American Law Institute, Young Scholars Medal Conference on Copyright and Patent Law: Bringing Together Copyright and Patent Law in Court

Moderators: Professors Jeanne Fromer and Mark Lemley

Panel 1: Borrowing Law between Copyright and Patent Law

Pam Samuelson: Constitutional kinship has embedded itself in minds of American scholars, and has led to borrowing between the two fields.

Reasons to borrow: (1) When each field faces the same problem or a similar one and one of them has found a solution first. Exhaustion/first sale; property rights of owner of copy.  Misuse started in patent and migrated to copyright.  Invalidity challenges: public domain status of nonqualifying subject matter.  Preemption of state law. (2) Where either prospective or actual expansive interpretation of law on one side presents issues that law can’t easily address, and now it has to borrow to handle the problem. At one time, patents for algorithms seemed to be likely to be approved by the Fed. Cir.; so what happens if you teach an algorithm in class? Would need to make up fair use.  Likewise, patent infringement via reverse engineering might raise these issues. Betamax: copyright hadn’t addressed the use of technologies to aid other people’s infringement, and patent had.  (3) Also, scholars have recommended borrowing for things like independent creation on the patent side.  Improvement as a defense on copyright as it is on patent side.  When one side seems to do it better. (4) Coming to understand contingent nature of copyright/patent by recognizing that it wasn’t always so and that we could think differently. Biagioli: early scientific instruments were printed on thick paper and copyright was used to protect them, but they migrated to patent over time.

Reasons not to borrow: (1) Wrong idea, like Whelan v. Jaslow, applied a patent standard (do the same thing in the same way) to copyright, undermining focus on expression. Patents on tax methods or other legal methods undermine copyright’s decision not to protect laws, legal information, and the like.  (2) When the other law doesn’t face the same kind of problem.  Copyright doesn’t usually deal with national security issues, while patent has special rules that shouldn’t be borrowed.  Free expression and cultural policy are reasons to keep them within bounds.

Rochelle Dreyfuss: European discussion: genes are information and chemicals.  Which part dominates?  Patent or copyright?  In copyright/TM, if something is fundamental—idea, fact, generic term—it’s in the public domain. The public interest trumps the private interest because we need the upstream products to get downstream innovation. More borrowing of this concept by patent would be helpful. Using DNA to diagnose disease: don’t have a good grasp on this in patent, but could say, borrowing from copyright/TM, that it’s not protectable at all; protectable only in certain circumstances; or protectable with specific exceptions.

Dan Burk: you can have borrowing or you can try to expand the scope of an existing regime: shoehorn utilitarian software into copyright, which results in an expansion of copyright.  Copyright in DNA/synthetic biology. That may itself require borrowing, but even w/out that expansion may or may not work.

Tim Holbrook: internationally, TM/patent were more likely to be lumped together; that copyright/patent pairing is unusual. Internationally, we see much more in the way of intermediate regimes/overlap.  Borrowing can be an unfortunate shortcut: Grokster inducement—the idea of knowledge is very different in copyright than in patent, just as validity challenges are not as important in copyright.  Not stepping back and thinking of consequences of borrowing on the overall system.  Keep eye on what you’re trying to achieve.

Dreyfuss: Copyright and patent are path-dependent.  There are some fruits of inventiveness that seem to fall into the gap: data compilations, for example.  And there are many things that shouldn’t be protected against copying.  Multiple considerations, including other incentives to innovate that exist in some fields or other ways of rewarding innovation with money.  Sometimes legislatures are required but courts can also do this sensitively by looking at solutions elsewhere.

Samuelson: dramatic plays, fabric designs, photographs: there weren’t good doctrinal tools to deal with things that weren’t like those—misfit of tech within copyright law.  For a while, there was a mismatch, but what happened was that courts began to understand that fabric designs weren’t going to give them what they needed to handle software, so they reached back to Baker v. Selden as the closest approximation of how to deal with functional things in books.  Dreyfuss’s idea: reinventing limits in copyright. Samuelson was initially a fan of sui generis rights, but she came to realize that internationally it made sense to have copyright for software as long as we worked out through the caselaw limits on scope.  Copyright also receded in recognition that patent was playing a role.

Burk: Petty patents and industrial design regimes are very common; not really sui generis in the sense of being tech-specific. 

Holbrook: some of the dynamic on the patent side is that the tools seem pretty blunt.  Subject matter eligibility is a big stick, and maybe we want some level of protection but not the full scope of traditional protection—that would be a great place to do borrowing, where we want incentives and access. Copyright seems to have more nuance in those contexts.

Burk: utility models/industrial design can seem to have some blend of tools/aspects on continuum: registration v. full examination; other countries may have filled in the gaps better than we have. (Is that good?)

Dreyfuss: we got rid of nuance, like the research exemption. Before doing that, might look at other regime and ask whether getting rid of it is a good idea. Patent misuse is declining (and antitrust isn’t a big constraint either)—whereas misuse is rising in copyright, and that might indicate that we shouldn’t abandon it in patent.

Maureen O’Rourke: Merges’ empirical study showed courts trying to modulate patent rights across industries. Copyright is more flexible.

Burk: the problem is that the courts are using the wrong tools; some are sharp and some are blunt. Utility might not be the right tool for DNA, but other patent doctrines are more narrowly focused. Others have looked at similar questions in copyright—whether things could be attuned to particular industries.  Judicial reluctance to admit that courts are an active part of shaping the innovation environment, perhaps because of the political culture in which no one wants to be called “activist.”

Mark Lemley: one of the underlying things is the assumption that we have a basic common law approach to some of these doctrines, and they have flexibility to evolve. That idea, which is the ALI idea, is under sustained attack—a strong wing of legal scholarship and judicial philosophy which says “all I do is read the statute,” in part because we have more statutes and more detail than we used to but also in part because of this mistaken idea that developing the common law = judicial activism. If all you do is read the statute, you’d have no cross fertilization.

Judge Yvonne Gonzalez Rogers: we are faced with a specific problem, and rely on the lawyers to frame the issues. In a judicial emergency, we will not go out and find a case from the 1800s. If there is a structure that makes sense and someone can come in and say “these are the principles/policy at issue and this is how to fill the gap,” we’re happy to consider that.

Lemley: doesn’t think it’s the judges alone: lawyers won’t make these arguments if they think judges aren’t receptive. This is a broader problem with the death of the common law.

[then I had to leave for a bit]

Dreyfuss: look at licensing. The idea that a copyright license wasn’t transferrable was borrowed without consideration of whether the underlying reasons for the rule in patent were different. That’s not the good kind.

John Roedel: We do have a patent statute that we have to interpret. No judge has any authority to enact a defense of independent creation in patent law. If the improvement is within the scope of the claim, there is no fair use or any other statutory basis to create a defense.  Improvement defense would imperil the patentee and make his disclosure dangerous. Same with DNA sequences. Maybe sui generis regime is a legislative opportunity, but a DNA molecule is a composition of matter. End of question.  ALI is to guide law where it doesn’t exist/needs to be rationalized, but the law does exist.

Samuelson: Dreyfuss earlier asked why eBay would apply to copyright injunctions: the SCt had three previous cases saying that non-injunctive relief could be more appropriate as a remedy even for non-fair uses—Campbell, Stewart v. Abend, etc. 

Dreyfuss: true, but courts sometimes aren’t thinking about defenses that might apply before going to eBay.  As for Roedel: if the patent statute were as you said, that might be true, but in fact it is quite open ended. There is no definition of make, use, sell: has always been interpreted using the common law.  Nonobviousness moved from common law to statute; wouldn’t be there but for the fact that judges have taken up the task of figuring out what these provisions actually mean. Other IP fields are one source of that. 

People are talking about independent invention as a defense under the doctrine of equivalents. The doctrine of equivalents is itself judge-made. It’s a little hard to understand why it’s ok for judges to make up the doctrine of equivalents but not make up a defense. Areas of vagueness persist.  Research defense has always been creature of common law; taking it away is at least as activist as leaving it.

Holbrook: Reverse doctrine of equivalents—refusal to apply it, without much thought about why we’ve given up on a doctrine confirmed by SCt precedent. And that does deal with balancing innovation/improvement.

Lemley: You can’t contravene the statute.  And if the court acts in an area not dictated by the statute, Congress has the power to say no, as it did when it imposed limits on patent misuse. But we have the freedom and the responsibility to develop doctrines that respond to circumstances not fully defined by the statute.  Doctrine of equivalents is an example; in copyright—substantial similarity, idea/expression, etc. some of which are later codified or codified as modified. The attitude that “this is a statute and I can’t do anything” leads us to be reluctant to do that but also to ignore the doctrines we already have. Is DNA a composition of matter? Yes, but it might also be a product of nature, a 150-year-old doctrine. We shouldn’t dismantle common-law doctrines just because they’re not stated in the statute.

Roedel: recognize that there are areas not definitively prescribed, and courts must do the best they can. In the early days of the patent system, many doctrines did evolve. But then the statute has been enacted and reenacted, presumably assuming those basic principles.

Arti Rai: Rules v. standards: SCt’s approach has been to use what they see as standards, not rules, in the patent statute to make policy—e.g., Prometheus, where for better or for worse the SCt says it’s interested in innovation.  Depends on which court you’re talking about in the use of common law.  SCt likes standard-based approach.

Settled expectations: do we have a property rights regime that should be subject to settled expectations more in patent than in copyright? Product of nature doctrine is settled, but its application may be unclear.

Fred Von Lohman: if you look at the judge-made law, it’s probably more important than the statutory law in the cases: judges made first sale and fair use, and then they ended up in the law. But since then, we’ve also seen enormous judge-made activity—2005’s Grokster—the entire body of secondary liability has next to no statutory foundation, the words “to authorize.”  Contributory, vicarious, inducement—that’s a lot of judge-made law on top.  Misuse too.

In all this talk about borrowing, why not talk about remedies?  Difficult to see borrowing doctrines like inducement from a body of law that doesn’t have statutory damages and criminal liability to a body of law that does, which drastically changes the implications.  This is what judges don’t think about when they borrow from patent to copyright.

Dreyfuss: her point about eBay. She agrees that care must be taken.  Copyright cases sometimes say “why not use treble damages as in patent law?” without understanding what a mess the patent cases are.  (I’ve long thought that every body of law, being fractal, looks more coherent to the outsiders/potential borrowers.)

Holbrook: Kirtsaeng—maybe the different statutes should make a difference; consequences of exhaustion may be different too.

Samuelson: you wouldn’t have $600,000 in damages against an individual in a patent case. This is all statutory damages.  If she could borrow the idea of some relationship between actual damages and damages for willful acts, she would. Doesn’t want statutory damages on the patent side.

Von Lohmann: If Kirtsaeng loses, the next Kirtsaeng could very well go to prison.  The next Quanta executive, not so much.

Jason Schultz: Volitional conduct is another interesting question: who is making the copy? In patent, where is the infringement occurring and who is doing it?

Burk: discussed the patented pollen hypo: strict liability does seem inappropriate.

Robert Wilkins: Hatch-Waxman’s goal (whether fulfilled or not) was to provide a safe harbor to litigate and determine rights of parties. Does that make any sense for copyright?

Burk: complex statute; deals with some very specific instances of interaction between PTO and FDA. Parallel situation in copyright might have tools for that goal—fair use, misuse, declaratory judgment. Might not want anything as complex as the Rube Goldberg of Hatch-Waxman, especially since you don’t have to deal with another agency.

Holbrook: DMCA is a bit like that—statutory overlay that goes beyond use of court system. Tying back to statute v. common law, you do have a new declaratory judgment action under Hatch-Waxman, and SCt gave more of a policy approach to it than a rule-based approach.

John Goldman: who do we trust to do this borrowing? SCt Justices don’t often understand the full nature of the statute from which they are borrowing.  DCt judge might feel less empowered to adopt an interpretation even knowing more about the systems.

Judge Friedman: From the dct judge’s point, there are lots of things we can do with gaps in the law if the lawyers will help us.  We can’t do it on our own.  If it has to be done in a nuanced way, and if we pick analogies that don’t work, we need help from IP lawyers understand which analogies do work.

Burk: ecosystem is a popular term in other disciplines: it is an ecosystem.  Adversarial system includes lawyers and different levels of judges; borrowing can happen along the way.

Scott Hemphill: Harm as a relevant principle: if an act really does threaten incentive to create, that is the basis of liability.  We have antitrust harm as a principle; why not in IP?

Samuelson: reform group has debated harm as an element of infringement. Consensus: easy to prove for iterative/near iterative copy in same marketplace, but harder in other areas. Maybe more proof ought to be required in those contexts.  Report of the copyright reform principles project: it’s time to have that conversation—Hovenkamp & Bohannon and others have suggested harm.  ALI could usefully try to address it.

Judge Kathleen O’Malley: eBay is a bad example of borrowing because it’s about first principles, not patent/copyright but rather the rules for Article III courts.  Judges aren’t policymakers on our own; our job is to figure out what Congress meant to do policywise. Lawyers should argue that the policy informs statutory interpretation or gap-filling, not that the policy itself directs the result.  Hatch-Waxman: Congress’s policy was well-stated, which helps interpret it.