" What’s Missing in Current and Former Officials’ Responses to DOJ Antitrust Whistleblower ," JustSecurity , July 16, 2020

"What’s Missing in Current and Former Officials’ Responses to DOJ Antitrust Whistleblower," *JustSecurity*, July 16, 2020

Christopher Jon Sprigman, What’s Missing in Current and Former Officials’ Responses to DOJ Antitrust Whistleblower, JustSecurity (July 16, 2020), https://www.justsecurity.org/71450/whats-missing-in-current-and-former-officials-responses-to-doj-antitrust-whistleblower/

As a guy who spent the early years of his legal career as an antitrust lawyer, I can assure you that working as a trust-buster will not make you the most sought-after person at a cocktail party. But what antitrust lacks in glamour, it more than makes up for in importance. Antitrust’s mission is to maintain fair, competitive markets—and, in doing so, to prevent capitalism from devolving into economic and political oligarchy. But if put in the wrong hands, antitrust can turn malignant: it can be, and in the past has been, used to reward friendly companies and industries, and to punish perceived enemies. And now there is mounting evidence that the Trump Administration has engaged in just this sort of corruption. The Allegations, Defenses, and Rejoinders On June 24, Trump Administration antitrust official John Elias alleged, in whistleblower testimony before the House Judiciary Committee, that the Trump DOJ is using antitrust as a political cudgel against an industry—cannabis—which the Attorney General dislikes. Specifically, Elias alleges that Attorney General William Barr directed the Department of Justice’s Antitrust Division to launch, in quick succession, ten investigations of proposed mergers in the cannabis industry. Elias says that these investigations, which constituted almost a third of all Antitrust Division merger investigations opened in 2019, had no real antitrust justification. Because the cannabis industry across the states that have legalized the trade was known to be de-concentrated and competitive, the investigations were not expected, Elias alleges, to turn up evidence of any likely harm to competition. Elias says that the real reason for the investigations was political—it was a strategy to spread fear in and impose millions of dollars in legal costs on an industry due to Barr’s “personal dislike.” Elias’s accusations have attracted attention and support. Bill Baer, who led the Antitrust Division during the Obama Administration as well as the Federal Trade Commission’s Bureau of Competition back in the Clinton era, wrote an op-ed in the Washington Post on June 24 charging that “the whole affair reeks of an effort to use law enforcement to burden an industry Barr dislikes.” And on June 26 a group of 11 antitrust experts (including me) contributed to an article on Just Security, in which experts detailed why they found Elias’s allegations credible, raised very significant concerns about the rationale provided by the Office of Professional Responsibility’s letter rejecting Elias and his fellow whistleblower’s complaints, and called for further investigation by Congress. The attention has made current Antitrust Division leadership uncomfortable. So much so that the current Assistant Attorney General in charge of the Antitrust Division, Makan Delrahim, felt obliged to issue a statement attempting to rebut Elias’s claims. And on July 13, Delrahim’s former Deputy, Roger Alford, published on Just Security a strenuous denial that the cannabis investigations were politically motivated. As I said when I first commented on Elias’s allegations in the article this website ran on June 26, as a former Antitrust Division lawyer who has great respect for the professionalism and integrity of the lawyers who work in that part of DOJ, I would ordinarily be inclined to discount the allegations. But here, I am forced to admit that Elias’s testimony has the ring of truth—and nothing I’ve heard from Delrahim or Alford has yet convinced me otherwise. To explain why, let me focus for a moment on how the Antitrust Division does merger enforcement. Background: Antitrust Review of Mergers and the “Second Request” Process Either the Antitrust Division or the Federal Trade Commission review every high-value merger that is proposed in the United States. The federal antitrust agencies review these mergers according to the standards set out by the Clayton Act, which bars mergers that threaten to substantially reduce competition or tend to create a monopoly. Under the terms of another federal antitrust statute, the Hart-Scott-Rodino Act (H-S-R), companies involved in mergers above a certain dollar value must report the proposed deals to the Antitrust Division and the FTC. The agencies then divide up responsibility for reviewing the mergers that have been reported to them. The vast majority of proposed deals pose no substantial antitrust risk and are quickly cleared. But for between 1-2% of the thousands of merger notifications filed each year, the Antitrust Division issues what’s known as a “Second Request”—i.e., a legal demand requiring further information from the merging parties. The Antitrust Division conducted 19 Second Request investigations in Fiscal Year 2018 and 31 in Fiscal Year 2019 from over 2000 transactions filed in each of those years. The agencies are cautious about issuing Second Requests because they often require companies to produce hundreds of thousands or even millions of documents, and to respond to a complex set of written inquiries. Responding to a Second Request can easily cost $5-10 million, or even more for especially complex deals. Merging companies have essentially no way to challenge a Second Request, and they cannot complete their proposed mergers until they have complied. Foreground: The Antitrust Division Issues Second Requests for a Series of Cannabis Industry Mergers The first cannabis industry merger the Antitrust Division reviewed in 2019 was the proposed combination of MedMen and PharmaCann. Elias alleges that when Antitrust Division staff lawyers and economists examined that deal, they saw no antitrust concern. The cannabis industry appeared to be crowded with recent entrants and highly competitive across states that had legalized pot, and this transaction wasn’t likely to change that. As a result, Elias reports that Division staff did not recommend that a Second Request issue. Elias reports, however, that on March 5, 2019, Attorney General Barr summoned Antitrust Division leadership to his office for a meeting entitled “Marijuana Industry Merger Review.” Elias claims that Barr ordered the Antitrust Division to issue a Second Request. The rationale for doing so, according to Elias, centered not on any risk that the merger would harm competition, but because the cannabis industry is unpopular “on the fifth floor”—i.e., the floor of the DOJ headquarters building occupied by the Attorney General’s office. In response to that Second Request, the merging parties eventually produced approximately 1.3 million documents from the files of 40 employees. The investigation confirmed—as Division staff had suspected from the start—that the markets at issue were unconcentrated and closed in September 2019 without any enforcement action. The merger collapsed nonetheless, with MedMen citing unexpected delays in obtaining regulatory approval. Elias noted in his written testimony that MedMen’s stock price declined by about one-third during the course of the Division’s investigation. The Division went on to conduct, in quick succession, similar antitrust investigations of an extraordinary nine additional mergers in the cannabis industry. Second Requests were issued in nine of the ten mergers investigated in total, with a Civil Investigative Demand (a process that can be used for mergers too small to meet the H-S-R reporting threshold) issued in a tenth merger. Crucially, not one of these investigations resulted in enforcement action. Second Requests were issued, taxing the merging parties with expensive and distracting compliance obligations. But otherwise the investigations were, Elias alleges, basically shams. Elias alleges that Antitrust Division staff lawyers were instructed not to conduct interviews of customers or competitors—a necessary step in any bona fide antitrust investigation. And as my NYU colleague Harry First notes, the issuance of so many Second Requests without a single merger ultimately being challenged is highly suspicious. A recent study shows that in 2018, the Division and the FTC challenged 82% of the mergers in which a Second Request was issued. But in the cannabis merger investigations, the Division made nine second requests and one Civil Investigative Demand and challenged not a single merger. The Delrahim and Alford Explanations So what explains the Antitrust Division’s conduct in the cannabis mergers? Makan Delrahim and Roger Alford offer several explanations. 1) Delrahim notes that the H-S-R process gives the antitrust agencies only 30 days to decide whether to issue a Second Request. Delrahim and Alford claim that due to delay in deciding (in the first of the 10 mergers) whether to open an investigation of an industry that was facially illegal under federal law, and also (for all the mergers) the reluctance of the parties to hand DOJ information that could potentially be used to prosecute them under federal criminal law, DOJ essentially had no choice but to issue nine Second Requests. Delrahim says that the clock forced DOJ’s hand. This explanation doesn’t make much sense. If the concern really was the 30-day clock, there is a simple way to handle that. When Antitrust Division lawyers are concerned that the 30-day clock is about to run and they haven’t been able to fully assess whether a Second Request makes sense in a particular deal, they will simply call up the parties and ask them to pull their filing and refile later (with any fees for the re-filing waived). Merging parties usually take that deal, because if they don’t, a Second Request will almost certainly issue, and the delay opens up a conversation between the parties and the Division about how a Second Request can be avoided. Based on information that’s been provided to me by others, the Division did offer a “pull-and-refile” deal to avoid the 30-day clock on the MedMan/PharmaCann deal (i.e., the first of the cannabis mergers). So a concern about the 30-day deadline would not be a reason to issue a Second Request in that case. In the subsequent cases, however, my information is that the DOJ simply issued Second Requests, without ever suggesting that timing was a concern or offering a pull-and-refile deal to stop the 30-day clock. It’s most curious that neither Delrahim nor Alford even mention this option. Delrahim, in particular, should be asked by Congress and reporters about this apparent omission in the letter he submitted to the House Judiciary Committee. Although it seems like window-dressing, I also don’t buy the idea that the Division was forced to issue Second Requests because the parties were unwilling or unable to hand over information necessary to confirm that the mergers did not threaten competition. The parties in many of the mergers in question were represented by sophisticated antitrust counsel. These lawyers know that the law gives DOJ the power to get information, and that DOJ also has the authority to hold up the mergers if the parties fail to cooperate. So it is difficult to believe that the parties were unwilling, without a full-blown Second Request, or otherwise unable to give the Division the information it needed to confirm that the mergers were not problematic. Remember that this is not a new industry. Recreational marijuana has been legal in some states beginning in 2012; medical marijuana legalization started in 1996. Moreover, everyone knows that the merging companies sell pot—it is by no means a secret. The Antitrust Division is not in the business of enforcing criminal law outside of the narrow antitrust field, and there is nothing that the merging parties would be likely to give the Antitrust Division through the H-S-R process that the feds couldn’t compel by ordinary criminal process if they were serious about getting into the politically and constitutionally dicey enterprise of prosecuting weed companies that run businesses permitted by state law. In reality, although the feds occasionally engage in some increasingly silly blustering about legal pot, no one expects a criminal enforcement campaign at this point—that horse has bolted the stable. Delrahim, in particular, should be asked by Congress and reporters about this apparent omission in the letter he submitted to the House Judiciary Committee. 2) Delrahim and Alford also put forward a different explanation: The cannabis mergers, they claim, posed the novel legal question whether the Division should apply the antitrust laws “to protect and promote lower prices and increased output of a substance that is facially illegal under federal law.” In other words, according to Delrahim and Alford, the Antitrust Division faced the decision whether to permit or even encourage monopolization in the pot industry because that would raise prices and restrict output of a bad product. Delrahim told Congress that the Division’s review of the industry’s potential anti-competitive behavior was “consistent with protecting consumers’ access to cannabis products.” There is an obvious problem with this explanation: Neither Alford nor Delrahim ever explain why the Division needed to issue burdensome process in ten mergers to figure out its position on what seems, frankly, like an academic question. The Division is well aware of what both federal and state law say about the sale of marijuana, and the Division’s decision about whether to enforce the Clayton Act in these markets is unlikely to depend on the kind of information about particular marijuana industry participants that the Second Request process would yield. In any event, the antitrust policy question Delrahim and Alford identify is in fact not entirely novel. One of my duties at the Division was to sit on a committee that decided when the Division would intervene as amicus in private antitrust cases. At the time there were a series of antitrust actions brought by labor union health funds against tobacco companies. The unions claimed that the tobacco firms were engaged in a cartel, which among other things, had conspired to suppress information about the risks of smoking. As we considered whether to intervene, we too wondered whether it made sense to lend a hand to the busting of an alleged tobacco industry cartel if the likely result would be more competition in the cigarette industry, lower prices, and more smoking. We ultimately decided not to intervene in the union health plan lawsuits, but not because we thought that the tobacco industry should be immune from the antitrust laws—and we didn’t need to issue Second Requests to reach a decision on that question. Not surprisingly, Alford states that the Division reached the same decision with respect to the cannabis industry—i.e., that the Clayton Act applied in full. But, just as in the case of the tobacco companies back when I was at the Division, the Division leadership didn’t need to issue Second Requests to make their decision respecting the value of antitrust enforcement in the cannabis industry. Alford’s explanation just doesn’t hold up. 3) Both Delrahim and Alford suggest that Second Requests were issued because, in Alford’s words, “[t]he Antitrust Division had never analyzed the marijuana industry before, and … it was forced ‘to build out an understanding of the industry from scratch’” (quoting Delrahim’s letter). Respectfully, that explanation does not fit with the facts. As I said in my initial comment on this website reacting to Elias’s testimony, the fact that the Antitrust Division launched ten merger investigations in the cannabis industry in quick succession belies the idea that the Division was just trying to get its bearings. Several of the other antitrust experts raised the same point. In fact, the Antitrust Division does not appear at any time to have formulated a possible theory of how these mergers would harm competition, and issuing Second Requests without a theory of possible competitive harm is not how the Division does business. It’s not just me and other experts saying this. Look at the Antitrust Division Manual, page III-39. That page is where the description of the Second Request process begins. You’ll see that the entire design is premised on the idea that Second Requests are issued only where there is some chance that a proposed merger would cause competitive harm in a well-defined antitrust market. To this day, neither Delrahim nor Alford nor anyone else has articulated a theory of competitive harm respecting any of the mergers for which the Division issued Second Requests. 4) Finally, both Delrahim and Alford attempt to rely on the finding of DOJ’s Office of Professional Responsibility that “[e]ven if the whistleblowers’ allegations were true, … ATR’s Second Requests would not have violated any relevant laws, regulations, rules, policies, or guidelines.” I’ve read the OPR letter many times, and this formulation still shocks me. Put plain, the OPR is suggesting that it’s perfectly okay for the Attorney General to direct that a Second Request be issued even in instances where a merger presents no antitrust concern and the intent is purely to harass companies that the AG dislikes. That is simply an astonishing assertion. One which, as I explained in my previous comment, is at odds with everything I know about how antitrust enforcement, merger investigations, and, in particular, the Second Request process, are supposed to work. It’s also notable, in my view, that OPR appears to have relied solely on submissions from Antitrust Division leadership—there is no indication that OPR spoke with Antitrust Division staff or representatives for the cannabis industry companies that received Second Requests. This all brings me to my final point, which is about how we should think about Delrahim’s and Alford’s denials in light of the Trump Administration’s tendency to lie about … well, about pretty much everything, from inauguration crowd size to the path of a hurricane to the pace of border wall construction to the likely course of the coronavirus epidemic. Trump and his administration lie about consequential things and also about things that don’t really matter and shouldn’t be worth lying about. They lie designedly, they lie casually, they lie constantly, and—perhaps most importantly—they lie without apparent remorse. And as an iron rule, they never admit that they’ve lied, even when a particular lie is patently obvious to everyone who isn’t blinded by partisan loyalty to the liars. Lying is, in short, this administration’s brand. And so when men like Delrahim and Alford issue denials, it is frankly difficult for people who don’t want to be played for fools, again, to take those denials simply at face value. Those men have chosen to serve Donald Trump, and that means adopting, or at least acquiescing to some significant degree in, this administration’s “ethics.” If you lie down with dogs, the saying goes, you get up with fleas. And you shouldn’t be shocked that people tend to believe John Elias when he says that the Antitrust Division and William Barr have been playing dirty with the antitrust laws. I’m not ready yet to conclude that William Barr, Makan Delrahim and the Antitrust Division leadership are guilty as charged. In other words, I don’t have sufficient information to conclude whether Elias and his fellow whistleblower or Delrahim and Alford are providing the most accurate account. But I do think it’s obvious that Congress should investigate—even if Donald Trump is thrown out of office in November. And if Elias’s allegations bear out, the people responsible have abused their positions and should face consequences.

The Delrahim and Alford Explanations


" What the Federal Circuit Can Learn from the Supreme Court -- and Vice Versa ," 59 Am. U. L. Rev. 787 (2010) Abstract Speech.

"What the Federal Circuit Can Learn from the Supreme Court -- and Vice Versa," 59 *Am. U. L. Rev.* 787 (2010)

									Abstract

Speech.

Rochelle C. Dreyfuss, What the Federal Circuit Can Learn from the Supreme Court -- and Vice Versa, 59 Am. U. L. Rev. 787 (2010)

I would especially like to thank Michael Carroll for inviting me to deliver this Lecture. It is a real privilege to have been asked, and a pleasure to be here. I would also like to thank him for suggesting that I talk about one of my favorite topics. I have been a student of the Federal Circuit for some time. The statute enacting the court was passed while I was clerking in the Second Circuit for Judge Feinberg, and I have to tell you, the smile on his face when he discovered he would never have to hear another patent case was a beauty to behold. Also, while I was a law clerk to Chief Justice Burger at the Supreme Court, the hard work of getting the court organized was taking place. Justice Burger took a special interest in judicial administration, so during that period, he spent time with Howard Markey. Markey had been the Chief Judge of the Court of Customs and Patent Appeals, and he was slated to become the First Circuit's first Chief. The two of them decided that since I had been a chemist before I [Vol. 59:787 went to law school, and because I was interested in patent law, I should be Markey's inaugural Federal Circuit law clerk. It would have been a lot of fun, but unfortunately my life-my husband and children-were moving back to New York. So I had to decline, and I started to teach at NYU Law School instead. Nonetheless, I remained curious about how the court was faring. And at its fifth anniversary, which was right before I was to get tenure, I decided to write my "tenure piece" on its jurisprudence. 1 Since then, I have revisited the question of the court periodically. To a student of patents, civil procedure, and legal institutions, the Federal Circuit is a superb subject for academic inquiry because it was actually created as an experiment; there are not too many experiments in law, so this one was pretty special. What happened is this: in the early 1970s, federal appellate dockets had increased to the point where the regional circuits could no longer handle the load. The first impulse was to add new judges to existing circuits. But that would have been of limited help because increasing the number of judges would lead to more intra-circuit inconsistency and would breed more cases for the circuit courts to decide. Adding new circuits was also a possibility, but such an addition would also have been problematic because more circuits would mean new opportunities for inter-circuit splits, and that would breed more cases for the Supreme Court to decide. The Hruska Commission was convened to study the issue, and in 1973, it conceived the idea of experimenting with specializationwith pulling a class or classes of appeals out of the regional system and funneling them into a special appellate tribunal. 2 The new court would reduce the dockets of the regional circuits, and it could, in theory, do much more. Its presence could also diminish opportunities for forum shopping and take pressure off the Supreme Court. If it were small enough to speak with a single voice, it could bring more coherence to the law it administered. And, with greater expertise in the field, it might decide cases more efficiently. As Judge Markey told Congress, "[I]f I am doing brain surgery every day, day in and day out, chances are very good that I will do your brain surgery much quicker . . . than someone who does brain surgery once every 2010] FINNEGAN LECTURE 789 couple of years." 3 Although the Hruska Commission report actually made several suggestions for fields that would be appropriate for specialization, patent law was, if you will, "the killer app." Way back in 1911, Learned Hand was called upon to decide whether purified adrenaline was patentable subject matter. 4 It was a significant issue then, and the case retains its importance now, because its holding is thought to support patenting in the biotech sector. Significantly, in his rather brilliant opinion, Judge Hand nevertheless ended as follows: I cannot stop without calling attention to the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon such questions as these. . . . How long we shall continue to blunder along . . . no one knows; but all fair persons not conventionalized by provincial legal habits of mind ought, I should think, unite to effect some such advance. Congress decided, in light of the Hruska Commission Report, that seventy-one years of blundering was enough. The "advance"-the Federal Circuit-would, in one fell swoop, solve the problems the Commission was formed to address, answer Learned Hand's plea for technologically expert judging in patent cases, and bring that smile to Judge Feinberg's face. But it is important to remember that this was an experiment, and it was risky. Specialization had been tried in the past and, for the most part, failed. The poster child was the Commerce Court, which was created in 1910 to review decisions of the Interstate Commerce Commission. The court was so hated-by the railroads, by shippers, by the public-that it was disbanded within three years of its founding (and one of its five judges was also impeached, but that may be a different story). In fact, there were many reasons to be concerned about specialization. Isolating patent law could favor special interests. Appointments to regional courts-that is, to generalist courts-are so highly contested by so many special interest groups that they dilute each other's effectiveness. But when there is only one field to fight about, those who are better organized and have the most moneywhich, in this context, is probably patent holders-can "capture" the appointments process so that judges are predisposed to their interests. Even without capture, patent holders would, it was thought, have an advantage. As repeat players, they could manipulate the way that important issues were framed for litigation. There were also fears that the judges might develop tunnel vision. The saying is, if you have a hammer, everything looks like a nail. In an effort to support innovation, the judges might be so focused on patents, they would ignore non-patent incentives to innovate, such as intellectual curiosity, the availability of prizes, or competition. Furthermore, people were worried about the Federal Circuit's isolation. They were concerned that the court's exclusive jurisdiction would take patent law out of the judicial mainstream and deprive the law of the benefits of cross-fertilization. 7 Finally, the bar was worried that there would be difficult boundary problems on the allocation of cases among the appellate courts. Congress took these concerns seriously. While the Federal Circuit was given authority over all, or, as we will see, nearly all patent appeals, it is not specialized in the traditional sense because there are many other sources of its judicial authority. These include such areas as diverse as contracts, torts, export controls, labor law, and energy issues. Other industries and bar groups are therefore involved in lobbying for appointments, and the judges must stay abreast of non-patent legal developments. Indeed, from most perspectives, the Hruska Commission's experiment has been a raging success. 9 The court has now passed the quarter-century mark. The patent industries and the patent bar are delighted with it, and-in what might be the biggest compliment of all-many other countries are copying it. 10 On the whole, the concerns people expressed about specialization have not eventuated. There has been no capture of the appointment process. If anything, there is concern that not enough appointees have had patent 12 -the Federal Circuit had "case" rather than "issue" jurisdiction: once a case is properly before the Federal Circuit, it decides all of the issues, not just the patent ones. 13 At the same time, in Christianson v. Colt Industries Operating Corp. 14 and Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 15 the Supreme Court withheld Federal Circuit jurisdiction when the patent issues in a case appear only in the defense or in a counterclaim. These decisions have the benefit of giving the court a somewhat broader perspective on innovation policy, while also creating an interchange with other national courts. Most important, however, the Federal Circuit's success can be attributed to the many positive contributions it has made to patent law. Most obviously, for patent appeals, the Federal Circuit is almost the only game in town. As a result, it has eliminated forum shopping and has attained a high degree of national uniformity, and that is a value that the industry positively cherishes. No one will make heavy commitments of time or money if there is uncertainty about what law is going to apply. There are some exceptions here, including, as Kimberly Moore has shown, some forum shopping at the district court level. 17 But the situation has vastly improved. The Federal Circuit has also made a key procedural innovation. In Markman v. Westview Instruments, Inc., 18 the court, with the Supreme Court's approval, eliminated jury trials on claim construction. 19 ruling created more predictability in the interpretation of patent claims, yet another value that the industry holds in high esteem. To be sure, there are still complaints about the continuing indeterminacy of claim construction, but in an empirical study, Jeffrey Lefstin demonstrated that the level of uncertainty in this area specifically is no different than that for contract interpretation generally. 20 Indeed, in another empirical work, Lefstin showed much more: that the Federal Circuit's developed expertise in patent law has made the law more predictable across a whole range of issues, including infringement, validity, and inequitable conduct. 21 And according to Robert Gomulkiewicz, the court has also become highly knowledgeable about the technology business. 22 Because the court sees so many cases about patent transactions, it is now an influential voice within the federal judiciary as a whole on questions involving licensing. Given the happiness within the bar and within the patent industries, and given the eagerness of other countries to copy the Hruska Commission's experiment, it is perhaps a surprise that lately the Supreme Court has changed its practice. In the first twenty or so years, its review of the Federal Circuit was largely intermittent and confined to procedural issues-cases like Hohri, Christianson, Holmes, and Markman. However, the Court has recently begun to intervene regularly; it has begun to address the substance of patent law; and it has reversed, vacated, or questioned nearly every decision: MedImmune, Inc. v. Genentech, Inc., on standing to challenge a patent; 32 on a dissent from the dismissal of certiorari, Justice Breyer cast doubt on the Federal Circuit's subject matter jurisprudence. 33 And there is yet another subject matter case pending in the Supreme Court-Bilski v. Kappos 34 -where there are similar doubts about the Federal Circuit's rule. Significantly, we are in an era in which Supreme Court review is otherwise declining. Furthermore, heightened review of patent cases is happening in the absence of the circuit splits that usually attract Supreme Court attention. Accordingly, one really must wonder about this level of activity and whether it is an implicit criticism of the Federal Circuit's work. I, however, am going to argue tonight that heightened review should not be taken as a criticism of the Federal Circuit. The Supreme Court's interest in patent law is at worst neutral: every circuit comes into focus periodically, and now that the Federal Circuit has come of age, it is taking its turn. More to the point, Supreme Court involvement in Federal Circuit decisions should be regarded as highly salutary, for these two tribunals have a great deal to learn from one another. What I mean is this. The Federal Circuit must, obviously, learn from the Supreme Court, for it is bound by the Supreme Court's decisions. But the relationship between these two courts is not simply Both of these courts are caught in the Hruska Commission's experiment; they must both figure out how a judiciary largely committed to generalist adjudication should deal with a court that is so differently constituted. And both courts are, in a sense, courts of last resort (at least, the Federal Circuit is when the Supreme Court is not so focused on its activities). In that capacity, both have weighty responsibilities regarding the substance of national law and for supervising the courts below them. Of course, they see these problems from different perspectives. Sharing their views-learning from one another-could enhance the operation of the patent system, shed light on the costs and benefits of specialization, ease the path for other specialized courts, and improve judicial administration more generally. Let me start with the first area of specialization, where there are two distinct problems: the Federal Circuit's relationship to the generalist Supreme Court, which reviews its work, and its relationship to the generalist trial courts, whose work it reviews. I will describe both problems and then discuss the lessons to be learned. Of these, the harder question is the Federal Circuit's relationship to the Supreme Court. Obviously, the Federal Circuit is subject to Supreme Court review-the same as the other circuit courts-but review here seems particularly intrusive. The judges on the Federal Circuit have built up experience over their years of service, while the Justices of the Supreme Court do not even have a generalist's knowledge of patent law. After all, their own experience on lower court benches could not possibly have given them any perspective on patent law because-and there is some irony here-all the patent cases had been diverted to the Federal Circuit by the time most of them were appointed. Justice Stevens is an exception, and he is approaching retirement. On the one hand, Supreme Court involvement dilutes the Federal Circuit's hard-won expertise, but on the other hand, the Supreme Court's involvement may be more important in the case of the Federal Circuit than it is for the other courts it reviews. Consider the common law. Although patent law is nominally statutory, it leaves wide gaps for judge-made law. And common law judges make law in an evolutionary and collaborative fashion. Take the Evarts Act, 36 which established the regional circuits. At the time the Act was passed, the question was whether these new regional circuits would be bound by each other's law. An approach requiring appellate courts to follow one another's precedent would have had the benefit of guaranteed national uniformity. Nonetheless, the decision was made to give each circuit judicial independence-that is, to forego national uniformity-so that the law would "percolate," allowing the fittest rule to survive. "Survival of the fittest" is no longer possible for patent law, because apart from cases in the Holmes or Christianson posture, the only circuit court hearing patent cases is now the Federal Circuit. If, then, we are going to get evolution in patent law, it has to be through a different mechanism. Supreme Court involvement in patent decisions is one such avenue. 37 There is another reason Supreme Court involvement is necessary: despite congressional attempts to give the Federal Circuit cases outside patent law, patents remain at the core of its docket, at least in the innovation area. The court has little chance to see how patents fit into the economy as a whole. The Supreme Court does have that perspective. And in the recent group of cases, we see the difference Supreme Court involvement can make at both the micro and the macro level. Thus, at the micro level the Supreme Court has made smallish doctrinal adjustments intended to keep patent law in the mainstream. In eBay, the Court claimed it was making sure that the standards for injunctive relief stay the same across all federal causes of action; 38 in MedImmune, it made the test for standing uniform; 39 in Illinois Tool, it equalized the treatment of antitrust defendants. At the macro level, the Supreme Court has, essentially, pressed the reset button. Although I earlier described the establishment of the Federal Circuit as an outgrowth of administrative concerns, one can also read the legislative history as revealing a strong interest in strengthening patent value and stemming what was then perceived as 2006) (holding that "in all cases involving a tying arrangement, the plaintiff must prove that the defendant market power in the tying product"). [Vol. 59:787 a flight to trade secrecy. The Federal Circuit took this commitment to heart (which, in part, may be why the patent bar has been so pleased with its performance). However, its success has turned into something of a mixed blessing: legal scholars, economists, the Federal Trade Commission, the National Academies, and even some in the patent industries have expressed concern that there are now too many patents, that they cover too much economic activity, that patent quality is declining, and that the high cost of patent litigation is chilling innovation. The Supreme Court has moved in very effectively. For example, by giving district courts discretion over awarding injunctive relief, eBay's limit on permanent injunctive relief should reduce incentives to litigate; 42 KSR, which raised the standard of nonobviousness, relieved concerns about patent quality; Justice Breyer's dissent in LabCorp clearly flagged the problem of patent proliferation. As he stated: "[S]ometimes too much patent protection can impede rather than 'promote the Progress of Science and useful Arts.'" 43 Of course, many of these changes could have been made by Congress, but as its recent prolonged attempt at patent reform suggests, there can be wisdom in relying on a judicial approach. In sum, that is one problem: figuring out how the Supreme Court can use the generalist knowledge derived from its unique position in a way that takes account of the Federal Circuit's expertise in technology, patents, and licensing. The other problem is determining the Federal Circuit's role as a specialist appellate court reviewing a generalist trial court. The problem here is that appellate courts generally defer to the factual But the Federal Circuit does not have that problem. Besides, it chooses clerks for their technical backgrounds and it can hire staff to advise it on technical matters. Accordingly, a strong argument can be made that the relationships between these courts should be different. And significantly, the countries that have copied the idea of specialized patent courts have mostly established their patent courts at the trial court level, which is some indication that the real gains from specialization are reaped with respect to fact-finding. If that is true, it would be highly advantageous to find a way for the Federal Circuit to make an equivalent contribution, even though it is an appellate court. So, those are the two specialization issues-what can the courts learn from one another? Although the Supreme Court is the older institution-and supreme-the fact of the matter is that the Federal Circuit faces these specialization issues more regularly. As a result, it has the most to teach. Starting at the end, with the question of trial court review: since its earliest days, the Federal Circuit has been attentive to the question of effective review of fact-finding. Likely, its concern initially arose because it was Chief Judge Markey's view that the way to establish the court's reputation would be to straighten out the mess that was nonobviousness, where the disparate views on the regional circuits had given rise to the most extremely corrosive form of forum shopping. In its earliest nonobviousness cases, the Federal Circuit therefore undertook a detailed examination of the patents in issue, at the prior art, and at their relationship. If And that Rule applied even though the Federal Circuit's grasp of the facts was clearly better than the trial court's. That was a major loss. But the Federal Circuit did not give up on the enterprise both for nonobviousness and in general. Instead, it adopted two other approaches. First, it required the trial courts to apply specific analytical techniques to factual questions. For nonobviousness, for example, it required courts to examine secondary considerations-such things as commercial success and long-felt need. 47 Furthermore, it required proof of a teaching, suggestion, or motivation for combining prior art. In addition, it started classifying many of the more complex technical issues as questions of law, rather than issues of fact, so that Rule 52 would not bar de novo review. The Federal Circuit has, in short, efficiently canvassed the ways in which it can bring its expertise to bear on the facts that affect the outcome of technologically complex cases. Admittedly, by requiring these analytical techniques, it has sacrificed flexibility for predictability. But as we saw, improving predictability has very much pleased the patent industries. But there is a catch. True, in Markman, the Supreme Court approved the idea of recharacterizing some factual questions as legal determinations. 50 But at least in part, it did that because the move fit nicely with the Supreme Court's own agenda about limiting factfinding by juries. 51 In fact, the Supreme Court is busy dismantling the analytical requirements. In KSR, its own case on nonobviousness, the Supreme Court began by "rejecting the rigid approach of the Court of Appeals." 52 What the Supreme Court has not done, however, is face the larger question of expertise head-on. If it does not like rigid rules, perhaps it should use its power under the Rules Enabling Act 54 to change Rule 52. Or, if it does not want to engage in that particular experiment with Federal Circuit exceptionalism, it could help the Federal Circuit find the "sweet spot" between rigid rules and standards. Either way, an acknowledgement of the Federal Circuit's attempts to deal with deficiencies in lower courts' handling of technologically complex factual issues could improve patent jurisprudence. Taking lessons from the Federal Circuit might also help the Supreme Court improve adjudication of technical issues in other complex cases, such as antitrust and environmental law. What about the harder question, the one about the Federal Circuit's relationship to the Supreme Court? How do we get the benefits of Supreme Court intervention without sacrificing the advantages of relying on the Federal Circuit's growing expertise? There are two sub-issues here: When should the Supreme Court intervene-or more accurately, who should decide when the Supreme Court should decide? And, does the Supreme Court owe the Federal Circuit any special regard on substantive patent law questions? On the first of these issues, I again think that the Supreme Court could learn a great deal from the Federal Circuit. In the past, the Supreme Court has sometimes wasted its time. An example is Pfaff v. Wells Electronics, Inc., 55 where the Court reached a perfectly reasonable position on when an invention was "on sale," 56 but the decision was no better than the one that the Federal Circuit would have found for itself. Since the Supreme Court's resources are highly limited, 53. Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari at 3, Bilski v. Kappos, No. 08-964 (U.S. filed Mar. 2, 2009), 2009 WL 2445759 (claiming that Congress, the Supreme Court, and independent entities that have studied patent law "do not advocate limiting the scope of patentable subject matter"); Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari at 6, Bilski v. Kappos, No. 08-964 (U.S. filed Feb. 27, 2009), 2009 WL 564646 ("Narrowing the scope of patentable subject matter forces innovators to use other means of protecting their inventions, such as maintaining the invention as a trade secret."); Brief of John P. Sutton Amicus Curiae Supporting Petitioners at 3, Bilski v. Kappos, No. 08-964 (U.S. filed Feb. 25, 2009), 2009 WL 507782 (supporting certiorari to "clarify the law," but not to "make commodity trading into patentable subject matter"). 54 And I have just said that on micro and macro issues, the Supreme Court ought to be the teacher. But should its views always trump? I would argue that the Supreme Court's testiness about the Federal Circuit's departures from its precedents is often inappropriate, and that it adversely affects Supreme Court litigation as well. Litigants are forced to rely on language from ancient case law that no one wants to resurrect, when they should be suggesting formulations that address contemporary problems. A good example is the concept of "synergy." 63 In certain respects, then, the Supreme Court ought to conceptualize its relationship with the Federal Circuit as more of a dialogue than the product of hierarchy-as I said earlier-as the substitute for percolation. The mechanism for doing that is certainly there. Consider patentable subject matter: first, there was-in Justice Breyer's words-the Federal Circuit's "statement" about patentability in State Street. Then came Justice Breyer's dissent in LabCorp. That spurred a set of Federal Circuit cases, culminating in Bilski, which the Supreme Court then decided to review. Next came Prometheus Laboratory, Inc. v. Mayo Collaborative Service, 64 another subject matter case, and Prometheus will, of course, be followed by the Supreme Court decision in Bilski. So, there is plenty of opportunity for a really good interchange of ideas, and the Supreme Court seems receptive to that approach. Indeed, even when the Supreme Court reverses the Federal Circuit's decisions, the Court rather significantly leaves implementation questions to the Federal Circuit's discretion. One could also think about this institutionally. Is the Supreme Court the best institution to be setting mid-range policy, by which I mean crafting the policies relevant to the administration of patent law? In other technical areas, there is an administrative agency that fulfills that function. Now, I have left the U.S. Patent and Trademark Office (USPTO) out of this discussion because it was founded before the Administrative Procedure Act; lacks rule-making authority; and only sees the issues that arise when a patent is issued, not the ones that come up when patented information is used. 65 Perhaps things will change under the new Commissioner, David Kappos, but as currently constituted, the PTO just cannot play the institutional role I am discussing. 66 And as we have seen, Congress is not in a position to do much on this either. So, we have a technically complex set of problems, key to our economic health, and something of a vacuum on the institutional end. Now that all patent cases are before the Federal Circuit, it is uniquely positioned to take on the job of filling that void. But for that to happen, the Federal Circuit has to act like a teacher: it has to explain what policies it is adopting. This, indeed, is a place where the Federal Circuit could learn from the Supreme Court: not what the mid-level policy ought to be-I would leave that to the Federal Circuit-but how to make it evident what mid-level policies it has chosen and why it has decided to further them. In other words, the Federal Circuit must articulate the theory on which it is relying. The Supreme Court works very hard to explain what it does. It often describes the alternative ways in which it could decide a case, it identifies the policy choices associated with each alternative, and it explains the theory behind the choice it is making. In part, that may be an outgrowth of confronting circuit court splits-it must explain to each circuit why it chose the rule that it did-but it is even true of In contrast, although the Federal Circuit routinely recites policy justifications for the statutory requirements of patent law, it rarely provides insight into the policy rationale for its own decisions. Indeed, some of the judges have publicly suggested that it would be wrong to explain (or even to be motivated by) policy. 70 Now, I have written elsewhere that the reason for denying policy motives may have something to do with the experimental nature of the court. Perhaps it did not want to make waves while it was "on probation" in the public's mind. 71 But after more than twenty-five years, I think it is safe to say that the experiment is over. The court is now part of the fabric of the U.S. judiciary. Unless the Federal Circuit does a good job articulating, explaining, and justifying policy, it cannot play the institutional role I envision. For example, I just mentioned the potential dialogue on patentable subject matter. But there is a small flaw in the argument: when the Federal Circuit decided Prometheus, it never engaged Breyer's dissent in LabCorp-even though both of the cases were about the same type of invention. [Vol. 59:787 results. 73 This is true for other issues as well: Had the Federal Circuit explained why it was ignoring Rule 52 in Panduit, or why it was adopting analytical rules, perhaps the Supreme Court might have taken the problematic nature of its relationship to the trial courts more seriously. I hasten to add that, to an extent, the Federal Circuit is learning this lesson. An example is the Federal Circuit's decision in Bilski, which very deliberately and repeatedly referenced Diamond v. Diehr, the Supreme Court's 1981 decision on the patentability of software. 74 That approach neatly teed up the problem of relying on outdated case law. We will have to see whether the Federal Circuit made the issue of its authority as a specialized court to stray from Supreme Court precedents clear enough for the Supreme Court to consider the problem. The opinion-writing issue allows me to segue into another area where the courts have a great deal to teach each other, and that is on dealing with the special problems that come from being a court of last resort, with supervisory and administrative responsibilities. Once again, I think the Federal Circuit has something important to teach. The lesson goes back to the question of reviewing district court fact-finding. While I am also somewhat skeptical about over-reliance on rigid rules, the Federal Circuit deserves credit for taking its role in supervising the lower courts seriously. That is what made the court such a success in patent law circles, and there is a lesson there for the Supreme Court. As two of my colleagues, Sam Estreicher and John Sexton noted twenty-five years ago, the Supreme Court's own docket is cluttered with cases that arise directly from that Court's failure to provide clear analytical directions. 75 Now that the Supreme Court is taking fewer cases, that failure may become even more serious. Here, the Federal Circuit's responsiveness could act as a template for the Court. In other respects, however, this is a place where the Supreme Court has more experience, and so the Federal Circuit has much to learn. First, there is the issue of writing informative opinions. One reason to think of the Federal Circuit as filling an institutional vacuum is because it is a court of last resort. As I tell my students, for patent law, the Federal Circuit usually is the Supreme Court. But if it is, it has to act that way. It cannot play a policy role unless it tells us what the policy is. Well-articulated policy is also important for supervising the lower courts. Indeed, it is a tool that might replace at least some of the Federal Circuit's famous rigidity. 76 That is, the better the trial court understands the policy that the Federal Circuit is trying to achieve, the more likely it will do what the Federal Circuit thinks is required. A change might also help to clear the court's dockets. Federal Circuit judges have complained about appeals that are built around nothing more than minor changes in the wording of its holdings. But if the litigants better understood the underlying policy, these linguistic variations might seem less salient to them. Another issue concerns what I call the repeat player disadvantage. A problem for courts of last resort, or for a court that has an institutional role in setting policy, is that the law it hands down can require revision. Justice Brennan used to call this "damage control." A new rule could be wrong, it might be confusingly formulated, or it may wind up applying to situations the court did not foresee. To do damage control, the court must take the issue up again. And therein lies the problem: litigants have to persuade the court to reconsider an issue it has already laid to rest, and that is not always comfortable. Repeat players-attorneys who appear before a court regularly-may not want to annoy the judges and jeopardize their credibility in future cases. 77 So, for example, John Duffy and Craig Nard note that the number of PTO certiorari petitions plummeted after the Federal Circuit was established. 78 As the quintessential repeat player, perhaps it has been trying to avoid that kind of friction. Other litigators may also be facing this issue. It seems to me that one such example is the common law experimental use defense. In Madey v. Duke University, 79 the Federal Circuit seemingly reduced 76. See Dreyfuss supra note 9, at 803 ("The elaboration of policy would make the law more comprehensible, and thus easier to apply reproducibly."). To sum up, the Supreme Court's recent interest in patent law is highly intriguing. It has caused consternation in patent circles. But it should not. There are many questions that these courts need to work through jointly: questions on when specialization is necessary, how it should be provided, under what circumstances a specialized court should be able to "pull rank" and claim that its expertise gives it a superior perspective. By teaching each other the lessons that come from their unique perspectives, these two courts can bring the Hruska Commission's experiment to fruition and make a truly significant contribution to judicial administration both here in the United States and abroad. Equally important, the Federal Circuit and the Supreme Court can together update patent law to the emerging needs of the "Knowledge Economy." As a student of both patent law and institutional design, it is a pleasure to watch these cases and this dialogue unfold. Thank you again for giving me the opportunity to talk about one of my favorite subjects. See Justice Stevens Slows His Hiring at High Court, USA TODAY, Sept. 2, 2009, http://www.usatoday.com/news/washington/judicial/supremecourtjustices/2009-09-02-stevens_N.htm. 2010] Instead, in a footnote, the Federal Circuit dismissed L.L.C., on injunctive relief;28 28. 547 U.S. 388, 78 U.S.P.Q.2d (BNA) 1577 (2006), vacating 401 F.3d 1323, 74 U.S.P.Q.2d (BNA) 1225 (Fed. Cir. 2005). 29. 547 U.S. 28, 77 U.S.P.Q.2d (BNA) 1801 (2006), vacating 396 F.3d 1342, 73 U.S.P.Q.2d (BNA) 1705 (Fed. Cir. 2005). 30. 550 U.S. 437, 82 U.S.P.Q.2d (BNA) 1400 (2007), rev'g 414 F.3d 1366, 75 U.S.P.Q.2d (BNA) 1506 (Fed. Cir. 2005). 31. 534 U.S. 124, 60 U.S.P.Q.2d (BNA) 1865 (2001), aff'g 200 F.3d 1374, 53 U.S.P.Q.2d (BNA) 1440 (Fed. Cir. 2000). 32. 548 U.S. 124, 79 U.S.P.Q.2d (BNA) 1065 (2006) (per curiam), denying cert.

L.L.C., on injunctive relief;28


"What Trademark Law Is Learning from the Right of Publicity," 42 Colum. J.L. & Arts 389 (2019) (symposium contribution)

"What Trademark Law Is Learning from the Right of Publicity," 42 *Colum. J.L. & Arts* 389 (2019) (symposium contribution)

Barton Beebe, What Trademark Law Is Learning from the Right of Publicity, 42 Colum. J.L. & Arts 389 (2019) (symposium contribution)

Barton Beebe* In 2006, Stacey Dogan and Mark Lemley published the now classic article "What the Right of Publicity Can Learn from Trademark Law." 1 There they urged us to "[r]econceiv[e] the right of publicity as a trademark-like right," 2 particularly because "looking at the right of publicity through the lens of trademark law offers logical ways to limit the right." 3 Right of publicity law's failure to incorporate trademark law's limitations had resulted, they argue, in the right of publicity functioning as "a mutant version of trademark policy . . . ." 4 I argue here in response that regrettably, notwithstanding Dogan and Lemley's good advice, the reality is that it is trademark law that has become more like right of publicity law. Indeed, trademark law is in danger of becoming a "mutant version" of right of publicity policy. To defend this claim, I will first briefly survey the conventionally-recognized similarities and differences between trademark law and right of publicity law. I will then propose a more complicated-and, I think, more accurate-comparison between the two areas of law and argue that they are converging in many important ways, giving us the worst of both worlds. In what follows, I will focus more on trademark law, not only because many other contributions to this Symposium thoroughly discuss right of publicity law, but also because I think we should be especially concerned with trademark law's mutation in the age of Burwell v. Hobby Lobby Stores 5 and Citizens United v. Federal Election Commission 6 into a kind of right of publicity law for corporate personhoods. Before I proceed, I should emphasize one point from the start. I very much doubt that Dogan or Lemley would disagree with the general thrust of my argument, not least because much of it draws upon other work by them. COLUMBIA JOURNAL OF LAW & THE ARTS [42:3 I first compare the policy goals understood to be guiding the two areas of law and then turn to a comparison of their subject matter, scope of rights, defenses, and limitations. In terms of the customary policy justifications for the two areas of law, there are apparent differences. We conventionally say that trademark law protects trademarks from infringement and thereby maintains the integrity of the trademark system in order (1) to minimize consumer search costs and (2) to encourage firms to maintain consistent levels of product quality. 7 This is the orthodox law and economics justification for trademark protection. 8 It makes obvious good sense with respect to trademarks on products like pharmaceuticals or food. If we acknowledge only this justification for the protection of trademarks, then we will be in a position to conclude that trademark law, with its emphasis on search costs, is very different from right of publicity law. But the orthodox law and economics justification makes less sense when applied to goods whose primary purpose is to convey social distinction, such as certain kinds of apparel. 9 This social distinction may be conventionally hierarchical in nature, and this is how lawyers almost invariably think about social distinction-such that society consists essentially of one giant U.S. News & World Report ranking. 10 But social distinction may more generally take the form simply of non-hierarchical, horizontal difference from mass society. 11 In light of the role that trademarks play in facilitating the consumer's sense of identity, we sometimes admit that we protect trademarks from infringement to preserve firms' incentives to produce signs of social difference and to preserve the distinguishing function of those signs of social difference. 12 It is conventionally thought that different justifications motivate right of publicity law, and Jennifer Rothman reviews them quite effectively in her book The Right of Publicity: Privacy Reimagined for a Public World. 13 As she points out, the notion that right of publicity law strives to protect consumers from deception is unpersuasive, not least because right of publicity law typically does not require a showing of likelihood of consumer confusion. 14 Instead, a variety of other justifications have been adduced over the years for right of publicity protection: It incentivizes the creation of celebrity personas; 15 it prevents the overgrazing or tarnishment of those personas and protects the public's interest in stable celebrity identities; 16 it provides an appropriate reward for the labor that goes in to the development of a valuable personal identity; 17 and it prevents misappropriation or unjust enrichment of that value. 18 And finally, a rationale that emerges in part from the earliest origins of right of publicity law is that the law protects the individual liberty and dignitary interests of identity holders. It enables identity holders to engage in what Mark McKenna calls "autonomous self-definition" 19 and protects them from certain forms of emotional harm, a rationale which Rothman also endorses. 20 We care about rationales because they guide-or at least tend to have some influence on-the specific rules that make up trademark law and right of publicity law. An example of their influence is found in the differing subject matters of trademark law and right of publicity law. Individual identities, and especially individual celebrity identities, routinely qualify for trademark protection. 21 Corporations, by contrast, cannot qualify for right of publicity protection (at least not yet), apparently because corporations do not have privacy, dignitary, or autonomous self-definition interests, and do not suffer emotional harms. 22 A CULTURAL ANALYSIS OF THE RIGHT OF PUBLICITY AND PASSING OFF 45-62 (Cambridge Univ. Press 2017) (reviewing theoretical justifications for right of publicity). 14. The influence of underlying rationales is also apparent in the two areas' different tests for infringement and defenses to liability. Commentators conventionally emphasize, as I did above, that under right of publicity law the plaintiff need not show that the defendant's conduct is likely to confuse consumers as to source or sponsorship. Instead, a defendant may be liable by merely invoking the identity holder's identity, even if consumers do not believe that the identity holder is endorsing a product. 23 The result is that right of publicity law is generally thought to offer a broader scope of protection to identity holders than trademark law has offered to trademark owners. 24 As for defenses, the various defenses available in right of publicity law, which are also thoroughly reviewed in Rothman's book, 25 tend to be relatively plaintifffriendly. By comparison, trademark law's Rogers v. Grimaldi test 26 (which strictly speaking functions as a limitation on the plaintiff's rights rather than a defense) is more than just defendant-friendly. In operation, it has seemed until recently to be defendant-dispositive. As the Ninth Circuit observed in Gordon v. Drape, "on every prior occasion in which we have applied the [Rogers] test, we have found that it barred an infringement claim as a matter of law." 27 Though, as I will discuss shortly, in Gordon, the Ninth Circuit has finally hinted at some possible limits on the Rogers test. There are other dimensions along which we can compare right of publicity law and trademark law-for example, their terms of protection or their approaches to assignability-that I will skip over here. Instead, I will conclude this very brief survey of the conventional similarities and differences between the two laws by suggesting overall that trademark law has greater built-in limits, especially in its likelihood of confusion requirement and the very powerful Rogers test. As Dogan and Lemley explained in 2006, "the structure and content of trademark law provide a theoretical justification for a bounded right of publicity." 28 23. Id. § 5:11. 24. See, e.g., Hart v. Elec. Arts, Inc., 717 F.3d 141, 158 (3d Cir. 2013) (stating "the right of publicity is broader and, by extension, protects a greater swath of property interests"). 25. See ROTHMAN, supra note 13, at 145-53. 26. See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (stating that "[i]n the context of allegedly misleading titles using a celebrity's name," infringement will not be found "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work."). The Rogers test has since expanded to include a defendant's use of a mark within the body of the defendant's work. Despite all of the conventionally-recognized differences between trademark law and right of publicity, and Professors Dogan and Lemley's hopes in 2006, I want to propose that it is trademark law that has increasingly taken on the characteristics of right of publicity law rather than the other way around. Consider the requirement-if it may still be called a requirement-in trademark law that a plaintiff must show that the defendant's mark creates a likelihood of consumer confusion. As many commentators have suggested, the likelihood of confusion test has arguably mutated into a mere likelihood of association test, which finds liability if consumers merely associate the defendant's mark with the plaintiff, even if consumers are not ultimately confused as to the true source of the defendant's goods and even if consumers' association has no impact on their purchasing behavior. 29 In its recent opinion in Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., the Second Circuit emphatically embraced this view: "The modern test of infringement is whether the defendant's use [is] likely to cause confusion not just as to source, but also as to sponsorship, affiliation or connection." 30 As the Int'l Info. court observed, the shift toward a mere association standard began at least with the 1962 amendment to Lanham Act § 32 that deleted from the section the limiting phrase "purchasers as to the source or origin of such goods or services." 31 Formerly, conduct was actionable only when it confused "purchasers" and only when it confused them as to the source of the goods they were purchasing. With this language removed, explained the Int'l Info. court, "the Act's protection against infringement is not limited to any particular type of consumer confusion, much less exclusively to confusion as to source." 32 Subsequent developments have only quickened the shift toward a mere association standard for confusion. As Professors Dogan and Lemley recognize in their article on the merchandising right in trademark law, the merchandising cases of the 1970s and '80s consolidated the principle that a defendant may be liable for merely invoking the plaintiff's identity and suggesting to consumers that the plaintiff has endorsed or merely acceded to the defendant's conduct. 33 the Trademark Law Revision Act of 1988 amended section 43(a) of the Lanham Act to include extraordinarily capacious language covering the kind of conduct that violates the act. 34 The case law under section 43(a) now seems to suggest that anyone who does anything referential shall be liable to any entity that believes that it is "likely to be damaged" 35 by that reference. The Fourth Circuit Court of Appeal's recent opinion in Belmora LLC v. Bayer Consumer Care AG further suggests that the language of section 43(a) refers to any entity in the world, regardless of whether it is actually using a trademark within the territorial borders of the United States. 36 In sum, what is conventionally recognized as one of the fundamental distinctions between trademark law and right of publicity law-that the former requires a showing of consumer confusion while the latter does not-has arguably become a distinction without a difference. One objection to this characterization of the evolution of the likelihood of confusion test in trademark law may stem from the claim that only the strongest marks benefit from the shift toward a mere association test for confusion. But even if this claim is true, and it likely is not, it simply shows how trademark law has further followed-or at least paralleled-the example of right of publicity law. Both areas of law increasingly express the legal logic of the economics of superstars, in which superstars-be they the strongest marks or the most famous celebrities-dominate their markets and further enable themselves to do so by promoting legal rules designed to protect and enhance their superstar status. 37 In both areas of law, the stronger benefit from broader protection. 38 But probably the best expression of the mutation of trademark law into a right of publicity law for persons both natural and corporate is antidilution protection. 39 Here, the majority of courts interpret the anti-blurring provisions of the Lanham Act to require that the plaintiff show only that consumers associate the defendant's mark with the plaintiff's in order to trigger a finding of blurring. 40 The leading survey method for dilution by blurring simply asks respondents what comes to their minds when they are exposed to the defendant's mark; if respondents identify the plaintiff, then this is taken as evidence of blurring. 41 The parallels with right of publicity protection are even clearer in anti-tarnishment protection, where corporations appear to possess something akin to dignitary interests. This has been apparent in cases where the defendant has had the temerity to associate the New York Stock Exchange with gambling 42 or to associate the Victoria's Secret corporation with "sex-related products." 43 In these and other anti-tarnishment cases, courts rule according to rationales very similar to those in right of publicity law. 44 Still, I do not want to overstate my case. Doing so would risk what I think is a common problem in academic intellectual property law writing, including in my own. This is what might be called the problem of the self-fulfilling description, in which a scholar exaggerates how bad the law is on a particular issue (in order to sell the importance of the scholar's topic). In doing so, the scholar risks persuasively restating the law in such a way that judges and lawyers come to believe that the law is in fact as bad as the scholar says it is, and they decide cases and counsel clients accordingly. I mean to refer to the practice of citing horrible edge cases as representative of the center of the law-which thereby helps to bring these peripheral cases into the center. Trademark law is certainly still its own thing, especially in the area of limitations and defenses. The best example of this is the Rogers test. But even here, we are beginning to see a breakdown. The Ninth Circuit's Gordon v. Drape probably still counts as an edge case, but it should give us cause for concern. The author of the Gordon opinion was Judge Jay Bybee, who just happened also to author the Ninth Circuit's opinion in the trademark case Brown v. Electronic Arts, Inc., which applied the Rogers test to find no infringement. 45 Judge Bybee likewise authored the majority opinion in the right of publicity case In re NCAA Student-Athlete Name & Likeness Licensing Litigation, which held that Rogers cannot be applied to a right of publicity claim. 46 In Gordon, Judge Bybee needed to find some limit on the Rogers test. (And who can blame him? The test is probably too defendant-friendly.) He found that limit in something like a transformativeness test, which analyzes "the degree to which the junior user uses the mark in the same way as the senior user" and the "extent to which the junior user has added his or her own expressive content to the work beyond the mark itself." 47 There would be much more to say along these lines if I were adequately to persuade you of my point, but I want to take what time I have left instead to speculate on why we are seeing trademark law mutate into something like right of publicity law. I think there are several different explanations for the mutation of trademark law into a right of publicity law for corporate personas, many of which may be obvious to you. I will briefly focus on two primarily to set out what might be an agenda for further research. The first relates to the legal concept of misappropriation and to the concept, now increasingly fashionable in the humanities, of "affect," 51 a term perhaps best defined broadly as intensities of feeling. I very much doubt that courts are consciously patterning trademark law after right of publicity, and I suspect you doubt this too. Instead, courts applying trademark law and courts applying right of publicity law have both long been converging toward the general prevention of conduct they perceive to constitute misappropriation. 52 What is it that is being misappropriated? Right of publicity law teaches us that it is something more essential than source or goodwill, or even what I mentioned above-commodified social difference. The thing of value that is being misappropriated is raw positive affect in commodified form, which is especially valuable in a world filled with affectless mass-produced commodities but whose media is otherwise "characterized by a surfeit of [affect]." 53 Just as a celebrity persona can endow a product with positive feeling, so too can a corporate persona as embodied in its trademark. One need think only of Apple or of Nike. More generally, so often when trademark law uses the term "aesthetic," as in the Ninth Circuit cases struggling with the trademark law concept of "aesthetic functionality," 54 what we mean to refer to is affect and affective value. 55 The antimisappropriation impulse in trademark law, as in right of publicity law, seeks to protect this affective value from free riders. The second explanation for the shift in trademark law toward a right of publicity framework for corporate personas is perhaps more interesting but also more difficult to prove. Trademark law is both reflecting and contributing to the continued rise of corporate rights and attention to corporate personhood. 56 If the merchandising cases of the '70s and '80s were one chapter in the recent evolution of trademark law, 57 another chapter-the one we find ourselves in the midst of right now-is the corporate personhood chapter. Courts today are solicitous of corporations' entitlement to "autonomous self-definition," 58 [C]orporate personhood has played only a secondary role in the corporate rights movement. While the Supreme Court has on occasion said that corporations are people, the justices have more often relied upon a very different conception of the corporation, one that views it as an association capable of asserting the rights of its members. This alternative way of thinking about the corporation has paved the way for the steady expansion of corporate rights. Indeed . . . corporate personhood has traditionally-and surprisingly-been used to justify limits on the rights of corporations. ADAM WINKLER, WE THE CORPORATIONS 7 (2018). See also Elizabeth Pollman, Reconceiving Corporate Personhood, 2011 UTAH L. REV. 1629, 1630 (2011) ("[C]orporate personhood should be understood as merely recognizing the corporation's ability to hold rights in order to protect the people involved. This concept is the only common thread in the case law."). One question this raises in the trademark law context is the extent to which courts may begin similarly to justify trademark rights as based on shareholder interests. perhaps even corporations' right of privacy. 59 Instead of corporate persona, we say "brand," and this may explain why a good deal of scholarship would prefer to describe trademark law as "brand law" rather than trademark law. 60 I will briefly conclude by asking how we might try to counteract trademark law's shift toward a right of publicity sensibility. This issue brings us to one important remaining difference between right of publicity law and trademark law. Trademark law seeks, in essence, to promote competition. By contrast, right of publicity law does not try to promote competition in the production of celebrity personas; much of right of publicity doctrine has been developed without any attention to optimizing competition for the benefit of consumers. 61 This distinction may go far toward explaining why right of publicity rights are generally so much more expansive than trademark rights. But just as competition concerns represent an important check on the expansion of corporate rights, so in trademark law, an emphasis on competition may help to limit the expansion of trademark rights stemming from-or at least coincident with-the rise of corporate rights. As the federal courts shift ideologically more to the right and toward finding greater protections for corporate interests, it may be that economic arguments will find a more receptive audience than arguments driven by the First Amendment or a disaffection for consumer culture. 17. See ROTHMAN, supra note 13, at 105-10. 18. See id.; TAN, supra note 13, at 54-55. 19. Mark P. McKenna, The Right of Publicity and Autonomous Self-Definition, 67 U. PITT. L. REV. 225, 232 (2005). 20. See ROTHMAN, supra note 13, at 110-12. 21. See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992), abrogated by

I. THE CONVENTIONALLY-RECOGNIZED SIMILARITIES AND DIFFERENCES BETWEEN TRADEMARK LAW AND RIGHT OF PUBLICITY LAW

II. THE MUTATION OF TRADEMARK LAW INTO CORPORATE RIGHT OF PUBLICITY LAW