I am at the University of Nevada Las Vegas School of Law for the annual Trademark Scholars Roundtable. This conference is a true roundtable, not a paper conference, which I love. But because one of the topics involves the relationship between the US Patent and Trademark Office trademark registry and the brand-protection systems like private platforms like Amazon’s Brand Registry, I prepared a few slides of data on a recent policy intervention designed to try to reduce abusive registration practices. The data suggest that this intervention–the new expungement and reexamination procedures of the Trademark Modernization Act–is not being widely used. Indeed, given the scale of the registration system and the perceived scale of the problem, these new procedures seem to be the equivalent of fighting a forest fire with a water pistol. Slides available below:
jsheff
A Heap of IP at Santa Clara (WIPIP 2024)
Today I presented my work in progress, “A Heap of IP: Vagueness in the Delineation of Intellectual Property Rights,” at the Works-in-Progress in Intellectual Property (WIPIP) Conference at Santa Clara University School of Law. This project seeks to connect philosophical literature on vagueness with the intellectual property law literature on claiming. Slides below; comments welcome.
Presentation: Knowledge as a Resource at WIPIP 2023
This past weekend at the 20th Annual Works in Progress in Intellectual Property Colloquium (WIPIP 2023) at Suffolk University in Boston, I presented yet another chunk of my long-running book project, Valuing Progress: A Pluralist Account of Knowledge Governance. This piece, Knowledge as a Resource, examines those characteristics of knowledge–particularly nonrivalrousness–that distinguish knowledge from other goods that are subject to evaluation under the criteria of distributive justice. Because knowledge can be shared without depriving the sharer of anything, norms of distributive justice that have developed in the context of rivalrous goods–norms such as reciprocity–generate paradoxes when we try to apply them to knowledge. This requires us to choose among competing and contestable values underlying and justifying those norms. With respect to reciprocity, for example, it requires us to decide whether reciprocity is grounded in the value of compensation for burdens borne or in the value of gratitude for benefits received. While the distinction between these two justifications can often be ignored for rivalrous goods–particularly where institutions like property rights and markets limit exchange to goods over which parties agree as to their value–it cannot be ignored for knowledge: we must choose one at the expense of the other. The inevitability of such choices among competing values is the overarching theme of the book.
Slides for Knowledge as a Resource can be found here:
New and Improved: The Canada Trademarks Dataset 2.0
Today I released a revised and updated version of the Canada Trademarks Dataset (v.2.0): an open-access, individual-application-level dataset including records of all applications for registered trademarks in Canada since approximately 1980, and of many preserved applications and registrations dating back to the beginning of Canada’s trademark registry in 1865, totaling over 1.9 million application records.
The original dataset, released on March 2, 2021 and described in my article in the Journal of Empirical Legal Studies, was constructed from the historical trademark applications backfile of the Canada Intellectual Property Office, current through October 4, 2019, and comprising 1.6 million application records. The revised dataset represents a substantial advancement over this original dataset. In particular, I have rewritten the code used to construct the dataset, which will now build and maintain a mySQL database as a local repository of the dataset’s contents. This local database can be periodically updated and exported to .csv and/or .dta files as users see fit, using the python scripts accompanying the dataset release. Interested users can thus keep their installation of the dataset current with weekly updates from the Canada Intellectual Property Office. The .csv, .dta, and .sql files published in the new release include these weekly updates since the closing date of the historical backfile, and are current through January 24, 2023.
Full details are available at the Version 2.0 release page on Zenodo.
New Paper on Reverse Confusion in George Mason Law Review
I’ve posted a newly published paper to SSRN: Reverse Confusion and the Justification of Trademark Protection, 30 Geo. Mason L. Rev. 123 (2022). This paper continues my series of critiques of the law-and-economics model of trademark law–which doesn’t match the cases very well–and further develops my own alternative model of trademark as promise, grounded in contractualist ethics. Other papers in this series include Marks, Morals and Markets, 65 Stan. L. Rev. 761 (2013); and Finding Dilution, in Research Handbook on Trademark Law Reform (Graeme Dinwoodie & Mark Janis eds., Edward Elgar Press 2021). Comments are welcome.
The Lawprofs Mastodon Instance – A Call for Community Volunteers
Over the past month, as the user experience on Twitter changed under new management, millions of people have migrated to the decentralized social media platform Mastodon. About three weeks ago, in an effort to facilitate that transition for my own professional community, I set up a Mastodon “instance,” or server, specifically for legal academics: the Lawprofs Mastodon Instance. I’m not an experienced sysadmin, so there were a couple of bumps along the way, but the server is now running smoothly with over 300 user accounts and rising. The earliest rapid growth phase, during which I’ve acquired and configured the necessary back-end resources to host the instance and give it room to grow, is coming to a close, and I think it’s time to take a more mindful approach to the governance of this community. So I’m issuing a call for volunteers to help set up policies and governance structures to sustain the community for the long term.
This is not (yet) a request for financial support. The costs (in money) of running the Lawprofs instance are modest, and I am happy to continue bearing them until more permanent governance and funding institutions can be established. There may be a time when Lawprofs members are asked to contribute financially to the running of the instance, but now is not that time. Rather, I am calling on the expertise of our community members to help transition the instance from my own personal project into a self-sustaining, self-governing community. The expertise needed lies in several areas. If you have expertise in any of these areas and are willing to give a little of your time to help the Lawprofs community lay its foundations, please contact me:
- Entity Formation, Governance, and Funding: At present the Lawprofs instance is, in essence, a group of accounts in my name at various online service providers based on the East Coast of the United States. Apart from the possibility of personal liability that I would like to avoid, this arrangement gives me sole authority and responsibility for managing the instance, which is not a role I have any desire to maintain. So we need some help either standing up appropriate legal entities to take responsibility for managing and funding the instance (and ensuring general legal compliance), or else we need to find a hybrid solution (such as the Open Collective project used by the journa.host Mastodon instance, or an institutional home in the legal academy or one of its governing bodies) to manage those aspects of the community’s existence. We will also need people willing to take responsibility for contributing to the management of the instance going forward.
- Content Moderation: I set out a list of basic rules concerning content on the site when I founded the instance, and I defederated a number of notoriously abusive instances at the outset based on my own quick review of the #FediBlock list and the mastodon.social moderated server list. But as the community matures and forms connections with other instances we may want to revisit those choices, and we will need a more well-thought-through set of rules governing permissible and impermissible content on the site. We will also need volunteers to apply those rules when posts, users, or instances get flagged for moderation. (To give a sense of the scope of this task, we have had exactly two requests for moderation in the first three weeks of the instance’s existence; one involving a post by a member of our instance, and one involving an impersonation account on another instance). This aspect of community governance particularly requires evaluation from diverse perspectives, and I am hopeful that we will receive input from Lawprofs of various backgrounds on questions of content moderation.
- Privacy Policy: Our privacy policy is currently the off-the-rack policy that is distributed with the Mastodon server software. It’s a fine standard privacy policy, but there may be issues that it does not cover, or that our community might want to address differently. Because our servers are based in the United States but serve accounts all over the world, this is an issue where input from Lawprofs from different jurisdictions will be especially helpful.
- Intellectual Property (IP) Policy: One of the first steps I took upon founding the instance was to register as a DMCA agent and set up a Section 512 notice form to insulate myself from liability for copyright infringement by users who post on the instance (or whose posts on other instances are stored on our server). This is obviously primarily a US-oriented solution, and incomplete as a matter of IP policy (it does not, for example, establish in advance a policy governing repeat infringers). We must develop and implement more comprehensive IP policies to reduce the risk of liability for IP infringement in all the jurisdictions that might take an interest in activities by our users.
- Protection Against Child Exploitation: This is not an issue I expect to require much attention given the user base of our instance, but we should develop policies and procedures to deal with the possibility that material posted on our instance (or stored on our server after being posted on other instances) might violate laws against child exploitation or trigger reporting requirements under those laws.
- Other Terms of Service/Fair Trade Practices Issues: There may be other terms or disclosures that an online service provider such as Lawprofs would be well-advised to include in its governing policies. Lawprofs with expertise in online terms of service in various jurisdictions could be a big help in raising issues that aren’t already addressed elsewhere.
- Back-End Management/Technical Expertise: Anyone with experience running a web server or with expertise on data security and best practices for a social media site could be a big help in sharing admin responsibilities with me for the servers themselves.
- Membership Policies: I have developed a basic set of membership policies for the Lawprofs instance over time as people have asked to register accounts, both to maintain the thematic focus of the community and to manage costs and the strain on back-end resources. The community may wish to change these policies going forward. For present purposes, I have adopted four rules-of-thumb:
- Members should generally be full-time legal academics; an affiliation (though not necessarily a permanent affiliation) with a law faculty must be provided and verified as a precondition of registration.
- Adjunct faculty may register but are advised to first consider registering with other law-oriented instances that might be better suited to legal professionals who also happen to teach (such as legal.social, law.builders, and esq.social).
- Graduate students and recent graduates may not register unless they are already in a full-time post-degree program such as a teaching or research fellowship or Visiting Assistant Professorship.
- Non-faculty staff at law schools and faculties may not register accounts, but institutions themselves (schools, departments, centers, etc.) may do so, and institutional accounts may be managed by non-faculty staff.
Those are the issues where the Lawprofs community can use your help. Again, if you think you have relevant expertise on any of these issues, and are willing to give a little of your time to help set the community up for the long term, please contact me.
In the meantime, you can find me on Mastodon.
Reciprocity Failures at IPSC 2022
Earlier this month at the annual Intellectual Property Scholars Conference, I presented a piece of my long-running book project, Valuing Progress. This piece deals with what I call Reciprocity Failures. Slides can be found here.
This part of the project is a window into its theoretical heart: the basic idea that when designing a legal or policy regime to govern the production and dissemination of new knowledge, we cannot have all the things we want. We have to choose, and accept that the choice will inevitably leave us disappointed in some ways. In the past, IP scholars have identified one such choice as a tradeoff between efficiency and fairness, or perhaps between incentives and access. But the challenges of value pluralism–the idea that values are plural and incommensurate–run deeper, to the very concept of fairness (or justice) itself. We may want to make sure that knowledge creators enjoy adequate material support in exchange for the knowledge they provide, and we may want to make sure that those who benefit from new knowledge contribute adequate resources to support its production, and we may want to make sure that those who contribute resources to the cause of knowledge production derive an adequate benefit therefrom. We may want to ensure that material support for knowledge creators is allocated based on desert rather than luck, and that access to new knowledge is not denied for arbitrary reasons. But even though all these goals may be implicated in our notions of fairness, we cannot serve them all at once. In pursuing any one of these diverse fairness-based values, we inevitably discard one or more others. This is a particular problem for knowledge governance regimes, because knowledge is both durable and cumulative–those who contribute to its production and those who enjoy its benefits may be separated by borders, or by culture, or even by lifetimes.
Valuing Progress got its start at IPSC several years ago when I thought it was just going to be an article. It has grown quite a bit since then, and parenting during the pandemic kept me from working on it much over the past few years. It feels really good to be flexing these muscles again after so long.
The Canada Trademarks Dataset
I’m happy to announce the publication (on open-access terms) of a new dataset I’ve been constructing over the past few months. The Canada Trademarks Dataset is now available for download on Zenodo, and a pre-publication draft of the paper describing it (forthcoming in the Journal of Empirical Legal Studies) is available on SSRN.
As I’m not the first to point out, doing any productive scholarly work during the pandemic has been hard, especially while caring for two young kids and teaching a combination of hastily-designed remote classes and in-person classes under disruptive public health restrictions. I have neglected other, more theoretical projects during the past year and a half because I simply could not find the sustained time for contemplation and working out of big, complex problems that such projects require. But building a dataset like this one is not a big complex problem so much as a thousand tiny puzzles, each of which can be worked out in a relatively short burst of effort. In other words, it was exactly the kind of project to take on when you could never be assured of having more than a 20 minute stretch of uninterrupted time to work. I’m very grateful to JELS for publishing the fruits of these fleeting windows of productivity.
More generally, the experience of having to prioritize certain research projects over others in the face of external constraints has made me grateful that I can count myself among the foxes rather than the hedgehogs of the legal academy. Methodological and ideological omnivorousness (or, perhaps, promiscuity) may not be the best way to make a big name for yourself as a scholar–to win followers and allies, to become the “go-to” person on a particular area of expertise, or to draw the attention of rivals and generate productive controversy. But it does help smooth out the peaks and troughs of professional life for those of us who just want to keep pushing our stone uphill using what skills we possess, hopeful that in the process we will leave behind knowledge from which others may benefit. That’s always been my preferred view of what I do for a living anyway: Il faut cultiver notre jardin.
Now In Print: Legal Sets
Published Version Available Here
Tenure has its privileges.
Three years ago, I posted on this site that I had spent the year prior working up a lengthy, dense draft of a deeply theoretical piece that had grown out of my noodling over a relatively small doctrinal question in trademark law. This draft was well outside of my usual wheelhouse: technical, philosophical, and abstract. It marked the beginning of what has now become a sharp pivot in my scholarly career, into more self-consciously philosophical investigations of the rules we impose on the creation and dissemination of knowledge.
Initially journals reacted coolly–which I can’t fault them for; the piece is long by law review standards and the framework is more technical and less accessible than standard law review fare. I took some time to get feedback from more accomplished legal theorists than myself, I revised the draft, and ultimately it found a home at the Cardozo Law Review, whose student editors worked hard to improve the piece and have now published Legal Sets in their June 2019 issue (which includes a number of other interesting pieces). All told, that means this project took four years to move from the question that first got me working on it to a final, published article. I am deeply cognizant of the tremendous privilege I enjoy in being able to earn a living by dedicating such a significant chunk of my life to this type of work, and I hope I’m making good on that privilege.
This is the kind of work–and the kind of departure from familiar subjects and methods–that I never would have attempted pre-tenure. The risk of failure was great; the opportunity costs were high, and the need to produce measurable outputs to get me through the next gate on my career path was too pressing. But you know, at the risk of tooting my own horn, I think this article is pretty good, and despite its theoretical cast I think it makes a real contribution to a sounder understanding of how law works in practice. So I come away from the experience of writing this piece with a renewed gratitude for the privilege of academic freedom and job security, and a renewed sense that the general absence of such freedom and security from our economy (outside of the shrinking rarefied precincts of the tenure-track academy) is almost surely holding our society back from its full potential.
New Draft: Jefferson’s Taper
Read Jefferson’s Taper on SSRN
A little less than a year ago, I made a startling discovery about Thomas Jefferson’s famous observation on the nature of ideas, which (he argued) spread like fire from one person to the next without diminishing the possession of anyone who shares them. As I discovered, Jefferson copied this metaphor from a nearly identical passage in Cicero’s De Officiis–a work of philosophy that was once one of the world’s most widely-read books, but which today few people have even heard of. As I mined out the implications of Jefferson’s unattributed borrowing, I came to conclude that we have been misreading him for almost a hundred years. Rather than making a proto-utilitarian argument in favor of a limited system of patent rights, Jefferson was instead making a natural law argument–exactly the type of argument that his modern-day detractors rely on to support their policy prescriptions regarding the scope of intellectual property rights. And in fact, gaming out the implications of Jefferson’s natural law argument leads to the conclusion that knowledge creators may actually have some obligations to share their knowledge, rooted in a particular pre-Enlightenment conception of natural law and distributive justice.
Doing the work of fleshing out these implications required me to immerse myself in some old and (to me) unfamiliar philosophical sources for much of the past year. The result is the most “scholarly” work of scholarship I think I’ve ever produced: Jefferson’s Taper, now in draft on SSRN, and hopefully coming soon to a law review near you. This was a ton of fun to research and write; I think it is going to surprise a fair number of people. Comments, as always, are most welcome.
