Following the lead of the indefatigable Jennifer Rothman, I’ve posted the following letter to the members of the New York State Assembly and Senate opposing the current draft of the pending bill to replace New York’s venerable privacy tort with a right of publicity. I hope one of them will take me up on my offer to host discussion of the implications of this legislation at the St. John’s Intellectual Property Law Center.
The longer I’ve been teaching the harder I’ve found it to come up with novel fact patterns for my exams. There are only so many useful (and fair) ways to ask “Who owns Blackacre?” after all. So I’ve increasingly turned to real-life examples–modified to more squarely present the particular doctrinal issues I want to assess–as a basis for my exams. (I always make clear to my students that when I do use examples from real life in an exam, I will change the facts in potentially significant ways, such that they can do themselves more harm than good by referring to any commentary on the real-world inspirations for the exam.) In my IP classes there are always lots of fun examples to choose from. This spring, a couple of news reports that came out the week I was writing exams provided useful fodder for issue-spotter questions.
The first was a report in the Guardian of the story of Catherine Hettinger, a grandmother from Orlando who claims to have invented the faddish “fidget spinner” toys that have recently been banned from my son’s kindergarten classroom and most other educational spaces. (A similar story appeared in CNN Money the same day.) Ms. Hettinger patented her invention, she explained to the credulous reporters, but allowed the patent to expire for want of the necessary funds to pay the maintenance fee. Thereafter, finger spinners flooded the market, and Ms. Hettinger didn’t see a penny. (If you feel bad for her, you can contribute to her Kickstarter campaign, or launched the day after the Guardian article posted.) The story was picked up by multiple other outlets, including the New York Times, US News, the New York Post, and the Jewish Telegraph.
There’s one problem with Ms. Hettinger’s story, which you might guess at by comparing her patent to the finger spinners you’ve seen in the market:
The problem with Ms. Hettinger’s story is that it isn’t true. She didn’t invent the fidget spinner–her invention is a completely different device. As of this writing, the leading Google search result for her name is an article on Fatherly.com insinuating that Hettinger is committing fraud with her Kickstarter campaign.
Of course, as any good patent lawyer knows, the fact that Hettinger didn’t invent an actual fidget spinner doesn’t mean she couldn’t have asserted her patent against the makers of fidget spinners, if it were still in force. The question whether the fidget spinner would infringe such a patent depends on the validity and interpretation of the patent’s claims. So: a little cutting, pasting, and editing of the Hettinger patent, a couple of prior art references thrown in, and a few dates changed…and voilà! We’ve got an exam question.
The second example arose from reports of a complaint filed in federal court in California against the Canadian owners of a Mexican hotel who have recently begun marketing branded merchandise over the Internet. The defendants’ business is called the Hotel California, and the plaintiffs are yacht-rock megastars The Eagles.
A little digging into the facts of this case reveals a host of fascinating trademark law issues, on questions of priority and extraterritorial rights, the Internet as a marketing channel, product proximity and dilution, geographic indications and geographic descriptiveness, and registered versus unregistered rights. All in all, great fodder for an exam question.
I’m very pleased to announce that the book project I have been plodding away at for over two years is now under contract with Cambridge University Press. Its working title is Valuing Progress: A Pluralist Approach to Knowledge Governance. Keep an eye out for it in late 2018, and tell your librarian to do likewise!
Bits and pieces of Valuing Progress have appeared on this blog and elsewhere as it has developed from a half-baked essay into a monograph-sized project:
- I presented my first musings about the relationship between normative commitments regarding distribution and the choice of a knowledge-governance regime as the opening plenary presentation at IPSC in Berkeley–these musings will now be more fully developed in Chapter 4 of the book: “Reciprocity.”
- My exploration of our obligations to future persons, and the implication of those obligations for our present-day knowledge-governance policies, used analogous arguments in environmental policy as an early springboard. Deeper consideration of our obligations to the future led me to Derek Parfit’s Non-Identity Problem, at first through the lens of public health policy. Because knowledge governance–like environmental stewardship and global health policy–is a cooperative social phenomenon spanning timescales greater than any single human lifetime, the problem of future persons is one any theory of knowledge governance must engage. I made my first effort to do so at the 2015 Works-In-Progress in Intellectual Property (WIPIP) Conference at the University of Washington, and presented a more recent take at NYU’s 2017 Tri-State IP Workshop. My fuller treatment of the issue will appear in Chapter 7 of Valuing Progress: “Future Persons.”
- Finally, the driving theoretical debate in IP lately has been the one between Mark Lemley, champion of consequentialism, and Rob Merges, who has lately turned from consequentialism to nonconsequentialist philosophers such as Locke and Rawls for theoretical foundations. My hot take on this debate was generative enough to justify organizing a symposium on the issue at the St. John’s Intellectual Property Law Center, where I serve as founding director. I was gratified that both Professors Lemley and Merges presented on a panel together, and that I was able to use the opportunity to more fully introduce my own thoughts on this debate. My introduction to the symposium issue of the St. John’s Law Review forms the kernel of Chapter 2 of Valuing Progress: “From Is to Ought.”
Other chapters will discuss the incommensurability of values at stake in knowledge governance, the relevance of luck and agency to our weighing of those values, the widening of our moral concern regarding the burdens and benefits of knowledge creation to encompass socially remote persons, and the role of value pluralism in shaping political institutions and ethical norms to reconcile these values when they inevitably conflict. The result, I hope, will introduce my colleagues in innovation and creativity law and policy to a wider literature in moral philosophy that bears directly on their work. In doing so, I hope to help frame the distinction between–and the appropriate domains of–empirical and normative argumentation, to point a way out of our increasingly unhelpful arguments about 18th-century philosophy, and to introduce a more nuanced set of normative concerns that engage with the messiness and imperfection of human progress.
I am extremely grateful to everyone who has helped me to bring Valuing Progress to this important stage of development, including Matt Gallaway at CUP, the organizers of conferences at which I’ve had the opportunity to present early pieces of the project (particularly Peter Menell, Pam Samuelson, Molly Shaffer Van Houweling, and Rob Merges at Berkeley; Jennifer Rothman at Loyola of Los Angeles; Jeanne Fromer and Barton Beebe at NYU; Zahr Said at the University of Washington; Irina Manta at Hofstra; and Paul Gugliuzza at Boston University). I am also grateful for the support of St. John’s Law School, my dean Mike Simons, and my colleagues who have served as associate dean for faculty scholarship as this project has been in development: Marc DeGirolami and Anita Krishnakumar. Many more friends and colleagues have offered helpful feedback on early drafts and conversation about points and arguments that will find their way into the manuscript; they can all expect warm thanks in the acknowledgments section of the finished book.
But first, I have to finish writing the thing. So, back to work.
Reports are that Oxford philosopher Derek Parfit died last night. Parfit’s philosophy is not well known or appreciated in my field of intellectual property, which is only just starting to absorb the work of John Rawls. This is something I am working to change, as the questions Parfit raised about our obligations to one another as persons–and in particular our obligations to the future–are deeply implicated in the policies intellectual property law is supposed to serve. Indeed, when I learned about Parfit’s death, I was hard at work trying to finish a draft of a book chapter that I will be presenting at NYU in less than two weeks. (The chapter is an extension of a presentation I made at WIPIP this past spring at the University of Washington.)
Parfit’s thoughts on mortality were idiosyncratic, based on his equally idiosyncratic views of the nature and identity of persons over time. I must admit I have never found his account of identity as psychological connectedness to be especially useful, but I have always found his almost Buddhist description of his state of mind upon committing to this view to be very attractive. So rather than mourn Parfit, I prefer to ruminate on his reflections on death, from page 281 of his magnificent book, Reasons and Persons:
If Parfit is right, then my own experiences, and those of others who have learned from his work, give us all reason to view the fact of his physical death as less bad than we might otherwise–and to be grateful. I can at least do the latter.
The Institute of Intellectual Property has graciously allowed me to share the slide deck from my summer research project on Japan’s trademark registration system. The slide deck includes the text of the presentation in the presenter notes, and you can download it here.
The photo leading this post was taken during my presentation at IIP in Tokyo. It shows me with my favorite visual aid: a bottle of (excellent) mirin bearing one of the contenders for Japan’s oldest registered trademark, Kokonoe Sakura.
A little over a year ago, I was noodling over a persistent doctrinal puzzle in trademark law, and I started trying to formulate a systematic approach to the problem. The system quickly became bigger than the problem it was trying to solve, and because of the luxuries of tenure, I’ve been able to spend much of the past year chasing it down a very deep rabbit hole. Now I’m back, and I’ve brought with me what I hope is a useful way of thinking about law as a general matter. I call it “Legal Sets,” and it’s my first contribution to general legal theory. Here’s the abstract:
In this Article I propose that legal reasoning and analysis are best understood as being primarily concerned, not with rules or propositions, but with sets. The distinction is important to the work of lawyers, judges, and legal scholars, but is not currently well understood. This Article develops a formal model of the role of sets in a common-law system defined by a recursive relationship between cases and rules. In doing so it demonstrates how conceiving of legal doctrines as a universe of discourse comprising (sometimes nested or overlapping) sets of cases can clarify the logical structure of many so-called “hard cases,” and help organize the available options for resolving them according to their form. This set-theoretic model can also help to cut through ambiguities and clarify debates in other areas of legal theory—such as in the distinction between rules and standards, in the study of interpretation, and in the theory of precedent. Finally, it suggests that recurring substantive concerns in legal theory—particularly the problem of discretion—are actually emergent structural properties of a system that is composed of “sets all the way down.”
And the link: http://ssrn.com/abstract=2830918
And a taste of what’s inside:
I’ll be grateful for comments, suggestions, and critiques from anyone with the patience to read the draft.
Today was the deadline for me to submit a draft presentation on the research I’ve been doing in Japan for the past six weeks. The deadline pressure explains why I haven’t posted here in a while. The good news is that I was able to browbeat my new (and still growing) dataset into sufficient shape to generate some interesting insights, which I will share with my generous sponsors here at the Institute for Intellectual Property next week, before heading home to New York.
I am not at liberty to share my slide deck right now, but I can’t help but post on a couple of interesting tidbits from my research. The first is a follow-up on my earlier post about the oldest Japanese trademark. I had been persuaded that the two-character mark 重九 was in fact a form of the three-character mark (大重九) a brand of Chinese cigarette. Turns out I was wrong. It is, in fact, the brand of a centuries-old brewer of mirin–a sweet rice wine used in cooking. (The cigarette brand is also registered in Japan, as of 2007–which says something about the likelihood-of-confusion standard in Japanese trademark law). And as I found out, there’s some question as to whether this mark (which, read right to left, reads “Kokonoe”) really is the oldest Japanese trademark. There’s competition from the hair-products company, Yanagiya, which traces its lineage back 400 years to the court physician of the first Tokugawa Shogun; and also from a sake brewer from Kobe prefecture who sells under the “Jukai” label. Which is the oldest depends on how you count: by registration number, by registration date, or by application date. Anyway all of them would have taken a backseat to that historic American brand, Singer–but the company allowed its oldest Japanese trademark registration to lapse six years ago.
The other tidbit is my first attempt at a map-based data visualization, which I built using Tableau, a surprisingly handy software tool with a free public build. I used it to visualize how trademark owners from outside Japan try to protect their marks in Japan–specifically, whether they seek registrations via Japan’s domestic registration system, or via the international registration system established by the Madrid Protocol. Here’s what I’ve found:
The size of each circle represents an estimate of the number of applications for Japanese trademark registrations from each country between 2001 and 2014. The color represents the proportion of those applications that were filed via the Madrid Protocol (dark blue is all Madrid Protocol; dark red is all domestic applications; paler colors are a mix). The visualization isn’t perfect because not all countries acceded to the Madrid Protocol at the same time–some acceded in the middle of the data collection period, and many have never acceded. (When I have more time maybe I’ll try to figure out how to add a time-lapse animation to bring an extra dimension to the visualization.) Still, it’s a nice, rich, dense presentation of a large and complex body of data.