Gallagher (2012)

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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

Gallagher (2012)
Title: Trademark and Copyright Enforcement in the Shadow of IP Law
Author(s): Gallagher, W.T
Year: 2012
Citation: Gallagher, W. T. (2012). Trademark and copyright enforcement in the shadow of IP law. Santa Clara Computer and High Technology Law Journal, 28.
Link(s): Definitive , Open Access
Key Related Studies:
Discipline:
Linked by:
About the Data
Data Description: Semi-structured interviews were conducted with experienced lawyers who regularly enforce trademarks and copyrights on behalf of their clients. As the research questions involved understanding how, why, and to what effect IP rights are enforced by trademark and copyright owners, the author asked experienced IP lawyers to explain how they and their clients understand and make decisions at each stage of the pretrial IP enforcement process.

The interviews were conducted between 2005 and 2010, with the majority of them held between 2006 and 2009. A total of 58 interviews were completed. All but five of these interviews took place in person. The remaining five interviews were conducted by telephone. Interviews lasted from about one hour to three hours in duration. Most of the interviews lasted from about one and a half to two hours. The recorded interviews were transcribed and analyzed using qualitative research software which made coding, organizing, and analysis43 of the interview transcripts easier and more systematic.

Data Type: Primary data
Secondary Data Sources:
Data Collection Methods:
Data Analysis Methods:
Industry(ies):
Country(ies):
Cross Country Study?: No
Comparative Study?: No
Literature review?: No
Government or policy study?: No
Time Period(s) of Collection:
  • 2005-2010
Funder(s):
  • Golden Gate University School of Law

Abstract

In recent years, as Congress has created new intellectual property (IP) rights and courts have often interpreted those rights broadly, legal scholars have frequently decried the expanded scope of protection afforded IP owners in most substantive areas of IP law. According to this critique, the over-expansion of IP rights throughout the past two decades harms competition, chills free speech, and diminishes the public domain as increasingly broad areas of social life are brought within the scope of strong IP protection. While this over-expansion theory reflects an important - indeed, foundational - policy debate concerning the proper balance between IP owners' rights and the public's rights of access to the information, ideas, and expressions that IP protects, it is incomplete because it focuses largely on what Congress or the courts do. In reality, most enforcement of IP rights takes place not in court, but in the everyday practices of IP owners and their lawyers. "Cease and desist" letters, phone calls, and negotiations with alleged infringers constitute the bulk of IP enforcement efforts in trademark and copyright practice. To be sure, these efforts take place in the "shadow" of IP law and are therefore influenced by it. But it is in these everyday practices - and not in trial or appellate courts - that most IP rights are asserted, resisted, and negotiated. Thus, if we want to know whether IP rights are over-enforced or over-extended, we need to know how, why, and to what effect these rights are exercised in the everyday practices of IP owners and their lawyers. To date, however, IP scholarship has focused virtually no attention on this critical arena of everyday practice. This Article presents findings from a qualitative empirical study of the trademark and copyright disputing process outside of court, based on original data derived from semi-structured interviews with experienced IP attorneys who advise clients on how to enforce their rights. This research is one of the first studies to examine how trademark and copyright claims are actually enforced in practice. One significant finding from this study is that "repeat player" trademark and copyright owners (and their lawyers) knowingly assert weak IP claims at times - precisely because it works, as enforcement targets are unable or unwilling to resist claims that may lack legal merit due to the costs and uncertainties of threatened litigation. Moreover, the lawyers who assert weak IP claims have ready practical and ethical justifications for their actions. This study also suggests that legal sanctions directed at deterring over-reaching IP enforcement are unlikely to be effective because most such over-reaching occurs in informal disputing processes outside of the legal system.

Main Results of the Study

Main results:

  • Trademark and copyright lawyers and their clients sometimes enforce admittedly weak IP claims precisely because it can be an effective strategy with few downsides.
  • Aggressive trademark and copyright enforcement efforts often work, as enforcement targets frequently choose to capitulate or settle rather than resist claims on the legal merits, likely due to the costs and uncertainties inherent in IP litigation.
  • The study supports the thesis that trademarks and copyrights can be and often are over-enforced in everyday legal practice.
  • The lawyers in this study had few ethical concerns about enforcing even weak trademark and copyright claims, as the uncertainties of law and an asserted ethical duty to zealously advocate client interests were readily invoked to justify aggressive policing of IP rights.
  • The study delineates some of the perceived advantages that “repeat player” IP owners may enjoy when enforcing their IP rights, and it also demonstrates some of the factors that limit the ability and willingness of IP owners to enforce their rights.
  • Trademark and copyright owners may be able to “bully” enforcement targets, but only when they do not fear the backlash of negative publicity and public opinion that can accompany such efforts.

Policy Implications as Stated By Author

Policy implications:

Future empirical scholarship that focuses on IP disputing in action should build on these insights and contribute to a growing understanding of the significance of private disputing in shaping the effective scope of trademark and copyright owners’ rights.



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)
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: 58
Level of aggregation: IP Professionals
Period of material under study: 2005-2010