The Laboratorium
April 2008

Excellent news for Protococcus Algae


The Onion A.V. Club, Say Goodbye to the Blockbuster:

The thought of filmmakers trying to capture Norbit’s lightning in a bottle once more is chilling enough to consider, but if they pull it off, summer entertainment in the future may be targeted exclusively to single-celled organisms. Excellent news for Protococcus algae, which currently can’t get enough of Deal Or No Deal.

A Few Facts About the LGP-30


The Librascope/Royal McBee LGP-30, an early computer, is now best remembered for being the computer at the heart of The Story of Mel: drum memory, one-plus-one addressing, index register, and all. (The “free verse” version is better-known, and I think better.)

But did you know that Mel was real?

Also, did you know that the LGP-30 used non-standard hexadecimal? Perhaps you are asking yourself how hexadecimal could possibly be non-standard: there are sixteen digits, right? Well, yes, but in our modern computers, those digits are:

 0 1 2 3 4 5 6 7 8 9 A B C D E F

Whereas, on the LGP-30, they were:

 0 1 2 3 4 5 6 7 8 9 F G J K Q W

Makes sense, right? It’s related to the layout of the LGP’s Flexowriter—you can see the lower-case letters continuing the stride of the decimal digits—though that layout is itself a baroque marvel that has the same character serve as a lower-case “l” and as the digit “1”.

With such an unlikely sequence of letters, one needs a mnemonic. According to Wikipedia, the canonical one was “FiberGlass Javelins Kill Quite Well.” But according to M. Mitchell Waldrop’s biography, J.C.R. Licklider preferred “For God and Jesus Christ, Quit Worrying.” The observant reader will have noticed that the mnemonic only works if you treat “Christ” as though it started with a K.

I Would Have Thought It an Easy Question


What’s the interaction, if any, between copyright misuse and the statute of limitations?

Someone’s going to ask me about this tomorrow, I can feel it in the pit of my stomach …

Yoo’s Town


(To the tune of Bruce Springsteen’s Youngstown)

Up in northeast Ohio
Back in nineteen fifty-two
President Harry Truman
Seized Youngstown Sheet and Tube

There’d been some labor unrest
And Harry was afraid of more
He said he needed the tanks and bombs
To fight the Korean war

There in Youngstown
There in Youngstown
And John Yoo don’t you forget
What was said in Youngstown

Well the case reached the Supreme Court
Where it was argued well
And the court handed down handed down a ruling
Saying he couldn’t seize the mills

The president’s inherent powers
Whatsoever they may be
Must yield to the will of Congress
In our constitutional democracy

That was Youngstown
That was Youngstown
And John Yoo don’t you forget
What was said in Youngstown

Well John Yoo came to OLC
Where he wrote a memo or two
His reasoning, now, it was slipshod
But it did what they wanted it to do

He said the president had powers
That stemmed from Article II
Powers to hurt, and maim, and mutilate
“If we do it, it’s not torture,” said John Yoo.

Where was Youngstown?
Where was Youngstown?
Now John Yoo why’d you forget
To talk about Youngstown?

From the waterboard room at Gitmo
To the cells of Abu Ghraib
To the CIA’s hidden prisons
The story’s always the same

The men in charge, they flout the law
Telling themselves the world’s changed
They found a lawyer to write what they wanted
One dumb enough to ignore the case …

Of Youngstown
Of Youngstown
Now John Yoo, he went and forgot
To write about Youngstown

When he retired he got his tenure back
And returned to Berkeley’s sunny climes But someday justice will come and take him
To face trial for war crimes

Sentences You Don’t Often See


AP News:

Groups for and against abortion rights expressed outrage over the affair.

Priorities


Doug Berman, guest-posting at SCOTUSBlog:

The Court collectively merits lots of credit for relatively speedy work on such an important and challenging case. I was worried state would might have to wait until June for an opinion, but it is now clear that the Justices prioritized getting this case completed so that the urgent business of the death penalty can move forward.

Important, yes, but “urgent?”

Substituting for Beverage Substitution


Eric Goldman thinks the beverage substitution hypo is past its prime:

For example, we need to retire the example of a consumer ordering Coke and the retailer silently delivering Pepsi instead from trademark law. This example is so distracting because we already know that the retailer can’t do this—at minimum, such a delivery is a breach of warranty and perhaps even a fraud. Trademark law does provide producers with a remedy (more on this in a moment), but from a consumer protection standpoint, what does trademark liability add to the analysis? Personally, I don’t think it adds much.

Sorry, Eric. I’m going to keep using it. And not just because it makes proponents of the trademark use doctrine uncomfortable. I’m going to keep using it because this is core trademark doctrine, and if we lose sight of it while arguing about search keywords and co-shelving and popup ads, we’re throwing out the baby while keeping the bathwater.

The retailer who delivers Pepsi when the customer ordered Coke is engaged in passing-off (or, for the more poetically inclined, palming-off). This is the central evil that trademark is meant to prevent. Whether you think that trademark is about preventing consumer confusion, or about encouraging investments in goodwill, or about protecting businesses from unethical competition, this kind of silent substitution is bad, bad, bad.

Even confining ourselves to consumer protection, this is a case in which we want competitors to have a remedy. We could call that remedy “trademark,” or we could call it “false advertising,” but we expect competitors to be substantially more vigilant in looking out for passing-off than governmental actors would be. If we’re prepared to throw in the towel on trademark law here, I humbly submit we ought to be prepared to throw it in everywhere.

The point of the beverage-substitution cases is simply to show that retailer silence can be all but indistinguishable from retailer speech in terms of its effect on consumers. It shouldn’t matter whether the waiter says, “One Coke, coming right up,” or not—and it doesn’t. That’s why I’m skeptical of the trademark use doctrine, at least as it’s applied to search engines and other online actors. Too often the analysis seems to turn on arbitrary characteristics of the technical configuration at issue; where do bytes representing the mark show up, and who sees them? 1-800 Contacts comes to mind as a case that may well be right on its facts, but still manages to draw a line that’s almost incoherent.

I don’t like most of the reasoning by analogy that’s dominating these debates. Offline metaphors are dangerous in reasoning about online trademark law because they make lawyers and courts get the facts wrong. This is like a billboard, they say, when it’s not like a billboard at all. But—and this is something that Eric has been very good at—we need to keep the offline analogues to online activities in mind, because otherwise, online trademark law becomes dangerously untethered, a collection of ill-justified sui generis rules that lead to inconsistent and unstable results.

Eric is exactly right that it would be a very good thing to have some better-understood limiting doctrines. He’s also exactly right that trademark use is more promising than many traditional trademark defenses precisely because it puts the burden on the plaintiff. And he’s even more exactly right when he says that “[T]he trademark use in commerce doctrine can serve the requisite channeling function, but it doesn’t do it very well.” And I’ll definitely support his call for the Goldman Act of 2025.

But don’t go trying to sub out beverage substitution, okay?

New York Law Schools?


Brian Leiter and his readers have noticed three related stories about the new New York budget:

Sen. locks $3 million for law school:

State politicians have guaranteed $3 million to fund initial design and planning stages of a proposed Binghamton University law school, Sen. Tom Libous announced Wednesday.

Libous and Donna Lupardo, assemblywoman for the 126th district, secured the money from the 2008-2009 state budget because they say the proposal would benefit BU’s reputation and offer economic development.

Stony Brook scores $45 million for law school:

Stony Brook University secured $45 million in the budget for the purchase or the construction of a new law school.

The money, part of $221 million included in the budget for the school’s capital improvements, was put there by State Sen. Ken LaValle, R-Port Jefferson, chairman of the Senate Committee on Higher Education, who said adding a law school to Stony Brook is important to making it a comprehensive university.

Downtown might draw a law school:

St. John Fisher College is expected to get $2.25 million in state funding to help create a new law school in downtown Rochester.

Fisher spokeswoman Anne Geer said school officials were hoping that the money obtained by state Sen. Joseph Robach, R-Greece, would attract additional funding to move the project forward.

Something is very, very strange here. Either New York’s pork problems have gotten seriously out of control, New York is about to be glutted with law schools, or some of its state senators have some serious ‘splainin to do.

Without Comment


8-year-old suspended for sniffing marker”:

Adams School District 50 is defending its decision to punish a third grader for sniffing a Sharpie marker… .

“It smelled good,” Harris said. “They told me that’s wrong.”

Rescuecom Oral Argument Report


Yesterday, I attended oral argument before the Second Circuit in Rescuecom v. Google. If you know what that means and just want the blow-by-blow, jump ahead. For those just tuning in now, though, here’s a brief synopsis:

Background

If you type any bunch of search terms into Google, you’ll see three things. There’re the “organic” search results, which appear in the main column and come from the guts of the search engine itself. There’s a column of “Sponsored Links” to the right of the organic results. These are ads. So is the single sponsored link at the top (which appears on a yellowish background.)

Google chooses which ads to display based on the words you type in. A search on “pets” brings back different ads than a search on “street racing” does. Google chooses which ads to show based on requests from advertisers; if you want your ad to show at the top or on the right, you need to give Google a list of “keywords” that you’d like to trigger your ad. Every time someone clicks on your ad, you pay Google a few cents. How many? That’s determined by an auction among everyone who’d like to use that keyword. The net result is that advertisers pay Google in exchange for having their ads displayed atop or beside the organic search results for particular keywords.

Businesses have been upset about competitors online for some time. They get especially upset whenever they get the sense that the competitors are luring away customers looking for “their” trademarks. So when they see a competitor’s ads showing up on a Google search for their trademark, they see red—and often sue. It seems reasonably well-established that the competitors can’t in general mention the trademarks in their ad copy (Google and its competitors also have policies to the same effect). The battleground has shifted therefore to ads that are merely triggered by a trademarked keyword, or that happen to appear when a trademarked keyword is used along with another keyword that causes the ad to appear.

Trademark owners have sued both their competitors placing the ads and the search engines—most notably Google—displaying them. And there’s been a very interesting split in the courts. Courts in most parts of the country have been willing to let these suits go forward at the motion to dismiss stage, that is, to let the trademark owners try to prove that consumers were actually confused and diverted by the ads. But courts in the Second Circuit have uniformly rejected such suits. They’ve held that the search engine isn’t “using” the trademark as a trademark. They’ve done so on the authority of a Second Circuit case, 1-800 Contacts v. WhenU.com. That case had to do with a browser add-on that displayed pop-up ads when the user visited certain URLs; the prior Second Circuit panel had held that this form of triggering wasn’t a trademark use of any of the trademarks in the URLs involved.

Enter Rescuecom, an emergency computer repair company, which owns a trademark on the term RESCUECOM. (Snide comments about the distinctiveness of the mark omitted.) They have the usual gripe about competitors’ ads showing up in searches for “Rescuecom” and they sued. They lost before the district court, on the authority of 1-800, but unlike prior plaintiffs in the Second Circuit, pursued their appeal. That’s the oral argument I went to. A Google victory here could turn the tide, and perhaps convince other Circuits to swing in favor of recognizing the trademark use limitation in similar cases. A Rescuecom victory could resolve the split in the opposite direction. So the stakes are high.

If you want more detail, Eric Goldman has an extensive bibliography on the case. If you care about issues such as this one, you really should be following his blog all the time.

Rescuecom’s Opening Argument

Rescuecom’s lawyer, Edmund Gegan, opened by trying to undermine the legitimacy of the trademark use doctrine, which he claimed dated only to WhenU. Judge Leval quickly interrupted to set him straight on the nature of precedent, saying “It exists since WhenU.” This led to a strange digression, in which Gegan pointed out that Google had filed an amicus brief in _WhenU, as though this rendered the result suspect.

Judge Calabresi then took over the questioning, using a hypothetical heavily argued in Google’s brief: a retail store that stocks competing goods immediately next to brand-name ones. Gegan immediately conceded that there were no cases finding that product placement on shelves would be legally problematic. He then argued that the co-shelving case wouldn’t involve trademark use, just use of the product, and that it would much the same as handing out flyers for a restaurant in front of a competing one (presumably legal). Judge Calabresi then brought the trademark back into the hypo, asking what the result would be if the flyers were being handed out in front of a giant sign for Guido’s Pizza. Gegan didn’t get much of a chance to answer, because …

Judge Calabresi then shifted to a different hyopthetical: calling up the phone information service, which gives you the correct phone number and then reads you an ad. Gegan made the tactically prudent reply, that there would be no liability because there’d be no likelihood of confusion.

Judge Leval then rejoined the discussion with questions that seemed design to help out Rescuecom. What if the phone directory sells this right for ad placement? And what if they read you the add instead of giving you the phone number? Or read you the advertiser’s phone number? Or, switching back to the co-shelving hypo, what if they put up a sign with the trademark that points you to the wrong shelf, the one where the competitor’s goods are. Gegan liked the questions, and said they went to the heart of the case.

Judge Leval then turned the question of deceptiveness back on the facts of the case. Had Rescuecom, he asked, alleged that the ad banner at the top of the page (as opposed to the ones on the sidebar) was deceptive because it appeared to be a non-sponsored link? Judge Calabresi jumped back in, emphasizing that the case was before them on a 12(b)(6) motion to dismiss. Gegan said that Rescuecom had alleged that consumers had certain “expectations” and that they were “confused”—not quite the same thing.

In response to a follow-up question, he added that they’d alleged trademark use in the form of “selling” the keyword to a competitor. Judge Calabresi didn’t like that phrasing; he didn’t think that selling the right to put products next to Pepsi was the same thing as selling the right to have customers think that your products were Pepsi. He wasn’t sure that selling the right to be next door was a use. Gegan’s response was strange; he said that Rescuecom wasn’t alleging that it was wrong to be next door or to sell the right to be next door, but that Google was different from offline cases because there were no categories (like there would be in a physical store). If you search on “Rescuecom,” you’re supposed to get only Rescuecom results.

Google’s Argument

Michael Page then presented argument for Google. He objected to the use of the term “selling,” saying it led to confusion. He emphasized Google’s policy of prohibiting the use of others’ trademarks. I think he was talking about use in ad copy, but he didn’t get to say, because …

Judge Leval returned very quickly to the deceptiveness theme he’d sounded during the opening argument. Wasn’t there an allegation that Google sold the right to placement of sponsored links in a deceptive manner? No, said Page, the complaint said only that consumers expect “related” products, not that they expected that all search roads would “lead to” Rescuecom.

Judge Calabresi asked what result should obtain if Google deceptively sold search placements (organic ones, I assume). Page quickly asserted that under 1-800 Contacts, there would be no liability. Calabresi said, not really to anyone in particular, that 1-800 Contacts didn’t make anything clear; it was just a first cut. Page, sensing a break in the questioning, tried to make an argument that the trademark use doctrine has pre-Internet roots. He didn’t get far into it; there was a quick back-and-forth between Calabresi and Leval, which ended when Leval cooked up an involved hypo involving both an opaque display case with a trademarked term on the outside but no such goods inside and also a deliberate intent to confuse. Page said that it would be a use in commerce because of the appearance of the mark on the outside of the case.

Judge Wesley then made his first entrance to the argument, trying to move the hypo closer to the facts of the case. Was this a mispackaging case or merely shelving together? The latter, Page said. Judge Calabresi asked about a less extreme version: a sign over the shelf saying “Advil,” but a mixture of Advil and Aleve beneath. Trademark use? According to Page, yes, but no one at Google uses the RESCUECOM mark in a way that users see.

This seemed to surprise Judge Wesley a bit. He asked, in essence, how many hits you’d get if you searched on “Rescuecom.” (53,900, I can report.) Page explained how search results go on essentially forever, and then argued that Google simply places results near others asking the same services. Judge Leval pointed out, once more, that this was a 12(b)(6) motion, and accused Page of arguing potential defenses, rather than dealing with the matters alleged in the complaint.

Judge Leval replaced the drugstore shelf with a druggist who takes an order for “Advil” and gives the customer “Aleve.” Use in commerce, Page said. Judge Calabresi pounced. What if someone types in something at an automated drug counter and a box comes out, half Advil and half Aleve? The specific request, said Page, made the response an implied representation. Thus, Calabresi asked, is the difference between that and Google? What would be difficult about saying, “These are some other things, not directly what you asked for?” Ah, Page replied, but that’s what we do with our “Sponsored Links” text. That’s when the trap snapped shut. So, Judge Calabresi said, the status of your “Sponsored Links” disclaimer becomes an issue for summary judgment.

Judge Leval then mapped out his thinking in a bit more detail. Rescuecom has two allegations here, he said. First, that the ads to the right of the search results, which are clearly seen as ads, are confusing. This allegation is doomed to lose at the likelihood-of-confusion stage. Second, that the horizontal ad above the results is not just confusing but deceptive because it looks like the first search result. Users will think that as the top result, it’s the most relevant. If, in relation to this ad, Rescuecom can show likelihood of confusion, why can’t they show trademark use? Page replied that there was no meaningful distinction between the top and side ads, and repeated that the allegation wasn’t that users would think the top link is Rescuecom, merely that users expect relatedness. Judge Leval followed with the cynical question: how is it related, other than through the payment of money to Google? Page gave the technically correct answer—Google never promotes actually unrelated pages to the top bar—but Leval reminded him that this fact wasn’t part of Rescuecom’s complaint.

Rescuecom’s Reply Argument

Gegan admitted that Rescuecom would have a hard time showing confusion as to those ads appearing in the right-hand column, but maintained that they still involved trademark use. Judge Wesley was concerned, and asked whether any result on the page, not just the ads, would constitute a use. No, said Gegan, because there’d been no purchase of the organic results. Judge Wesley pressed him. Isn’t any response a use? Any hit other than Rescuecom itself infringing? That would be getting into the software, said Gegan, and I really don’t know much about it.

Judge Calabresi then asked whether courts should go immediately to confusion, or whether there are some sales of marks that aren’t uses? And do these allegations show use here? What, he asked, isn’t a use? What’s the equivalent of his “on the shelf next to” hypothetical? Gegan replied that there is no “next to” on the Internet. The ads show up nearby to Rescuecom’s own result only because someone pays for them to be there.

Judge Wesley asked the last question: If I type in your URL and you exist, do you you get found on Google? Yes, said Gegan.

Thoughts

To my surprise, this wasn’t the best-argued case of the day. That distinction went to Ollman v. Special Board of Adjustment No. 1063, 05-1706-cv, a labor-law case in which pro bono appointed counsel (for the appellant) and a railroad lawyer (for one of the three appellees) offered clear, cogent, and persuasive arguments that engaged with fine factual distinctions in the case.

Judge Calabresi was clearly sympathetic to Google’s position. His questions seemed to be searching for a principled way to extend the co-shelving principle to online advertising. Judge Leval was, in contrast, concerned with keeping trademark liability at hand to use against genuine deceptions and with not bringing into the decision facts not present in the complaint. I didn’t hear anything said to move either of them much from their positions. Judge Wesley, apart from his concern to keep trademark liability from attaching to organic search results, didn’t say enough to provide a clear reading on his thoughts. That sounds like one vote for Google, one for Rescuecom, and one unknown. But the actual tone in the room was even more favorable to Rescuecom. Though neither lawyer made all that much headway, and a number of Gegan’s answers were off-point or confused, Page had almost no success in convincing the panel that it was important for policy or for the coherence of trademark doctrine that Google win this case now.

Prediction: 3-0 for Rescuecom, Leval authoring, in a narrow opinion that emphasizes the 12(b)(6) rule against incorporating matters not apparent from the face of the complaint. A Calabresi concurrence mentions the narrowness of the holding and explains why, in his view, it does not affect the settled understanding that retail shelving arrangements, handing out flyers in front of billboards, and other common offline practices are not trademark infringements. Neither opinion says much about the implication of the holding for other online businesses.

(Disclaimer: I could be completely wrong about this. Judges are often swayed by arguments in the briefs that they never mention at oral argument. They often give the laywer they more closely agree with the harder time. And sometimes they come up with new rules or tests that are barely even mentioned by the parties. This just just my prediction based on the tone of the oral arguments.)

Jeremy Knowles, Was 72


We used to say that Harvard must have a secret school for deans, where they were trained in the arts of tact and diplomacy. Dean Knowles was our favorite example. Though some of us students were doing our best to add to his problems with our endless agitation for this reform or that one, he was unfailingly gracious and charming with us. This is the story that I best think captures the man—witty, modest, a little stuffy, and utterly British:

The visitor comes into the Dean’s offices a few minutes early. Dean Knowles himself is there, descending from a ladder set up in front of an impossibly old and imposing grandfather clock. “Let it be known,” he says, “that the Dean winds his own clocks.”

Jeremy Knowles, former Dean of the Arts and Sciences at Harvard University, passed away yesterday, at the age of 72.