IPSC Breakout Session II

IP Theory 
The Boundaries of Intellectual Property: A Preliminary Exploration
of Constitutional Salience –
Amy Kapczynski
What IP law is about: what values beyond efficiency we might
be able to say this law serves.  You can’t
justify IP v. grants or prizes based on efficiency w/o further beliefs, such as
beliefs about the dangers & competences of the state. The value is thus
more something like liberalism—better, more free society if we minimize the
role of the state, creating private property in ideas.
More than liberal values, republican values.  Republicanism has a theory of political economy.  Jefferson believed in an agrarian republic
preventing vast inequalities of wealth and the corruption associated
w/aristocracy.  Jefferson restricts
primogeniture & slavery in Northwest Ordinance—conception that property law
had to reflect and build a society they wanted. More opportunity for white men
in the West than the South in the decades following the Northwest Ordinance: it
worked.  Property qualifications for
voting were restrictive, based on idea that you needed a stake to be
politically responsible; but there were progressive strains as well. 
Best reading of IP clause thus makes public interest a truly
meaningful concepts. Anti-oligarchical, equality, anti-monarchical commitments,
giving limits in IP clause resonance. 
Look also at early state © laws which emphasized public interest,
limits.  Somewhat startling
egalitarianism of early US patent law. 
Focus on boundary cases: what’s in and what’s out? Wheaton
v. Peters: why allow © on court reports? At the time, reporters may have needed
incentives, but also weren’t reporting exactly what judges said.  May also help understand patentable subject
matter and preemption—concerns about competition, anti-oligarchy, equality of
access that aren’t organized around incentives.
INS v. AP: creating quasi-property right in news: Court
first has to say why give a property right at all, v. Brandeis pointing out
that people hurt others in business all the time.  Majority: news is important.  B/c we live in a democratic society, not b/c
we have preferences for news.  Second
move in the case: why doesn’t the quasi-property right extend to everyone?  If preferences tell us what news to produce,
a robust property right might be efficient. 
But Pitney shuts that off: Framers couldn’t have wanted to give first
reporter exclusive rights—our constitutional order can’t permit property in
news.  From efficiency perspective, that’s
a bit puzzling, but not from republicanism. 
Anemic right created under INS.
Government patent infringement: mostly there was immunity;
now you can get reasonable damages, not lost profits.  Gov’t may be interested in national security,
drugs—there we suspend property logic. 
Commitment to the public determining through political process how we
want to treat these goods.
Q: I understand why not grants, but what republican
advantage does IP have over prizes?
A: Might be in part the lack of a highly developed
administrative state at the time. Over time, more elaborate state apparatus
could achieve some of these values in different ways/playing a more active
role.  [Seems like reasonable to talk
about Bayh-Dole at this point.]
Q: What’s the role of the state in INS?  Pinckney has a conception of private property
that doesn’t purport to rely on the state.
Chris Sprigman: Is this a matter for the courts to enforce,
or is that not included in a republican conception?
Jonathan Masur: is the argument that there are strands of
republicanism or that republicanism is a dominant theme?
A Heap of IP: On the Essential Indeterminacy of Intellectual
Property Rights –Jeremy Sheff
IP rights, or scope of any individual rights, will have some
zone of irreducible indeterminacy. (1) intellectual property operates based on
categories rather than based on physical phenomenon. A car is a thing in the
world you can touch. There may be questions of boundary definition between one
plot of land and another, but there is no question that there is a plot.  IP defines either things or possible things
that might be subject to rights to control others’ use or bringing other things
into the world.  (2) IP rights, even
defined by exemplar, have features—they are composed of the whole of those
elements. If you take one piece away, you will face questions about whether you
are still dealing w/the same thing.
Philosophy has tools for this.  Experiences of people in a position to make
the decision will determine (1).  Old
philosophical puzzle: you have a heap of wheat & take one grain away—at what
point does it stop being heap?  Goes to
the idea that there are some predicates that are very clear at the extremes but
unclear in the middle.  We do this w/IP
all the time.  Infringement doctrines get
at this part-to-whole or little-by-little relations in various ways.  Egyptian Goddess does away with point of
novelty; says to look at article as a whole. There is no one feature of a
patented design that makes the difference b/t infringement or noninfringement.
If that’s true, how are we to determine whether a particular accused
device/work is or isn’t within the scope of an IP right. Philosophers have a
few approaches, none of which are particularly useful for lawyers. One:
epistemic limitations prevent us from knowing where the truth is, although
there is one. But in law, someone is going to decide.  Two: Truth gaps w/r/t certain predicates—there
are definite truths at the extremes, and no truth or falsity in the middle—it is
neither true nor false.  Lawyers &
judges can’t do that with specific disputes. 
Third: truth can be a matter of degree, not bivalent. Law again can’t do
that w/r/t infringement.
What then? If it’s true that application of rules isn’t
determined in advance but by social context/practices of people making these
decisions, then we have to recognize that different people from different
contexts will come out different ways. Who decides becomes incredibly important—allocation
of decisionmaking authority may be more important than the rules’ content:
whether a question is for a jury or a judge. We see them divided up in
different ways, w/some instability.  The
law itself will not determine the scope of the right; only in practice through
application by people who approach questions based on context/institution from
which they come. So we should look at systematic differences.
James Grimmelmann: why is IP special?  Your answer may be on IP’s in rem nature—not necessarily
corresponding to specific physical objects. 
The jury is special here b/c it can take a decision that doesn’t have to
be reasoned or consistent.  Standards of
review that permit higher bodies to say “it’s in a range that we can allow the
decision to stand.”
A: Allocating to jury is a way of saying “who can say?”  There’s no clear truth value, so give it to a
relevant community, and maybe a jury is that in a democratic society.
Q: connect philosophical ways of understanding vagueness to
using different communities as a solution. 
One philosophical resolution is semantic indeterminacy.  We just haven’t managed to nail the answers
down, but we could in theory do so.  One
way of understanding outsourcing to various communities is engaging in the task
of building answers—the jury can answer one way or another. Then based on jury’s
determination the issue might become less vague, via precedent.
Masur: Explain what purchase you get through Wittgenstein
etc. that we didn’t get through Holmes and the realist revolution—the life of
the law has not been law, it has been experience; law is about predicting what
the jury will do; based on policy not pure logic.
Felix Wu: seconding Grimmelmann: to what extent is IP
special?  Linedrawing is always
difficult: what counts as speech protected by the First Amendment? Has the same
characteristics you just described.  Not
clear to him that the whole game is institutions/allocation of decisionmaking—what
part of the game might be elsewhere?  You
send something to the jury, but presumably they get instructions about some
notion of substance we want to maintain.
RT: Puffery: you can
actually decide that the truth is undecidable by a court.  Burden of proof: can’t it take care of these
issues (assuming, as Wu says, that you have the substance defined properly).
Q: people in a creative community might notice
unpredictability, and might want to avoid the judicial system.  They could create ADR where they’d trust
other community members to make more predictable, sounder judgments about how
much borrowing is ok, how much new stuff one must add.  We do sometimes see ADR in creator communities,
in response to perception that courts don’t understand.
Sheff: one question is whether best practices are entitled
to any deference—a way of assigning responsibility to a community.
The Game’s the Same, But the Rules Have Changed: Rights of Publicity,
False Endorsement, and the First Amendment – David S. Welkowitz
Football players who object to uncompensated use of images
in videogames: two cases that are the same that come out differently, depending
on what he alleges.  From the First
Amendment perspective, they are the same case. 
EA says the First Amendment protects its right to use the image.  Court acknowledges full 1A protection.  This makes no sense.  Contrast: 6th Circuit’s Rosa Parks
case uses same test for ROP and for false endorsement.  It is unusual to have such a conflict—for at
least one of the claims, the statute might do the work instead of the First
Amendment.  Here’s Johnny toilet case: no
likely confusion, but that didn’t matter to the ROP claim.
Analogy: Hustler v. Falwell. Can’t use IIED to substitute
for 1A-barred defamation claim.  Compare
contract law, which can be used to override otherwise existing 1A rights.  Tentative conclusions: maybe to reconcile
this by looking at what interests the 1A protects; may also imply things for
remedies in ROP—if you are seeking a defamation-like remedy, perhaps you
shouldn’t be able to seek that to evade the 1A—Food Lion v. Capital Cities, 4th
Circuit limited remedy for contract-like claims to avoid defamation-like
Heymann: Hustler comes from a sense that the P is trying an
end run.  You’re making the same sort of
argument here [but courts are happy saying ROP is different—it was invented
precisely to make this end run, whereas IIED had a different history and really
a different set of aims].
A: The 1A outcome can’t vary unless the interests are
sufficiently different, and that’s where the problem lies.
Pam Samuelson: ROP/privacy claim and copyright claim at the
same time—1A protected D from privacy/publicity liability, but not ©–based on
a photo of a gay couple kissing, used by a conservative political group.  Might look at nature of the interest in ©
versus ROP.
Yen: look at who got paid—Brown was paid and Keller was not
(as college player).  That may influence
the way courts think about it.  Falwell
is about 1A’s Faustian bargain for politicians: in return for coming forward,
you expose yourself to attack—where’s the bargain?
A: the panel drops a footnote in Brown saying that if it
were a ROP case we’d do it differently, so that status doesn’t seem to have
Rothman: Agree that we need to harmonize.  Brown refiled w/ROP claim and succeeded in
moving the case forward; EA then settled for $600,000.
Choice of Law and the Right of Publicity – Mary LaFrance
Differences in subject matter: whether it’s protected at all;
what aspects are protected; duration (postmortem; whether it will be forfeited
if not exploited in life, etc.).  Courts
typically apply forum’s default conflict of law rules to ROP.  To determine scope of P’s exclusive rights
courts usually apply law of place of infringement, but to determine existence
of protectable right, majority rule applies the law of the exploited person’s
domicile, or domicile at time of death. Domicile rule is typically justified as
traditional choice of law rule for property ownership.
Domicile rule conflates issues: (1) whether there is a
protectable postmortem right in the exploited persona, by analogy to other
forms of state protected IP—the place of infringement should determine that
(e.g., state law copyright, which has suddenly taken off, and whether it
protects pre-1972 sound recordings; trademarks protected under state law; trade
secrets)—courts ignore that in other types of IP, not personal property, courts look to the place of infringement.  Conflated with (2) if the right exists, who
owns it? That’s just a matter of state inheritance law, and we look to the law
of the state governing inheritance, which is probably domicile at death. There
it makes perfect sense to look at decedent’s domicile.
Transferability/assignability presents similar issues: which
state’s law should determine whether it’s assignable, which depends on whether
it’s a property right or personal right. If there is an assignment, is it
valid? Which state’s law governs contract interpretation?
Case, Bi-Rite, which didn’t apply Mass. law (local) or UK
law (domicile). Illinois, Connecticut, and Georgia, b/c some of the UK
performers granted exclusive licenses to Illinois & Conn. To exploit their
ROP; others licensed through a Ga. Company. Therefore, court applied law of
place where licensees were
domiciled.  This is weird.
Sometimes courts don’t even spot the conflicts question;
automatically applied law of place where infringement occurred, e.g., Zacchini, or Estate of Presley (D.N.J.) where at the time Ga. didn’t recognize a
postmortem right but NJ did, even though estate couldn’t have won a suit in his
home state.  Policy arguments against
current domicile approach: How can you have a class action w/the domicile
rule?  If the ROP is a property right, as
most courts treat it, why treat it differently from other IP rights?
One argument in favor: for books, internet—you can’t really
limit it to one state where you can’t be sure where you’ll be an
infringer.  Domicile rule might not be
the answer but we need some form of predictability.
These laws do seem to discriminate against
nonresidents.  Judge in Bi-Rite case
suggested it was unconstitutional to discriminate against foreigners.  But in going through antidiscrimination
provisions, the problem is that the plaintiffs are not necessarily
nonresidents. Discrimination is usually based on content of goods, not location
of the merchants—content isn’t protected under the laws of our state b/c it’s
based on some nonresident’s persona.  [I’m
not sure I see that.  The P still wins or
loses depending on residency.]
Q: Potential difficulties: where the owner of the rights
under one state’s law would be different through inheritance than others.
Q: why not a uniform federal law?

A: not going to happen any time soon; no one is really
lobbying for it.

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