“Interactive media is the next wave,” Cashman said. “With our upcoming mobile phone apps and web integration, we’ll soon be able to charge millions more people for using ‘Yankees suck’ in the privacy of their daily lives.”

In related news, you still cannot trademark “Sex Rod” on “apparel ‘ranging from anoraks to zori.’”

Here’s the full abstract of the new article:

Social marketing is among the newest advertising trends now emerging on the internet. Using online social networks such as Facebook or MySpace, marketers could send personalized promotional messages featuring an ordinary customer to that customer’s friends. Because they reveal a customer’s browsing and buying patterns, and because they feature implied endorsements, the messages raise significant concerns about disclosure of personal matters, information quality, and individuals’ ability to control the commercial exploitation of their identity. Yet social marketing falls through the cracks between several different legal paradigms that might allow its regulation—spanning from privacy to trademark and unfair competition to consumer protection to the appropriation tort and rights of publicity.

This Article examines potential concerns with social marketing and the various legal responses available. It demonstrates that none of the existing legal paradigms, which all evolved in response to particular problems, addresses the unique new challenges posed by social marketing. Even though policymakers ultimately may choose not to regulate social marketing at all, that decision cannot be made intelligently without first contemplating possible problems and solutions. The Article concludes by suggesting a legal response that draws from existing law and requires only small changes. In doing so, it provides an example for adapting existing law to new technology, and it argues that law should play a more active role in establishing best practices for emerging online trends.

These lawsuits would seem to be a boon for private entities that verify conformity with kosher laws, because consumers will need someone else to step in where the government cannot. Through the enforcement of certification marks, private groups can protect their distinctive seal of approval without violating the First Amendment. And indeed, as a New Yorker I know the intertwined “OU” symbol of the Orthodox Union indicating approval of a kosher product — based on their web site, they are very busy treif busters these days.

[UPDATE: I noticed after I published this that it is the 500th post on Info/Law. Hooray! ]

A couple of idiosyncratic highlights for me so far include:

Tom Lee’s empirical analysis of how consumers perceive the semantic or linguistic content of trademarks as opposed to their context (as in placement on packaging). While it only addresses certain kinds of situations–that is, situations where there is lots of context available for the consumer–it provided interesting data.

Laura Heymann’s presentation about the law’s treatment of personal names and how it does or does not resemble the regime for trademark law, with a focus on the interaction between denotative (source-based) and connotative (association-based) meanings of both types of names. Legal regulation (or lack of it) of name changes of both kinds raises fascinating issues.

Lisa Ramsey’s discussion of brandjacking on social network sites, which can lead to serious harms but maybe not the kind of harm trademark law addresses. (I wondered if it is possible to make a clean and principled distinction between impersonation of a trademark or its holder vs. a misleading association with one.)

My good friend Jessica Silbey’s analysis, based on narrative theory, of the rhetoric used by “access movements” such as Free Culture, A2K, free software activism, and the like. She finds that these protests against existing IP law ironically share certain key features of the traditional story told to support expanded IP rights.

Mark Lemley and Mark McKenna’s article, “Irrelevant Confusion,” which I think is destined to become a watershed in trademark scholarship.

James Grimmelmann’s presentation of a piece he is writing with Paul Ohm where they identify a coherent school of thought within cyberlaw they call (for now) “architecturalism,” typified by Jonathan Zittrain’s recent book.

Surely others would make different lists out of the nearly 100 papers. (Maybe someone might even pick mine!). As usual, Rebecca Tushnet is providing great live-blogging of the sessions she attends. Thanks to the organizers for an incredibly stimulating event.

As a side note, it’s endless fun to see the wealth of IP infringement that New York City produces. Counterfeit DVDs, fake handbags, unlicensed Michael Jackson or President Barack Obama merchandise of all varieties… it’s a smorgasbord! Seems like a good excuse for a field trip this fall.

First, while waiting for my coffee to brew in the faculty lounge, my eye fell upon a front-page article [limited nonsubscriber access] in the Chronicle of Higher Education from last week that was lying on the table. An hour later, back at my desk, I stumbled upon this story in yesterday’s New York Times online. Both articles demonstrate that we have a serious problem — and both of them reported, as simple matters of fact, the wrong-headed legal interpretations that allow trademark-based censorship of film and television.

The Chronicle story explained how colleges and universities exercise control over the scripts of movies and television programs to ensure flattering fictional portrayals of their institutions. The author recounts how, for example, NYU “balked at racy plot lines” in the old TV teen soap Felicity, so the character instead enrolled at a fictional school very similar to NYU. In some cases, schools impose content restrictions as a condition for filming on campus (in addition to the thousands of dollars in rental fees they collect). That may be reasonable. But the main weapon the schools use is the assertion of expansive trademark rights in their names. The key passage from the article, with my emphases added:

Fleeting references to actual institutions should qualify as ‘fair use’ under trademark law, but anything more persistent requires permission. The threshold is confusion: If a viewer might infer an endorsement, a college that hasn’t signed off can sue. Cautious studio lawyers err on the side of letting colleges peek at the scripts.

Administrators often behave like film-ratings boards: They forbid violent or sexually explicit scripts, which could sully an institution’s good name. Some colleges are more persnickety, turning away fictional students who seem loutish or shady.

“Anything more than a fleeting reference” is a gross misstatement of the legal requirements of trademark law. If a writer really wants to send a fictional character to NYU or any other school, that alone does not give rise to actionable consumer confusion. The character can say the name of the school dozens of times, and even wear some collegiate sweatshirts too. At most, such references in works of fiction give rise to just the sort of “irrelevant confusion” that has so badly deformed trademark law.

Where would we be if, say, movie versions of One-Lor God and Man at Yale legally required permission from the universities they discuss (not always in flattering terms)? For that matter, why doesn’t the same logic require the schools’ trademark-based permission to talk about them in a book? Likewise, how could a film fully portray the struggles Dr. Kinsey faced in his research about sexuality without mentioning that he conducted them at Indiana University?

The Chronicle also discusses the movie Stealing Harvard, about a character who pilfers money to pay the tuition, which was originally called Stealing Stanford until that school objected. This may be a closer case of potential consumer confusion, but even here there is well-established case law that titles of artistic works can mention a trademark if it has relevance to the underlying work. And if Stanford in particular had somehow been important to the artistic message of a fictional work, surely we could not allow the subject of that message to stifle it without intruding very seriously on free speech.

Of course, as the quoted passage also notes, the excess caution of risk-averse gatekeepers often matters more than the actual scope of the law. I do hope that simpler law exempting such uses from the ambit of trademark law might embolden the timid studios — I’ve written that before and I am working on follow-up proposals this summer — but maybe that’s hoping too much.

The Times article tells, if anything, an even more alarming tale, though trademarks are a smaller part of it. A movie version of the great baseball book Moneyball (responsible, among other things, for inspiring law dean Jim Chen!) was set to begin filming in days, starring Brad Pitt and directed by Steven Soderbergh, but the studio has pulled the plug. Many Hollywood-style conflicts were involved (it reads like an episode of Entourage, actually), but one significant part was, again, over-expansive trademark law. The studio, Sony Pictures, had problems with Soderbergh’s revised script, according to the Times (again, with my emphases):

One reason [for Soderbergh's changes] was to win the approval of Major League Baseball, which was not happy with some factual liberties in [the original screenwriter's] version. Such approval is crucial in a baseball film that intends to use protected trademarks.

“Typically, on a film like this, we look at it for historical accuracy,” said Matthew Bourne, a vice president of Major League Baseball for public relations. “We’ve been in touch with Soderbergh and Sony, and they’ve been receptive to our requests.”

What baseball saw as accurate, Sony executives saw as being too much a documentary. Mr. Soderbergh, for instance, planned to film interviews with some of the people who were connected to the film’s story.

So, if a screenwriter wants to tell a story about a real team, baseball’s PR executives must approve of it first? To the degree that they can change the entire style of the movie? What if the character makes a pact with Satan to defeat the Yankees? How about an acclaimed Lou Gehrig biopic, or a cartoon about Babe Ruth’s talking bat? What about a mock trial of Pete Rose at Harvard Law School?

I wish these stories were unusual. But the casual way the journalists state the supposed law shows how widespread this (mis)understanding of trademark rights has become. And these incidents, like countless others (see here and here for examples), will never result in litigation, and therefore never result in decisions that might clarify the law. Rightsholders demand compliance, and movie or TV studios consider it too costly or troublesome to resist.

There oughta be a law!

Among the newest is the recent lawsuit filed by St. Louis Cardinals manager Tony LaRussa against Twitter. A user who claimed to be LaRussa opened a Twitter account in his name and said some nasty things, including mocking references to the deaths of two Cardinals pitchers. Twitter denied initial reports that the suit had been settled in a somewhat bellicose blog post (remember, lawyers: it isn’t a settlement until the other guy’s client signs off). Twitter then removed the case (that is, transferred it) from state to federal court, where it currently remains active on the docket of the Northern District of California. (The best news coverage is here and here.) The phony LaRussa account was terminated long ago; impersonation violates Twitter’s terms of service.

LaRussa’s actual grievances sound like they should give rise to defamation or false light, or perhaps the appropriation tort. But these would all be blocked, quite routinely, by section 230. Of course, LaRussa could go after the individual impostor, assuming that person could be found. Instead, his lawyers framed much of his complaint in terms of trademark infringement. Why? It’s no coincidence that section 230(d) carves out IP (along with criminal law) from the special immunity, stating, “Nothing in this section shall be construed to limit or expand any law pertaining to intellectual property.”

But to prevail on the trademark infringement claim, LaRussa has to prove that the phony account was likely to confuse consumers into thinking he endorsed Twitter, thus harming him. That is why his complaint emphasizes:

The Site states in large lettering, ‘Tony LaRussa is using Twitter,’ and encourages users to ‘Join today to start receiving Tony LaRussa’s updates.” It also contains a picture of Plaintiff with his name printed next to ít. Beneath the picture, the Site contains written entries that are impliedly written by Plaintiff himself when in fact they are not.

In this particular case, proving confusion and harm will be very difficult, since (1) the account only had four followers; (2) it included a notation in the user’s profile section, “Bio Parodies are fun for everyone;” (3) it’s not clear a statement (even a false one) that LaRussa used the service can fairly be called an endorsement of the service (though the “endorsement” concept can be slippery, as I have written elsewhere). Trademark dilution does not require confusion or monetary harm, but LaRussa pleaded under federal dilution law, which allows only injunctive relief — now moot since the profile is gone — and completely exempts “noncommercial use” of a trademark.

More generally, however, this case highlights the possibility of a loophole for celebrities who can recast privacy-like claims under trademark law (and possibly also rights of publicity, if those are interpreted as intellectual property under the language of section 230(d)). Where would that leave us? Well, it shows (again) that the apparently bright lines of section 230 sometimes aren’t. But it might also create what I’d consider a pernicious double standard: celebrities maligned by anonymous online impostors could plead around section 230 by claiming trademark or publicity rights in their name, while many ordinary people victimized by defamation or cyber-bullying would have their claims blocked. Other law, defamation in particular, expects celebrities to have thicker skin and tolerates more insensitive speech about them. If LaRussa pulled off this suicide squeeze, that sensible dichotomy might get turned on its head.

[UPDATE: I plumb forgot to mention another crucial angle: Twitter now wants to sell verified accounts to celebrities (as in, “This is the real Tony LaRussa tweeting.”) Those wouldn’t fetch a very high price if the fake accounts from which the celebs are trying to distinguish themselves are unlawful and Twitter is liable for them.)

Filtering Workshop: Implications for ISPs (University of New South Wales, 4 March 2009)

My theme is that the proposed Australian filtering program contemplates a wholesale change in the role of the Internet Service Provider (ISP). This alteration creates a significant risks of undesirable, secondary effects.

ISPs are attractive regulatory targets, especially where enforcement against primary actors such as end users is expensive, uncertain, or problematic due to those actors’ behavior. This may be particularly true in countries such as Australia, the United States, or the United Kingdom, where the network architecture is decentralized. Countries such as China and Saudi Arabia designed their Internet infrastructure to enable centralized control at key choke points, making the involvement of intermediaries in filtering less crucial.
There can be benefits from requiring ISPs to act as enforcers. The application of restrictions is likely to be more uniform than with controls on end users directly, and ISP-based enforcement offers greater immunity against user error or evasion. Filtering at the ISP level is “always on.” In addition, lists of proscribed material are more readily updated since they are deployed at fewer locations on the network.

However, ISP-based restraints create critical challenges. ISPs shift from passing bits to differentiating among them. Power over content decisions shifts from end users at the edge of the cloud to providers, in conjunction with government, at the center. ISPs become regulators with significant power, especially under a system that permits or encourages variation in content blocking. It is not clear, under the current Australian plan, what requirements (if any) ISPs would have to adhere to in terms of transparency about filtering decisions.

Concomitantly, providers may be hesitant about assuming such a role, for they will become enmeshed in heated debates over content. They may be forced into difficult normative judgments, as with decisions regarding fair use versus copyright infringement under the U.S. Digital Millennium Copyright Act (DMCA) or its Australia equivalent. ISPs will quickly face demands for restrictions from a variety of interest groups – consider spam, hate speech, defamation, and illegal drugs sites among others. IP infringement is likely to be the first successor to initial content filtering – note that a requirement for filtering copyrighted material was proposed as a rider to the economic stimulus legislation recently passed in the U.S. ISPs, in short, will be converted to general-purpose watchdogs. The ease with which filtering can be accomplished will tempt interest groups to use it as a way of achieving their goals while minimizing debate or scrutiny. Moreover, ISPs are likely to face varying or inconsistent decisions based on the content at issue (which may be difficult to ascertain without reassembling all of the packets involved in a transaction). For example, U.S. ISPs confront a range of incentives or penalties depending on whether the content at issue infringes copyright, trademark law, bans on child pornography, defamation, or anti-spam statutes.

If faced with these demands to prevent access to content, ISPs may be overdeterred. The threat of liability may cause them to target questionable or even innocent content for blocking. Consider, for example, blog hosts or e-mail service providers in China. Research by the OpenNet Initiative and Rebecca MacKinnon, among others, shows both variation in filtering – suggesting uncertainty about the boundaries of proscribed content – and targeting of seemingly innocent keywords and phrases. In China, and elsewhere, ISPs must consider that failure to prevent access to banned material may lead to draconian or highly visible sanctions as an example to other, similarly situated entities.

Finally, tertiary effects from this role change are likely, but difficult to predict. Data retention efforts or mandates may increase, as governments seek to track who attempts to access banned pages in addition to blocking those efforts. Filtering may substitute for alternative enforcement regimes that are more effective. Consider that in New York, the state attorney general pushed major ISPs into dropping Usenet newsgroups over child pornography concerns while admitting that prosecuting those who produced and distributed the material was infeasible (though probably a more effective way to protect children). An impact on user privacy is nearly certain. ISPs may be required to detect the creation or publishing of banned content, and techniques such as deep packet inspection create risks that can chill communication. Filtering can undercut innovation: it may require blocking protocols such as BitTorrent, or peer-to-peer software more generally, or limiting encryption. It threatens to undercut the end-to-end principle central to the Internet’s design and thus the production of new communications technologies.

Finally, there is the Cylon problem: ISPs may have incentives to filter not just on our behalf, but on their own. For example, the Canadian provider Telus blocked access to the Web site of a labor group involved in an action against it. Similar concerns emerge from the network neutrality debates about ISPs favoring content from partners or subsidiaries. Detecting self-interested measures becomes more difficult in a system where blocking is ubiquitous and mandatory.

In conclusion, ISPs are ground zero in the filtering debate. They may be a necessary component of any blocking system due to the architecture of Australia’s network, but enrolling them as content regulators fundamentally changes the nature of the ISP and raises issues we must address before moving forward.

In addition to a pleasant trip down memory lane (except Jelly Rolls – I hate dueling pianos), this short raises some fun copyright questions. Is this a parody? If so, of what – South Park, Lotusphere, or both? If it’s of Lotusphere, aren’t we in infringing territory (at least in the Ninth Circuit) under Dr. Seuss v. Penguin Books? What about a trademark claim – this mash-up is good enough that I actually wondered if Trey Parker and Matt Stone were involved somehow? (And if so, what does this mean? Only crappy mash-ups are safe from legal liability?) If you’d asked me these questions when I was at Lotus, I’d have looked at you as though you asked about the release plans for Lotus Marmoset 1.0, but now that I’m a lawyer, I sit and ponder them.

Anyway, if you like the vid, here’s another one on Web design that is spot-on.