Fromer and Lemley (2013)

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1. Relationship between protection (subject matter/term/scope) and supply/economic development/growth/welfare 2. Relationship between creative process and protection - what motivates creators (e.g. attribution; control; remuneration; time allocation)? 3. Harmony of interest assumption between authors and publishers (creators and producers/investors) 4. Effects of protection on industry structure (e.g. oligopolies; competition; economics of superstars; business models; technology adoption) 5. Understanding consumption/use (e.g. determinants of unlawful behaviour; user-generated content; social media)

A. Nature and Scope of exclusive rights (hyperlinking/browsing; reproduction right) B. Exceptions (distinguish innovation and public policy purposes; open-ended/closed list; commercial/non-commercial distinction) C. Mass digitisation/orphan works (non-use; extended collective licensing) D. Licensing and Business models (collecting societies; meta data; exchanges/hubs; windowing; crossborder availability) E. Fair remuneration (levies; copyright contracts) F. Enforcement (quantifying infringement; criminal sanctions; intermediary liability; graduated response; litigation and court data; commercial/non-commercial distinction; education and awareness)

Source Details

Fromer and Lemley (2013)
Title: The Audience in Intellectual Property Infringement
Author(s): Fromer, J. C., Lemley, M.A.
Year: 2013
Citation: Fromer, Jeanne C., and Mark A. Lemley. "Audience in Intellectual Property Infringement, The." Mich. L. Rev. 112 (2013): 1251.
Link(s): Definitive , Open Access
Key Related Studies:
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About the Data
Data Description: The authors make a comparative analysis on how different the role of audience is in the infringement of IP rights, focussing on 4 different legal areas: trademark law, patent law, copyright law and design patent law.
Data Type: Secondary data
Secondary Data Sources:
Data Collection Methods:
Data Analysis Methods:
Industry(ies):
Country(ies):
Cross Country Study?: No
Comparative Study?: Yes
Literature review?: No
Government or policy study?: No
Time Period(s) of Collection:
  • 2013
Funder(s):

Abstract

Every IP right has its own definition of infringement. In this paper, we suggest that this diversity of legal rules is largely traceable to differences in the audience in IP cases. Patent, trademark, copyright, and design patent each focus on a different person as the fulcrum for evaluating IP infringement. The fact that patent law focuses on an expert audience while trademark looks to a consumer audience explains many of the differences in how patent and trademark cases are decided. Expert audiences are likely to evaluate infringement based on the technical similarity between the plaintiff’s and defendant’s works. Consumers, by contrast, are likely to pay more attention to market substitution and less attention to how things work under the hood. Understanding the different audiences in IP infringement is critical to understanding how the IP regimes define infringement.

Main Results of the Study

  • There are some technological areas in which patent law does not in practice heed its general rule of choosing the expert as audience. The most notable example involves software patents. In this area, because the Federal Circuit allows software to be claimed based on its function rather than on its more detailed technical workings, infringement can be found when two computer programs serve the same function, even if the software works in very different ways.81 A consumer or ordinary reasonable observer might use the purpose the software serves to assess similarity more generally, but a software expert would not.With few exceptions, then, the expert is the audience for patent infringement. For this audience choice to work, the fact finder must be able to put herself in the position of the expert. Patent law tries to address this challenge by relying on expert witnesses to explain the technology while limiting the amount of post hoc expert testimony on the meaning of patent claims and relying instead on documentary materials in existence at the time of patent filing. Patent law also gives the judge the role of assigning meaning to patent terms. Even though that job is really fact finding, not legal interpretation, it is arguably better suited to judges than juries because of their increased exposure to patent-infringement suits.
  • Copyright law’s use of varied infringement audiences is confused and often depends on the particular circuit deciding the case. As a general matter, however, copyright uses a hybrid test, drawing on both the perspective of the expert and that of a nonexpert observer (either the consumer or the ordinary person).
  • Patent and trademark are virtual antipodes when it comes to the audience used to assess infringement. Patent law focuses on a hypothetical audience of experts, while trademark law ostensibly cares about both actual consumers’ reactions and the defendant’s subjective intent. The test for infringement of a design patent draws much more from trademark than from patent law. Infringement is judged in the eye of an ordinary observer, giving such attention as a purchaser usually gives. This test evokes an actual audience composed of reasonable purchasers, just as the trademark test does. But the audience is asked a different question. Despite the fact that the Supreme Court has spoken of “the resemblance . . . such as to deceive such an observer, inducing him to purchase one supposing it to be the other,” the Federal Circuit has held that in design patent law, it is the similarity between the claimed design and the defendant’s product, not the likelihood of confusion, that determines infringement. The result is a hybrid: the consumer audience from trademark law, asked to make the rather more abstract assessment of expert-based technical similarity from patent or copyright law.
  • Because consumers as a class tend to focus on whether the uses for two products are interchangeable, the consumer is likely to be the audience that most directly measures whether the plaintiff’s work and the defendant’s work at issue in IP litigation substitute for one another in the marketplace. When the consumer is the audience for IP infringement, then, market substitutes are more likely to be deemed infringing and thus third parties will be discouraged from producing substitutes without permission from the rights holder. For this reason, the consumer is an ideal audience choice for assessing IP infringement when that form of IP law seeks to discourage third parties from creating or distributing market substitutes of works protected by an IP right.
  • Different audiences (and fact finders, for that matter) can readily provide varying determinations on infringement. The choice of audience therefore ought to be made carefully with regard to the desired goals of each form of IP law. Understanding this fact helps explain many of the differences in IP infringement doctrine.

Policy Implications as Stated By Author

As a normative matter, the authors argue that IP infringement—across trademark, patent, copyright, and design patent laws—should generally require proof both that the two works are sufficiently similar in their novel aspects (technical similarity) and that the defendant’s use interferes with the plaintiff’s market (market substitution). Many of the problems in IP law come from decisions that neglect one aspect or the other. Thus, “the audience” in IP infringement is properly a hybrid: a domain expert who can assess similarity and a consumer who can assess substitutability. Copyright law has internalized this lesson, albeit imperfectly. Patent, trademark, and design patent laws can all learn from its example.


Coverage of Study

Coverage of Fundamental Issues
Issue Included within Study
Relationship between protection (subject matter/term/scope) and supply/economic development/growth/welfare
Green-tick.png
Relationship between creative process and protection - what motivates creators (e.g. attribution; control; remuneration; time allocation)?
Harmony of interest assumption between authors and publishers (creators and producers/investors)
Effects of protection on industry structure (e.g. oligopolies; competition; economics of superstars; business models; technology adoption)
Understanding consumption/use (e.g. determinants of unlawful behaviour; user-generated content; social media)
Green-tick.png
Coverage of Evidence Based Policies
Issue Included within Study
Nature and Scope of exclusive rights (hyperlinking/browsing; reproduction right)
Exceptions (distinguish innovation and public policy purposes; open-ended/closed list; commercial/non-commercial distinction)
Mass digitisation/orphan works (non-use; extended collective licensing)
Licensing and Business models (collecting societies; meta data; exchanges/hubs; windowing; crossborder availability)
Fair remuneration (levies; copyright contracts)
Enforcement (quantifying infringement; criminal sanctions; intermediary liability; graduated response; litigation and court data; commercial/non-commercial distinction; education and awareness)
Green-tick.png

Datasets

Sample size: 4
Level of aggregation: IP rights
Period of material under study: 2013