ipsc 2005

Abstracts

David E. ADELMAN
James E. Rogers College of Law
The Limits of Empiricism in Patent Policy: Biotechnology Patenting from 1990 to 2004
[paper]

The intellectual property literature has been greatly enriched by an infusion of recent empirical studies. These studies have provided important insights into patent trends and characteristics over the past few decades. However, a principal aspiration of this work has been to identify unambiguous metrics for assessing and predicting the value of patents and discerning important differences between fields of technological innovation. Towards this end, recent studies have utilized a range of sophisticated techniques to resolve the characteristics of patents that matter (e.g., number of claims, prosecution time, citations made and received). This is an admirable objective, but one, we believe, that is belied by the complexity of patents themselves and the underlying technologies. Using an empirical study of more than 53,000 biotechnology patents issued from January 1990 through 2004 as a case study and re-examining the existing studies, this paper argues that the strength of broad patent metrics is very limited and recommends instead an alternative, more contextual approach to using patent trends to understand the complex relationship between technological innovation and patent law.

Olufunmilayo B. AREWA
Case School of Law
Copyright on Catfish Row: Control and Compensation in Porgy and Bess
[paper]

Current debates about the duration and scope of copyright protection such as those associated with passage of the Copyright Term Extension Act and recent Eldred v. Ashcroft decision, tend to be based on a general assessment of the implications and role of copyright rules as well as the cumulative impact of copyright on the public domain. Although underlying rules and their general impact are important, also important are the uses of copyright in particular instances as may be reflected in the behavior of individual copyright holders and the ways in which such holders actually exploit their copyrights. Looking at the operation and uses of copyright in the specific instance of George Gershwin’s musical practice reflects uses of copyright in the musical arena and demonstrates the extent to which current copyright rules may not adequately contemplate actual practices of music copyright holders. George Gershwin worked extensively with technical collaborators throughout his career and immersed himself in African American musical traditions. Gershwin was also quite attuned to the importance of copyright. Following his premature death in 1937 at age 38, however, the Gershwin family came to control his copyrights, highlighting the role that heirs now play in the actual use of copyright given the fact that copyright duration now extends to 70 years beyond the life of individual creators. Copyright structures to this point have been based on combining of rights of control and compensation within copyright frameworks. Through various mechanisms, heirs in particular tend to exert control over uses of copyright in ways that have little to do with the creation of musical works that is the major rationale for copyright. In fact, the exercise of control over copyright in such instances may actually hinder the creation of later works. Uses of copyright by creators such as Gershwin and his heirs suggest that it would be prudent in some instances to separate the control and compensation aspects of copyright. The division of control from compensation will not only help keep the public domain strong, but may limit the opportunities for strategic and other behaviors that are becoming increasingly characteristic of the operation of copyright and intellectual property rights more generally.

David BARNES
Seton Hall University
Trademarks As Congestible Public Goods
[paper]

Intellectual property is traditionally classified as a public good, with characteristics of non-rivalry in consumption and non-excludability in production that make wide availability and government protection desirable. That classification is accurate if intellectual property is described as "information." That level of generality, however, conceals fundamental differences between trademark law on one hand and copyright and patent law on the other. Recognizing that these laws protect the content of signaling devices, creative expressions, and novel innovations, respectively, reveals that while copyright and patent law protect public goods, trademark law protects a different animal altogether, one that is a congestible public good depending on who uses the signaling device for what purpose.

The challenge to constructing a foundational theory for trademark law is its multidimensional character. Marks range from words and symbols to shapes, colors, and musical tones. The scope of protection has geographic and product market dimensions. Legal theories include infringement and dilution, which do not overlap completely in the interests they protect. Different proof is required to obtain rights to different kinds of marks. It is still unclear what evidence will be required to prevail in the future for dilution claims or what proof requirements should be. A recent Supreme Court case indicates that the scope of fair use defenses are similarly evolving.

This paper offers a foundational, general theory of trademark law based on congestible public goods theory. Recognizing that consumption of trademarks is sometimes rivalrous focuses attention on different types of marks used as signaling devices, different types of uses of marks, and different types of rights accorded mark owners. Increasing protection of rights beyond the source-indicating power of marks reflected, for instance, in cybersquatting and dilution theories emphasizes the need for a fundamental theory of trademark law based on a more precise identification of the theoretical nature of trademarks.

Congestible public goods theory focuses on the "intensity" of simultaneous uses to evaluate the extent to which they are rivalrous. For trademark law purposes, all relevant uses of signaling devices may be classified as either customary (uses unrelated to source-indication), referential (to refer to or identify the source) or source-indicating (use as a mark). These three types of uses reflect all of the relevant social interests in the use of signaling devices and reflect different degrees of intensity of use. The structure of trademark law can be explained by considering how the law treats different types of marks used with varying degrees of intensity.

The congestible public goods nature of trademarks explains numerous trademark doctrines, including classifications of marks by strength, the use–in-commerce requirement, factors relevant to proving likelihood of confusion, prohibitions on generic and functional marks, and special rules for treatment of trade dress and product design. Perhaps more significant, this general theory facilitates analysis of contemporary issues in trademark law, such as the scope of fair use defenses and the substantive differences between and appropriate scope of protection offered by infringement and dilution claims. In short, congestible public goods theory provides a foundational, general theory for trademark law.

Ann BARTOW
University of South Carolina School of Law
Trademarks of Privilege: Naming Rights and the Physical Public Domain
[paper]

The paper critiques the branding, labeling and commodifying of the physical public domain with the names of corporations, commercial products, and individuals. It suggests there are under-recognized policy conflicts between the naming policies and practices of political subdivisions, trademark law, and right of publicity doctrines. It further argues that naming acts as currently constituted are often undemocratic and unfair, and compromise important free speech considerations. It concludes by considering alternative mechanisms by which the names of public facilities could be chosen.

Joseph BAUER
Notre Dame Law School
The Scope of Preemption of State Law Claims by the Copyright Act of 1976 and the Federal Copyright Regime
[paper]

The legislative history of Section 301 of the Copyright Act includes the following statement:

The intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent to copyright and that extend to works coming within the scope of the Federal copyright law. The declaration of this principle in section 301 is intended to state in the clearest and most unequivocal language possible, so as to foreclose any conceivable misinterpretation of its unqualified intention that Congress shall act preemptively, and to avoid the development of any vague borderline areas between State and Federal protection.

Boy, did they get it wrong!! The authors of Section 301 of the Copyright Act of 1976 asserted that they had drafted a provision, delineating the scope of the displacement of state law by this new copyright statute, which would afford predictability and certainty to the preemptive reach of the Act. Instead, in the quarter-century-plus since the Act became effective in 1978, there have been literally hundreds of federal and state court decisions in which courts have been required to apply and interpret this statutory provision. The uncertainty of the scope of preemption is highlighted not only by these numbers, but by the fact that, in particular, the appellate decisions have not infrequently overruled the trial court’s conclusion on preemption, and/or contained concurring and dissenting opinions on this supposedly “clear” issue.

This Article will initially review the situation under the prior regime, established by the Copyright Act of 1909, which provided for alternative state or federal protection, and the reasons that led the Congress to opt for virtually total displacement of state copyright protection. The Article will identify and discuss the various elements found in Section 301, as conditions for federal preemption of state law; this will include analysis and criticism of many of these cases applying and interpreting the statute. Based on the premise that a more robust approach to preemption not only will fulfill the goals of the drafters of the 1976 Act, but indeed will advance the objectives for a federal copyright regime contemplated by the Constitution, this Article will conclude with some suggestions which, hopefully, will also advance that other goal of the drafters of the 1976 Act – a statutory provision which avoids, to the greatest extent possible, “vague borderline areas.”

Barton BEEBE
Cardozo School of Law
An Empirical and Doctrinal Analysis of the Multifactor Tests for
Trademark Infringement
[paper]

The thirteen circuits' thirteen different multifactor tests for trademark
infringement play a role of central importance in American trademark
litigation, yet they have received little scholarly attention. Nor has any
significant effort been made to standardize them across the circuits. This
paper examines all reported federal district court cases for the five year
period from 2000 to 2004 in which the court engaged in a multifactor test
for trademark infringement. By using simple descriptive statistics as well
as logistic regression analysis, the paper seeks to demonstrate which
factors drive the multifactor analysis and which do not. In the process,
the paper seeks to identify best practices for a proposed national standard
multifactor test.

Preliminary analysis of district court cases in the Second, Seventh, and
Ninth circuits suggests that two factors drive the multifactor test: the
similarity of the marks and the intent of the defendant. The importance of
the intent factor is surprising in light of explicit statements in several
appellate opinions that intent is irrelevant to the confusion analysis. As
may be expected, factors such as quality, sophistication, and bridging the
gap appear to have no appreciable affect on, or at least no correlation
with, the outcome of the multifactor test. More surprising is that strength
also appears to have no impact on the outcome of the test - nearly every
mark tested is determined to be strong. Survey evidence is also shown to be
rarely used and, when it is used, rarely credited.

The "stampeding" of factors is considered, as is the problem of post hoc
rationalization, in which the judge first decides the outcome of the test
and then conforms her multifactor analysis to it.

Tom W. BELL
Chapman University School of Law
Misunderestimating Dastar: How the Supreme Court Unwittingly Revolutionized Copyright Preemption
[paper]

Courts and commentators have misunderstood, and consequently underestimated, the recent Supreme Court case of Dastar Corp. v. Twentieth Century Fox Film Corp. Voicing concern that once a copyrighted work has fallen into the public domain it should stay there, the Dastar Court held that authors of such works cannot use federal unfair competition law to force copiers to give them credit. The Court guaranteed that result by stipulating that "origin" in § 43(a)(1)(A) of the Lanham Act does not refer to the source of an idea, concept, or communication. That holding barred a reverse passing off claim brought under § 43(a)(1)(A) against Dastar Corp. for its having sold videotapes without crediting the plaintiffs as the origin of formerly-copyrighted material included on those tapes. Because lower courts have focused on the legal means employed by the Dastar Court, however, rather than its evident policy goals, they have extended it to facts materially different from those at issue in the case. Courts have applied the case to bar Lanham Act claims against the unauthorized use of copyrighted, uncopyrightable, and trade secret-protected goods. Courts have stretched it to cover services, too. Most significantly, in a move that effectively doubles Dastar's reach, courts have even begun applying the case to bar unfair competition claims brought under state law. Although they don't apparently realize it, courts relying on Dastar to preempt state unfair competition claims have signaled a revolution in copyright law. Ever since the enactment of Copyright Act § 301(a) nearly thirty years ago, the express terms of that section have monopolized copyright preemption doctrine. But § 301(a) cannot explain or justify Dastar's evident power to preempt state unfair competition claims. Intentionally or not, the Dastar court has revived the long-moribund and somewhat ill-defined doctrine of implied copyright preemption. Here, even more than with regard to unfair competition, Dastar's consequences look likely to far outreach the Court's original, modest aims. We have surely misunderestimated Dastar's impact on unfair competition law. With regard to copyright, however, we may still have time to understand and estimate Dastar's ultimate ramifications.

Gaia BERNSTEIN
Seton Hall University School of Law
Technological Diffusion Paradoxes
[paper]

The law often acts to try and resolve social controversies stemming from clashes between new technologies and accepted social values. Legal academics and decision makers have generally focused on the protection of values compromised by new technologies. Debates revolve around the need and the appropriate measures to protect values such as property, privacy or autonomy. Yet, value debates, although vital, illuminate only part of the underlying tensions. Social tensions arising from technological pressures on societal values are closely intertwined with the technology's diffusion process. The inter-relationship between value protection and technological diffusion underlies the techno-legal debate. Social controversies involving uses of new technologies often stem from a disequilibrium between technological diffusion and value protection.

In this paper I focus on the value protection-diffusion relationships involving applications of two information technologies: genetic testing and the Internet and the value of privacy. I identify two models of suspect value protection-diffusion relationships and argue that such instances of disequilibrium merit concern and should be brought to the forefront of legal decision-making.

The first suspect relationship model involves genetic discrimination. The study reveals that despite public concerns, privacy is not, in fact, compromised. Genetic discrimination is rare and apparently on the decline. Yet, paradoxically, individuals continue to fear genetic discrimination and are, therefore, less likely to test. Conversely, the second suspect relationship that involves privacy threats on the Internet shows that privacy threats are consistently on the rise, but, paradoxically, Internet diffusion has been unaffected by the privacy threats.

I then proceed to identify the technological characteristics that affect the diffusion process of genetic testing and the Internet and made them susceptible to the suspect value protection-diffusion relationships. I suggest that other technologies that share these diffusion characteristics may also be vulnerable to the same problematic value protection - diffusion relationships.

Dr. Michael D. BIRNHACK
Haifa Center of Law & Technology, Faculty of Law, University of Haifa
Global Copyright, Local Speech
[paper]

Copyright law and free speech jurisprudence have a complex relationship. Under the instrumental, American view of copyright law, the very purpose of copyright is closely related, if not identical, to free speech theories. Hence, the U.S. Supreme Court famously stated that "copyright is the engine of free speech". The shared-goal argument served the judiciary as one of the explanations for rejecting a counter-argument, that there is in fact a conflict between copyright law and free speech jurisprudence. This paper will explore the copyright law ¡V free speech relationship in the context of the accelerating globalization of IP law, applying analysis of political studies, as well as legal analysis.

We are in a midst of a strong globalization movement, to the extent that we can identify a New Global IP Order: TRIPs, and the WCT are the most obvious scenes of IP globalization, but the multi-lateral agreements are only part of the picture. IP becomes global also through a web of bi-lateral agreements and commercial relationships (e.g., the US "special 301" process, or Free Trade Agreements, such as the Australia¡VUS FTA). This process means that more countries than ever before have stronger copyright laws, and these look more and more alike.

The imposition of a western concept of copyright onto non-western cultures resulted in legal clashes, as several authors have documented, especially in regard to non-individualistic modes of creation ¡V where a work of authorship is created by a group, orally, over time, and not by the romantic author. There are other local forces. Many countries wish to promote their local culture, heritage and economy. France, for example, is committed to promoting French culture.

When copyright law is exported by way of global instruments or bilateral ones, it necessarily means that is exported without a coherent philosophy. There is no one law which applies to all places, just principles and various requirements that are imposed. Countries around the world implement them onto an existing legal system, with its legal principles and internal logic. Copyright law in this manner cannot be imposed other than in a seemingly neutral manner, void of a clear ideology, void of philosophy. Hence it is portrayed as a matter of trade, not of culture. Of course it has a philosophy ¡V it is a philosophy of globalization, i.e., the strongest kid on the block imposes his will on the other kids.

Free speech law often serves as a mitigating force to the expansion of copyright law. But when copyright is exported as a matter of trade to non-democratic countries, or to countries with a less expansive free speech protection, there is often no force to counterbalance copyright. The result is that the engine metaphor might be a local response to conflicts about free speech and copyright, but may not suit local cultures

Christina BOHANNAN
University of Iowa College of Law
Copyright Dilution
[paper]

The scope of copyrights, and the range of uses that constitute copyright infringement, have expanded dramatically over the years. This is particularly true for copyrights of famous works, because the fair use defense breaks down as applied to these works. For instance, in assessing the amount and substantiality of the portion borrowed from the copyrighted work, virtually any use of a famous work will seem substantial because many aspects of the work are well-known and seem to constitute the “heart” of the work.

This article argues that in cases involving famous works, liability for copyright infringement is often premised not on the traditional theory, which finds infringement where the allegedly infringing acts would affect the incentive of the author to create the work, but instead on a broader dilution theory, which finds infringement where the allegedly infringing acts cause any loss of distinctiveness of the famous work. Indeed, many of the doctrinal peculiarities in fair use can be explained by a dilution theory. For instance, for transformative uses, the distinction between parody and satire is curious because it favors uses that parody an individual copyrighted work over uses that satirize or comment upon broader aspects of society. This distinction makes sense under a dilution theory, however, because parody maintains the distinctiveness of the copyrighted work by commenting on it as an individual object, while satire uses the copyrighted as a vehicle for commenting on other issues.

However appropriate the dilution theory is in trademark law, where the purpose is to maintain a mark’s ability to identify the source of goods, it is even less appropriate in copyright law, where the purpose is to encourage creativity. Pursuant to this purpose, it is arguable that if the fame of a copyrighted work should play any role in analyzing copyright infringement, famous works should get less copyright protection, not more.

Scott BOONE
Appalachian School of Law

[paper]

What can magic swords teach us?   In the past few years, virtual worlds, in the form of massively multiplayer online role playing games (MMORPG's), have grown tremendously by many measures.   One question raised in the wake of this growth is whether personal property rights exist with respect to virtual world objects, e.g. magic swords (many MMORPG's are based on the fantasy genre).   The second question that is raised almost immediately is whether those rights, if they exist, can be pre-empted by a contract, in this case an End User License Agreement.   The third question that arises is why should I care about virtual magic swords that only exist in some virtual fantasy world that only exists on some set of servers.   OK, to be fair, many times the third question comes to mind before the first two.   It is this third question that I am going to address: why should we care?  

First, the dispute over property rights in virtual world objects gives us potential insight into the future treatment of other types of virtual objects, such as digitally transmitted content.   I argue that virtual world objects provide us with the legal landscape of a "perfect" DRM system.   In such a system, copyright "piracy" and the "copy problem" cease to blur the issues.   The questions that then arise are whether personal property rights exist in virtual objects (such that the first sale doctrine and other user's rights exist) and whether those rights can be trumped by contract.

Second, the dispute over property rights in virtual world objects may mirror the future of personal property rights in real world physical objects.   Current and possible future technological advances point to the application of rights management to physical objects.   What happens to traditional personal property rights when rights management technologies are applied to real world objects?   Will contract rights displace traditional personal property rights?

Dan L. BURK
Cornell Law School
Legal and Technical Standards in Digital Rights Management Technology
[paper]

This paper examines certain social costs of deploying digital rights management or “DRM” systems to protect copyrighted content. The calculus of costs and benefits for such technical self-help is highly complex, and the prospect for successful “self-help” via such measures is uncertain due to the deterministic nature of the technical design. DRM systems essentially provide an automated alternative to legal protections such as copyright. But because it is impossible to program complex situational responses into DRM systems, DRM constitutes the equivalent of a legal rule, rather than a legal standard. Thus the literature on rules and standards is useful in evaluating the effects of DRM deployment. As this literature would predict, DRM shifts discretion away from the user, toward the producer, and DRM design therefore resembles legal rule making rather than legal standard setting. Previous analyses of rules and standards suggests that rules are preferable when the costs of ex ante decision-making will be lower than the costs of ex post decision making.

Ex ante DRM design decisions by content producers are also likely to be driven by the character of the technology. At the same time that DRM stands in for a legal rule, it also comprises a technical “standard.” For reasons of interoperability and trust management, DRM will tend to converge on a single standard. This means that DRM will tend toward a type of technological “monoculture,” presenting opportunities for the standards owner to engage in anti-competitive market distortions. This result will tend to be reinforced by legal anti-circumvention measures, a trend already apparent in the employment of the DMCA in some court decisions. However, more recent appellate decisions seem determined to resist this result, employing statutory re-interpretation and the threat of anticompetition sanctions to reverse the worst effects of DRM market distortion.

Michael W. CARROLL
Villanova University School of Law
Fixing Fair Use
[paper]

The fair use doctrine in U.S. copyright law is not up to the roles it has been assigned. Traditionally, fair use has been lauded for its safety-valve function in calibrating copyright law's balance between incentives and access. Courts and commentators, however, have noted that the theoretically salutory features of fair use rarely function as advertised in practice because the doctrine's "fuzzball factors" make its application deeply uncertain. The social costs of this uncertainy have increased dramatically because the class of potential fair users has grown significantly with the development of new media and because the Supreme Court has now announced that fair use also must serve as the First Amendment's understudy with respect to promoting freedom of expression.

This paper proposes an administrative mechanism that leaves intact the flexibility of fair use doctrine while supplying potential fair users sufficient ex ante certainty to enable them to meaningfully assert their fair use rights. Under the proposal, a potential user could petition an administrative official for an advisory opinion regarding whether a proposed use of a copyrighted work without the owner's permission would be a fair use. The effect of such an opinion, if favorable, would be analogous to an IRS Private Letter Ruling or an SEC No Action Letter - the individual user would be immune from liability for that particular use but no binding precedent would be established by the ruling.

Theoretically, this proposal envisions copyright law as a form of government regulatory policy rather than as the recognition of private rights. Nonetheless, the fit between anticipatory adjudication of copyright law and the tax or securities laws is not exact because the party with the power to enforce the law - the copyright owner – is distinct from the party issuing the advisory opinion about the law's application. Consequently, under the proposal, the fair use petitioner would be obliged to serve notice on the copyright owner, who would have a full opportunity to contest the petition. Subject to the limitations imposed by Article III, either party could appeal an unfavorable ruling to the U.S. Court of Appeals for the D.C. Circuit.

If adopted, the proposal would give potential fair users, particularly commercial fair users, greater incentives to rely on fair use without requiring any alterations in the scope of copyright law. Copyright owners would have a full opportunity to assert their rights and would be no more prejudiced by choosing not to contest particular petitions than they currently are when they choose not to pursue action against uses they deem infringing.

Julie D. CROMER
Thomas Jefferson School of Law
Much Ado about Little: How the De Minimis Doctrine Is Causing Big Problems
[paper]

A recent decision about music sampling, Bridgeport Music, Inc. v. Dimension Films , suggested that the de minimis doctrine is inapplicable to the potential infringement of sound recordings.   Citing little judicial precedent but several law review articles, the Sixth Circuit nevertheless maintained that "[i]f this is not what Congress intended or is not what they would intend now, it is easy enough for the record industry, as they have done in the past, to go back to Congress for a clarification or change in the law."   383 F.3d 390, 401-402 (6 th Cir. 2004).   The Court looks to a literal reading of the Copyright Act, 17 U.S.C. § 114, to justify its bright-line interpretation.

            This ruling highlights certain effects of Congress's attitude towards technologically oriented works that are potentially far-reaching.   If the de minimis doctrine is truly unavailable in these instances, certain logical conclusions can be drawn.   First, revocation of the de minimis doctrine effectively ends the legacy of Arnstein v. Porter , the "copying plus substantial similarity" test for infringement, for sound recordings.   Second, it rewrites section 107 of the Copyright Act, eliminating the third "amount of work used" prong for determining whether an otherwise infringing activity amounts to fair use.   Third, it elevates copyright infringement to a strict liability standard, a connection that scholars have embraced but Congress and courts have not yet fully adopted.   Finally, it sets a precedent for technologically fixed works that might impact how courts and Congress view areas other than sound recordings - potentially creating an effect for § 114 that Congress never intended when it was drafted more than thirty years ago.  

This paper examines the importance of the de minimis doctrine in copyright law and these potential conclusions.   It evaluates the history of application of the de minimis doctrine in copyright law, establishing that courts have long turned to the doctrine for guidance in copyright decisions.   Further, it reviews legislative history to determine whether the application of the de minimis doctrine is indeed contrary to Congressional purposes, as recent decisions suggest, and if there may be sufficient justification for its abolition in connection with sound recordings only.   It studies the effects of the doctrine's elimination, evaluating whether copyright law written without the understood de minimis doctrine would be a workable regime.   It then looks at other works that rely on technology for their existence - in particular, databases in light of the European Union Database Directive -and examines whether Congress or the courts have imposed such a bright-line rule on the reproduction right of those works as well, or if the trend suggests they will make such an imposition.   Finally, the paper questions whether revocation of the de minimis doctrine and the substantial similarity test helps or hinders the "Progress of Science and the useful Arts," asking whether policy dictates that the technological ease of copying should in fact lead to the less stringent application of copyright law to future works.

Thomas F. COTTER
Washington and Lee University School of Law
False Positives and False Negatives: Explaining Antitrust and Intellectual Property Law's Divergent Approaches to Competition Policy
[paper]

Conventional wisdom holds that antitrust and intellectual property (IP) law seek to maximize consumer welfare in opposite ways, with antitrust law condemning monopoly in order to attain this goal and IP law granting temporary monopolies in order to attain the same end. This wisdom is an oversimplification but it contains a kernel of truth; in general, IP law is more tolerant of monopoly and market power than antitrust law, by itself, would be.

There is another side of the coin, however, that is less frequently commented upon. On occasion, IP law condemns conduct on the part of IP owners--or excuses otherwise infringing activity on the part of IP defendants--expressly for the purpose of promoting competition, even though antitrust law (if it were to apply at all) would not condemn comparable conduct absent a thorough analysis of whether the antitrust defendant possesses power in a well-defined market. Salient examples include the misuse doctrines in patent and copyright law; some applications of merger and fair use in copyright; trademark law's functionality doctrine; and the rule of reason as applied to employee noncompete agreements. Two explanations for IP law's relatively relaxed approach to market definition and competitive need are that the above doctrines are necessary to prevent IP owners from unduly enlarging the scope of their grants, and to reduce enforcement costs. Although these explanations are useful up to a point, they depend upon preexisting baselines that are not always apparent and that, ultimately, must themselves be defended on policy grounds.

In this paper, I argue that it nevertheless may be good policy for antitrust and IP to apply different standards when evaluating competitive need, based upon an analysis of the relative consequences of false positives and false negatives in these two bodies of law. Although antitrust is rightly cautious about condemning plausibly procompetitive business practices, out of concern for the potential harm arising from false positives, in IP law the balance may sometimes be precisely the opposite; thus, there may be circumstances in which IP law increases social welfare by permitting access on the basis of relatively weak evidence of anticompetitive harm, and in not requiring more extensive proof of the likelihood of such harm. In particular, IP law sometimes should be less tolerant than antitrust of (1) harms stemming from the exercise of small-scale, transitory, or localized market power; (2) harms that are individually of little competitive significance, but which in the aggregate threaten a substantial reduction in consumer welfare; (3) threats to dynamic efficiency stemming from the reduction of competition in innovation markets; and (4) potential reductions in expressive output that, for reasons rooted in the First Amendment, may be qualitatively significant (even though they might not be quantitatively important, in a conventional market-failure sense).

Julie CROMER
Thomas Jefferson School of Law
Much Ado About Little: How the De Minimis Doctrine Highlights Big Problems for Technological Copyrights
[paper]

Devan R. Desai and Sandra L. Rierson
Thomas Jefferson School of Law
The Trademark Holder's Catch-22: Searching For Rationality in Genericide and Dilution Rules
[paper]

The theoretical underpinnings and recent case law governing trademarks appear to converge to create an untenable position for trademark owners. Specifically, the rules regarding protecting one's mark from becoming generic (the failure to do so being called by some "genericide") and the nature of dilution law require mark owners to protect and police their marks. Yet, it appears that marks can also become so famous--perhaps as part of the mark owner's proper policing and development of the mark as a source identifier--that the mark owner finds her efforts have resulted in a loss of source identification and control of the mark because her mark "transcend[s] [its] identifying purpose. Some trademarks enter our public discourse and become an integral part of our vocabulary." Mattel, Inc. v. MCA Records, Inc, 296 F.3d 894, 900 (9th Cir. 2002) (further stating "'How else do you say that something's "the Rolls Royce of its class"? What else is a quick fix, but a Band-Aid? Does the average consumer know to ask for aspirin as "acetyl salicylic acid"? See Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y.1921). Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.'"). Id.

Thus it appears that mark owners have no guide as to when they should or should not pursue potential claims and can only discover the answer after expensive and reputation-damaging litigation. As such a clearer rule regarding genericide and dilution is required so that mark owners may have greater efficiency in the maintenance of their marks and so that those who might use a trademark in noncommercial contexts would have greater freedom in their expression because they will have reduced fears of litigation.

In addition, if a new rule of genericide through fame has emerged, this aspect of the law must be clarified so that mark owners can at least understand the potential outcomes of their investment in their marks and the effect this rule has on the traditional understanding of marks as source identifiers.

Niva ELKIN-KOREN
New York University School of Law
The DMCA Comes of Age: designing legal strategies for an ever-changing
technology
[paper]

The recent decisions in Recording Industry Association of America, Inc. v. Verizon Internet Services, Inc ., and In re: Charter Communications, Inc. v. The Recording Industry Association of America, Inc ., were celebrated as a great victory for the Internet industry. Both cases denied the RIAA's request for subpoena under the Digital Millennium Copyright Act ("DMCA"), to identify subscribers who were allegedly infringing copyright via P2P systems. Section 512(h) of the 1976 Copyright Act permits copyright owners to serve subpoenas on Internet Service Providers ("ISP") to obtain personal information about ISPs' infringing subscribers. The courts held, however, that the DMCA safe harbor regime was tailored to address a different technological infrastructure and does not apply to P2P technology. The court was of the opinion that a new architecture may require a new balance, and it was the province of Congress to change the law and to accommodate the relevant competing interests.

The DMCA safe harbor regime provided ISPs with a shield that kept them pretty much out of copyright wars. ISPs were high on the list of copyright owners as potential defendants in online infringement lawsuits. Back in the 90's, copyright owners were looking for gatekeepers that would help them keep the Internet clear of infringing materials. ISPs were an obvious target: deep pockets, located within national borders and controlling gateways to the online environment. Therefore, targeting ISPs for copyright infringements was not simply cost effective, but also promised to engage them more actively in the campaign against piracy.  

The RIAA's subpoenas requests are part of an attempt to draw ISPs back into the legal scene, and to encourage them to actively engage in addressing P2P piracy. Recently copyright holders put forward a proposal that would require ISPs to adapt a "code of conduct". Under this code, ISPs would agree to install filters to block services or sites that "are substantially dedicated to illegal file sharing or download services". ISPs would further be required to retain data to help in tracking down copyright infringements. Such data and subscribers' personal information would be handed over to copyright holders any time a complaint is made against a subscriber.

Under the safe harbor regime ISPs were exempted from some liability at a cost. The cost was implementing copyright enforcement duties, such as terminating repeated infringers and removing allegedly infringing materials. If the safe harbor regime no longer applies to ISPs that are carrying P2P traffic, ISPs may face liability for copyright infringement on P2P networks.

The recent decisions of Verizon and Charter suggest that the DMCA can no longer address the challenges of P2P. Exactly ten years after the seminal decision of Netcom , ISPs are facing again the risk of liability. Unlike other third parties ISPs are governing the network and are capable of shaping Internet use through technical standards and pricing mechanisms. Holding ISPs liable may therefore affect network architecture and involve long term ramifications that go far beyond the immediate interests of copyright owners and ISPs.  

The paper explores the interconnection between liability rules and the availability of technology, focusing on the implications of ISPs liability for network architecture.   Holding ISPs liable for P2P traffic is likely to induce central management of P2P traffic to minimize ISPs' legal exposure. Liability may therefore come at the cost of losing out on the economic and political benefits produced by P2P.  

Part II introduces some recent proposals to engage ISPs in the campaign to stop P2P piracy and predicts that copyright holders and law enforcers would put more pressure on ISPs to engage in P2P management. Part III analyzes potential liability of ISPs for P2P piracy under current law. It examines the applicability of the DMCA safe harbor provisions to ISPs in their capacity as P2P facilitators. It concludes that in the absence of the DMCA immunities, ISPs could be held liable for P2P infringing traffic. Part III introduces the general framework for analyzing liability of ISPs arguing that such analysis should incorporate the implications of liability for design. Part IV draws upon lessons learned from the implementation of the safe harbor regime and concludes that ISPs should be exempted from liability.

Robin FELDMAN
U.C. Hastings College of the Law
Rethinking Rights in Biospace
[paper]

Twenty-five years ago, Federal courts opened the door to the biotechnology revolution by granting patents on genetic inventions. The nature of such inventions, however, increasingly conflicts with the implications of rules created for mechanical products. In particular, across five disparate doctrines, courts are struggling with the question of whether the definition of a biotech invention should include things beyond the state of the art at the time of the invention. Reaching beyond the state of the art may make sense for mechanical inventions, but it is wreaking havoc in doctrines related to biotechnology.

A doorknob is a doorknob, regardless of whether it is made of wood or glass. A doorknob has no parts we can’t identify, and there is no hint that the doorknob may be integrating with the door in ways we never dreamed of. Can we really say, however, that an antibody is an antibody, no matter how it works or what materials it is made out of?

This article argues that in uncertain arts such as biotechnology, the definition of an invention should be limited to the state of the art at the time of the invention. Granting rights beyond knowledge at the time of the invention projects an enormous shadow across the future and creates untenable results. The temptation to restrain that reach has led to strange doctrinal twists and an unworkable body of law. After twenty-five years of experience, it is time to rethink our view of the proper shape of rights in this realm.

Brett FRISCHMANN
Loyola University Chicago School of Law
[paper]

As the essay's title implies, I'd like to apply the ideas from my recent
article, An Economic Theory of Infrastructure and Commons Management,
directly to intellectual property policy. I will focus on those
foundational intellectual resources that may be deemed "intellectual
infrastructure" and consider how such resources are treated and ought to be
treated within the patent and copyright systems. I have already taken small
steps in this direction in a few papers, including the original
infrastructure paper, an essay about Grokster, and a paper about university
R&D systems. But this essay's scope is more comprehensive, although by no
means all encompassing. Rather than analyzing specific resources in
isolation, this essay seeks an answer to the following question: How does
and should intellectual property law treat intellectual infrastructure?

The basic idea is to explore the extent to which there has been, is, or
ought to be "infrastructure exceptionalism" within patent and copyright law.
Can the legal system take into account the peculiar economic characteristics
of infrastructure? Should it? Of course, there are some obvious easy
examples, such as truly abstract ideas (E=mc2), and these provide both a
starting point and an interesting area to explore (i.e., what is an
"abstract idea"? Why should ideas be "free as the air for common use"? In
my opinion, the rationales offered for excluding ideas are not fully
developed). But my inquiry extends beyond subject matter exclusion and
delves into the critical legal doctrines that mediate private control over
and public access to intellectual infrastructure. Finally, I evaluate
external mediating institutions such as the First Amendment and antitrust
law as well as social norms and practices.

Marc H. GREENBERG
Golden Gate University School of Law
The Baby and the Bathwater Too:   A Critique of ALA v. U.S.
[paper]

In June 2003, the Supreme Court, in ALA v. U.S ., sent tremors through libraries nationwide when it reversed a finding of the USDC in Philadelphia that had held that the Child Internet Protection Act (CIPA) was facially violative of the First Amendment rights of library patrons.   Under CIPA, all libraries that accepted federal funding to cover the costs of providing Internet access to their patrons were required to install filtering software programs on all computers in the library, to prevent patrons from seeing any material that was obscene or "harmful to minors". The American Library Association (ALA) had objected to CIPA on the grounds that the broad scope of such filtering programs prevented patrons from exercising their First Amendment right to see materials which were not unlawful.

The ALA challenged the constitutionality of CIPA.   The District Court, aided by extensive evidence developed by expert testimony, and applying a strict scrutiny standard, found that CIPA was, on its face, violative of the First Amendment rights of library patrons. On appeal, the Supreme Court reversed, finding that strict scrutiny was not mandated, and that CIPA, viewed under a rational basis standard, was not unconstitutional on its face.  

An analysis of this Supreme Court decision is the focal point of this article.   In the first section, I look at the history of the Congress' deeply flawed effort to define and regulate obscenity in the pre-digital age, and the judicial response to those efforts.   In Section Two, I review the Congress' determined efforts to apply an already flawed standard to cyberspace.   Those efforts, found in the Communications and Decency Act (the "CDA"), and the Children's Online Protection Act ("COPA"), also ran afoul of the Supreme Court and were limited or invalidated on overbreadth and First Amendment grounds. The lessons learned from these failures give birth to CIPA, and this section includes a summary of its provisions.

The Third Section of this article focuses on judicial review of CIPA, beginning with the decision in the Philadelphia USDC. The Fourth Section analyzes the Supreme Court's plurality opinion reversing the District Court and upholding CIPA.

The Fifth and final section of the article poses the perennial "what next" question.   How will libraries respond to the challenge posed by the over- and under-inclusiveness of the software filters mandated by CIPA, and is it likely that an "as-applied" challenge to the law will lead to a subsequent review of the validity of the Supreme Court decision?

K.J. GREENE
Thomas Jefferson School of Law
Envisioning an Artist-Centered Intellectual Property Regime
[paper]

The paper I would like to present is entitled “Envisioning an Artist-Centered Intellectual Property Regime”. Although a primary justification for the grant of IPR’s in the expressive/entertainment context is to stimulate cultural production by providing incentives to creators, recent IP legislation and court decisions arguably favor large institutional owners of IPR’s, but not artists and creators. The RIAA asserts that its strategy of suing individual music file-traders inures to the benefit of recording artists, yet artists increasingly seek ways to avoid record contracts characterized by overreaching if not unconscionable terms. Rules regarding digital sound sampling and mash-ups, such as the “Grey Album” have a profound impact on the production of hip-hop. In the film/TV. context, recent decisions limit protection for the moral rights of attribution and integrity in all expressive genres except fine art. Similarly, an expanding dilution doctrine in trademark law impacts creative works and use of cultural icons at the expense of creativity.

Richard S. GRUNER
Whittier Law School
An Agency Theory of Patent Law: Linking Innovators and Invention Users
[paper]

This paper presents a reinterpretation of patent laws as components of agency relationships between potential innovators and innovation users. In these relationships, patent rights serve as the substitutes for contract terms linking the interests of persons having needs for new technological solutions to the interests of persons with sufficient technological knowledge and resources to provide those solutions. Here, innovation users are treated as principals whose interests in improved or modified technologies are served by one or more technologically adept agents pursuing innovations of interest to the principals. Ideal patent incentives and rewards provided to innovators under this model should approximate those which an informed user would incorporate into an efficient agency contract calling for an agent to pursue innovations serving the needs of the principal.

Herkko HIETANEN
Lappeenranta University of Technology, Helsinki Institute for Information Technology
Is combining individual and collective rights management a future of music industry?
[paper]

Music collecting societies have been considered to benefit society by lowering transaction costs between music users and copyright holders. The benefit has justified societies to legally act in ways that otherwise would be deemed anticompetitive and thus illegal. Music industry is one of the few industries where a legal horizontal venture of producers (i.e. cartel) exists and there is virtually no price competition among producers as producers have usually only one common sales agency selling their licenses. First part of the paper describes the present system and questions theories
behind it.

While music industry is competing to win the war against illegal file sharers, it has to come up with new strategies. One of the solutions is to make file sharing more expensive by enforcing their rights in courts and by technologically polluting p2p networks; other is providing easier and cheaper access to legal music downloads. The second part of the paper examines the third possibility which is closely related to second one; dissolving price cartel and introducing competition among music producers as a mean to compete against free music downloading.

As a solution this paper suggests a combination of individual and collective licensing. Technology enables building of universal copyright registry where right holders could set licensing terms to each of their works individually. Copyright societies' role would be to collect the license fees and enforce the licenses. The proposed system would enable healthy competition among music producers. Copyright owners could individually price their licenses according to their lifecycle, user groups and business models. Some business models could even allow Creative Commons style limited royalty free use and online distribution. Proposed system would rely heavily on collecting societies whose collective structures won't allow individual elements to be implemented. Last part of this paper describes some of the challenges that introducing individual licensing and especially new emerging open content licensing pose for collecting societies.

Tim HOLBROOK
Chicago-Kent College of Law
Enabling Enablement in Patent Law
[paper]

Enablement, the primary disclosure obligation in patent law, has been undertheorized and underexplored. Indeed, disclosure obligations as a form of “teaching” technological information, as the courts tend to view it, is inconsistent the theoretical justifications for patent law, such as the reward theory and prospect theory. Given this disjuncture, and the reality that no one actually reads patents for the technical information contained therein for a variety of reasons, why does the patent system insist on requiring disclosure? The reality is that disclosure is a mechanism for identifying what the inventor possesses. This variant of an “enabling” disclosure as possession is apparent in other areas of the law, such as anticipation and conception. Aside from this descriptive reality, rethinking enablement as “possession” has potential prescriptive power as well. Enablement can be seen as the appropriate standard in contexts such as the on-sale bar, commercial variants of infringement, the Public Dedication Rule and, potentially, the assessment of obviousness and aspects of the doctrine of equivalents. Thus, enablement is potentially far more pervasive in patent law as showing possession of the invention. The possession viewpoint also suggests that the Federal Circuit’s current written description doctrine is simply wrong. Moreover, the importance of the person having ordinary skill in the art in enablement may also facilitate greater policy balancing if the role of enablement is expanded into this other areas, while also offering a potential simplification of patent law doctrine.

Chris HOLMAN
U-Missouri Kansas City School of Law
UC v. Eli Lilly After Eight Years: An Empirical Study of the Impact of the Lilly Doctrine on the Patenting of Biotechnology and Chemical Inventions
[paper]

Many have interpreted the 1997 decision of UC v. Eli Lilly as having transformed the written description requirement from primarily a tool for policing new matter into a “super-enablement” requirement, targeted particularly towards biomolecule inventions. Lilly has been, and continues to be, the subject of much critical commentary, both in the academic literature and in subsequent Federal Circuit decisions. Many have expressed fears that the Lilly Doctrine imposes “illogical and impractical requirements for claiming protein inventions;” some have gone so far as to assert that Lilly “has effectively eliminated patent protection for biotechnology inventions pertaining to proteins.”

I have undertaken a review of reported federal court decisions, USPTO Board of Patent Appeals and Interferences decisions, and the file histories of issued US patents and published patent applications, in order to assess the impact that Lilly has had on the ability of inventors to effectively claim biomolecules inventions. The results suggest that the impact of Lilly has been far less restrictive than many might have feared.

The Lilly Doctrine can be rationalized as a tool for reining in overly broad claims to biomolecule inventions. However, based on this empirical study, I would suggest that the doctrine has not been particularly effective in this regard, but has led to a great deal of uncertainty regarding the disclosure requirements for biomolecule inventions. Perhaps more disturbing, after eight years the PTO and the courts have made little progress in developing the doctrine into a coherent, generally applicable standard. As time permits, alternative approaches for regulating the scope of biomolecules claims will be discussed.

Sonya KATYAL
Fordham University School of Law
Semiotic Disobedience
[paper]

Nearly twenty years ago, author John Fiske coined the term “semiotic democracy” to describe a world where audiences freely and widely engaged in the making of meaning in responding to culture and media. While Fiske originally referenced the audience’s power in viewing and interpreting television narratives, today, his vision of semiotic democracy has become perhaps the single most important ideal cited by scholars who imagine a utopian relationship between law, technology, and democratic culture.

Although Fiske’s vision is both brilliant and indelibly important, it is also somewhat incomplete. Today, we have moved into a world which importantly differs from, and yet remains in, the shadow of semiotic democracy. In this paper, I seek to introduce another framework to supplement Fiske’s important metaphor*the phenomenon of “semiotic disobedience," which involves the increasing response of artists who have chosen to expand their activities past the boundaries of cultural dissent, and into the boundaries of asserted illegality. Just as previous discussions of civil disobedience focused on the need to challenge existing law through using certain types of public and private property for expressive freedoms, today’s generation seeks to alter existing intellectual property laws through interrupting, appropriating and then replacing the passage of information from creator to consumer.

In this Article, I will argue that the dynamic interaction between tangible property and speech forms the background for the divergence between semiotic democracy and disobedience. While semiotic democracy focuses on expanding the intangible marketplace of speech through creating multiple works of commentary and parody, semiotic disobedience focuses on interrupting the “codes” and “signs” of advertising--through altering, manipulating, and even vandalizing the property of pre-existing works to limit some messages in favor of others. It comprises a message of subtraction, rather than addition, to the marketplace of speech.

As I argue, semiotic disobedience suggests that there is another story that needs to be told, which emanates from the shadow of the limits of law’s governance. For, as various social movements have shown, every movement towards democracy has been accompanied by civil disobedience, the willingness of a few stalwart believers to openly challenge the laws in favor of some alternative moral order. Viewed through this prism, intellectual property is no different. It creates boundaries that enfranchise certain types of speech at the expense of others. And, in doing so, it enables certain types of illegal and legal dissent, conferring legitimacy on some types of speech through the prisms of fair use, and excluding other types from recognition.

As I will argue, the phenomenon of semiotic disobedience has been importantly overlooked in the law and literature of intellectual property, and it offers us some interesting insights regarding the interaction of tangible and intangible entities, speaker and audience, legal and illegal forms of expression, and, ultimately, property and speech itself. Thus, to restore the balance between semiotic democracy and disobedience, I argue that the law should recognize that semiotic disobedience is an art form deserving of recognition, ironically through the same property doctrines it seeks to challenge.

Larissa KATZ
Queen's University School of Law
The Power To Control Disclosure in Idea-Submission Law
[paper]

While there is judicial consensus that there is a legally cognizable interest in unpublished, novel and original ideas shared in confidence, the theoretical foundations of the protection of ideas remain undeveloped.  

In this article, I unify the law of ideas by providing a powers-based account of the juridical source of the duty not to use or divulge another's novel, confidential idea.   I argue that the source of the duty not to use or disclose another's novel idea is best understood as a limited legal power to control use or disclosure of novel ideas shared in confidence with a voluntary recipient.    A single source for the duty not to use or disclose another's idea unifies the idea-submissions law.   We can thus describe idea-submissions law as a separate branch of intellectual property rather than as an uncertain medley of judicial responses, drawn from the law of contract, property, confidential relationships and unjust enrichment.  

This paper takes up two challenges: the first is to provide a coherent juridical account of the law of ideas that reveals rather than obscures the positive law and the interest the law serves.   I argue that my account   makes sense of the core criteria in the positive law and also explains certain features that limit the scope of the law of ideas -why for instance there is no duty created where an idea reaches a recipient inadvertently or without the originator's knowledge.   Building on theoretical work on the formal nature of powers,   my account illuminates the kind of values and interests that underpin the law of ideas. Identifying a legal power as the source of the duty not to use or disclose another's novel and original ideas permits us to draw connections not just with other areas of the law aimed at protecting ideas and confidences but also to place the originator's power within a category of general powers that we all have as legal subjects, alongside of the power to contract, the power to acquire property, and the power to consent to sex.   These general, stand-alone powers serve in different ways our fundamental interest in pursuing our private ends while engaging with the world.

The second conceptual challenge that I confront is to reconcile the duty not to use or divulge another's idea with the limited concept of responsibility that has developed in Anglo-American common law.   I argue that the imposition of this duty is consistent with the concept of responsibility that has emerged in private law only where the obligation rests on a foundation of voluntariness. A   foundation of voluntariness sufficient to support the imposition of a special duty exists where an unavoidable duty flows from an avoidable position.   Thus, while the duty not to use or disclose an idea need not itself be voluntarily assumed (as it would have to be on a contractual account), a person must have voluntarily assumed the position of recipient of an idea before she will be liable (in the Hohfeldian sense) to the originator's power to control the use or disclosure of the idea.  

Jay P. KESAN
University of Illinois
The Political Economy of the Patent System
[paper]

Most of the discussions and proposals about what type of patent regime is needed and what reforms should be implemented neglect the political nature of the patent system and the role of political institutions in the reform.   This paper studies the political economy of patent system reform.   We analyze how diverse economic and political groups, with a stake on the functioning of the patent system, influence and shape Congress' legislation and determine the direction and scope of the proposed reforms.   We consider five main actors in the patent system, inventors -both individuals and corporations; the United States Patent Office (USPTO); the members of the bar, who are divided into prosecutors and litigators; and the courts.   As we show the specific preferences of these groups regarding legislation will determine the fate of proposed reforms to the patent regime.   More importantly, we are able to explain how these groups try to shape legislation in their favor, or to block specific reforms, and how Congress has failed to introduce comprehensive reforms to the patent system.

We present a political economy model describing and analyzing the preferences of these groups and how they play a role in the political institutions in Congress.   We apply our model to two main proposals for reform, the post grant examination system and the presumption of validity for patents.   As then show that the preferences of these actors are key to understanding the failure or success of such reforms.

Michael LANDAU
Georgia State University College of Law
Copyright and the First Amendment : The Use of Reasonable Royalties to Balance Users' Rights with Copyright Holders' Rights
[paper]

I am proposing what I think is a novel and workable solution to the "all or nothing at all" approach currently employed by judges in infringement cases, especially when they consider "transformative uses.

I advocate the elimination of consideration of "transformative use." It is in complete conflict with the "right to prepare derivative works" under section 106. Judge Leval, in his often sited and influential article, uses language and doctrine from a period prior to Congress providing a derivative work right. If the only real rights under Copyright were the rights to reproduce and distribute (Copy and sell) certainly, at that time, a transformation should not infringe. However, with copyright holders now having an exclusive right to control, alterations, modifications, transformations, recasting, etc under section 106(2) there is no statutorily based place for transformative use in infringement analysis.

I would go back to the traditional "fair use" analysis, when certain amounts could be taken for criticism, comment, research, news, etc., that do not directly affect the market. If the work falls into what would have been a pre-Leval, pre-Campbell v Acuff Rose, traditional fair use, that's it. There is no liability. On other extreme, if a work is an exact copy and competes with a work, it infringes, and the copyright holder should be entitled to damages, the defendant's profits, attorneys' fees, etc.

Here is the area where my proposal applies. In those cases that exceed traditional "fair use" in which the copyright holder's work is included in a new work and does not directly compete with the plaintiff's market, I would not enjoin the work, but would have the court decide a reasonable royalty, for several reasons. First, in most cases, money makes a party whole. There is not always "irreparable harm." Second, a "reasonable royalty" is a common remedy in patent cases. There is no statutory provision for reasonable royalties in copyright law, just damages profits, or statutory damages.

Third and most important, I do not believe that requiring one who uses another's work to create a new work causes First Amendment problems. While injunctions do abridge speech, there has never been a right to total "free speech." If one wishes to play Bach's solo cello pieces in the park, one does not have the right to steal the cello. The park may also charge for a permit. While the First Amendment allows me to view and send messages with various types of content, the first amendment does not permit me to steal the computer, or to "tap into" my neighbors wires to connect to the internet. As was discussed in the American Library Association case, there is a difference between completely prohibiting something, and simply making the user pay for it.

A reasonable royalty serves the public purpose of compensating the copyright holder, and also permitting the creation of new works. It also prevents a huge "free rider" effect.

Congress should amend section 504 to provide for "reasonable royalties" based upon going rates in the industry, and the copyright holder's past licensing behavior.

Amy LANDERS
McGeorge Law School, University of the Pacific
Let the Games Begin: Expanding Patent Scope via the Reasonable Royalty Analysis
[paper]

Over the past several decades, much discussion and debate has focused on the proper interpretation and scope of patent claims. Courts and commentators have attempted to properly define the metes and bounds of the patent right through various rules and methodologies of claim interpretation. Commentators have furthered considered whether claim scope may be an effective tool to optimize the economic and social impact of patents on innovation.

Despite significant efforts to tailor the proper reach of patent claims, patent remedies are applied broadly. Remedies include damages for sales of an entire accused product even where the patent claim is limited to an incremental portion of the device. This result follows from a 1946 legislative amendment that rejected apportionment of damages between an entire device and the patented features incorporated therein. As a practical matter, these principles permit patentees to recover damages for sales of unpatented components. Although some doctrines such as the entire market value rule attempt to limit this principle, recent jurisprudence permits monetary recovery of unpatented components sold with a patented feature so long as such sales are reasonably forseeable and therefore does not provide a significant bar to broad recovery.

Coupled with this issue is the problem that application of current standards for monetary recovery lack coherence and connection to invention valuation methods prevalent in the market. Recently, the U.S. House of Representatives Subcommittee on Courts, the Internet, and Intellectual Property has introduced The Patent Act of 2005. One portion of this proposed legislation would limit damages to the total value of the invention alone, even where that invention is incorporated into a more comprehensive product or system.

This work considers justifications and problems created by the current law, including whether the current approach permits patentees to seek remedies beyond appropriate compensation for use of the invention and that may be inconsistent with the existing doctrines of patent misuse and commercial success. Moreover, the work examines the proposed legislation to assess whether this approach resolves—or exacerbates—existing problems.

Susanna H.S. LEONG & Cheng Lim SAW
National University of Singapore Business School & Lee Kong Chian School of Business Singapore Management University
Jurisdiction for Copyright Infringement in a Borderless World – Does Territoriality Matter?
[paper]

The recent decision of the Supreme Court of Canada in Society of Composers, Authors and Music Publishers of Canada v Canadian Association of Internet Providers [2004] 2 SCR 427 is significant for two reasons: (a) the Canadian Supreme Court has held that Internet Service Providers should be exempted from copyright liability as long as they provide only a conduit service in transmitting copyright materials between Internet users (a point which is consistent with many national copyright laws); (b) the majority of the Canadian Supreme Court arrived at the conclusion that the appropriate test to determine whether an infringement for the unauthorized transmission of online copyright material has occurred within the Canadian jurisdiction is the “real and substantial connection test” (LeBel J however dissented and was of the view that the correct test to apply is the “host server test”). This working paper studies these two tests as propounded by the Canadian Supreme Court and assesses their strengths and weaknesses, especially in light of the territoriality principle in copyright law.

Mark A. LEMLEY
Stanford Law School
The Changing Meaning of Patent Claim Terms
[paper]

In order to construe the claims of a patent, the court must fix the meaning of the claim terms as of a particular point in time. Both the knowledge of the PHOSITA in a particular field and the meaning of particular terms to that PHOSITA will frequently change over time. But at which point in time shall we fix the meaning of the claims?

It is a fundamental principle of patent law that the time at which we determine the meaning of claim terms varies depending on what legal rule is at issue. Where the question is one of novelty or nonobviousness – whether the invention is truly new – the courts compare the patented invention to the prior art as both were understood at the time of the invention. Where the question is one of enablement or written description – whether the inventor understood and described the invention in sufficient detail – courts evaluate the adequacy of the disclosure based on the meaning of the claims at the time the patent application was filed. Where the question involves the meaning of a special patent claim element called a “means-plus-function” claim, courts evaluate the scope of that claim element at the time the patent issues. And where the question involves alleged infringement of the patent, courts evaluate infringement in at least some circumstances based on the meaning of the claim at the time of infringement.

An equally fundamental principle of patent law is that patent claims must be construed as an integrated whole. In particular, patentees (or accused infringers, for that matter) are not permitted to argue that a patent claim means one thing when it comes to validity and something else entirely when it comes to infringement. Instead, courts give claims a single meaning in any given case, engaging in only one act of claim construction for any given patent.

These two principles contradict each other. In this paper, I seek to resolve this conflict. In Part I of this paper, I document the distinguished pedigree of both principles. In Part II, I argue that patent claim terms should have a fixed meaning throughout time, and that that meaning should be fixed at the time the patent application is first filed. Part II also discusses some complications that arise as a result of the prosecution process, and how to deal with the problem of later-developed technology.

Gregory N. MANDEL
Albany Law School
Promoting Environmental Innovation with Intellectual Property Innovation: A New Basis for Patent Rewards
[paper]

Despite numerous and diverse efforts, environmental regulation generally has failed to promote technological innovation with environmental benefits. Such innovation could have myriad benefits (reducing pollution, cutting waste, improving conservation), while simultaneously reducing the cost of environmental protection. Given this failure of environmental regulation, this paper explores whether intellectual property law can step into environmental law's stead, and efficiently provide greater incentives for environmental innovation. An analysis of a variety of intellectual property law reforms reveals that one-a shift to a patent rewards system-provides substantial promise for producing more efficient and greater incentives for environmental innovation. The analysis also reveals a previously unrecognized benefit of patent rewards in certain circumstances.

Peter MENELL
Berkeley Center For Law and Technology
Regulating Spyware: The Limitations of State "Laboratories" and the Case for Federal Preemption of State Unfair Competition Laws
[paper]

Drawing on Justice Brandeis’s oft-cited observation that states can serve as “laboratories” of policy experimentation, this article develops a framework for assessing the allocation of governance authority for regulating Internet activities. In particular, it focuses on whether states should be free to experiment with regulatory approaches or whether the federal government should have principal, if not exclusive (preemptive), regulatory authority over Internet-related activities. Using recent efforts to regulate spyware as a case study, the analysis shows that the lack of harmonization of, and uncertainty surrounding, state unfair competition law produces costly, confusing, multi-district litigation and pushes enterprises to adhere to the limits of the most restrictive state. Such a governance regime unduly hinders innovation in Internet business models. On this basis, the article favors a uniform federal regulatory system and preemption of state statutes and unfair competition common law as applied to Internet-related activities. The final section of the article extrapolates from this study of spyware regulation to the larger context of Internet governance.

Michael J. MEURER
Boston University School of Law
The Patent Race
[paper]

I revisit the patent race metaphor which depicts a patent system filled with contests between potential inventors striving to win a winner-take-all prize in the form of a patent. The metaphor has some value but its relevance is probably overstated, and it is not carefully drawn. I begin by reviewing the evidence that bears on the question of how often potential inventors “race.” I find that the classic race is not that common, but some sort of rivalry is. In a classic race, there are a fixed and known set of competitors, who race to a clearly specified finish line, and the winner of the race wins a patent, and this patent is the only prize. The classic race is uncommon because the three features — a known set of competitors, a definite finish line, and a winner-take-all prize — are usually not all present. Many potential inventors are not sure if anyone is racing against them. Potential competitors may come and go without a trace. The finish line is reached when a potential inventor has made enough progress to satisfy the utility and disclosure requirements of patent law — the implied finish line is clear for some technologies, but not for others. Most races are not winner-take-all because inventors usually pursue a set of related inventions, not a single invention. Multiple inventors can get patents at the end of the race, and the outcome is not necessarily winner-take-all. After describing the true nature of the patent race, I shift my focus to policy analysis. I begin by explaining the social benefits and costs created by patent races. Then I suggest how patent law should regulate the terms of the race through doctrines that determine the finish line (such as the utility, enablement, and written description doctrines) and doctrines that determine the winner’s prize (such as priority).

Adam MOSSOFF, and Prof. CLAEYS
Michigan State University College of Law
[paper]

There has been strikingly little attempt to integrate intellectual property, and particularly patent concepts, into takings law and scholarship. This article takes a first step toward filling that gap by proposing a theoretical and doctrinal framework for understanding the increasing interplay between patents and government regulations. It develops this framework by explaining how it would apply to drug patents in the context of contemporary policy debates over pharmaceutical prices and the reimportation of drugs from Canada. Its main thesis is as follows: It is at least plausible that the Takings Clause should establish per se protections against a wide range of regulatory restrictions on the commercial exploitation of drug patents owned by pharmaceutical companies.

The article demonstrates this claim by applying general principles of regulatory takings theory to many specifics about the regulation of drug patents. It organizes the theoretical takings questions by positing that the law is deeply split between two overarching normative concepts of property. One is called the " Penn Central approach," after Penn Central Transp. Co. v. City of New York , 438 U.S. 104 (1978), the other the " Armstrong approach," after some of the classical-liberal ideas about property presumed in Armstrong v. United States , 364 U.S. 48 (1960). Prevailing case law generally applies the Penn Central approach until a regulation targets a property right essential to the species of property at issue. Courts then flip to the Armstrong approach, which reviews the merits of the government regulation more stringently and gives the property greater constitutional protection.  

In patent law, virtually all scholars agree that patents secure a right to exclude copycats from infringing the novel idea claimed in a patent. We mean to show, however, why it is plausible in the context of takings doctrine that this "right to exclude" should be construed more broadly for patents than it is for land and other species of property. In non-tangible property right cases, the Court often adopts the Armstrong approach, shielding from regulation what it usually refers to disparagingly in land cases as "incidental rights." If these "incidental rights" are treated as essential rights for non-tangible property, then patentees should be left free to exploit their "incidental rights" of use and alienation. Within the boundaries set by antitrust doctrine, on the one hand, and patent exhaustion doctrine, on the other, patentees should have the unfettered right to impose on their licensees geographic restrictions, field of use restrictions, and price restrictions in the sale of their patented products.  

The article then marshals the available law, history, and economic data about drug patents, showing how the Penn Central and Armstrong approaches would apply to bills proposed in Congress authorizing reimportation of drugs. The article then explains why the Armstrong approach is at least plausible in light of general property theory and economic data about drug patents. It concludes by identifying points of disagreement between Takings Clause jurisprudence and patent doctrine that will need to be addressed in subsequent scholarship.

Kali MURRAY
University of Mississippi Law School
Rules for Radicals: A “Politics” of Intellectual Property
[paper]

Historically, doctrines such as “fair use” and “experimental use” have been understood as ways to preserve public access against the exclusionary reach of intellectual property rights. Recent literature, however, suggests that these doctrines can be seen in a different way, namely, as inchoate expressions of a “politics” of intellectual property rights. By “politics”, this Article, in part, relies on Jurgen Habermas’ “discourse ethics” which pre-supposes that the legitimacy of the legal order depends on the availability of procedures that allow for variable democratic opinion to form as to ultimate outcome of any given contested resource.

Undertaking a new approach, by using patent law as its primary lens rather than copyright or trademark law, this Article contends that three “rules” should inform a politics of intellectual property. First, diverse constituencies may have creative and competitive interests as to one intellectual property resource. Second, structural access must be accorded to constituencies during the entire temporal existence of a particular intellectual property resource. The liveliness of the copyright debate in recent decades, as compared to the nascent demands of the patent law community, derives from the type of structural access provided to multiple constituencies throughout the existence of the relevant intellectual property resource. Third, internal doctrinal norms, such as the public-notice function in patent law, must be utilized to ensure consistent judicial experimentalism as to the rights of multiple constituencies. Adherence to these “rules” makes possible a deliberative politics of intellectual property.

David W. OPDERBECK
Baruch College, Zicklin School of Business, Law Department
Peer-to-Peer Networks, Technological Darwinism, and Intellectual Property Reverse Private Attorney General Litigation
[paper]

This paper analyzes "reverse private attorney general" litigation by intellectual property owners against individuals, using the RIAA file sharing litigation as a model.

In this article, I coin the phrase "reverse private attorney general litigation" to refer to aggregated claims by well-resourced plaintiffs against multiple individual defendants. There are numerous cultural, technological, and legal factors that suggest that reverse private attorney general litigation will become and increasingly important tool for enforcing intellectual property rights. In fact, in the recent Grokster decision, Justice Bryer noted that RIAA's litigation against end-users serves as a "teaching tool" concerning intellectual property rights. My reading of the Supreme Court's Grokster decision suggests that this statement is more prescient than Justice Breyer likely realized: Grokster's intent-based standard will not inhibit P2P technology over the long term, and RIAA and other content providers will continue to sue end users directly.

My review of the RIAA litigation includes an empirical analysis of the litigation's effect on file sharing norms, including a regression analysis of P2P connectivity data. This analysis strongly suggests that the RIAA litigation has failed to change file sharing norms. Instead, file sharers have been steadily migrating to less centralized networks, resulting in a significant overall increase in file sharing activity. I argue that these data reflect how the norms of file sharing exist in symbiosis with the norms of open source file coding. This relationship results in a technology that evolves resistance to litigation threats.

After describing the RIAA litigation, I discuss whether any of the traditional justifications for private attorney general actions support reverse private attorney general litigation in the intellectual property context. These justifications include the advocacy of important social causes, balancing the interests of minority groups against well-funded majorities, aggregating small claims that would not otherwise have been filed, and providing a fail-safe against regulatory capture. I conclude that none of these justifications support the RIAA litigation or other forms of reverse private attorney general intellectual property litigation. I then discuss several alternatives to such litigation, and conclude that a mixed market, levy, and private utlity model would better reflect public norms about intellectual property.

Kristen OSENGA
Chicago-Kent College of Law
Linguistics and Claim Construction: Why the Federal Circuit's Approach in Phillips v. AWH Corp. is Unlikely to Uncover a Claim's True Meaning
[paper]

My paper will address the claim construction debate brought to a head by the Phillips v. AWH Corp. case. In particular, the paper first traces the divergent routes of claim construction methodologies, as acknowledged by the court, as well as the scholarly discussions on claim construction methodologies. The paper then analyzes the recently issued Phillips opinion, reaching the conclusion that the Phillips decision is unlikely to produce consistent claim construction. Instead, this paper suggests that the Federal Circuit should instead resort to the science of linguistics to guide its claim construction methodologies. Based on linguistic techniques, this paper then samples some recent claim construction cases and demonstrates the workability of the approach.

Marcy PEEK
Whittier Law School
Information Privacy and Corporate Power
[paper]

Lee PETHERBRIDGE
Loyola Law School
Positive Examination: A Proposal to Improve Clarity, Predictability, and Certainty in the Patent System
[paper]

In the U.S. patent system, when an applicant makes an application for patent, the public must assess the merits of investing, by granting a patent, in an allegedly new, useful, and unobvious invention. Assessing whether a new property right should be granted has costs. Chief among those is the cost of obtaining and understanding information that defines the property to which the applicant seeks to stake a claim. When the boundaries of the property are not well defined, the resulting uncertainty causes inefficiencies that are felt by all of the participants in the patent system, i.e., the patent applicant (and later patentee), patent assignees or licensees, actual or potential competitors, courts, and every member of the public at large.

This proposal suggest an improvement to the current patent examination regime that is directed to improving the allocation of information costs between patent system participants thereby reducing the systematic cost of defining the boundaries of the patented property. The proposal operates by increasing the amount of information in the public administrative record that is precisely directed to defining the scope of the patented property. To achieve this, the proposal relies on the normative assumptions that: (1) The Patent Office is responsible for collecting, using, and recording the information necessary to define the boundaries of the patented property; (2) The patent applicant is the cheapest cost provider of information necessary to define the boundaries of the property for which the applicant seeks the right to exclude; and (3) Because of its institutional position to provide vertical systematic benefits by seeking defining information from the patent applicant.

The proposal is implemented by the simple positive rule that early in the process of examination, the examiner should commit to the administrative record the examiner’s understanding of the boundaries of the property right. The examiner’s understanding of the boundaries, however, will not become binding unless the patent applicant ratifies it. Rather, the examiner’s definition of the boundaries of the property serves as a framework from which the patent applicant can provide targeted information necessary to build a record of those attributes, or data points, that define the boundaries of the property. This procedural change shifts some of the informational burden from the Patent Office and post-grant participants and moves it to the patent applicant, the party best positioned to most cheaply provide such information. Moreover, by increasing informational content, this record building procedure benefits all participants in the patent system because it allows them to form a more certain understanding of the boundaries of the property at issue and more usefully compare it to prior art and commercial goods and services.

Margaret Jane RADIN
The Linguistic Turn in Patent Law
[paper]

This project involves juxtaposing basic patent issues with basic issues in the philosophy of language.   One core issue in a patent dispute is whether the set of words that constitutes the claim "reads on" an allegedly infringing device or process.   This problem of figuring out how a set of words "reads on" something in the world is the same one that language philosophers have thought of as the problem of reference, a topic of vigorous philosophical debate for the past 100 years.   The paper categorizes philosophical commitments about language as ranging along two axes:   atomistic/holistic and realist/constructivist, suggesting that judges' closet commitments to   atomism and possibly realism are causing tensions and confusions in various patent doctrines.   The paper also explores the linguistic turn taken by the Supreme Court in Festo , where the Court focuses on the issue of describabiliy; that is, whether or not something was describable at the time the claim was drafted.   Although Festo arose at the intersection of the doctrine of equivalents and the doctrine of prosecution history estoppel, the describability rationale is not so limited.   For example, obviousness can be readily understood as relating to a situation in which something is in fact clearly describable within the relevant linguistic community (that is, to a PHOSITA) before the invention is made.   This view of obviousness has the corollary that a nonobvious invention--any invention that is patentable--is to some extent indescribable in the relevant technological community at the time of its invention.

Lisa P. RAMSEY
University of San Diego School of Law
Intellectual Property Rights in Advertising
[paper]

While utilitarianism provides a good justification for intellectual property laws generally, I believe this theory may not justify copyright and patent rights in advertising, or trademark rights in slogans. Under utilitarian theory, Congress grants copyrights or patents in advertising to create incentives for authors and inventors to produce new advertising. The need for such incentives is questionable. Firms already have a strong motivation to advertise products to consumers: advertising increases sales. Creative and expansive advertising will occur regardless of copyright and patent protection. I predict the amount of advertising that is only incentivized by copyright and patent rights is small. In addition, advertising is different from other copyrighted works and patented inventions because there is disagreement on whether the public benefits from an increase in advertising. Advertising does benefit consumers, but many complain there is too much advertising and some innovative methods of advertising, such as Internet pop-up ads, may burden—not benefit—consumers. An increase in new advertising, unlike an increase in new novels or pharmaceuticals, may actually decrease net social welfare.

Utilitarian theory also fails to explain trademark protection for slogans. I believe net social welfare will remain the same, or even increase, if we refuse to protect trademark rights in slogans. As firms can use product names to identify and distinguish their brands, additional trademark protection for slogans provides no significant incremental reduction in consumer search costs. Removing trademark protection for slogans will not decrease the incentive of firms to manufacture quality products because consumers can use product names to identify the brands they like and dislike.

If protection of copyright and patent rights in advertising, and trademark rights in slogans, produces few or no public benefits, the costs of such protection (such as transaction costs or rent seeking) outweigh the benefits. Removing such protection may increase the free flow of commercial information. Those who prefer a utilitarian theory of intellectual property should question why we protect such rights in advertising, and consider eliminating protection if these intellectual property laws do not promote social welfare. The cost of drawing the line between advertising and other works and inventions may tip the balance in favor of continued copyright and patent protection for advertising. On the other hand, it is not costly to distinguish between slogans and product names, and thus net social welfare may increase if we eliminate government restrictions on the use of trademarked slogans in advertising. If people believe use of another firm’s slogan should be prohibited because it is akin to stealing that firm’s investment in advertising, this is additional evidence that current intellectual property law may be based at least in part on Lockean property theory rather than utilitarianism.

Neil M. RICHARDS
Washington University School of Law
The Information Privacy Project and the Limits of Metaphor

Daniel Solove's book The Digital Person: Technology and Privacy in the Information Age was recently published to great acclaim, and justifiably so, for the book is the most eloquent exposition to date of the legal problems created by the accumulation and use of data by government and private sector entities. More interstingly, the book is the latest word in a broader effort that I call the "information privacy law project": the attempt by a number of scholars (including Solove, Paul Schwartz, Joel Reidenberg, and Peter Swire) to establish "information privacy law" as a defined field of study distinct from constitutional protections of the "right to privacy." In my essay, I critique the information privacy law project and argue that although information privacy law is a useful shorthand device to describe a subset of legal issues associated with the use and abuse of personal information, The Digital Person itself reveals that there are enough doctrinal, historical and theoretical linkages between informational and constitutional privacy law that the two are ultimately analytically indistinct. Moreover, I argue that to the extent one of the developing themes in the information privacy law project is that metaphors have real importance upon the development of legal rules, the project's own use of the metaphor of "privacy," further complicates both its coherence and its recognition as a distinct body of law. It would be far better, I argue, to engage in an effort to define "information law" or "confidentiality law" than to rely upon the notoriously slippery, baggage-laden, and perhaps even tired metaphor of "privacy."

Cyrill P. RIGAMONTI
Harvard Law School
Reconceptualizing Moral Rights
[paper]

This paper provides an assessment of the recent wave of moral rights legislation that has led to the adoption of the Continental European approach to the protection of moral rights in many common law countries that had previously ardently rejected the moral rights doctrine as contrary to their copyright tradition.   My thesis is that the enactment of statutory moral rights regimes did not materially increase the substantive level of moral rights protection in these countries as compared to the protection previously available under alternative doctrines such as defamation, passing off, the right of privacy, contracts, and trademark law.   Instead, this shift was purely doctrinal and is best understood as a process of doctrinal transformation that began in Continental Europe towards the end of the 19th century and that has since been globalized through international law.   My conclusion is that it was a step in the wrong direction for the common law countries to codify the dominant mode of conceptualizing moral rights as inalienable rights of authors in their works, because this concept distracts from the fact that the most controversial rules in moral rights law are contractual in nature, suggests a misleading similarity between moral rights and economic rights, perpetuates the myth of romantic authorship by relying on the idea that copyrightable works embody the personhood of their creators, and disconnects the discussion of moral rights from broader themes in tort and contract law that may enrich our understanding of moral rights.   En route to my conclusions, I will review the current state of the moral rights doctrine, compare it to alternative doctrines, and provide a detailed historical account of the emergence of this doctrine by demonstrating that it is largely the result of the particular way in which German tort law was codified in 1900, combined with the influence of an Italian scholar who promoted the German approach first in Italy and then on the international level.

John A. ROTHCHILD
Wayne State University Law School
Economic Analysis of Technological Protection Measures
[paper]

This paper analyzes the impact of market forces on a publisher’s decision whether to implement technological protection measures (“TPMs”) as a means of preventing unauthorized use of software, music, movies, and other information products in digital formats. TPMs are encryption-based techniques that control the uses that may be made of a digital information good, such as by preventing the copying of a music CD or making it impossible to use a particular copy of a computer program on more than one computer. The paper develops an economic model that explains how the use of TPMs affects consumer demand, and considers the conditions that will influence a publisher’s decision whether to implement TPMs. This model is the first to take account of the two offsetting effects on consumer demand that implementation of TPMs brings about, namely (1) an increase in demand from users who had previously been making unauthorized use of copies owned by others, but who can no longer do so because of the implementation of a TPM, and (2) a decrease in demand through alienation of existing customers who switch to a competing good that is unencumbered by TPMs. The model is also the first to disaggregate the various empirical conditions that determine whether a publisher will benefit from implementing TPMs.

An understanding of the incentives that confront publishers deciding whether to implement TPMs is of crucial importance in evaluating the policy choice that Congress made when it enacted the prohibitions against circumvention of TPMs that are contained in the 1998 Digital Millennium Copyright Act. The model presented cautions against any hasty assumption either that publishers will inevitably lock up all of their products behind TPMs, thereby dramatically contracting the scope of the public domain, or that market forces will naturally effectuate the preference of consumers for digital goods that are not encumbered by TPMs.

Matthew SAG
Northwestern University School of Law
The Law and Economics of Fair Use
[paper]

Traditional law and economics provides a rationale for both the existence of exclusive rights over information in the form of copyright and for the limited nature of those rights. Nonetheless, law and economics has so far failed to make convincing inroads into the doctrinal confusion that surrounds fair use. The primary law and economics contributions to the topic, the market failure test and the application of a cost-benefit analysis, both illustrate a naive understanding of the welfare effects of copyright scope. This paper develops a model of copyright scope and expands upon its application to the economics of fair use.

Sharon SANDEEN
Hamline University School of Law
Trade Secrecy Law at the International Level
[paper]

Mark F. SCHULTZ
Southern Illinois University
Intellectual Property and Liberty: Necessary Antagonists?
[paper]

Intellectual property is seen often as liberty’s foe and rarely its friend. This Article questions that view. Current intellectual property scholarship typically portrays the benefits of intellectual property as entirely economic—potential increased innovation and creativity. It takes a far wider view of the costs, however, perceiving both economic costs—rent extraction and impediments to third party innovation—as well as harm to civil and economic liberties. This Article contends that there is a significant omission from this portrayal of intellectual property: Intellectual property also fosters and supports civil and economic liberties.

Property was once widely considered inseparable from liberty for moral, philosophical, and practical reasons. Under this view, there is no contradiction between protecting intellectual property and liberty. While that tradition has largely been eclipsed, this Article contends that it can still help us better understand intellectual property today. Not only in the sense that the past is prelude to the present, but also because its offers a good practical description of the positive effects of intellectual property on liberty.

This tradition views property as supporting liberty in two ways that are particularly relevant to this discussion: First, it gives one the means to exercise other liberties effectively. Second, it is a necessary condition for independence—as John Trenchard explained in Cato's Letters "All Men are animated by the Passion of acquiring and defending Property, because Property is the best Support of that Independency, so passionately desired by all Men." This Article contends that intellectual property rights generate such “Independency,” which in turn supports certain liberties by providing the means and incentive to defend those liberties.

This Article will discuss examples of how intellectual property supports liberty, examining theoretical and historical support for their existence. For example, patent ownership gives patent owners the means and incentive to challenge laws that stifle freedom of inquiry and innovation to protect entrenched interests. Those who make their living from copyrighted works are among the greatest supporters of freedom of expression. The financial independence fostered by intellectual property rights is particularly important to the ability of authors, artists, and journalists to express themselves freely, challenge authority, and promote new ideas.

The Article will also examine the normative implications of this positive relationship for intellectual property law and policy.

Ilanah SIMON
Queen Mary Intellectual Property Research Institute
Dilution in the United States and European Union (and Beyond) Compared.
[paper]

Taking as its starting point the position in the TRIPs Agreement and the protection called for in the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, this paper compares the approaches taken to assessing dilution in both the United States and the European Union, particularly in the UK, the European Court of Justice and the Office for Harmonisation in the Internal Market.

Relevant issues include actual dilution, the test for blurring and the roles played by (dis)similarity of marks, similarity of goods and services, fame/reputation of the earlier mark in that test.

The suitability of the proposed Trademark Dilution Revision Act 2005 for testing for dilution is considered, as is the similarities and differences between the bill and the approach to dilution taken in the EU. Finally, the compliance of both regimes with their international obligations in this area is discussed.

This paper will conclude that, despite the terminological differences in the US and EU, at present, there are a great number of similarities in the approach taken to dilution in the US and EU. This may change in the near future though as the proposed US Dilution Revision Act will increase the scope of dilution protection, while the EU is tending towards limiting its scope.

Katherine J. STRANDBURG
DePaul University College of Law and University of Illinois College of Law
Kinetics of the Patent Citation Network: A Physics Approach to Understanding the Patent System
[paper - non-technical]
[paper - technical]

We apply a statistical-physics-of-complex-networks approach to United States patents and the citations between them. The growth of the patent citation network since 1975 can be modeled by a citation probability that depends only on the number of citations received, the age of the patent, and time. Time and age seem most consistently measured by patent number, rather than by physical time. Since the rate of patenting is increasing rapidly, this suggests, for example, that the twenty-year patent term is growing effectively longer in technical significance.

The probability of citation increases rapidly with the number of citations already received, demonstrating the “preferential attachment” observed in many complex networks. Highly cited patents are strongly favored, suggesting a very concentrated distribution of patent importance. Patents categorized as “Computers and Communication” show particularly strong preferential attachment.

The probability of citation peaks at a relatively short patent age, consistent with earlier observations of citation lags. But the aging function also has a long, slow power law decay, indicating that patents may retain their influence over very long times. Older patents show this persistent vitality even when they have received few or no citations -- even “unpopular” patents have a significant probability of being revived after a long period of dormancy. Patents in “Computers and Communication” show faster power law aging than other types of patents, probably consistent with the intuition that computer technology is a relatively incremental field with fewer long-lived “pioneer”-type patents.

Over time, the increasing number of patents and the persistent importance of earlier patents tend to decrease the average likelihood that a new patent will be cited. However, this decrease has been compensated by an increasing number of citations made by each patent -- new patents do not become “lost in the crowd” of other new patents. This observation suggests that, despite the notoriety of crustless peanut butter sandwich patents and the like, there may not be a significantly increasing population of “outlier” patents, divorced from the technical mainstream. Patent applicants and examiners have apparently felt that the number of “material” patents to be cited by any given patent has been increasing at least as fast as the number of patents. However, this citing pattern is consistent with a picture of increasing patent “density,” in which patents constitute smaller and smaller technical advances, leading to a crowded “thicket” of closely related patents, all of which are “material” to each new patent in the vicinity.

Phil WEISER & Dale HATFIELD
University of Colorado School of Law
Toward A Next Generation Spectrum Policy
[paper]

For many economists who follow spectrum policy, the lure of a simple and clearly defined property right is powerful and undeniable. One proposal for defining property-like rights in spectrum (dating back at least to a 1969 law journal article) is that licensees could be awarded rights to use the spectrum subject only to a minimal level of interference from out-of-area (or out-of-band) emissions. Unfortunately, this concept is unrealistic insofar as there are a number of cases where radio signals will operate in an unpredictable manner depending on a range of natural conditions and environmental circumstances. Just because, for example, a transmission creates an amount of interference below the maximum permissible level at a location close to the source of the interference does not mean that it will stay below that level further away from the source. And, in a point appreciated by the current debate over how to use the “white spaces” within many areas licensed to UHF broadcasters, it is also undeniable that many services leave large holes within their authorized areas. Finally, in a further complexity that is less appreciated by most commentators, there are two kinds of “white spaces”: (1) those anticipated by the statistical models that guide spectrum management decisions; and (2) those in practice that may or may not be anticipated by the statistical models.

In principle, spectrum rights can be defined more realistically, but it will require a more nuanced concept of property rights and a highly capable enforcement apparatus. For starters, the definition of property rights must be built around statistical probabilities that would permit, for example, out-of-area emissions a certain percentage of the time. The property right should also require an affirmative duty to cooperate with nearby spectrum users to enable them to filter out the unwanted signal through more effective receiver system technology. Finally, the protection of property rights may well require effective real-time monitoring technologies so that users can address any interference before sanctions would kick in.

The need for greater care in defining property rights is not the only area where economists tend to overlook the challenges of facilitating markets for spectrum. Economists also tend to be supportive of judicial methods of resolution and skeptical of a continuing role for administrative agencies. Despite their well known flaws, however, the capabilities of agencies—the ability to act proactively, work with other institutional actors, and their far greater resources and expertise—make them far more competent than generalist courts to adjudicate property disputes in spectrum. As spectrum markets increase in number and geography, the FCC may well not be the only agency that should decide such disputes, but it will likely need to remain the certifying body of what other institutional actors—state public utility commissions, for example—possess the competence to do so.

Steven WILF
University of Connecticut Law School
The New Deal Paradigm in Intellectual Property Law
[paper]

Few areas of United States legal history are less well explored than the emergence of intellectual property law.   One reason for this lacuna is the dominance of other interdisciplinary understandings of how the rules governing knowledge, such as philosophical justifications for intellectual property as property (labor, personality, and utilitarian justifications) and, within the framework of utilitarian justifications, law and economics.   Another reason for this scholarly gap is the focus on intellectual property history as a history of the interaction of law with new technologies--a narrative of how law adapts to change prompted by innovation.  

This paper takes a very different approach.   It focuses less on the structures shaping intellectual property doctrine and more upon the shifting historical contexts in which this doctrine was shaped.   The core argument of the paper is that the period from the earliest decades of the twentieth century, the apotheosis of the Progressive Era, to the New Deal there was a major shift in thinking about political economy.   Progressive Era jurisprudence faced a dilemma.   Intellectual property's exclusive rights created what on its face was a monopoly, and nothing--or almost nothing--was more abhorrent to the Progressive Era legal mind than monopoly.   Early twentieth-century United States intellectual property doctrine is full of the anxieties, doctrinal dissonance, and difficulties emerging from this dilemma.

The New Deal period of the 1930s and 1940s witnessed a marked shift in the attitude towards competition.   A number of New Deal figures attacked the Progressive Era's hostility towards cartels.   Faced with deflationary pressures, New Deal legal thinkers tried to figure out how to use intellectual property to limit competition.   Reconfiguring intellectual property law as a motor for the economy, New Deal lawyers created new ways of thinking about the seemingly exclusionary aspects of copyright and trademark law.   In copyright, the New Deal experimented with novel mechanisms for regulating sound recordings, recognizing industry interests through empower