Catholic University of America, Third Annual Intellectual Property Roundtable

Sampling Patent to Remix Copyright: Tonya Evans, Assistant Professor, Widener University School of Law, Harrisburg Campus

Thesis: copyright should sample (borrow) doctrines from patents that encourage second comers, in order to remix (inform) copyright and better protect fair uses and the public domain. A second generation creator may need to use an original. Offset imbalance of overprotection that prevents access and fair uses.

1976 Act is largely intact, and ideology of independent creation is still king. Even our definitions of collective and joint works encompass notion of independent creation. Collective work: constituting separate works that are combined. Joint work is about collaborativeness, but each must give a separate copyrightable contribution. The erosion of the quid pro quo in which the public gets something back from the rights granted.

How do we restore balanced protection of uses without causing significant market harm?

Underlying assumptions: patent and other laws have more successfully protectred the second generation of innovators who build on, improve on, and in some cases reverse engineer tech. Patent anticipates second-generation creation.

Creativity has outgrown copyright: subject matter and creative process have changed; tech has outpaced copyright, which is standard in our history. Creative process: recognize user as creator, collaborative process. Particularly underrecognized: contributions of performers in performance arts. (I could not agree more!) Overprotection is a problem, as is misuse: abusing the monopoly, restricting access to uncopyrightable elements.

Law has responded with specialized legislation: limited digital reverse-engineering rights; trade secrets; SPCA; DMCA.

But that doesn’t deal with performance, sampling, visual collage, user-generated content.

The policies for incentives/access are the same in patent and copyright. But patent focuses more on disclosure and encouraging commercialization.

What’s in a name? Economist: Creativity is thinking up new things. Innovation is doing new things. But it’s all starting to blur together in subject matter and terminology. Wants more use of misuse, maybe “unfair use” as a separate concept limiting assertion of rights. Who will do this? Legislatures; judges; markets. Scholarly bias against commingling IP laws.

My commentary:

The paper as currently written suggests patent has worked better than copyright in the new digital world, because improvers’ rights are built into the system. (1) Not clear that patent folks think this is true, especially with devices incorporating potentially 100s of patents. Blocking patents are no good if all you want to do is practice (which is related to the fact that patent infringement doesn’t require copying and that independent invention is no defense). The usual scenario where there are complaints about patents is not reverse engineering. Might work better if claims were confined to copyright v. patent w/r/t software?

(2) See Barton Beebe on the concept of progress and how scientific progress is different from aesthetic progress in a possibly relevant way. We value second-comers’ improvements more in patent than we do in copyright; Evans suggests this is due to outdated concepts of the Romantic author. (Another possible explanation, which may be related: It is less obvious that claimants would actually use second-comers’ particular innovations for themselves in copyright, so it’s less clear that they’ve created something worthy from everyone’s/the copyright owner’s perspective—which may also be connected to ideas of progress. SAT case: copyright owners claimed they didn’t want to make a Seinfeld quiz game; Salinger didn’t. Courts even talk about moral/free speech rights to stay silent. By contrast, patent doesn’t recognize a moral interest in withholding the use, and isn’t all that keen on NPEs at the present moment.)

Side note on the death of the author: it’s complicated, as crediting Foucault for identifying this death evidences. The author-function retains its pull, and can be contrasted to the inventor-function. (In fact the term function suggests some opportunity for playful exploration of this in the context of computer programs, where as Evans points out copyright and patent have begun to converge. Mark McKenna on boundaries of IP would be a useful resource.)

If we’re talking about reverse engineering we have to talk about contract, maybe in the context of misuse but maybe also in the context of public policy in general.

Say more about reverse engineering in music—fascinating source of comparative insight. Especially to the extent that looking at what others did can spur creativity, suggest new paths. Compare to Van Gogh and others painting existing paintings—a kind of reverse engineering.

Tun-Jen Chiang: In tech field, we have more appreciation of the fact that everything’s cumulative, but patent law on the ground (as opposed to doctrine) is not necessarily responsive to that. Patent doesn’t have fair use; Federal Circuit just interpreted misuse to nothingness. Cumulative innovation happens in spite of patent law. Patent law still has the myth of the lone inventor, per Mark Lemley’s recent article.

Evans: may be able to look at patent law’s aspirations for guidance.

The Reciprocity of Search, Tun-Jen Chiang, Assistant Professor, George Mason University School of Law

Patent law confronts the problem of 5000 patents reading on the iPhone. Usually we think about search as: if you’re looking to make a product, we expect you to find every patent and negotiate ahead of time. Not just in patents, but in all property—usually regarded as the essence of property that, before someone gets to use your property, they negotiate access to it. (This is making me think again that we should fight for the unfair competition/tort characterization of patent and copyright.)

Assumed that the user has the obligation to find the property owner. He doesn’t see the reason for that assumption; it’s not intrinsic to the property right that an ex ante transaction needs to be initiated by the user. We could have the owner find the user. In real property, that would be inefficient because of the practically infinite number of potential users of a piece of land. As property owner, you have no particular advantage in figuring out whether there’s a higher-utility user of your property out there. But in patent, that’s not true. As between two parties, the question is who has the lower cost of finding the other. In many cases, not all, the patent holder has an easier time finding potential users, and thus the burden of search should be allocated to the patent owner.

He means ex ante, before infringement begins. Not intended to deal with user who hides use and thus conceals infringement. But can you really find potential users before they start to use? His answer: yes, there are big companies in many fields who are potential users and who you should approach if you have a relevant patent. It’s very hard to find the absolute last user, but those are fairly unlikely to become major users, and for the very reason that you can’t know of them ahead of time, they can’t figure into ex ante incentives to create all that much. (What should the rule be for them? If not same rule, heightened barriers to entry.) Gist: when patent owner is the lower-cost searcher, it should have duty of search. Duty should be implemented by saying that, if you didn’t conduct an ex ante search, you forfeit infringement damages. (Injunction?) Has an alternative proposal requiring either marking (and thus practicing/producing) or notifying the user—much easier to give notice that people will actually see if you have a commercial product.

commentary by Lawrence Sung, Professor and Director, Intellectual Property Law Program, University of Maryland School of Law

Many in industry would say that they don’t know of a patent until someone’s been sued. That serves as notice to be concerned. This arguably takes care of less sophisticated parties. Is transparency the problem for unsophisticated parties? You have an issued patent (claim interpretation issues aside) and then you have markets/actual practice. People who aren’t manufacturers may not know whether or not the products they’re selling embody patented technologies.

Chiang: tort law dominates his paper: cheapest cost avoider. Don’t know ahead of time who’s the cheaper cost avoider. Basic rule of contributory negligence: ex post, we deem whoever was the lower-cost avoider either negligent or contributorily negligent. Ex ante, you take what you deem to be reasonable precautions. Here, that would be to do a cost-justified search.

Beth Winston: many informal arrangements for big companies already exist—you do go to the big companies.

Chiang: true: many people take appropriate precautions even in the absence of tort rules, but tort rules can help increase conformity.

Sung: tougher sell with unsophisticated users on one side or another.

Chiang: The smaller producers are no less well off absolutely in my system (though they are positionally less well off), and if the system doesn’t break down they’re ok, but the system will predictably break down once in a while (when little succeeds and gets bigger). Small patentee: faces different constraints.

Poisoned Flowers (Finding Superman in Cyberspace), Thomas C. Folsom, Professor, Regent University School of Law

The end of a project. A coded world can build products to behave exactly as we want—can diminish transaction costs to nothing if we can code away the features of a product that are causing unintended side effects/harms. (What does he mean by transaction costs?)

Nature and place of use: coded world is an embodied switched network for moving information traffic or changing the state of a machine. Overlapping places: cyberspace, metaverse, virtual worlds, psiberspace, cipherspace, newsspace. Actively involved in information traffic. “I” am an augmented presence when listening to another on a phone. Increases vulnerability (may not know who you’re dealing with). Need trust. If we want the law to incentivize that, we might specify rules that enhance trust.

Some rules can be the same as those from ordinary space, like when I buy a shirt. Other rules can’t be, and if they require transposition we need to check for appropriateness. When we get new law entirely, we need to figure out what it is: what is trespass in a case when we run two digital instances of the same thing? What happens when your speech is performative: you say “friend” and you open up a new source of information. You say “Kansas” to Siri and something happens.

(I’m reminded of George Lakoff’s work on categories: a lot of times the new spaces require us to specify relationships we actually can’t—our categories are fuzzy and have cores and peripheries, but we haven’t been able to code that. Transposition is working, if at all, by changing the nature of what it is to have a “friend.”)

His project aims to code in ways to avoid TM infringement liability for attention: give users an option to say “actually I was looking for the official site.”