cover noncommercial speech, defined as it is in First Amendment doctrine as speech that does more than merely propose a commercial transaction? This basic question has three different answers, all regularly used in any given jurisdiction. The answers are yes, no, and sometimes, a list both comprehensive and dismaying. The Supreme Court is presently considering a case that may require it to choose—or may leave the field more confused than ever. In response to the massive expansion of trademark’s scope over the last century, lower courts have implicitly devised a compromise by which trademark is pulled back to a more traditional anti-fraud-like scope when it is applied to noncommercial speech sold in the marketplace, such as movies, newspapers, songs, and visual art, or used as the name of an organization with dues-paying members, such as a political party or congregation. This compromise explains an otherwise surprising feature of the cases: Political speakers and religious speakers can expect worse outcomes than “commercial” publishers engaged in noncommercial speech, given the kinds of cases brought against them. Of particular note, churches can be prohibited from using names that their worshipers sincerely believe are accurate descriptions of their faith. Although the doctrines articulated by courts are confused and sometimes directly contradictory, the results approximate what would happen if First Amendment strict scrutiny were applied to trademark claims brought against noncommercial speech—as long as material deception, not consciousness of wrongdoing, is the standard for liability. We would be better positioned to understand the law and to decide future cases if courts were honest about their uses of the commercial/noncommercial line to police whether trademark law can be used for more than anti-fraud purposes. Understanding the relationship of noncommercial speech to trademark law also offers broader insights into the relevance of scienter and actual deception for speech regulation.

The paper provides useful information about music consumption, but not about legal safe harbors, whose effects it cannot test because they did not change between periods.

To prove copyright infringement, a plaintiff must convince a jury that the defendant copied from the plaintiff’s work rather than independently creating it. To prove copying, especially in cases involving music, it’s common for plaintiffs and their experts to argue that the similarities between the parties’ creative works are so great that it is simply implausible that the defendant’s work was created without copying from the plaintiff’s work. Unfortunately, in its present form, the argument is mathematically illiterate; it assumes, without any underlying evidence, that the experts know or could reasonably estimate how likely it is that a song with similarity level x to another, earlier song was created without copying from the earlier song. Until the state of the underlying art changes, it is reasonable for experts to testify about the existence of similarities between works, but it is unsupported and unreasonable for them to testify about the likelihood that those similarities came about from copying. We don’t know that likelihood in the absence of evidence about base rates: how common it is for a song to have similarity level x with some other song in the corpus of existing songs, and how common it is for that similarity to come from copying or from independent creation (or from both songs copying a shared antecedent). Until that knowledge is available, testimony about the probability of copying should be deemed inadmissible under Federal Rule of Evidence 702.

The European Union's Digital Services Act (DSA) offers a new model for regulating online services that allow users to post things. It uses size-based tiers to delineate the different levels of obligation imposed on various services. Despite the tiers of regulation in the DSA, and very much in its copyright-specific companion Article 17, it's evident that the broad contours of the new rules were written with insufficient attention to variation. Instead, regulators assumed that "the internet" largely behaved like Youtube and Facebook. Using three examples of how that model is likely to be bad for a thriving online ecosystem--counting users, providing due process, and implementing copyright-specific rules--this Article concludes that, to improve policymaking, regulators should use test suites of differently situated services to ensure that they are at least considering existing diversity and properly identifying their targets.

Emily C. & John E. Hansen Intellectual Property Institute - Twenty-Ninth Annual Conference, International Intellectual Property Law & Policy.

Federal law presumes that false advertising harms competition. Federal law also presumes that false advertising is harmless or even helpful to competition. Contradiction is not unknown to the law, of course. This contradiction, though, is acute. For not only are both regimes at issue designed to protect competition, but they are both enforced by the same agency: the Federal Trade Commission, which targets “unfair competition” through antitrust and consumer protection enforcement. Courts’ treatment of false advertising in antitrust cases makes no sense. While courts have reasonably evidenced concern that not all false advertising violates antitrust law, the remedy is not to abandon the false advertising/antitrust interface. Instead, the solution is to focus on the actors most likely to harm the market: monopolists and attempted monopolists. This Essay proposes an antitrust framework for false advertising claims. It introduces a presumption that monopolists engaging in false advertising violate antitrust law and a rebuttal if the false advertising is ineffective. The framework also applies to attempted monopolization by incorporating factors such as falsity, materiality, and harm inherent in false advertising law, along with competition-centered issues like targeting new market entrants. Antitrust has dismissed false advertising that entrenches monopoly power for too long. This Essay seeks to resolve the contradiction in the law by showing how false advertising threatens the proper functioning of markets. Such an approach promises benefits for false advertising law, antitrust law, and consumers.

"Trademark registration is useful in providing a record of when rights were acquired and over what symbols, it also provinces constructive notice of registrant’s rights. Registration presents issues when underlying rights are expanded through assertions in litigation, even when the rights are narrow on paper. A number of reforms to the registration process could address these problems: “use requirements, heightened distinctiveness requirements, and a version of prosecution history estoppel to discourage registrant manipulation of the difference between the rights-granting entity (the PTO) and the rights-enforcing entity (the courts).” The interdependency of rights and remedies necessarily means that any reform to the registration process needs to consider a balance of infringement and counterfeit deterrence with competition and market entry. As it stands, the current registration system focuses heavily on competition and market entry, with less thought given to infringement and counterfeit deterrence. This chapter explores ways to make registration beneficial for both the consumers and producers."

This is Chapter 19 of our Advertising and Marketing Law casebook, a chapter we are publishing only online. It takes a deeper look at how law regulates two specific advertising situations: (1) discriminatory advertising, principally in the housing context, and (2) political advertising.

The First Amendment was a dead letter for much of American history. Unfortunately, there is reason to fear it is entering a new period of political irrelevance. We live in a golden age of efforts by governments and other actors to control speech, discredit and harass the press, and manipulate public debate. Yet as these efforts mount, and the expressive environment deteriorates, the First Amendment has been confined to a narrow and frequently irrelevant role. Hence the question—when it comes to political speech in the twenty-first century, is the First Amendment obsolete?

The fair use doctrine requires courts “to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 577 (1994). The Federal Circuit’s rejection of a jury finding of fair use instead embraced a rigid approach that, as a matter of law, would bar any copying of code into a new program, even for a different platform, as non-transformative and unfair. To justify its ruling, the Federal Circuit abandoned a consensus in the lower courts about the broad scope of fair use when dealing with highly functional software elements. It made key mistakes about the fair use factors and their balancing, including inflating the relevance of commerciality, applying an erroneous “no more than necessary” standard for copying, dismissing as insignificant the highly functional nature of computer programs, and conflating the market for Java SE as a whole with the market for individual declarations. Absent these legal errors, it is clear that the jury was at least reasonable in making factual findings that supported a finding of fair use. The extent to which a new work has a new meaning, message, or purpose—transformativeness—is often and rightly prioritized in the fair use analysis. But what constitutes transformativeness is often contentious. Here, the new purpose of Google’s new code implementing the declarations was the creation of a new computing environment in which Java programmers could readily create programs on multiple platforms, which required the use of limited portions of highly functional declarations. This type of purpose has been recognized as transformative because of its role in furthering competition and innovation. A computer interface supports the creation of other creative works, and in such situations, it is important to avoid locking in third parties to specific platforms. Factors two and three of the fair use test help define the boundaries of this type of fair use. In cases such as the one at bar, the highly functional nature of the copied declarations and the limited amount of the overall Java SE work used, consistent with industry practices, are vital considerations supporting the conclusion that Google’s use was a transformative use that served copyright’s basic goal of encouraging creation of new works. By discounting to the point of irrelevance the thinness of protection for highly functional aspects of computer interfaces (factor two) and of the industry practice of treating the amount Google reimplemented as reasonable (factor three), the Federal Circuit distorted its analysis of the other fair use factors, threatening the coherence of fair use doctrine and the ultimate progress of creativity. By downplaying the relevance of the nature of the work and the amount taken, the Federal Circuit fell into the well-known trap of circularity: reasoning that, because Oracle could have charged a license fee for this type of use if fair use were unavailable, Oracle suffered cognizable market harm. Because such claims can be made for any fair use, which by definition is not paid for, this reasoning cannot distinguish fair and unfair uses. But factors two and three can help identify when crediting such claimed market harm would be inconsistent with copyright’s overall balance between past and future creators. Thus, given the limited copying of functional elements here, factors one and four also support fair use, because Google’s purpose was generative of additional creativity by third parties and because Oracle’s claimed market harm goes beyond the legitimate scope of its thin copyright in highly functional declarations. A thin copyright for software, including Java SE, provides software copyright owners with meaningful protection against copying of significant amounts of expression, but meaningful protection does not require the expansive rights that the Federal Circuit granted. Providing a broad scope to highly functional elements of software is unnecessary and dangerous to competition and innovation. Factors two and three enable fair use to implement this distinction between types of works. The Federal Circuit erred in not recognizing this interaction between the fair use factors and instead adopting a rigid rule that would preclude fair use in computer programs.

Amici take no position on whether BOOKING.COM is generic, but write to encourage the Court to be cautious in resolving this case, which involves a generic term combined with a common top-level domain name identifier (.com). Trademark applications raise almost infinitely varied scenarios, including generic terms combined with other elements, and the top-level domain name identifier has some specific features that make it analogous to functional matter. Whatever rule the Court adopts should be highly attentive to the risks to competition of overassertion of registered marks that are largely or entirely comprised of generic elements. Because courts deciding infringement cases are often unfamiliar with the context of a trademark registration, they may miss limitations on the scope of the registered mark that the Trademark Office believed existed and, as a result, enforce broader rights than the registrants should actually have. Ordinary businesses receiving cease and desist letters are even more unlikely to have the expertise to understand the limits on a registration. This practical reality should guide the Court’s standards for registrations with generic components. Relatedly, the Court should reaffirm the basic principle that “de facto secondary meaning” does not give rise to protectability as a trademark. Courts have long distinguished between “de facto secondary meaning” and secondary meaning “to which courts will attach legal consequences.” De facto secondary meaning refers to an association between a generic term and a particular producer that is usually the result of an extended period of market dominance, whether achieved through advertising or through lack of competition. Because of the need to protect potential and future competition, a generic term cannot be appropriated as a trademark even if it has de facto secondary meaning The practical exclusivity afforded by domain name registration means that there may often be de facto secondary meaning in domain names, which can be difficult to distinguish from true trademark secondary meaning. This easily elided distinction affects how the Court should evaluate Booking.com’s survey, which purports to show secondary meaning. But the fact that de facto secondary meaning does not lead to trademark status does not mean it is irrelevant to the law. Even when a term is not protectable as a trademark, narrower unfair competition remedies may be available to prevent true passing off. When a term is generic or a product shape is functional, neither can be protected as a trademark and others may not be enjoined from competing using the term or shape.. Those competitors, however, may be required to distinguish themselves in the market by adding identifiers or otherwise differentiating their use, if the competitors’ use might deceive consumers. Thus, a rule that strongly protects competition by denying registration to generic terms does not leave consumers exposed to clever bad actors.

This is Chapter 14 from the 2020 edition of Advertising & Marketing Law: Cases and Materials, a casebook by Rebecca Tushnet and Eric Goldman. This chapter examines the legal issues arising from featuring people in advertisements, including publicity rights and endorsement/testimonial guidelines.

The Supreme Court’s recent decision in Star Athletica purported to tell us the circumstances under which copyright will protect creative features of useful articles, such as items of clothing or cars. Unfortunately, the decision announced only abstract principles that manage to be both internally inconsistent and generally unhelpful in dealing with three-dimensional designs. This Article explains some of the challenges presented by the opinion and argues that clearer attention to the differences between design patent and copyright could have helped—and might still be useful going forward.

This article was adapted from a keynote presentation delivered at the National Law-Related Education Conference, on October 20, 2018, in Chicago. The theme of the conference was "Free Speech Today."

This is a print edition of Professor Jeremy Sheff's 2019 build of Open Source Property, a free online casebook for the first-year Property Law course at American law schools. A free digital edition of this text is available for download from www.opensourceproperty.org. Open Source Property is copyright 2015-16 by Stephen Clowney, James Grimmelmann, Michael Grynberg, Jeremy Sheff, and Rebecca Tushnet. It may be reused under the terms of the Creative Commons Attribution NonCommercial 4.0 International license, https://creativecommons.org/licenses/by-nc/4.0/.

This is a casebook on advertising and marketing law. Due to the length of the book, we have broken the book into 2 volumes. This is the order page for Volume 2.

This is Chapter 13 from the 2018 edition of Advertising & Marketing Law: Cases and Materials, a casebook by Rebecca Tushnet and Eric Goldman. This chapter examines the legal issues arising from featuring people in advertisements, including publicity rights and endorsement/testimonial guidelines.

This is Chapter 18 of our Advertising and Marketing Law casebook, a chapter we are publishing only online. It focuses on the regulation of two specific advertising situations: (1) discriminatory advertising, principally in the housing context, and (2) political advertising.

This chapter describes the principal arguments about intellectual property rights as mechanisms for promoting the public interest, as opposed to particular private interests. Public interest arguments typically feature in balancing accounts of intellectual property rights that evince concern for the distribution of benefits as well as for the production of new works or inventions. Public interest rationales also often feature in justifications both for the rights themselves and for limitations or exceptions to those rights when private control of an intellectual resource would not promote the general welfare. The chapter considers patents, copyright, trademarks, and related rights, including the right of publicity. It concludes by examining various challenges faced by public interest accounts.