Evaluating the infringement of IP rights: should we adopt hybrid audiences?

The world of IP allows you to meet several funny individuals, including average consumers, experts, persons of ordinary skill in the art, reasonable observers, informed users, and many others. Each of them has a peculiar perspective, knowledge, and expertise, which it generously lends to judges and lawyers. Not every individual, however, crosses the path of all IP rights, as the latter focus on specific audiences, tailored to their characteristics (e.g. what would happen if the likelihood of confusion between trade marks was determined from the perspective of an industry expert, rather than through the eyes of an average consumer? Or if patent claims were not interpreted by a person of ordinary skill in the art, but by an informed user?). In a recently published article, 'The Audience in Intellectual Property Infringement', Jeanne Fromer and Mark Lemley suggested that these different audiences are a primary factor in determining the diversity of legal rules applicable to the infringement of IP rights. According to the abstract,

Patent, trademark, copyright, and design patent each focus on a different person as the fulcrum for evaluating IP infringement. The fact that patent law focuses on an expert audience while trademark looks to a consumer audience explains many of the differences in how patent and trademark cases are decided. Expert audiences are likely to evaluate infringement based on the technical similarity between the plaintiff’s and defendant’s works. Consumers, by contrast, are likely to pay more attention to market substitution and less attention to how things work under the hood.

Understanding the different audiences in IP infringement is critical to understanding how the IP regimes define infringement. The focus on audience has normative as well as descriptive implications. Neither patent law, with its focus on experts and technical similarity, nor trademark law, with its market-based consumer focus, has it entirely correct. Rather, we suggest that as a general matter infringement of an IP right should require both technical similarity and market substitution. Assessing infringement through the expert’s eyes ensures that the law prevents closely related works in the field while allowing later contributions to the field that are sufficiently different. The consumer vantage point ensures that we protect IP owners only when they have been harmed in the marketplace.

IP owners who want to show infringement should have to show both that the defendant’s work is technically similar to their own from the expert’s vantage point and that the defendant’s use causes the plaintiff market harm. Copyright law, which does look both to experts and to consumers at various points in infringement analysis, is on the right track.

The intuition is simple, but it caught this Kat's attention. The choice of the optimal hypothetical audience for interpreting specific IP rights, or evaluating their infringement, is usually left to legislators and courts, which identify the appropriate audience in light of the nature and scope of the relevant right. Thus: (i) trade mark law, which seeks to promote trade, ensure fair competition and protect consumer decision-making, focuses on average consumers; (ii) patent law, which aims to promote scientific and technological innovation, considers a person of ordinary skill in the art, with its expert knowledge, as the appropriate audience; (iii) copyright law, which protects and encourages the creation of artistic works, generally uses (in the US) 'a hybrid test, drawing both on the perspective of the expert and of some non-expert observer (either the consumer or the ordinary person)'; (iv) design law, which aims to ensure fair competition and encourage commercial creativity, asks ordinary observers to evaluate technical similarities.

Performing for the audience!
(c) ColKorn1982

Similarly, IP infringement can be assessed from the perspective of consumers, experts, or ordinary observers. The former commonly focus on market substitution, and represent 'an ideal audience choice for assessing IP infringement when that form of IP law seeks to discourage third parties from creating or distributing market substitutes of works protected by that IP right'. Experts are more sensitive to technical similarity, and are an appropriate audience for IP rights which have 'the goal of encouraging a range of works that make technically distinguishable contributions to the relevant field (and concomitantly, discouraging works that make no technically distinguishable contributions to the field)'. Finally, an ordinary reasonable person 'is worthy as an audience choice only when the relevant form of IP law wants to find infringement more readily without any attention to genre or marketplace substitutions; that is, if it wants to deter works that are less similar than an expert or consumer would find'.

Fromer and Lemley suggest that the evaluation of similarity, to determine infringement, should be conducted from the vantage points of both experts and consumers. This approach would ensure that 'substitutes to consumers that are not also too similar to experts will not be deemed to be infringement, just as similarities sufficient to satisfy experts that are not also substitutes to consumers will not be deemed to be infringement'. The article explains that these effects would contribute to expanding consumer choice and lowering prices, and would also allow a variety of transformative reuses of creative and inventive works, when no issues of market substitution arise. In particular, similarly to what happens in the context of copyright law, where a hybrid audience presides to the analysis of infringement and to the application of the fair use doctrine, considerations on market substitution in patent law would encourage follow-on improvements and innovative efforts in repurposing technology, while the evaluation of technical similarity in trade mark law would limit the scope of the likelihood of confusion test, allowing the introduction of evidence related to 'the genericity, functionality, descriptiveness, or parodic aspects of the trade mark'.

The article expressly recognises that the adoption of hybrid audiences would challenge courts and fact-finders with a double inquiry, which should be bifurcated or channelled 'without confusing the fact-finder or causing [it] to defer to one viewpoint at the expense of the other'. This Kat fears, however, that channelling the assessments conducted by hybrid audiences could be an even more challenging task, as courts should reconcile the evaluation of technical similarity and market substitution in light of the scope of each IP right. Perhaps, rather than adopting an entirely new audience, courts could benefit from using secondary considerations borrowed from the perspective of other audiences, to correct the rigidity of the current system.