Arctic Pear by Ochre

Most of my writing here about copyright law concerns the misuse and abuse of its heavily pro-plaintiff provisions such that there is little or no incentive against the filing of meritless claims of infringement.  In particular I have focused on scams such as Righthaven, the now-defunct copyright trolling operation, and the use or threatened use of attorneys’ fees and statutory damages as part of such claims.  Often these components are wildly out of proportion to the loss suffered, though anyone familiar with the pre-digital copyright regime understands that this is meant as a feature, not a bug.  If it were otherwise, casual infringement of typically non-wealthy creators would be a completely rational, if unethical, business practice, and the cost of the odd successful attempt at compliance would easily be absorbed as a cost of doing business.  And that odd attempt would be odd indeed, because without providing an incentive to attorneys to represent creators in such situations, they would have very little leverage over infringers.

My concern has always been when we move from “leverage” to arbitrage, which was what we had with Righthaven.  On the other hand, as a former journalist and author, and a person who often represents creators, I have, as regular readers know, never been sympathetic to the “information wants to be free” non-sequitur.  Creative works are not merely “information”; even “information” can be proprietary under many circumstances; and neither information nor art, in any case, has any desire for freedom or for anything else, even chocolate.

So, what is the geometry here?  There are creators of works subject to protection by copyright — authors, producers of visual works, songwriters, musicians and others.  There are distributors of content, who usually pay creators a pittance for their work but have the capital, technology and market access to exploit its value well.  There are consumers of content, who may or may not pay the legitimate price for their consumption.

And then there are the others:  The purported fair users, the search engines, the homage-payers, the derivative-workers.  They are not quite consumers, but unquestionably many of them profit from creative works.  Does copyright contemplate that they should be able to do so, or not?

With some of these preliminary thoughts in mind, consider, now, this blog post from David Newhoff:

Yesterday, the House Judiciary Committee held a hearing meant to lay some of the groundwork for overhauling copyright law in the United States.  The title of the hearing is “A Case Study in Consensus Building: The Copyright Principles Project,” suggesting that the “project” is about establishing premises and ground rules for how the debate might be framed going forward.  I suppose because the word consensus is also part of the title, several lawmakers and the witnesses called to testify repeated the rhetorical question as to why debate about copyright has become so contentious.  For authors and creators who actually use copyrights to forge professional careers and build businesses, this feint at decorum will elicit a justifiable sneer because it’s kinda like saying, “All someone did was spit in your eye, and I don’t know why we can’t now have a civil discussion about the principles of expectoration.”  Of course, there weren’t any authors or creators present at this hearing, and that in itself has been cause for concern.

For the lawmakers who asked the question in earnest as to why the debate on this issue can be so vituperative, they need only have paid close attention to one subtle but significant choice of words in the testimony of Professor Pamela Samuelson when she was asked about the matter of online piracy.  Samuelson, the lead author of The Copyright Principles Project, stated that individual artists are at “some disadvantage” in protecting their rights on the internet.  Some disadvantage?  Like a lone Boy Scout would be at some disadvantage fending off a mechanized armored division.  The thing about consensus is that you can’t ask for it if you’re going to propose a foundation of “principles” predicated on lies and half truths.  The correct answer to the question asked of Professor Samuels is “Individual artists don’t stand a chance of protecting their rights on the internet; they might as well shout their grievances into the next passing hurricane for all the remedies and resources at their disposal.”

He links to this piece by David Lowery:

Chairman Bob Goodlatte (R-Va.) plans a hearing on Thursday before the House Intellectual Property subcommittee to pursue his worthy goal of copyright reform.

The hearing is called “A Case Study for Consensus Building: The Copyright Principles Project” and focuses on a group called the “Copyright Principles Project” that produced a white paper called “The Copyright Principles Project: Directions For Reform.”

There are no creators involved in the Copyright Principles Project at all!  None.  As in not one.

The Internet has democratized creativity, but this group of Big Tech and Big Media companies and the lawyers and academics who love them is about as undemocratic a “consensus” as any artist could imagine.

Creators are the most affected by the “Project’s” many proposed changes to copyright law. But creators were apparently not even considered as eligible to participate in discussions with these elites.

Let me give you one small example from the many proposals — copyright registration and orphan works. Had they been included, photographers could have explained that they typically take hundreds of photographs in a single photo session. The registration recommendation in this report would require photographers to register each and every photograph with a government registry to protect against “orphaning”— the use of a copy of their works by someone who can’t seem to find them.

This registration idea has been around for quite a while. The pitch to artists is never from other artists — it’s usually pitched as a good thing because the Internet would unleash a torrent of untold riches if people could just find you. This must be someone’s idea of a joke, because if the Internet has unleashed anything on artists, it is not a torrent of people trying to pay us. It’s another kind of torrent — a Bit Torrent.

This registration issue is tricky — they can’t condition the right to copyright itself on registration because I’m told that would probably violate international law and land the U.S. in yet another arbitration (remember the Fairness in Music Licensing Act?). So a registration just allows your work to be exploited if the people who want to use the work can’t find you — even if they look really, really, really hard. That idea is something that any artist could have told the “Principles” elites was … well, incorrect. Had we been asked.

There are plenty of ways to find musicians, songwriters and recording artists right now. The problem isn’t that we can’t be found. The problem is that only the honest people want to look for us.

The market has already produced a solution to this. Artists who want to be found have registered with Getty Images, ASCAP, Flickr, BMI, SESAC, SoundExchange or Deviant Art and can continue to do so. Who benefits, then, from this registration requirement?

Big Tech. A Google lawyer told the Copyright Office that Google was interested in millions of orphans. In these recommendations, the person doing the looking has no incentive to actually find the artist because they benefit economically by failing to find artists.

I wonder.  

Is it really fair to say that “only the honest people” want to, or can, locate the authors of original works who are not part of the syndicates listed in that quote?  It is problematic, at first blush, that by the second click into his article Lowery ends up arguing over how his rights would be limited if a vile person made unauthorized use of pictures from one’s family photo album.  ”So are we all gonna have to register our family photos with Big Brother in order to keep control of them?,” he asks.

I was following until about … there.  Family photo album scenarios, it seems to me, are the last refuge of scoundrels in copyright debates.  But there is no question that digitization has made a mess of things, and that creators have less control over their works than ever before — something we all noticed a long time ago.  Lowery is on firmer equitable ground when he complains as follows about the practical ineffectiveness of the DMCA for photographers and songwriters:

For the uninitiated this is a-Whack-a-Mole game of “notice and shakedown” that creators can never win. I personally have to issue hundreds of take down notices to infringing sites each day (or hire a service to do this for me). Most of these sites then claim to remove the infringing file, but often within hours the identical file re-appears on the same site.

What to do?

One approach might be to start at Square One and take a serious look at what the Copyright Act at least purports to protect, and what it doesn’t, so that we don’t get bogged down in arguments about baby .  Next month I have oral argument in Ochre LLC v. Deutschebank, an appeal from a case where the Southern District of New York deemed a line of fairly famous, recognizable, original and creative lighting fixtures by my client, Ochre LLC — called the “Arctic Pair” — unprotectible on the ground that they are just lighting fixtures.  For all practical purposes, I argue on the appeal, the present position of the courts is that any artistic (sculptural) work that may have the property of providing illumination cannot, by virtue of shedding light, be a creative work — and that this was never the intent of Congress.  We seek to overturn both the dismissal of the copyright claim under Fed. R. Civ. P. 12(b)(6) and the original determination of the Copyright Office that the work could not be registered.

On the other hand, I also represent the creators of photographic works.  In another case that I am not going to specify here, my client is somewhat bogged down in problems arising from the status of his registration, or inability to register, some of his photographs (which he undertook to do prior to engaging me).  The registration of works, as Lowery notes, is the be-all and end-all of copyright remedies.  He also states, however, the following:

Let me give you one small example from the many proposals — copyright registration and orphan works. Had they been included, photographers could have explained that they typically take hundreds of photographs in a single photo session. The registration recommendation in this report would require photographers to register each and every photograph with a government registry to protect against “orphaning”— the use of a copy of their works by someone who can’t seem to find them.

This is an odd juxtaposition to me.  The way many courts interpret current law, if Da Vinci stuck a night light in the Mona Lisa’s mouth, he could not own the copyright in his painting of her if it were created and published in 2013.  On the other hand, photographers have an annoying problem:  It’s a real pain for them to go through the trouble of registering the hundreds of “creative works” they create in a single photo session.

I’m a photographer too, okay?  I put my pictures on Flickr and sometimes people want to use them, and in return for attribution, I let them.  The fact is, some people think some of the shots are pretty good — in many instances they are, I also believe subjectively, truly creative and original.  So I am entitled to control their use, even though I publish them for free.  Sometimes people use them without permission, and this makes me sad, but I do not try to make a living from my photos.  I merely seek to brighten your dark lives with my creative brilliance.

Other people, however, do want to make a living taking pictures.  Power to them.  But especially in light (*cough*) of the situation faced by my client, Ochre, which can’t even register truly original creative works that cost a fortune to create, it’s a little hard to feel sorry for people who have to go through the trouble of registering all those photographs, those hundreds of creative finger-twitches, in order to be able to protect them fully.  In fact, as David Newhoff argues, somewhat seeming to miss the implications of his own words:

So, again, the premise issuing from the chamber and reverberating on Twitter is predicated on smart sounding academic theory (i.e. simplifying a law) entirely untethered to a real or pragmatic world view.  The premise being proposed is that copyright ought to be easier to understand for any layman because it is now “everyone’s issue” because in the digital age, “we are all authors.”  This was the oft-repeated theme of live tweets by Gigi Sohn, President and co-founder of Public Knowledge and echoed at least once by Mike Masnick of TechDirt.  Of course, the truth is that just because the internet fosters a lot of production of stuff, that doesn’t make us all authors anymore than corporate softball teams make us all ballplayers.  On my best day, I don’t write as well as many authors I admire deeply; and on my worst day, I’m better than many a citizen whose claim to authorship is the possession of a smart phone and a pair of thumbs. . . .

[H]ad there been any creators asked to testify, they would have clearly demonstrated that academics like Professor Samuelson don’t know the first thing about the production of creative works or the nature of protecting them.  Somehow, all this translates into the failure of congress to understand the internet, but maybe it’s not that so much as some of the ideas being presented are kinda dumb and transparently self-serving.

I don’t know how the fact that we’re all “authors” does or does not cut across the geometric lines that connect and dissect the various interests aligned and opposed with respect to copyright.  I do think, however, that my example of what seems like an inexplicable inequity, i.e., the Arctic Pearl-vs.-snapshot copyright dichotomy, suggests that we’re not even starting with a realistic reckoning of what constitutes creativity, much what it make take properly to protect it.  Rather, we’re fighting — just as we see in trademark — over extant rent-collecting regimes that reflect all sorts of historical and technological developments that have nothing to do with fairness at all.

That’s a mistake.  We should have creators at the creation of any new copyright regime, and we should listen to what they have to say.  But we should also prepare them to defend why their creativity is as entitled to the range of protection they demand for it.  I don’t know how to measure units of creativity (are they like the “utiles” we learned about in economics?).  Newhoff, rejecting what he clealy views as a copyright-nihilism point of view that argues for simplicity but essentially stands for a very weak copyright regime indeed, writes, “More to the point, though, if technology has made the world of consuming content more complex, is it disingenuous to suggest that revising copyright to balance the rights of authors and consumers in the digital age would not produce an even more complex set of statutes?”

I think it would. But copyright enthusiasts across the arts implicated should be careful what they wish for on that score. The debate could prove very enlightening.

The headline: “Canada to trademark [sic] ‘winter’ for 2010 Olympics.”
The funny thing is I thought they already had a pretty good monopoly on winter!

Parallel lines never intersect, do they?

The preamble of the Lanham Act Section 2 is followed by six lower-case–lettered sections, the fifth of which contains four separately numbered “grounds” on which it is permissible to refuse registration. No form of the word “generic” is to be found anywhere in any of them. How, then, does the USPTO prevent registration of generic names of the goods for which the marks are intended to be registered? . . .

We all know that a thermos keeps liquids warm or cold substantially longer than if the soup or soda were kept in a non– vacuum-insulated container. Many apparently believe that THERMOS is one of the leading brands of thermos. This seems nuts.

John Welch links to this fantastic article in the Trademark Reporter by Anthony L. Fletcher, discussing the critical — and, like so much in trademark law, vaguely described — legal distinction between generic and descriptive trademarks (or rather, in the case of genericness, would-be trademarks):

Most trademark lawyers are aware that generic names are unavailable for trademark protection under any circumstances, while merely descriptive terms are available for trademark protection if, and only if, they have acquired secondary meaning in the marketplace. “Secondary meaning” arises from use of a descriptive, or otherwise unprotectable, word or phrase in such a way, for a sufficient duration, and with enough frequency, that it becomes uniquely associated with the user and/or the user’s product(s).

It is “secondary” in that it refers to an acquired, rather than to an inherent, meaning. Accordingly, it is critical to understand the “generic”–“descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created. . . .

Unfortunately, the consensus of United States legal authority on what is generic rather than descriptive, and vice-versa, has become somewhat discordant. . . .

On the face of things, it appears that generic words are most likely to be nouns, while descriptive terms are more likely to be adjectives. On the face of things, there are also hundreds of judicial and administrative holdings on what is generic and what is not. But what is needed is guidance for determining whether a term is  generic or descriptive. That is not to say it hasn’t been attempted.

And here I break off for two reasons (copyright infringement not being one; I’m nowhere near the fair use threshold).  One is that you, dear reader, need a break.  And the other one is that what follows is worth its own separate block quote:

Perhaps the most colorful, and surely one of the most widely known, attempts at such guidance is: “A generic name is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species.”  Sadly, while the  formulation has literary merit, there is little reason to believe that jurists, jurors, or attorneys are adept at dividing intended brand names between genera and species.

Sweet.

Fletcher’s words here made me think of an unrelated intellectual property debate, including his allusion to literary merit.  I mean the decision in Cariou v. Prince, sadly not reported here in a timely fashion, which raised the topic, especially in the dissent, of what business and how much business the courts have in moving into literary criticism to decide the question of fair use base on transformation in copyright infringement cases.

Related, but too tangential for now.  Let’s revisit that one later.

I actually thought Fletcher’s criticism of this formulation would be, though, it was a tautology:  How do we know if something is generic?  Why, the name refers to the genus of the thing!  But I think that point would border on the tautological as well — in fact, the phrase “tautological standard in trademark law” is probably not only a tautology itself, but is probably, um, “generic,” along with “unpredictable standard in trademark law.” Or have you heard about this LIKELIHOOD OF CONFUSION thing?

Anyway, the article is great, and you have to read it (and I have to read it more, and better.)  Fletcher’s conclusion:

Quite simply, the problem is that it is impossible to foresee with tolerable accuracy where courts, or the USPTO, will draw the line between generic names and descriptive terms. We can probably all agree that “car” is generic and “fast” is descriptive, but what is a “sports car” or “muscle car”? Are they generic or descriptive-generic? “Car” is plainly generic. But if “light beer” is generic, there is no apparent reason why “sports car” can’t be.

He goes on to suggest a handful of approaches to the problem.  They do not, at first blush, simplify matters.  But perhaps, if adopted, they could clarify them — an end sorely to be desired in trademark law.  If it’s going to be this busy, this expensive, this profitable, can’t it be a little more predictable?

Or have I missed the point — again?

Nolo’s Patent, Copyright, and Trademark Blog links to this story here in answering the question, “How do I create a non-infringing board game”?”

Two kinds of analogy, as scrambled by an old and dear friend. Evidently, there is another kind. John Welch writes about a TTAB decision cancelling trademark registrations based on the petitioners use of the mark, for purposes of avoiding a defense of abandonment against the putative senior user, that is not quite trademark use but is “analogous to trademark use.” John writes about the rather thin reed on which the TTAB places the weight of this cancellation for the mark “ALS IK KAN” — Finnish for “All I Can” — by noting that the Board seemed to have done all it could to return the ownership of the mark to a lineal descendant of the senior user. I would have liked to hear more from John about this entire concept of “analogous to trademark use” use. Maybe I will.

Mack Reed puts his finger on it — almost — in the Online Journalism Review:

The Web has made unauthorized propagation of information — whether copyrighted or not — instantaneous and virtually irreversible.

Videos are uploaded, downloaded and re-uploaded under different authors’ names: YouTube users know this from having tried to find the “original” version of some videos, which have been found on sites other than YouTube and recopied several times by users and mashup artists who add their own comments or edits to the source material before YouTubing them.

Millions of bloggers routinely lift information from copyrighted news stories — nearly always with due credit — and repackage it under their own banners, basically aggregating and creating new news content (and ad-driven profit streams) from existing ones. The same goes for copyrighted news photos published to the Web by AP, Reuters and numerous newspaper web sites.

Two factors may be at work in the apparent paucity of copyright lawsuits stemming from such use:

1. since news web sites garner significant traffic from blog links pointing to them, they may be loath to poison the well, let alone alienate the audience by litigating.
2. bloggers get away with sometimes more-than-fair-use republication of copyrighted information because no news organization’s legal department has the resources to chase them.

A possible third reason: such suits won’t stand up in court.

In short, the copyright you secure before selling and posting news video to a news organization’s site, or a share site such as YouTube, may be worth far less in the long run than the paycheck you earn from its initial sale.

I figured he wouldn’t mind an extended excerpt, under the circumstances. But seriously, folks, I think he’s got it right, except maybe with respect to the case he’s actually commenting on, i.e., the lawsuit against YouTube. Why is that?

Well, why won’t most copyright infringement suits for Internet use of material he describes “stand up in court”? One reason is that most of the use being complained of is fair use. With videos, I would say, the fair use defense is probably weakest. As Stanford puts it, “The less you take, the more likely that your copying will be excused as a fair use. However, even if you take a small portion of a work, your copying will not be a fair use if the portion taken is the ‘heart’ of the work. In other words, you are more likely to run into problems if you take the most memorable aspect of a work.” With a video, I’d argue that a very small piece of a video gets to the heart of the matter very quickly. Words, and less so pictures, are easy to recast, and the creative element of a news story reporting a (hopefully) non-fictional event is entitled to a pretty narrow band of protection.

But with a video, there is only that video. Short of the commentary and criticism permit, it’s hard to argue that use of a video is fair use.

Reason two, according to Mack, is the Safe Harbor provision of the Digital Millenium Copyright act. He cites this article by Fred von Lohmann, who writes as follows:

Fortunately, YouTube has an important legal shield that was not available to the old Napster: the so-called “online service provider safe harbors” created by Congress as part of the DMCA. One provision, Section 512(c), was designed to protect commercial Web-hosting services, which feared they might be held responsible for the posting habits of their customers.

…

Because YouTube essentially stores material at the direction of its users, it can find shelter in the same safe harbor that Web-hosting providers do.

The safe harbor works like this: So long as YouTube plays by a few rules, content owners can’t collect damages from it, even if its users infringe their copyrights.

Rule No. 1 is the implementation of a “notice and takedown” system to respond to infringement notices from copyright owners. YouTube, of course, has this in place and takes down material once properly notified by an owner that a clip is infringing. Section 512(c)(3) sets out exactly what a copyright owner must include in a takedown notice. . . .

The safe harbor will not protect a Web host if it is “aware of facts or circumstances from which infringing activity is apparent” — in other words, if you make your living providing hosting services to pirates-R-us.com, don’t look to the safe harbor for protection. YouTube doesn’t appear to be sheltering any obvious pirate fleets, so this shouldn’t be an issue.

Hm, I’d say von Lohmann has a little too glibly waved away the “aware of facts” factor here, and he more or less acknowledges the “surely, there could be problems” angle later in the article. Yes, there could be; there almost certainly are. It should not work to say that you are building a business model around, in part, the idea of infringing until you’re told to stop. That is not the idea of the safe harbor provision (as I and a committee of my close friends argued here). Also, the safe harbor provision is meant to apply to ISP’s and web hosting companies, not, in my view, providers of Internet services based on the specific content which, as it turns out may infringe.

Not only is the DMCA fair harbor not meant to do this, but if a court decides that is, guess who will be in Congress tomorrow? And guess what industry pretty much always gets its way in Congress? “Information wants to free” (to use, not to produce) types better not hope for the kind of “won’t stand up in court” victory they’re hoping for.

So I agree with Mack Reed that “this is a case to watch, and that content generators have to learn to live with more “borrowing” because of the Internet. As he points out, they will wisely learn to profit from it and protect themselves technologically to the extent they can. But they’re not giving up the ship so fast on images and videos, and I doubt they should.

Comment at Dean’s World.

Guest blogger Matthew David Brozik

We all knew this day would come, even if not everyone wanted it to: The sponsored top-level domain .xxx is up and running, although addresses in the new sTLD aren’t quite up for grabs. After approval by ICANN in March, sponsor ICM Registry is, as of September 7, accepting (via GoDaddy, natch, among other registrars) applications for .xxx domain names. ICM has established a staggered system for assigning .xxx domain names to applicants, thus:

From September 7 through October 28, two kinds of applicants will be serviced: “Sunrise A” applicants are those with a trademark in the adult entertainment services realm (or, otherwise, a registered non-.xxx domain name used for adult entertainment services—a circumstance that leads to the unfortunately termed “grandfathering” of that domain name); “Sunrise B” applicants are those with a trademark for non-adult-oriented products or services who do not want those marks used as .xxx domain names. Take PepsiCo Inc., for example. (Most people use Coca-Cola as the go-to exemplar, but I’ve long been partial to Pepsi.) PepsiCo Inc., if it wants to make sure that no one else registers “pepsi.xxx,” can pay $199.99 for the first year (slightly less than the $209.99 charged to successful Sunrise A applicants) to obtain that domain name (and then, one expects, have it redirect to pepsi.com or simply let it lie fallow).

Well, how convenient!

The thinking here, evidently, is that the legitimate holder of a trademark for adult-oriented services has top priority for the .xxx domain name that incorporates that mark. Absent such entity, the right of first refusal to register a .xxx domain name is given to the holder of that mark for use in providing non-adult goods and/or services. If both do exist (and apply for the .xxx domain name), ICM will give the domain name to the Sunrise A applicant. (Multiple Sunrise A applications will be resolved by private auction.)

From November 8-25, during the so-called “Landrush” phase, applicants “who don’t qualify for Sunrise A but want to secure a valued .XXX domain name and avoid first come, first served General Availability risks” may apply. Landrush phase applicants need possess no special qualifications (other than being recognized members of the “adult Sponsored Community,” that is). Finally, starting December 6, whatever .xxx domain names are left will be offered to the adult Sponsored Community at large.

But let’s go back a bit, to the part where those who own trademarks used in connection with non-pornographic goods and services can pay to register .xxx domain names, presumably specifically so that no one else will snap up those domain names and perhaps sully the marks. Doesn’t the law already provide these trademark owners a mechanism for preventing such a thing? Why, I believe it does! On the other hand, however, there can be little if any argument that it isn’t worth $199.99/year (and possibly less for each year after the first) to a trademark owner to register the .xxx domain name and thereby safeguard its mark. Two hundred dollars is nothing compared to the cost of litigation. But even a cease and desist letter alone would likely cost more than two hundred dollars (if prepared by counsel, that is). So we’re almost certainly not going to see lawsuits over the likes of pepsi.xxx, kleenex.xxx, or xerox.xxx.

Now, where’s this .law I’ve been hearing absolutely nothing about?

Oops, wrong hashtag — was supposed to be #inta13

Last year there was much Strum und Drang here about INTA — sorry, I mean The I-N-T-A!, which stands for International Trademark Association! now there’s some INTA branding wisdom for ya — annual meeting.  In a series of blog posts (here and here and here), I asked what I thought, consonant with my characteristic self-importance, were important questions to be answered.  The main one was:  Is the INTA a lobbying organization or a professional organization?

You’d think the second, because almost everyone involved is a lawyer.  But while the INTA may be of lawyers, it was not founded by or for lawyers:

The not-for-profit Association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization “to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights.”

So I didn’t even have to ask; after all, I should have known the answer to this question in the first place.  

Indeed: The consensus about the quality of panel discussions is now so widespread that I don’t need to repeat it.  Even the third day’s traditional can’t-miss session — the annual roundup of case law by Ted Davis and John Welch — seemed sparsely populated.  Could that be because the facilities were so very Texas-sized?

Could be, could be.

But that doesn’t explain a phenomenon I observed for the first time ever, though it may have been going on longer than I, naive as I am, had realized:  A lot of people who are serious trademark lawyers, including names I know well, go to INTA every year… but they don’t go to The INTA.

They come to town all right.  They book a room.  But they don’t register for The INTA.  They skip paying four figures to attend panel discussions bearing the titles of cutting-edge issues in trademark law but at which in fact the most pat nostrums are repeated, heads nodding in unanimous agreement — or, maybe worse, mock “disagreement” among the big-firm partners and their alumni who send the big-brand legal business to the law firms that placed them.

I kid the INTA about saying “The I-N-T-A” instead of, you know, “inta” — I kid the INTA because I love it, you know?  But on reflection it seems that the trick of succeeding in the INTA is perhaps in knowing what not to say — at least on the big stage.

This is just common sense if you know on which “side” (i.e., dark or light) your bread is branded.  

Don’t say, “We can’t get away with the meritless threats of Lanham Act litigation on which so many of us have built our ‘brand management’ strategies now that we have to worry about the Streisand Effect” — say, “We’ve found that the best branding is engaging with the consumer!”

Similarly, want to talk about trademark bullying?  Briefly mention two or three examples (oddly enough, using “the same examples you might find mentioned in this article) and conclude that they’re not really bullying (kind of like in that article, actually!) (and no — don’t cite the article!  Duh!).  Apologize for not discussing any actual examples of trademark bullying because doing so might offend a the-INTA member company, or, aw shucks, one of my clients, wouldn’t you know?  (This actually happened – again resolving, definitively, my original dumb question.)  Then come around to the edgy, original conclusion that maybe we shouldn’t write dumb cease and desist letters any more — you know, what with these crazy kids and their Intertubes and all.

It’s easy to crack wise, but the reason, Mr. Wiseguy Blogger, those guys are up there on the panel and you are not is that the people on the panel understand what to say and when to say it.  And when not to say it.

And, not to get to all Kurt Gödel about this, but you.  Do.  Not.

I don’t, I don’t!  I can’t; I won’t.

But I loved INTA this year!  In fact, the fun thing about this year’s annual meeting for me was not The INTA at all — it was the UN-TA.  No, it doesn’t stand for anything, so it’s more like “Un-TA,” but I am going for verisimilitude here.

There are traces of the un-TA at The INTA, actually.  It’s at Table Topics.  (Since I’m just a blogger who represents non-the-INTA members I don’t have to worry that by saying this someone’s going to do to Table Topics what they did to the old “INTA list,” right?)  I love Table Topics; the INTA even let me moderate them a couple of times.  And at Table Topics, a whole bunch of real trademark lawyers from firms and companies of lots of different sizes, including big ones, sit down over breakfast or lunch at the central conference area and talk about what we do in the trademark field.  We acknowledge our clients’ limitations, goals, budgets; we acknowledge our own.  We listen, we learn and, well, yeah, we laugh!  (Mostly we laugh at the aluminum-foil “trade dress” of the kosher meal they eventually bring out for LIKELIHOOD OF CONFUSION®.)

Lots of big clients and big-firm lawyers participate in Table Talks at the INTA, but don’t get me wrong — not panelist types, not so much.  Committee chairmen, board members of the INTA — I can’t recently remember seeing too many of them at Table Topics.  I suspect they eat a lot better during meals at the annual meeting!  

There’s a point where the ground is such a long way down that there’s no good time or place to tell it like it is… at least not one that just anyone can sign up for!

Indeed, the best of the un-TA is experienced at events like Meet the Bloggers and the Trademarks e-List reception.  While the former event is cosponsored by the rare likes of chaps like John Welch and Marty Schwimmer who are allowed at the grown-up table at the INTA despite maintaining dogged independence, it is the crowd you meet at these receptions that makes un-TA worth attending no matter where it’s held.

These events, these folks, are, well, “inta”-INTA.  At these “events,” there might be music playing, but it’s not blaring so loud that you can’t hear yourself talk.  Because the people who came, came to talk.

And to listen.

They love their work.  They love trademarks.  They love serving their clients — big, little and in-between.

They love winning, they hate losing for those clients.  But they’ll talk — we’ll talk — and we’ll listen to each other’s talk, the lusty, beery talk of real lawyers who have real clients, or those who want to listen to them, of wins, of losses, of office actions and common-law rights.  We drink and we laugh and we talk the good, the bad and the ugly in the work we do and how we think we might get more of it… and where we know to look, and where not to.

Is this really un-TA?

No, I’m getting old myself, you know; and I says it’s INTA and I say it “inta.”

And I love INTA.  It’s open to everyone who knows what he’s talking about, wants to learn or actually cares with respect to trademark law.  It’s not for everyone, just like this blog is not for everyone.  It’s only for those who want it.  And look, there are plenty of other things to value, and I don’t have a problem with the INTA for valuing those things over ideas, engagement — real engagement, not corporatized simulated engagement — and even a little discomfort along the way.  It’s a damned good living if you can hack it the other way, and getting all exercised about trademarks and free speech and the problems with a trademark  law system that often smothers competition rather than protecting it may or may not put food on your table as readily.

And it’s true that most of the “inta” folks may never be elevated to that place where only those-who-know-what-not-to-say are allowed.

But maybe that’s the reason — the fact that some of us just don’t know when to shut up or how exactly to play the game or even necessarily where the field is located — maybe that’s why, when we do say something, someone is actually listening, and maybe even hearing!

As opposed to, well, just saying things . . . the right things; the judicious things; the smart things.

See you — and hear you — in Hong Kong!

First posted August 4, 2010.

I kvetch a lot about the mania for dubious “IP enforcement” by government agencies such as New York’s Metropolitan Transit Authority, which really should both know better and which have superior options for utilization of public resources.  But here’s a topper:  The FBI has written to Wikipedia demanding that the online reference work remove its photograph of the Bureau’s seal.  Huh?

The FBI Seal

Here’s the FBI’s letter:

It has come to our attention that the FBI seal is posted, without authorization, on Wikipedia at the following site: http://en.wikipedia.org/wiki/File:US-FBIShadedSeal. As the site itself notes, “Unauthorized use of the FBI seal . . . is subject to criminal prosecution under Federal criminallaw, including 18 U.S.C. 701.” The FBI Seal is an official insignia of the Department of Justice. Its primary purpose is to authenticate the official communications and actions of the FBI. Unauthorized reproduction or use of the FBI Seal is prohibited by 18 United States Code, Section 701, which provides:

Whoever manufactures, sells, or possesses any insignia, of the design prescribed by the [Department head] or any colordble imitation thereof, or photographs, prints, or in any other manner makes or executes any engraving, photograph, print, or impression in the likeness of any such insignia, or any colorable imitation thereof, except as authorized under regulation made pursuant to law, shall be fined under this title or imprisoned not more than six months, or both. . . .

The FBI has not authorized use of the FBI seal on Wikipedia. The inclusion of a high quality graphic of the FBI seal on Wikipedia is FBI particularly problematic, because it facilitates both deliberate and unwitting violations of these restrictions by Wikipedia users.

The purpose of this letter is to advise you of these legal requirements and to seek your compliance with the law by removing the, F13I Seal from the above site and any other sites under your control on which it appears. I Please remove the FBI Seal from the Wikipedia site(s) within 14 days of receiving this letter and notify us of your compliance in writing at the following address: . . . Failure to comply may result in further legal action. We appreciate your timely attention to this matter.

Not the FBI Seal

Wow.  Good thing these guys are protecting us from all that… stuff out there, huh.

Dumb, dumb, dumb.

CNN’s article says “Wikipedia isn’t backing down,” and quotes my online friend Mike Godwin — just the man for the job — who, as Wikimedia Foundation’s general counsel, wrote back to the FBI and told the G-Men to stop being so grimly silly.   ”In short, then, we are compelled as a matter of law and principle to deny your demand for removal of the FBI Seal from Wikipedia and Wikimedia Commons.”

What’s Mike’s argument, exactly?  Back to the CNN report:

The FBI’s deputy general counsel, David Larson, cities a particular law that says duplicating an official “insignia” is illegal without permission. But Wikipedia strikes back on that point, saying the FBI redacted the most important part of that U.S. code, which defines an insignia as “any badge, identification card, or other insignia.” “Badges and identification cards are physical manifestations that may be used by a possessor to invoke the authority of the federal government. An encyclopedia article is not,” Wikipedia’s letter says. “The use of the image on Wikipedia is not for the purpose of deception or falsely to represent anyone as an agent of the federal government.”

Works for me.  Actually, Mike, in his colorful way, doesn’t merely observe that the FBI left a bit out.  He writes: “While we appreciate your desire to revise the statute to reflect your expansive vision of it, the fact is that we must work with the actual language of the statute, not the aspirational version of Section 701 that you forwarded to us.”  Heh.

More hits:

In your letter, you assert that an image of an FBI seal included in a Wikipedia article is “problematic” because “it facilitates both deliberate and unwitting violations” of 18 U.S.C. 701. I hope you will agree that the adjective “problematic,” even if it were truly applicable here, is not semantically identical to “unlawful.”

Oh, I was sure he was going to say, instead, “I hope you will agree that the adjective ‘problematic,’ as a basis for law enforcement, is ‘problematic.’”  But I like his, too.  More:

As the leading case interpreting Section 701 points out, “The enactment of § 701 was intended to protect the public against the use of a recognizable assertion of authority with intent to deceive.” United States v. Goeltz, 513 F.2d 193 (1975). Our inclusion of an image of the FBI Seal is in no way evidence of any “intent to deceive,” nor is it an “assertion of authority,” recognizable or otherwise. If you read the cases construing Section 701, you find they center on situations in which defendants represented themselves as federal authorities. I think you will be compelled to agree that the Wikimedia Foundation has never done this.

Yeah — one thing we can agree on is Wikipedia isn’t an authority on anything!

Good work here.  Presumably the FBI can find other outlets for its creativity.

A little off topic, but not so much — a slice of life in the law over at Likelihood of Success.

They’re having trouble assimilating the concept of worker Yao Ming in the People’s Republic of China. Of course most of us have trouble assimilating someone who’s 7’5″ (or so); all the more so in China, I suppose. Not that they haven’t tried.

But this is ridiculous.

I like this from Jonathan Rogers:

On the YouTube blog, the company posted an announcement about a deal struck with many music publishers. Now, when users upload videos with background music that is copyrighted music, instead of begin taken down, if it belongs to certain publishers, an ad will play, and at least some of the revenue sent to that publisher to pay for the royalties that should be paid. . . .

My problem with this is that it only further to cloud the layman YouTube user’s understand of proper copyright music use in videos. Google tried to educate users with a cute video. But you still see people upload full songs with nothing but a picture of the artist then post in the comments “COPYRIGHT NOTICE – I DONT OWN THIS MUSIC NOR CLAIM TO, DONT TAKE THIS DOWN OR SUE ME”. There is a terrible lack of understanding about what copyright protects with most users.

Okay, I don’t love it, I like it.  I like it because I have also written at length about the way copyright enforcement and policy feeds back into the public’s understanding of, and willingness to comply with (or, if you must, “buy into”) intellectual property laws, and why that matters.

In this case, however… “meh.”  I think YouTube had to come to an accommodation with music publishers on this knotty problem.  There’s a limit, especially in a bilateral context such as this one (holding the “publishers” as one “side”), to how much the parties can do to both come to an agreement and make this an effective “teaching moment.”

If you disagree, though, SUE ME!