16 July 2018

None Dare Call It Treason

… because it isn't (quite).

Treason against the United States, shall consist only in levying War against them, or in adhering to their Enemies, giving them Aid and Comfort. No Person shall be convicted of Treason unless on the Testimony of two Witnesses to the same overt Act, or on Confession in open Court.

The Congress shall have power to declare the Punishment of Treason, but no Attainder of Treason shall work Corruption of Blood, or Forfeiture except during the Life of the Person attainted.

U.S. Const. Art. III § 3. Russia may be a hostile foreign power, but it is not — either under international law or by declaration of either Congress or the proper part of the Executive — an "Enem[y]."

That said:

The very best evidence that Putin would have wanted Drumpf to win in 2016 is that — after, at minimum, indictments implicating Putin's government (and, reading between the lines, personal involvement at some significant level) prepared/supported by people Drumpf on the same day declared he had "great confidence" in — Drumpf can't think of a reason that Putin would have wanted him to win in 2016. The parallel to the repeated victim of fraud not being able to understand why con artists would target him is rather apparent… and disturbing… especially given the glee with which con artists pass around lists of marks based upon their past successes.

14 July 2018

Six Copyrightable Works in Search of "the" Author

Part 0 (Introduction)

Part 1: The Simple Author/Claimant Distinction

Once upon a time…

No, I'm afraid this isn't a fairy tale. Neither is it fiction. Now, where was I?

Most Americans' knowledge of the Duke of Milan ends with the character by that name in a Shakespeare play4 (if that much, as the play has never had a very successful film or television production made from it). Ludovico Sforza, who was the Duke of Milan at the tail end of the fifteenth century, was not himself an artist. Or writer. Or inventor. Or, really, much of anything other than a mere patron of artists and individuals works of art: Sforza supported Leondardo da Vinci for years and in particular commissioned The Last Supper.

It's that last clause that's of interest here. Today, we think of The Last Supper as a painting "by" da Vinci; in our minds, there's no question about its "authorship." Who is this Sforza guy anyway, to claim authorship of a painting to which his sole contribution was approval of an idea and money? Sadly, under US copyright law as it stands, Sforza is the author… or, at minimum, the only party with standing to file as copyright claimant. This is due to the goofiness of the "work for made for hire" (usually referred to as just "work for hire") doctrine and a bit of transubstantiation worthy of a Reformation in itself. The first step is simple, and buried in the text without ever using that ugly word "patron":

In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.5

The typical Renaissance commission met the predicate requirements of a work for hire, being produced by an employee. Some works (but not paintings!) may have done so when produced by what we would now call a "freelancer."

A “work made for hire” is—
   (1) a work prepared by an employee within the scope of his or her employment; or
   (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.6

We'll return to parsing the second clause of that definition later on, because it has some fascinating implications for terminations of certain publishing contracts7 that are eligible to occur right now.

The Last Supper's attribution history exposes, or at least implicates, several dimensions of the author-claimant distinction:

(A) Temporal disjunctions, especially for better-known works. For example, almost everyone thinks of Citizen Kane as "by" Orson Welles, not as "by" RKO; conversely, only aficionados attempt to distinguish among the various Marvel Cinematic Universe films by their directors and/or screenwriters.

(B) Form disjunctions, as implicated by the second clause of the WFH definition. Why, for example, should the financial backers of a filmed audiovisual production have a greater copyright claim as a matter of law than do those of a theatrical production? How about a filmed audiovisual production of a theatrical production?8

(C) Positional disjunctions, primarily those caused by greatly unequal original positions. These may be economic or other power-related inequalities,9 but not necessarily; mere informational asymmetries, such as those present when a more-skilled artist or author collaborates in an unfamiliar field or context, can be equally distortive.10

There are lots of other disjunctions to consider — especially when we start to consider joint authorship later on — but these will do to justify a fair number of footnotes.

  1. William Shakespeare, The Tempest (FF 1623, est. prod. 1611/12). Somewhat ironically, many scholars consider this play to be the last one that Shakespeare "wrote" alone… which, given the controversy over Shakespearean authorship, made it reflexively necessary to cite to it in this piece. There is some reason to believe — but so far as I'm aware no clear documentation — that Shakespeare was at least partially aware of the patron/author relationship involving Ludovico Sforza (purportedly the "real" inspiration for the play's character) and Leonardo da Vinci.
  2. 17 U.S.C. § 201(b) (current to 2018).
  3. 17 U.S.C. § 101 def. 55 (current to 2018).
  4. See 17 U.S.C. § 304(c) (current to 2018). I will take the opportunity to snarl at the drafters of this subsection of the Copyright Act, which is both recursive and self-contradictory due to bad thinking, bad writing, bad factfinding, and conflicts of interest. It is, however, the law — even if, and perhaps especially if, it seems designed to make actually exercising the rights granted next to impossible, and the Copyright Office has historically abrogated its duty to provide appropriate guidance to do so (I have been unable to find any citation to Copyright Office guidance in any reported case regarding an attempted termination).
  5. As a preview of later discussion, these definitional quandaries result from oversimplification, on the order of declaring that every gravitational interaction is between two bodies only, and that one can always neglect the effect of every other gravity source other than the two most obvious ones. In reality, not so much — just ask anyone computing a trajectory from Earth to Mars. Essentially, this is an attempt to define away certain problems by pretending that they don't exist.
  6. Cf. generally John Rawls, A Theory of Justice (1971, rev. ed. 2005) (that this is an essentially obligatory citation does not mean that it's irrelevant). There is a long history of scholarship on unequal bargaining position in contracts that is equally relevant, perhaps epitomized in Grant Gilmore, The Death of Contract (1974).
  7. Cf., e.g., Sybille Bedford, Aldous Huxley: A Biography (rev. ed. 2002) ___ (describing Huxley's frustrations with the generally poor writing skills he encountered in Hollywood); compare (if you dare) 20th Century Fox, Star Wars (1977) (aka Star Wars Episode IV: A New Hope) with George Lucas, Star Wars (1977) (film "by" an auteur with novelization of that same film "by" the same individual).

07 July 2018

An Overdue Platter

Taking a timeout from reality — or, at least, what passes for reality these days — for some really heavily smoked, uncured internet link sausages. You don't want to know about the "byproducts" in these. You really don't.

  • Since this nation is now headed by a game-show host, I thought it long past time to unveil the game show that really inspires so much of his style. And his substance. Of course, it's not exactly new… but then, the concepts behind Jim Crow weren't exactly new, either.
  • Which, now that I think about it, also explains a bit about the resurgence of false-nostalgia-tinged popularity of "Hapsburg" culture. That phenomenon reminds me a great deal of the popularity of "fifties" things while I was in high school, perhaps as much a reaction to school busing as anything else. But Hapsburg culture doesn't have any baggage like that (rented trailer? what rented trailer?).
  • Then there's the two-cultures phenomenon and its necessary corollary, distrust in "science" that is not about science at all. There's an "ingredient" here that the good old CHE would never admit to, and that SciAm would never notice: How undergraduate credit hours are misallocated between courses in the sciences and elsewhere.

    There's an old myth (reinforced by university administrations consisting almost entirely of lawyers, social science/humanities faculties, and b-school types) that because laboratory "contact hours" allegedly require less preparation time outside of class than "lecture hours" or "discussion hours" do, they should be less rewarded for the student. A typical example from my misspent youth was freshman physics — a four-credit course (each semester) consisting of three hours of lecture and three hours of laboratory time every week (plus an "optional" one-hour quiz/discussion section led by a graduate student). But, of course, nobody had to read the lab instructions beforehand, or go through the relevant substantive material in detail so that the instructions made sense, or spend an average of two hours per lab session writing up the results for grading; conversely, one was not expected, or allowed, to write one's paper for Western Civ while Norris the K droned on from the front of the class, to choose an equivalent from another culture. And it got worse as one got more advanced: The junior-level synthetic organic chemistry laboratory garnered three credits for one lecture hour and six laboratory hours (which almost everyone in the class extended to about ten due to the "open lab" policy of the instructor, and it still wasn't nearly enough), and one-to-five ratios were not unheard of. All of this at a university with an unusually enlightened attitude toward the plight of the science student.

    Given this disparity in unacknowledged time commitments, the dearth of science and engineering majors participating in timesink policy-oriented extracurriculars shouldn't surprise anyone: Instead of attending meetings of economic-and-technology policy clubs so that a little real understanding of the technology part could be injected, they were in the lab… or, more to the point, the few science students who did so were not in the lab learning about science.

04 July 2018

"Mission Accomplished" Yet Again

… although this year, my lament may be a bit farther out of the mainstream.

I continue to resent celebrating giving the King the finger instead of the actual accomplishment of the Constitution. It's even more of a problem given that July 4 isn't when it was signed in any event. But since our inability to impose our manifest destiny on the rest of the world was brought to the forefront in the early 1970s, between Vietnam and OPEC, this nation has trended more and more toward jingoistic declarations in ringing prose that neglect others' interests (legitimate or otherwise) and egregiously ignore the difficulty of making a good-sounding deal work, in practice, when it confronts the enemy. Or even just reality.

It's understandable, I suppose. It's always easier to celebrate a single anticipatory event than to anticipate the hard work coming afterward. But it's not laudable.

28 June 2018

Damn — Another One

RIP Harlan Ellison, 1934–2018. I was a fan long before I became his lawyer (and friend). One result of his legendary advocacy for authors' rights continues to be cited as a leading case on internet piracy, despite it being fifteen years old (the equivalent of about 75 years in internet time).

Thank You For Your Service

… and I mean that more sincerely, Justice Kennedy, than do most people when saying the same thing to veterans. If only because — unlike most people who say "thank you for your service" to veterans caring only that they have the benefits of others' military service and personally didn't suffer the indignities thereof (and they are legion, literally) — I can appreciate your integrity in the service you performed. Even if I don't always appreciate the result (such as most of your opinions this term, which betrayed an increasing sense of fatigue in their overeasy reliance on the clarity of doctrine and determination to avoid difficult determinations of ultimate fact based upon contested evidence with more than one possible interpretation). Even if I ardently disagree with the mechanisms by which you reached some of those results… because you, after all, did not create either stare decisis or the corollary stagnation that kept Korematsu on the books as "good law" for over seventy years.

In the end, Mr Justice, you'll be remembered as a "swing justice" no matter how much you want to be remembered otherwise — not because you're anything other than a somewhat-conservatively-tinged moderate, but because in a few instances you were unable to evade the hardest part of the judicial power by mere reference to existing ideological norms. That so many of those instances related to sex and its consequences and implications reminds me of the passage in The Brethren discussing the notorious National Lampoon cartoon on obscenity, in a rather uncomfortable way. Nonetheless — as is the default in American law — your evaluation of factual controversies was itself staunchly ideological in a way that all too often evades the real basis for the judicial power: Facilitating the resolution of specific live disputes short of bloodshed. That is necessarily going to involve, at times, telling people (even when those people are in true good faith, which is less common than the ideology of "deference" would have us believe) that their policy preferences are consistent with neither the facts/evidence as in the record nor with a careful evaluation of the facts/evidence as in the record that supports legal doctrine itself. As a back-handed compliment, your failings in this respect are less obvious and less serious than most of the American judiciary (even when operating in good faith — which is not universal, as witness the state-court resistence to race-based equality rampant when you were a young lawyer).

If there is a true fault, it is the fallaciously Aristotelian nature of precedent in Anglo-American common law: That if a set of facts that can be described a certain way by lawyers who neither experienced them nor directly investigated them is present, there either is or is not a particular result mandated by law. But failure to acknowledge context, boundary conditions, and even the mere infelicity of description of "facts" by lawyers at all levels who often do not understand "facts" or the methods of reasoning from "evidence" to "facts" (and their pitfalls) is nonetheless a problem with the judicial power as it has evolved. Eppur si muove, guys; Mr Justice, you were not prepared personally to do differently, and the profession's own ideology and arrogance (not just partisan, although that reinforcement surely makes matters worse) would have been a significant barrier if you were.

As a flawed human being like the rest of us, you did a creditable job of upholding your oath and the general duties of the judicial power. It's too bad that upholding all of the duties of the judicial power is something that is selected against by the selection process for judicial officers: Whether through the federal confirmation process or any of the state-level counterparts, those committed to speaking truth to power are not ordinarily viable candidates absent some other kind of sponsorship. You did your job to the best of your ability as you saw it, and given the poor track record for that in the highest reaches of power (both governmental and otherwise) that's a service that I can and do appreciate.

21 June 2018

The Summer of Our Discontent

…starts today. Because it was the Spring of our discontent through yesterday.

  • As another entry in the "stupid doesn't necessarily mean unconstitutional" list, the Supreme Court — in a frighteningly internally inconsistent 5–4 majority opinion that on first reading undermines over a century of personal jurisdiction law — determined that there is no constitutional barrier to a state imposing a sales-tax-collection requirement on out-of-state vendors who ship merchandise (and services, even though services were not actually at issue in this lawsuit, and I have serious Sixth Amendment concerns here) into that state. South Dakota v. Wayfair, Inc., No. [20]17–494 (PDF).

    South Dakota purports to apply this to "only" big merchants, but the statute in question simply does not reflect reality. (The irony that the basis for the Court's decision is that the longstanding ban on out-of-state sales tax collection did not reflect reality was never even touched.) Under the terms of South Dakota's statute, if one has either $100,000 in shipments to South Dakota or 200 items shipped to South Dakota in a given year, that suffices. Imagine, for the moment — and I am not going to name the specific exemplar — a Florida-based writer on Native American activism who sells collections of his/her/their articles cheaply from her website — let's say $1.99, so that there's no undercutting of the current Amazon Direct Publishing pricing requirements. If that writer sold 222 copies of a collection that discussed, say, Wounded Knee, to South Dakota residents in a given year, the $441.78 in retail sales would subject that writer to South Dakota's reporting-and-collection requirements. Forever (because once in the system, the reporting requirement continues even when no sales are made and no tax is due — which is the default for state-imposed sales tax systems). So the statute itself needs a reality check; I would say that regarding all sales tax statutes — and even moreso for VAT.

    My Sixth Amendment concerns begin in Sioux City, Iowa — just across the border from South Dakota. Consider, for the moment, South Dakota residents (formerly) employed at the Gateway Computers operation in Iowa. (Remember Gateway? The cow-patterned boxes with cheap parts, haphazard assembly, and an insidious arbitration clause for an illusory arbitration system not actually available to consumers that was hidden in later pages of documents reviewable only after delivery?) Let's consider an Iowa-based employment-law attorney who, in a year, handles workers' compensation and similar matters for 200 or more South Dakota residents, all arising from that Iowa-based location. Or an IP attorney several states over who represents a South Dakota-based band and sends 237 DMCA notices on behalf of that band. Or, more broadly and beyond the Sixth Amendment, a medical clinic in Minnesota that also sees South Dakota residents and can foresee that prescriptions will be filled in South Dakota… such as for birth control and other women's-reproductive-health medications. In short, "stupid" is probably being generous.

  • Meanwhile, the Supreme Court's failure over the last half-century to abrogate Korematsu and Hirabayashi continue to cause trouble in immigration cases. I continue to urge the Court to overturn them formally and definitively.
  • And the less said about child cruelty, the better. One could reasonably infer that the only persons who have inalienable rights under this Administration — and this set of Heffalumps in power — are dead Presidents (and dead Ben Franklin). Apparently, money isn't just speech. Further, one must wonder whether Jefferson Beauregard Sessions has ever read a scholarly discussion of Romans 13 (not my preferred text, but close enough, especially reading verses 8-10), let alone pondered even a bit of the history of its use and misuse. More to the point, he's neglected to note that Romans 13 concerns itself with taxes, revenues (customs duties), honor, and respect — not with discrimination — in even the least-scholarly translations.

06 June 2018

"Cocky" Goes Limp

… which is intentionally over the line of "appropriate" puns and comments regarding this controversy because so much else is. Including, in particular, the stereotypes embedded in the marketing and brand identification in the "field of romance novels."

First, a (non)disclaimer: Prior to posting my prior screed on this nonsense, I had not read any of the court submissions. Those comments that I made were on general principles and based on (a) the actual registration documents and (b) my specific knowledge of practices, procedures, and commercial values in the arts. I'm thus gratified that Judge Hellerstein reached the same conclusion on the actual record before him when he heard a doomed motion for a preliminary injunction last Friday (PDF) (HT: The fabulous and unappreciated "Courtney Milan").

The real point here is that a piece of paper from the PTO is not a bloody magic wand that enables the holder of that paper to magically take "all the monies you earn" at Amazon Just Because. There's still plenty of legal work to do, and it requires hard facts and rewards a stiff… upper lip… more than it does thinking with a part of the anatomy (or wallet) that doesn't have any bloody grey cells.

That said, the critical passage from Judge Hellerstein's oral ruling is this:

To sum up, the most important factor here as we have gone through the eight is the strength of the plaintiffs' mark. It seems to me at this point of the record and given the way that these titles look to be more adjectives than indications of source, that we have a weak mark.

[Second, i]t is not clear that defendants use the word "Cocky" in a way that makes it an indication of source. It is more a description of the nature of the contents: Her Cocky Firefighters, Her Cocky Doctors. I hold that defendant is not using the word "Cocky" in a mark. Although there could be a likelihood of confusion, other factors being equal, that there is some kind of an infringement, at this point I don't think a similarity.

Third is the competitive proximity of their products. They are clearly competitive proximate.

The fourth is a likelihood that plaintiff will bridge the gap and offer a product like defendants. That is not really a factor because both are in the market already.

Fifth is actual confusion. I didn't find any.

[Sixth is] Defendant's good faith, I think it is a mixed factor.

Seven, the quality of the defendants' product as compared to plaintiff's, they seem to be equal.

[Eighth, s]ophistication, at least at this point on the record, the sophistication of the purchasers, I think sophistication is high, and that is another factor against issuing a TRO or a preliminary injunction.

Now let's talk about irreparable harm. Plaintiff will suffer irreparable harm if, assuming the trademark is valid, others will occupy the field. Although sales data can be obtained and damages can be proved, it is also a damage to good will involved in the trademark that can't be proved. So there clearly is irreparable harm that would be suffered by the plaintiff in the absence of restraint. However, it seems to me that defendant, who is on the market with her romance novels, if restrained, would also suffer damage and it would be irreparable. If a book is taken off the market, it can't be sold. Books of this nature have to do with timeliness as well. So I can't say that there is any balance here. If there is, it is likely to tip in defendants' favor because a good portion of injury by the plaintiff would be compensable in damages and captured profits. So that factor is in favor of defendant.

Whether an injunction is in the public interest, given the way these trademarks are used, I don't think there is much of a public interest in them.

Here plaintiff can't demonstrate that its trademark merits protection, nor in my opinion that defendant's use of a similar mark is likely to cause consumer confusion. Those are the eight factors that we just talked about. Accordingly, the motion for a TRO and for a preliminary injunction is denied.

That doesn't mean the case is over. It means that we go into the next stage of discovery.

Hop Hop Prods., Inc. v. Kneupper, No. [20]18–cv–04670 (S.D.N.Y., 01 Jun 2018) (Hellerstein, J.), trans. at 41–43 (transcript-artifact paragraphing corrected).

I'll raise a Jack Daniels for this one, for the same reasons as before. The legal underpinning of the Jack Daniels letter is the difficulty in carrying the burden to justify injunctive relief — whether the extraordinary burden for a temporary restraining order or preliminary injunction stated here, or the burden after trial when damages have already been proven. The was a fundamental lack of judgment by plaintiff and plaintiff's counsel — not just on procedural grounds, but on the basis of the marketplace (I love that Judge Hellerstein correctly characterizes the marketplace of romance readers as "sophisticated" regarding use of the term "cocky" in a title, see trans. at 39–40). The cold hard facts, not the limp protestations of a would-be usurper.

05 June 2018

We Hardly Knew Ye

Shot fifty years ago today: Robert F. Kennedy. While surrounded by good men with guns, but that's almost beside the point, given all of the other disturbing echoes of 1968 we're seeing half a century later.

04 June 2018

Eating Cake, or Not, or Not Prejudicing Decisions

The Supreme Court issued its decision this morning in Masterpiece Cakeshop v. Colorado Civil Rights Comm'n, No. [20]16–111 (04 Jun 2018) (pdf), reversing the imposition of sanctions on the cake "artist." The decision is both indisputably correct — in a way with interesting implications for the pending immigration cases — and substantively wrong but consistent with some existing doctrine (which is itself wrong).

The decision was correct in sending the matter back for reconsideration on the ground that decisionmakers had improperly expressed animus toward a right that was at issue, was within their jurisdiction, was essential to deciding the matter… and had not yet been formally presented. That is — and I wish the Court would get away from its excessive deference to the purported uprightness and integrity of state systems just because they're state systems — there was stated decisionmaker bias. The Commission screwed up; those members who had expressed animus prior to (or even at) the hearing should have been recused, and a different panel should have been called in if they all were. This, of course, has some interesting implications for the pending immigration cases… because the same kinds of evidence of "bias" that were held against the Commission are present in the present Administration's statements (both before and after the 2016 election) regarding immigration policy.

In its substance, though, this case is wrong, at a definitional level. "Free exercise of religion" does not extend to "violation of civil rights." The Court this morning points out that, at the time the dispute arose, same-sex marriage was not yet "the law" in Colorado, which necessarily complicates things. (I would argue that same-sex marriage was not yet "the law" in Colorado at the time precisely because some people misused conceptions of "free exercise" as a rationale for their bigotry, but that's for another time.) A true originalist would look carefully at what "free exercise" might have meant in the eighteenth century, and in particular in the context of the century following the Glorious Revolution. That originalist would discover that exclusion of non-co-religionists from commercial transactions — even those involving artistic fabric prints in Liverpool and Manchester — was not understood as part of "exercise of religion" under the common law of England by the 1760s. That originalist would then be confronted with a more-difficult question: Whether the individualized creation of a cake is enough different.

This time, the Court punted, without having to reach the fundamental issue in Bleistein: The very competence of the judiciary to determine whether a piece before it is "art." (And this is, perhaps, very fortunate for the creators of the Jack Chick comics… and even more-inimical examples. Some of which are in museums.) It will be unable to do so if the Colorado Civil Rights Commission repairs its procedural errors and reaches the same substantive result, and the matter returns — probably just in time for the 2019 Term of Court, leading to a decision in mid-2020 just in time for the presidential election cycle. (Which would be bad, bad, baaaad for the quality of both public discourse and the decision itself.)

But it's a coffin-corner punt as to the immigration cases, and the Administration doesn't have Rocket Ismail to run the punt out. (Identity of potential punt returner chosen with malice aforethought.) If the relatively benign statements of certain members of the Colorado Civil Rights Commission were sufficient to demonstrate inappropriate animus — and they were; as a commanding officer and staff officer, I was in the trenches on these sorts of things for many years, and I'm all too aware of how the appearance of bias has collateral effects that are unpredictable in their details but entirely predictable in their effect on respect for everyone and everything involved — one shudders to think about the gyrations that will be necessary to evade the same conclusion regarding Drumpf's statements, in the face of civil-rights law and even fundamental authorization from Congress that is much more specific and inconsistent with those statements.

Then, too, there's a second-level philosophical issue: Is there a difference between "free exercise of religion" and "free speech, including the right not to speak"? I don't pretend that this is an easy question; I think it makes a difference in this particular case only if "free exercise" is misinterpreted to include "bigotry when justified by some doctrine labelled 'religion' notwithstanding that doctrine's inconsistency with the rest of the purported belief." That way lies the religious justifications for Jim Crow, guys, and any reading of the Fifth and Fourteenth Amendments that does not acknowledge that as an issue equally applicable to religious-doctrine-justified discrimination on any other basis also ignores the three hundred years of history preceding the Constitutional Convention.

26 May 2018

Trademark Cock-Up

This is not the first blawg piece to discuss the ineptness of trademark law and practice regarding the arts — not even on this particular bit of nonsense. It won't be the last. And it won't be the last to recommend the Jack Daniels approach to every trademark issue in the arts that does not clearly arise from intentional and unfair passing off or counterfeiting. I do not promise that I won't be cocky about it.

In any event, Writer Beware offers a clear, balanced, and accurate description of problems that have arisen from US Trademark Reg. Nos. 5447836 (word mark) and 5458137 (graphic representation of word mark), purporting to register the term "Cocky" in class 9 and class 16 claiming first use in commerce dates of 16 June 2016 (and a later registration for a specific graphic version). The mark purportedly uniquely identifies "A series of {downloadable e-books}{books} in the field of romance." Here's how I would evaluate this claim of right to the word mark (the '836 registration) if an author came to me with concerns, but not having received a notice:

  • The mark is, by its nature, quite weak. It concerns appropriation of a common-use term to describe goods related to the ordinary meaning of that word. (I'm not at all certain that a registration was justified given the short use in commerce.)
  • A quick search of the US Trademark Office's records (which you can do yourself at TESS; unfortunately, due to the session-based access to the database in question, I cannot provide a URL directly to the search results individually or as a whole) reveals more than 80 applications and grants related to the word "cocky," indicating that this isn't exactly a novel usage in general. Somewhat amusingly, most of the records for the word "cocky" alone relate to clothing… and we'll return to the relevance of that later (it's hinted at above).
  • A quick search of the Library of Congress's catalog (again, thanks to session-oriented database results, there isn't a way to give you a URL to the list of results) results in well over 100 entries for "Cocky" in the title… including three from romance publishers, two of which appear to be series books from the same designated author (not this trademark holder… but not necessarily the same person, either). As these all date from more than one year prior to the claimed use-in-commerce date, I can only infer that nobody did an appropriate search in the right places — they all would have shown up well prior to the application date.
  • A quick search at WorldCat (again, session results so I can't point you at exactly what I saw) is even worse, with several hundred results (and at least six comparable in the first hundred). Again, these all date from at least one year prior to the claimed use-in-commerce date.

I would thus tell an author who had used merely the word "cocky" in his or her book title or description — especially if used as a description in its ordinary-language sense — to relax and forward any correspondence to counsel. (Frankly, Ms Hopkins, or rather her business entity, can have the graphical mark… well, maybe not entirely, but it's really not worth fighting over, especially since in many e-book formats and/or readers it won't be visible as a graphic anyway.)

The real problem here, though, is the particular approach taken to others' uses. In descending order of seriousness:

  • There has been no visible screening of "uses" by others for nominative or fair use. This is itself an unfair trade practice and unfair competition.
  • Neither has there been visible screening of "uses" by others for actual competition — that is, reference standing by itself to a series of romance books/e-books. Asserting that including a series mark inside a single instance title would be, umm, a novel legal theory… especially since single-instance titles are per se not registrable as trademarks, creating an inverse inference of inherent (non)infringement. (Example: A book entitled The Relationship of Star Trek Novelizations to Film and Television Canonical Developments does not infringe the Star Trek mark.)
  • Trademark law (and, in particular, the registration system as it exists… remembering that registration of trademarks is optional) is ill-suited to the arts in the first place, and especially to anything even slightly outside the core of the high-school English curriculum. Trademark law is about verifying the authenticity of widgets; series titles for books in the field of romance, not so much.

    Which leads to the real point: Unless one has decent evidence of intentional counterfeiting or passing off that has no tenable treatment as parody ex ante, the holder of a mark in the arts is almost always better off using the Jack Daniels approach to others who are "invading one's space." Ms Hopkins, her business entity, and her counsel appear to need some serious education on this point; they're not alone, by any means (recall the "space marines" fiasco), but they're in the spotlight this time because they got cocky about the scope of the mark.

  • Trademark law is also ill-suited for the arts because some old, arguably no-longer-good-law cases on so-called "genericide" have resulted in overreaching, often over the line into paranoid, interpretations of the "must object" aspect of trademarks. Unlike copyrights, trademarks require the holder to object to actually infringing uses of the mark without a license. This is "black letter" law… written on thoroughly decaying paper that doesn't note the multiple changes in both statutory and case law since it was stated. It's actually incredibly difficult to win, because it's very fact-specific. The entire point of the "Jack Daniels letter" is that it is a sufficient response to almost certainly avoid later genericide. Every reported decision imposing a forfeiture penalty for "failure to defend" in the US since the mid-1990s that I have found required systematic, intentional infringements over an extended period of time, analogous to "adverse possession" in real property, that were known to the holder and nonetheless completely ignored. There was no requirement to file or even threaten suit to create a sufficient response; indeed, the reported decisions are remarkably vague other than noting that the holder "objected" (or similar language) when rejecting an asserted failure to defend.

Ultimately, this is more probably an ego problem than anything else. (I don't have enough information to narrow down whether it's author ego, agent ego, publisher ego, lawyer ego, or some combination thereof.) Creators — including authors, composers, artists, etc. — have a greater tendency than even real-estate developers toward extreme embracing of endowment entitlement (PDF). This is exacerbated when they encounter (worse yet, are) marketing executives who "grew up" in fungible widgets and supermarket economics. And that leads to behavior that makes slapping "Trump" on recently acquired buildings, and then never giving it up, look positively reasonable.

15 May 2018

National Erratic Driving Day

…should be established as the day before Mother's Day. And it's not just restricted to motorized vehicles, either; shopping carts can participate, too! <SARCASM> Or maybe it's just the preview of Auto-Body Repair Day. </SARCASM> But all of this shopping (even sharks have mothers) leads to thoughts on jurisprudence.


Due to the inequities of sales tax collection, and the Supreme Court's decision yesterday on sport gambling that previews the chaos to come.

Currently, sales taxes and the Internet are Balkanized by Quill Corp. v. North Dakota, 504 U.S. 298 (1992). Quill held that a seller lacking a physical presence in State B was not obligated to collect sales tax for goods and services shipped to residents of State B — on constitutional, not statutory, grounds. Yesterday's decision in Murphy v. NCAA, No. [20]16–476 (PDF), previews a forthcoming decision challenging the result in Quill on a parallel path — the combination of Congressional power and statutory construction — in a way that implies that at least the result of Quill will remain in place (at least for the present) when the Court issues its decision in South Dakota v. Wayfair, Inc. ("Wayfair") (useful discussion of the progress of oral argument with which I nonetheless fundamentally disagree) in the next few weeks.

The common issue is the so-called "anticommandeering doctrine." Murphy held that as a constitutional matter and through interpretation of the specifics of the statute at issue, Congress cannot demand that states actually do something that is within the respective states' purview. (This is arguably a minor narrowing of "necessary and proper" as it relates to the Commerce Clause, but that's getting much too theoretical and tangential even for me.) The point is that states have even less ability to commandeer each other, or more relevantly here, citizens of another state for the mere purpose of tax collection that is already constitutionally suspect under Quill. No matter how much society and commerce have "evolved" — ironically, that very argument was rejected in Quill itself, see 504 U.S. at 310–16 — there remains, nonetheless, the "distinct sovereigns" problem embedded in both the constitution and every domestic Commerce Clause decision in the past century and a half.

Consistency with Murphy will require that at most the Court reverse Wayfair on the ground that there's no tenable Congressional act authorizing state-to-state sales tax commandeering. After all, under the UCC, the sale is completed in the seller's jurisdiction, at the moment the agreement is reached (or, at latest, the moment the shipment is consigned to a carrier). And if there's one aspect of commerce that has truly "changed" since the long-ago days of Bellas discussed in Quill, it is the adoption of the UCC in the states. And the Court need not even reach the constitutional issue; under the (generally misbegotten and intellectually dishonest) "constitutional avoidance canon," all it need do is point out that the federal statutory scheme is no more acceptable than that in Murphy and save the constitutional issues for another case. <SARCASM> Preferably one not involving a state with a fifty-year history of encouraging banks and credit-card issuers to base themselves there so as to evade usury restrictions imposed in other states. But that, of course, has nothing to do with state-versus-state commandeering. </SARCASM>

Then, too, there's the "not all stupidity is unconstitutional" problem — for yet another day. Sales taxes, and for that matter value-added taxes, are stupid, regressive, anti-union elements of undeclared class warfare by the idle rich against everyone else, especially when not accompanied by equivalent-level nonresidential (or, better yet, extravagent-residential) asset taxes. Fortunately for that class of individuals (which included almost all of the Founding Fathers), there's no "wisdom" component of the Constitution falling within the Judicial Power…