And by the way . . .

In reading yesterday's Supreme Court decisions, I noticed that there is still no Bilski. The longer they keep us waiting for that case, the more I'm convinced it's going to make a major change in patentability. What could they have in store for us? A big cutback in patentable subject matter, I'm thinking.

Still No Bilski

Another sitting of the Supreme Court has come and gone, and the Court still hasn't decided In re Bilski, which promises to be a big deal in patent law. I was teaching Intellectual Property this term, and I kept putting off teaching patentable subject matter in the hopes that the Court would decide the case, but no such luck.

The case will give us some insight into the longstanding problem of the degree to which patents are available for processes that lie outside the area of traditional industrial, manufacturing processes. A "process" is specifically listed as patentable under section 101 of the patent act, and everyone agrees that a process for vulcanizing rubber, for example, is patentable, but the courts have tied themselves up in knot over more abstract processes, particularly those that involve something like a mathematical algorithm. The Supreme Court started things off by denying patentability for a process for converting numbers from one number system to another and ever since then things have been rather confused.

The Federal Circuit, created to fix up patent law, took great liberties in this area and seems to have regarded itself as authorized to ignore Supreme Court precedent. The Supreme Court gave the Federal Circuit a great deal of leeway for a while -- perhaps to let the experiment work -- but lately has been reining it in almost every Term. Now this case could be another big deal in patents.

Personally, I think mathematicians get unfairly shafted in the subject matter area. Math was my undergraduate major, so perhaps I am biased, but why should achievements in mathematics be less rewarded than those in physics or chemistry? If I invented a fast algorithm for factoring large numbers, for example, it would be extremely important -- all of encryption, as I understand it, is based on the fact that it's easy to multiply two numbers together but hard to break a large number into its factors. A factoring algorithm would be a useful and important achievement, and it's not clear to me why it shouldn't be patentable.

I think I would allow more leeway in subject matter but tighten up in obviousness. A lot of the controversial subject matter patents should clearly have gone down on the obviousness criterion. Mr. Bilski, for example, is basically saying, "I've invented hedging!," which is ridiculous. See also In re Comiskey ("I've invented arbitration!"). Let's give mathematicians their due, but only if they come up with something really new.

Who Signed This Complaint?

So watch this e-trade ad, featuring those annoying talking babies, and ask yourself, whose right of publicity does it violate?

Of course! Lindsay Lohan!

That's right, Lindsay Lohan is suing e-trade (really!) on a claim that, because the "milkaholic" baby is referred to as "Lindsay," the ad exploits Lohan's identity to tout e-trade.

OK, there is something called the "right of publicity," and it does prevent companies from using the name or likeness of celebrities (or non-celebrities, for that matter) in their advertising without consent. And it's true, the cases show that a use doesn't have to involve the celebrity's full name or likeness to count -- it's enough that the ad uses something "associated with" the celebrity. Thus, a maker of port-a-potties was successfully restrained from calling them "Here's Johnny," because that phrase was so associated with Johnny Carson, and a maker of copiers was successfully restrained from running an ad featuring a robot in a blond wig in front of a board of big letters that was reminiscent of Vanna White on Wheel of Fortune.

But the key to both cases is that the ads conjured up the identity of the celebrities involved by using things strongly associated with them. Here, the only thing involved is the first name, "Linsday," which is a common name. Oh, and I suppose it's true that the ad calls the baby Lindsay a "milkaholic," and Lindsay Lohan has her own famous substance abuse problems. But it's beyond silly to say that the ad violates Lohan's right of publicity. Celebrities don't own their first names, particularly when the name is common. I suppose if the baby were called "Paris" there might be something to argue about. But this suit is a publicity stunt.

Maybe Lohan will be trying to suppress this ad too.

What's a Tweet?

Twitter's application for a trademark registration on the word "tweet" was recently rejected, which led to a discussion among some colleagues and myself as to whether the word is a generic term. The argument in favor is that the word "tweet" has become a common term, which has entered dictionaries and even the AP style guide, as the linked article shows.

A basic principle of of trademark law is that no one can trademark a "generic" term, which is to say, the common term for article or service being sold. Thus, no one could own the exclusive right to sell toothpaste under the name "toothpaste." That would hardly be fair to competing sellers of toothpaste, and the generic term also doesn't perform the basic function of a trademark, which is to tell consumers the source of the product, not what the product is.

Nonetheless, I would say that "tweet" is not generic. Yes, "tweet" has become a common term, but with what meaning? To me, "tweet" means, "a short message carried via the Twitter service." It doesn't mean, generically, "a short message," or even "a short message carried via some social networking service." It is specific to Twitter. I don't think of the short messages I send to my Facebook friends as "tweets."

This usage is confirmed by that eminently reliable source, Wikipedia, which defines "tweet" as "A micro-blog post on the Twitter social network site, or the act of posting on it." And urbandictionary.com says that a "tweet" is "A post on Twitter, a real-time social messaging system."

So I would say that "tweet" still performs a trademark's source-indicating function. It tells you that the thing named is associated with Twitter specifically. Perhaps people will soon start referring to any short message as a "tweet," but it hasn't happened yet. So I say that "tweet" is not generic.

Calling the Eighth Amendment

Music downloaders, beware: a jury has determined that a 32-year-old Minnesota woman violated the copyrights on 24 songs owned by four major record labels, and it returned a verdict for the labels in the amount of $1.92 million. That's about $80,000 per illegallly downloaded song. That's even though each downloaded song could have been purchased legally for $1.

The copyright statute authorizes "statutory damages" (i.e., damages that may be unrelated to a plaintiff's actual damages) in any amount between $750 and $30,000 per copyright violated that the court considers just, and in cases where the violation was wilful, the amount may be increased to up to $150,000. So the amount, incredible as it is, is within the statutory limits (wilfulness was apparently proved). The statute does make it seem as though the court, not the jury, sets statutory damages, so I'm a little surprised that the jury is involved here, but I'm not really familiar with the practice on this point.

In any event, even allowing for the need to impose a penalty that goes beyond the actual damages suffered and that will provide an appropriate deterrent to illegal behavior, clearly this verdict is ridiculous. Indeed, off the top of my head I'd be inclined to say that it's a case for application of the Eighth Amendment, which prohibits the imposition of "excessive fines." The Supreme Court has held that this amendment does not apply to damages in a civil suit between private parties, but it has constrained punitive damages using the Due Process Clause, and here statutory damages are serving a similar function.

But first I would apply the statutory copyright provision that the statutory damages should be such damages "as the court considers just." The defendant is liable for more than $24 and should pay an amount that would appropriately deter illegal music downloading. But I think about $10,000 or $15,000 would amply serve that purpose (defendants have apparently been settling for $3,000-5,000, so the fine imposed after trial needs to be more than that). $1.9 million is absurd.

Update: A little research (actually I asked a colleague, but that's part of research!) reveals that in 1998 the Supreme Court held that the Seventh Amendment right of jury trial includes the right to have the jury determine the amount of statutory damages in copyright cases. So that's why a jury verdict was involved. But presumably the court could still apply any constitutional constraint on the amount of damages awarded.

Facebook Follies

Facebook recently alerted its users that although they could delete content (text, pictures) from their profiles at any time, Facebook had the right to retain archived copies of the material. Following outraged user reactions, Facebook has backed down. It has acknowledged that users own their content.

In fairness, Facebook never exactly claimed that it would own anything users posted on the site; reserving the right to retain archived copies is pretty different from claiming ownership, which would have meant that Facebook could do anything it wanted with the material. My sense is that Facebook was just covering itself in case, as is likely, it doesn't always succeed in deleting everything every user wants deleted.

But at the same time, Facebook, of all websites, should have been alert to the sensitivities of content control in the digital age. The Internet is challenging our understanding of what makes sense in intellectual property rights in many ways. Central sites like Facebook must know that they are in the vanguard and that their every moved will affect millions of users. Have a care, Facebook, whenever you change that boring fine print in the terms of use.

More Trademark Abuse

Good story on yet another attempt to use trademark rights to limit web content. The law firm Jones, Day claimed that a website's link to the web bio of one of its lawyers, Jacob Tiedt, infringed the Jones, Day trademark.

Obviously, the claim is ridiculous. Trademark infringment depends on likely consumer confusion. Everyone understands that the web contains links to external content. You don't imagine that my blog is sponsored by Slate Magazine because of the first link, do you? And the second link doesn't imply association with Jones Day, either.

Sue me, Jones Day. Let's get a ruling on your trademark abuse.

IP on the Menu

The NY Times reports a chef suing her former sous-chef for copying her restaurant.

As usual, it's tough to get a clear sense of the merit of the suit from reading a news account. It's clear that the "trade dress" of a restaurant -- its total image and overall appearance, including things like the decor and the menu -- can be protected intellectual property. On the other hand, you can't own the exclusive right to serve lobster rolls and fried clams.

IP law is always a delicate balance between protecting good competition -- the kind of competition that makes America great and promotes low prices and good products for consumers -- while stifling bad competition -- the kind where someone wrongfully steals someone else's protectible ideas. Judging from the article, the plaintiff is pushing the envelope here. The defendant may have copied too much, but one gets the sense that the plaintiff just doesn't like competition. If she's discovered that New Yorkers enjoy a New England seafood-style restaurant, that's great, but others are entitled to compete in that market.