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There have been contests between man and machine ever since John Henry (the “steel driving man”) bested the steam drill 150 years ago. Unfortunately, machines are now winning most of those contests. Even Gary Kasparov, the world chess champion, is conceding eventual defeat at the hands of chess-playing computers. I’m no chess player and I know better than to challenge a steam drill. My field is IP law, and when it comes to my specialty, I’m not ready to concede anything to a machine. Or should I? There are danger signs on the horizon. The Supreme Court Forecasting Project, http://wusct.wustl.edu, operated by Washington University of St. Louis, matches a computer against anonymous legal experts to predict the results of pending Supreme Court cases. In other words, man versus machine in the halls of justice. Last term there were three IP cases before the U.S. Supreme Court, providing three opportunities to test the computer against the human experts in my field. I expected it would be no contest. No machine has a chance against an expert in intellectual property, as any IP lawyer can tell you. IP law is highly complex and successful prediction of IP cases must require extraordinary expertise and judgment. Computers can crunch numbers, and even play chess, but it takes real intellectual skill to size up the merits of an IP case before the Supreme Court. To my dismay, I was wrong. It was no contest all right. But it was the IP experts who lost. The final score was Computer 3, Experts 1/2 (on one of the cases, the experts split). The computer called the right result every time, but the individual experts were wrong six out of seven tries. How could this be, I wondered. The computer knows absolutely nothing about intellectual property. It is programmed to crunch numbers based on the justices’ voting patterns and various obscure factors that have nothing to do with the legal merits of the cases. It was time to do some Monday morning quarterbacking to see where the experts went wrong. In Eldred v. Ashcroft, 537 U.S. 186, the computer predicted affirmance, and the two anonymous experts predicted a reversal. The Supreme Court affirmed, 7-2. In Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, the computer predicted a reversal, 5-4, and the Supreme Court reversed 9-0. The three experts predicted the lower court would be affirmed by wide margins. In Dastar Corp. v. Twentieth Century Fox, the computer and one expert correctly called the 9-0 reversal. The second expert said the decision would be affirmed, 7-2. With hindsight, it is easy to see why the experts got Eldred wrong. They knew, and cared, too much about copyright law. In 1999, to honor the late Sonny Bono, and in response to intensive lobbying by Disney and other media giants, Congress extended the term of existing copyrights by 20 years. Copyright law academics, regardless of any affection for the memory of Sonny Bono, were generally outraged by this extension. No legal purist wants to see his or her specialty captured by lobbyists. Under long-established precedent interpreting the copyright clause of the Constitution, copyrights are granted for limited terms to encourage the creation of new works that will ultimately enrich the public domain. Reward of authors and artists (and media giants) is secondary to the public interest. Extending the term of already existing copyrights does not encourage the creation of new works and does not fit easily into what appeared to be a well-established constitutional framework. Unfortunately, few Supreme Court justices are copyright purists and with no strong feelings one way or the other on the subject, the majority simply deferred to Congress and to the memory of the late Sonny Bono. The experts got it wrong because they knew too much about copyright law and erroneously assumed the Supreme Court would share their outrage. Score one for the computer. If the copyright experts were humiliated by Eldred, the trademark law experts had their turn in V Secret Catalogue. Again, the experts knew too much for their own good. A few years ago Congress introduced the concept of “famous” marks into federal trademark law. Trademarks identify the source of a product or service, and the core of trademark infringement is actual or potential confusion as to source. However, the holders of famous marks, such as Kodak or Xerox, get extra protection. Federal law now prohibits “dilution” of famous marks regardless of confusion as to source. The issue in the Victoria’s Secret case boiled down to whether “dilution” required proof of injury, specifically, where the defendant was “free-riding” on the famous mark without confusing consumers as to the source of goods or services. Free-riding on a famous mark is a simple concept. In V Secret Catalogue, the defendant opened an “adults only” apparel and paraphernalia store called “Victor’s Secret,” and later “Victor’s Little Secret.” He clearly chose that name hoping that consumers would make the mental association with the famous mark “Victoria’s Secret,” in that way building name recognition for his own store. Consumers apparently did make the mental association, without being confused; they knew Victoria’s Secret was not going into the “adults only” business. But that mental connection helped them remember Victor’s Little Secret. The lower courts found that the use of those names blurred and tarnished the Victoria’s Secret trademark and that evidence of actual damage was unnecessary because blurring and tarnishing a famous mark was the essence of dilution. The experts predicted the lower courts ruling would stand because associating a famous mark with a tawdry “adults only” business was clearly dilution. To their probable surprise, the Supreme Court reversed, unanimously. The justices read the statute and concluded that the way it was written, evidence of lessening of the value of the famous mark was required. Evidence that the junior user was freeloading off a mental association with the famous mark or that the holder of the famous mark did not like the mental association that consumers made, was, without more, insufficient. Where did the experts go wrong? Again, they knew too much. They clearly understood that the anti-dilution statutes were aimed at free-riding. That the statute may have missed some free-riders was hard to accept. Particularly because it is difficult to prove actual injury to a famous mark in the absence of confusion, the experts naturally assumed that the statute provided an effective remedy against all free-riding. Unfortunately for the experts, the Supreme Court did not assume anything, but took the statute at face value. Again, score one for the machines. I have little sympathy with the miscalling of Dastar. To me the case is a good example of lower courts exhibiting the “Mrs. Middleton syndrome,” which I named in honor of my third-grade teacher. The Mrs. Middleton syndrome is characterized by an abhorrence of copying and an insistence that everyone must do their own work. It is not necessary to have met Mrs. Middleton to be afflicted with the syndrome. Any third-grade teacher will do, because on the issue of copying, third-grade teachers are more or less interchangeable. The defendant in Dastar copied somebody else’s work, a film that had gone into the public domain. The plaintiff, holder of the expired copyright, sued, not for copyright infringement, but on the theory that the marketing of copies of the film by the copyist in its own name was a false designation of origin. The defense was simple. A work in the public domain can be copied and distributed by anyone. Copies made of a work in the public domain “originate” with the person who made the copies. The plaintiff’s problem was not a false designation of origin, but the manufacture and distribution of unauthorized copies. But because the work was in the public domain, no authorization was needed. I was not surprised that the district court found for the plaintiff. Mrs. Middleton’s syndrome is particularly prevalent at the district court level. Confessed copiers can expect little mercy from a district court judge, regardless of the technicalities of copyright law. In the third grade, copiers get their knuckles rapped with a ruler. In district court, they get hit with treble damages, costs and attorney fees. I should have been surprised when the 9th Circuit affirmed. But it did so with an unpublished opinion, and my personal rule is never to be surprised by an appellate opinion that I am forbidden to cite. It is sufficient to note that Mrs. Middleton is alive and well somewhere in the 9th Circuit. The result in Dastar was predictable, even if one of the two experts got it wrong. The Supreme Court had no problem separating the copyright and trademark laws. The maker of the Dastar videotape was the person who made the copy, not the author under the Copyright Act. Correctly identifying the author of a work is not the same thing as correctly identifying the maker of a copy of the work. Because the defendant correctly identified itself as having made the videotape copies, there was no false designation of origin under the trademark laws. More importantly, finally one IP expert got a prediction correct. The IP experts may have lost this term, but it wasn’t a shutout. What does this portend for the future? Can the experts make a comeback next term? Are the machines becoming unbeatable even in IP? I don’t have any answers. But, I do know one thing. I don’t expect to see Robby the Robot as lead chair at a Markman hearing anytime soon. However, if it does happen, I’m prepared. I’ve got R2-D2 on retainer. Justin Beck is of counsel at Mount & Stoelker (www.mount.com) in San Jose, Calif., and teaches copyright law and patent litigation courses at Golden Gate University School of Law. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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