Letter Opposing New York Right of Publicity Bill


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.

Sheff NY ROP Letter 2017-6-16

Ripped From the Headlines: IP Exams


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:



Source: Walmart.com

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.


Derek Parfit, RIP


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.

“Legal Sets” Posted to SSRN


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:

Screen Shot 2016-08-27 at 5.23.27 PM

I’ll be grateful for comments, suggestions, and critiques from anyone with the patience to read the draft.



4,518,184 unique applications. From four different data sources. 74.71GB. All in Stata.

Screen Shot 2016-07-14 at 5.49.48 PM

Now I just have to figure out what it all means. And I have two weeks to do it.

Progress for Future Persons: WIPIP Slide Deck and Discussion Points


Following up on yesterday’s post, here are the slides from my WIPIP talk on Progress for Future Persons. Another take on the talk is available in Rebecca Tushnet’s summary of my panel’s presentations.

A couple of interesting points emerged from the Q&A:

  • One of the reasons why rights-talk may be more helpful in the environmental context than in the knowledge-creation context is that rights are often framed in terms of setting a floor: whatever people may come into existence in the future, we want to ensure that they enjoy certain minimum standards of human dignity and opportunity. This makes sense where the legal regime in question is trying to guard against depletion of resources, as in environmental law. It’s less obviously relevant in the knowledge-creation context, where our choices are largely about increasing (and then distributing) available resources–including cultural resources and the resources and capacities made possible by innovation.
  • One of the problems with valuing future states of the world is uncertainty: we aren’t sure what consequences will flow from our current choices. This is true, but it’s not the theoretical issue I’m concerned with in this chapter. In fact, if we were certain what consequences would flow from our current choices, that would in a sense make the problem of future persons worse, if only by presenting it more squarely. That is, under certainty, the only question to deal with in normatively evaluating future states of the world would be choosing among the identities of future persons and of the resources they will enjoy.

Slides: Progress for Future Persons WIPIP 2016

LV Loss is About the EU, Not Handbags


Some of my IP friends are posting today about Louis Vuitton’s loss last week of a trademark fight over its checkerboard pattern in the EU General Court. This was news in Europe when it happened (the IPKat, a great resource for EU IP happenings, reported on it at the time), but it was only picked up on in the popular US fashion press today (here and here and here, for example).

LV is a very vigorous (some would say bullying) trademark litigant here in the US. And so there may be a tendency to chalk up this opinion to their pattern of overreaching on substantive trademark law. But it’s always a good idea to read the actual decisions (here and here). Because when you do, a somewhat different picture emerges.

To my eye these cases are not so much about trademark law as they are about the legal and economic structure of the EU (in the particular context of community-wide IP rights). The key language (paragraph 84 in both opinions) is:

“It follows from the unitary character of the Community trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union.”

In other words, to get community-wide protection a mark must serve as a trademark in every member state, not just a few, or even a majority. This creates a higher evidentiary burden for LV, but potentially not an insurmountable one. It also provides an incentive for manufacturers and merchants not to ignore the peripheral EU countries when marketing their products. It is, in other words, less about trademarks than it is about trade. But in any case, it’s a fascinating issue for those who are interested in the increasing internationalization of IP rights and regimes.