Wake Forest Law Review
3Mar

The IP Battle Between the United States and China Heats Up as the Line Between Military and Civilian Tech Continues to Blur

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By Luke Brzozowski

In 2015, the Chinese Communist Party (“CCP”) released a “state-led industrial policy that [sought] to make China dominant in global high-tech manufacturing.”[1]  The program, referred to as “Made in China 2025” (“MIC”), attempted to “mobilize state-owned enterprises and pursue intellectual property acquisition to catch up with—and surpass—Western technological prowess in advanced industries.”[2]  These “advanced industries” included technology, pharmaceuticals, and rare-earth minerals.[3] 

China’s focus on these industries generated global concern due to commercial technology, such as artificial intelligence and semiconductors, now having significant military value.[4]  In 2018, global apprehension eventually developed into reactions that included the U.S. imposing tariffs on billions of dollars of goods from China.[5]  Due to these consequences, China’s leaders publicly abandoned MIC.[6]  These events ultimately led to the 2020 trade deal between the U.S. and China that required China to commit to increased intellectual property protection for foreign companies, among other legal and economic changes.[7] 

Despite this agreement, the relationship between the two countries has continued to deteriorate.[8]  Since the deal, Chinese courts and technology companies have adopted new legal tactics to fight claims of intellectual property theft.[9]  These methods include forced-transfer agreements and anti-suit injunctions (“ASI”).[10]  Thus, because it is unlikely that Chinese courts “deviate from the central government’s policy,”[11] there is unanimity that “the principles behind MIC are alive and well,” meaning the only thing to change was the name of the CCP’s policy.[12]

Since the birth of the CCP in 1949, observers have accused the nation’s courts of hosting show trials[13] and favoring Chinese stakeholders when “strategic sectors or companies . . . are concerned.”[14]  Therefore, it is no surprise that recent holdings from Chinese courts appear to align with the government’s agenda of acquiring and controlling trade secrets and IP in these “strategic sectors.”[15]  The particular tactics these courts have adopted, however, have sparked widespread condemnation.[16]  Not only are these courts overturning patents,[17] but also, they are supporting forced-transfer agreements and using ASIs in an unprecedented manner.[18]

China’s unofficial joint venture policy requires many companies that want to do business in China to enter into agreements with Chinese firms under terms that mandate them to share valuable IP.[19]  Many companies comply in order to access “the world’s second-largest consumer market.”[20]  This tactic allows China to “leapfrog up global value chains relatively quickly— without the costs, both in terms of time and money.”[21]  These forced agreements have ultimately allowed China to  “acquire outside technologies ranging from high-speed rail to electric-vehicle batteries.”[22]  Therefore, due to the “structural flaws in China’s legal system” that will prevent any deviation from the CCP’s objectives, these barriers to entry are likely here to stay, and a “comprehensive U.S.-style IP protection system will forever remain a mirage in the eyes of foreign corporations.”[23]

In addition to implementing forced-transfer agreements, Chinese courts have begun using ASIs to control IP and licensing rates of important technology.[24]  Originating from fifteenth-century England,[25] ASIs are “a controversial instrument used to combat the conflict of jurisdiction and forum shopping . . . [and are] not issued frequently or lightly.”[26]  Unlike traditional patents that only extend throughout the jurisdiction of the country that issued the patent, ASIs are typically issued in cases involving standard-essential patents (“SEPs”), which are unique patents that must comply with global standards set by Standard Setting Organizations (“SSOs”).[27]  SSOs typically instruct their members to license their SEPs globally on a fair, reasonable, and non-discriminatory basis (“FRAND”), which can result in national courts determining the value of patents issued by other nations.[28]  A court that is hearing a SEP claim can issue an ASI to prevent a party from filing in another court and risk having “identical cases playing out in multiple legal venues simultaneously.”[29]

The Intellectual Property Court of the Supreme People’s Court of China issued its first ASI in 2021 in Huawei v. Conversant.”[30]  Although other countries have used ASIs in the past, this tactic caught many off guard as ASIs are not explicitly included in Chinese law, nor have the Chinese courts adopted a consistent test to apply it.[31]  Since Huawei, Chinese courts have granted ASIs in at least three other major cases[32] but have applied different tests from various common law countries.[33]  In addition to the erratic application of ASIs in Chinese courts, China’s rulings have also been “far broader.”[34]  China’s ASIs have not been limited to the countries in which the parties sought injunctive relief “but extend to all jurisdictions of the world” and have prohibited litigants from asking any other court to determine global FRAND rates for particular IP by threatening fines up to $1 million per week.[35]        

As a result of these ASIs, opposing governments and international organizations have voiced their displeasure and accused China of attempting to unilaterally determine how valuable intellectual property is.[36]  In December 2022, the European Union (“EU”) sued China in the World Trade Organization, “complaining that China has barred EU companies from suing to protect their patents in courts outside China.”[37]  Over the last two months, Canada, Japan, and the U.S. have all asked to join the complaint.[38]  In addition to joining the EU lawsuit, the U.S. has imposed additional restrictions on critical exports to China[39] and recently adopted a new multiagency task force that “aims to protect U.S. technologies” from being stolen by foreign governments.[40]

These countermeasures are intended to protect U.S. innovations, economic competitiveness, and national security.[41]  However, the successful implementation of these directives, along with trial proceedings, will take time and will most likely be met with a strong response from the CCP.  Thus, as technology rapidly advances and the fight to control this property grows, the strained relationship “between the world’s two biggest economies is only likely to intensify further.”[42]

[1] James McBride & Andrew Chatzky, Is ‘Made in China 2025’ a Threat to Global Trade?, Council on Foreign Rel., https://www.cfr.org/backgrounder/made-china-2025-threat-global-trade (last updated May 13, 2019).

[2] Id.

[3] Stu Woo & Daniel Michaels, China’s Newest Weapon to Nab Western Technology–Its Courts, Wall St. J. (Feb. 20, 2023), https://www.wsj.com/articles/u-s-china-technology-disputes-intellectual-property-europe-e749a72e?mod=hp_lead_pos5.

[4] See McBride & Chatzky, supra note 1.

[5] See Bobby Davis, U.S. to Apply Tariffs on Chinese Imports, Restrict Tech Deals, Wall St. J., https://www.wsj.com/articles/u-s-to-apply-tariffs-on-50-billion-of-chinese-imports-1521723078?mod=article_inline (lasted updated Mar. 22, 2018).

[6] See Emily Crawford, Made in China 2025: The Industrial Plan that China Doesn’t Want Anyone Talking About, PBS (May 7, 2019), https://www.pbs.org/wgbh/frontline/article/made-in-china-2025-the-industrial-plan-that-china-doesnt-want-anyone-talking-about/.

[7] See Josh Zumbrun, China Wields New Legal Weapon to Fight Claims of Intellectual Property Theft, Wall St. J. (Sept. 26, 2021), https://www.wsj.com/articles/china-wields-new-legal-weapon-to-fight-claims-of-intellectual-property-theft-11632654001?mod=article_inline.

[8] See Ana Swanson & Lauren Hirsch, U.S. Aims to Curtail Technology Investment in China, N.Y. Times (Feb. 9, 2023), https://www.nytimes.com/2023/02/09/business/us-china-investing-tech-biden.html?searchResultPosition=22.

[9] See Zumbrun, supra note 7.

[10] See McBride & Chatzky, supra note 1; Andrei Iancu & Paul R. Michel, The Solution to Chinese Courts’ Increasingly Aggressive Overreach, Ctr. for Strategic & Int’l Stud. (Apr. 6, 2022), https://www.csis.org/analysis/solution-chinese-courts-increasingly-aggressive-overreach.

[11] Sophie Tang, Anti-Suit Injunction Issued in China: Comity, Pragmatism and Rule of Law, Conflict of L. (Sept. 27, 2020), https://conflictoflaws.net/2020/anti-suit-injunction-issued-in-china-comity-pragmatism-and-rule-of-law/.

[12] Crawford, supra note 6.

[13] See Edward White, Chinese Courts Flex Intellectual Property Muscle Across Borders, Fin. Times (June 15, 2022), https://www.ft.com/content/d4b4e41b-d303-474e-a084-717b948cf2f8.

[14] Woo & Michaels, supra note 3.

[15] Id.

[16] See id.

[17] See id.

[18] See Yang Yu & Jorge L. Contreras, Will China’s New Anti-Suit Injunctions Shift the Balance of Global FRAND Litigation?, Patently-O, 2020, at 4.

[19] See McBride & Chatzky, supra note 1.

[20] Daniel Rechtschaffen, How China’s Legal System Enables Intellectual Property Theft, The Diplomat (Nov. 11, 2020), https://thediplomat.com/2020/11/how-chinas-legal-system-enables-intellectual-property-theft/.

[21] Nicholas Yong, Industrial espionage: How China sneaks out American’s technology secrets, BBC (Jan. 19, 2023), https://www.bbc.com/news/world-asia-china-64206950.

[22] McBride & Chatzky, supra note 1.

[23] Yong, supra note 21.

[24] See Andrei Iancu & Paul R. Michel, The Solution to Chinese Courts’ Increasingly Aggressive Overreach, Ctr. for Strategic & Int’l Stud. (Apr. 6, 2022), https://www.csis.org/analysis/solution-chinese-courts-increasingly-aggressive-overreach.

[25] Yu & Contreras, supra note 18, at 2.

[26] Tang, supra note 11.

[27] Ken Korea, Anti-suit injunctions–a new global trade war with China?, ManagingIP (Aug. 3, 2022), https://www.managingip.com/article/2afz8grsj5i3uyxp19ji8/anti-suit-injunctions-a-new-global-trade-war-with-china.

[28] Id.

[29] Zumbrun, supra note 7.

[30] Tang, supra note 11.

[31] Id.

[32] Zumbrun, supra note 7.

[33] Tang, supra note 11.

[34] Yu & Contreras, supra note 18, at 4.

[35] Id. at 5; see also Zumbrun, supra note 7.

[36] See Zumbrun, supra note 7.

[37] Woo & Michaels, supra note 3.

[38] Id.

[39] See id.

[40] Ben Kochman, Feds Form ‘Strike Force’ To Protect Tech From Foreign Theft, Lexis (Feb. 16, 2023), https://plus.lexis.com/newsstand#/law360/article/1577284?crid=a03fb10d-e0c9-4709-94b1-19c1bc9abff4.

[41] See Walter G. Copan, China’s Ally in Stealing Western IP: The United States, Ctr. for Strategic & Int’l Stud. (Oct. 26, 2022), https://www.csis.org/analysis/chinas-ally-stealing-western-ip-united-states.  

[42] Yong, supra note 21.

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27Oct

Vans, Inc. v. MSCHF: Are Shoes Entitled to First Amendment Protection?

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By Luul Lampkins

Earlier this year, Vans, Inc. (“Vans”) brought a trademark infringement lawsuit against MSCHF Product Studio Inc. (“MSCHF”) seeking a preliminary injunction related to its Wavy Baby sneakers.[1] In response, a federal judge ordered MSCHF to stop shipping the shoes and to cancel any outstanding orders.[2] Vans argued that the Wavy Baby sneakers “blatantly and unmistakably incorporate[d] Vans’ iconic trademarks and trade dress” in violation of the Lanham Act.[3]

MSCHF—a Brooklyn-based art collective—designed the Wavy Baby sneakers in collaboration with rapper “Tyga.”[4] Aside from Wavy Baby’s undulating soles and “waviness,” the “non-functional” shoes seem to resemble Vans’ Old Skool sneakers.[5] MSCHF’s founder and CEO, Gabriel Whaley, described the sneakers as a “‘liquified’ version of a classic skate shoe silhouette, but with almost all function warped and stripped away.”[6] Further, Tyga posted a video suggesting that the Old Skools could be transformed into Wavy Baby by heating them in the microwave.[7]

This is not the first time that MSCHF’s shoes have been at the center of a legal dispute. In 2021, Nike sued MSCHF over its “Satan Shoes,” arguing that they were “likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike.”[8] The parties ultimately settled one week after a judge granted Nike a temporary restraining order against MSCHF.[9]

In response to this lawsuit, MSCHF asserted a First Amendment defense, which is “an affirmative defense that requires a court to balance the defendant’s expressive interests against the public’s interest in avoiding confusion.”[10] MSCHF argued that Wavy Baby sneakers are protected under the First Amendment because they constitute social commentary that “challenged the sneakerhead culture Vans participates in, questioned consumerism, and confronted the tension between a virtual and digital world.”[11] MSCHF also explained that the shoes were meant to be a “parody and critique [of] modern culture.”[12]

The Second Circuit Court of Appeals heard this case on September 28, 2022. On appeal, MSCHF’s attorney argued that the district court failed to follow the Second Circuit’s precedent in Rogers v. Grimaldi.[13] In Rogers, the court articulated a two-prong test for the protected uses of trademarks. First, the work at issue must be “artistically relevant.”[14] Second, the work at issue may not be explicitly misleading.[15]

MSCHF contended that the Wavy Baby sneakers are protected under Rogers because they satisfied both prongs of the test. First, MSCHF argued that Wavy Baby is a work of artistic expression.[16] To support this position, MSCHF pointed to artist Daniel Arsham’s statement: “[t]here is not a single artist who would say MSCHF is not an artist, or that the Wavy Baby sneakers are not art.”[17] Further, MSCHF argued that Wavy Baby’s references to Vans’ marks are artistically relevant because they constituted “a parody of and commentary on Vans, whether or not Vans thinks MSCHF’s message was successfully communicated.”[18] MSCHF explained that there was an “artistic—i.e., noncommercial—association” between MSCHF and Vans rather than an “inten[t] to associate with the mark to exploit the mark’s popularity and good will.”[19]

MSCHF also argued that the Wavy Baby sneakers were not explicitly misleading.[20] Vans disagreed, arguing instead that the sneakers were likely to give rise to “consumer confusion,” thus rendering the sneakers “explicitly misleading as to source.”[21] MSCHF contended that Vans misunderstood the holding in Rogers, which explained that “a use is not explicitly misleading unless it is an ‘explicit indication,’ ‘overt claim,’ or ‘explicit misstatement as to the source of the artwork.”[22] To support its contention, MSCHF explained that Wavy Baby shoes are “larger and have a far different visual impression than Old Skool sneakers, and they come with a prominent parody warning label.”[23]

This case has brought up questions about the scope of the Second Circuit’s opinion in Rogers. While Vans argues that “courts have concluded that commercial products fall outside Rogers’ scope,” MSCHF asserts that the First Amendment still applies in this context.[24]

As the parties to this lawsuit await an ultimate decision from the Second Circuit, it is important to note the broader implications of this decision. This case illustrates the difference between a parody and a satire. Not all references to an existing mark are parodies. A parody must “make it clear that it does not originate from the mark owner” by commenting on the mark.[25] Satire, on the other hand, “comments on society at large or social trends in general” and must “justify its use of the mark beyond just the humor of doing so.”[26]

Parodies and satire are generally considered protected speech—even if they are communicated through a pair of sneakers. Nonetheless, these references to existing marks are only entitled to First Amendment protection if they comport with the requisite standards.

[1] Vans, Inc. v. MSCHF Prod. Studio, Inc., 22CV2156WFKRML, 2022 WL 1446681 (E.D.N.Y. Apr. 29, 2022).

[2] Nina Pullano, Vans-Inspired Sneaker Orders Held Up by Federal Judge, Courthouse News Serv. (Apr. 29, 2022), https://www.courthousenews.com/vans-inspired-sneaker-orders-held-up-by-federal-judge/.

[3] Complaint at 3, Vans, Inc., 2022 WL 1446681, https://www.courthousenews.com/wp-content/uploads/2022/04/22cv2156.pdf.

[4] David H. Siegel, The Usual MSCHF, Nat’l Law Rev. (Apr. 29, 2022), https://www.natlawreview.com/article/usual-mschf.

[5] Id.

[6] Declaration of Gabriel Whaley at 19, Vans, Inc., 2022 WL 1446681, https://www.documentcloud.org/documents/21755821-vans-v-mschf-whaley-declaration.  

[7] Tyga (@tyga), TikTok (Apr. 11, 2022), https://www.tiktok.com/@tyga/video/7085456096751799598?is_from_webapp=v1&item_id=7085456096751799598.  

[8] Bryan Pietsch, Nike Sues Over Unauthorized ‘Satan Shoes,’ N.Y. Times (Mar. 28, 2021), https://www.nytimes.com/2021/03/28/style/nike-satan-shoes-lil-Nas-x.html

[9] Id.

[10] Reply Brief for Defendant-Appellant at 14–15, Vans, Inc., 2022 WL 1446681.

[11] Declaration of Gabriel Whaley, supra note 6, at 19.

[12] Id.

[13] 875 F.2d 994 (2d Cir. 1989). See Oral Argument at 6:28, Vans, Inc., 2022 WL 1446681, https://www.ca2.uscourts.gov/decisions/isysquery/4e5af85a-87c8-4dbe-93ab-35e9b09a0b90/51-60/list/.

[14] Rogers v. Grimaldi, 875 F.2d 994, 1000 (2d Cir. 1989)

[15] Id.

[16] Reply Brief for Defendant-Appellant, supra note 10, at 3.

[17] Id.

[18] Id. at 22.

[19] Id. at 23.

[20] Id. at 24.

[21] Id.

[22] Id.

[23] Id. at 25.

[24] Id. at 11.

[25] Siegel, supra note 4.

[26] Id.

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8Oct

Librarians: The New Scourge of the Seven Seas?

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By Summer Allen

An unlikely character may soon join the ranks of Blackbeard, Captain Hook, and the Dread Pirate Roberts.  In a current lawsuit, librarians are being accused of “digital piracy,” but their treasure chests are filled with books instead of Spanish Doubloons.[1]

A group of publishers, including Hachette and Penguin Random House, brought this lawsuit against the Internet Archive, a nonprofit with an online library, alleging copyright infringement.[2]  They brought their case in the Southern District of New York in June of 2020.[3]  The publishers allege that the Internet Archive is illegally scanning books and uploading them to their servers, where they distribute them for free to the public.[4]  The publishers call this “willful digital piracy on an industrial scale.”[5]  The Internet Archive, which calls itself “a Library of Alexandria for the twenty-first century,” denies these allegations.[6]

Although both provide online copies of books, the Internet Archive uses a different process than traditional public libraries lending e-books.[7]  Traditional libraries have licensing agreements with publishers to distribute e-books; the Internet Archive has no such agreement but instead scans previously acquired physical copies and distributes them online.[8]

The Internet Archive justifies this practice under a theory known as Controlled Digital Lending (“CDL”).[9]  It argues that CDL is a digital process that mirrors traditional library lending, which allows them to distribute digital copies without offending copyright law.[10]  Under CDL, libraries digitize copies of physical books that they own and then loan them out to patrons for a set amount of time.[11]  Crucial to CDL is maintaining the “owned to loaned” ratio.[12]  Circulation must only equal the total numbers of copies owned.[13]  For example, if the library owns two physical copies, they can circulate both physical copies, one digital and one physical, or two digital copies at a single time.  Proponents of CDL argue that it operates under the same legal principles that allow libraries everywhere to lend books: the first sale and fair use doctrines.[14]

Section 109 of the Copyright Act codifies the first sale doctrine, where those who legally acquire copyrighted works also receive the right to sell, display, or otherwise dispose of their copy (provided it does not infringe the interests of the copyright owner).[15]  Other businesses that use the first sale doctrine include eBay, used record stores, and even college bookstores buying and selling used textbooks.[16]

The fair use doctrine allows uses of copyrighted works that implicate any or all of the original holder’s rights.[17]  Ultimately, the fair use test asks “whether the copyright law’s goal of promoting the Progress of Science and useful Arts would be better served by allowing the use than by preventing it.”[18]  Courts look at four factors when applying the fair use doctrine:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.[19]

Those in favor of CDL look closely at the first and fourth factors.[20]  They argue that CDL is a noncommercial, temporary way to further research and learning purposes.[21]  They also argue that CDL has no different effect on the market than other accepted uses, such as traditional library lending.[22]  The Internet Archive stands by their use of CDL, arguing that it serves the public interest “in preservation, access and research.”[23]

Opponents of CDL, however, call it an “invented theory” that directly violates the Copyright Act. [24]  They compare it to a fair use argument already rejected by the Second Circuit in Capitol Records v. ReDigi.[25]  In this case, the court found that an internet platform designed for the lawful resale of digital music files violated the record companies’ rights under the Copyright Act.[26]  The court emphasized the lack of difference between physical and digital copies, finding that the only real difference between the two was the digital copies’ lower price.[27]  This lower price directly affects the market for the products and harms the original copyright holders, thus weighing “powerfully” against fair use.[28]  Some argue that this same reasoning applies to CDL: it allows libraries to provide digital copies for free, thus negatively impacting the market for such publications.[29]

A group of copyright professors and scholars have sided with the publishers, claiming that the Internet Archive’s conduct goes far beyond traditional library exceptions to the Copyright Act, and that CDL is a “fig leaf” that attempts to hide its illegal distribution.[30]  On the other hand, an amicus brief jointly filed by a librarian and copyright lawyer sides with the Internet Archive, arguing that CDL represents the next logical step for libraries operating in the digital age.[31]

Each side filed a motion for summary judgment in July of 2022.[32]  Will CDL prove to be a librarian’s buried treasure?  Or will it be tossed into Davy Jones’ locker?

[1] Complaint at 2, Hachette Book Grp. v. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (3d Cir. June 1, 2020).

[2] Id. at 1.

[3] Id.

[4] Id. at 2.

[5] Id. at 2.

[6] Answer at 1, 3, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (3d Cir. July 28, 2020).

[7] Elizabeth A. Harris, Publishers Sue Internet Archive Over Free E-Books, N.Y. Times (June 1, 2020), https://www.nytimes.com/2020/06/01/books/internet-archive-emergency-library-coronavirus.html.

[8] Id.

[9] Answer at 2, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (3d Cir. July 28, 2020).

[10] Id.

[11] Hachette v. Internet Archive, Electronic Frontier Found. (last visited Oct. 3, 2022), https://www.eff.org/cases/hachette-v-internet-archive.

[12] David R. Hansen & Kyle K. Courtney, A White Paper on Controlled Digital Lending of Library Books, Controlled Digit. Lending (2018), https://controlleddigitallending.org/whitepaper#_ftn1.

[13] Id.

[14] Id.

[15] Id.

[16] Id.

[17] Id.

[18] Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006).

[19] 17 U.S.C. § 107.

[20] Hansen, supra note 12.

[21] Id.

[22] Id.

[23] Answer at 3, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (3d Cir. July 28, 2020).

[24] Complaint at 4–5, Hachette Book Grp. v. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (3d Cir. June 1, 2020).

[25] Controlled Digital Lending is Neither Controlled Nor Legal, The Authors Guild (Jan. 8, 2019), https://www.authorsguild.org/industry-advocacy/controlled-digital-lending-is-neither-controlled-nor-legal/; Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018).

[26] Capitol Records, 910 F.3d at 652.

[27] Id. at 662–63.

[28] Id. at 663.

[29] Controlled Digital Lending, supra note 25.

[30] Brief of Amici Curiae Professors and Scholars of Copyright Law in Support of Plaintiffs and in Opposition to Internet Archive at 9–11, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (Aug. 5, 2022).

[31] Amicus Brief of Kenneth D. Crews and Kevin L. Smith in Support of Defendant Internet Archive’s Motion for Summary Judgment and in Opposition to Plaintiffs’ Cross-Motion for Summary Judgment at 1–2, 9, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (July 20, 2022).

[32] Notice of Motion of Plaintiffs Hachette Book Group, Inc., HarperCollins Publishers LLC, John Wiley & Sons, Inc. and Penguin Random House LLC for Summary Judgment at 1, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (July 7, 2022); Defendant Internet Archive’s Notice of Motion for Summary Judgment at 1, Hachette Book Grp. V. Internet Archive, No. 20CV04160, 2022 U.S. Dist. LEXIS 120780 (July 7, 2022).

 

I removed the comma here consistent with CMS 6.23. The verbs, “has” and “scans,” share the same subject, “Internet Archives.”

 

I’m removing the comma here consistent with CMS 6.23. The verbs share the same subject. See specifically the sixth example in the rule for clarification.

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2Feb

The Big (Trademark) Game: The NFL’s Battle to Protect Its “Super Bowl” Trademark

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By Blake Witty

This Sunday, nearly one in three Americans[1] will turn to their televisions to watch Patrick Mahomes and the Kansas City Chiefs take on Tom Brady and the Tampa Buccaneers in Super Bowl LV.[2]  The Super Bowl has become a mainstay in American culture and is arguably the most followed and prestigious event on the American sports calendar.  Being such a massive event, one would expect that many small businesses would try to use the Super Bowl name to attract football fans and customers alike to events.  However, this is not the case because of the National Football League’s (“NFL”) aggressive defense of the trademarked phrase “Super Bowl.”[3]  This blog post will look at the NFL’s recent history showcasing its fervent desire to protect its trademark and also explore whether the NFL actually has the right to go as far as it does (and if it’s even worth it for them).

The NFL has had the Super Bowl trademark since 1969 and has sent many cease and desist letters to businesses allegedly violating the trademark over the years.[4]  The most prominent example of the NFL flexing its trademark muscle was all the way back in 2007 when the League sent a cease and desist letter to the Fall Creek Baptist Church in Indianapolis, which caused the church to cancel their event.[5]  The League claimed the church was violating NFL rules because the church was charging patrons $3 to come watch the game.[6]  While the NFL has since eased its protocols by allowing places of gathering to use the Super Bowl moniker, these places of gathering still cannot charge admission fees to events that are advertised with the phrase “Super Bowl.”[7]

There have also been examples of the NFL having success in court in restraining suppliers from using its intellectual property, including the Super Bowl trademark.  For example, in NFL Properties, LLC v. Does 1 Through 100[8], the NFL successfully obtained permission by the court to seek a seize and desist order to stop the defendants from selling counterfeit merchandise and tickets with NFL trademarks ahead of Super Bowl 50.[9]  More recently, in NFL Properties, LLC v. Does 1–200[10], the NFL was granted a temporary restraining order, seizure order, and order to show cause when the defendants were also purported to be planning to sell counterfeit merchandise and tickets that bore NFL trademarks, including the Super Bowl trademark, ahead of last year’s Super Bowl.[11]  Further, in NFL Properties, LLC v. Humphries[12], the NFL won a default judgment to dispose of, once again, counterfeit items that bore NFL trademarks.[13]  Finally, in Titlecraft, Inc. v. NFL Properties, LLC[14], the NFL was granted a motion for summary judgement when a company manufactured custom wood trophies that were too similar in appearance to the legendary Vince Lombardi trophy awarded to each Super Bowl champion.[15]  The court held the aspects of the two trophies were similar enough to grant the NFL summary judgment for copyright infringement.[16]  While these cases are not centered on the issue of use of the NFL’s Super Bowl trademark by small businesses, they do show one thing: the NFL has had its share of successes in court in regard to protecting its trademarks.

Even considering all of these successes, how far can the NFL really go to protect its trademarks, especially the Super Bowl trademark?  Some commentators argue that the NFL can go quite far, while others are not as convinced.  For example, one commentator advises to not use the words “Super Bowl” at all to promote a business or watch party and to not use the names of the teams competing in the game to advertise.[17]  Another asserts that bars and restaurants should not use “Super Bowl” to advertise their showings of the game and that sweepstakes or giveaways should also avoid using it.[18]  Yet others think the NFL has really strayed out of bounds.[19] One article argues that one cannot trademark factual information and the NFL would only have a trademark infringement claim if a company claimed endorsement from the NFL or used the phrase “Super Bowl” in a very vague way.[20]  For example, few would suspect that a small bar that advertised a Super Bowl watch party is actually sponsored by the NFL.[21]  This potential confusion is what trademarks are truly intended to protect against.[22]  It is also important to note that there is a trademark concept called “nominative fair use.”[23]  Under this doctrine, a trademarked phrase or logo is permissible to use as long as there is no suggested relationship between the advertiser and the trademark’s owner.[24]  That is why this post and all these other articles are able to use the Super Bowl name.[25]  Maybe these small businesses or bars could also use this doctrine to argue for the use of the Super Bowl name. These small businesses or bars perhaps could say that there is no way a person could reasonably believe that the business or bar was sponsored by the NFL. The NFL would definitely object to this, but it could be an interesting argument.

So what’s the actual answer here?  Does the NFL have as broad of trademark rights as it purports, or does it have a weaker case than it lets on?  It appears to me that the NFL likely does have a ton of latitude. Much of the reasoning behind this conclusion is that a small restaurant or bar would likely need to assert its trademark use defense in court: a tall ask given the NFL’s vast legal team.[26]  As one commentator puts it: “any small business owner would be an eleventy-billion-point underdog in a courtroom match-up.”[27]  So while there could potentially be a case, the NFL’s legal resources in addition to their past court successes make any legal challenge difficult.

But there is also the question, is all this even worth it for the NFL? Instead of using the Super Bowl name to advertise, many companies have come up with their own slogans, the most common of which is probably “The Big Game.”[28]  Further examples include Budweiser using the term “Bud Bowl”[29] or Animal Planet using “Puppy Bowl.”[30]  Fans and consumers clearly know what is being referenced and these phrases are not trademarked so there is no infringement.  There is also a risk of bad publicity if the NFL keeps sending cease and desist letters to small businesses and churches.[31]

So should the NFL actually care about its Super Bowl trademark as much as it does?  They probably still should.  For example, if the NFL allows one small company to use the Super Bowl name, this single snowflake could form a snowball in which others want to use the name, leading to an avalanche that the NFL might not be able to stop.[32]  And again, with the NFL having such a large amount of legal resources[33], it probably is not that much of an inconvenience.  To top it off in regard to any bad publicity: the NFL probably does not “care about a few fans who get annoyed.”[34]

Thus, the answer to our overall question is yes, the NFL probably does have the latitude to defend its Super Bowl trademark as much as it does (or it at least has the resources to defend its actions) and yes, all this is probably worth it for the NFL.  So if you are thinking about hosting a watch party at your local bar or planning some sort of gathering for the game in which you’ll charge admission, it might be a good idea to not use the name “Super Bowl.”  Just like all of us, the NFL is watching.

[1] Helen Coster, Super Bowl TV Audience Rises Slightly to 99.9 Million Viewers, Reuters (Feb. 3, 2020, 3:19 PM), https://www.reuters.com/article/us-football-nfl-superbowl-ratings/super-bowl-tv-audience-rises-slightly-to-99-9-million-viewers-idUSKBN1ZX2LI.

[2] Cody Benjamin, 2021 Super Bowl Sunday: Everything to Know About Super Bowl LV with Time, TV, Odds, How to Watch and More, CBS Sports (Feb. 2, 2021), https://www.cbssports.com/nfl/news/2021-super-bowl-sunday-everything-to-know-about-super-bowl-lv-with-time-tv-odds-how-to-watch-and-more/.

[3] James Leggate, NFL’s Super Bowl Trademark Is Why Some Companies Call It ‘The Big Game’, Fox Business (Jan. 28, 2020), https://www.foxbusiness.com/markets/nfl-super-bowl-trademark-why-some-companies-call-big-game.

[4] Id.

[5] Marcus Baram, NFL Sacks Super Bowl Church Parties, ABC News (Apr. 14, 2009, 8:22 AM), https://abcnews.go.com/US/story?id=4229536&page=1.

[6] Id.

[7] Michelle Kaminsky, Super Bowl Legal Blitz: Inside the NFL’s Legendary Trademark Defense, Forbes (Jan. 30, 2018, 6:20 AM), https://www.forbes.com/sites/michellefabio/2018/01/30/inside-the-nfls-legendary-trademark-defense/?sh=37eb44203293.

[8] NFL Properties, LLC v. Does 1 Through 100, No. 16-CV-00474, 2016 WL 9223833 (N.D. Cal. Feb. 2, 2016).

[9] Id. at *1, *3.

[10] NFL Properties, LLC v. Does 1–200, No. 20-CV-20265, 2020 WL 7493120 (S.D. Fla. Jan. 28, 2020).

[11] Id. at *2–3.

[12] NFL Properties, LLC v. Humphries, No. C 16-474, 2016 WL 2606708 (N.D. Cal. May 26, 2016).

[13] Id. at *1–2, *4.

[14] Titlecraft, Inc. v. NFL Properties, LLC, No. 10-758, 2010 WL 5209293 (D. Minn. Dec. 20, 2010).

[15] Id. at *1, *4.

[16] Id.

[17] Superb Owl or Super Bowl Trademarks, Intell. Prop. Ctr. (Feb. 1, 2019), https://theipcenter.com/2019/02/superb-owl-or-super-bowl-trademarks/.

[18] Wilkinson Barker Knauer, LLP, As Super Bowl Approaches, Advertisers Should Be Aware of the NFL’s Efforts to Protect Its Golden Goose – 2018 Update on Super Bowl Advertising and Programs, Lexology (Jan. 11, 2018),  https://www.lexology.com/library/detail.aspx?g=86464d4b-5b77-4bb8-ad2a-12f9a7204d71.

[19] Timothy Geigner, It’s That Time of Year: No, the NFL Can’t Stop Every Business From Using ‘Super Bowl’ in Every Instance, Techdirt (Jan. 31, 2020, 9:34 AM), https://www.techdirt.com/articles/20200130/10363443827/that-time-year-no-nfl-cant-stop-every-business-using-super-bowl-every-instance.shtml.

[20] Id.

[21] Kaminsky, supra note 7.

[22] Id.

[23] Wilkinson Barker Knauer LLP, supra note 18.

[24] Id.

[25] Leggate, supra note 3.

[26] Kaminsky, supra note 7.

[27] Id.

[28] Geigner, supra note 19.

[29] Leggate, supra note 3.

[30] About Puppy Bowl, Animal Planet, https://www.animalplanet.com/tv-shows/puppy-bowl/about (last visited Feb. 2, 2020).

[31] Baram, supra note 5.

[32] Leggate, supra note 3.

[33] Kaminsky, supra note 7.

[34] Baram, supra note 5.

Post image of quarterbacks Patrick Mahomes and Tom Brady created by Wake Forest Law Review Online staff using official NFL imagery, courtesy www.nfl.com.

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21Feb

On Wednesdays, We Trademark Pink: Glossier’s Quest to Trademark Millennial Pink

Categories: Current Issues Blog
Comments Off on On Wednesdays, We Trademark Pink: Glossier’s Quest to Trademark Millennial Pink

Attribution: https://www.glossier.com/products/three-pink-pouches

By Mary-Kathryn Hawes

Glossier, a millennial favorite beauty brand, is attempting to trademark its signature “millennial pink” used on the pink bubble-wrap pouches that their products arrive in.  Emily Weiss (who millennials may recall had a brief stint on the popular MTV series “The Hills” as the Teen Vogue New York intern[1]) parlayed her successful beauty blog into Glossier, an independent beauty company valued at over $1.2 billion.[2]  Launched in 2014, Glossier is somewhat unique for not only surpassing the ever-popular Kylie Cosmetics in value,[3] but Glossier also raised nearly $200 million in venture capital investments to date.[4]

With this meteoric rise, Glossier has sought to protect its intellectual property rights, receiving trademarks for their crowd favorite products Boy Brow and Balm Dotcom in 2017[5] and 2019,[6] respectively. On 09 May 2019,[7] Glossier filed a § 1(a) application to register their signature pink zip-top, bubble-wrap pouches as a trademark.[8] Specifically, Glossier described the mark as consisting “of the color pink and a translucent circle patterns displayed on the bag are claimed as a feature of the mark which is displayed on bags.”[9]

Trademark Primer

Trademarks include “any word, name, symbol, or device, or any combination thereof . . . to identify and distinguish his or her goods.”[10]  Thus, trademarks primarily serve as source identifiers.[11] While the traditional trademark may be a word or design mark, the Lanham Act also extends trademark protection to trade dress, which can include features such as size, shape, and color, among others.[12] Marks that are inherently distinctive, whose “intrinsic nature serves to identify a particular source of a product”, are eligible for registration on the Principal Register.[13]

Conversely, other marks, such as those that are merely descriptive[14] or merely a surname[15], are eligible for registration on the Principal Register once the applicant demonstrates that the mark has become “distinctive of the applicant’s goods in commerce.”[16] For example, the mark “ORANGE” used for an orange stand is merely descriptive because it describes a characteristic of the good.[17] The mark does not immediately signify source to a consumer. However, over time, such descriptive marks can come to signify source[18] and thus, the mark can become eligible for registration on the Principal Register with a showing of acquired distinctiveness, or secondary meaning. Five years of continuous use in commerce provides prima facie evidence that the mark has acquired distinctiveness.[19]

As noted in the seminal case of Qualitex v. Jacobson, marks that consist of a color cannot be inherently distinctive and require proof of secondary meaning.[20] While color doesn’t immediately signify source to consumers, over time, colors can become source identifiers. Thus, colors are eligible for trademark registration if the color is not functional[21] and is shown to have secondary meaning in connection with the applicant’s goods or services.[22]

After an applicant files for trademark registration, the examining attorney at the United States Patent and Trademark Office (PTO) examines the mark and issues a response to the applicant within 6–12 months. The examining attorney can either permit the mark to be registered on the Principal Register or notify the applicant in writing of the statutory grounds for rejection.[23] Generally, the applicant has six months to respond to this initial office action.[24] After reviewing the applicant’s response, the examining attorney will either publish the mark for registration[25] or issue a second, final office action rejecting the mark.[26]

Glossier’s Trademark Battle

In the initial office action issued on 24 July 2019, the United States Patent and Trademark Office refused registration of the mark because it appeared to be a functional design for the packaging.[27] While Glossier claimed the “translucent circle patterns” as a feature of the mark, the examining attorney found in the examination of the submitted sample that the circles were air bubble cushioning.[28] Because the bubble wrap served a protective feature for the goods stored within, the examining attorney found that “a central feature of applicant’s bags has a specific utilitarian advantage.”[29]

Further, the examining attorney attached an Amazon webpage for bubble wrap mailing envelopes that are used for protecting items as a similar item to Glossier’s zip-top pouches.[30]  Finding that the mark was not inherently distinctive, the examining attorney found that the mark was not eligible for registration on the Principal Register without proof of acquired distinctiveness.[31]

On 23 January 2020, Glossier filed their response to the initial office action, arguing that the proposed mark “consists of the claimed color pink as applied to a very particular type and configuration of product packaging . . . the air bubbles and the packaging itself are not claimed as features of the mark.”[32] Thus, Glossier is seeking to just trademark the color millennial pink on the pouches and not the air bubbles.[33] While this argument likely gets rid of the functionality bar to their registration, Glossier must still prove that millennial pink has gained secondary meaning.[34]

Given that Glossier claims a first use date of 06 October 2014, Glossier first made a § 2(f) claim in their response that they have acquired distinctiveness.[35] Further, Glossier argues that the color pink is not functional, given that there is no distinct advantage to making the packaging pink and there are other colors available for competitors to use on their packaging.[36] Thus, Glossier argues that the only remaining factor is whether the color pink, as a mark, has acquired distinctiveness.[37]

Whether a mark has acquired distinctiveness is a fact-specific inquiry. The Trademark Manual of Examining Procedure provides a nonexclusive list of different types of evidence that used in the past to prove secondary meaning:

  • Long Use of the Mark in Commerce[38]
  • Advertising Expenditures[39]
  • Affidavits or Declarations Asserting Recognition of Mark as Source Indicator[40]
  • Survey Evidence, Market Research, and Consumer Reaction Studies[41]
  • Parodies and Copies[42]

“No single evidentiary factor is determinative.”[43] In its response, Glossier used these factors to argue that the pink pouch has acquired distinctiveness. 

First, Glossier points out that the mark has been used continuously since 2014 and in 2018, sales under the mark generated more than $100 million in revenue.[44] Glossier also attached 98 sworn declarations from Glossier customers who attested that they “immediately recognize the color pink as applied to the Glossier Pink Pouch indicates that the cosmetics and skincare products originate from Glossier and not from any other source.”[45]

Additionally, Glossier attached exhibits demonstrating their advertising and marketing of the pink pouch.[46] Interestingly, as evidence of the applicant’s success in educating the public to associate the proposed mark with a single source, Glossier pointed to third party social media posts.[47] Consumers post and tag images of their Glossier pink pouches, which Glossier argues simultaneously demonstrates that consumers already associate the pink pouch with Glossier and reinforces the connection between Glossier and the pink pouch.[48]

Glossier also provided evidence of unsolicited media coverage, linking various articles touting the “most notorious” and “popular” pink pouch.[49] Given that the existence of parodies and copies of the proposed mark can be evidence of secondary meaning, Glossier pointed to Jimmy Choo’s 2016 pink handbag that resembled pink bubble wrap.[50] Glossier noted that many fashion insiders believed that Jimmy Choo’s handbag was intended to mimic Glossier’s pink pouch.[51]

Ultimately, Glossier asserted that the “abundance of evidence demonstrates that the color pink, as applied to bags featuring lining of translucent circular air bubbles and a zipper closure, has acquired source-indicating significance in the minds of the relevant consumers. When consumers see the Pink Pouch, they immediately recognize it as emanating from Glossier.”[52] Thus, Glossier contends that their mark is eligible for registration on the Principal Register with a claim of secondary meaning.[53]

What Happens Next:

After the examining attorney reviews Glossier’s response, the attorney will either issue a second, likely non-final rejection or publish the mark for opposition if Glossier successfully argues that millennial pink serves as a source identifier.

Ultimately, it’s up to the PTO to determine whether millennial pink serves as a source identifier, and thus, is eligible for trademark registration. Regardless of the outcome, there is at least one important takeaway from Glossier’s quest to trademark the millennial pink as used in conjunction with their pink pouch.

Glossier’s proposed trademark underscores the importance of social media in analyzing secondary meaning in this increasingly digital age. Glossier explicitly used evidence of third-party social media posts to demonstrate their advertising and marketing. Unsurprisingly, the pouch is “Instagrammable” and these micro-impressions created by the social media posts all contribute to the pink pouch becoming a source identifier in the minds of consumers. As we move into an increasingly digital age, the PTO will likely continue to see these creative arguments.

[1] Jonah Waterhouse, Fashion Stars You Completely Forgot Cameoed in ‘The Hills,’ Harper’s Bazaar (Jan. 10, 2018, 11:13 PM), https://www.harpersbazaar.com.au/culture/fashion-star-cameos-the-hills-15487.

[2] Bridget March, Glossier is Now Valued at More Than $1.2 Billion, Harper’s Bazaar (Mar. 20, 2019), https://www.harpersbazaar.com/uk/beauty/make-up-nails/a26881951/glossier-valuation-unicorn/.

[3] #2 Kylie Jenner, Forbes, https://www.forbes.com/profile/kylie-jenner/#209490cd55b5 (last updated Feb. 17, 2020) (noting that Kylie Cosmetics is currently worth at least $900 million).

[4] Kate Clark, Glossier Triples Valuation, Enters Unicorn Club With $100M Round, TechCrunch (Mar. 19, 2019, 1:17 PM), https://techcrunch.com/2019/03/19/glossier-triples-valuation-enters-unicorn-club-with-100m-round/.

[5] BOY BROW, Registration No. 5,170,111.

[6] BALM DOTCOM, Registration No. 5,646,307.

[7] Unfortunately, 09 May 2019 was a Thursday, not a Wednesday.

[8] U.S. Trademark Application Serial No. 88/422,357 (filed May 09, 2019).

[9] Id.

[10] 15 U.S.C. § 1127 (2018).

[11] Id. See also New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 305 n.2 (9th Cir. 1992) (“In economic terms, trademarks reduce consumer search costs by informing people that trademarked products come from the same source.”).

[12] § 1127. See also Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 , 977 (10th Cir. 2002) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)).

[13] Two Pesos, 505 U.S. at 768.

[14] 15 U.S.C. § 1052(e)(1) (2018).

[15] 15 U.S.C. § 1052(e)(4) (2018).

[16] 15 U.S.C. § 1052(f) (2018).

[17] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

[18] See,e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).

[19] § 1052(f).

[20] Qualitex, 514 U.S. at 163.

[21] The functionality doctrine forbids use of a product’s feature as a trademark when doing so will put a competitor at a significant, non-reputational disadvantage because the feature is either essential to the use or purpose of the article or it affects the cost or quality of the good or service. Id. at 169.

[22] TMEP § 1202.05 (Oct. 2018).

[23] TMEP § 705 (Oct. 2018).

[24] TMEP § 705.08 (Oct. 2018).

[25] TMEP § 713 (Oct. 2018).

[26] TMEP § 714.03 (Oct. 2018). Notably, the second office action is typically a final office action. However, if an applicant raises a claim of acquired distinctiveness in their response to the initial office action, then the applicant has generally presented a new issue. TMEP § 714.05(a)(i) (Oct. 2018). Thus, if the examining attorney finds that the response still does not overcome the grounds of refusal, then the examining attorney should issue another non-final office action. Thus, it is possible for applicants to receive more than two office actions. TMEP § 715.03(b) (Oct. 2018).

[27] Office Action Outgoing, United States Patent & Trademark Office (July 24, 2019), https://tsdr.uspto.gov/documentviewer?caseId=sn88422357&docId=OOA20190724164311#docIndex=5&page=1.

[28] Id.

[29] Id.

[30] Id.

[31] Id.

[32] Response to Office Action, United States Patent & Trademark Office (Jan. 23, 2020), https://tsdr.uspto.gov/documentviewer?caseId=sn88422357&docId=OOA20190724164311#docIndex=1&page=1.

[33] Id.

[34] Id.

[35] Id.

[36] Id.

[37] Id.

[38] TMEP § 1212.06(a) (Oct. 2018).

[39] TMEP § 1212.06(b) (Oct. 2018) (noting that while large scale advertising expenditures are significant to indicate use of the mark, “[t]he ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source”).

[40] TMEP § 1212.06(c) (Oct. 2018) (“[S]urvey[s] must show that the consuming public views the proposed mark as an indication of the source.”).

[41] TMEP § 1212.06(d) (Oct. 2018).

[42] TMEP § 1212.06(e)(vi) (Oct. 2018).

[43] TMEP § 1212.06 (Oct. 2018).

[44] Response to Office Action, United States Patent & Trademark Office (Jan. 23, 2020), https://tsdr.uspto.gov/documentviewer?caseId=sn88422357&docId=OOA20190724164311#docIndex=1&page=1.

[45] Id.

[46] Id.

[47] Id.

[48] Id.

[49] Id.

[50] Id.

[51] Id.

[52] Id.

[53] Id.

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3Apr

The Myth of Perfection

Categories: Online
Comments Off on The Myth of Perfection

By Derek E. Bambauer

Cyberlaw is plagued by the myth of perfection.

Consider three examples: censorship, privacy, and intellectual property.  In each, the rhetoric and pursuit of perfection has proved harmful, in ways this Essay will explore.  And yet the myth persists—not only because it serves as a potent metaphor, but because it disguises the policy preferences of the mythmaker.  Scholars should cast out the myth of perfection, as Lucifer was cast out of heaven.  In its place, we should adopt the more realistic, and helpful, conclusion that often good enough is . . . good enough.

Start with Internet censorship. Countries such as China, Iran, and Vietnam use information technology to block their citizens from accessing on-line material that each government dislikes.  Democracies, too, filter content: Britain blocks child pornography using the Cleanfeed system,{{1}} and South Korea prevents users from reaching sites that support North Korea’s government.{{2}}  This filtering can be highly effective: China censors opposition political content pervasively,{{3}} and Iran blocks nearly all pornographic sites (along with political dissent).{{4}}  However, even technologically sophisticated systems, like China’s Golden Shield, are vulnerable to circumvention.  Users can employ proxy servers or specialized software, such as Tor, to access proscribed sites.{{5}}  This permeability has led many observers to conclude that effective censorship is impossible, because censorship is inevitably imperfect.{{6}}  Filtering is either trivially easy to bypass, or doomed to failure in the arms race between censors and readers.  The only meaningful censorship is perfect blocking, which is unattainable.

And yet, leaky Internet censorship works.  Even in authoritarian countries, few users employ circumvention tools.{{7}} Governments such as China’s capably block access to most content about taboo subjects, such as the Falun Gong movement{{8}} or coverage of the Arab Spring uprisings.{{9}}  Those who see imperfect censorship as useless make three errors.  First, they ignore offline pressures that users face.  Employing circumvention tools is like using a flashlight: it helps find what you seek, but it draws attention to you.  China has become adept at detecting and interfering with Tor,{{10}} and Iran recently purchased a sophisticated surveillance system for monitoring Internet communications.{{11}}  Bypassing censorship in cyberspace may have adverse consequences in realspace.  Second, most Internet users are not technologically sophisticated.  They use standard software, and the need to install and update specialized circumvention tools may be onerous.{{12}}  Finally, governments do not need perfect censorship to attain their goals.  They seek to prevent most people from obtaining prohibited content, not to banish it entirely.  Censorship that constrains the average user’s ordinary web browsing generally suffices.

Privacy discourse too is obsessed with perfection.  The reidentification wars have pitted researchers who assert that anonymizing data is impossible{{13}} against those who argue the risk of breaching properly sanitized datasets is vanishingly small.{{14}}  While the arguments are dauntingly technical (for those unfamiliar with advanced statistics), the empirical evidence points toward the less threatening conclusions.  The only rigorous study demonstrating an attack on a properly de-identified dataset under realistic circumstances revealed but 2 out of 15,000 (.013%) participants’ identities.{{15}}  Moreover, critics of anonymized data overlook the effects of incorrect matches. Attackers will have to weed out false matches from true ones, complicating their task.

Opponents make three mistakes by focusing on the theoretical risk of re-identification attacks on properly sanitized data.  First, the empirical evidence for their worries is slight, as the data above demonstrates.  There are no reports of such attacks in practice, and the only robust test demonstrated minimal risk.  Second, anonymized data is highly useful for socially beneficial purposes, such as predicting flu trends, spotting discrimination, and analyzing the effectiveness of medical and legal interventions.{{16}} Finally, the most significant privacy risk is from imperfectly sanitized data: organizations routinely release, deliberately or inadvertently, information that directly identifies people, or that enables an attacker to do so without advanced statistical knowledge.  Examples are legion, from the California firm Biofilm releasing the names and addresses of 200,000 customers who asked for free Astroglide samples{{17}} to AOL’s disclosure of user queries that allowed researchers to link people to their searches.{{18}}  Concentrating on whether perfect anonymization is possible distracts from far more potent privacy threats emanating from data.

Intellectual property (“IP”) in the digital age is similarly obsessed with perfection.  IP owners argue that with the advent of perfect digital copies, high-speed networks, and distributed dissemination technologies, such as peer-to-peer file-sharing software, any infringing copy of a protected work will spread without limit, undermining incentives to create.  This rhetoric of explosive peril has resulted in a perpetual increase in the protections for copyrighted works and in the penalties for violating them.{{19}}

The quest for perfect safeguards for IP predates the growth of the commercial Internet.  In September 1995, President Clinton’s administration released its White Paper, which argued that expanded copyright entitlements were necessary for content owners to feel secure in developing material for the nascent Information Superhighway.{{20}}  Without greater protection, the Paper argued, the Superhighway would be empty of content, as copyright owners would simply refuse to make material available via the new medium.

This prediction proved unfounded, but still persuasive.  In the last fifteen years, Congress has reinforced technological protection measures such as Digital Rights Management with stringent legal sanctions;{{21}} has augmented penalties for copyright infringement, including criminal punishments;{{22}} has pressed intermediaries, such as search engines, to take down allegedly infringing works upon notification by the copyright owner;{{23}} and has dedicated executive branch resources to fighting infringement.{{24}}  And yet, pressures from content owners for ever-greater protections continue unrelentingly.  In the current Congress, legislation introduced in both the House of Representatives and the Senate would, for the first time in American history, have authorized filtering of sites with a primary purpose of aiding infringement{{25}} and would have enabled rightsowners to terminate payment processing and Internet advertising services for such sites.{{26}}  These proposals advanced against a backdrop of relatively robust financial health for the American movie and music industries.{{27}}

Thus, the pursuit of perfection in IP also contradicts empirical evidence.  Content industries have sought to prohibit, or at least hobble, new technologies that reduce the cost of reproduction and dissemination of works for over a century—from the player piano{{28}} to the VCR{{29}} to the MP3 player{{30}} to peer-to-peer file-sharing software.{{31}}  And yet each of these advances has opened new revenue horizons for copyright owners.  The growth in digital music sales is buoying the record industry,{{32}} and the VCR proved to be a critical profit source for movies.{{33}}  New copying and consumption technologies destabilize prevailing business models, but not the production of content itself.{{34}}

Moreover, perfect control over IP-protected works would threaten both innovation and important normative commitments.  The music industry crippled Digital Audio Tapes{{35}} and failed to provide a viable Internet-based distribution mechanism until Apple introduced the iTunes Music Store.{{36}}  The movie industry has sought to cut off supply of films to firms such as Redbox that undercut its rental revenue model,{{37}} and Apple itself has successfully used copyright law to freeze out companies that sold generic PCs running MacOS.{{38}}  And, the breathing room afforded by the fair use and de minimis doctrines, along with exceptions to copyright entitlements, such as cover licenses, enables a thriving participatory culture of remixes, fan fiction, parody, criticism, and mash-ups.  Under a system of perfect control, copyright owners could withhold consent to derivative creators who produced works of which they disapproved, such as critical retellings of beloved classics, for example Gone With The Wind,{{39}} or could price licenses to use materials beyond the reach of amateur artists.{{40}}  Perfection in control over intellectual property is unattainable, and undesirable.

The myth of perfection persists because it is potent.  It advances policy goals for important groups—even, perhaps, groups on both sides of a debate.  For censorship, the specter of perfect filtering bolsters the perceived power of China’s security services.  It makes evasion appear futile.  For those who seek to hack the Great Firewall, claiming to offer the technological equivalent of David’s slingshot is an effective way to attract funding from Goliath’s opponents.  Technological optimism is a resilient, seductive philosophical belief among hackers and other elites{{41}} (though one that is increasingly questioned).{{42}}

Similarly, privacy scholars and advocates fear the advent of Big Data: the aggregation, analysis, and use of disparate strands of information to make decisions—whether by government or by private firms—with profound impacts on individuals’ lives.{{43}}  Their objections to disclosure of anonymized data are one component of a broader campaign of resistance to changes they see as threatening to obviate personal privacy.  If even perfectly anonymized data poses risks, then restrictions on data collection and concomitant use gain greater salience and appeal.

Finally, concentrating on the constant threat to incentives for cultural production in the digital ecosystem helps content owners, who seek desperately to adapt business models before they are displaced by newer, more nimble competitors.  They argue that greatly strengthened protections are necessary before they can innovate.  Evidence suggests, though, that enhanced entitlements enable content owners to resist innovation, rather than embracing it.  The pursuit of perfection turns IP law into a one-way ratchet: protections perpetually increase, and are forever insufficient.

We should abandon the ideal of the sublime in cyberlaw.  Good enough is, generally, good enough.  Patchy censorship bolsters authoritarian governments.  Imperfectly anonymized data generates socially valuable research at little risk.  And a leaky IP system still supports a thriving, diverse artistic scene.  Pursuing perfection distracts us from the tradeoffs inherent in information control, by reifying a perspective that downplays countervailing considerations.  Perfection is not an end, it is a means—a political tactic that advances one particular agenda.  This Essay argues that the imperfect—the flawed—is often both effective and even desirable as an outcome of legal regulation.

*    Associate Professor of Law, Brooklyn Law School (through spring 2012); Associate Professor of Law, University of Arizona James E. Rogers College of Law (beginning fall 2012).  Thanks for helpful suggestions and discussion are owed to Jane Yakowitz Bambauer, Dan Hunter, Thinh Nguyen, Derek Slater, and Chris Soghoian.  The author welcomes comments at [email protected].

[[1]]   Richard Clayton, Failures in a Hybrid Content Blocking System, in Privacy Enhancing Technologies: 5th International Workshop PET 2005 78 (George Danezis & David Martin eds., 2006).[[1]]

[[2]]   Eric S. Fish, Is Internet Censorship Compatible With Democracy? Legal Restrictions of Online Speech in South Korea, Asia-Pac. J. Hum. Rts. & the L. (forthcoming 2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract
_id=1489621.[[2]]

[[3]]   China, OpenNet (June 15, 2009), http://opennet.net/research/profiles
/china-including-hong-kong.[[3]]

[[4]]   Iran, OpenNet (June 16, 2009), http://opennet.net/research/profiles
/iran.[[4]]

     [[5]]   See, e.g., James Fallows, “The Connection Has Been Reset”, The Atlantic (March 2008), http://www.theatlantic.com/magazine/archive/2008/03
/-ldquo-the-connection-has-been-reset-rdquo/6650/.[[5]]

      [[6]]   See, e.g., Oliver August, The Great Firewall: China’s Misguided—and Futile—Attempt to Control What Happens Online, Wired (Oct. 23, 2007), http://www.wired.com/politics/security/magazine/15‑11/ff_chinafirewall?currentPage=all; Troy Hunt, Browsing the broken Web: A Software Developer Behind the Great Firewall of China, Troy Hunt’s Blog (Mar. 16, 2012), http://www.troyhunt.com/2012/03/browsing‑broken‑web‑software‑developer
.html; Weiliang Nie Chinese Learn to Leap the “Great Firewall”, BBC News (Mar. 19, 2010), http://news.bbc.co.uk/2/hi/8575476.stm.[[6]]

[[7]]   Erica Naone, Censorship Circumvention Tools Aren’t Widely Used, Tech. Rev (Oct. 18, 2010), http://www.technologyreview.com/web/26574/.[[7]]

[[8]]   China, supra note 3.[[8]]

[[9]]   Richard Fontaine & Will Rogers, China’s Arab Spring Cyber Lessons, The Diplomat (Oct. 3, 2011), http://the-diplomat.com/2011/10/03/china%E2%80
%99s-arab-spring-cyber-lessons/.[[9]]

[[10]]   Tim Wilde, Knock Knock Knockin’ on Bridges’ Doors, Tor (Jan. 7, 2012), https://blog.torproject.org/blog/knock-knock-knockin-bridges-doors.[[10]]

[[11]]   Phil Vinter, Chinese Sell Iran £100m Surveillance System Capable of Spying on Dissidents’ Phone Calls and Internet, Daily Mail (Mar. 23, 2012), http://www.dailymail.co.uk/news/article‑2119389/Chinese‑sell‑Iran‑100m‑surveillance-capable-spying-dissidents-phone-calls-internet.html.[[11]]

[[12]]   See generally Nart Villeneuve, Choosing Circumvention: Technical Ways to Get Round Censorship, in Reporters Without Borders, Handbook for Bloggers and Cyberdissidents 63 (2005), available at http://www.rsf.org
/IMG/pdf/handbook_bloggers_cyberdissidents-GB.pdf.[[12]]

[[13]]   See, e.g., Paul Ohm, Broken Promises of Privacy: Responding to the Surprising Failure of Anonymization, 57 UCLA L. Rev. 1701, 1752 (2010); Latanya Sweeney, Patient Identifiability in Pharmaceutical Marketing Data, (Data Privacy Lab, Working Paper No. 1015, 2011), available at http://dataprivacylab.org/projects/identifiability/pharma1.html.[[13]]

[[14]]   See, e.g., Jane Yakowitz, The Tragedy of the Data Commons, 25 Harv. J.L. & Tech. 1, 52 (2011); Khaled El Emam et al., A Systematic Review of Re-identification Attacks on Health Data, PLoS One (Dec. 2011), http://www.plosone.org/article/info%3Adoi%2F10.1371%2Fjournal.pone.002807.[[14]]

[[15]]   Deborah Lafky, Program Officer, Dep’t Health and Human Servs., The Safe Harbor Method of De-Identification: An Empirical Test, ONC Presentation (October 9, 2009), available at http://www.ehcca.com/presentations
/HIPAAWest4/lafky_2.pdf.[[15]]

[[16]]   See Yakowitz, supra note 14.[[16]]

[[17]]   Christopher Soghoian, Astroglide Data Loss Could Result in $18 Million Fine, DubFire (July 9, 2007), http://paranoia.dubfire.net/2007/07
/astroglide-data-loss-could-result-in-18.html.[[17]]

[[18]]   Katie Hafner, Leaked AOL Search Results Create Ethical Dilemma for Researchers, N.Y. Times (Aug. 23, 2006), http://www.nytimes.com/2006/08/23
/technology/23iht-search.2567825.html?pagewanted=all.[[18]]

[[19]]   See generally Robert Levine, Free Ride: How Digital Parasites are Destroying the Culture Business, and How the Culture Business Can Fight Back (2011); Jessica Litman, Digital Copyright (2001); Mike Masnick, Why Is The MPAA’s Top Priority “Fighting Piracy” Rather Than Helping the Film Industry Thrive?, Techdirt (Feb. 22, 2011), http://www.techdirt.com
/articles/20110221/15024713194/why‑is‑mpaas‑top‑priority‑fighting‑piracy‑rather-than-helping-film-industry-thrive.shtml.[[19]]

[[20]]   Pamela Samuelson, The Copyright Grab, Wired (Jan. 1996), http://www.wired.com/wired/archive/4.01/white.paper.html.[[20]]

[[21]]   17 U.S.C. § 1201 (2006).[[21]]

[[22]]  17 U.S.C. § 1204 (2006); No Electronic Theft (NET) Act, Pub. L. No. 105-147, 111 Stat. 2678 (1997).[[22]]

[[23]]  17 U.S.C. § 512(c) (2006).[[23]]

[[24]]  Prioritizing Resources and Organization for Intellectual Property (PRO IP) Act, Pub. L. No. 110-403, 122 Stat. 4256 (2008). [[24]]

[[25]]   PROTECT IP Act of 2011, S.968, 112th Cong. (2012).[[25]]

[[26]]   Stop Online Piracy Act of 2011, H.R. 3261, 112th Con. (2012).[[26]]

[[27]]   Robert Andrews, Music Industry Can See The Light After “Least Negative” Sales Since 2004, Time (Mar. 26, 2012), http://business.time.com/2012
/03/26/music-industry-can-see-the-light-after-least-negative-sales-since-2004/; Brooks Barnes, A Sliver of a Silver Lining for the Movie Industry, N.Y. Times (Mar. 22, 2012), http://mediadecoder.blogs.nytimes.com/2012/03/22/a-sliver-of-a
-silver-lining-for-the-movie-industry/#; Bob Lefsetz, Movie Industry Is Making Money from Technologies It Claimed Would KILL Profits, The Big Picture (Jan. 30, 2012, 4:30 PM), http://www.ritholtz.com/blog/2012/01/movie-industry-is
-making-money-from-technologies-it-claimed-would-kill-profits/.[[27]]

[[28]]   See White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1, 13–14 (1908) (holding that a piano roll does not infringe composer’s copyright because the perforated sheets are not copies of the sheet music).[[28]]

[[29]]   See Sony v. Universal Studios, 464 U.S. 417, 442 (1984) (holding that the manufacture of a VCR does not constitute contributory copyright infringement because it “is widely used for legitimate, unobjectionable purposes”).[[29]]

[[30]]   See Recording Indus. Ass’n of Am. v. Diamond Multimedia Sys., 180 F.3d 1072, 1081 (9th Cir. 1999) (upholding a district court denial of preliminary injunction against the manufacture of the Rio MP3 player because the Rio is not subject to the Audio Home Recording Act of 1992).[[30]]

[[31]]   See Metro-Goldwyn-Mayer Studios v. Grokster, 545 U.S. 913, 918 (2005) (holding that distributor of peer-to-peer file sharing network is liable for contributory copyright infringement when “the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement”).[[31]]

[[32]]   Andrews, supra note 27.[[32]]

[[33]]   Michelle Schusterman, Infographic: Why the Movie Industry is So Wrong About SOPA, Matador (Jan. 17, 2012), http://matadornetwork.com
/change/infographic-why-the-movie-industry-is-so-wrong-about-sopa/.[[33]]

[[34]]   See generally Mark A. Lemley, Is the Sky Falling on the Content Industries?, 9 J. Telecomm. & High Tech. L. 125 (2011) (explaining that while the introduction of new technologies in the past may have disrupted certain industries, the new technology did not stop the creation of new content).[[34]]

[[35]]   See generally Tia Hall, Music Piracy and the Audio Home Recording Act, 2002 Duke L. & Tech. Rev. 0023 (2002).[[35]]

[[36]]   Derek Slater et al., Content and Control: Assessing the Impact of Policy Choices on Potential Online Business Models in the Music and Film Industries, (Berkman Center for Internet & Society at Harvard Law School, Research Publication No. 2005-10, 2005), available at http://papers.ssrn.com/sol3/papers
.cfm?abstract_id=654602.[[36]]

[[37]]   Paul Bond, Warner Bros., Redbox Divided on DVD Terms, The Hollywood Reporter (Feb. 29, 2012), http://www.hollywoodreporter.com/news
/warner-bros-redbox-dvd-ultraviolet-flixster-kevin-tsujihara-296071.[[37]]

[[38]]   See Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1162 (9th Cir. 2011).[[38]]

[[39]]   See SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1275 (11th Cir. 2001) (denying a preliminary injunction because a fair use defense would prevent the plaintiff, owner of the copyright of Gone With the Wind, from preventing the defendant from publishing a novel that critiques Gone With the Wind).[[39]]

[[40]]   See generally Derek E. Bambauer, Faulty Math: The Economics of Legalizing The Grey Album, 59 Ala. L. Rev. 345 (2007) (contending the economics of the derivative works right prevents the creation of new works and stifles the re-mix culture).[[40]]

[[41]]   John Gilmore averred that “[t]he Net interprets censorship as damage and routes around it.”  Philip Elmer-Dewitt, First Nation in Cyberspace, Time, Dec. 6, 1993, at 62.[[41]]

[[42]]   See generally Evgeny Morozov, The Net Delusion (2011) (arguing that the Internet makes it easier for dictators to prevent democratic uprisings).[[42]]

[[43]]   See generally Julie Cohen, Configuring the Networked Self (2011) (making the case that flows of private information are not restricted and proposing legal reforms to address the problem); Jessica Litman, Information Privacy / Information Property, 52 Stan. L. Rev. 1283 (2000) (contending that industry’s self-regulation of information privacy has failed and proposing that torts may be the best available avenue to improve privacy rights); danah boyd & Kate Crawford, Six Provocations for Big Data, Symposium, A Decade in Internet Time: Symposium on the Dynamics of Internet and Society, Oxford Internet Inst. (Sept. 2011), available at http://papers.ssrn.com/sol3/papers.cfm?abstract
_id=1926431 (proposing six questions about the potential negative effects of Big Data).[[43]]

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