An Intersystemic View of Intellectual Property and Free Speech
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An Intersystemic View of Intellectual Property and Free Speech Mark Bartholomew* John Tehranian** ABSTRACT Intellectual property regimes operate in the shadow of the First Amend- ment. By deeming a particular activity as infringing, the law of copyright, trademark, and the right of publicity all limit communication. As a result, judges and lawmakers must delicately balance intellectual property rights with expressive freedoms. Yet each of these intellectual property regimes strikes the balance between ownership rights and free speech in a dramatically different way. This Article represents the first systematic effort to detail, analyze, and explain the divergent evolution of expression-based defenses in copyright, trademark, and right of publicity jurisprudence. The first Part of this Article carefully details the disparate treatment of First Amendment defenses in the three intellectual property regimes. On one side of the spectrum is copyright law. Many factors have rendered copyright law a feeble protector of free expression. On the other side of the spectrum is the recent right of publicity jurisprudence, which routinely invokes the First Amendment and features robust defenses. Somewhere in the middle stands trademark law, offering its own judge-made defenses but simultaneously clos- ing off those defenses for defendants engaging in commercial activity or activ- ity that is potentially confusing to consumers. The next Part attempts to explain why these three regimes accommodate the First Amendment in such different ways. The Article concludes that the divergence is not the result of careful deliberation, but rather the inadvertent product of different methods and histories of lawmaking. Because this diver- gence does not represent a logical or deliberate choice, reforms are needed. By bringing these different approaches to the First Amendment into relief, this Article demonstrates that some free speech interests are being shortchanged and aims to place all three regimes on a stronger theoretical footing. * Professor of Law, SUNY Buffalo Law School. ** Irwin R. Buchalter Professor of Law, Southwestern Law School and Biederman En- tertainment and Media Law Institute, Los Angeles, California. We would like to thank Jonas Anderson, Christine Haight Farley, William Gallagher, Deborah Halbert, Jacqui Lipton, Lisa Ramsey and participants at presentations at American University’s Washington College of Law and the 2011 Law & Society Annual Meeting for their suggestions and Nicole Haimson and Frances Stephenson for their valuable research assistance. January 2013 Vol. 81 No. 1 1 2 THE GEORGE WASHINGTON LAW REVIEW [Vol. 81:1 TABLE OF CONTENTS INTRODUCTION ................................................. 3 I. DIVERGENT APPROACHES TO FREE EXPRESSION IN COPYRIGHT, RIGHT OF PUBLICITY, AND TRADEMARK LAW ...................................... 8 A. Copyright and the First Amendment ................ 9 1. Eschewing Direct Invocation of the First Amendment ............................... 9 2. Conceptualizing Fair Use qua Necessity ........ 13 a. Applying the Parody/Satire Distinction ...... 14 b. Negating Newsworthiness ................... 18 3. Considering the Role of the Marketplace ....... 21 a. Defining Commercial Use ................... 22 b. Elevating Market Harm ..................... 24 B. The Right of Publicity and the First Amendment .... 29 1. Invoking the First Amendment ................. 30 2. Replacing Necessity with a Broad Conception of Transformation............................... 32 a. The Primacy of Transformation............. 32 b. Protecting Newsworthy Uses ................ 35 3. Discounting Market-Based Harms .............. 37 C. Trademark and the First Amendment ............... 41 1. Addressing the First Amendment ............... 41 2. Fair Use Defenses and Necessity ............... 44 3. The Rogers Test and Commerciality ............ 47 II. EXPLAINING THE DIVERGENT EVOLUTION OF FREE SPEECH DEFENSES IN INTELLECTUAL PROPERTY LAW .. 54 A. Justifying the Plaintiff’s Right ....................... 60 B. Judicial Perceptions of Litigants and the Value of Their Interests ....................................... 64 C. Categorizing the Speech Interests at Stake ........... 66 1. Content-Based or Content-Neutral? ............ 67 2. Considering the Defendant’s Speech ............ 69 D. Common Law Versus Statutory Lawmaking ........ 71 1. Publicity Rights and the Making of Common Law .................................. 72 2. Copyright and the Limits of Statutory Lawmaking ..................................... 74 3. Trademark Law: Statutory and Common Law Hybridity .................................. 79 E. The Influence of Tradition .......................... 83 1. Precedent and Path Dependence ............... 83 2. Using History to Address Free Speech ......... 86 CONCLUSION ................................................... 90 2013] AN INTERSYSTEMIC VIEW 3 INTRODUCTION Intellectual property rights and the First Amendment pull in op- posite directions. Whereas the First Amendment prevents the sup- pression of speech, someone else’s speech is foreclosed every time holders of copyright, trademark, or publicity rights exercise their rights.1 Although multiple scholars have identified this tension be- tween intellectual property and free expression,2 there are still impor- tant and uncharted areas ripe for analysis. This Article explores one such area: the divergent evolution of expression-based defenses in trademark, copyright, and right of publicity jurisprudence. Each of these three intellectual property regimes accommodates free speech concerns in a radically different way. This disparity is not just interest- ing for its own sake. It also illustrates how, perhaps unbeknownst to lawmakers, history and the difference between common law and stat- utory lawmaking can produce strikingly different results between sim- ilar legal entitlements. Every body of intellectual property law makes doctrinal adjust- ments in response to the need for free expression.3 These adjustments 1 Golan v. Holder, 132 S. Ct. 873, 890 (2012) (“[S]ome restriction on expression is the inherent and intended effect of every grant of copyright.” (citing Eldred v. Ashcroft, 537 U.S. 186, 218–21 (2003))); Eugene Volokh, Freedom of Speech and Intellectual Property: Some Thoughts After Eldred, 44 Liquormart, and Bartnicki, 40 HOUS. L. REV. 697, 698 (2003). 2 See, e.g., Michael D. Birnhack, Copyright Law and Free Speech After Eldred v. Ash- croft, 76 S. CAL. L. REV. 1275, 1275–77 (2003); Laura A. Heymann, The Public’s Domain in Trademark Law: A First Amendment Theory of the Consumer, 43 GA. L. REV. 651, 673 (2009); Roberta Rosenthal Kwall, A Perspective on Human Dignity, the First Amendment, and the Right of Publicity, 50 B.C. L. REV. 1345, 1347 (2009); Neil Weinstock Netanel, Locating Copyright Within the First Amendment Skein, 54 STAN. L. REV. 1, 2–4 (2001); David S. Olson, First Amend- ment Based Copyright Misuse, 52 WM. & MARY L. REV. 537, 537 (2010); see also David Mc- Gowan, Why the First Amendment Cannot Dictate Copyright Policy, 65 U. PITT. L. REV. 281, 281 (2004) (“For over thirty years scholars have suggested ways judges might use the First Amend- ment to limit Congress’s power to grant authors exclusive rights in their works.”). 3 Patent law does not routinely confront expressive interests in the same way that copy- right, trademark, and the right of publicity all do, and, hence, this Article does not address it separately. “Indeed, as patents have traditionally been used, they have posed no problems to First Amendment rights.” Krysta Kauble, Comment, Patenting Everything Under the Sun: In- voking the First Amendment to Limit the Use of Gene Patents, 58 UCLA L. REV. 1123, 1155 (2011). In fact, most patents arguably further free speech interests by publicly introducing new inventions. See id. Nevertheless, patent rights can trigger free speech concerns, particularly as the subject matter of patent law has spread to cover potentially expressive activity like business methods and software design. See Dan Burk, Patenting Speech, 79 TEX. L. REV. 99, 142–45 (2000). Although a review of existing caselaw has uncovered no patent invalidated or patent infringement suit denied on First Amendment grounds, such an argument has been made in some important patent law dissents. See Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 127–28 (2006) (Breyer, J., dissenting); In re Bilski, 545 F.3d 943, 1005 (Fed. Cir. 2008) (Mayer, J., dissenting); see also Ass’n for Molecular Pathology v. U.S. Patent & Trademark 4 THE GEORGE WASHINGTON LAW REVIEW [Vol. 81:1 differ greatly depending on the intellectual property regime at issue. A representative example of the current state of the copyright/free expression interface is Henley v. DeVore,4 a 2010 decision arising out of a dispute between musician and activist Don Henley and conserva- tive politician Charles “Chuck” DeVore.5 During the course of his 2010 campaign to gain the Republican nomination and challenge Bar- bara Boxer for her United States Senate seat in California, DeVore produced two videos that he uploaded to YouTube.6 The first video featured a song entitled “The Hope of November,” a sendup of Hen- ley’s nostalgic megahit “The Boys of Summer.”7 “The Hope of No- vember” combined a karaoke simulation of the instrumental track from “The Boys of Summer” with new lyrics that critiqued Barack Obama, Nancy Pelosi, and their supporters—such as Henley.8 In the process, the song played on Henley’s famous musings