Sex Exceptionalism in Intellectual Property

The state regulates sexual activity through a combination of criminal and civil sanctions and the award of benefits, such as marriage and First Amendment protections, for acts and speech that conform with the state’s vision of acceptable sex. Although the penalties for non-compliance with the state’s vision of appropriate sex are less severe in intellectual property law than those, for example, in criminal or family law, IP law also signals the state’s views of sex. In this Article written for the Stanford symposium on the Adult Entertainment industry, I extend my consideration of the law’s treatment of sex after Lawrence v. Texas to the context of intellectual property.Sex has long played a role in determining the scope of IP protection, especially in the context of copyright and trademark law. At common law, works, inventions, and marks deemed sexually explicit or simply suggestive were denied the protection of the law. Even today they remain disfavored in some contexts. In this Article, I consider and critique some of the ways IP law continues to devalue and channel sex. Part I of the article considers trademark law’s explicit and implicit disfavoring of sexual content. This is most evident in trademark dilution law, where courts have read in an explicit prohibition on using marks or colorable imitations in sexual contexts. Part II analyzes the ways that copyright law continues to treat works with sexual content differently and sometimes less favorably than other works. Finally, Part III situates IP law’s treatment of sex in a broader critique of the law’s sex exceptionalism and normativity. Using copyright and trademark to channel sex provides yet another avenue for the law (and in this case art and commerce) to shape a vision of sex that is narrow, discriminatory, pejorative, and exclusionary. A consideration of the treatment of sex in IP highlights some of the dangers of the differential treatment of sex in general and also some of the pitfalls of using the IP system to further goals unrelated to its core missions. Ultimately, works, marks, and uses of them should not be disfavored solely because they have sexual content nor should courts be in the business of assessing what constitutes good or bad sex

Copyright’s Private Ordering and the \u27Next Great Copyright Act\u27

Private ordering plays a significant role in the application of intellectual property laws, especially in the context of copyright law. In this Article, I highlight some of the dominant modes of private ordering and consider what formal copyright law should do, if anything, to engage with private ordering in the copyright space. I conclude that there is not one single approach that copyright law should take with regard to private ordering, but instead several different approaches. In some instances, the best option is for the law to get out of the way and simply continue to provide room for various approaches to flourish. In other contexts, the copyright statute should actively support private ordering efforts that may be jeopardized by the current regime. Private ordering may also highlight areas where the law is in need of reform. This is perhaps most noticeable in the context of fair use which has led to the proliferation of much of the private ordering. The combination of the unpredictability and expense of fair use litigation combined with potentially high statutory damages has created a series of risk-averse litigation-avoidance practices and an underutilization of fair use. Legislation may be necessary to prevent a lock-in effect of some of these industry practices and norms. In particular, courts should be barred from using these customs to set the boundaries of fair use. Revisions to the Copyright Act could also address some of the uncertainty surrounding fair use and facilitate the use of works in instances that we would like to encourage. In recent years, copyright holders have used technology and contracts to greatly limit what users can do with copyrighted works and even with uncopyrightable elements of those works. Revisions to copyright law should engage with these private efforts and protect a significant fair use zone. Copyright’s private ordering also reveals some areas of agreement which merit codification, such as faculty ownership of course materials and scholarship. Copyright law does not operate in a vacuum and any major revisions to copyright law must take into consideration the practices that have developed in its wake. As we look forward to a Copyright Act for the twenty-first century, Congress must not only consider ways to limit online piracy, but also how to protect the public’s vital space to engage with, comment on, and rework copyrighted material in light of the myriad practices that have developed in the shadow of the 1976 Act

Why Custom Cannot Save Copyright\u27s Fair Use Defense

This article is a short reply to Richard Epstein\u27s comments on my article, The Questionable Use of Custom in Intellectual Property, 93 Virginia Law Review 1899 (2007). In the underlying article, I critique the general preference of courts to incorporate customary practices into intellectual property law. In this reply, I disagree with Professor Epstein\u27s claim that custom should be dispositive in some instances to determine the scope of copyright\u27s fair use defense. Although I observe that for some individual parties various customary practices may be cost-effective, their incorporation into the law expands the scope of copyright in ways that unreasonably limit and undervalue fair uses. Epstein\u27s preference for private ordering is flawed, at least in the IP context, because suboptimal customs will develop due to market inequalities, the complexity of the IP industries and the dearth of ongoing relationships and repeat players

The Right of Publicity\u27s Intellectual Property Turn

The Article is adapted from a keynote lecture about my book, THE RIGHT OF PUBLICITY: PRIVACY REIMAGINED FOR A PUBLIC WORLD (Harvard Univ. Press 2018), delivered at Columbia Law School for its symposium, “Owning Personality: The Expanding Right of Publicity.” The book challenges the conventional historical and theoretical understanding of the right of publicity. By uncovering the history of the right of publicity’s development, the book reveals solutions to current clashes with free speech, individual liberty, and copyright law, as well as some opportunities for better protecting privacy in the digital age.The lecture (as adapted for this Article) explores in greater depth one major theme drawn from the book ― the right of publicity’s turn in the late 1970s from being a personal right rooted in an individual to being an intellectual property right separable from the underlying identity-holder. This transformation of people into a form of intellectual property has led to significant expansions in the reach and scope of right of publicity laws across the country. At the same time, treating the right of publicity as IP has undermined First Amendment and copyright-based limits on these laws, and jeopardized the freedom of the very identity-holders upon whose interests the right is justified. The Article considers not only whether the IP rubric is appropriate for the right of publicity, but also whether the challenges posed by right of publicity laws are a magnified version of more general problems that IP laws face today ― in particular, the continued expansion of these rights unmoored from the initial justifications for the entitlements, and without adequate protections for socially valuable uses

The Inalienable Right of Publicity

This article challenges the conventional wisdom that the right of publicity is universally and uncontroversially alienable. Courts and scholars have routinely described the right as a freely transferable property right, akin to patents or copyrights. Despite such broad claims of unfettered alienability, courts have limited the transferability of publicity rights in a variety of instances. No one has developed a robust account of why such limits should exist or what their contours should be. This article remedies this omission and concludes that the right of publicity must have significantly limited alienability to protect the rights of individuals to control the development and use of their own identities. In the process of doing so, the article presents a major shift in right of publicity law from thinking about publicity-holders to thinking about “identity-holders.” The distinction between identity-holders and publicity-holders is a crucial one, but one that has not been made elsewhere. Without making such a distinction, it is impossible to describe (let alone justify) an alienable right of publicity.The article presents a major reconceptualization of the right of publicity and suggests new ways of thinking about the right’s purported split from the right to privacy, as well as the competing interests of the public. It also lends insights for other areas of the law in which we struggle with what we mean by property and the appropriate nature of alienability, such as sales of organs, blood, babies, personal data, and moral rights

Copyright Preemption and the Right of Publicity

This article addresses the conflict between an ever-expanding right of publicity and the federally guaranteed rights provided by copyright law. This conflict is highlighted in the Wendt v. Host International case in which the actors George Wendt and John Ratzenberger from Cheers used the right of publicity to prevent the show\u27s creators from licensing the use of the Norm and Cliff characters in the decor of a chain of airport bars. Even though the licensing of the characters was explicitly allowed under copyright law, the Ninth Circuit held that the right of publicity prevented the creators from doing so. Similarly, performers have successfully used the right of publicity to prevent the making of sound-alike recordings even though the Copyright Act explicitly permits such recordings.The vast majority of courts have not preempted the right of publicity even when it conflicts with clearly established copyright law. This is true, in part, because most courts have relied almost exclusively on the preemption clause of the Copyright Act which is ambiguous and difficult to apply. Neither courts nor scholars have looked much beyond the Copyright Act\u27s explicit preemption clause when considering preemption of publicity rights. This article proposes a new approach to analyzing copyright preemption - one which incorporates the broader principles of the Supremacy Clause to determine when copyright law should preempt the right of publicity. The article then presents a practical test for determining when the right of publicity stands as an obstacle to copyright law and should therefore be preempted

Custom, Comedy, and the Value of Dissent

In this essay, I comment on Dotan Oliar and Christopher Sprigman\u27s article, There\u27s No Free Laugh (Anymore): The Emergence of Intellectual Property Norms and the Transformation of Stand-Up Comedy, 94 Va. L. Rev. 1787 (2008). Their study of the quasi-intellectual property norms in the stand-up comedy world provides yet another compelling example of the phenomenon that I have explored in which the governing intellectual property regime takes a backseat to social norms and other industry customs that dominate the lived experiences of many in creative fields. The microcosm of stand-up comedy reinforces my concern that customs are being used to expand IP law both inside and outside the courtroom. This response to Oliar & Sprigman rejects the suggestion that the existence of social norms challenges the incentive rationale for copyright law. I also conclude that the norms that have developed in the stand-up community are not worthy of judicial or legislative deference and suggest some ways that comics and the courts can disrupt the restrictive norms that Oliar and Sprigman identify

Copyright, Custom and Lessons from the Common Law

In this essay prepared for the University of Pennsylvania’s conference on Intellectual Property and the Common Law, I build upon my work on custom and intellectual property. I focus here on one important facet of the subject — how longstanding common law principles should inform our understanding of custom. The common law provides a number of lessons on how to appropriately limit the consideration of custom in intellectual property law and elsewhere. The essay begins by considering the traditional role of custom in the common law. Part II then examines several of the ways that courts have incorporated custom into copyright law, particularly in the context of determining fair use. Part III explores recent efforts to use custom to ameliorate the uncertainty of fair use and to limit copyright’s ever-expanding boundaries. Parts IV through VI criticize the unreflected reliance on custom and consider appropriate limits on custom’s role, taking into consideration the traditional common law limits on the use of custom. Finally, I suggest a number of useful insights (other than the provision of legal rules) that custom and the common law provide for copyright law. These insights include the need for the copyright system to have public support to function, the importance of consensus for copyright rulemaking, and the need for a coherent normative framework. The history of the use of custom in the context of real property also reveals that uses of copyrighted works that cannot be substituted for or that serve communal recreational purposes should be given a privileged status

Liberating Copyright: Thinking Beyond Free Speech

Scholars have often turned to the First Amendment to limit the scope of ever-expanding copyright law. This approach has mostly failed to convince courts that independent review is merited and has offered little to individuals engaged in personal rather than political or cultural expression. In this Article, I consider the value of an alternative paradigm using the lens of substantive due process and liberty to evaluate users’ rights. A liberty-based approach uses this other developed body of constitutional law to demarcate justifiable personal, identity-based uses of copyrighted works. Uses that are essential for mental integrity, intimacy promotion, communication, or religious practice implicate fundamental rights. In such circumstances the application of copyright law deserves heightened scrutiny. The proposed liberty-based approach shores up arguments that some personal uses should be lawful and suggests that such uses should not be limited to those that are private and not for profit

Initial Interest Confusion: Standing at the Crossroads of Trademark Law

While the benchmark of trademark infringement traditionally has been a demonstration that consumers are likely to be confused by the use of a similar or identical trademark to identify the goods or services of another, a court-created doctrine called initial interest confusion allows liability for trademark infringement solely on the basis that a consumer might initially be interested, attracted, or distracted by a competitor\u27s, or even a non-competitor\u27s, product or service. Initial interest confusion is being used with increasing frequency, especially on the Internet, to shut down speech critical of trademark holders and their products and services, to prevent comparative advertisements and to otherwise limit information and choices available to consumers.Contemporary trademark law is at a crossroads and the initial interest confusion doctrine stands at the center of this intersection. This article uses the troublesome doctrine as a prism to analyze three crucial issues that will decide the future of trademark law: The first is whether it is ever acceptable to trade off of the goodwill established by another. The second is whether trademark protection primarily serves to protect consumers from being duped by unethical competitors, or instead primarily serves to bolster the business of individual trademark holders. Finally, the article considers the fundamental question: are trademarks and trademark infringement actions about protecting property rights or about providing more limited rights akin to tort and unfair competition actions? The answers to these questions lead to the conclusion that the initial interest confusion doctrine must be eliminated and trademark infringement returned to its origins as a narrow cause of action primarily directed at protecting consumers from deceptive business practices