Closing Plenary Session
Jeanne Fromer, The State(s) of Copyright Law
Attempting to collect all state cases that mention copyright.
Atlernative forms of IP, contract law, tax law, laws regulating pysical medium of fixation, copyrightability of state materials, access to gov’t records, authorizing state-authorized business associations to copyright; requiring copyright owners to share copyrighted material; consumer protection laws; education; laws punishing frivolous copyright claims. (Also Washington’s law as discussed by Eric Priest this afternoon.)
What she’s seen: conversion or statutory theft laws applied to copyrightable expression: P bought compilation rights to Chicken Soup for the Soul; published chapters together; court says conversion claims can go forward because there was a contract. Health Communic. Inc. v. Chicken Soup for the Soul Pub’g. Many courts would say this was preempted.
Michigan: prosecution for piracy of someone caught selling DVDs.
Ohio: prosecution for possession of criminal tools for having copying equipment/blank DVDs. (I wonder about these cases after the Arizona immigration case.)
Ark., Cal.: requiring that certain electronic material used in education be copy protected to prevent infringement.
Ohio: denying access to government records because of copyright—teacher trying to get hold of earlier exams to see if they were well-designed; decision in part based on trade secrets too. Rule 123, Arizona: state records can be inspected but can’t be republished without permission of court.
Contract law: DVDCCA v. Kaleidescape—contract over tech to prevent users from unauthorized copying.
Tax laws exempting or lowering taxes from copyright-related profits.
Laws that weaken copyright: higher taxes; punishment for frivolous copyright claims, usually punished for claiming copyright in their names.
Divorce transferring; Alaska provision denying access to public research until “copyrighted or patented”: didn’t seem to understand how copyright is acquired.
Laws forbidding royalty contracts unless the copyright owner provides all sorts of info to other party in advance: Alaska, Ark., Cal.—rights organization or copyright owner can’t enter premises without providing lots of info in writing.
Laws requiring copyright owners to share or divulge expression: Az. Requires public schools to buy materials for which there’s accessible electronic content; Cal requires car manufacturers to make various thins available, including copyrightable info.
Other laws prevent state entities from asserting copyright.
Laws incorporating copyright: Workers’ comp in Cal. says an employee is someone who creates a work for hire for these purposes. Laws governing royalty agreements, where you need to know who the author is for breach/damages.
Preemption concerns with many examples, both under §301 and conflict preemption. Also can bypass lousy federal political economy or create lousy political economies for copyright. Assumes that states will be educated about copyright law, but see Alaska rule.
Q: one way ratchet? More likely to be struck down if they chip away at copyright rights.
A: That’s true—preemption is very important (compare results in piracy cases).
Katz: May seem similar to TRIPS dynamic: baseline always goes plus.
A: Interested that she found some weakening laws like those preventing entry into a business without disclosure: local businesses lobby for it. Wasn’t all a one-way ratchet.
Grimmelmann: Exclusive jurisdiction of federal courts creates comparative expertise, and yet they can’t avoid hearing cases that implicate copyright policy. So there’s jurisdictional questions as well.
Rothman: Difference between ratcheting up and limiting in terms of preemption. States will be most successful helping creators, not the public, so where do you take that? E.g., idea submission cases.
A: favored strong preemption because of balance concerns; courts might see preemption as one way ratchet but she doesn’t.
Samuelson: state camcording laws. State moral rights laws.
A: wanted to survey less obvious things here—will discuss those things in the paper.
Samuelson: what about shrinkwrap enforcement?
Q: state laws against abuse of copyright: outgrowth of “sovereignty” movement popular among prisoners, etc. File UCC liens against people and so on. Are the laws aimed specifically at that behavior? Also pre-1972 sound recordings, based on INS v. AP.
A: recurring pattern so far is prisoners/defendants asserting their names are copyrighted. Prosecutions for false filings have occurred. Pre-1972 rules have been applied to post-1972 recordings because courts are so unsophistication.
Q: what happens in states with more creative industries?
A: Going through states in alpha. order; Cal. has more laws and more cases, such as workers’ comp and tax rules—definitely more lobbying there. Not clear there’s an overarching story.
Pamela Samuelson, Why Gardens, Perfumes, Recipes, DNA, and Mathematical Formulae Are Not Copyright Subject Matter
“Includes” in 102(a) is not supposed to be exhaustive, but how much broader should it be? What is and isn’t a work of authorship (WOA)? Leave aside originality and fixation: can we pull together a theory?
Four approaches in the literature: (1) economic: is a grant of copyright’s exclusive rights likely to induce investments in works of that kind? Will viable markets form around those rights? Then, WOA can mean whatever Congress says.
(2) Legal regime considerations: does the modality of copyright match well with the characteristic of works that need protection: duration, automatic protection on being fixed, thickness etc.? Often paired with (1) and again gives Congress flexibility.
(3) Special nature of authors and their works. Are the creators similar to conventional authors/artists? Is the creative process similar? Are the artifacts they create similar to conventional WOA? Do they express the personality of the author? Do they appeal to the eye?
(4) Communication of intellectual content: do the works communicate info, ideas, aesthetic impressions to other humans in ways like conventional WOA do? Do they promote progress of science/contribute to culture? Are works of this kind engaged in dialogue/discourse with other works/kinds of works? Often paired with (3).
What’s not WOA? Consensus, relatively, on these: perfume, gardens, etc.
Copyright laws until recently were very artifact-specific; WOA is more abstract and forward-looking. But when it comes to acts adding subject matter, most of the arguments in favor were based on economics/incentives. Costly to make, cheap to copy; markets can form around rights, legal remedies fit. But “I’m like them” arguments were also made.”
Burrow-Giles, Bleistein, Mazer v. Stein: court resolves by moving away from subject matter to originality. Baker v. Selden: the one case where that doesn’t happen: no coverage of bookkeeping system. Copyright is for explanations and depictions, patents for useful arts.
Derenberg’s 1956 study construed “Writings” and “Author” in constitution as not intending a limit; instead whatever promotes the progress of science is copyrightable. Was writing this as a way of saying that whatever doubts had existed about Congress’s power to protect sound recordings and industrial designs through copyright, they should be dismissed.
Today, SCt would likely take the same view. We forget that other countries don’t protect sound recordings through copyright but rather sui generis rights; not considered WOA. Product of engineering and not authorship.
DNA: argument in favor is grounded in analogy to computer programs. Legal regime argument based mainly on desire for hook for CC licenses. Yoga sequences: there was a lawsuit, and a Copyright Office policy clarifying that compilation copyrights don’t extend to selection and arrangement of yoga sequences; compilation must consist of subjects matters within one of the 8 listed categories. Calls DNA claims into Q too.
Gardens: 7th Circuit Chapman Kelley v. Chicago. Chicago mistakenly conceded that garden was work of conceptual art. District court said it wasn’t original. But there was creative selection and arrangement. Also talk about whether it was fixed, but it was buried in the ground. Tangible medium of expression? That’s different. Is it a WOA? No, it’s a garden. Not the most persuasively reasoned, but got it right. If you grant him copyright, all gardens get it.
No unified field theory and some arbitrariness, yes, in the lines being drawn, but the four considerations weigh differently here than across the Atlantic. Economics given more weight. Sound recordings and software were crammed in and made the law less coherent; sui generis right would have been better to prevent record industry from messing up general copyright law.
Next Q: 3-D printing and stereolithography.
Buccafusco: can you move us to a unified field theory?
A: thinking so far: When all four line up, that’s copyrightable subject matter. Even Mel Nimmer, when it came to computer programs, was concerned about extension because he feared that copyright would become a general misappropriation law. There are reasons not to want that to happen, esp. with statutory damages; if everything original and fixed is copyrightable, that’s a bummer.
Newman: necessary criterion: designed selection and arrangement of sensorial perceptions. Garden is fixed, but the end result of what people perceive can’t be fixed because there’s too much intervening randomness. The gardener can’t fix petals/colors. God is intervening.
But isn’t that always true? Well, a bit, but garden is very clear example.
A: that’s among the things on the 7th Circuit’s mind. A lot of plants Kelly first put into the ground didn’t work out, and seeds made their way into the garden, so it wasn’t and couldn’t be the garden he designed. To say the city couldn’t change the parameters of the garden during his life (per VARA) was worrisome. Tony Reese is writing a paper saying any new type of WOA that wasn’t contemplated in 1976 can be considered, but not types that were known and not listed in 1976—that would exclude gardens; Congress was just trying to leave it open for new technology unanticipated by the present Congress, so it wouldn’t have to amend the law the way previous Congresses had been required to do by photos, films, etc.
Stuart Graham & Galen Hancock, Setting Patent Fees
In past, Congress set fees; now has increasingly allowed Patent Office to set fees, though with various constraints. AIA provided general authority to set fees, allowing it to use them as a polic instrument without regard for activity-based cost recovery. Leads to a need for evidence on what the fees should be and what their effects are.
1790: fees depended on the number of words in the specification, about $4. Then a flat rate of $30; relatively constant in nominal terms for a while. 1980: maintenance fees introduced.
Administrative tools are examination, reexamination, litigation for maintaining patent quality; Price system, it’s application fees pre-grant and renewal fees post-grant.
Price elasticity of demand. Roles of information, uncertainty, other factors.
Patents that aren’t maintained are effectively subsidized by those that are. So what’s up? Search and exam costs are substantially larger than fees. Maintenance fees are significantly higher than the cost of keeping the patent in force. Continuations tend to be associated with paying maintenance fees: suggests that applicants may have good early info about potential value.
Pre AIA schedule had opportunities for improvement; rulemaking is a chance to change the system for the better. First rulemaking is likely to be the most significant change in the foreseeable future. Comment at uspto.gov/americainventsact.
Lemley: policy implications—sure seems like Office maximizes revenue by granting lots of patents. When you don’t grant a patent you lose money, when you grant one that has maintenance fees you make money.
A: we’re not a revenue maximizer, though we want to fund our operations. We must set fees in the aggregate to recover cost.
Lemley: should we charge more up front?
A: Please be involved in the process going forward! Everything we’ve learned suggests that raising fees early punishes those who are more uncertain about the prospects of their invention. Using maintenance fees you can deal with uncertainty that has resolved over time. Raising maintenance fees can help people with more valuable patents pay for them.
Michael Frakes & Melissa Wasserman, Does Agency Funding Affect Decisionmaking? An Empirical Assessment of the PTO’s Granting Patterns
Large entities pay larer fees; renewal rates vary across technologies. So will PTO grant more to those who are more likely to maintain, assessed based on the tech class? Will they grant more to large entities when they need money?
As the PTO gets underfunded, we see a differential granting pattern.
Lemley: how does this happen given the lag time? If we’re short on money, we do this in hopes things will improve?
A: large entity is immediate, though maintenance is a tougher Q. If they feel strapped, they may feel they’re likely to be strapped in the future too.
Q: types of applications: maybe large entities patent smaller things to have large portfolios. Can you control for claim length/length of specification etc.?
A: we do control for filing rates of entity size, tech class, etc.