Maggie Chon on IP and Critical Theories

I tend to approach IP law primarily through a law-and-economics lens, but I enjoy learning about how scholars with different methodological toolkits tackle the same subject matter—especially when their work is clear and accessible. I was thus delighted to see a draft chapter by Margaret Chon, IP and Critical Methods, for the forthcoming Handbook on Intellectual Property Research (edited by Irene Calboli and Lillà Montagnani). Chon provides a concise review of critical legal theory and its application to IP law.

According to Chon, critical theory includes a critique of liberal legal theory as based on the fallacy that legal institutions fairly reflect constituents' interests (as reflected in the marketplace or ballot box). Instead, the interests of privileged or empowered social groups are over-represented, and institutions contribute to these inequalities to the extent that enduring change requires reimagining these institutions themselves. Of course, as she notes, "critical theory would not exist without some belief (however thin) that law and legal systems contain some of the tools necessary for structural transformation."

Chon argues that one need not be a self-identified Crit to engage in critical methodology, and that many IP scholars have stepped closer to critical method by moving from doctrinal to structural analysis, and by "perform[ing] this structural analysis with attention to power disparities." And she gives a number of examples of the influence of critical theory across different areas of IP.

For example, Peter Drahos and John Braithwaite's Information Feudalism: Who Owns the Knowledge Economy? focuses on reducing the asymmetrical power between corporations and consumers. Amy Kapczynski's The Access to Knowledge Mobilization and the New Politics of Intellectual Property proposes a radical revisioning of social systems. Careful attention to power dynamics in copyright institutions is evident in Debora Halbert's The State of Copyright: The Complex Relationships of Cultural Creation in a Globalized World and Jessica Litman's Digital Copyright. For an examination of "the historical uses of racialized trademarks to consolidate a white national identity in the US in the late 19th century," Chon recommends Rosemary Coombe's The Cultural Life of Intellectual Properties: Authorship, Appropriation, and the Law. And she points to Keith Aoki's work on plant genetic resources and Boatema Boateng's work on traditional knowledge as examples outside the "big three" areas of IP.

For those looking for additional reading on innovation and inequality, the online readings from Barton Beebe and Jeanne Fromer's NYU colloquium are a good place to start. And for Stanford Law students, you can sign up for my spring reading group!

Data Driven Creativity

My school started much earlier than my kids' school this year, so I spent a couple weeks at home while the rest of the family visited relatives across the country. I am not too proud to admit that I bingewatched an obscene amount of TV during the two weeks they were gone while I was completing some writing projects. It's really the first time I have done so; while I have shows that I like, I rarely get to watch them all at once, or to pick the next one on the list in rapid succession.

So, it was with a new interest that I enjoyed The Second Digital Disruption: Data, Algorithms & Authorship in the 21st Century by Kal Raustiala (UCLA) and Chris Sprigman (NYU). A draft of the article is on SSRN, and they blogged about it in a series of posts at Volokh Conspiracy. Here is the abstract:

This article explores the intellectual property ramifications that flow from the explosive growth of mass streaming technologies. Two decades ago rising internet usage led to what we call the first digital disruption: Napster, file-sharing, and the transformation of numerous content industries, from music to news. The second digital disruption is about the age of streaming and, specifically, how streaming enables firms to harvest massive amounts of data about consumer preferences and consumption patterns. Coupled to powerful computing, this data—what Mark Cuban has called “the new gold”—allows firms such as Netflix, Amazon, and Apple to know in incredible detail what content consumers like and how they consume it. The leading edge of this phenomenon—and the primary vehicle for our examination—is the adult entertainment industry. We show how Mindgeek, the little-known parent company of Pornhub and the dominant player in pornography today, has leveraged data about viewing patterns to not only organize and suggest content but even to dictate creative decisions. We first show how the adult industry adapted to the internet and the attendant explosion of free content. That story aligns with many similar accounts of how creative industries adapt to a loss of control over IP by restructuring and recasting revenue streams. We then show how content streaming firms have used data to make decisions about content aggregation, dissemination, and investment. Finally, we consider what these trends suggest for IP theory and doctrine. A key feature is that by making creative production less risky, what we call “data-driven authorship” drives down the need for strong IP rights.

I thought the discussion about how data drives what to create to be fascinating, and the article is well worth a read. I think the perfect example of what the authors are describing is the Netflix movie Bright, in which Will Smith plays a cop who teams up with an Orc on the LA Police. The movie was critically panned. Rotten Tomatoes: 26%. But viewers seem to like it a lot: Rotten Tomatoes Audience Score: 84%. Netflix is surely on to something here.

I could certainly see it playing out as I watched. I watched "The Five," a show by one of my favorite authors, Harlan Coben. So then Netflix gave me nothing but mysteries and suspense to watch, plus another show by Coben, Safe (both were great, by the way). But I'm not really a mystery show person - I like sci-fi. So, I watched one show, and then the suggestions got weird: do I like mystery? sci-fi? sci-fi mysteries? I wound up having to dig a bit for the next show.

But here's the interesting thing: the quality of the shows varied wildly, even among the genres that I liked. The writing, acting, editing, and direction mattered. I don't know about the Mindgeek and porn clips, but I will note a couple distinguishing factors. First, there is likely a...er...utilitarian factor associated with those works; people are not watching for the articles, as it were. Second, the works are much shorter; it is much easier to have a highly focused 15-25 minute clip than a 10 episode series. Even with these differences, I suspect viewers have their preferences about what they see in the different clips with the same data driven attributes.

My broader point, then, is that how we consider the effect of data driven works will depend a lot on how we view creativity. The data certainly reduces the creativity in certain major plot points, as well as the quantity of different types of works. But to some extent studios have always done this, only with rules of thumb and intuition rather than actual knowledge. In that sense, data will democratize creativity - if viewers want more women in better roles, there will be more women in better roles; no need to rely on a male studio executive's views on the matter.

Beyond selection, though, I suspect there is still room for surprise, storytelling, differentiation, and other forms of creativity. Consider Bright: write what you want, but it just has to star Will Smith, include the police, and feature orcs and elves. At the limit, too much data may constrain creativity, of course - the more you add, the less you can create.

To be clear, Raustiala and Sprigman don't say anything that contradicts my intuitions here. They make clear that creativity is on a continuum, and that data merely slides to one side. But they do question how viewers will perceive works, and it is there that I disagree with them. I suppose that we could hit that limit where everything is automated, but my gut says that despite having preferences for particular story aspects, viewers will always be able to separate the wheat from the chaff (though not the way I would - as just about every American Idol vote shows) and thus will always look for something new and different within their preferences. At least, I sure hope so.

Yochai Benkler on Innovation & Networks

Yochai Benkler is a giant within the intellectual history of IP law; some of his work will surely end up on my Classic Patent Scholarship page if I expand it to post-2000 works. Even though I don't agree with all of his conclusions, I think IP scholars should at least be familiar with his arguments. For those who haven't read his earlier works—or who just want a refresher on his take—you might enjoy his recent review article, Law, Innovation, and Collaboration in Networked Economy and Society, 13 Ann. Rev. L. & Soc. Sci. 231 (2017). Here is the abstract:

Over the past 25 years, social science research in diverse fields has shifted its best explanations of innovation from (a) atomistic invention and development by individuals, corporate or natural, to networked learning; (b) market-based innovation focused on material self-interest to interaction between market and nonmarket practices under diverse motivations; and (c) property rights exclusively to interaction between property and commons. These shifts have profound implications for how we must think about law and innovation. Patents, copyrights, noncompete agreements, and trade secret laws are all optimized for an increasingly obsolete worldview. Strong intellectual property impedes, rather than facilitates, innovation when we understand that knowledge flows in learning networks, mixing of market and nonmarket models and motivations, and weaving of commons with property are central to the innovation process.

Note that the shift Benkler is describing is a shift both in scholars' understanding of innovation and in the nature of innovation itself—particularly due to changes in organizational structure made possible by technologies such as the internet. The optimal innovation policy 100 years ago was likely different from the optimal innovation policy in today's more networked economy. To be sure, historical innovation studies can still be quite illuminating—but it is always important to consider how applicable the conclusions are likely to be in the modern context.

Abstraction, Filtration, and Comparison in Patent Law

Last April, I had the good fortune to participate in a symposium at Penn Law School. The symposium gathered a variety of IP scholars to focus on the "historic" kinship between copyright and patent law. That kinship, first identified in Sony v. Universal Pictures, supposedly shows parallels between the two legal regimes. I use scare quotes because it is unclear that the kinship is either historic or real. Even so, there are some parallels, and a collection of papers about those parallels will be published in the inaugural issue of Penn's new Law & Innovation Journal.

My article is about the use of abstraction, filtration, and comparison (a distinctly copyright notion) in patent law. I have cleverly named it Abstraction, Filtration, and Comparison in Patent Law. A draft of the article is now on SSRN. Here is the abstract:

This essay explores how copyright's doctrine of abstraction, filtration, and comparison is being used in patent law, and how that use could be improved. This test, which finds its roots in the 1930s but wasn't fully developed until the 1990s, is one that defines scope for determining infringement. The copyrighted work is abstracted into parts, from ideas at the highest level to literal expression at the lowest. Then, unprotected elements are filtered out. Finally what remains of the original work is compared to the accused work to determine if the copying was illicit.

This sounds far removed from patent law, but there is a kinship, though perhaps one that is not so historic and a bit hidden. The essence of the test is determining protectable subject matter. These same needs permeate patent law as well. This essay explores how the test is implicitly used and should be explicitly used.

With design patents, the test might apply as it does in copyright, with functional elements being filtered out during infringement. Current precedent allows for this filtering, but not clearly or consistently. With utility patents, the abstraction, filtration, and comparison happen earlier, during the test for patentable subject matter. Here, the comparison is with what is conventional or well known. The essay concludes by discussing why the application is different for design and utility patents.

I think the article is interesting and brings some useful insights into how we should think about patentable subject matter, but you'll have to be the judge.

Use Based Copyright Terms

I didn't blog last week because, well, I was at Disneyland. But I love IP, and when you're a hammer, everything is a nail. So, I couldn't help but think as I looked at the gigantic Mickey Mouse on the Ferris wheel that things are going to start getting messy when the copyright in Mickey runs out.

It occurs to me that serial, long term uses of copyrighted works are different than one time publications. To the extent that copyright is intended to incentivize investment in creative works, then losing protection over time can limit the incentive to develop quality long term work.  I'm not just talking about Mickey - Superman (and the additional complication of rights clawback) and other serial comics create issues. Star Trek is 50, Rocky and Star Wars are 40, and even Jurassic Park is 25 years old. The solution we got to this problem, a longer term for everything, was not the right one. A better solution is that terms should last as long as copyrights are in use, plus a few years. Works that are simply "sold" without any new derivative work would be capped, so works without improvement could not last forever.

Now, this is not to say there aren't costs to protecting copyrights while they are still in use. There is a path dependency that can reduce incentives to come up with new works (in other words, bad sequels instead of new creativity). There is also value associated with the public being able to use works in their own ways.

I'm personally not worried about either of these. On the first, there are plenty of incentives for new entrants to create new works (we got Star Trek, then Star Wars, then Battlestar Galactica (I and II), and now the Expanse), and even serial works become stale after a while (there was no Rocky 50, as some parodies predicted). On the second, I think it is inconsistent with the first concern to worry about path dependence while also worrying that others should be able to use the works. Of course, fresh eyes can bring new ideas to the expression, but hopefully the original owners do that. At this point, non-utilitarian concerns come into play. As between a party who has invested in making a work valuable over a long period of time and a party who would like to use that value, I side with the investor and say newcomers can create their own new value. I realize that many disagree with me on this point. That said, I think there are some noncompetitive uses - fan fiction, say - that can bring new ideas and allow some new works.

Note that a use-based term cuts both ways. As Paul Heald has demonstrated, there is a significant drop in availability for older books that are still within the copyright term. A use-based rule would either end the term, or perhaps create a commercialization bounty similar to that proposed by Ted Sichelman for patents.

A great idea, right? Except, I thought no way that nobody else looked at Mickey and thought the same thing. So, at the IP Scholars Conference last week (which was great, by the way), I asked my colleague Shyam Balganesh from Penn about it, and he didn't even blink before saying that Landes and Posner wrote an article 15 years ago called Indefinitely Renewable Copyright, located here.

As you would expect from these two authors, they detail the costs and benefits of copyright terms, and they provide empirical evidence that showed how shorter copyright terms led to very few renewals. The primary divergence from my idea is that I would allow a challenge based on lack of use, whereas Landes and Posner seem to assume that use is synonymous with registration (as their data shows). But I can imagine times when parties renew but then do not use their works. Thus, the system should look a bit more like trademarks.

I've done no literature review, so it's entirely possible that others have written about this. If you wrote or know of such an article, feel free to pass it along, and I'll add it here for posterity.

#IPSC18 Preview: General IP

This week I've been previewing all 140+ abstracts for the 18th Annual IP Scholars Conference next week at Berkeley, with patents & innovation on Monday, copyright on Tuesday, trademarks on Wednesday, and design/trade secrets/publicity yesterday. Here are all the remaining panels, in which multiple areas of IP are combined (either in individual papers or across the panel). Looking forward to seeing everyone next week!

• Breakout 2 – IP History and Theory
• Stephanie Bair – Stress and sleep deprivation disproportionately impact disadvantaged groups and impact their ability to innovate, contributing to IP inequalities.
• Carys Craig – IP law requires a critical legal studies approach that transcends its disturbed economic framework and injustices rather than couching critique within its terms.
• Jeremy Sheff – Recognizing that Jefferson's view of IP was actually within the natural law tradition can open debates across the utilitarian/Lockean line.
• Toshiko Takenaka – Industry 4.0—based on non-physical information—suggests patent law is outdated.
• Breakout 3 – IP and Creativity
• Jeanne Fromer & Mark Lemley – Play is important to innovation, and patent and copyright laws devalue play by failing to see that creations of play are sometimes important enough not to protect.
• Sean Pager – IP norms scholars should learn from critiques applied to earlier waves of "law & norms" scholarship.
• Andres Sawicki – Although IP scholars focused on the economics of public goods and those focused on psychological and sociological research on creativity appear to be operating under conflicting assumptions, their work can be integrated.
• Christopher Sprigman – Adult entertainment industry and the digital revolution.
• Breakout 4 – Old and New Theories of IP
• Shyamkrishna Balganesh – Courts have been (and should be) at the center of copyright law-making, despite the copyright statute.
• Uri Hacohen & Peter Menell – Deceptive endorsement (fake followers, forged reviews) should be subject to legal liability.
• Irina Manta – Public choice theory helps explain the disparity between criminal sanctions in patents and in other areas of IP.
• Peter Menell – Courts' growing and uncritical use of purported kinship between different areas of IP masks critical differences.
• Breakout 6 – IP and Academic Institutions (2 papers on patents, 2 on copyrights)
• Stefania Fusco, Francesco Lissoni, Catalina Martinez & Valerio Sterzi – A new dataset of university patent transfers shows the impact such assignments have on innovation and whether universities have followed the monetization trends of other NPEs.
• Ariel Katz & Patrick Pang – Controlled digital lending, a U.S. practice of loaning digital copies of books without permission from the copyright owner, is likely to be legally permissible in Canada.
• Lisa Larrimore Ouellette & Andrew Tutt – Based on royalty-sharing policies from 152 universities, we do not find that higher royalties for faculty scientists lead to more invention disclosures, patent applications, or licensing income, suggesting that many university patent royalties may be misallocated.
• Argyri Panezi – Proposed EU copyright reforms that would make cultural heritage works more accessible online, which are criticized by most European scholars as too modest, are compared with comparable rules in the U.S. and Canada.
• Breakout 6 – AI and IP
• Kathrine Gutierrez – IP protection for certified indices such as LIBOR would encourage their production and limit incentives for index manipulation. (Would a combination of non-IP carrots and sticks be a better solution? Also, why is this part of an AI panel?)
• Andrew Selbst – Explores when governments or businesses might be liable for discrimination by AI decisionmakers. (Andrew is another promising junior scholar; see more here.)
• Charlotte Tschider – AI innovations are difficult to protect with IP. (Though as the abstract notes, AI investment has skyrocketed.)
• Peter Yu – Should there be a new data producer's right to protect machine-generated data? (I'm not sure what Peter's answer is from the abstract, but I haven't been convinced by the "yes" arguments I've seen so far.)
• Breakout 6 – Tort-Tinged IP
• Ben Depoorter & Robert Walker – Attracting litigation is deployed strategically by IP defendants to attain free publicity.
• Mark McKenna & Mark Lemley – Courts should avoid conflating an incumbent's desire to prevent disruption with infringement of an IP right by holding that market disruption is relevant to an IP case only if the disruption was traceable to the act of infringement itself.
• Betsy Rosenblatt – Rules for apportioning IP ownership among multiple creators are compared with apportionment of responsibility among multiple tortfeasors.
• Guy Rub [canceled] – The recent elimination of the laches defense in copyright and patent makes these regimes inconsistent with other areas of law and creates uncertainty and unfairness.
• Closing Plenary
• Tonya Evans – Explores the copyright implications of scarce digital resources, including CryptoKitties (tradable digital cats).
• Deepa Varadarajan & Joseph Fishman – Trade secrecy currently focuses almost exclusively on whether the defendant's innovation process had advantages due to familiarity with the secret, but it ought to also examine the defendant's product. Copyright law offers the best blueprint for improvement.
• Kristelia Garcia & Justin McCrary – Most recorded copyrighted music earns the majority of its lifetime revenue in the first 5-10 years following release, and the societal cost of protection beyond this point likely outweighs the benefit.
• Rachel Sachs – Intermediate innovations in the life sciences ought to be incentivized and regulated differently from end-stage technologies.

#IPSC18 Preview: Design, Trade Secrets, and Right of Publicity

To get ready for IP scholar speed dating at Berkeley next week, I've previewed the panels focused on patents and innovation, copyright, and trademarks. Today: design, right of publicity, and trade secrets (including some notes on other panels where you can also find papers on these topics).

• Breakout 1 – IP Protection for Designs
• Sarah Burstein – Design patent phrase "partial designs" needs clearer definition.
• Mala Chatterjee – Conceptual separability test for copyright useful article doctrine should be whether article remains functionally identical when design element in question is removed.
• Joshua Sarnoff – Design patents should be available only for product that is "useful in itself" (not products useful only in combination).
• Daniel Yablon & Peter Menell – Historical lines between protection for functional and nonfunctional innovation should be restored.
• For design patent damages, see Pam Samuelson & Mark Gergen in Breakout 3 – Infringement and Remedies, and for design patent practice, see Jeanne Curtis & Christopher Buccafusco in Breakout 5 – Patent Practitioners.
• Breakout 2 – Right of Publicity
• Jennifer Rothman – The right of publicity shifted in the late 1970s from a tort-based privacy model to an expanded IP-like right, and it should shift back.
• Mark Lemley – Rothman is right that the broad right of publicity should be cut back to a manageable size, but understanding it has a specific form of IP rather than a privacy right is the better avenue.
• Dustin Marlan – The "persona" in right-of-publicity law should be understood as an individual's social façade or front that reflects the role in life the individual is playing.
• Joel Wacks – Incoherence in publicity rights can be restored by extending copyright's protections for fictional characters to nonfictional identities that have taken on the characteristics of works of authorship.
• Those interested in right of publicity might also enjoy Uri Hacohen & Peter Menell's paper in Breakout 4 – Old and New Theories of IP.
• Breakout 3 – Trade Secrets
• Courtney Cox – Firms can legitimately protect trade secrets through misrepresentations such as posting fake versions of improperly revealed information to obscure which is authentic.
• Sarah Cortes – Over 10M pages of darknet webpages are used to determine the extent of IP exploitation on dark markets, suggesting that existing legal remedies like the DTSA may need reconsideration.
• Amit Elazari Bar On & Peter Menell – Digital whistleblower immunity modeled on the DTSA should prevent CFAA liability based on "unauthorized access."
• Mark Schultz [canceled] – The author's Trade Secret Protection Index shows the relationship between the strength of a country's trade secret laws and patenting activity.
• See also Jacob Sherkow's talk in Breakout 2 – Law, Norms, Forms, and Deepa Varadarajan & Joseph Fishman's paper in the Closing Plenary.

#IPSC18 Preview: Trademarks

The 18th Annual IP Scholars Conference is Aug. 9-10 at Berkeley Law. Monday I previewed the eighteen panels primarily related to patents and innovation, and yesterday I previewed the six panels related to copyright. There are only two trademark-focused panels, and I didn't see any trademark-focused papers on general IP panels.

• Breakout 1 – Trademarks
• Jason George & Lisa Larrimore Ouellette – Trademarks affect innovation in both positive and negative ways, and a full utilitarian analysis of trademark doctrines should consider these benefits and costs.
• Christian Helmers, Carsten Fink, Andrea Fosfuri & Amanda Myers – Well-known U.S. high-tech companies use a "submarine trademark" strategy of filing in foreign jurisdictions that don't publish applications and then filing with the USPTO with protection dating to the foreign filing.
• Daniel Hemel & Lisa Larrimore Ouellette – Effective governance of the "semantic commons" may require strategies external to trademark law.
• Breakout 2 – Trademarks
• Christopher Buccafusco, Jonathan Masur & Mark McKenna – The requirement of secondary meaning for descriptive marks is a costly screen. Building on earlier work on costly screens.
• Jake Linford – Critiques of the "bad faith" prong of likelihood of confusion are misguided in light of theories about how information is transmitted.
• César Ramírez-Montes – EU trademark functionality should be expanded to cover the configuration of services.
• Amanda Levendowski [canceled] – Trademark applications reveal information about surveillance technologies.
• Lisa Ramsey [canceled] – Dilution laws and protections for inherently valuable expression (e.g., descriptive terms, shapes) should fail First Amendment scrutiny post-Tam. Building on lots of her interesting earlier work.