Introduction to Intellectual Property

Why the original Napster wasn't bad for music

Before I go into my opinion, I’d like to list some of the statistics and information I discovered about the Internet and album sales:

On the RIAA web page (www.RIAA.com), there is a segment of FAQs. The first question is: “Does uploading music on the Internet hurt anybody? Isn’t it promotion for the artist?” One particular aspect of the question intrigued me, as it seems to support my opinion below, rather than the industry’s public opinion. “Though most people do not realize it, only about 15 [%] of all releases sell enough copies to make a profit and those record sales support the other 85%, including those from new and emerging artists.” First of all, the majority of “new and emerging artists” out there are not signed by the labels, being hurt by these downloads. The emerging artists are generally struggling to get by and giving their music away for free or selling it for $10 at their shows. In addition, to the best of my knowledge, the music industry has not instituted a revenue sharing program (such as the one in the NFL), where the richer labels/artists, share their profits with the less successful. Finally, it is difficult to justify labeling any artist signed to a Major [label], as a “new and emerging artist.”

Here are some interesting statistics*:
1998:
CD unit shipments grew 12.5% from 753.1 million in ’97 to 847 million in ‘98
CD dollar value grew 15.1% from $9.9 billion in ’97 to $11.4 billion in ’98 – an INCREASE of $1.5 BILLION.

1999:
CD unit shipments grew 10.8% from 847 million in ’98 to 939 million in ‘99
CD dollar value grew 12.3% from $11.4 billion in ’98 to $12.8 billion in ’99

2000:
CD unit shipments grew 0.4% from 939 million in ’99 to 943 million in 2000
CD dollar value grew 3.1% from $12.8 billion in ’99 to $13.2 billion in 2000

2001:
CD unit shipments DROPPED 6.4% from 943 million in ’00 to 881 million in ‘01
CD dollar value DROPPED 2.3% from $13.2 billion in ’00 to $12.9 billion in ’01

2002:
CD unit shipments DROPPED 8.9% from 881 million in ‘01 to 803.3 million in ‘02
CD dollar value DROPPED 6.7% from $12.9 billion in ’01 to $12 billion in ‘02

*I would like to point out that the music industry filed the lawsuit against Napster on December 7, 1999. The first court decision (District Court for the Northern District of California) was on May 8, 2000 and an injunction was finally issued in mid-2001 that shut down the network. This leads me to question how Napster was “bad” for music? 2001 was the first year of the recent trend in annual losses, suffered by the industry. I still have not heard a convincing argument that proves how shutting down Napster improved “music,” or the industry on the whole. However, the CD singles market did virtually disappear: dropping from 66.7 million units shipped in ’97 to 4.5 million in 2002 (about $195 million lost in revenue). Selling one song for $6 (minimum) always seemed wrong to me anyway. In addition, I think the labels made up for it - with the increase of music DVDs (from 485,000 units and $12.2 million in revenue to 10.7 million units and $236.3 million between 1998 and 2002). While I do not have actual statistics, these numbers have certainly increased since 2002, more than making up for the loss in singles sales.

In my opinion, despite the fact that downloading music without permission is illegal, Napster has been, and will continue to be, a positive force for the music industry. As a huge music fan, I have always been interested in the business behind the scenes. I try not to label artists or their work, instead judging them by my own ears. As a result, I have discovered many unique and underground artists over the years and watched them either rise to the number one spot on TRL or struggle in small, unpublicized venues. Napster, Kazaa, and other online/downloading software enabled smaller, abstract artists an opportunity to succeed. The music industry is finally becoming diversified, giving bands the chance to fulfill their dreams. However, Napster did hurt the major labels and their investments. With consumers finally being able to discover music on their own (instead of being force fed label-built groups by MTV, Clear Channel, etc.), more money has been going to small, independent labels instead of the massive majors. High school students discovered bands such as Dashboard Confessional, who later found success on MTV. The lead singer established himself in a virtually unknown, yet talented, hardcore band, Further Seems Forever. Kids have found hip-hop artists, such as Jurassic 5, who have been massively exposed through the Internet and have had incredible opportunities to expand their style of sound into mainstream America. In fact, an absurd amount of artists have been able to survive by the exposure they’ve received over the Internet, by making most of their money in performances.

One cannot deny that market diversification, through illegal activity, is unfair to those artists and labels, who established themselves prior to Napster’s success. The online availability of music removed a segment of the Majors’ profits, spreading it among the smaller labels. As a result, the artists who sell enough records to make significant profits lose revenue with the illegal, online music ventures. It is morally incorrect for people to infringe on these artists’ labor. At the same time, the selfishness of label executives made a serious mistake and cast a shadow over this issue. Record executives, joined by the band itself, argued that Metallica was suffering because of Napster’s infringement. The band has been one of the most popular rock outfits since the mid/late-1980s. If their bank accounts are “suffering,” then these guys have other issues to worry about besides their “Napster-lost” profits. I wonder if it ever occurred to them that their album sales have dropped because their music isn’t as good as it once was or the age disparity between themselves and Teenage-America has spread so far. I did think that it was rather interesting how much better their recent album did in sales after they “went back to their roots” and released an album closer to their early-1990s sound than their late ‘90s/Napster-era sound.

I also have a hard time sympathizing with the Majors, who have a history and reputation of ripping off their artists. With corporate-America running the industry today, the artistry of the music has really suffered. Not only is some of the current, mainstream music created by executives (i.e., “boy bands”), but there are also examples where labels have taken control and claimed ownership over musicians’ works. Recently, Geffen released the Guns N’ Roses “Greatest Hits” album, without permission from any member of the band. What’s even worse is the fact that the individuals, who put forth their labor in creating the music, did not have any input into the release date, album artwork, or even the track selection. In fact, the three most prominent members of GNR (Axl Rose, Slash, and Duff McKagan) filed a petition with a court, seeking a temporary restraining order and preliminary injunction on the release, which was recently denied. The album quickly jumped to the third spot on the Billboard 200 (listing top album sales in a given week – see www.billboard.com) and number one in a few European nations. (For more info, see the following: Guns N' Roses Sues To Block 'Greatest Hits', GUNS LEGAL CLAIM REJECTED, or Gn'R Lose Compilation Lawsuit)

It is difficult to justify downloading music that is played 500 times per day on one radio station. This is illegal and a waste of time, as you can turn on the radio or MTV if you’d like to hear a particular song. However, is it really wrong to download music from those artists who benefit from the exposure? I’m not so sure. I do think downloading music for free, without an ARTIST’s permission, is infringement and morally incorrect. But in reality, Napster was not bad for the music industry on a whole. If the record labels had started working with Napster (and other ventures) back when this new era began, instead of fighting technology and the development of a new marketing tool, the industry would be in a more stable position today. I also think the labels are legally justified in going after companies such as Napster, that contribute to mass infringement. However, going after college and high school students in the “John Doe” suits seems to be an attempt by the labels to make up for their past business mistakes.

While I think the new, pay-per-download music services have the potential to be as convenient for consumers and the industry, the majority of the paid programs now lack the most attractive and beneficial aspect of the “original Napster.” Napster, now partnered with the Majors, only offers major releases, so it is difficult to find the bootlegs, remixes, rare tracks, or underground artists that were some of the highlights a few years ago. “Fortunately,” the Majors have been buying out every independent label possible, which does give consumers access to mid-size artists that were once difficult to find. However, it is going to cost you $1 to hear a full sample (30-second samples are free). Happy spending!

Oh yeah – another interesting story involves members of the Majors who tried to weasel their way onto the Napster board (Click here for link). Shawn Fanning, Napster’s creator, had to bring individuals to court, in attempts to oust them.

Click here for a a good summary piece

Protecting Mickey, but not Madison: Where were the Conservatives in Eldred v. Ashcroft?

[If any of this is redundant, my apologies; it was meant to be posted before Tuesday's class]

In congressional statutes, it seems, as in parody (see Campbell v. Acuff-Rose Music, 510 U.S. 569, 589) and news reporting (see Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564), “context is everything”. Thus, one cannot begin to consider the merits and implications of the 1998 Sonny Bono Copyright Term Extension Act (CTEA) without benefit of an additional piece of information: Without it, Mickey Mouse would have entered the public domain in 2004 (75 years after “Steamboat Willie” hit the silent big screens), and would thereafter only be protected by trademark retention. Not surprisingly, then, Disney was the leading lobbying voice urging Congress to protect its most prized creation, contributing millions to that end. As such, the CTEA, coined by its supporters in honor of the late Sonny Bono, was soon derided by its critics (to the delight of legal headline writers) as the “Mickey Mouse Copyright Act” (e.g., “The Mouse that Ate the Constitution”, “Why the Public Domain is not just a Mickey Mouse Issue”, etc). This corporate back-story would also suggest, of course, that Congress is not done—and will never be done—tinkering with the system; it is a safe assumption that a newly enlarged CTEA will be debated around the year, say, 2019.

If that isn’t distressing enough to those of us who have always assumed that the Copyright Clause’s “limited times” proviso means just that (though admittedly the term doesn’t lend itself to a bright-line rule), consider this surreal tidbit of legislative history. Mary Bono, speaking on the floor of the House, noted that “Actually, Sonny wanted the term of copyright protection to last forever”, but because she was “since informed by staff that such a change would violate the Constitution", Congress might consider Jack Valenti’s proposal of a copyright term of "forever less one day", and added that “perhaps the Committee may look at that next Congress.” 144 Cong. Rec. H9952 (daily ed. Oct. 7, 1998). As Justice Breyer points out in dissent in Eldred, Mary’s matrimonial recollection was indeed correct—years earlier, from the House well, Sonny did question why copyrights should ever expire (104th Cong. 1st Sess., 94 (1995)).

While the majority blithely remarks that there is “nothing to glean from [the dissent’s] selection of scattered statements from individual members of Congress” (Eldred, at n. 16), it would seem that the statements of the CTEA’s chief sponsor and its namesake are important indicators of congressional intent, and not the musings of interested bystanders. The majority attaches great weight to the fact that no one suggested that copyrights be a “forever thing” (id.), but in doing so ignores the reality—the underlying context—that shaped the CTEA. In short, what could not be suggested overtly because of a constitutional obstacle was precisely what was being done covertly, incrementally, and with great effect. Thus, when read in the context of these twin factors—a corporate hegemon intent on protecting its animated stars, and a willing congressional sponsor unfamiliar with the plain words of the Copyright Clause—the majority’s assumption that “nothing . . . warrants construction of the [1998 Act’s] 20-year term extension as a congressional attempt to evade or override the ‘limited Times’ constraint” seems naïve and benighted.

Lawrence Lessig has recently written in hindsight that the original theory informing his argument in Eldred was that, ideally, a “pragmatic court committed to interpreting and applying our framers' Constitution would see that if Congress has the power to perpetually extend existing terms, then the constitutional requirement that terms be limited has lost its force”. (See http://www.legalaffairs.org/issues/March-April-2004/story_lessig_marapr04.html) As a constitutional scholar, he simply assumed that the limiting principle that the Rehnquist Court articulated for the Commerce Clause in Lopez—that Congress does not have the power to declare for itself the bounds of Interstate Commerce—would be transposed to “its second cousin”, the Copyright Clause. But by not listening to more experienced Court practitioners and not clearly emphasizing the real economic, intellectual and creative harms involved—choosing instead to rely on a strictly constitutional argument—the conservative voices on the court were unmoved to rule against, in Lessig’s description, “the most powerful media companies in the world.” This, in Lessig’s estimation, was how he “lost the Big One.” He forgot about politics.

In the end, we don’t really even know what the Court’s conservative bloc thought of the enumerated powers argument. The conservative voices of the Court (they of the Lopez and Morrison decisions) were completely silent in Eldred. Not even a Scalia concurrence. Lessig had compiled economists and professors from the right as amici; the dissenter on the Court of Appeals (Judge David Sentelle) was a conservative who did so on enumerated powers grounds; and Judge Posner had weighed in against the CTEA in a 1998 speech. But the Eldred silent-majority simply chose to ignore Lopez (a perfectly reasonable position for Justice Ginsburg, but not for Lopez’s crafters), and interpreted the “limited times” constraint (a particularly unforgivable sin for purported originalists) to allow anything this side of infinity, if Congress so desires. There is no limiting principle at work in the majority whatsoever, but rather an invocation to past congressional practice—“if this is bad, everything that came before it must be bad too”—hardly the stuff of heady constitutional argumentation.

It is left to Justice Breyer to make the historical/originalist argument. He begins his dissent by “reviewing the basic objectives of [the Copyright] Clause”, noting that “Madison, like Jefferson and others in the founding generation, warned against the dangers of monopolies”, and that Madison thought limited monopolies were justified for the authors (and not their heirs/corporate sponsors) of books, and then only because the monopoly was “temporary” (the term originally being 14 years—once renewable). Breyer leaves the historical argument at that, and proceeds convincingly to note that what Congress has done, measured in economic terms, is to grant 99.9997 percent of a perpetual terms (an argument that is rather nonsensically countered by the majority by doubting whether “those architects of our Nation, in framing the ‘limited Times” prescription , thought in terms of the calculator rather than the calendar.”).

But in at least acknowledging Madison and Jefferson’s role in shaping the Copyright Clause’s temporal restriction, he has shamed the Conservatives into mutely supporting a politically-driven opinion that divorces present Copyright law from its historical moorings. As the Court noted in the seminal patent case Graham v. John Deere—an opinion which the majority even quotes from, if selectively—the qualified authority of the Copyright Clause was written against the “backdrop of the practices . . . of the Crown in granting monopolies to court favorites in goods or businesses which had long been enjoyed by the public.” 383 U.S.1 (1966) (emphasis added). In other words, context, once again, is everything: the “limited Times” clause was a conscious incorporation, written so as to foreclose the granting of perpetual business favors. Conversely, the CTEA rewards private coffers—heirs and corporate entities—and not public access—the countless institutions, professionals, hobbyists, and researches who “want to make the past accessible for their own use or for that of others”. Breyer, at 8-9. It does not incentivize long-dead authors to create more posthumous work; it retards, rather than promotes, the “Progress of knowledge and learning.” In confining the “cultural content of early 20th century” into “intellectual purgatory” (id. at 11), the Court ignored the original context of the Copyright Clause, and turned a blind eye to the blatant corporate subtext that was ancillary to the CTEA. In so doing, the majority in Eldred got both the public policy and the constitutional construction wrong.

Making the ACPA Fit the Internet

The ACPA’s campaign to prevent cybersquatting is admirable and, given the high population of domain names held hostage for profit, justified. However, the ACPA neglected to attend to some vital aspects of the topography, diminishing the Act’s credibility and popularity. In failing to note several differences between the Internet and the “real world”, the ACPA strikes too hard and too often, particularly against Internet commentators. To fits its appropriate niche, the ACPA should narrow its target to bad faith registrants intent on making a profit, and eliminate the commercial use requirement for “junior site” legitimacy.

The Terrain

As for copyright, the Internet presents a unique environment for trademark, altering the playing field in ways the ACPA appears to have overlooked. In the real world, trademark earns its keep by diminishing consumer search costs. On the Internet, these costs are negligible. Consumers start their surfing session with a clear idea of what source they want; false websites are usually easily identifiable; and false websites pose only a minimal distraction from the source the consumer seeks.

Unlike “real world” consumers who need brands to guide them to their ultimate purchase, most Internet users start their search with a specific source as their goal. Internet browsing is substantively different from going to the grocery store and looking for a quality cheese cracker or fish breading. Internet consumers know they want to shop at The Gap, Target, or Amazon, and know exactly with what that website should present them.

Consequently, it is extremely easy for Internet users to differentiate between squatters and the legitimate product. Sites consisting of advertising or commentary are, to the average Internet user, clearly not affiliated with the source the user was seeking. The court in Shields v Zuccarini seemed particularly ignorant of this aspect of the Internet, as evidenced by their bemoaning the immense confusion resulting from typos. Cited in Merges at 648. Notwithstanding the outlier whose embarrassing confusion found its way into the Shields opinion, most users confronted with a site that does not meet their expectations will look up to see what site they are at, immediately identify a typo, and retype their intended web address.

This argument is confined to junior sites that do not resemble the trademark holder with intent to confuse. An Amazonbooks.com site that resembled Amazon.com and was set up to steal credit card numbers would not trigger consumers to continue browsing. However, this was not the case in Shields. Many UDRP panel decisions also inflated the confusion that can arise on the Internet, especially [trademark]sucks sites. Apparent confusion is, for such sites, not a significant obstacle to consumer-source relationships.

A possible rebuttal to this point is derived from the sort of consumers who rely on the Internet. In AMF v Sleekcraft, the discerning nature of the consumers was relevant in evaluating the likelihood of confusion. Cited in Merges at 614. It might be argued that the Internet is patronized by the economy’s most casual consumers, dazedly floating from site to site, and that their lackadaisical attitude requires paternalistic protection. However, the ease with which consumers can move from site to site cuts against the paranoia of the ACPA’s current formulation.

Once a Internet consumer has identified that they are at the wrong site, finding the source they seek is much easier than in the real world. It is intuitive to try “peta.com” after snickering at “peta.org.” The cost of arriving at one’s source, even after a moment of confusion, is negligible. Unlike in the real world, where a consumer who fell prey to confusing advertising must first drive to the distributor, purchase the product, try it out, identify a lower quality or missing feature, return the product to the distributor, and then seek out the real product, the reunion of source and consumer on the Internet is not made substantially more difficult by an intermediate phase of intermittent confusion. Users simply conjure up another domain name likely to lead to the source they seek, or turn to a search engine, separated from their target source only by a few clicks.

The above analysis might be completely discounted by those who attribute the ACPA to dilution analysis, not consumer confusion and the associated costs. This perspective is supported by the requirement that the mark being offered ACPA protection be famous. Even assuming that the ACPA is linked to dilution and trademark for trademark’s sake, several factors unique to the Internet support a trimming of the ACPA.

The Internet is not a purely commercial environment. It is an extremely varied and prolific source of commentary and randomness that cannot even be complimented by calling it “commentary.” However, the ACPA ignores these uses and requires junior sites, if they wish to remain legitimate, to have some commercial use. If The Onion had spoofed PETA in an article, this would have been acceptable; speech does not have to be commercial in order to be protected. However, the registration of a similar domain name without a “ bona fide offering of any goods or services” was a mark against Doughney. People for the Ethical Treatment of Animals v. Doughney, cited in Merges at 654. Especially given that PETA itself is nonprofit, using commercial use as a legitimating factor seems arbitrary and inconsistent with the nature of the Internet. While commercial use by Doughney might illustrate a legitimate claim to a PETA trademark, the absence of goods or services should not count against a web site registrant, given the Internet’s encouragement of even the emptiest of commentaries.

Some might argue that registering a similar domain name is too powerful a tool to allow merely for purposes of commentary or spoofing. If picketers had set themselves up outside PETA’s “real world” office and performed medical experiments on animals, this would have been acceptable; certainly this is more dramatic and intrusive to the public than registering a similar domain name. In tandem with the ease with which Internet consumers can extricate themselves from the protest, explained above, the critic’s legitimate interest in registering the domain name to draw an audience merits respect. Northland Ins. Co. v. Blaylock, cited in Merges at 664.

Recommendation

To remedy its disregard for the ease with which consumers find their desired source, and for the many noncommercial uses of the Internet, the ACPA should condemn only those junior sites registered with bad faith intent to profit. The unique Internet environment dilutes the transaction cost and dilution justifications to the point that only those interventions that prevent destruction of goodwill for purposes of profit are justifiable.

As explained above, relying on commercial use to legitimate junior sites is inconsistent with the many noncommercial uses of the Internet. To better align itself with the nature of its environment, the ACPA should not require junior sites to be commercial. While some might argue that only commercial use can justify interfering with a famous mark, the ease with which consumers can arrive at the trademark holder’s site regardless of distraction, and the availability of the Internet for the most mindless of chatter, does not support such a high threshold for legitimacy.

Can firms escape genericide?

When William Murphy invented the wall bed and decided to call it, the Murphy bed (1925), he had no idea the high level of ingenuity associated with... his last name + bed.

When Murphy Co. applied for a Murphy bed trademark, it was denied twice by the PTO because the phrase, "Murphy bed", had become generic and merely descriptive. This decision was upheld by TTAB. Unfortunately for Murphy, his name was so creative for the wall bed he invented, that the general public turned Murphy bed into a generic term. According to Murphy, a term is generic when it is commonly used to depict a genus or type of product, rather than a particular product. Murphy bed had turned from a phrase depicting a particular product, into a term used for any bed that could be concealed in a wall closet.

Murphy shows that firms are not safe from genericide. When the public popularizes a term to such an extent as to make it generic, firms are just plain out of luck. According to the Section 14, a mark that has become generic may be cancelled. Therefore, even if Murphy's trademark had been approved, it most likely would have been cancelled by the court's ruling. Names that have lost their trademark due to genericide include yo-yo, aspirin, and Monopoly. Is it fair to punish firms because they have created brand names that the public adopts into generic terms for a type of product?

When firms lose trademark on brand names, they could potentially lose a lot. Brand equity has been gaining increasing importance in the business world. Especially with globalization, it is important for companies to have strong brand equity so that the firm can distinguish itself from its competitors, signal quality, and turn customers into repeat buyers. More and more, profits seem to be positively correlated to the level of brand equity. As a result, firms are appropriating a good percentage of their budget towards brand marketing. When a company loses the trademark on its brand name, it also loses a part of its competitive advantage.

In order to try and escape genericide, firms can police their brand names. However, this will most likely be effective only if done early in the marketing of the product's life cycle. Companies need to try and distance the names of their products from generic product categories. For example, if Otis had advertised its escalators as, "Escalator electronic stairs", the term escalator may have escaped genericide. If a company advertises its name as an adjective, rather than a noun, it will help it escape genericide. Another example is Xerox. If Xerox had emphasized Xerox copiers, then it may have avoided any dangers of becoming generic.

In conclusion, firms need to be careful to protect their brand names from genericide. If they don't, they stand to lose their trademark and part of their brand equity. From the beginning, firms should police their ads and promotions to ensure that their name is not perceived as generic. Brand names will most likely have a greater chance fighting genericide if the name is used as an adjective, rather than a noun. Because media plays a big role in influencing consumers, companies should exploit marketing campaigns to distance trademarked brand names from generic categories.

HOW TO MAKE AN ARCHITECT CRY: TRADEMARK PROTECTION FOR DESIGN

[APOLOGIES ALL -- THE FIRST VERSION OF THIS POST EXCEEDED THE CP WORD LIMIT. THIS IS THE OFFICIAL VERSION -- IDENTICAL EXCEPT AS TO DELETED MATERIAL]

This commentary post considers the effects of recent decisions on the application of trade dress protection to architectural designs and similar works within a class I denominate “design.” Specifically, it discusses the precedential effects of Supreme Court decisions in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (herinafter Two Pesos) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (hereinafter Wal-Mart) and the decision of the Sixth Circuit in Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998) (hereinafter Rock and Roll).

BEGINNING WITH SEMANTICS

Look up design at dictionary.com [here] and you’ll get a veritable smorgasbord of definitions – verbs of many varieties and nouns of many definitions. There is much of relevance in the semantics, but this muse could go on too long, so I limit myself to two observations and a statement of choice.

First, the etymology of the word implicates the relevance of the subject to the concept of trademark law. According to the web site, the roots of the modern design are in the Middle English designen, which is in turn derived from the Latin designare, meaning to designate. Trademarks are of course things which serve to “identify and distinguish” the goods of one person from those of another – i.e. to designate the source of a product and to create between buyer and seller a mutually beneficial relationship of trust – an informal contract (warranty) of quality or at least serviceability. The roots of the semantic concept of design implicate the suggestion that it may serve a significant definitional or labeling function.

Second, a fundamental decision is revealing. One protects a thing rather than an action (the product of effort rather than the effort itself) – thus the aspect of the term I seek to discuss must be a noun rather than a verb. Note however the oft-stated axiom that, “form follows function.” Some hold adherence to this “rule” to separate fine art from industrial design. In that view, which I think suspect, if function comes first and form follows, the intrinsic value of the work as design (i.e., the thing that intellectual property might seek to protect) is substantively diminished – perhaps even entirely sacrificed.

Finally, from among the definitions offered, I choose the following for purposes of this discussion:

“[A]n arrangement scheme; ‘the awkward design of the keyboard made operation difficult’; ‘it was an excellent design for living’; ‘a plan for seating guests’ [syn: plan].” Dictionary.com, see supra, citing WordNet ® 1.6, © 1997 Princeton University.

Contrast the sense of some of the other uses of the word at the web site. My subject is neither the functional act of design ("Chanel designed the famous suit") nor its physical product (“the coach had a design on the doors”) rather something real but intangible that exists between process and product, something that I propose to classify as idea, an important concept in the context of intellectual property.

ARCHITECTURE

The discussion below will use architectural design, with which I am familiar from a previous life, as a paradigmatic example. In that context, consider the question of how to make an architect cry. It’s actually quite simple. You call him up and read him or her a few words excerpted from Justice Scalia’s opinion in Wal-Mart.

Writing for the unanimous Supreme Court of the United States, Justice Scalia held: “It seems to us that design, like color, is not inherently distinctive.” Wal-Mart at 212.

I read Justice Scalia’s words to an architect, former client and continuing friend. I don’t think I actually made him cry, in one view however, his reaction may be even more troubling. Palpable electronically across three thousand miles was the sad smile of recognition of a problem he has struggled with for his entire career. American society, does not seem to value what he does. As the Justice’s language implies, our intellectual property system generally treats form as a subject secondary to function and gives it only secondary protection.

BUT DID YOU MEAN TO MAKE HIM CRY?

Of course the quote is out of context, and the Justices might argue that the word “inherently” in reference to the Court’s decision has the sense of “merely” – i.e., that what he meant (and in fact later said) was that, “… product design almost invariably serves purposes other than source identification.” Id. at 213.

But consider the plain meaning and the effect of Justice Scalia’s ruling. By holding that design is never inherently distinctive, the Court requires persons seeking trade dress protection for the design of their products (as opposed to packaging – ref. Two Pesos – but apparently including the mysterious realm of tertium quid) to first prove the establishment of secondary meaning.

Perceived as a system of defining value, the law as defined by Wal-Mart seems to say that good design is less valuable (or at least less worthy of protection) than good name selection. Make up a fanciful name (Exxon) and you will be granted protection – create a distinctive design and you will be denied similar protection unless and until you are able to prove that consumers have grown to identify your product with that design.

THE ROCK AND ROLL HALL OF FAME

So what does this mean in the context of architecture? Was my friend right to be saddened by the broad legal implications of Justice Scalia’s words or was he reading in content (discounting the value of his life work) that the Law does not actually contain?

Consider Rock and Roll. Mentioned in our casebook (p. 569), the opinion and dissent in this case provide a wealth relevant to the questions above.

At issue was the status under trademark law of I.M. Pei’s design for one of the landmarks of modern architecture. If you are unfamiliar with the building, you can get a taste of the design [here].

The District Court’s decision had classified the design of the museum as a form of trade dress, protectable under the Lanham Act, and ruled that a photographer’s unauthorized commercial use of images of the museum infringed on the protection the law provided for such trade dress. The appellate panel was divided. Its two junior members agreed on an opinion reversing the decision below, holding that the Museum’s design was not distinctive:

Having determined the museum’s trade dress not inherently distinctive, the court looked to the question of secondary meaning, found the Museum’s burden not to be met, and overturned the decision that their had been infringement on ground that there had been no protected legal right to infringe.

Martin Boyce, Jr., the Chief Judge of the Sixth Circuit and the third member of the panel that heard Rock and Roll, dissented. I found his relatively brief argument persuasive, and recommend it to those who find this topic interesting.

RECONCILING THE CASES

Note that Rock and Roll preceded Wal-Mart (I can’t believe that I just wrote that sentence). Scalia’s “fanciful” (I wonder if it could be trademarked?) dissection of the world of trade dress into separate realms of product design, packaging and tertium quid was still no more than a twinkle in his eye. Though it is only five years old, Rock and Roll must be viewed in the context of the Supreme Court’s subsequent decision, particularly if it is to be considered relevant a national trademark law precedent.

Rock and Roll can be read to be either consistent or inconsistent with Wal-Mart. The critical question is whether the trade dress at issue in Rock and Roll (building design) lies within the same realm as that in Two Pesos, (restaurant décor), or that in Wal-Mart (clothing design).

Wal-Mart specifically addressed Two Pesos and concluded that the restaurant décor was, “not … design … [but] either product packaging … or else some tertium quid that is akin to product packaging and has no bearing on the present case.” Wal-Mart at 215 (emphasis in original). This conclusion, counterfactual from the perspective of design professionals, led him to conclude that the 1992 decision in Two Pesos (holding that proof of secondary meaning was not required to obtain trade dress protection for restaurant décor) was not inapposite that in Wal-Mart (holding that such proof was required for clothing designs).

From the viewpoint of an architect or other design professional, the building design in Rock and Roll would be similar to the restaurant décor in Two Pesos. Both represent the product of the intellectual effort of an architectural designer. The dissimilar results of the two case would be in irreconcilable conflict, and since Wal-Mart affirms Two Pesos it would be interpreted to overturn Rock and Roll. Good news for my friend the architect: despite the ominous sound of Justice Scalia’s language, the effect of his ruling is to mean that while what he does is no longer design (it’s packaging) – it can be inherently distinctive and just as worthy of trademark protection as “Exxon”.

But wait. Is this a reasonable reading? Holding that a building design such as that at issue in Rock and Roll does not constitute design would seem counterfactual. In this view courts would be likely to see Two Pesos as a special case, a limited carve-out of certain types of designs of limited idea-value (mere color schemes, for example) as more akin to packaging than design. A building design would be another matter entirely, clearly falling within the plain meaning of the category of trade dress that Justice Scalia labels “design” and therefore requiring secondary meaning. In this view Rock and Roll would be consistent with both Wal-Mart and Two Pesos and, importantly, Two Pesos would be modified (severely limited) by Wal-Mart.

I tend to think that the second view of the effect of Wal-Mart, which has the semantic virtue of giving the word design (as a subcategory of trade dress) a meaning consistent with at least some of its existing dictionary definitions (rather than creating a new one) is likely to prevail. Bad new for my friend: while he is still a designer as opposed to a packager, his work can never be inherently distinctive and is thus less worthy of trade mark protection that “Exxon.”

The three decisions within eight recent years leave the water muddy, implicating the argument made by the respondent in Wal-Mart that the proposed distinctions would create an unmanageably poorly defined boundary, “between product-design and product packaging trade dress.” Wal-Mart at 215. Justice Scalia discounted this concern. “We believe,” he said, “that the frequency and the difficulty of having to distinguish between product design and product packaging will be much less than the frequency and the difficulty of having to decide when a product design is inherently distinctive.” Wal-Mart at 215. One could view Rock and Roll as pre-existing evidence (evidence of which the Court should have taken note) that this might not be the case.

CONCLUSIONS

In my opinion, Rock and Roll was wrongly decided, Chief Judge Boyce having gotten it right and his colleagues having gotten lost in the trees while looking for the forest. Similarly and though I do not think that Two Pesos was a packaging case, I think the Court got that one right.

Finally, and though I am not as convinced that the outcome was incorrect, I think that Justice Scalia’s argument in Wal-Mart is facially counter-factual. To say that design cannot be inherently distinctive is from my perspective simply wrong. I think that a better rubric for resolving the inherent conflicts is a more coherent definition and application of the functionality requirement. Thus I would be much more comfortable if the Court in Wal-Mart had found that the design of the clothing at issue there had a utilitarian as well as a labeling function and was not entitled to protection because it was functional and such protection would have had anti-competitive effect.

Boy Scouts and Trademarks

An Eagle Scout and former adult volunteer with the Boy Scout movement, I am often reluctant to put the Boy Scouts affiliation on my resume. Proud of my own accomplishments within the program, I also feel the group has a legitimate stigma attached to it. The organization is certainly discriminatory against traditionally disadvantaged groups. However, the hands-on educational opportunities provided within the program, combined with its overall structure, offer unique promise to those who are allowed to participate. Some time ago, my girlfriend and I developed the idea of creating a “Boy Scout” Troop that would not obey the discriminatory rules and would not be registered with the national organization. Troops could be male, female, or coed. Perhaps a competing national scouting organization could eventually be established, less misogynistic and homophobic. Female, male, and coed organizations could all use the same foundation. I expect many of the boy-only troops would rather be affiliated with such an organization. Eventually, the two groups would merge with more widely acceptable philosophies. For the purposes of this essay, I will call the alternative organization “New Scouts.”

Throughout the semester, I’ve been considering the feasibility of this idea in the context of Intellectual Property law. Copyright concerned me at first, but the verdict of Baker v. Selden seems decisive. Anyone should be free to practice the art taught by a book, such as the Boy Scout Handbook. Copyright of the Handbook does not offer Boy Scouts exclusive rights to the skills and organization presented therein, any more than Selden could enjoin Baker from making similar forms. Similarly, patent protection does not bar entry. A business-model type of patent cannot exist for Scouting, as the movement is too old and there are similar organizations nationally and abroad.

Trademark law, however, presents another set of challenges. The group proposed would want to use a myriad of insignia and designs produced by Boy Scouts. These symbols have established meaning within and beyond the Scouting literature, and the effort required to design a parallel system would be extremely wasteful, perhaps even a barrier to entry. I would had expected Boy Scouts’ badges would be registered as collective as the decorations on the badges signify things about the wearer. However, a search on the PTO website reveals that Boy Scouts insignia is mostly registered as Service Marks.

To defend its right to use these badges, New Scouts must show that Boy Scouts does not have exclusive rights to these symbols. The Lanham Act §2, 15 U.S.C. §1052, could be used to this end. Section (b) is the most simply applied, as the Boy Scout uniform and some badges consist of “the flag [and] other insignia” of the United States. The private organization’s full name is “The Boy Scouts of America.” This name, the flag, and the national symbol (the eagle) are used in several of the most important Boy Scouts badges. All are invalid Service Marks in accordance with Section (b).

However, this applies to only some of the scouting insignia. Through Section (a), one can show remaining insignia have “immoral matter” The “immoral matter” claim could be based on the association between all Scouting symbols and the bigotry engendered by the Boy Scouts. In Harjo, 46.6% of the general public and 36.6% of Native Americans found the term “redskin” offensive. The court held that Section (a) nullified the Redskins trademark, because the term “may disparage Native Americans, as perceived by a substantial composite of Native Americans.” Any symbols associated with Boy Scouts disparage those groups excluded from the movement, as they are universally recognizable as symbols of an organization known for its homophobic and misogynic nature. A survey similar to that in Harjo would show that one or both of the victimized groups – homosexuals and women – see strong associations between the symbols and Boy Scouts, and between their treatment by Boy Scouts and their own struggle for equality. The Redskins name and symbol were offensive because they actually depicted the group oppressed. This is not the case here; the Boy Scouts badges do not depict homosexuals or women. However, they can nonetheless be disparaging to these groups, just as a swastika – to a much greater extent – can be disparaging to Jews, although it does not depict them.

Section 2(a) of the Lanham Act also denies trademark rights to marks which “falsely suggest a connection with persons … or national symbols, bring[ing] them into contempt, or disrepute.” The false connection to persons is present wherever Boy Scouts makes use of Native American imagery, which they do fairly frequently. A quick search on the USPTO website reveals many such Boy Scouts marks, the first in sequence being Serial Number 75600412. This symbol depicts a stone arrow, the text “Order of the Arrow,” and the text “Boy Scouts of America.” The Harjo case rested in part on the offensive nature of the term “redskin.” There is little offensive in the term “arrow,” except that it might encourage a view of Native Americans as savages. Regardless, the symbol brings Native Americans into contempt, as it falsely connects them to an organization which several victimized groups resent.

While many or all of the marks registered to Boy Scouts could be invalid, the successful prosecution of their invalidity may depend on the identity and the timing of the plaintiff. If New Scouts were to become well-established before addressing this issue, they could be seen as unfair competition to Boy Scouts, and to be working against the public interest; Boy Scouts has been creating materials and enriching the public domain, while New Scouts would merely be requisitioning these creations at the expense of their creator. “There is no explicit federal policy to encourage the creation of more trademarks,” (Text, p531) but Boy Scouts also creates copyrighted and patented material. If homosexual, female, or Native American interest groups broached the trademark issues prior to the creation of a New Scouts movement, a finding of invalidity would be more likely, as questions regarding unfair competition and enrichment of the public domain would not be raised. In fact, litigation on Boy Scouts sexuality policy has already gone through the Supreme Court. In Boy Scouts of America et al. v. Dale, the Court found that Boy Scouts was within its rights to remove Dale from the organization, in which he served as an Assistant Scoutmaster, on account of his being homosexual. Therefore, a related interest group may be willing to work in the interests of a New Scouts movement and, as a disparaged group, preemptively tackle the symbolic representation of the Scouting movement.

Given the three possibilities for invalidity – use of United States imagery, use of Native American imagery, and symbolic representation of an oppressive group – it seems likely that most or all of the Boy Scouts insignia could be used by a competing organization without trademark restrictions.

Codifying the Right of Publicity through Trademark?

The common law has long recognized a “right of publicity” - the right of a celebrity to protect his or her name, image, likeness, and any other indicia of identity from unauthorized and uncompensated appropriation by others seeking commercial and economic benefits. Trademark law, codified in the Lanham Act, 15 U.S.C. § 1127, recognizes a property right to “any ... device ... used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” Lanham Act § 45, 15 U.S.C. § 1127. Just as “brand leveraging” has extended trademark law to the protection of goodwill, “celebrity brands” can be seen as extending trademark law to embody the right of publicity.

The traditional rationale underlying trademark law has been deception-based. Under this “consumer protection” theory of trademark, the efficiency advantages that result from a trademark’s quality control and certification functions justify trademark protection. The deception-based theory of trademark has been undercut by the recent “propertization” of trademark law: the expansion of trademark though the strengthening of the bundle of rights associated with a particular trademark and the expansion of trademark protection to include “brand leveraging” - capitalizing on a popular trademark by putting the trademark on an ever wider variety of products, some of which were only tangentially linked to the type of product on which the trademark originally appeared. According to this alternative, property-based theory of trademark, since a brand stakes out an image, defined by associational markers in the consumer’s mind, and to the extent that another “poaches” on the “metes and bounds” of the image, a brand owner is entitled to seek protection through trademark registration.

The property-based theory of trademark law enables trademark protection to be extended to intangible products, such as goodwill. Goodwill, also known as “brand equity,” is the economic value of the positive associations that comprise a trademarked brand. “Brand equity” has been defined as “the set of assets and liabilities that a trademark adds to or subtracts from the value provided by a product or service to a business or its customers.” David A. Aaker, Building Strong Brands 7-8 (1996). Since brands have equity that can be valued and included as assets on balance sheets, brands have become goods in themselves. Furthermore, as a result of “brand leveraging,” brands have even become more valuable than the physical assets of a business. For example, the value of Coca-Cola’s goodwill is estimated at $24 billion. See Industry Calls for Stiffer Enforcement of Anti-Counterfeiting Laws Abroad, 44 Pat. Trademark & Copyright J. 585, 586 (1992). Therefore, the goodwill value of a leveraged brand can be seen as a good in itself, independent of the product the trademark represents, and separately entitled to trademark protection.

Just as “brand leveraging” extends trademark protection to goodwill through the recognition of the commercial value of a brand, “celebrity brands” extend trademark protection to the right of publicity by recognizing the commercial value of a person’s identity or “persona.” A “celebrity endorsement” – in which a celebrity enhances the marketability of a commodity by associating with that product - is merely one of the many investments a corporation will make to increase its brand equity. On the other hand, a “celebrity brand” constitutes the use of a living, breathing person as the brand around which a company is built and its products are sold. In the case of a “celebrity brand,” a celebrity’s “persona” - all the elements, whether visual, verbal, or auditory, which constitute the celebrity’s recognition value in society - is commodified and can therefore be protected by trademark law. Celebrities can be commodified as brands because they function in the marketplace to order demand and stabilize sales patterns. Bill Ryan, Making Capital from Culture, The Corporate Form of Capitalist Cultural Production 185 (1992).

Both the property-based and deception-based theories of trademark law support trademark protection for a celebrity’s persona. First, since the celebrity spends time, money, and energy in developing a commercially lucrative persona, the celebrity is entitled to be rewarded for these investments through trademark protection. Second, granting exclusive control of his or her persona to the celebrity protects consumers from possible misrepresentation, deception, and false advertising. Examples of well-known “celebrity brands” include Martha Stewart, Donald Trump, and Jennifer Lopez. The commercial value of these “persona brands” can be seen in the fact that “the most valuable asset owned by Martha Stewart Living Omnimedia is the trademark on all things Martha.” James B. Astrachan, “Martha’s Greek Tragedy,” The Daily Record (Baltimore, MD), March 12, 2004.

In conclusion, the common law right of publicity essentially gives a celebrity a legal entitlement to the commercial value of her identity, thus enabling her to control the extent, manner, and timing of its commercial exploitation. One of the main premises of intellectual property law is that society has an economic and moral interest in preventing people from free riding. Patent law, for example, gives inventors a "property right" in certain inventions. Copyright law provides a similar protection for authors. Finally, trademark protection is granted to protect consumers by rewarding the independent investments of producers, including investment in such intangible goods as goodwill or persona. The common law right of publicity is therefore embodied in trademark law.

Bringing Certainty and Consistency to Claim Construction

With the explosion of patent litigation in recent decades, claim construction has become a critical issue in patent law. Claim construction is the initial and most important step in patent infringement suit, because it defines the meaning and scope of claim terms. The manner in which the patent terms are construed is often dispositive of the infringement analysis. Therefore, the issue of who is to construe the patent claims, the judge or the jury, is crucial. In the landmark case of Markman v. Westview Instruments, the Federal Circuit announced that claim construction is a matter of law, to be decided exclusively by the courts. Additionally, since claim construction is a matter of law, the Federal Circuit reviews district court findings de novo, giving the district court’s interpretation no deference. In a unanimous opinion, the Supreme Court affirmed the Federal Circuit’s holding in Markman.

The Markman case was essentially an attempt to resolve the unpredictability and inconsistency that plagued patent litigation. Federal circuit judges and commentators commonly attributed the uncertainty problem to the inability of trial courts to properly define the scope of the patent claims in jury trials. Both the Federal Circuit and the Supreme Court recognized the necessity for certainty and predictability in claim construction. Uncertain litigation outcomes could have the effect of inhibiting disclosure of inventions in patent documents or filing of patent applications. Also, it is important that competitors have the ability to determine the scope of the patentee’s right to exclude others, because otherwise competitors may deterred from marketing new products because of the threat of liability. In either case, the public will ultimately be harmed because it will be deprived of the benefit of new technology. The Supreme Court concluded that judges, rather than juries, are better suited to the task of claim construction because judges are more skilled at construing written documents. Presumably, by allocating the exclusive authority to interpret claims to judges, the important goal of uniformity and predictability in the treatment of patents would be satisfied.

Unfortunately, there is evidence to suggest that the Markman decisions have not solved the problems of uncertainty and unpredictability in patent litigation. Studies show that the Federal Circuit reverses the district court’s claim construction in 33% to 40% of the cases it receives on appeal. Clearly, such a high reversal rate does not allow a patent litigator to accurately assess the strengths and weaknesses of his/her case, or to predict the outcome of the claim construction with any degree of confidence. Further, little guidance is being provided to inventors and competitors seeking to define the boundaries of the inventor’s property right. (Moore, 2001).

From one perspective, the high reversal rate for claim construction indicates that district court judges may not have competency to accurately interpret the meaning and scope of complex, technical patents. If one accepts this conclusion, perhaps the only acceptable solution would be to involve the final decision-maker, the Federal Circuit, earlier in the litigation process. This suggests that claim construction decisions should be appealed on an interlocutory basis. Thus far, the Federal Circuit has refused to consider claim construction issues on interlocutory appeal, insisting that the trial court fully litigate the case before it will consider the claim construction determinations. This has the effect of further increasing uncertainty and thereby encouraging more litigation, and of raising litigation costs substantially because of the high rate of retrial. In all likelihood, the Federal Circuit’s refusal to accept interlocutory appeals is motivated by a concern about being inundated with work.

Some commentators have suggested that the Federal Circuit could strike a compromise by adopting a policy of granting interlocutory appeals of claim construction issues in certain limited circumstances, such as after a summary judgment grant of infringement or non-infringement. If the Federal Circuit steadfastly refuses to accept any interlocutory appeals, a statutorily imposed obligation would be necessary in order to introduce some degree of accuracy into the process of claim construction. (Moore, 2001).

However, others would argue that the problem does not lie in the inherent incapacity of district courts to interpret complex patent terms. Instead, the main problem is the lack of guidance provided by the Federal Circuit regarding the interpretive methodology to be used when construing a patent claim. There are two primary methodologies that the Federal Circuit has utilized. The first approach is “proceduralism.” This methodology emphasizes a formal process that starts with a presumption in favor of the ordinary meaning of claim terms, and allows deviation from ordinary meaning only in particular circumstances. For example, in Johnson Worldwide, the Federal Circuit noted two situations in which the ordinary meaning of a claim term can be overridden: 1) if the patentee has provided a specific definition for a claim term; and 2) where the claim language is unclear. The alternative approach is the “holistic” approach. This methodology favors a contextual understanding of claim terms, based upon the particular facts and circumstances of a case. This approach requires a consideration of all types of information sources. (Wagner and Petherbridge, 2003).

In a recent study, it was revealed that the Federal Circuit has utilized the procedural methodology in 63% of its opinions, and the holistic methodology in 37%. Assuming that the outcome of claim construction directly depends upon which interpretative methodology is used, this jurisprudential split offers an alternative explanation for why reversal rates of district court claim interpretations have been so high. From this perspective, the appropriate response from the Federal Circuit would be, basically, to decide upon one interpretive methodology and stick to it. This would provide guidance to the district courts regarding the process to be used in interpreting claim terms, the role of extrinsic evidence, the hierarchy of information sources, and the appropriateness of expert testimony. Presumably, reversal rates on appeal would decrease as a result.

Ultimately, I doubt that the high reversal rate is reflective of incompetency on the part of district court judges. District court judges must decide difficult cases in many areas of the law that involve complex, scientific information. The main problem, I believe, is that the Federal Circuit has failed in its task of promoting uniformity because it has vacillated between different interpretive methodologies to decide issues of claim construction. That said, I think there is a strong argument that Federal Circuit got in wrong in Markman when it decided that claim construction is a matter of law that gets reviewed de novo on appeal. Commentators have agreed that allocating the authority to decide claim construction issues to judges, rather than juries, is a good thing. However, the Court did not have to decide the law/fact issue in order to hold that a judge has superior ability to interpret claims, because it could have justified its conclusion based upon functional considerations. If you believe that district court judges can interpret claim terms with a fair degree of accuracy, there is really no reason for the Federal Circuit to review de novo and fail to give deference to the district court’s conclusion (Nard, 2000).

There are, in fact, reasons to believe that there are significant advantages to giving deference to district courts. When deciding claim construction issues, the judge must determine the meaning of the claim terms to a person of ordinary skill in the art. The Markman Court gave district court judges broad discretion to hold a hearing (called a Markman hearing) for the purpose of considering extrinsic evidence (including dictionary definitions, treatises, or expert testimony) in order to enhance its understanding of the relevant technology. District court judges enjoy a superior position to conduct claim interpretation, because only trial judges can spend time reading all types of relevant materials, listen to the testimony of expert scientists, and deliberate over the meaning of claim terms. Federal Circuit judges, on the other hand, are more removed from the evidence. Obviously, extrinsic evidence plays a more important role if the court uses the holistic methodology. However, as noted above, extrinsic evidence can play a role if the court adopts a procedural methodology, because some such evidence can help to establish ordinary meaning, and because it will have to be considered in cases where ordinary meaning can be overridden. Therefore, whichever methodology is adopted, district court judges are at least as competent as Federal Circuit judges to interpret claims, and are arguably more competent.

Additionally, greater deference to district court judges will result in earlier certainty and resolution of claim scope. This would have the further effect of discouraging appeals and encouraging settlements early in the litigation process, thus lowering the enormous litigation costs attending patent infringement suits. Moreover, an increased rate of affirmance by the Federal Circuit would improve confidence in the judicial system, both for district court judges and for inventors. District court judges must be extremely frustrated by the likelihood that they will be reversed on appeal, and if they were given more deference, perhaps they would invest more thought and effort in claim construction. Likewise, inventors and competitors must continue to be unnerved by the lack of predictability and certainty in the system, not to mention the high costs of litigation.

In conclusion, by adopting a particular interpretive methodology to claim construction, and by giving greater deference to district court interpretations, perhaps the Federal Circuit can finally achieve its ultimate goal of bringing certainty and consistency to patent law.

References

Craig Allen Nard, A Theory of Claim Interpretation, 14 Harv. J. Law & Tec 2 (2000).

Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 Harv. J.L. & Tech. 1 (2001).

Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995).

R. Polk Wagner and Lee Petherbridge, Is The Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. Penn. L. Rev. (2003).

DNA Homology to Written Description and Enablement Requirements

The wealth of information available in a given gene normally falls into one of two categories of significance to today’s scientists: the sequence itself, or the role the protein for which the DNA codes plays in a given molecular mechanism. The judiciary’s confusion over patenting DNA seems to be linked to this duality of information – Is a gene really patentable when its sequence is known? When its function is known? How broad should the protection over the gene be, if the applicant has focused mainly on one or the other of these aspects?

This murky doctrine can be clarified by aligning the two kinds of patentable genetic information to the patent requirements, and seizing on the convenient pairing of the two. The founts of information springing from DNA fall, estimably, into process and product; so do the enablement and written description elements of a patent. Applications and adjudications centering around sequencing should be evaluated, by the PTO and by the courts, primarily by the written description requirement, while the enablement requirement readily functions as the dominant source of critique in a function patent.

The need for the enablement requirement is most clear in chemical soup patents, where the novelty and usefulness comes of combining several known elements. The information is within the process of combining the elements, and not in the already well-known identity of those elements themselves. As cited in The Incandescent Lamp Patent excerpt in the casebook, the court in Grant v. Raymond realized the potential of the enablement requirement to “apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and the competing manufacturers of dealers of exactly what they are bound to avoid.” 6 Pet. [31 U.S.] 218, 247 [1832].

The same is true for a protein soup patent. If a scientist is researching how the protein for which the gene codes combines with other proteins, enzymes, and biomolecules, the useful information is in how the elements were combined with the gene. This information has its source and usefulness independent of sequence details. Such process-based claims about the role of the protein are best supported by the enablement requirement.

The Amgen case illustrates the need for this allocation. Plaintiff’s patent was novel in its sequencing, but used the written description requirement to cover a “biological property”, or role of the protein. Had plaintiff had adequate process-based evidence in the enablement requirement to support the claim of patenting the interaction of proteins, protection of the biological property would have been appropriate.

Sequence claims are best supported and defined by the written description requirement. The Lilly court recommended written description as a filter of claims prone to premature protection; sequence claims are certainly in this category, as indicated by the debate over whether they are even protectable at all. In Fiers v. Revel, the court correctly identified that in a sequence patent, the written description ought first and foremost to contain the actual sequence. A “wish, or arguably a plan, for obtaining the DNA” such as would appear in the enablement requirement is an inappropriate foundation for a sequence-based patent. Fiers, 984 F.2d 1164, 1170-1171.

For sequence patents, processes of combination are not important, rather, the focus is on defining one of the elements in isolation. The value in a DNA sequence is inherent in the string of nucleotides itself. Given the state of the art, a scientist wishing to use a patented DNA sequence need not know, in great detail, how it was derived. The sequence itself, rather than the process leading to its discovery, provides the knowledge needed to sequence suspected homologous proteins, tag similar DNA sequences, and predict suspected function of the patented gene. As such, claims on sequences alone should be defined by the written description requirement. While there is not any inappropriate protection within the enablement requirement, as it simply explains the state of the art, judicial attention to this aspect is misdirected and dilutes the clarifying effect of the doctrinal distinction introduced here.

Again, Amgen is illustrative of the confusion that stems from mixing the two areas of the patent and the two forms of DNA information. Simply naming the biological property in the written description section, while focusing on sequencing processes in the enablement section, led to judicial confusion. If the PTO and courts had followed the doctrinal improvement suggested here, the inconsistency between Amgen’s sequence-heavy enablement and the function-heavy written description would have been readily apparent.

The policy behind patents supports isolating process and product in this way. Distinction between protein role and sequence leaves room for add-on discoveries. The Incandescent Lamp opinion recognized the social benefit arising from a confined enablement requirement in its call for “further investigation.” If a primarily process-based applicant claims the gene and protein in its entirety, without having actually sequenced and defined the protein, a hole exists in the information that will not be filled until the patent expires. By defining the scope of sequence and function protection with the aid of the already present categories of information required in a patent, protection will be more narrowly defined and more protein research can be done without inappropriate infringement. Both the sequencing scientists and the functional scientists can apply for mutually exclusive patents on the same gene. It may be that a licensing scheme will become necessary, given the relation between function and sequence, but this is not a radical or encumbering condition.

Given the extensive games of syntax and word choice already played in patents, one might argue that content-based distinctions would be impossible to enforce. The beauty of the sequence-role distinction is that these categories of information are derived in experimentally isolated ways, and are useful for different reasons. The sort of information that is really being patented is indicated by the experiments that were done. One laboratory may develop primers and perfect a PCR cycle to sequence the DNA, while another will use the gene as an ambiguously defined shuttle to place the protein in experimentally useful environments, such as GFP tagging and transfection assays. As explained above, the well-known state of the art of primers and PCR will normally exclude novelty from the process of sequencing, while the knowledge of the role of a protein comes from the process of combining it with other proteins. Thus, the experiment itself is an indicator of what ought to be protected, and thus, what part of the patent ought to contribute most to the boundaries of the claim.

The author acknowledges that as protein function flows from DNA sequence – the Central Dogma of molecular biology – most genetic discoveries cross between these categories. This doctrinal recommendation is most useful in cases where functional analysis is done blind to sequence, or a mere sequence is patented without an eye toward function. Applicants whose claims encompass both categories can use the categorical analysis explained here to fully flesh out the two aspects of their claim and gain the most accurate protection over both.

In summary, the confusion over what scope of protection ought to be allowed over a gene can be remedied, at least in part, by aligning the product and process aspects of genetic information to the product and process categories inherent in patent applications. The sequence itself, bald information without a necessary foundation in process, is best defined by the written description. Derivations of protein function, through processes akin to chemical soup patents, are best supported by the enablement requirement.

Patents for Computer Software

In my opinion, patents are a more appropriate form of intellectual property protection for computer software than copyright. As applied to computer software, patent protection better achieves the important balance between protection for inventors and provision of benefit to others. Yet, surprisingly, it has been far more common (and less controversial) to grant copyrights rather than patents for computer software (e.g. Diamond v. Diehr)

Whether one adopts the idea/expression dichotomy or the applied art/useful article distinction (used in Brandir International, Inc. v. Cascade Pacific Lumber Co), computer software’s value stems almost entirely from its utility rather than from its aesthetics (with the notable but commercially insignificant exception of computer art). Although there is a degree of aesthetics inherent within an elegantly-designed computer program (the expression), only a few developers are capable of truly appreciating (or even perceiving) this value. Almost all consumers purchase software for its utility rather than its aesthetics; that is to say, for the idea underlying the software rather than for how this idea is expressed.

Copyright protection extends far too long to be appropriate for the rapidly-evolving field of computer software. Considering that the computer itself is only sixty years old, it seems ludicrous to assert that any software author would require protection of intellectual property for as long as 120 years! Excessively long periods of innovation cause software which is no longer of commercial value to be hoarded or licensed only for excessive prices; this is economically inefficient and thus stifles creation.

Patents require that the detailed structure of the work in question be made open to the public. As the open source movement has demonstrated, publishing the source code permits others to fix security holes as well to suggest (and implement) innovative improvements. It thus improves the quality of software for all which benefits everyone (including the firm which has others conducting its R&D costs while ultimately being able to sell a better product).

Unlike patent law, copyright protection provides an exception for independently-created works. This is the opposite of the incentives desirable in computer software. It is essential that independently-created versions of the same program be protected owing to the great ease involved in precisely emulating a program’s functionality (e.g. Linux) without utilizing any of its source code and especially because look-and-feel is not protected by copyright (Lotus v. Borland). Again, as most purchasers of computer software seek function rather than form, it is essential that independently-developed emulations not be permitted.

Derivative works should be permitted as a way to incentivize continuing development of software, both by the original developer and by the development community at large. Software, by its nature, is almost never truly a “finished product” but rather is a work-in-progress subject to continuing revisions and improvements. It seems only logical that we would want to encourage continuing development rather than a company lazily (and inefficiently) declaring a product done. We should prevent further development of a product merely because the original developer no longer wishes to support it. Either competitive pressures will encourage the developer to continue with development (and endeavor in which its knowledge and experience will provide a significant competitive advantage) or it will abrogate this duty to others; either way all involved benefit.

Finally, as an adjudicative matter, it is probably better for disputes over software intellectual property to handled by the PTO and, ultimately, by the CAFC rather than handled through traditional judicial channels. The PTO and CAFC have both greater independence and more experience than district courts (or, worse yet, state courts) who may be influenced by regional economic and political factors. That is to say, a Washington court will probably be inclined to uphold any claim made by Microsoft than a Utah court (which may in turn be more sympathetic to a claim made by Novell or SCO). Furthermore, software litigation is frequently quite complex and it would be better to have the cases ultimately heard by people with a great deal of experience in handling such matters rather risk a hearing before a district judge in a region without a significant technological economy who may not comprehend (or, indeed, may never have used) software.

In conclusion, patents is more appropriate than copyrights – both theoretically and practically – for providing intellectual property protection for computer software. However, the political power wielded by software companies will probably ensure that copyrights rather than patents continue to be the rule and thus that the system continues to function solely for the benefit of software companies rather than for the benefit of all.