Comparative ads trigger advertising injury coverage

Harleysville Mutual Ins. Co. v. Buzz Off Insect Shield, L.L.C., -- S.E.2d --, 2008 WL 1945784 (N.C. App.)

In early 2005, S.C. Johnson sued Buzz Off, a seller of insect-repellent clothing, in federal court, alleging trademark infringement, false advertising, and related claims. IGT, a second defendant, was added to the case after some procedural maneuvers. In 2006, Harleysville sought a declaratory judgment in state court that insurance policies it issued to IGT didn’t provide any coverage in the underlying suit, or in the alternative that Erie, a different insurance company, was on the hook for defense and damages costs. IGT, unsurprisingly, cross- and counterclaimed for a declaration that one or both of the insurance companies had a duty to defend and for a finding of bad faith breach of the duty to defend, while Erie made the same arguments about Harleysville that Harleysville had made about it.

An insurer’s duty to defend is broader than its duty to pay damages; the duty to defend is measured by the facts alleged in the pleadings. The drafting of the complaint isn’t key; the question is whether the facts alleged disclose a possibility that the insured is liable for something covered by the policy. Doubts are resolved in favor of insureds.

Here, IGT was insured for advertising injury. Advertising injury was defined to include publication of “material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services” and infringement of another’s copyright, trade dress or slogan in an ad.

S.C. Johnson’s complaint alleged that Buzz Off and IGT made false claims through Buzz Off’s website and the websites of its partners. One such claim specifically named S.C. Johnson’s OFF! Deep Woods product; the rest was directed to all skin-applied insect repellants, a market in which S.C. Johnson leads.

The court found that these allegations were sufficient to create a possibility that IGT was liable for a covered act, triggering a duty to defend. False negative comparisons would come within the disparagement provision.

The dissent found that S.C. Johnson’s allegations fell within a quality/performance exception, which stated that coverage didn’t apply to advertising injury “arising out of the failure of goods, products or services to conform with any statement of quality or performance made in your ‘advertisement’.” However, the crux of S.C. Johnson’s claim was that IGT’s ads disparaged S.C. Johnson’s products, not that IGT’s goods failed to conform with IGT’s statements of quality or performance.

The dissent, by contrast, focused on the positive claims that S.C. Johnson alleged were false. S.C. Johnson mainly targeted Buzz Off’s claims for its own “Insect Repellent Apparel.” Buzz Off claimed that its clothing reduced or eliminated the need to apply insect repellent and that its clothing was superior to topical insect repellents, in part because of the “hassle” of applying “messy” insect repellents. S.C. Johnson also attacked Buzz Off’s claim that the insect-repellant properties of its clothing lasted through 25 washes, and that those properties came from “a version of a natural insecticide.”

The false comparisons at issue, the dissent concluded, were allegedly false and misleading because they overvalued Buzz Off’s products, not because they undervalued S.C. Johnson’s. While the dissent has a point, to me this just highlights the odd way advertising injury policies are worded—false comparative advertising has pretty much the same effects whether the claim is “X is better than Y” or “Y is worse than X.” In any event, the dissent concluded, the claims at issue fell into the failure to perform exception. Even if some of the Buzz Off statements (possibly those regarding DEET, a component of S.C. Johnson’s products) could be interpreted as disparaging, that wasn’t what S.C. Johnson complained about.

That reasoning is in a bit of tension with the idea that the plaintiff’s pleading shouldn’t entirely control if the alleged facts disclose the possibility of coverage, but the dissent did note that complaints often include background information to give context to a dispute, and categorized the ads here as mere background, to the extent that they contained negative implications about S.C. Johnson products.

Because the positive claims about Buzz Off are so tightly intertwined with the negative statements/implications about S.C. Johnson, I think this is foreground rather than background, and thus that the majority has the better of the argument. The exclusion for failure to meet advertised quality should apply to absolute claims; relative claims inherently put competitors’ goodwill at risk. As other Lanham Act cases have pointed out, a consumer who is disappointed with a product sold by a comparative claim may conclude that all the products in the relevant category are bad—after all, if the best one didn’t work, what chance have the others? This conclusion—that comparative ads should be treated as potentially harming the plaintiff, not just as potentially helping the defendant—resolves the “better than”/“worse than” disparity mentioned above, and comports with the cases cited by the dissent, some of which rejected insurance coverage when the advertiser’s claims were all positive and noncomparative.

Industry standards don't define terms for false advertising purposes

Wayne-Dalton Corp. v. Amarr Co., 2008 WL 1930786 (N.D. Ohio)

The parties make garage doors. Both are members of a trade association, DASMA, which has voluntary safety standards. One of the standards tests for “pinch resistance” as the door moves on its track. Plaintiff alleged false advertising of pinch resistance. Because the court viewed “pinch resistant” as an ambiguous statement, and because plaintiff had no evidence of actual deception, the court granted defendant’s motion for summary judgment. Moreover, the court found laches: plaintiff had constructive knowledge of the ads for over two years before suing, and couldn’t meet its burden of overcoming a presumption of laches.

The court denied plaintiff’s motion for reconsideration. Plaintiff relied on arguments that defendant’s doors failed to meet DASMA’s standard, but that alone wasn’t enough to establish the meaning of “pinch resistant” in the market. Plaintiff also argued that a jury should be allowed to decide what pinch resistant means, but Sixth Circuit precedent holds that the court should determine ambiguity of a statement as a matter of law; whether facts exist to justify the statement is a question of fact for a jury.

Metatags are nominative fair use; lack of damages defeats other claims

Syncsort Inc. v. Innovative Routines International, Inc., 2008 WL 1925304 (D.N.J.)

The parties compete to sell sorting software for UNIX computers. Syncsort’s is called SyncSort UNIX and IRI’s is called CoSORT. Users write scripts to get each piece of software to sort data in various ways. Syncsort publishes a reference guide on writing scripts in the SyncSort language and grammar. Syncsort claims that the guide is a trade secret. With the assistance of (among other things) existing user scripts, IRI developed a product, SSU2SCL, to translate basic scripts from SyncSort UNIX to CoSORT, allowing users to switch products. (Shades of Lotus v. Borland—which is why I presume Syncsort swiftly dropped its copyright claim.)

At some point, IRI used “syncsort” as a metatag, because it offered converters for SyncSort mainframe and UNIX paramaters, though it’s since removed the metatag.

The main claim was that IRI used Syncsort’s trade secrets. IRI initially contended that it hadn’t used any proprietary information to develop its translator, but it turned out that the developer actually possessed a copy of Syncsort’s reference guide obtained from a Brazilian distributor. The trade secret claim survived IRI’s motion for summary judgment.

Syncsort also alleged false advertising and trademark infringement. The false advertising count was based on IRI’s statements that it had “the fastest sort software available for UNIX environments,” “the world’s fastest, and most widely licensed, commercial-grade sort package for UNIX systems,” “the world’s first, fastest, and most widely licensed open systems sorting package and extract-transform-load (ETL) accelerator,” and “the fastest (and most scalable) sort product available for the UNIX systems, period.” IRI counterclaimed for various business torts.

Syncsort ran into trouble on the issue of damages. For trade secret, it was required to show that IRI’s misappropriation was a but-for cause of its damages—not just that the converter was created using trade secrets, but also that the converter resulted in lost business or revenues. The court agreed that Syncsort lacked sufficient evidence of this—Syncsort could show that it lost business to IRI generally, and that consumers considered the converter a valuable feature, but not that the converter was a but-for cause of people choosing or switching to IRI. Thus, the court granted summary judgment on the issue of damages. (I’m a bit surprised. Evidence that a number of consumers considered the converter valuable seems like it should create a jury question; I would chalk this result up to a general trend in the federal judiciary to tell businesses not to expect any help from courts in fighting competitive battles except in very rare circumstances. See also what happens to the counterclaims, below.)

Syncsort’s tortious interference with contract claim also failed. Syncsort argued that its contracts, which prohibited customers from disclosing “any information related to the Software,” were breached when IRI acquired job control scripts from Syncsort customers. But reverse engineering the SyncSort UNIX language from customer scripts is not a misappropriation of trade secrets. As I understand it, the court concluded that therefore, any interference with the contracts was not tortious. Moreover, for the same reasons Syncsort couldn’t show trade secret damages, it couldn’t show damages here, so the court granted summary judgment to IRI.

On the false advertising claim, the court again used damages to dismiss the claim. Syncsort argued that showing actual falsity would obviate the need to show actual reliance by consumers. But, the court held, that’s the rule for injunctive relief, not damages. Without any evidence of actual customer reliance or deception, the court granted summary judgment to IRI.

On trademark infringement, the court noted that the issue was initial interest confusion. In the court’s view, the IIC doctrine is motivated by a concern for free riding on a plaintiff’s goodwill, even when there’s no purchase made as a result of confusion. Product relatedness and consumers’ level of care are relevant to weighing IIC.

But nominative fair use allows the truthful use of a competitor’s mark. The court applied the modified test found in Century 21 Real Estate Corp. v. Lendingtree Inc., 425 F.3d 211 (3d Cir. 2005). Under Century 21, the plaintiff must first prove confusion is likely, at which point the burden shifts to the defendant. To show fairness, the defendant must establish (1) that the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service (this is why I thought that comparative advertising couldn’t be Third Circuit nominative fair use); (2) that the defendant uses only so much of the plaintiff’s mark as is necessary to describe plaintiff’s product; and (3) that the defendant’s conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services.

Nominative fair use is important because the standard multifactor confusion test would “inevitably point towards confusion where no likelihood of confusion may actually exist.” In particular, similarity and strength would always tend to favor a likelihood of confusion, even when no reasonable consumer would be confused. Using nominative fair use only after likely confusion has been “shown” according to the multifactor test is weird—nominative fair use makes more sense as a substitute for the test, since the premise of the doctrine is that the multifactor test is likely to give you the wrong result in certain situations. Implicitly recognizing this, but adding some weirdness of its own, the district court began with the multifactor test minus the big two of similarity of marks and strength of plaintiff’s mark.

Unsurprisingly, the result was ambiguous. Consumer sophistication in buying products that cost tens of thousands of dollars made confusion less likely; there was no evidence of actual confusion. Favoring confusion, the products were marketed in the same channels and media, to the same consumers, and they are nearly identical. There was no evidence of the length of time the metatag was used, or of IRI’s intent.

Finding that questions of material fact remained on the multifactor test, the court turned to nominative fair use. The use of “syncsort” was necessary to describe IRI’s product, which is a converter of SyncSort scripts to CoSORT. IRI only used “syncsort” once in its metatags, and it didn’t cause its site to appear above Syncsort’s website in searches. Finally, the site reflects the true relationship between the parties.

Syncsort argued that confusion would occur when a user searched for “syncsort” and IRI’s site would appear in the search results. But that’s not enough. Appearing on a search result page as one of many choices, another of which is the trademark owner’s site, isn’t confusing. Summary judgment for IRI.

On the counterclaims, IRI was equally unsuccessful in persuading the court that Syncsort acted outside the “rules of the game.” For example, asking Barnes & Noble what it “need[ed]” to choose Syncsort over IRI wasn’t an invitation to B&N to breach its nondisclosure agreement with IRI and reveal IRI’s price quote.

STS and IP: Innovation networks

Session 6: Papers by Dana Wang (“Constructing and Objectivating Information: The Identification, Sourcing and Meaning of Information in Reference Lists Found in Patents”) and Katherine Strandburg (“Users as Innovators: Implications for Patent Doctrine”)

Wang: Studies the meanings of manmade objects. Individuals and groups interpret the same object differently (as do creators and engagors). Previous studies have looked at misalignment in meaning. When a discovery is adopted by a separate group of investigators, it may become scientific fact. Misalignment is not necessarily permanent. Engagors may form groups that communicate with creators, who come to identify what they need to modify in future products, and creators come to the engagors—what she calls closure. But not many objects are the result of iterative product development.

Example: patent reference lists. Does cross-citation signal something about deference? (Gillespie’s “respect.”) Backward citations arguably reflect inventor’s knowledge or search at the point of invention. Forward citations suggest some quality—value, importance. But few studies have looked at the creation of reference lists.

She conducted a number of interviews and informal discussions; made observations; and drew on archival data. Info in issued patent doesn’t reflect well the process by which a patent is created. In the file wrapper, there may be a bit more—e.g., the names of all the examiners, not just the last one. But there’s still a lot missing.

Why reference lists are created? Some social scientists have treated reference lists on patents like citations in publication. Not so! People disclose to comply with institutional roles and procedures: the applicant’s duty of disclosure, candor and good faith; the examiner’s compliance with examining procedures.

The information on an issued patent comes from the patent counsel/agent and the patent examiner. The examiner adds knowledge from his own research/expertise and the applicant. He adds references, and may use them in an office action. The counsel submits references from her own search, including foreign patent search reports, and the inventor. There are other related and unrelated sources—paralegals, third parties, search firms. Some of that information gets purged on the way through the application.

The source of the info isn’t important to the ultimate patent; the question is how the info is used to limit the patent claims. In fact, only a fraction of the reference list is discussed in the body of the patent or in an office action. Some information that’s considered general and not material at all gets disclosed. Likewise, when the patent issues, only a fraction of the participants appear on the patent.

Among the issues—a patent attorney may not go through 500 references of dubious relevance if the client isn’t willing to pay.

Strandburg: Users and the role they play in invention—what’s the impact on patent doctrine? Patent doctrine assumes there’s a seller-innovator, motivated by the prospect of commercial sale. Users just consumer. But, as Eric von Hippel’s work shows, the relation between tech and users is more complicated. STS reminds us that tech configures users, and users also configure tech.

Digital mechanisms have further enabled user innovation, but it’s always gone on. Manufacturing processes, computer programs, sports moves, medical procedures, research tools—the list goes on. We ought to think of business methods as user innovations too. It can be either commercial or noncommercial, but it’s not motivated by selling the invention.

Thus, if we think that the patent system has something to do with incentives, we should care about different motivations. Von Hippel’s work shows that users tend to make different kinds of inventions—users make cutting-edge functional improvements relating to very heterogenous needs, where manufacturers make innovations targeting the average users—convenience, safety, using sticky info about mass markets, taking advantage of returns to scale. There are good economic reasons for this; users have sticky info about their own needs, and they get both extrinsic and intrinsic rewards (it’s fun, it increases your human capital) from inventing.

Are there ways for patent law to separate out user innovations, where patent’s incentives are less important? Prior work: We might want to limit the scope of patent law, and include a use exception for infringement.

User innovation tends to happen in communities. Reputational incentives help make user innovation work. If you disclose freely, other users will improve your work and share their results. Sometimes users aren’t in direct competition; even when they are competitors, they may benefit from some shared knowledge. E.g., if they’re in competition with outsiders—ironmakers shared information, but were in competition with other makers.

She made a model of a competitive user innovator community composed of identical members. Components: value of shared invention to each member; number of members; cost of sharing; benefit of exclusive information; benefit of sharing. There is a collective action problem because sharing would often be optimal but people still won’t do it. Often the cost of sharing is low because people are good at picking up on useful innovations—users are highly absorptive. A sharing norm can solve this collective action problem.

She applied this to the sharing of research tools within a scientific community. Scientists doing research are user-innovators, and they’re competitive because tools allow more publication (and grants). Will they share? There’s a relatively large value in using others’ tools because they are useful, and academic researchers like to learn and move the scientific enterprise forward. The ability to keep info exclusive is limited, because grad students graduate and move. The cost of sharing is low, because you just have to publish it. The rewards are relatively high—you get credit for publication; reputation; the ability to place grad students well; possibly collaboration. So a sharing norm is beneficial. And in a tight-knit community, a sanctioning norm will work.

Research on scientific preferences: (1) performing research; (2) autonomy in research are primary. The community controls resources like grants through peer review, so sanctioning mechanisms are available.

What about patenting? That can allow you to publish and not share. Even if your grad students move, they can’t take your invention with them. But sharing will still often be optimal because of the utility of tools to others. Will there be an anti-patenting norm? It was for quite a while.

But increasingly there’s an overlap between academic and commercial research. The value of exclusivity may be greater and the norm may destabilize. She argues that if you can distinguish commercial and research use then the norms can do so as well—ignore patents used for research, which can be extended to commercial research as long as researchers aren’t sell. The evidence suggests a norm of ignoring patents just like this. Wes Cohen’s work also shows that sharing tools is common, but there are greater problems with materials transfer, as to which there is currently not much of a sharing norm. It’s easier to keep materials secret and costlier to share them; materials may be difficult to duplicate.

How to encourage a materials sharing norm? The expanding size of the community itself increases the cost of sharing. Centralizing distribution/diffusion of tacit knowledge might help.

What happens in a nonidentical community of researchers—scientific v. industrial researchers? What of norms then? A mixed sharing norm; norms to police the boundary—everyone reports more trouble getting materials passed across the academic/industry interface. There are some norm entrepreneurs: university white paper on licensing IP for tech transfer.

What is the proper view of the public? Possibilities: Potential inventors needing protection—a democratic but seller-centered model; inventors as experts, romantic inventors, needing special protection; public as consumers whose needs should be met/created/taken into account; public as user inventors, needing protection from the overbearing corporate IP community.

Dan Burk: On Strandburg: Contextualizing IP and accounting for specific preferences is a great way to go beyond blunt economic analysis. Also analyzing the idea of scientific norms as they’re operationalized; the myth and the reality may differ. The norms of science are really appealing (see Rebecca Eisenberg’s work) but there hasn’t been much progress since Eisenberg brought the idea to law. Although this is a step away from Chicago-school analysis, it’s not a big step.

On Wang: It’s a cautionary tale on doing empirical research: if you do citation analysis on patents, they might not mean what you think they mean. (It’s just an object. It doesn’t mean what you think.) We really need anthropological investigation of the patent attorney tribe.

Mark Lemley: He agrees with both papers and would like to complicate them. On Strandburg: He thinks she defines user innovation artificially narrowly—internal uses for commercial or noncommercial purposes, but there are also users who innovate and then resell the innovation. In copyright, innovators aren’t just people who modify works for internal purposes, but also and mostly people modify works for further dissemination. Perhaps this limitation on definition is done to make the story work—the user-innovators are less competitive with the original manufacturer/creator—but it’s worth thinking about these other user innovators.

Also, the role of agency costs/agency problems in institutions. “Companies” and “university professors” are not autonomous decisionmakers. The university professors—who may have a foot in both camps—are conflicted about patents, and their universities are profit maximizers when it comes to patents, and their relationships with profs can be complex. Similarly, the profit-maximizing company is made up of employees who may value openness and sharing, which has driven the production of open-source software even by for-profit companies.

For Wang: This is persuasive and probably conclusive evidence that people who look at citation counts should be doing something else. Legal empiricists haven’t done much of this, but social scientists from outside law shouldn’t be using citation counts to measure innovation or anything else. You can layer onto her case studies a number of reasons to believe that there’s systematic nonrepresentativeness. There are massive industry-specific differences in behavior, including search behavior and in erring towards underdisclosure or overdisclosure (pharmaceuticals overdisclose). There are also likely to be big variations by company/inventor/patent attorney. There is also evidence of strong differences between patent examiners; for the first two years, they work hard, and then they get promoted and stop doing so much work. Can transparency solve this problem? He thinks pretty clearly not. But making clear where info comes from is worth talking about.

It’s not just citation references that are socially constructed in the patent document. The patent claim is the crown jewel of the socially constructed item. It is bizarre that what controls in patent law is the patent lawyer’s words, modified by the patent examiner, then glossed over in claim construction by litigators and judges, with no connection to the inventor at all.

Torrance: When he first worked as a patent attorney, he spent 30 hours looking at materiality of references and got a huge slap on the wrist. He was told to spend no more than .2 hours on materiality, and ideally give it to a secretary/paralegal—it’s pro forma. The manual says materiality is important; practice said it was something to avoid billing.

Another question: what about peer-to-patent? Open source patent review.

Wang: The current system allows it; she saw it once in 35 years, 4000 patent applications, but a third party can disclose through the patent attorney. The client eventually decided to send the letter from the third party on to the patent attorney. It didn’t affect the issued claims, though it shows up in the patent file. Third-party disclosure is not a great way to affect patents. In order to do this, you need large firms with time on their hands reading patent applications who want to block competitive patents, not inventors.

Lemley: The lack of effect is why people don’t do it, though there was clearly strategic behavior on the part of the third party. Also, until 8 years ago, you effectively couldn’t do it because the applications were secret.

There was extended discussion of the truth and utility—two separate issues—of scientists’ beliefs about their own norms. Robert Merton’s work describing how scientists think of their own endeavors was utopian—the line between the descriptive and the aspirational is important and contested.

Cohen: Along with Eisenberg, Arti Rai’s paper asks the same questions about Mertonian ideals in science after Bayh-Dole.

Cohen has concerns about trying to work from the top down by calling these practices “what users do,” when it may be “what humans do.” She compares it to recent work in copyright, where there’s a lot of emphasis on unpredictable individual creation. Rather than thinking about “homo scientificus,” perhaps “homo ludens” is the right model. The everyday habitual practices of users are not necessarily coterminous with norms and what the community thinks it’s doing.

Strandburg: This is part of an overall investigation of different case studies. She wants to ask who the actors are and what they want.

Frischmann: One question: is each generation of scientists still being taught the same norms? This question needs to be asked all the time—Bayh-Dole is just an obvious triggering event.

Barley: We need much thicker descriptions. Open source is not skateboarding; you need to know who skateboarders are to figure out why they do what they do. Merton wanted to describe the particular circumstances of scientists; von Hippel is good on open source but he doesn’t necessarily know why skateboarders do the sharing they do.

Lemley: True, but all advantages are comparative. The perfect shouldn’t be the enemy of the good. Knowing something about skateboarding innovation is better than knowing nothing about it.

Eschenfeld: We build these systems based on assumptions about sharing, and lots of them fail. We may need to know more before we can expect our interventions to do what we want them to do.

STS and IP: Patent narratives

Session 5: Papers by Henry Huang (“Reevaluating Science in Patent Law: Lessons From the Historiography of Science”) and Dan Burk (“Patent Law’s Black Box: How Intellectual Property Aligns Creative Networks”)

The usual patent-related caveats apply: not my field; I may have missed rather a lot.

Huang: His project is to look at the insights history of science has for patent doctrines and possible reform. What happened after Kuhn's The Structure of Scientific Revolutions? One article proposes that patent law validates inventions that themselves validate theories—patent systems force scientists to create paradigm shifts by theorizing around prior art/patents. But how that interacts with other kinds of scientific advances/publication is unclear.

Other legal literature uses Kuhn to analyze evidentiary reliability—from Frye to Daubert. The courts’ emphasis on falsifiability tracks Kuhn, but that’s no longer the prevailing view in history of science on how changes in science come about.

Patent law turns often on the moment of invention—e.g., priority disputes; reduction to practice. But you can’t sometimes isolate a particular time or person to whom you can attribute an invention. In a single paper from a major lab, there may be hundreds of scientists who contributed to the work. How can we say one person/one small group is responsible? One possibility: create a legal concept of an inventive entity—that would insulate them from some challenges to inventorship. By allowing people to sign on and subsume themselves in a legal entity, we would recognize lots of people as inventors and provide them some insulation of people who’d been left out.

Prior art: teaching, suggestion or motivation as the test for obviousness. KSR represents a big change—before, two references that together suggested the invention wouldn’t have made it obvious; now it might be obvious, in a sort of common-sense test. If there’s no discrete moment of invention, then KSR is a better to fit to actual practice; it’s certainly better than requiring some sort of flash of genius.

Burk: Some not-so-serious advice: The way to succeed in law is to find something from another field that was hot 30 years ago and teach law professors about it. He’s interested in what Bruno Latour has called black-boxing, how it fits into patent law, and why that might be a good thing.

The dominant rhetoric of IP has been economic. But the theories leave some puzzles. Moribund patents: people spend lots of money to get patents, then just sit on them. Why? Perhaps used to attract venture capital and financing, rather than to license. But then why do VCs like patents? Clarissa Long suggests they might signal savvy management. But if that’s a signal of business ability, it can’t be a very good one.

Jessica Silbey has started writing about narrative theory and patents (which I thought of when Huang was presenting)—to win a patent case, you need to tell a story of genius that justifies a plaintiff’s verdict.

Some patents get people very upset—tax patents. But people don’t get upset about patents on new weapons that kill, or on technologies that will disrupt lives.

So can actor-network theory (ANT) tell us about the social work patents do? There’s a period of dispute before scientific results are accepted; how do results become uncontested? There’s a process of negotiation and recruitment of people/resources. ANT doesn’t distinguish between human and nonhuman actors. Lots of strategies are used to corral unruly actors (the equipment that breaks down/produces weird results). Many institutions are mechanisms to align the unruly—peer review; citation practices.

Black-boxing: when things (human or nonhuman) are lined up and behaving, controversy shuts down and we stop thinking about an issue. It becomes a black box. Once the double-helix structure of DNA is accepted, it becomes an uncontroversial conceptual object that’s used to create other concepts, but we ignore all the support/inputs that went into creating that concept. Burk’s view: this is a sociocultural way of quieting title. The statute of limitations has run and we aren’t going to dispute this claim any more.

For patents, there might be a lot of prior references to think about in deciding who was an inventor. Patent has a lot of doctrines for navigating questions of identifying an invention and an inventor. We use the date of invention, the date of going on sale, the location of things overseas, the types of references, and so on to cut off certain inquiries. We also have occasional mechanisms for opening the black box—reexamination; challenges to whether people were left off the patent.

Why do we do this? ANT talks about stabilizing particular cultural artifacts, and that’s what patent law can do.

Possible case study: The Edison light bulb, which ANT has already examined. The 1880 and 1881 versions differ a lot; they’re both patented. Prior art is really quite crowded. Some very similar versions were excluded from consideration because it was from overseas. Moreover, Edison relied very heavily on his staff. There were also unruly materials involved—Joule’s law made copper too expensive to use, so he needed to find another way. Etc.

The patents themselves turned out not to be very helpful. Edison announced the invention a year before he had it; then he was engaged in a lot of litigation over the patents. Why patents then? Latour argues that certain props are necessary for certain roles—the scientist and the test tube. Perhaps you can’t have inventors without patents. Patents validated Edison in the public mind.

Steve Barley: The problem seems to be that if STS is right, then the concepts courts are using to resolve patent disputes are wrong: the fiction of the moment of invention; the issue that people tend to be working on the same problem simultaneously so there may not be a single inventor.

But it’s worse than Huang and Burk say. STS focuses on science, rather than technology. Science and engineering are not the same thing; they have different cultures, social structures, and modes of operating. STS has favored science over engineering because the move to concern with epistemological issues in practice first occurred as sociologists studied scientific labs. Studies of technology tend to look at how designs come into being, not the practices of engineers. Only a tiny fraction of patents pertain to the output of scientific activity; many more pertain to the output of engineering activity (though both may be small fractions of patents as a whole).

Differences in social structure: Citations in a science paper are skewed to publications within the last 5 years; citations in an engineering paper are essentially random as to time. Scientists get ideas from literature and colleagues, who are organized into invisible colleges. Engineers get ideas from vendors, who have access to what’s going on with competitors; from customers; from coworkers who’ve come from other organizations. It's a different idea-spreading system. Science is reading-based; engineering is an oral culture.

Science tends to be physically dispersed, while engineering is physically concentrated. Most engineering patenting is done by organizations, even if they’re forced by the law to put names on it.

He’s not a big fan of ANT. As an American pragmatist, he thinks some STS literature gives actants/nonhumans too much agency. And black-boxing is not necessarily a bad thing. (Biagioli intervenes to say STS doesn’t think black-boxing is bad!) Black-boxing is useful for doing certain things.

Mike Madison : For patent litigation, there are all kinds of avenues to open the black box. The artifact’s stability ebbs and flows. It can be settled for some purposes and contested for others.

Huang’s examples of doctrines that might be changed all involve ways to wrap up a complex history and move forward, because it’s simpler to do so for administrative purposes. Applying STS doesn’t give you a specific policy outcome; it might even push you towards more black-boxing.

Burk: Only lawyers would ask, “why do we care?” Other disciplines would say that more knowledge is good, even if we don’t end up wanting to change the policy. Among the things he’s interested in is whether a patent assists in the black-boxing process. STS generally treats black-boxing as a neutral social phenomenon, but some of it does suggest that black-boxing is intellectually dishonest—denying Rosalind Franklin credit for DNA, for example.

Huang: It’s important to remember that the dominant discussion about patents is economic language—incentives, prospecting, etc. STS provides a new way in.

Burk: There’s an interesting discussion to be had about Daubert and Markman—the opinions read together.

Lemley: In his role as the oppressor/hegemon, it seems to him that the question of whether black-boxing is good is necessarily bound up with the question of why we’re bothering to ask. Why care about who the inventor is? The economic story is one that incentives ought not to be misaligned. Outside economics, we need a story of why it matters to patent law that one person is named the inventor and the other isn’t.

Burk: Economics is like the Borg, attempting to assimilate any discussion into incentives. He thinks that’s a cheat, but it can be done. If you don’t want to do it, ask: If there are gaps/lacunae in the economic story, what’s going on underneath? The economic story coincides with reality sometimes, but it’s a myth. Sometimes myths are good; Schliemann found a city where Homer said it was, but that doesn’t make the rest of the Iliad true.

Samuelson: She’s interested in the notion of an inventive entity and the move away from the romantic inventor. Why doesn’t patent law have a work for hire rule, like copyright? Patents are increasingly corporate. A work for hire rule would allow giving credit without a connection to initial ownership, which really isn’t relevant anyway. The work for hire concept is its own black box, but a different one.

Strandburg: The romantic inventor might work better for scientific papers than patents; maybe the problem is applying the same rule across different endeavors. Also, we could maybe think of patent problems with software, biotech, etc. as a failure of black-boxing: various components refuse to go in the box and let it close behind them.

Burk: The citation strategy in a scientific paper is very different from a citation strategy in a patent application. The former situates and extends, while the latter attempts to differentiate.

Cohen: Patents are at the intersection of science, engineering, law, and finance. Black-boxing in STS was about science, but each discipline has its own ways of doing black-boxing, and patent law is unstable because these ways collide. Businesspeople have to value patents and disclose them to the SEC; it’s uncomfortable to put a value on incomplete assets, so they just call them complete. If the theory is to be powerful in patents, you must excavate the different layers.

Gillespie: There's an analogy to work on “art worlds”: there are intersecting circles of people forming around objects, and boundaries are always being drawn strategically.

Another point: the issue isn’t just different black boxes, but that they open and close at different points and for different reasons across fields. So should patent law attempt to be more like science/engineering in its black boxing?

Lemley: We may be perfectly happy to have finance people treating patents as certain and closed objects for valuation purposes, but the problem is crossover—if people start treating the patent grant as a property entitlement for injunction purposes, you may get pernicious consequences.

Cohen: No, finance behaviors matter, because it comes back into legal reasoning when people start arguing about why they obtained patents.

Biagioli: Latour’s black box is different than what you’ve been saying. The standard story: claims are unstable; they are stabilized by piling social resources on them; the box closes and is padlocked; it can be opened with more resources. Latour doesn’t believe in this. His black box is more like an electromagnetic field; as soon as you turn the electricity off, the thing collapses. He stresses fragility: as soon as the alignment gets disturbed, it falls apart. His argument is about techniques of alignment. It says that nothing is safe.

Latour would be interested in techniques: how you standardize technical drawings so that they can be shared. How specific patent doctrines emerged—patent law as a technology.

STS and IP: Copyright education and patent agents

Session 4: Papers by Tarleton Gillespie (“Characterizing Copyright in the Classroom: The Cultural Work of Anti-Piracy Campaigns”) and Kara Swanson (“The Bureaucracy of Genius: Private Rights and the Public Interest”)

Gillespie: Perennial STS concern: the social construction/impact of technology—there are debates about the relation and relative importance of construction and impact. Social construction is a convenient term that does a lot of work without necessarily being clear. Materiality: do the artifacts have politics? What are the implications of design? Politics: behind/next to those questions, how do institutions shape these arrangements and with what political implications. Example: DRM—how do stakeholders frame the debate? Discursive level: in language, categories and terminology, what work is being done?

Methodologically, STS’s instinct is to go to the ground and do ethnography. Who is doing the work? How does copyright play out in real spaces?

Public campaigns designed to convince and educate kids/adults/young adults to learn more about the dangers of downloading/piracy, particularly in 2003-2004. Why would the RIAA/MPAA do this? Might want to change people’s behavior; show Congress that you’re doing due diligence when you ask for stronger laws; frame the debate, especially around “piracy.” Along with public campaigns, there are less visible campaigns sent directly to schools/teacher curriculum resource sites: a boom starting in 2006-2007.

He’s not just interested in how these campaigns define and justify the law (many have sections saying “copyright is” which have various overstatements and emphases), but how the campaigns characterize the problem and the solution. It fits the issues into comfortable discursive frameworks. They draw on longstanding justifications that were there from the beginning, but are raised from the discursive terrain to greater importance.

He’s looking at campaigns targeting 3^rd-6^th graders: the designers often say that they’ve lost the high schoolers and college students, but still have a chance with these kids who are forming their moral universes. One theme: an equation between piracy and theft—“Q: What’s the difference between copying software from a friend and stealing software from a store? A: Nothing.” (Play it Cybersafe, Business Software Alliance) “Copyright infringement is just a fancy word for stealing.”

One term from three campaigns, two from the record industry and one from Microsoft, each designed independently: “songlifters.” People who take songs without paying for them. Songlifters = term of art for unauthorized downloaders.

Second theme: respect. “Respect other people’s creative work.” Abiding by the law = respecting the speed limit. But there’s also the concept of honoring. One suggested activity: creating dos and don’ts—the don’ts are about breaking the law, but the dos are much murkier—paying; asking permission; telling the teacher about how you’re using materials. Holding creative works in high esteem is the goal—that’s the double meaning of honoring.

Why kids? Well, they’re a captive audience in school, getting a message delivered inside a legitimating space. Thus it’s better than a PSA or magazine ad. Who can afford to do that? Many sources are trade organizations: MPAA, ASCAP, Access Copyright, Copyright Society of the USA, Microsoft (only single-source one he’s found), Business Software Alliance, WIPO. EFF is working on one right now as a corrective.

These organizations don’t make the curriculum themselves—they contract with a curriculum specialist like Junior Achievement or Weekly Reader Online. These specialists can’t exactly be propaganda machines—their business hinges on being seen as pedagogically valuable, and they provide other products like current events documents. Some organizations can be propaganda machines, though. RIAA worked with Young Minds Inspired aka Youth Marketing International, with a very different public face from the teacher-oriented first site.

An older MPAA/Junior Achievement campaign: What’s the Diff? In order to create pedagogical value, they have an exercise in which there’s supposed to be a debate. Distributed to 900,000 kids in 30,000 classrooms. In one exercise, students are assigned one of six roles and then one representative has to answer questions from the teacher.

The positions: producer, actor, key carpenter, singer, director—all professionals, and part of a classic, 1950s model of the film industry; the statements are all in first person. All define copyright as an economic imperative and say that filesharing hurts them.

The sixth role is the computer user. He makes a series of radical and silly claims; he has no professional authority; and the top of his head has come off and starlight is coming out. Some of the kids might aspire to be one of the other five professionally; many students might already inhabit the computer user role, but the teacher doesn’t give them any resources to add arguments.

These campaigns offer limited roles for students: students are fans and listeners; they play air guitar. Being a fan means being a consumer, buying music, not producing. Another position: aspiring to be part of the industry. The roles naturalize the professional role as currently constituted, telling students to start respecting copyrights now if they want to participate later. Third position: pirate. A pirate is not a fan. These campaigns reify existing ideological and institutional arrangements:

(1) Digital culture is commerce. Theft is not paying. MPAA says: “To legally own it, legally buy it. If you haven’t paid for it, you’ve stolen it.” That erases a lot of completely legit alternatives, including ones the record companies and TV studios are investing in! 5^th graders are being told “you have to be really naïve to believe that anything is free.” Price becomes a measure of value. Price is its own justification. (Comment: these two things—there are authorized free options, and price is value—are in some tension. When price is advertising, and you pay by offering your mind up to be marketed to, the terms of the exchange may be inherently more fragile simply because there are more points of failure in the tripartite relationship between advertiser, broadcaster, and audience. Is going to the bathroom during the commercials stealing?)

(2) Digital culture is mass entertainment. We must preserve the industry as it exists now. The dream of stardom; there is no glimpse of collaboration or alternative forms of content.

We can ask (1) are these campaigns consequential in their own right? How will kids who’ve been exposed to them behave as voters, policymakers, moviemakers, technologists? This may be only a small part of their experience. (2) Are these examples of discursive tactics among many other similar interventions by these interest groups? (3) Is it indicative of the broader contours of the cultural discourse—the RIAA is not necessarily driving, but is embedded in, the larger discursive landscape. What norms and assumptions are already available and are being deployed here?

Kara Swanson: Her story is about the 19^th century—the history of the patent clerk. Scientific truth becomes legal truth and property rights in the patent office. The system was formed, and various alternatives rejected, in the 19^th century. Patent clerks are paid to think, but not to think too hard. Stuff goes into the black box—patent applications—and stuff comes out—patents—and no one outside the patent bar thinks too hard about it.

But patent clerks achieved invisibility, and that was a requirement for the patent system to work. In the 19^th century, clerks were much more visible because their job was to implement property theories. But there wasn’t any consensus about the patent bargain and the relationship between inventors, government, and public, so they fought it out until they reached a stable equilibrium. Patent clerks were provocative—they angered cabinet officials and judges; they angered inventors; etc. They also evoked national pride and had a bottom-up influence on the developing patent law.

“Patent supervisor” Thornton saw the true inventor as a rare and wonderful creature in need of protection; he ran the new patent system for 25 years. He attempted to stop the issuance of patents he saw as not novel and useful enough, despite intervention from cabinet officials and judges who wanted his role to be purely ministerial. He claimed authority to refuse to provide copies of issued patents without the permission of the inventor. The Franklin Institute sought to publish all patents in their journal, making them generally available to spur new invention—they were fighting over what the public was and what it might do. Thornton feared copycat inventions; his view of the public was that it was dangerous.

Thornton lost on publication. Ironically, after Thornton’s death, it was when his successors failed to resist issuing patents, the clamor for reform got louder: by following the law they exposed problems with the patent system that weren’t attributable to a single man’s civil disobedience.

One view: the public is a collection of inventive citizens; everyone is a potential patentee. Another view: no, you need highly trained people.

The examiner was eventually shoved into the black box by detailed regulations designed to ward off criticism by removing the individual targets. Clerks today are standardized through an 8-month training program and a massive manual. Patent staff do matter, because they create property for distribution among the public.

Pam Samuelson: One theme of these two—is what we’re concerned about the elites or the public? Are inventors an elite class who needs protection? Are copyright owners a small class of powerful minds? Or are invention, creation and authorship widely distributed throughout the American populace? Rhetorical tricks: copyright campaigns assert creator and consumer as the only valid roles, even though we know that everyone can be a creator (comment: and the campaigns use that move, but only as a way of moving the debate back to “you the consumer should pay me the creator,” this time out of sympathy—you should believe you could be me, but you should also know that you aren’t me).

Isn’t it delusional to think that the antipiracy message works?

Another commonality: the corporatization of IP ownership, and corresponding bureaucratization of the patent office—it doesn’t play quite the same way in copyright. (Comment: certainly the public image of corporate copyright ownership is far more negative than the public image of corporate patent ownership.) The the corporate entities take matters into their own hands, including writing legislation for Congress to adopt. Individual inventors (and authors) wouldn’t drive bureaucratization.

Both papers talk about rhetoric over the evils of cheap copying and dissemination. Particularly interesting—the idea that the inventor masters his fate by registering his invention, and the patent office just processes the application mechanically. Copyright, by contrast, is not bureaucratic in the sense that it’s so automatic that there’s virtually no job for the Copyright Office to do—they just record it.

What is to be done? If you find the education campaigns troublesome, what next? Samuelson’s solution: write a copyright law that ordinary people can read.

For patents, Samuelson emphasized, it turns out that the concept of the “patent bargain” of rights for disclosure that we take for granted wasn’t part of the story, or at least Thornton’s story, at the beginning of the US system. The crisis now: there are too many bad patents. Solution, for patent and copyright both, is to cut back—subject matter restrictions; give exclusive rights to fewer works.

Julie Cohen: She’s not even going to try to draw common threads. For Gillespie: loved the discussion/how kids are encouraged to stamp a (c) symbol on all their own work. Looking to the history of education to distinguish between propaganda and pedagogy might be helpful; it’s a recurrent question. Every time there’s a shift in public sentiment about some important issue in the science/public policy field, it becomes a pedagogical issue—green education/recycling; health issues (comment: Exxon has teaching guides on the environment!).

Respect: Schools now have mottoes, and it’s really trendy to have respect as part of a core value/motto. So it’s hooked into a larger cultural phenomenon. There’s also outreach to clergy—Cohen went to a High Holy Days service where the rabbi gave a list of internet don’ts, including don’t download music without paying.

For Swanson: The notion of the imaginary is public, contested and evolving; what struck her was Swanson’s use of “imaginary” to describe an individual person’s view of the proper patent system. So in Swanson’s work people proposed different imaginaries. Was that how the actors themselves thought of what they were doing? It may have been less self-conscious than the kind of “framing” we all do now, since we’ve read George Lakoff like good liberals. A focus on narratives or beliefs would have felt more natural to Cohen.

There’s clearly enormous contingency in the evolution of the concept of the inventor. How do you deal with that? She would like to hear more about the fluidity in the system first, then apply the theory of the imaginary later.

Recommended reading: Annelise Riles on law as anti-network.

Lemley, for Gillespie: He knew it was bad, but not that bad! Re the shoplifting analogy: cultural norms go in both directions. How do people now think about shoplifting?

Gillespie: Interestingly, songlifting gets you away from more problematic words—thief seems too harsh, and Disney has made pirates cool.

Madison: These programs are the tip of the iceberg—the “agreements” that kids and parents are required to sign about access to computers at school. The kid promises not to do all kinds of things with school computers, including copying without permission. Often parents are asked to sign as well. It’s completely under the radar, and provides a means for disciplining kids in vague and ambiguous circumstances. Patent industries also have curricula, but the perceived risks and opportunities are very different. They don’t warn you not to infringe; they’ve figured out that this is an opportunity to teach kids how to invent. It’s a pre-science fair curriculum: figure out where there’s a problem; figure out a solution; reduce it to practice and then document it. It’s somewhat cynical, but has a very different premise.

Gillespie: The software ones are halfway in between—the Electronic Software Association’s curriculum is all about creativity, not downloading; you end up with an “all rights reserved” sticker as the reward for creating your poster.

Riskin: Interesting to look at plagiarism—there’s a lot of conflation between copyright and plagiarism in these curricula, and in the classroom context plagiarism is a really big deal.

Fisk: How law is translated into communities where it is practiced: Lauren Edelman et al., “The Inflated Threat of Wrongful Discharge Law”—how lawyers convince clients they’re at risk of huge jury verdicts every time they fire an employee, perhaps to run up bills. And a literature on desk clerk law—the law is not what the law says but what the individual bureaucrat says—e.g., the practice of name changes when people get married, and clerks either insist that a name change is required or advocate that women should do it. Whether kids are paying attention or not, this may be the only thing they ever hear about copyright law.

Gillespie (in response to my comment about advertising-supported media as a challenge to price as the measure of value, and further discussion about attribution as taking the place of “price” to indicate that there is some value in circulation): Once you separate property, payment, distribution, and attribution, which copyright was thought to manage all together, you begin to see how messy these issues are.

Eschenfelder: How do we integrate the education campaigns with the evidence that most kids who are online create things? Aren’t they getting a different story from their peers? How do they learn it’s okay to do a mashup?

Gillespie: Media literacy programs!

STS and IP: plants and genes (and authorship)

Keynote Talk: Mario Biagioli (“The Author as Vegetable: Environmental Metaphors in the Discourse of the Commons and the Public Domain”)

Interested in organic/environmental tone of images, not just rhetoric but almost a necessity of a movement that defines itself as being about protecting. If you go back to David Lange’s foundational text, he uses environmental analogies that figure creative production (and thus producers) as grass/cattle etc. Same with Wendy Gordon on Lockean property theory—the use of implicit environmental metaphors.

How the politics of discourse about IP has changed as a result of cultural environmentalism: if you buy into this set of metaphors, IP is less contentious, because we’re no longer talking about criticizing the logic of IP, but only the excessive use of IP that might deplete the public domain, which makes cultural environmentalists like Clinton Democrats.

Problems with the metaphor: Traditional cultural knowledge ends up being put in the public domain and naturalized. See Madhavi Sunder. This is a substantial misrepresentation.

Another problem: the relationship between the commons and the public domain. The commons has been treated as a piece of legal history that can be reinterpreted and used in the IP context. The articulation of the notion of the commons seems to be going in many directions. One could use the semantic openness of the commons/the public domain to put an evolutionary spin on the concepts themselves—we’ll see what shape they take at the end of the debate. A less cheerful take: the proliferation of different meanings points to difficulty reconciling the environmental framework with the IP notions themselves. Are these natural resources or socially constructed infrastructures?

The real problems: Cultural environmentalists seem to stereotype the commons the way Hardin did, but for opposite reasons. Hardin: they’re natural and thus doomed. The cultural environmentalists: they’re natural and thus productive. There are reasons to be suspicious of the deployment of natural categories to discuss the production of knowledge.

Creation stories/myths about the origin stories of property are never neutral. 18^th-century debates over literary property, including Locke: adding labor to nature creates property. “Every man has a property in his own person,” etc. The brain as an estate that yields produce—flowers growing from the author’s creativity (a GI avant la lettre, Biagioli said as an aside). Jefferson described literary creation as a “fugitive fermentation” of an individual brain. Lots of agricultural, naturalizing metaphors. Land provides the structuring metaphor, either positively or negatively.

Critics of IP suggested that publication was equivalent to opening the land to everyone, allowing any squatters and any destruction of value. Blackstone responded by analogizing the book to a key; being given the key to land doesn’t mean you can make lots more keys and let anyone else in.

IP environmentalism confirms the nature/society divide by emphasizing culture as that which is damaged by IP law. It doesn’t question the discovery/invention dichotomy at the heart of IP law but reinscribes it by relying on the author as creator, as with the GPL license. The cultural environmentalist needs IP law to be strong enough to enforce the license.

STS has gone through problems with its own assumptions about the dichotomy between nature and society, and the dichotomy between human and nonhuman agency. Progressive IP is going through the same problems, but instead of pursuing the critique of the romantic author, Jamie Boyle and colleagues are reinstantiating the romantic author.

Martha Woodmansee and Mark Rose looked at the romantic genius as a legal fiction—a cover-up for a move in copyright law. But look at what else was going on in attempts to establish the author as genius—the concepts of author as vegetable; genius as mountain spring; patronage as sunlight; social culture as soil. The oyster does not know that it contains a pearl; genius does not know that it is borrowing. This is apparently the opposite of the flash of genius, which foregrounds human consciousness, but the act of creation is instantaneous so there’s no awareness of copying. In the case of the plant, the plant does borrow, but lacks consciousness so cannot infringe.

Edward Young (discussed in Woodmansee, supra): In Biagioli’s reading of Young, genius means the virgin birth of artifacts that can’t be born from predictable routines of artisanal practices—creative works are born, not made. They are not the result of craft, but of the copious variety of nature—the way that no face is alike. This is the difficulty faced by one defending copyright/patent: one can construe intangible property only by emphasizing that the author produced an artifact that didn’t exist before. But there are potential endless challenges to originality. So you need to come up with something that defends the author against appropriators and appropriatees—and the answer turns out to be to turn the author into a plant or a face. The difference between individual species members may be tiny, but it exists. It has nothing to do with creativity because it has nothing to do with choice, yet provides irreducible difference. Creating the authorial genius kills it in the same move, because genius is supposed to be human and chosen.

Calling collaboration the true source of authorship leaves the invention/discovery dichotomy intact and the source of genius just as mysterious as ever.

Lemley: If growth is the metaphor, what role for IP? Why would we need it? Is it just mulch? And if so we’d want to fertilize all the possible roots, not just the plants that succeeded. An IP regime based on this would be a subsidy for all authors/inventors at an early stage, not a reward for those who succeeded. (Comment: Mark is an economist from top to toe, isn’t he?)

Biagioli: This is a critical project; I’m pointing out that the critics of copyright are in the same boat as the defenders, because both refuse to locate anything volitional in the individual author.

In 1930, the Plant Patent Act for asexually reproduced plants: he likes it because the law acknowledges that inventorship is not human. The Golden Delicious Apple: someone finds it and grafts it.

Lemley: That’s just imprecise genetic engineering.

Biagioli: But who modified the apple? Nobody!

Burk: Testimony in Congress focused on effort.

Biagioli: Yes! Nature came up with a sport, but could not reproduce it. The inventor is the one who allows nature to reproduce itself. The law is explicitly recognizing the changeable meaning of “creator” status.

Gillespie: Reminds him of Jane Gaines on photography: light creates the photo, but the artists then reframe the creative act as one of setting up/framing.

Frischmann: Is your critique applicable to all cultural environmentalism, or to particular proponents? The environmental metaphor need not be handicapped by its connection to land metaphors. It may have historical ties, but can’t we build it differently going forward, with our reference point the environmental movement, which is not necessarily linked to land? Maybe the naturalization misstep can be separated from environmentalism as a framing device.

Biagioli: You can use social construction to define your project, but look at Sunder’s work: revitalization of the public domain casts traditional knowledge as nature. What looks progressive here has a colonial effect elsewhere. His interests would be in developing a notion of environmentalism that doesn’t replicate the nature/society divide and that doesn’t divide human and nonhuman agency. We need a more sophisticated notion of the environment.

Gillespie: In discussions earlier, we weren’t talking about the environmental movement as Boyle suggested, but about enclosure. Rather than having a political model, where we try to give apparently disparate things a single name and bring people with different interests together under an umbrella concept, we’ve slipped into analogy to the environment. Environmentalism has specific features, and we emulate them and all these familiar naturalistic concepts slip in.

Biagioli: It could well be that the environment and the public domain are going to be articulated in the same way as the movement grows. Naturalization happens in several ways: Sunder’s example; the example of Young who can only talk about individual creative choice by reference to plants—not naturalizaton but an aporia, where he can’t actually talk about individual creative effort. It’s not because he’s a bad thinker, but because there’s a problem at the basis of IP.

Session 3: Andrew Torrance (“Coevolution of Gene Concepts and Gene Patents”)

Begin with quote from Walter Gilbert, a pioneer in gene sequencing (though not the winner): you’ll be able to put your genes on a CD, and pull it out and say “this is me!” Lots of people say that genes make us (or genes make proteins and proteins make us). Evelyn Fox Keller says that biologists have a whole different way of talking to each other about genes in the lab than they do in public.

The gene is a very powerful idea in science, in industry, in public consciousness, even as the concept of what a gene is (named 1909) has evolved over time. Consensus over what genes are has been unraveling—lots of people are throwing up their hands and saying there may not be such a thing as a gene. Gene talk, however, hasn’t unraveled. Investors want to know how many genes a company has patented; ordinary people want to know what genes put them at risk for disease or determine the capacities of their kids.

Patent gene talk is simplified; biologists use it to explain why they should be funded. Does that reflect back on the internal use of the gene as a concept? He needs more evidence on this point.

History of the gene: what was known changed over time, to make boundaries between genes harder to define (genes skip around; genes can be within other genes; etc.), and the relationship between the gene and the expressed protein was also quite complicated, very far from gene = protein.

A trick of patent law: genes must be isolated and purified to be patented; you can’t patent a gene as embedded in someone’s body. Biotech as an industry produces genes and patents, not drugs. Another story: genes are a way to make the biotech industry valuable: they allow people to identify (and inflate) value in particular companies. Genes themselves are not products. Gene talk is a shorthand that helps market products.

Based on the complexity of genes, definiteness is a problem for patents that claim “genes” specifically. One might think that patent litigation must have dealt with this, if the science of genes undermines gene talk. However: 16,000 gene patents, but very few definitions of genes—and they’re generally throwaway, e.g. a gene is a DNA sequence. Only two cases get into the definition of genes, and they’re both very limited/just plain wrong.

What is a gene? A prominent article, but cited only one time in patents. Public certainty—could it be convincing biologists unconsciously that genes do exist and are simple? This could coincide with their economic interests in patenting. Internal and external views don’t match up—if the internal views were aired, that would undermine biologists’ authority when speaking outside.

Jenny Reardon: If Craig Venter says genes are worth nothing, as Torrance mentioned, it’s important to ask him “what is worth something?” She doesn’t think that the concept of genes will be useless. Maybe the creation of archives of genes, which involves an attempt to create a common language to talk about genes, will help define terms. Also, maybe the term is valuable as long as either side (internal and external) has some use for it. A productive foil: “gene” is good to think against, even if it’s not necessarily good to think with—a gene could be a boundary object.

Mark Lemley: The strong deconstruction story is “there’s no there there”—don’t build a legal construct around it. The weak deconstruction story is that we’ve oversimplified a complex concept by throwing stuff into the gene bucket. He’s skeptical of the strong story, because if you take a particular set of DNA out of the human body and put it in the right medium it will express human growth hormone. It works for some purposes. The weak deconstruction story is probably true.

What would that mean for patent law? (1) Patent law might simply ignore the scientific question because and to the extent that the gene concept leads to reproducible, consistent, functional results. What’s required for enablement is not that we understand the fundamental concepts; we patent things where we don’t understand the underlying concept. If you create a new practical thing that works and works consistently, that’s all we care about. The biological context puts stress on this because the patented thing isn’t created from scratch but taken from some living thing; what this justifies is a strong version of the utility doctrine. Thus, you can’t and shouldn’t be able to grab a chunk of sequence and claim ownership without proof of a particular result. Morse got a patent when his and our understanding of electricity was wildly wrong—but it worked.

(2) Patentable subject matter: you might say we shouldn’t have DNA patents if there’s no such thing as a DNA gene sequence, but you can go in the opposite direction. If the relation between nucleotide sequences and the human body is complex and contingent, perhaps we should patent other source of complex functional relationship claims in the human body, claims that are currently very controversial (Labcorp v. Metabolite or patents on Prozac’s functional effects on the human body as examples).

(3) Effect of patent law on PHOSITA: If our scientific understanding changes over time, we need to know what the PHOSITA knows at the time—patent law is backward-looking. If people in 1992 didn’t understand that the gene concept was as amorphous as we now understand that to be, how do we account for that?

Torrance: He’s definitely making the weak claim—believe in genetics? He’s seen it! Maybe what we need to do is move towards function, not structure. But as a patent attorney, he got his hand slapped for making functional claims when the client hadn’t yet figured out the full structure.

Burk: Of course genes don’t exist in nature! They’re purely human constructs. Be careful about functionality, because we don’t know what that means—patents work because you put the structure in and describe what it is that you own. Isolating the function without the structure would require going through the genome and pulling out all the enhancers—that’s problematic.

The product of nature doctrine comes in—the human intervention in the patents here is to pull something specific out, and that counts as human creation. That’s the implication of what you’re saying, but do you want to go there? It could make everything patentable. This ties in with our earlier discussions of nature and the commons.

Reardon: Gene patents are microsites where our anxiety about genetic engineering plays out—our uncertainty about what genes do and how, and about who will control that.

Lemley: Some genes are predictable, others aren’t; one should only be able to patent the predictable ones. The question is whether the patent system is outrunning our understanding.

Burk: Electricity was a black box for a while, and then the box opened—we should draw on that historical analogy.

Riskin: The unraveling of the gene may be part of an unraveling of understanding of the natural world which underpins both the standard IP regime and critiques thereof. The natural world doesn’t necessarily work in the way that our 18^th-century roots have encouraged us to believe.

Biagioli: We used to require only reduction to practice, not understanding.

Lemley: But of course our concept of what was patentable was much narrower—I had to give a machine to the patent office; under those circumstances, reduction to practice and utility are pretty much all you need.

Madison: The object-ness of the thing that is patented is challenged by the modern system.

Strandburg: One thing that might be going on is that scientists feel assaulted from outside—creationism/evolution, etc. If they were to admit how complex the issues were, that would hurt their authority. (Comment: More, the uncertainty would be misunderstood—as if scientists were debating whether DNA makes proteins or whether it’s God’s will.)

Burk: But every undergrad who takes a biology course knows that we don’t understand what a gene is. The cat’s out of the bag.

Torrance: Not very far out.

When synthetic genes start getting patented, that will move us away from nature; the concept of genes might be rescued by the very future of biotech.