Session IV – Subject Matter and Limitations
• Rebecca Tushnet
Drassinower defines trademark as the right to completely control the meaning of a mark as applied to a good or service: radically unidirectional, like a one-way traffic sign, and a trademark is not and should not be that! Government (one-way sign) versus corporate (they’d like you to think that). Book says: TM is not an invitation requesting a response/dialogue. But I think that’s another slippage between the work and the copy, in Mark Rose’s terms. In a sense, you’re not invited to modify a particular copy of a book even if you’re invited to engage in a dialogue. To the extent that the invitation is a commercial one in the TM sense, that’s ok.
We’re allowed to talk about a Mickey Mouse operation, or a Cadillac health plan. Genericide occurs when people talk back. Urban white Englishpeople using Burberry; African-Americans adopting Timberlakes. This overstatement is natural because he is trying to find a way to distinguish © from TM, and without a strong conception of influence on purchasing decisions—aka materiality—TM doesn’t have the kind of core that can be identified and distinguished from ©, since it is indeed about communication between producers and consumers.
When doubt arises as to whether it’s an indicator of source, Drassinower says, TM fails—but can still be valid and also part of a conversation.
Relatedly, Drassinower says: A trademark addresses others as consumers rather than speakers. But self-understanding of marketers is now as TMs as branding strategy—intent is absolutely to address them as speakers, to penetrate their consciousness, to interact w/them on Twitter.
First Amendment concept: consumers and speakers are the same people. Once we give corporate speakers protection, it becomes harder and harder to distinguish speaking from selling things—a particular kind of conduct. This is something that needs to be addressed in 1A doctrine more generally.
• Mark McKenna
By definition TM is an invitation to respond; whether it is/functions as a TM depends entirely on how consumers respond.
Striking resemblance b/t using a © work as a work (his concept of infringement) and the concept of use of a mark as a mark. TM rights aren’t in gross; they are relational, rights to use in a particular setting. Copying as such is not infringement unless it has a certain kind of effect. Once you define a TM that way it’s easy to work out what infringement must be. © too, to Drassinower, isn’t a right in gross. So there’s less need to resist property than you think.
Lessons from TM: there’s always been a TM use requirement; the problem is you immediately descend into addit’l Qs. From whose perspective do you evaluate whether there is a TM use? Is it based on consumer perception, or inherent in the nature of the use. That relates to what kind of evidence you’d want. Au-tomotive Gold: keychains made from car symbols aren’t being used as TM, D says, we’re using it ornamentally—court can’t wrap its head around that idea. No conversation in the case about how you would know it’s a TM use.
Drassinower makes a similar move: to infringe is to use a work in a particular way. How will a judge know whether a use has been a use as a work? Evidence of consumers or not? TM use ground to a halt b/c courts couldn’t figure out how to apply it—just collapsed into likely confusion. If it’s perceived from viewers’ perspective, are you just asking whether there’s substantial similarity? Is there a difference between non-use and non-infringement?
TM law also expanded during the same time and its growth at least coincided with if wasn’t caused by massive rhetoric shift to consumer protection—interesting question about what kinds of rhetoric bound rights and which enable their expansion. Could we say something similar about certain instrumentalist language in ©?
• Pam Samuelson
Charmed by the book too; thinks it accounts for maybe 55% of © as we know it. Good identification of types of copying that aren’t copying that © law should be worried about. But reproduction may not ever really harm an author. What harms authors is public dissemination, distribution, communication. That suggests that your regime only requires one exclusive right: dissemination to the public. Maybe that also means that © only ought to attach on publication.
One benefit: wouldn’t need as many exceptions.
Moral rights: accept a moral right of attribution but not integrity under this view? Also related to transfers—authors may be unhappy with fate after transfers. Nadine Gordimer: swore off licensing after one work was mangled in movie version. Of course, under Drassinower’s modality, she has no right to say anything b/c no derivative works right. Does she have a right to a disclaimer? She doesn’t think the reproduction right is totally overlapping w/ deriv works right, though Nimmer does—still need to answer the Q about the scope of the right that gets to be infringed; what should be done w/nonliteral infringements?
Final issue: secondary liability is probably the biggest deal in © right now, and she’s not sure what happens to it in Drassinower’s theory.
Disagrees w/his interpretation of Baker v. Selden: even if you could find expression in forms Selden published, someone using that to keep accounting books would not be an infringer; we agree on that, and Mrs. Selden was trying to make everyone using the accounting forms pay. Not w/in the scope of ©. Where we disagree: Baker was speaking Selden’s forms. He had a book in competition w/Selden. The compelled speech issue doesn’t work here. The SCt didn’t just let off all the users of the forms, but also let Baker off—the second person gets to utter the speech as a necessary instance of using the system.
McKenna: in TM, you often have the difficulty that consumers understand things differently—which group of consumers wins? Functionality has an answer to that—if it’s doing something other than indicating source, that wins. You’ll have the same Q here with people doing various things to the work.
Drassinower: didn’t mean to say that you can’t speak about the TM. Not completely controlled—only controlled as indicator of source. That is the subject matter of the right, and so loss of control of that meaning is loss of the TM. The harm at issue is paradigmatically confusion—the right to control the meaning is to have oneself as the source (of course successful infringement leaves that meaning intact!). The reason I need it is to characterize © as having something to do with dialogue, juxtaposed with something communicative but not dialogic. Consumer may or may not be a speaker, but passively receives. The activity of consumer is distinct from response of another author.
McKenna: the specificity of TM is inviting a particular kind of response b/c of the nature of the communication—purchase related.
RT: If you want something that’s communicative and unidirectional, how about the law itself? Traffic laws, the police officer—they are communicating but not inviting dialogue.
Drassinower: it would be clearer if I granted that the audience/consumer is not passive. The exchange of information b/t purchaser and seller is in the context of sale.
Silbey: difference b/t © and TM is also evidenced by the durational rules of each.
DiCola: Katy Perry Left Shark example: it’s the audience that made the meaning; some kind of dialogue is happening between producers and consumers. Language of value might be helpful too: the audience made the meaning.
Drassinower: interesting question about role of substantial similarity: audience issues.
Silbey: not much seems to be left of derivative work or even substantial similarity after the book’s theory.
Samuelson: which leads us to the point that the book doesn’t leave us with much idea of what the boundary would be.
Debate b/t Samuelson and Drassinower over what Baker stands for. Samuelson: Baker was using the forms to communicate; he wasn’t a user of the forms. He was using the forms to communicate his own competing book/explanation of the system.
Drassinower: use as part of system is devoid of liability—but according to my theory they could be infringed by use of the forms to explain the system in another publication. And he interprets Baker to say that by its own terms. Samuelson says he’s fastening on a single phrase and not looking at the cases that follow it and the overall context of the case.
DiCola: language of the case has some equivocal moments, but the fact that Baker published a book undermines the distinction you’re trying to draw, because he still won. Baker v. Selden is about competition—it’s making a decision about market structure for accounting books.
RT: Then couldn’t you see Baker as a secondary liability case, if it’s about competition to provide these forms as well as the system/its explanation? Which goes to Mark McKenna’s concerns about what counts as © use under Drassinower’s system.
Gordon: even if Baker doesn’t align with its historical explanation, Congress enshrined the distinction in its building/use distinction in §113—building a described thing isn’t infringement. Leg. history: a drawing of a car = no right over the actual car. Baker stands for limitations on copyrightability and limitations on scope of rights, enshrined in statute.
Heymann: consider the protests by musicians who don’t like use of their music in political campaigns: they consider it compelled speech, but they don’t own the ©. This harm sounds more like defamation. Is compelled speech necessarily tied to ©? The same harm happens in other ways through works.
Sprigman: design patent—typefaces—aren’t these speech too, subject to the same compelled speech objections as paintings? If art is speech, isn’t industrial design speech?
Drassinower: use as tools v. use as works: Google Books—use as tools distinction is in Baker and it can help answer Google and other products. So use of the toaster as a toaster would be ok.
Sprigman: A speech focused © law without adopting the 1A’s definition of speech?
Drassinower: Yep (and sensibly so, I think).
Samuelson: can’t conceive of a use in which Baker’s use of the Selden forms would be infringing. Your reading is about dicta. Otherwise Baker would be an infringer.
Also, the distinction between patent and copyright isn’t as sharp as we’d all like. One can engineer a document; both inventors and authors think and behave in highly similar ways. The question of what’s protectable in a computer program must be addressed even if you take it out of ©. Notion of authorial creativity and technological creativity doesn’t exhaust the realms of creativity—authorship and invention as the two metaphors have trapped us/distracted us.
Balganesh steps in to defend Drassinower’s view of Baker, given that the SCt called the book of forms a “work” closer to the method than works usually are, making the opinion contradictory.
Gordon: but that’s true of any method—an implementation will be more like a method than like a novel.
Samuelson: The Ct thought that useful arts were usually made of metal or stone; this one was actually embodied in a writing, and it’s that the Court referenced when it said that the useful art, even embodied in a book, was treated like the useful art made of metal. [Then Gordon & Samuelson discuss the role of merger in Baker—Samuelson blames the Nimmer treatise for calling Baker the origin of merger and then taking that as license to ignore the method of operation etc. exclusions in the statute.]
Madison: In 1A the availability of alternatives is sometimes used to justify a particular speech restriction—similar to how merger is analyzed in ©.
Sprigman: Typeface: why not cover it? You’re proposing a deep structure that unifies things within the subject matter of ©.
Drassinower: Doesn’t think fonts are act of authorship.
Sprigman: maybe you’re saying you want a hurdle before you allow the © switch to be turned on.
Drassinower: my system has to say there are phenomena that flip the © switch; there’s no domain distinction between mark, work, invention without one.
Sprigman: my domain distinction would be need for incentive: we’re not living in a font-free hellscape.
McKenna: you’re having the conversation about fonts b/c it seems to you that they might fit the contours of what’s proposed (you’re not having the conversation about mousetraps), and that suggests you’re agreeing that’s the right question.
Rebecca Curtin: if we used this language to talk to the public, would that be less chilling of uses that we think are fair?
Drassinower: hopes that’s right—part of what he was trying to do. If this were the grammar, instead of value, it would undo the suspicion of copying.