“Being good in business is the most fascinating kind of art.”In recent years, a debate has reemerged  in Congress, in academia, and in the fashion industry over the extension of copyright-like protection to fashion design. The proponents of increased protection for fashion design argue that copying technology-particularly the speed with which images of designs from runway shows can be sent around the world via the internet-has changed so drastically in recent years that designers are suffering unprecedented harm that must be rectified by copyright-like protection. On the other hand, opponents argue that increased protection is unnecessary because the American fashion industry-a $340 billion industry-is thriving, and therefore, even if copying has increased in recent years, designers are not economically harmed by it. Supporters of “fashion copyright” have introduced two design protection bills into Congress: the Design Piracy Prohibition Act (“DPPA”) in 2006, which was revised as the Innovative Design Protection and Piracy Prevention Act (“IDPPPA”) in 2011 and re-introduced in September 2012 as the Innovative Design Protection Act of 2012 (“IDPA”). This bill would amend the Copyright Act to extend sui generis, copyright-like protection to fashion design. The primary proponents of increasing intellectual property protection for fashion design have (unsurprisingly) been fashion designers, represented by the Council of Fashion Designers of America (“CFDA”), with the assistance of a number of law professors. The greatest roadblock they have encountered in arguing for increased protection is convincing lawmakers that there is a reason to alter the status quo. American copyright law is generally seen as a means by which to incentivize investment in creative products by “securing for limited Times…the exclusive Right” to create and distribute copies of those creative products so that initial investments may be recouped before other copiers enter the market. In the absence of copyright, there would be a dearth of investment in the creative goods-a market failure that can be cured by copyright. Copyright protection currently excludes fashion design under the “useful articles” doctrine, which bars copyright for any object whose design features cannot be separated from its utilitarian aspects, either physically or conceptually. Although trademark laws protect brand names and some designs enjoy trade dress or design patent protection, the fashion industry generally operates under a low-IP regime. The low-IP regime has existed since the beginning of the American fashion industry and, as many opponents of design protection have pointed out, the industry has thrived both creatively and economically in the absence of copyright, rather than crumbled as economic theories might predict. Thus, there is little evidence of the type of market failure in the fashion industry that copyright seeks to remedy. Why then have so many members of the fashion industry continued to argue for increased intellectual property protection for fashion design? If copying does not financially harm designers, then there must be non-economic motivations behind their quest for increased design protection. During recent Congressional hearings on the DPPA and IDPPPA, advocates of design protection, while attempting to tailor their arguments to fit an economic theory of copyright, revealed that they have been strongly motivated by morals-based reasoning that builds upon the unique contemporary relationship between fashion and art. The proponents of increased design protection have been correct to recognize the striking similarities between fashion and art in contemporary culture. Not only do fashion designers and artists collaborate and inspire each other, the practices and business models of the fashion and contemporary art worlds are hardly distinguishable in modern society. Fashion designers are widely recognized and discussed as creative geniuses, their work is examined and analyzed in art-historical frameworks, and their designs are exhibited internationally in museums alongside prized art objects. Simultaneously, artists, particularly since the 1950s, have incorporated the mass-production, business-minded, and branding practices of the fashion industry into their work at least in part as a way to challenge the definition of art. It is not economic harm, but the sense that fashion is art and thus deserves intellectual property protection that has motivated modern proponents of increased design protection. They desire moral, not economic protection. However, U.S. copyright law generally rejects morals-based justifications in favor of economic, utilitarian ones. It makes little sense to extend an economic right to fashion designers predicated upon a desire for morals-based protection-especially without explicit recognition of these motivations. Visual art, unlike other copyrightable goods, does receive special morals-based protection under the Visual Artists Rights Act of 1990 (“VARA”) and various state moral rights laws. The moral rights granted under these statutes seek to protect the reputation of an artist by preventing others from modifying or misattributing his works. If proponents of increased design protection desire prevention of copying predicated on morals-based harms, that position and related arguments both for and against such protection should be discussed openly. Discussion of the extension of increased design protection in the fashion industry should be considered and discussed under a moral rights, not copyright, framework. In Part I, I analyze the shortcomings of the economic arguments for increased design protection. In Part II, I show that an examination of the legislative history of the DPPA and IDPPPA reveals that many of the proponents of increased rights are motivated by the belief that fashion is “art” and is thus deserving of intellectual property protection equal to that of art. Although it is highly contestable whether fashion merits the status of “art,” an understanding of this viewpoint is necessary to explore fully the arguments for increased design protection. In Part III, I argue that the contention that fashion should receive commensurate protection with art because of the similarities between the two creative fields draws more strongly on a morals- and personality-based theory of intellectual property than on the economic theories that underlie contemporary U.S. copyright doctrine. Thus, the debate over increased design protection should shift its focus to a discussion of reputational and moral intellectual property rights instead of straining to discuss fashion protection within the framework economically grounded American copyright law.
“Art produces ugly things which frequently become more beautiful with time. Fashion, on the other hand, produces beautiful things which always become ugly with time.”Under current U.S. law, fashion designs, unlike many other creative goods, can be freely copied. Although economic theories of copyright predict that in the absence of protection against copying, investments in creative goods will not be recouped and will result in a lack of incentive to create, the American fashion industry has continued to produce creative goods and to thrive financially in the absence of copyright protection. This “low-IP equilibrium” is explained by the economic model, under which there are certain circumstances that may facilitate market stability in creative industries that lack copyright. First, if the copying of creative works takes a significant amount of time, and demand for the work decreases over time, the original producer of the work will enjoy a period of market exclusivity until copied works are available. In some instances, this first-mover advantage provides enough economic compensation to incentivize creation in the absence of copyright. Second, if copies are not perfect, original creators will continue to enjoy economic success by selling their products to consumers who do not wish to buy low-quality substitutes.  arguing that in the past designers enjoyed a substantial first-mover advantage that has recently disintegrated due to technological change. That copying (or “piracy”) has existed in the fashion industry since the birth of “fashion” as we know it is indisputable. However, the advocates of design protection argue that the piracy game has now changed significantly due to the increased speed with which high-resolution photos from runway shows can be disseminated across the globe via the internet. Designer Lazaro Hernandez of Proenza Schouler summed up the problem for Congress in 2011:
[T]here [are] Web sites now where you get a runway show, and they can literally zoom in to the garment front and back, copy stitch for stitch, and pretty much print it and make it in a couple days flat and ship it before we ourselves can even take orders on the product. And I think that’s something that’s happened in the last 10 years that has changed the game 100 percent. The protection hasn’t caught up to the level of technology.Similarly, Professor Susan Scafidi told Congress five years earlier that “[c]reative fashion designers in earlier periods fought copyists by relying on strategic measures like speed and secrecy…Today, however, the same speed and accuracy of information transfer that affects the music and film industries is also having an impact on fashion.” This argument is not without intuitive appeal, and indeed many changes in copyright law have been motivated by changes in copying technology. However, the use of this narrative in the story of the fashion industry’s plight has been less successful than in other creative industries. It is not so clear in fashion that the speed with which pictures can be sent across the globe has really had such a drastic impact on the fashion industry as Napster had on the music industry, YouTube had on the film industry, or Google Books has threatened to have on the publishing industry. Unlike Napster, YouTube, and Google Books, copying in fashion is not completed merely through internet dissemination: physical copies must still be produced and those copies can never be perfect substitutes as Napster, YouTube, and Google Books copies usually are. After all, images of fashion designs have always been disseminated around the world. In the early days of fashion, designs originating in Paris were shown throughout Europe on traveling mannequins (that even travelled to America). Later, as photography and publication technologies developed, so did fashion magazines that spread images of new designs throughout Western culture. Now, as digital technology and the internet expand, fashion blogs and websites broadcast runway show photos throughout the world instantly. It is clear that the speed of image dissemination has increased with advances in technology, and it is no longer necessary for manufacturers to send designers to couture shows in Paris in order to sketch designs for copying as was necessary in the early-to-mid 20th century. Contemporary complaints about the speed of copying, however, seem hardly different from those of nearly 100 years ago. A designer in 1916 complained that “within forty-eight hours after [a design is] exhibited in a retail department store…at the corner of Twenty-third Street and Fifth Avenue, they are selling sketches of [as many of] my designs as can be secretly captured.” And the increased interest in fashion and style in the inter-war period only led to an increase in the amount and extent of piracy, leading it to be called in 1928: “one of the most outstanding evils of the apparel industry.” By 1932, dressmakers in New York felt that piracy had become so detrimental to the fashion industry that the major American design houses joined together to form the Fashion Originators’ Guild of America, which entered agreements with all of the major retailers that prevented them from selling pirated designs if they wished to sell the clothing of Guild members. By the 1980s, fax machines allowed images of designs to be sent around the world within hours of their debut on the runway. In fact, Professor Sprigman has argued that even if the speed of copying today is drastically faster than it was in the early 20th century, it has increased only negligibly since the advent of the fax machine. In the end, whether or not the speed of copying has increased in recent years, copying speed is meaningless in the debate over design protection unless we know two things. First, exactly how much lead-time is necessary for designers to receive sufficient compensation to maintain the low-IP equilibrium? And second, does the first-mover advantage actually affect the low-IP equilibrium in the fashion industry at all? It could certainly be the case that the speed with which design copies reach stores has no discernible economic effect on designers’ profits. Unfortunately, economic evidence that would answer these questions has yet to-and may never-emerge, leaving both advocates and opponents of design protection (and Congress) unsatisfied.  This natural limitation on economically harmful copies seems to make perfect sense in the fashion industry: Economics tells us that even if copies reach stores at the same time as originals, buyers of originals will not defect to copies that are of a significantly lower quality; the fashion industry tells us that there are often significant differences between “fast-fashion” copies and the originals that inspire them. For example, it is hard to imagine that a regular Chanel customer who, for instance, accompanied her teenage daughter on a shopping trip to Forever 21 would be so enticed by a $20 copy of a new $2,000 Chanel jacket that she would buy the former instead of the latter. The Forever 21 version is undoubtedly of a drastically lower quality than the Chanel original, and, importantly, it lacks the powerful cachet of the “Chanel” name. It seems that even if Forever 21 can produce and sell an exact look-alike Chanel jacket as quickly as Chanel can, Chanel probably loses very few customers to fast-fashion. Proponents of design protection usually counter this argument with anecdotes of the “personal tragedy” of individual designers who are driven out of business by design pirates. As Professor Sprigman has noted, however, an economic analysis of copyright law in a particular industry is generally premised on an examination of benefits and losses taken together, not on an individual basis. In any industry there are winners and losers, with or without copyright, and, as Professor Sprigman has advocated, “Before we go and change [a 217-year tradition denying copyright to fashion design], we should have more than a few anecdotes about harm. We should have some robust, formal, methodologically rigorous studies of this industry.” We no longer live in a world where Mr. Macy sends a designer to the Christian Dior show in Paris to hastily sketch designs and buy individual pieces to be brought back across the Atlantic and copied in Seventh Avenue garment shops. Copying is now quick and cheap, but simultaneously, the American fashion industry is thriving. Macy’s no longer has to send copyists to Paris, but can instead buy garments from an impressive assortment of original, innovative, and successful American designers. All of this economic growth and creative evolution has happened in the absence of copyright protection. If, as it seems, most participants in the fashion industry are economically successful and traditional economic arguments show lack of a need for fashion copyright, it remains to be seen why the debate over fashion copyright has continued to rage. In the end, the economic arguments both for and against design protection have proven unsuccessful.
“Art? Isn’t that a man’s name?”If copying in fashion design does not cause industry-wide economic harm at a level that would indicate a market failure necessitating correction through copyright protection, then a logical question arises: Why has the economically thriving fashion industry decided to wage this copyright war? I believe the answer can be found by stripping away the unconvincing economic arguments that disguise the thrust of the industry’s real argument-that fashion design is “an art form,” an extension of a designer’s creative soul, and thus deserves some form of protection. The problem with copyright law according to Women’s Wear Daily, the leading industry publication, is that its “protection does not cover apparel because articles of clothing are currently considered ‘useful articles’ as opposed to works of art”-an apparent “loophole in copyright law.” Implicit in this statement is the faulty assumption that copyright protects “works of art,” and that if fashion can make the leap from being considered a “useful article” to a “work of art,” it too can enjoy some sort of copyright protection. The assumption that fashion design should receive copyright protection if it can be seen as “art” is not only an idea popularized by the fashion media but is also one regularly invoked by supporters of fashion copyright, including in the congressional debates on the DPPA and IDPPPA. For example, when the IDPPPA was passed by the Senate Judiciary Committee in December 2010, the manager of government relations for the American Apparel and Footwear Association approvingly remarked:
The industry will finally have the ability to protect the truly original, artistic pieces of fashion that presently do not have any protection. This bill does a great job of drawing the line between what is useful and artistic. For those who do truly original art in fashion, they will have an opportunity to gain protection.Earlier, in the 2006 hearing on the DPPA, Congressman Issa argued to his peers that “dresses are clearly, let’s be honest, it’s art…[and thus] [c]learly there is a constitutional obligation for us to [protect] these creations.” In the 2008 DPPA hearing, designer Narciso Rodriguez argued that over the last century “fashion design has become an art form,” and Professor Scafidi maintained that one reason fashion deserves protection is because it is “now recognized as a form of creative expression,” and that French recognition of design protection indicates “[t]he formal recognition of fashion design as an art form” in France. One could easily dismiss this line of reasoning as unprincipled by pointing out that copyright law does not seek to protect “works of art” but instead protects economic incentives when necessary to generate investment in creative goods that benefit the public good. Sometimes this results in the protection of “works of art.” Although that may be correct as a matter of copyright jurisprudence, it has been unsuccessful in discouraging the proponents of design protection. The belief that fashion is art is deeply held, and has developed over decades of interaction between the fashion and art worlds. Beginning in the 1960s and increasing rapidly over the past twenty years, simultaneous changes in the art world and fashion industry have led to an increased sense among designers, members of the fashion community, and many members of the fashion-consuming public that fashion, if not “art” in itself, is so closely related to and intertwined with “art” that it should receive-and in fact deserves-the same types of legal protections as art. Discussions of increased design protection should not be ignorant of the contemporary relationship between fashion and art and the resulting sense that fashion designs should receive morals-based protections in a way similar to art. In the sections that follow, I describe the ways in which fashion is more art-like and art is more fashion-like than ever before, as I believe it would be naïve to ignore these developments in crafting appropriate intellectual property protection for fashion design.
“My primary concern has always been respect for my craft, which is not exactly an art, but which depends on an artist for its existence.” The concept of the fashion designer as a celebrated creative individual did not emerge until the late 19th century. Prior to this time, well-dressed ladies in the courts of Europe had personal seamstresses who created custom garments without receiving any recognition as a “designer.” Most women wanted their peers to believe that their clothing was the product of individual creativity and style and avoided accrediting it to any designer. Charles Frederick Worth is generally cited as being the first “designer” in the modern sense. Worth formed his fashion house in 1858 and, with his resolute vision, created the system of designer-led fashion that we now take for granted: “With great aplomb and a shrewd business head, Worth emphasized that his taste was the final word.” Worth and other early couturiers “were to crystallize the notion of the designer as the creator not just of handmade clothes, but also of the idea of what was fashionable at a particular time.” Gabrielle “Coco” Chanel added further meaning to the concept of the designer by putting her own personality center-stage in the marketing of her clothes. Her success is credited as founded upon “the magic of the self,” and she was lauded for her “ability to market an idealized vision of herself, and to embody her own perfect customer.” Although European couturiers have been recognized for their creative genius since the time of Worth, it is only since the second half of the 20th century that American fashion designers attained a similar status. Prior to the emergence of American designers like Bill Blass, Perry Ellis, and Calvin Klein-the first to transition from mere garmento to true designer-American designers were regarded as anonymous craftsmen who used their sartorial skills to copy Parisian designs for the American consumer. Not only are designers now recognized as the creators of the clothing they produce and sometimes as the face of their brands, in the modern fashion world they are often discussed as having a kind of creative genius previously reserved for great artists. The design houses themselves have played no small part in the celebration of their designers as innovators and artists. This exaltation of the designer as an artist has been pivotal in elevating fashion to be discussed “on a parallel footing to art” in the “larger system of visual culture and communication.” In turn, the admiration of the designer’s creative genius is fundamental to the argument that legal protection for fashion design might be based on a reputation-based theory of moral rights.  A year later Saint Laurent produced a pop art-inspired collection that featured “The Souper Dress,” a shift dress made of paper bearing Campbell’s soup can labels repeated in a geometric grid-a wearable Warhol. Saint Laurent, an avid art collector in his own right, revived this practice many times throughout his career with tributes to Van Gogh, Matisse, Picasso, Braque, and Cocteau, among others. In discussing this practice, Saint Laurent said that his “intention was not to compete with the Masters, but at the very most to get close to them and learn from their genius.” If Yves Saint Laurent appropriated the work of artistic “Masters” in order to feel close to their genius, other designers have taken this impulse further to work directly in collaboration with the artists they admire. Two of the most salient and successful contemporary examples of this practice are Takashi Murakami’s and Richard Prince’s collaborations with Louis Vuitton. The Murakami collaboration produced a number of incredibly popular handbags, most famously the “Monogram Multicolor” bags that made their way into the collection of perennially produced Vuitton classics. Richard Prince also designed a capsule collection of “Joke Monogram” handbags for Vuitton, inspired by the artist’s Jokes series of paintings; Prince’s famous Nurses works influenced the designs of the entire Vuitton Spring/Summer 2008 collection designed by Marc Jacobs. The bags were not only sold in traditional retail outlets but also in museums exhibiting the artists’ work-Murakami’s at the Los Angeles Museum of Contemporary Art in 2007 and the Brooklyn Museum of Art in 2008, and at a party for Prince’s Guggenheim retrospective in 2008-placing the objects in an intriguing place somewhere between commercial fashion and high art. Beyond appropriation and collaboration, the fashions of the past fifty years are often discussed as operating within and contributing to major artistic movements and theories, particularly minimalism and postmodernism. Often designers describe themselves as inspired by artists and designers who preceded them, assisting us in finding a place for their work among broader aesthetic movements. Like the minimalist artists of the 1960s who rejected the constraints of oppressive artistic categories such as painting and sculpture, designers of high fashion at this time began to rebel against the dictations of the human form, which had previously served to limit design choices. Designers’ rebellion against the constraints of the body can be seen as a sartorial answer to minimalist art’s abandonment of representation. Hubert de Givenchy anticipated this when he introduced the “sack dress” in the late 1950s. It was met with skepticism, reflected in a Time magazine caption that read: “Ou est la poitrine, ou sont les hanches, ou est la femme?“ or “Where is the chest, where are the hips, where is the woman?” To which M. Givenchy replied that the dress was “inspired by modern art, the experimental art that seeks new shapes and forms transgressing the limitations set by convention. With my new dress form I have discarded, among other things, the limitations set by the female form.” This practice reemerged in the 1990s with Japanese designers such as Rei Kawakubo (of Comme des Garcons), Issey Miyake, and Yohji Yamamoto, who “mined their own form of sartorial minimalism, heavily reliant on the abstraction and rejection of the traditional female body.”  The movement of fashion into the museum picked up speed in the 1990s as the Victoria and Albert Museum in London and the Musée des Arts Décoratifs in Paris curated increasing numbers of fashion exhibitions. Since then, the popularity of displaying fashion in museums has continued to soar, perhaps culminating in the 2011 Costume Institute retrospective of Alexander McQueen, which attracted over 650,000 viewers to the Metropolitan Museum of Art. Placing an object in a museum certainly does not irrefutably make it art, but the museum context invites a more serious and contemplative approach to fashion, not offered by the retail store, that has led many fashion fans to think of the museum-exhibited garments as art. Similarly, the fashion show has gone from being a private venue for the showing of designs to buyers and press to a platform for public spectacle. The modern fashion show is highly conceptualized and choreographed to reflect and aid in the creation of a thematic coherency for each season’s collection. Gianni Versace changed the nature of the runway show in the 1980s by shifting the focus from the selling of clothing to the celebration of celebrity, glamour, and excess that his famed Supermodels exemplified. Once liberated from its constraints, other designers were free to use the runway show as a vehicle for both outsized theatrics and more restrained, conceptual performance art. Karl Lagerfeld’s shows for Chanel, often transformed Paris’ Palais Royale into an otherworldly paradise, such as the underwater universe he created to frame the Spring 2012 collection epitomize the former, while the late Alexander McQueen’s strange shows have been compared approvingly to the latter. McQueen, who has been credited with “redefin[ing] the runway as a stage for high-concept theatrics,” in 1999 presented a show in which a model in a white dress was repeatedly pelted by a paint gun, and in 2004 staged a show choreographed by celebrated contemporary dancer and choreographer Michael Clark. During Issey Miyake’s Spring/Summer 1999 presentation, models cut apart the designer’s “A-POC” (“A Piece of Cloth”) garments while on the runway, in a show reminiscent of Yoko Ono’s “Cut Piece” performance art of 1964. Fashion shows themselves have even begun to occupy the museums and galleries once reserved for serious artists. After sponsoring a Leonardo da Vinci retrospective at the Louvre, Ferragamo was the first fashion house to present a collection inside the hallowed museum walls in June 2012. Moreover, in what is becoming a more common practice, many fashion companies held their Spring/Summer 2012 shows and presentations in New York galleries.
-Yves Saint Laurent
“[I]f artists were in hell in 1946, now they are in business.”For all the ways in which fashion has increasingly emulated art over the past fifty to sixty years, during the same period, artists have begun to incorporate into their work many practices that mimic those of the fashion industry. Many contemporary artists operate like fashion designers by having their work produced in factory-like settings by teams of assistants, celebrating the commerciality of their products, and embracing celebrity and popular culture. Andy Warhol exemplified this practice. He worked out of a space he called “the Factory,” idolized celebrities to an extreme, rarely had a hand in the physical production of his work, and unapologetically acknowledged the commerciality of his enterprise, famously remarking: “[b]eing good in business is the most fascinating kind of art.” The extreme commerciality of fashion historically sullied its reputation in the art world and removed it from consideration as a serious artistic medium. In the 1960s, however, artists began to test the boundaries of commerciality. While this practice was originally met with criticism, it is now so commonplace that commerciality in contemporary art has become “overt and intrinsic.” During a retrospective of the work of Japanese artist Takashi Murakami at the Los Angeles Museum of Contemporary Art in 2008, a Louis Vuitton boutique was installed within the museum to sell the handbags that the artist had helped create, signaling that Murakami was not only willing to sell his name to sell handbags, but also that the Vuitton venture was hardly separable from his “serious” art on view in the museum. Not only have artists such as Warhol and Murakami embraced the commerciality of their practice, but also market prices for contemporary art continue to soar, making it even more difficult to view art as a category of goods that transcend commerce. While couturiers of the past might physically have constructed the fashions they designed, it is accepted in the modern fashion industry that designers have little presence in the creation of their works beyond the stages of initial conception and final approval. Similarly, although it is easy to picture a great artist of high modernism such as Jackson Pollock physically creating his art-theatrically applying paint to canvas-contemporary artists today are rarely so involved in the creation of their works. Artists like Murakami, Jeff Koons, and Damien Hirst supervise the work of teams of assistants who create the actual works that the artist conceives. Hirst has said of his “spot” paintings, “[M]y spots I painted are shite…The best spot painting you can have by me is one painted by [my assistant] Rachel.” This practice of denying authorship is certainly indebted to Warhol, who once remarked to a reporter in 1966, “Why don’t you ask my assistant Gerry Malanga some questions? He did a lot of my paintings.” We might still deny fashion’s equivalence with art by requiring art to be “serious” in either subject matter or meaning. Fashion could rarely compete on this level because of its preoccupations with beauty and celebrity. However, contemporary art has similarly embraced these notions. Warhol’s obsession with celebrity culture perhaps permanently abolished the idea that high art could somehow be above the intrigue of celebrity. Legendary designer Gianni Versace has been described as “[l]ike Andy Warhol,…in thrall to the aura of celebrity…’unashamedly star-struck, so unashamedly that it became endearing.'” Finally, one could argue that fashion, unlike art, rarely has any meaning or purpose beyond the functional and aesthetic: it exists to provide body clothing and warmth in an attractive and sometimes sexually appealing way. But like most precepts of “art” that have been attacked since the postmodern period, many contemporary artists refuse to announce any grand meaning behind their art, merely describe their work as “cool” or “really great looking.” Warhol described his process of choosing source material in a 1964 interview as relying on whatever image “caught my eye,” rejecting any notion that his images were symbolic or meaningful. And while being deposed for a recent copyright infringement suit, artist Richard Prince, in describing a work at issue said he wanted only to create a “balls-out, great, unbelievably looking great painting.” Just as it is left to the wearer to breathe life into the raw materials of fashion, its left to the viewer to construct the meaning of much contemporary art. A recent collaboration between artist Gary Hume and fashion designer Stella McCartney perfectly illustrates this modern disavowal of artistic genius on the part of both the designer and artist. Hume said of his work, “I just make things to look at. It’s a picture. It’s not a manifesto,” describing his style as “unexpressionist,” while McCartney similarly proclaimed, “I don’t design with a theme in mind; it’s about my friends and what I get up to when I’m in London. I’m not trying to shock people.”  then even if fashion is art, the classification as such means little in the contemporary art world where both everything and nothing is art. If “art” is no longer a special category reserved for the products of artistic genius, should it mean anything that fashion has won entry into the category? The argument by the fashion community that their work is art may actually be counterproductive. The second conclusion is that fashion is not art. Even though a principled method for conceptually distinguishing fashion from art may no longer exist, the two categories remain distinct, and we can quickly identify fashion by its wearability. However, even if fashion is not art, by exposing the place of fashion in relation to contemporary art, it is easier to understand the arguments of those who desire increased intellectual property protection for fashion. Whereas the argument that fashion designers need economic incentives to create is unsatisfying, it is understandable that in a contemporary culture where it is no longer clear that a principled line exists between fashion and art, members of the fashion community find it increasingly difficult to accept that their work exists within a starkly different legal regime from that of art.
“Design piracy denigrates the integrity of the style.”Although the assertion that fashion is art may be misguided, or at least an incomplete solution to problem of design protection, it is undeniable that fashion and art today have a synergistic relationship. When viewed from this perspective, it is obvious why fashion designers have felt compelled to demand increased protection for their work: their beloved creations, which they think of as art, which they created with the love and devotion of an artist, which have been critically reviewed like art, and which have been displayed in museums like art, are treated in a radically different way under U.S. law than art. In an effort to receive commensurate treatment with art, designers have petitioned Congress for copyright protection, but are not in need of the economic-based protection that copyright provides. Instead, they feel a sense of personal harm when their “art” is cheaply and slavishly copied. Thus, what the proponents of fashion copyright really desire-and have essentially been arguing for-is a moral right to protect against the reputation-based harms that are felt when designs are copied. Moral rights laws are generally designed to protect artists’ reputational interests in their works and are often premised on a personhood theory of protection, which posits that works of art embody an artist’s “individual essence” and are part of her “very identity.” Therefore, in order to fully protect an artist’s interests, we should recognize rights that “preserve the bond between the artist and her work.” The U.S. grants moral rights under the Visual Artists Rights Act of 1990, which protects visual artists’ rights of attribution and integrity, and many states grant similar moral rights protection. This sense that the work of an artist is an extension of the artist himself and is deserving of special, non-economic protection can be seen clearly in the Congressional debate over the DPPA and IDPPPA. Designers have not been shy to share heart-wrenching stories of their sense of personal attack in arguing for increased protection. They convey a sense that their creative works-thought of as “represent[ing] a complete embodiment of the internal self”-should be protected against unauthorized use because that would amount to a personal assault on the designer himself. For example, Narciso Rodriguez, who had the great fortune of designing the bridal gown for Carolyn Bissette’s wedding to John F. Kennedy, Jr., described the design as follows: “I designed something with great love for the most important person in my life…You know, it was a very personal thing for me, that dress.” The dress was subsequently copied many times over for American women who wished to emulate the enviable Mrs. Kennedy’s style. Mr. Rodriguez provided this story to Congress as an example of the way he was harmed in the absence of increased protection for fashion design, but he went on to say, “I never looked at it like something was stolen from me because I would have made that dress anyway.” Mr. Rodriguez’s statement perfectly illustrates the tension of extending copyright-like protection to design under a utilitarian, economic theory of copyright. He loved the dress and he loved the woman for whom he designed it. He did not need an economic incentive to create it, but he still felt harmed when it was copied. It could be said that the design “embodie[d] an intrinsic dimension” where his “creative impulse…eminat[ed] from inner drives that exist in the human soul…[which] do not depend upon external reward or recognition but instead are motivated by…the creation of works with a particular meaning or significance.” The intrinsic dimension of Mr. Rodriguez’s creativity is perfectly illustrated by his description of copying as “theft” and that “to steal something…[is] to copy my DNA and diffuse it.” It is not just designers who have invoked this personality theory in their arguments for design protection. Professor Scafidi, the fashion industry’s staunchest supporter in legal academia, has argued that fashion is “creative expression” and should thus be protected because “creative expression” is “exactly what copyright is supposed to protect.” In other words, fashion design warrants protection not because protection incentivizes design, but because all creative expressions of an artistic soul deserve protection. Congresswoman Maxine Waters voiced her opinion that the copying of Diane von Furstenburg’s wrap dress in “cheap material” is “an insult to the work she has done” noting that “there is probably something called pride in your work” that shouldn’t be “undermined by those who [copy] poorly.” Congressman Waters clearly sensed the moral rights undercurrent of the congressional hearing and felt that Ms. von Furstenburg deserved some sort of reputation-based right to protect the valuable creative energies she has expended in creating the wrap dress that is synonymous with her name. It is evident that advocates for increased design protection have been motivated by the sense that fashion is art to argue-albeit deceptively-that it deserves morals-based protection equivalent with that of art. Arguments over design protection that focus on the economic aspects of copyright law are inappropriate in the contemporary fashion industry. Instead, the debate should center on the moral rights protections that designers seemingly desire. But the question remains as to whether moral and reputational considerations can adequately justify the extension of copyright-like protection to fashion design, or if not, whether some alternative scheme might be devised to protect personality and reputational interests of designers. Instead of attacking the argument that copyright is economically necessary for the fashion industry, opponents of design protection should rebuke the arguments that fashion should receive commensurate protection with art or that any consumer goods should receive morals-based protection.
It is a perfectly legitimate practice for American dress houses to send buyers to the Paris Openings, where they buy only one of each model they select. These are brought back and copied exactly in largish numbers for customers who are dying for a “French model.”…But there is no sin where none is felt; the French are aware that American shops buy their models for copying. That has become an accepted fact.
Chanel’s easily adaptable components are the sartorial counterparts of minimal art’s primary shapes: basic building blocks that appealed intrinsically to a larger audience than the one drawn to overly ornate designs…Of all Chanel’s innovations, her little back dress would emerge as a conceptual ready-made that conveyed discreet, refined chic no matter the price tag…The little black dress is a standard and an original, a design that can be reinterpreted by nearly any designer or manufacturer and still retain its inherent value as the champion of progressive fashionable dressing. With regard to the minimalist discourse, this ready-made speaks to the major criticism of minimalism itself: in its simplicity, accessibility, and translation to mass production, is the minimal object enough “art”?Id. at 54-55.
Or at least, to have come close to destroying it. Adorno wrote that “art revolts against its essential concepts while at the same time being inconceivable without them.” Has the contemporary revolt against the category of art been so successful that it has destroyed art’s “essential concepts”? Has contemporary art turned “art” into a category that is “inconceivable”?Id. at n.218 (internal citation omitted).
In [some fashion] designs and presentations, artistic methods are used to comment on the practice of fashion, but this does not necessarily turn their fashion into art…Like other design forms, such as architecture, fashion has its own particular concerns that prevent it from ever being purely art, craft, or industrial design… In fashion’s case, focus on body and cloth, and the fact that it is, usually, designed to be worn and sold, distinguishes it from fine art. However, this does not prevent fashion from being meaningful, and the art world’s continued fascination with fashion underlies its cultural significance.
[T]here are practical benefits to designing a legal system of authors’ rights that promote authorship morality….”[T]he law can have an important symbolic function if it accords with public views about what is fair, but it loses that power as the formal law diverges from public morality.”…In the context of intellectual property laws specifically, [people should] “believe that the rules established serve reasonable social purposes and are not simply efforts to create profits for special interest groups, such as large corporations.(quoting Tom R. Tyler, Compliance with Intellectual Property Laws: A Psychological Perspective, 29 N.Y.U. J. Int’l L. & Pol. 219, 225-26 (1997)).
Work as Weapon, Author as Target: Why Parodies That Target Authors (Not Just Their Works) Should Be Fair Uses
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.Rather than view the factors in isolation, court are instructed that the factors are all “to be explored, and the results weighted together, in light of the purposes of copyright.”  Although the term possesses a rich history and etymology that makes defining it an imprecise exercise, the following will suffice as a working definition: work parody is “the imitative reference of one literary text to another, often with an implied critique of the object text.” In other words, not only does a work parody engage in mockery, but also it directs its focus to the material itself. Satire, of which work parody is sometimes classified as a subgenre, is merely prose that ridicules prevailing social norms and follies. Although work parody and satire are similar in that they can both make their target an object of criticism, satire “need not be restricted to the imitation, distortion, or quotation of . . . preformed artistic materials, and when it does deal with such preformed material, need not make itself as dependent on it for its own character.” Another way to conceptualize the distinction between work parody and satire is by identifying each form’s purpose for using the primary work. Whereas satire can use a particular work as a weapon for attacking an unrelated target, in work parody the work is the target. For example, the Ninth Circuit held that a spoof of The Cat in the Hat, which used Dr. Seuss’ text to mock the widely-publicized O.J. Simpson litigation, was satire. The court found that the new work merely served as a vessel through which the defendant criticized a separate concept. Conversely, the Second Circuit found that a recreation of a Vanity Fair magazine cover depicting a naked, pregnant Demi Moore with comedian Leslie Nielsen’s head superimposed on a model’s body constituted work parody because the new work could “reasonably be perceived as commenting on the seriousness, even the pretentiousness, of the original.” In the former case, the court perceived The Cat in the Hat as a weapon, and in the latter the court viewed the Vanity Fair cover as targeted by the new work.  As the remainder of this section shall show, this is the case because of how work parody and satire’s specific attributes measure against the four fair use factors of § 107. Fair use analysis under § 107 first commands courts to look at “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” Although work parodies are often commercial in nature (which would normally weigh against a fair use finding under this factor) courts have been willing to downplay the significance of this attribute due to work parody’s “transformative” nature. As the Supreme Court articulated in Campbell: (1) work parody is transformative in that it “adds something new, with a further purpose or different character, altering the first [work] with new expression, meaning, or message . . . .”; (2) moreover, “the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works.” As a result, (3) “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Work parody tends to escape the first § 107 factor unscathed despite its oft-commercial nature, but satire is not so lucky. Whereas the Supreme Court was more willing to allow transformative work parodies to borrow from their target material to fulfill their goals, the Court noted that satires—which do not comment on the original composition itself—“require justification for the very act of borrowing.” Consequently, a satirist’s “claim to fairness in borrowing from another’s work diminishes . . . and other factors, like the extent of its commerciality, loom larger.” Thus, satires bear the full brunt of their commercialism, and do not fare as well as work parody under the first fair use factor. The second fair use factor explores “the nature of the copyrighted work.” Under this factor courts recognize that copyright affords expressive, original works more protection against copying than it affords factual works. Although this pronouncement would seem to count the second factor against work parodies, the Campbell Court also accepted that work parodies almost always borrow from expressive material, and thus the second factor is “not much help” in a fair use inquiry. Despite this diminished role that the second factor plays in this inquiry, courts evaluating satirical uses of expressive copyrighted material tend to weigh this factor against the defendant. The third factor examines “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Under this factor, the extent to which a defendant can appropriate from a copyrighted work depends upon her purpose and the character of the use. In the case of work parody, courts recognize that to properly “take aim at an original work, the parody must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recognizable.” In contrast to work parody’s dependence on its source material, satires do not need to borrow from the original work to make their point. A satirist does not have to employ the copyrighted works of Dr. Seuss to effectively comment on the O.J. Simpson trial, and thus, the satirist receives less justification to borrow from those works under the third factor. The final fair use factor involves an examination of “the effect of the use upon the potential market for or value of the copyrighted work.” The Court stated that the importance of the market harm measured under factor four varies “not only with the amount of harm [to the original], but also with the relative strength of the showing on the other factors.” When analyzing this factor, courts must consider not only the effect that the defendant’s work will have on the market for the original work, but also on the market for potential derivatives of that work: “If the defendant’s work adversely affects the value of any of the rights in the copyrighted work . . . the use is not fair.” The above principle would seem to cause the fourth factor to adversely affect work parodies and satires equally, as both constitute derivative works. However, when making the market harm inquiry, courts distinguish between uses that harm the market through typical market substitution and those that do so by changing consumer preferences (such as how a critique of a work may suppress the work’s demand). Parodic derivatives receive more fair use protection, as market harm through disparagement is not an interest that the Copyright Act protects. Or, to put it another way, “the role of the courts is to distinguish between ‘biting criticism [that merely] suppresses demand [and] copyright infringement, [which] usurps it.” Since courts refuse to find a “protectable derivative market for criticism,” work parodies, which take aim at the very works which inspired them, perform favorably under the market harm factor. As the Campbell Court noted: “when a lethal parody . . . kills demand for the original, it does not produce a harm cognizable under the Copyright Act.” Satires, on the other hand, perform comparatively more poorly under this factor due to their failure to employ the sort of work-specific criticism (indicative of work parody) for which courts readily provide shelter under fair use doctrine.  but, a rewrite of the song “Boogie Woogie Bugle Boy” that used the 1940s classic as a vehicle to generally critique societal customs, would not. One might wonder at what point a critical derivative work becomes so unrelated to its source material that a copyright defendant loses the safe harbor of fair use. What if someone borrows elements from a work to create a new work that, while not mocking the original, mocks the original’s author? This question brings us to the concept of author parodies. Like work parodies, author parodies are not attacking something completely separate from the work itself. But like satire, author parodies use the original work as a weapon as opposed to a target. Courts must resolve how to treat these unique works, which seem to straddle the line between the two genres. Author parody is by no means a new concept. Much like work parody, examples of author parody can be traced back to Ancient Greece. In Aristophanes’ The Acharnians, the playwright parodied the works of Euripides for the purpose of mocking the celebrated tragedian. But despite the genre’s history, as well as its presence in today’s artistic landscape, an appeals court has yet to rule on an “author parody” fair use defense. The Second Circuit has upheld a fair use defense where a defendant borrowed from an author’s works to critique that author in a non-parody context: in New Era Publications International v. Carol Publishing Group, the court found noninfringing a critical biography of Scientology founder L. Ron Hubbard despite the fact that the biographer quoted extensively from Hubbard’s books. However, only district courts have examined fair use claims of parodic rewrites that lampoon the original’s author.  for instance, the Central District of California found fair use when the producers of “Family Guy” included on their program an animated version of the “Charwoman” fictional character, originally created by comedienne Carol Burnett. The defendants claimed that their use of Burnett’s character was intended to mock Burnett herself, and the court found this rationale supported their fair use claim. The Southern District of New York reached a similar holding in Bourne Co. v. Twentieth Century Fox Film Corporation. In Bourne, the defendants—coincidentally also the producers of “Family Guy” program—had written the song “I Need a Jew,” which was similar in lyrics and melody to the Disney classic “When You Wish Upon a Star.” In arguing for their fair use claim, the defendants claimed that their song was intended to mock Walt Disney’s alleged anti-Semitism. Despite the fact that Disney neither wrote nor owned the copyright to “When you Wish Upon a Star,” the Southern District of New York found that using a copyrighted song as a means to ridicule a public figure closely associated with the song was sufficiently parodic to support a fair use claim. In other cases, courts have negatively treated author parody fair use defenses, casting the genre as merely a form of general satire and ruling on the fair use question accordingly. For example, one federal court noted in the dicta of a literary infringement case that “[t]he satirist (or one intending to parody an author but not any particular work) may freely evoke another artist by using the artist’s general style,” but “[o]nly when the satirist wishes to parody the copyrighted work does the taking . . . become permissible.” Similarly, in Salinger v. Colting, the same federal court that seemed to approve initially of the author parody defense in Bourne would later offer a repudiation of it. The defendant in Salinger wrote an unlicensed derivative of The Catcher in the Rye, and depicted the classic novel’s teenage protagonist, Holden Caufield, as a 76-year-old man. After dispatching with the defendant’s argument that the derivative constituted a parody of Catcher in the Rye and the Holden Caufield character, the Salinger Court rejected the defendant’s final fair use claim—that his work constituted a permissible parody of Catcher in the Rye’s author, J.D. Salinger. In reaching its holding, the court seemed to express a negative view toward the viability of author parody fair use claims generally when it stated that “the parodic framework of Campbell . . . requires critique or commentary of the work.” But of all of the author parody cases confronted by the district courts, the 2010 holding of Henley v. Devore warrants a separate, more meticulous analysis because of its extensive discussion of the issue. Rather than merely liken author parody to either work parody or satire in a matter akin to the above cases, the Henley Court specifically examined how author parodies might apply to each of the four fair use factors—which makes the case particularly useful to this analysis. Henley involved two acts of alleged copyright infringement by the U.S. Senate campaign of Republican politician Charles DeVore. One of those acts involved the creation of a promotional song and YouTube music video designed to poke fun at President Barack Obama and House Speaker Nancy Pelosi. The campaign’s song, titled “The Hope of November” (“November”), was an unauthorized rewrite of the Don Henley classic “The Boys of Summer.” The defendants argued that “November’s” lyrics mock Henley’s supposed liberal views and his support of Obama. The campaign specifically claims that the narrator of the song is meant to be Henley himself, and that the song presents the classic rock legend as “disappointed and disillusioned with Obama and nostalgic for the hopeful days of Obama’s campaign.” Through Don Henley’s “narration,” “‘November’ pokes fun at Obama and the naïveté and subsequent disappointment of his supporters, which includes Henley . . . .” The Henley court found the defendant’s arguments strong enough to categorize “November” as a “reasonably perceptible” author parody, but also found that the lampooning of Don Henley was “a relatively minor element of the main satirical purpose of the song—targeting Obama and his supporters.” The court in Henley explored how author parodies might measure up against the four fair use factors and, while not explicitly endorsing such works as a legitimate fair use, appeared to treat author parodies favorably on each prong. Regarding the purpose/character of the use, the court suggested that author parodies could be sufficiently transformative because “the purpose of an author-parodying work is to evoke the author in order to provide socially-valuable criticism of the author, a public figure necessarily open to ridicule.” In examining the nature of the copyrighted work, the court remarked that criticism of authors may require lampooning creative, non-factual works if an author’s fame derived from such works. In looking at the “amount used” factor, the Henley court accepted the possibility that “referencing public figures through their work may require the use of at least some portion of those works,” suggesting that at least some borrowing of the author’s copyrighted material would be appropriate for author parody.  Finally, on the “market harm” factor, the court surmised that “a parody lampooning the author may be unlikely to supplant any potential market for the original or derivatives thereof” because it is unlikely that the original author would ever license such a work. Despite Henley’s favorable treatment of author parodies, the court held that even if the defendants were justified in appropriating “The Boys of Summer” to mock its author, the amount of the song used by the defendants “went far beyond that reasonably necessary to conjure up [Don] Henley.” Furthermore, “many of the ‘November’ lyrics [did] not serve the purpose of ridiculing Henley and drift[ed] into pure satire, targeting Obama and Nancy Pelosi.” Indeed, the court identified that many of “November’s” lyrics seemed to have nothing to do with mocking Don Henley at all and instead involved a general commentary on the perceived political failures of President Obama and Speaker Pelosi, which would be indicative of a more satirical purpose. As a result, the court held that “November” was not fair use and upheld the plaintiff’s infringement claim. As author parody cases continue to be adjudicated, eventually courts will have to resolve the current split and definitively establish how copyright law should treat the genre. The remainder of this Article will argue that author parodies should be viewed similarly to work parodies in the area of fair use. It will do this by first presenting an economic framework supporting the contention that treating author parodies similarly to work parodies in the fair use context would correct a market failure in the licensing of derivative works—thereby fostering a socially optimal outcome. Following the economic argument, the Article will make a legal argument for privileging author parodies by comprehensively demonstrating why these works should perform strongly under the § 107 fair use factors.
III. Privileging Author Parodies Would Correct a Market Failure in Licensing Similar to the One Inherent in Work ParodySeveral scholars have propounded an economic rationale for affording work parody a fair use defense. The rationale is based on the idea that, absent fair use, fewer parodic works will be created due to a copyright holder’s general unwillingness to grant licenses, at any price, for derivatives which ridicule their creations. Professor Wendy Gordon notes that a copyright holder is “unlikely to license a hostile review or a parody” of her work and, consequently, her “antidissemination motives make . . . a strong case for fair use . . . .” Similarly, Judge Posner’s research favors privileging work parody due to the “private interest of the copyright owner . . . to suppress criticism of [his] work” rather than engage in market exchange with a potential work parodist. A similar economic rationale supports granting fair use protection for author parodies. Treating author parody similarly to work parody—and dissimilarly to satire and traditional derivative works—in the fair use context would correct a market failure, creating socially-valuable works that would not otherwise see the light of day. Just as authors would be generally unwilling to license parodies that ridicule their work, they would be similarly unwilling (if not more so) to license parodies in which they are personally attacked. To illustrate this point, the remainder of this section will present an economic framework. It will demonstrate how granting author parodies a fair use defense akin to the one work parodies receive under Campbell, while allowing copyright holders to retain property rights over their traditional and satirical derivatives, will lead to the creation of the socially optimal number of copyrighted works: Assume a world with economically-motivated individuals. Five of the people in this world include Carl (a Composer of original love songs), Abby (an Author parodist), Wesley (a Work parodist), Sean (a Satirist), and Tabitha (a creator of Traditional derivative works, such as adaptations or translations, which would lack any apparent fair use defense under current law). Recently, Carl penned his latest song, “Your Love is Wonderful,” which became a hit single. A short time after the song was released, others wanted to create derivatives of Carl’s work that kept the chords and melody of “Your Love is Wonderful” but changed the song’s lyrics to serve a different purpose. Abby wanted to write “Your Love is as Wonderful as America is Terrible,” a song which lampoons Carl’s extremist political views. Wesley sought to pen “Your Love is Boring,” a song which criticizes the hackneyed and simplistic message of Carl’s love song. Sean wished to compose “My H.M.O. is NOT Wonderful,” a scathing critique of the medical industry. Finally, Tabitha hoped to create “O Seu Amor é Maravilhoso,” a line-by-line translation of “Your Love is Wonderful” into Portuguese. The goal in this scenario will be to assign derivative work rights to these individuals in such a way to produce the most works of authorship at the lowest social cost. The framework will begin with the presumption that it is economically efficient to give all of the derivative work rights to Carl, the original author. The rationale behind this presumption is not immediately apparent. The presumption particularly requires explanation when one considers that the Coase Theorem would suggest that production of derivative works would be unaffected regardless of whether the original or the derivative author possessed the property right. Consider the following example: suppose that Carl wrote “Your Love is Wonderful” and Tabitha wanted to create her Portuguese translation of the song. Assume that Carl valued the right to prevent others from making derivatives of his song at $1,000, and Tabitha valued the right to write her Portuguese version of the song at $5,000. Regardless of whether we assign the derivative right to Carl or Tabitha, the socially optimal outcome of the translation being made will occur. If Carl has the derivative right, Tabitha will pay Carl between $1,000 and $5,000 for a license to write her work. If instead Tabitha has the derivative right, she will write “O Seu Amor é Maravilhoso” without having to pay Carl. But if, instead, the circumstances are such that Carl valued the right to protect his song at $5,000 and Tabitha valued the right at $1,000, Tabitha would not create the translation regardless of which party receives the derivative right. If Carl has the right, he will not grant Tabitha a license; and, if Tabitha has a right, Carl will pay Tabitha between $1,000 and $5,000 for her to not write her song. But despite the Coase Theorem’s conclusion that authors collectively would create the same number of derivative works regardless of how rights are assigned, the relevant scholarship on the subject presents several justifications for affording this right to the original copyright holder. Chief among these are the distortions in the timing of publications that would occur if the original author did not also have an exclusive right to make derivatives. Lacking such a right, the author would have a perverse incentive to delay publication of his work “until he had created the derivative work as well (or arranged for its creation by licensees), in order to gain a head start on any would-be derivative authors.” Therefore, to prevent the unnecessary delay of original (and derivative) works for public consumption, this framework will presume that the original author should possess the exclusive right to create derivatives of his work in all circumstances. This presumption, however, can be rebutted if allowing the original author to retain this right leads to market failure by preventing the creation of the greatest number of original works of authorship. If the socially optimal number of works will be created by doing so, then a transfer of the derivative right from Carl to one of the derivative composers should occur. Such a transfer would be equivalent to granting that derivative composer a fair use defense should Carl choose to bring an infringement action against that composer for his work. Assume, for the purposes of this framework, that society would benefit immensely from the creation of all five songs—that Carl’s original work, Wesley’s critique of Carl’s work, Abby’s critique of Carl, Sean’s medical industry commentary, and Tabitha’s Portuguese translation would all be valuable works, both in terms of profit as well as for their important social messages of the critical works. Therefore, the goal should be to assign derivative rights to the five individuals in such a way that no market failures will occur and all five works will be created. If Wesley, Abby, Sean, and Tabitha are profit maximizers, they will each approach Carl with the hope of obtaining a license from him to create his or her derivative work. As it would be in everyone’s pecuniary interest to make a deal, it would seem that a successful voluntary exchange should occur in each case. Carl should be willing to bargain separately for a share of each person’s potential profits from the derivative work and society will benefit from having all five songs (including the original). Other factors, however, could disincentivize Carl from negotiating with Abby, Wesley, Sean, and Tabitha. It may be that, for certain reasons, Carl has a strong personal motive not to disseminate certain types of derivative works, causing him to forego a voluntary exchange—which would ultimately be in society’s interest. It is unlikely that this would be the case when Tabitha offers to buy a license from Carl to make a Portuguese version of “Your Love is Wonderful.” There is no apparent reason why Carl would have a significant incentive to prevent the licensing of a traditional derivative work. Thus, since it would be profitable to do so, Carl would negotiate and eventually grant the license to Tabitha, and she would be able to compose “O Seu Amor é Maravilhoso.” Similarly, Carl should also be willing to negotiate with Sean and grant a license for Sean’s satirical work “My H.M.O. is NOT Wonderful.” Although the highly critical message of Sean’s song is not as innocuous as Tabitha’s, Sean would have no personal interest in suppressing a song that offers a general critique of the medical industry. As a result, the negotiation should prove successful. Since no failure in market exchange is likely to occur for Tabitha’s traditional derivative or for Sean’s satire, both derivatives would be made. Therefore, the socially optimal outcome can occur by allowing Sean (and generally all copyright holders of original works) to retain the exclusive right to make traditional derivatives and satirical works. But the same cannot be said for work parodies. Carl would understandably bristle at Wesley’s request to rewrite “Your Love is Wonderful” as a new song that will ridicule his original composition. Rather than readily grant a license to Wesley in exchange for a share of “Your Love is Boring’s” profits, Carl would instead have a strong personal motive to censor Wesley’s song and refuse to grant him a license at any price. As the Ninth Circuit aptly noted: “Self-esteem is seldom strong enough to permit the granting of permission [for a work parody] even in exchange for a reasonable fee.” Echoing similar sentiment, the Campbell Court noted that “the unlikelihood that [authors] . . . will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market.” Even though the socially optimal outcome would be a successful licensing transaction between Carl and Wesley the work parodist, Carl’s personal interest would keep him from negotiating. To prevent the resulting market failure that would occur here—and with all work parodies—the derivative work right must shift from the original author to the work parodist. Finally, the framework will examine Carl’s incentives to negotiate with Abby, the author parodist. We must now determine whether this would be a situation where Carl would gladly negotiate with Abby the way he did with the translator and the satirist, or, in a manner similar to the work parody example, whether Carl would have qualms about licensing “Your Love is Wonderful” for a rewrite that personally attacks him. It seems intuitive that Carl would likely have a strong personal interest in preventing the composition of author parodies at his expense. “Authors, like all people, do not like to be ridiculed. Given the fact that a person’s reputation . . . cannot be restored with money once it has been destroyed, the chance that an author . . . would allow the destruction of those things via parody is very slim.” Consequently, one could argue that Campbell’s famous work parody maxim that “[p]eople ask . . . for criticism but they only want praise” would be just as true, if not more so, for personal attacks as it would be for attacks of a person’s art. Whereas work parodies only indirectly target an individual’s labors, author parodies directly assault the individual—and thus may cut even deeper. Furthermore, empirical evidence supports the intuition that public figures are unlikely to put a price on leaving themselves vulnerable to personal attack, through author parody or otherwise. A survey of 164 libel plaintiffs by Bezanson, Soloski, and Cranberg investigated, inter alia, whether the plaintiffs considered money damages an adequate remedy for the harm they suffered. The plaintiffs in the study rejected that proposition by an overwhelming margin. Such a finding reflects the notion that, for defamation victims, “money damages cannot replace a reputation once lost.” This information has implications for the possibility of successful voluntary exchange regarding author parodies. If no amount of money can adequately compensate those personally attacked through libel, this would suggest that no amount of money can compensate a copyright holder enough for them to permit a personal attack through author parody. Moreover, the similarities in plaintiff-motivations for bringing libel lawsuits and infringement claims against author parodies make the survey results all the more applicable. In both situations, the plaintiff suffers a personal public humiliation, inspiring them to pursue legal action. Whereas individuals like Carl have every incentive to prevent author parodies of their work, society has a strong interest in their creation. Significant external benefits result from educating society about public figures through criticism. The public’s interest notwithstanding, it is likely Carl will refuse to sell Abby a license for her author parody. Consequently, Carl’s refusal would create a market failure similar to the one that occurs in the work parody scenario. And just like with work parody, the presence of a market failure justifies reassigning the derivative work right over author parodies to the author parodist. Before leaving the framework, some mention should be made of the fact that, in practice, not all authors will behave similarly to Carl. Certainly, some public figures will allow others to turn their works into author parodies. Lady Gaga, for one, seemed not to mind the needling she received from Al Yankovic’s “Perform This Way.” And perhaps other authors might be willing to grant author parody licenses to others—albeit at a higher price than they would for traditional derivatives—as a way to compensate themselves partially for the harm they will suffer. However, the notion that some authors in the real world might be good sports in the face of ridicule does not negate the strong economic justifications for granting author parodies fair use protection. Authors who happily welcome public ridicule are the exception rather than the rule. Moreover, the external benefits of criticism are too valuable to let the potential target determine whether the criticism will occur—even if the target is willing to permit it for only a marginally higher fee. “The social product [of criticism] is diminished if persons are able to exact compensation from truthful critics of their failings, for such a right reduces the incentive to produce truth.” In sum, the socially optimal result—demonstrated through the creation of Carl’s original song and all four derivative works—occurs by allowing Carl to keep some of his derivative work rights but transferring the rest to the other authors. Stripping Carl of all of his derivative rights may prevent the creation of any of the five songs because Carl would be incentivized to delay production of the original song. On the other hand, affording Carl full control over all subsequent derivatives of “Your Love is Wonderful” will lead to the composition of only Tabitha’s translation and Sean’s satire, and the public will likely never hear Wesley’s work parody or Abby’s author parody due to market failure. The answer, therefore, is to afford author parodies a fair use defense similar to the one that work parodies currently receive under Campbell, and not treat such works in a manner akin to traditional or satirical derivatives.
IV. Privileging Author Parodies Is Proper Under The Fair Use Factors Due To Their Similarity To Work Parodies (and Dissimilarity To Satires)The previous section demonstrates that permitting a fair use defense for author parodies would correct a market failure similar to the one corrected by granting fair use protection for work parodies. This section will now supplement the economic argument for protecting author parodies with a legal one. It will do this by applying the § 107 factors and past precedent to demonstrate that courts in future cases should generally provide author parodists with an affirmative defense to copyright infringement. As shown by the four § 107 factors, author parodies (1) are transformative; (2) have a compelling reason to use creative works; (3) have a strong claim to appropriate copyrighted material due to their dependence on that material; and (4) do not impose a cognizable market harm upon the copyright holder.  However, if a work has transformative value, such as in cases of commercial work parody, it can still perform favorably under the purpose/character factor: “[T]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Not only “is the goal of copyright, to promote science and the arts, . . . generally furthered by the creation of transformative works,” but these works tend to present “little or no risk of market substitution” due to the differences in purpose between the original and subsequent creation. Author parodies are undoubtedly transformative works. By using a copyrighted work as a tool by which to lampoon the work’s author, the author parodist “adds something new, with a further purpose or different character.” In accord with the foregoing, Judge Pierre Leval, an originator of the “transformative” term, noted that “exposing the character of the original author” can create the sort of “new information, new aesthetics, [and] new insights and understandings” that are indicative of transformative works. Therefore, in a manner similar to Campbell-type work parodies, the transformative nature of author parodies mitigates the use’s commerciality, leading to a strong performance on the purpose/character factor.  The Nature factor “recognizes that there is a hierarchy of copyright protection in which original, creative works are afforded greater protection than derivative works for factual compilations.” Since creative works “fall within the core of . . . copyright’s protected purposes,” the non-factual nature of author parody’s source material appears to weaken the fair use claim of these works. However, work parodies, which also primarily exploit creative works to accomplish their purposes, almost always attain fair use protection. This is partially due to the fact that courts tend to discount the importance of the second factor when analyzing work parodies because such uses “almost invariably [involve the] copy[ing of] . . . expressive works.” A similar discounting of the second factor also seems appropriate for author parodies, as “criticism of public figures through their work may require the use of well-known creative expressions . . . .”  A proper mockery of a copyrighted work necessitates reference to that work, and thus work parodists have a strong claim to some borrowing of copyrighted material under the Amount Used factor. Conversely, satirical works are not dependent on their source material to achieve their broad societal commentary. Rather, satirists exploit copyrighted materials “merely to get attention or to avoid the drudgery in working up something fresh.” Thus, satirical works have less justification to borrow from the copyright holder. As for an author parodist’s dependence on his source material, one could plausibly argue that, unlike work parodists, author parodists do not need to appropriate an author’s work to achieve their purpose. Al Yankovic could have conceivably critiqued Lady Gaga’s unique fashion sense though a variety of different methods (a magazine editorial, perhaps), but likely took an approach best suited to his talents as a songwriter—and most likely to lead to his financial gain. But, on the other hand, many authors are known to the public primarily through the works they create. Thus, limiting an author parodist’s access to his target’s body of work could have a chilling effect on the socially valuable criticism that he or she could have created. As the Henley court noted: “without the ability to evoke their works—the very reasons [authors] live in the public eye—a would-be [author] parodist may lack an adequate tool with which to lampoon.” The Campbell ruling provides additional, albeit indirect, support for allowing author parodists to exploit an author’s works. The Court held that the law allows work parodists access to the original work’s “most distinctive or memorable features, which the [work] parodist can be sure the audience will know.” One could read the spirit of this language as generally permitting authors of critical derivatives to invoke their target’s most prominent attributes to achieve their purpose. This language provides the satirist with little benefit on the third factor, as his target’s most prominent attributes bear no relation to the original work from which they have appropriated. However, it helps the author parodist immensely, as his target author’s “most distinctive or memorable features” from the public’s perspective are likely to be the very works which may have made that author famous. Accordingly, the author parodist has a strong claim to borrowing his target author’s material. In keeping with the case-by-case nature of a fair use inquiry, the unique features of a particular author parody could affect the permissibility of borrowing. Some authors exist in the public’s consciousness for reasons unrelated to their works. Professional athletes Peyton and Eli Manning, for example, are most known for their quarterbacking prowess in the National Football League, but they also happen to be authors of a children’s book. An effective critique of these public figures would likely not require conjuring up their copyrighted work product, and so the third factor argument weakens accordingly here. A doctrinally obedient fair use analysis may require distinguishing between famous authors and famous people who also happen to produce works of authorship. Line drawing in this particular area, however, may prove unworkable for courts. It is impractical to demand that federal judges acquire the pop culture acumen necessary to identify which public figures’ fame is enmeshed with their copyrighted material sufficiently enough to permit copying by author parodists. A more prudent course—particularly in light of author criticism’s significant external benefits—would be for courts to indulge a strong presumption of such enmeshment and hold that author parodies generally have a claim to borrow from their target’s material under the Amount Used factor. inquiry must take account not only of harm to the original [work], but also of harm to the market for derivative works.” Regarding harm to the original work, it is foreseeable that a well-executed author parody will damage more than its victim’s ego. It stands to reason that a scathing critique of a public figure may make that person’s body of work—including the specific work exploited by the author parodist—less valuable to consumers. This type of injury, however, falls outside of the scope of protection provided by the law to copyright holders. The fourth factor only recognizes harm caused by uses which affect a work’s demand through market substitution, not through criticism which changes consumer preferences. Since author parodies do not act as a market substitute for their source material, they do not present cognizable market harm to the original under this factor. Author parodies also do not harm the potential market for derivative works. Under the fourth factor, “[t]he market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.” As demonstrated in the economic argument advanced in the previous section, no such potential market exists. Rare is the author who will compose or license a self-damaging derivative. The Henley court expressed a similar view regarding Market Effect: “[A] parody lampooning the author may be unlikely to supplant any potential market for the original or derivatives thereof because of the unlikelihood that authors would license parodies ridiculing themselves.” Since no cognizable market harm occurs to either the author’s original work or any potential derivatives, author parodies perform strongly under the fourth factor. Because author parodies perform similarly well as work parodies under all four § 107 factors, a strong legal argument can accompany the economic argument propounded earlier for affording these works a legitimate fair use defense.
|“Born This Way” (Lady Gaga) My mama told me when I was young We are all born superstars She rolled my hair and put my lipstick on In the glass of her boudoir “There’s nothing wrong with loving who you are” She said, “‘Cause he made you perfect, babe” “So hold your head up girl and you’ll go far, Listen to me when I say I’m beautiful in my way ‘Cause God makes no mistakes I’m on the right track, baby I was born this way Don’t hide yourself in regret Just love yourself and you’re set I’m on the right track, baby I was born this way Oh there ain’t no other way Baby I was born this way Baby I was born this way Oh there ain’t no other way Baby I was born this way I’m on the right track, baby I was born this way Don’t be a drag—just be a queen Don’t be a drag—just be a queen Don’t be a drag—just be a queen Don’t be! Give yourself prudence and love your friends Subway kid, rejoice your truth In the religion of the insecure I must be myself, respect my youth A different lover is not a sin Believe capital H-I-M I love my life I love this record and Mi amore vole fe yah (Love needs faith)||“Perform This Way” (“Weird Al” Yankovic) My mama told me when I was hatched Act like a superstar Save your allowance, buy a bubble dress And someday you will go far Now on red carpets, well, I’m hard to miss The press follows everywhere I go I’ll poke your eye out with a dress like this Back off and enjoy the show! I’m sure my critics will say It’s a grotesque display Well, they can bite me, baby I perform this way I might be wearin’ Swiss cheese Or maybe covered with bees It doesn’t mean I’m crazy I perform this way Ooo, my little monsters pay Lots ’cause I perform this way Baby, I perform this way Ooo, don’t worry, I’m okay Hey, I just perform this way I’m not crazy I perform this way I’ll be a troll or evil queen I’ll be a human jelly bean ‘Cause every day is Halloween For me… I’m so completely original My new look is all the rage I’ll wrap my small intestines ’round my neck And set fire to myself on stage I’ll wear a porcupine on my head On a W-H-I-M And for no reason now I’ll sing in French Excusez-moi, Qui a pété? (Who Cut the Cheese?)|
[A] work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work”.17 U.S.C. § 101 (2006).
Criticism is valuable, inter alia, because the market works to further the social good only when consumers have accurate information about the goods available. As the Supreme Court has written: “So long as we preserve a predominantly free enterprise economy, the allocation of our resources in large measure will be made through numerous private economic decisions. It is a matter of public interest that those decisions, in the aggregate, be . . . well informed.”Gordon, supra note 103, at 1634 (quoting Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S 748, 765 (1976)).
A libel victim sues because statements made to the public portray the victim in an unflattering light. The victim suffers through the ridicule and scorn heaped upon him by those who have seen the libelous statement. Similarly, an author sues a parodist because she resents the public portrayal of her work in an unflattering light. She suffers because those who have seen the parody hold her in lower esteem and laugh at her work.Yen, supra note 114, at 105–06.
I’m gonna look well smart in me Burberry.The modern brand is a social phenomenon, not just a commercial one. As consumers, we use brands as tokens of social differentiation, identification, and expression, and producers covet the commercial advantages that come with the integration of brands into consumers’ sense of identity. But weaving brands into the social fabric is an unpredictable process, one that cannot be controlled completely by brand owners or by consumers. The struggle between brand owners and consumers over the social meaning of the brand itself occasionally spills out onto the airwaves and even onto the streets. Recently, in the space of a single week, we saw two striking examples of this conflict. In one, the major American fashion retailer Abercrombie & Fitch launched a media offensive to try to assert control over the social implications of reality television star Mike “The Situation” Sorrentino’s prominent consumption of its products on MTV’s Jersey Shore. Meanwhile, across the Atlantic, managers of global brands like Adidas, Nike, and Levi’s struggled to contain the fallout from their brands being associated with the worst civil unrest Britain has seen in ages. In at least one of these episodes, there has been some suggestion that the brand owners might take some sort of legal action to protect the value of their brands. This suggestion raises a relatively novel question of law. Even though social meaning can be one of the primary sources of a modern brand’s value, and the preservation of that value depends on the rights afforded under trademark and unfair competition law, that body of law lacks a coherent framework to deal with conflicts that arise between consumers and producers over brands’ social meanings. This Article explores one typical point of potential producer-consumer conflict suggested by the examples of the previous paragraph—what I call the “brand renegade.” I define a brand renegade as a consumer who uses branded products out of affiliation with some aspects of the image cultivated by the brand owner, but whose conspicuous consumption of the brand generates social meanings that are inconsistent with that image. Part I of this Article reviews the theoretical literature on the economics and psychology of trademarks to identify the origins of the brand renegade. Part II describes some recent examples of brand renegades in action, as well as the responses of brand owners to those brand renegades, pointing the way toward a legal showdown between the two groups. Part III turns to the availability of legal doctrines to mediate the conflict between brand owners and brand renegades, and finds them surprisingly thin. In the end, I argue that socially expressive consumption (and portrayals of that consumption) ought to be permissible as a matter of trademark law, but note that it is not clear that we have the doctrinal architecture to enforce this (hopefully uncontroversial) principle.  Under this model, producers are thought to use trademarks to convey information about the unobservable qualities of their products—the flavor of a soda; the reliability of a car—to buyers who would otherwise be unable to find that information on their own. By this mechanism, trademarks provide the basis for both consumer choice and producer competition, building goodwill in the process. Of course, this model is essentially useless in describing a great deal of actual observed behavior surrounding consumer brands. If all consumers cared about were the images generated by the brand owner for adoption or rejection by an atomized consuming public, the fact that a rioting “chav” or a boorish braggart were known to consume the brand would be irrelevant. But clearly, brand owners care quite a bit about that type of information, most likely in the belief that consumers do as well. This suggests that there is some other type of brand information that consumers and brand owners find important, and that this information relates to the interaction between brands and the people who consume them. Brand owners could certainly try to generate such information. Indeed, much modern marketing, including the widespread use of celebrity endorsements, is directed at persuading consumers to associate particular personality traits with a brand—the Gerber Baby; the Marlboro Man; the Avon Lady; the Pepsi Generation. To the extent that such subjective associations are just one more example of brand owners creating and disseminating information to consumers, who passively receive it and react to it solely through their atomized purchasing decisions, they might conceivably be integrated into the search-costs model discussed above—as indeed they have been. The problem is that these personality-based associations—because they do not refer back to anything more substantial than the shifting minds of consumers—behave differently than other types of product information, which refer back to the material qualities of a product. In particular, personality-based associations are freighted with vital but unstable social meaning. As consumer psychologists have shown, consumers themselves play an integral role in constructing the social meanings of the brands they consume, not least by forming, expressing and observing one another’s social identities and allegiances through acts of conspicuous consumption:
When brand associations are used to construct the self or to communicate the self-concept to others, a connection is formed with the brand. . . . [A]ssociations about reference groups become associated with brands those groups are perceived to use, and vice versa. The set of associations can then be linked to consumers’ mental representations of self as they select brands with meanings congruent with an aspect of their current self-concept or possible self, thus forging a connection between the consumer and the brand.Importantly, however, the power of consumers to contribute to and draw on brands’ social meanings is limited by the instability of those meanings in a fluid and competitive social landscape. As Professor Barton Beebe explains, “commodified forms of distinction . . . produce in the fashion innovator or adopter a feeling of ‘significant difference,’ of being something other than a mere copy in a mass world of equivalence”; but this feeling is inevitably temporary, as “copying both destroys the distinctiveness of existing fashions and creates the need for new ones.” These features of consumer psychology demand a more dynamic model of the construction of a brand’s social meaning than trademark law currently has. In particular, they require us to come to terms with a significant amount of back-and-forth between and among brand owners, consumers, and the social audience. From the brand owner’s perspective, the participatory, decentralized, and non-hierarchical nature of the construction of a brand’s social meaning is a double-edged sword. On the upside, it allows brand owners to capture a significant amount of value that is created not by the brand owner itself, but by its customers. On the downside, it creates the risk that brand value could be destroyed by forces beyond the brand owners’ control. Chief among these forces is the brand renegade.  cultivating associations with European aristocracy (and its wealth and power) through full-page ads in upper-middle-class aspirational magazines like Fortune and Gourmet. But as American society changed, those associations began to lose their appeal in the spirit’s target market. By the late 1990s, “you almost couldn’t give France’s most famous brandy away”; cognac in general was seen “as an old fart’s drink, a digestif for tuxedoed geezers smoking cigars in wood-paneled libraries.” But a counter-trend was already underway. Over the course of the 1990s, cognac had become a fixture in African-American nightlife, and its rise was reflected in hip-hop culture. As early as 1993, West Coast rapper Ice Cube identified the gangsta rap aesthetic with, among other things, “sippin on Courvoisier.” By 2002, hip hop had moved from counterculture to mainstream, and Busta Rhymes’s single, “Pass the Courvoisier,” peaked at number 11 on the Billboard Hot 100 charts. While the old-world image of imperial power and opulence no longer had the same pull for the traditional upwardly mobile (and traditionally white) elite of the American economy, the idioms of material luxury had been appropriated by a formerly marginalized, but now culturally ascendant, segment of that economy. Importantly, hip hop did not adopt the trappings of Courvoisier’s marketing images even as it adopted the brand as an element of its identity. Rather than affecting a First Empire salon, Ice Cube situated Courvoisier in the driver’s seat of a two-tone Ford Explorer tearing down the 110 Freeway; Busta Rhymes in a prohibition-era Harlem back alley. While the Napoleonic imagery of Courvoisier’s marketing efforts shares some thematic points with hip hop’s invocations of the brand (among them ostentatious wealth, violence, and misogyny), there are obviously deep cultural differences between the two. Courvoisier’s expanding young, urban, African-American clientele were, in this sense, brand renegades: they adopted the brand itself as an element of their identity, but did not otherwise change their identity to conform to the brand’s existing marketing strategy. And given the social dynamic described above, the conspicuous consumption of the brand by these renegades could not help but reflect back on the social meaning of the brand itself. The House of Courvoisier’s response to the reshaping of its brand by forces beyond its control was highly adaptive. Rather than dispute or resist the changes in their brand’s social meaning, the brand owner co-opted the changes its customers had wrought. As early as 2000, its marketers had pivoted their messaging to appeal to a new demographic: “young, urban adults who subscribe to hip-hop culture, the vast majority of whom are African-American.” When Busta Rhymes released his single, Courvoisier’s marketers were already on the scene, “skillfully tr[ying] to capitalize on the event, in sponsoring events with P Diddy, Missy Elliott and Lil’ Kim, in particular.” By 2007, Courvoisier was touting its product as the brandy of hip-hop mogul Jermaine “JD” Dupri—Napoleon was conspicuously absent from the campaign the company launched that year. In short, rather than viewing its brand renegades as a threat, Courvoisier welcomed them as an opportunity. As a business matter, Courvoisier’s response to its brand renegades makes perfect sense. The release of “Pass the Courvoisier” coincided with an 18.9% rise in Courvoisier’s sales, and the adoption of the brand by a new generation of drinkers saved it from a decades-long decline. Indeed, it is possible that any other course of action might have threatened to damage Courvoisier’s business—as the makers of Cristal champagne learned when they failed to give rapper Jay-Z the respect to which he felt entitled as a successful and influential brand renegade. Courvoisier was thus in the fortunate position of capturing the positive value of social meanings it did not create by virtue of those meanings becoming associated with its brand through the actions of brand renegades. But more difficult questions arise when the effect of brand renegades on a brand owner’s bottom line is not so unambiguously positive. The rest of this Part illustrates these difficulties.  Take the example of MTV’s Jersey Shore. The reality series is a ratings bonanza for MTV parent Viacom and a bona fide cultural phenomenon. It is also deeply offensive to a substantial and vocal population. The arbiters of culture find its cast members—such as the aforementioned “The Situation” and Nicole “Snooki” Polizzi—to be the personification of bad taste and bad character. And understandably, many people do not want to be associated with such characters. There are, accordingly, a fair number of brands that do not want to be associated with the cast of Jersey Shore either, and those brands’ owners will go to some lengths to avoid any such association. For example, in an episode I have discussed elsewhere, it was rumored that some fashion houses were gifting their competitors’ high-priced handbags to Snooki in the hopes that her déclassée image would rub off on those competitors, to the gift-giver’s benefit. To be sure, an association with Snooki—to whom the New York Times once attributed the epithets “[f]lake, cow, loser, slut, idiot, airhead, trash, penguin, creep, moron, midget, freak, Oompa-Loompa, nobody”—is probably not something most customers of most luxury fashion brands want. But there is a huge population of young people who find her irresistible, even admirable. The same can be said for The Situation. As New York Magazine put it, “Jersey Shore . . . made him famous enough to make money off a branded creatine shake.” And in a recent, highly publicized incident, he stepped into the role of brand renegade. In August of 2011, a retail analyst noted that a recent episode of Jersey Shore had shown The Situation “wearing a pair of neon green A[bercrombie] & F[itch] sweatpants ‘loudly (and proudly)’ on the streets of Florence.” Abercrombie & Fitch’s “Brand Senses Department” responded swiftly with a press release proposing what it called “a Win-Win Situation.” The release protested that association with Jersey Shore “is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.” Accordingly, Abercrombie & Fitch made it known, the company had offered to pay The Situation (and other members of the Jersey Shore cast) not to wear its clothes. This was a bit rich. As the press reported, Abercrombie & Fitch is “no stranger to controversy, with its racy marketing campaigns featuring nearly naked models.” As The Situation himself had noted some time before, one of Abercrombie & Fitch’s more popular t-shirts is emblazoned with the word “Fitchuation.” Even while dutifully reporting the release, major media outlets recognized they were the instruments of a publicity stunt that was curiously timed to coincide with a quarterly earnings call and the announcement of a major expansion. Abercrombie & Fitch did not appear to be seriously distancing themselves from the brand renegade, but at the same time they were not trying to co-opt him, as in the Courvoisier example above. Rather, the company seemed to be trying to leverage him. Clearly, Abercrombie & Fitch wanted the public to know two facts about The Situation: first, that he wears the company’s clothes, and second, that the company is not comfortable with him wearing its clothes. The first message is designed for fans of Jersey Shore; the second, for their bill-paying parents (and the show’s detractors more generally). If successful, this stunt may succeed in capturing the upside value of The Situation’s social connotations without suffering their downside—a “Win-Win Situation” indeed. Still, this is a dangerous high-wire act for a brand owner to play when faced with a brand renegade. Even a rumor or hint that the brand owner is trying to distance itself from the social identities of its customers can be commercially devastating. As the Recording Industry Association of America discovered at great cost, a business strategy that depends on publicly attacking your customer base is likely to be counterproductive. Still, a constant threat hovers over the brand owner who tries to court the brand renegade without alienating the brand loyalists. At some point, one of these constituencies may put the brand owner to a choice.  On August 6, what started as a peaceful protest over the shooting erupted into a violent anti-police riot. Over the following days, rioting spread throughout London and Britain more generally, evolving into an expression of an undifferentiated amalgam of social, political, and economic discontentment; the conditions of public disorder set the stage for a wave of nihilistic and opportunistic violence and looting. Young people in particular seemed to see the riots as an opportunity to assert their independence from political, legal, and economic authority; as two young women interviewed by the BBC explained:
It’s the government’s fault . . . . Conservatives . . . whatever, who it is . . . . [T]hat’s what it’s all about, showing the police we can do what we want, and now we have . . . . We’re just showing the rich people we can do what we want.One thing they wanted was fashion brands. The press reported that looters of some clothing stores were seen trying things on before they stole them. One of the most riveting images of the rioting appeared on the front page of the August 9 issue of The Guardian: a masked young man, backlit by the carcass of a burning car, decked head-to-toe in an immaculate Adidas hoodie tracksuit (with the shoes to match). As looting became widespread, the media began to report that certain brands that had cultivated an image of confrontational, rebellious youth in their marketing—brands like Adidas, Nike, and Levi’s—were particularly targeted by the young rioters for theft. The implication was that these brands had been playing with fire by glorifying resistance to authority and associating it with their unattainably high-priced goods, and that they accordingly deserved some share of the blame for the destructive actions of their disaffected young customer base. Whether this was a fair characterization of the rioters’ actions and motives or not, public association with the lawless mayhem on Britain’s High Streets took a toll on several brands, and their marketers went into “lockdown mode” to determine how best to respond to the crisis. A generation of brand renegades had become a national story. Adidas drew attention in this story not for any specific aspect of its marketing campaign (except perhaps its choice of hip hop artists with criminal records as paid promoters), but rather because so many rioters were conspicuously wearing (and stealing) Adidas-branded clothing. Like The Situation and the various hip hop artists described above, these looters had become brand renegades—due to their actions the public could not help but associate the Adidas brand with the lawless mobs in the streets. Adidas responded vigorously against this threat to its brand image, and “took the step of condemning its customers for taking part in the riots[:] ‘Adidas condemns any antisocial or illegal activity,’ the company said. ‘Our brand has a proud sporting heritage and such behaviour goes against everything we stand for.’” Levi’s, in contrast, drew particular attention for a global marketing campaign it had unluckily launched just before the riots erupted. The flagship television ad for the campaign, entitled “Go Forth,” is a video montage of passionate and rebellious young people set against a reading of Charles Bukowski’s poem, The Laughing Heart. In one vignette, a young man stands alone in the middle of a ransacked urban square, taunting a phalanx of riot police in view of cowering onlookers, while the narrator passes over Bukowski’s line: “you are marvelous.” The media seized on the ad, and Levi’s backpedaled as hard as it could without explicitly disavowing the imagery it had used. It postponed its planned release of the “Go Forth” ad in British cinemas and on Facebook, but continued to make it available on YouTube and on the campaign website. Unlike Adidas, Levi’s resorted to vague generalities and the passive voice in an attempt to put some distance between its brand image and the rioters without explicitly criticizing its young customer base:
We are deeply disheartened about the unprecedented events taking place in the UK at the moment and which have impacted communities across the country. While Go Forth is about embodying the energy and events of our time, it is not about any specific movement or political theme; rather, it’s about optimism, positive action and a pioneering spirit. Out of sensitivity for what is happening in the UK, we have temporarily postponed our cinema and Facebook spots in the country.Between the responses of Levi’s and Adidas to the UK Riots lies the limit of the win-win strategy’s effectiveness against the brand renegade. Levi’s seemed to think it could placate the brand renegades’ social critics without alienating the renegades themselves—precisely the strategy pursued by Abercrombie & Fitch. It attempted to do so by highlighting what its cultivated image and its brand renegades (in this case, rioters conspicuously looting Levi’s goods) have in common, while ignoring what makes those brand renegades different (and threatening to others). Adidas clearly concluded that it could not strike this balance, and abandoned the brand renegades in favor of the rest of its customer base. Rather than focusing on what its brand renegades have in common with Adidas’s cultivated image, the company focused on what makes the brand renegades different, and explicitly attacked it. The judgments behind these decisions are both commercial and social. They test the margins of profit and persuasion in the tradeoff between brand renegades and brand loyalists, all against the backdrop of a wider social audience. Adidas, alone out of all the brand owners discussed in this Part, seems to have found itself on the wrong side of those margins. As we approach this limit of the brand owner’s tolerance for the brand renegade, we come to the question that began this Article: is there any role for law in mediating the conflict between them?  The difficulty arises when the law tries to reach past these types of source-confusion conflicts.  Whereas once the maker of BORDEN ice cream couldn’t recover against a company selling BORDEN condensed milk, such rigid limits on the market scope of trademark rights began to erode in the early part of the twentieth century. As consumer markets expanded beyond local and regional boundaries, strict geographic limits on the scope of trademark rights eroded. And as the law’s treatment of trademark licensing went from overtly hostile to broadly accommodative, courts came to condemn not only commercial practices that led to consumer confusion as to source, but those which might lead consumers to mistakenly believe that a defendant is affiliated with, or sponsored by, a trademark owner. This shift, combined with the rise of product placement and embedded advertising in popular entertainment, brought the producers of expressive works and cultural products into trademark law’s ambit. Finally, in 1995, Congress severed the link between competition and trademark liability for “famous” trademarks entirely, by creating a cause of action—dilution—that is explicitly available “regardless of the presence or absence of . . . competition between the owner of the famous mark and other parties.” Importantly, the expansion of liability to encompass sponsorship and affiliation confusion generates its own momentum, in what Professor James Gibson has referred to as a “feedback loop.”  Uncertainty about the limits of trademark rights leads risk-averse commercial actors to submit to trademark owners’ claims (e.g., by taking a license or removing references to the mark) rather than contest them. The observable results of this behavior then inform consumers’ perceptions as to the prevalence of sponsorship or affiliation relationships in the marketplace. This changed understanding of consumers, in turn, expands the universe of conduct which could generate confusion as to affiliation or sponsorship. The result is that trademark liability’s boundary is never clear, and yet clearly always expanding.  As subtle, informal, and post hoc cross-promotional relationships become increasingly common in the entertainment industry, and as user-generated content is increasingly incentivized by marketers themselves, the line between independent consumer and sponsored affiliate is already frustratingly difficult to draw. Finally, as marketers begin to turn to the same social networking tools and participatory demonstrations that have recently become a hallmark of organized civil unrest, it may be only a matter of time until a significant number of consumers genuinely come to believe (perhaps with good reason) that the latest riot tearing through their communities enjoys corporate sponsorship. Despite these trends, our intuition is that there must be some limit to the power of brand owners to control perceptions of their brands, particularly where those perceptions are based on our observations of actual consumers. As Professor Rebecca Tushnet notes, “[t]here is nothing (as yet) that Coca-Cola can do to erase my memory of the time I spilled a Diet Coke into my keyboard,” and it would strike us as absurd (I hope) to suggest that Coca-Cola might sue Professor Tushnet for having created such a negative association with its brand in her own mind (or, having read her article, in ours). Similarly, I suspect most people would find it implausible that a consumer could be assessed damages for wearing Adidas to a riot, that a reality television star could be enjoined from walking down the street wearing a pair of neon green Abercrombie & Fitch pants, or that a rapper could be sued for ordering Courvoisier at a nightclub. Our intuition is that there must be some intelligible limit on the legal weapons the brand owner can deploy against the brand renegade. But where in the law are these limits to be found? We might try to satisfy our intuition by setting certain categories of conduct outside trademark law’s reach. For example, one could argue that consumption of a brand owner’s products, and perhaps the portrayal of that consumption in expressive works, are categories of conduct that should be outside the bounds of trademark liability. But it is not at all clear that this is the case under current law. Portrayals of brands in expressive works are not, as a category of conduct, beyond trademark law’s reach. And there is no doctrine that one can definitively point to in hopes of placing consumption, as a category of conduct, entirely outside of the reach of infringement liability—indeed, there is anecdotal evidence that brand owners are moving to regulate consumption directly. Moreover, consideration of doctrines that might be invoked to impose such conduct-based limits on trademark liability only serve to demonstrate the absence of such limits. Take, for example, the doctrine of “trademark use” or “use as a mark.” For approximately a decade, scholars and judges debated whether “trademark use” is an element of a trademark infringement or dilution claim, and if so what trademark use means and how it might be established. After the spilling of much ink, we appear to have an answer: there is no trademark use requirement at all for infringement claims, but “use as a mark” is a necessary element of dilution claims. The plaintiff’s burden on this element of its dilution claim is simply to show that the defendant’s use involves some goods or services other than those of the plaintiff. This limitation on dilution claims would indeed seem to shield the brand renegade in his capacity as consumer from blurring or tarnishment liability. But it would not shield the producers of expressive works that portray the brand renegade’s consumption, nor would it necessarily shield the brand renegade who consumes in the process of rendering entertainment services—a reality television star on a shoot, for example, or a rapper appearing at a promotional event. And of course, both the brand renegade and the producer of expressive works portraying his consumption would find no refuge from infringement (as opposed to dilution) liability in the trademark use doctrine. As another potential doctrinal tool to limit brand renegades’ liability, consider the related but distinct requirement of use in commerce. By both constitutional and statutory command, federal trademark liability may only attach to conduct that constitutes a use of a mark “in commerce”—specifically, in interstate or foreign commerce. But only minimal reflection is required to conclude that this limitation on the reach of trademark liability offers no shelter to the brand renegade. With respect to expressive works that are themselves released into the stream of commerce, a plaintiff would have no trouble satisfying this requirement. And as every law student learns, the scope of “commerce” subject to regulation by Congress is exceedingly broad. It is no great leap from the proposition that a farmer can be restrained in growing wheat for his own consumption due to the effect of his self-sufficiency on the economy-wide demand for wheat, to the proposition that a consumer can be restrained from consuming branded products due to the effect on the economy-wide market for that brand. This is particularly true where there is a thriving market for brand affiliation, in which brand owners compensate consumers for their conspicuous consumption of and advocacy for the brands they enjoy. In short, the use in commerce requirement is perhaps even less useful than the trademark use requirement in satisfying our intuition against holding brand renegades liable to brand owners. In light of these shortcomings of established doctrine in satisfying our intuitive policy inclinations, some commentators have proposed novel, alternative limits on the reach of trademark liability. Professors Mark Lemley and Mark McKenna, for example, suggest that liability for sponsorship and affiliation confusion might usefully be restrained by investigating whether the confusion at issue in any given case is likely to materially affect consumers’ purchasing decisions, arguing that any other form of confusion is irrelevant to trademark law’s policy objectives. While the concept of materiality that Professors Lemley and McKenna borrow from false advertising law is a useful criterion for restraining the expansiveness of sponsorship and affiliation confusion liability in general, on reflection it does not seem to do much work in the narrow case of the brand renegade. Professors Lemley and McKenna argue, convincingly, that brand owners are unlikely to suffer any lost sales from most forms of sponsorship or affiliation confusion, making materiality a useful policy lever. But clearly, and particularly for brands that trade on social meaning, brand renegades do affect purchasing decisions, at least in some circumstances.  but with respect to brand renegades, it is likely the entire issue. At stake in the conflicts described in Part II of this Article is the balance between the expressive interests of brand owners and the expressive interests of brand renegades with respect to the social meanings of the brands in which they each claim a stake. The ultimate question is: will the law give either of these parties any preference in constructing those meanings? Professor Thomas McCarthy, the author of the leading American treatise on trademark law, has advanced the argument that a trademark owner has a First Amendment interest in not being associated with controversial persons (such as brand renegades) and the negative social response to them. Notably, though, Professor McCarthy’s argument on this point claims exactly zero support from the trademark caselaw. In contrast, First Amendment concerns are reflected in numerous trademark law doctrines under which courts have shielded persons other than the brand owner from liability: the protection of criticism and parody; the cabining of infringement claims against the titles or contents of expressive works; the doctrines of descriptive fair use and nominative fair use; and the statutory limits on dilution claims, to name just a few. In general, these doctrines recognize that overbroad assertions of trademark rights can inhibit the expression of ideas that either promote competition (in the case of fair use) or provide socially useful information regarding trademarks and their owners (in the case of defenses for parody and criticism). To avoid such chilling effects, the law limits the control mark owners may assert over the uses others make of their marks. In many—if not most—of these doctrines courts tend to suggest that the First Amendment interest may be vindicated only where (or even because) there is as a factual matter no consumer confusion of which the brand owner might complain. But it must be admitted that this is unlikely to be true for brand renegades. As discussed above, brand renegades by definition affiliate themselves with some aspects of the brand, and as brand owners continue to co-opt and leverage brand renegades, consumers are increasingly likely to be confused as to whether the affiliation runs both ways. Merely protecting brand renegades who do not confuse as to affiliation or sponsorship is unlikely to avoid trademark infringement liability in the modern marketing environment. The principle of freedom of expression must trump the concern over confusion for us to conclude that the conduct of brand renegades is not actionable. One doctrine reflects precisely such a prioritization of interests, and it is directly applicable to one of the categories of conduct that is the subject of our intuition against the imposition of liability. This is the strict test for infringement applied to expressive works. Under Rogers v. Grimaldi and its progeny, such works will infringe a trademark only where their use of the mark has “no artistic relevance” to the underlying work. Characterized as an exercise in “balance,” this standard explicitly accepts some degree of confusion in order to avoid chilling expression. Application of Rogers would almost certainly protect a rapper in his lyrics and a reality television producer in its broadcast, while analogous constitutional privileges of the press would surely protect a newspaper in its coverage of a riot. While the caselaw interpreting the federal dilution statute is more limited, it suggests a similar result in dilution actions. Nevertheless, it is not clear that the subjects of these expressive works—the consumer brand renegades themselves—would enjoy similar protection. Indeed, if Professor McCarthy’s view is correct, there might be some justification for imposing liability against consumers who create such associations. Thus we come, finally, to the ultimate question: whether the brand renegade, who alters a brand’s social meaning by the mere act of conspicuously consuming it, is within the reach of trademark liability. If our intuition is that the answer to this question must be no, I submit that this intuition can be justified only by recognizing through law what consumer psychologists have concluded through research: that for brand renegades as for the rest of us, consumption itself has an expressive character. If the reason for tolerating confusion with respect to the expressive works described in the last paragraph is that there is social value in the expression inherent in portrayals of a brand renegade’s consumption, it follows that the ultimate source of that value is the consumptive act itself—passing the Courvoisier, donning Abercrombie & Fitch pants, or wearing Adidas on a looting spree. As discussed in the first Part of this Article, we engage in such consumption in no small part to forge our social identities, to communicate those identities to others, and to modify our identities in response to similar communications we receive through others’ consumption. Where that consumption relates to branded goods, the brand itself becomes in at least some measure the subject of a social, not just a commercial, discourse. The possibility of socially expressive consumption is not novel—quite the opposite. But it is a possibility that American trademark law has yet to fully grapple with—perhaps because the expansion of liability under that body of law is only now reaching the point where consumption itself is implicated. Where the law and commentary have recognized First Amendment interests, it has generally been with respect to either talking about (and perhaps critiquing) a brand’s cultivated associations, or directly invoking those associations as a kind of shorthand vocabulary. The brand renegade forces us to recognize a new category of expression—one which both appropriates some aspects of a brand’s meaning and alters that meaning by giving it new social context. We must recognize that consuming a brand can in itself be a form of commentary on and critique of the social meanings inherent in that brand—particularly where the brand owner explicitly trades on those meanings by cultivating personality associations in its marketing. As brand renegades continue to engage in this form of expression, and brand owners increasingly conflict with them, we are sure to be called on to integrate that conflict into the uneasy legal balance between the ever-expanding sphere of trademark liability and our First Amendment principles. I submit that in this narrow context, the balance is a relatively easy one to strike. Professor McCarthy argues that brand owners should be permitted to contribute to a brand’s social meanings, but that nobody else should (at least not without the brand owner’s approval). He argues, in short, for judicially enforced viewpoint-based restrictions on expression. In contrast, the intuition against liability that has been the subject of the investigation in this Part demands no such discrimination; it merely demands that the law treat the brand owner and the brand renegade on equal footing with respect to their contributions to the social meaning of a brand. As between these two alternatives, the intuition investigated in this Part fares far better under the First Amendment than Professor McCarthy’s alternative. Doctrinally, I propose that the best vehicle for the intuition I have attempted to vindicate in this Part is to extend the balance struck by Rogers and its progeny (and the analogous dilution authorities) from the case of expressive works to the case of expressive consumption. Absent an explicit claim by the brand renegade that the brand owner approves of his conduct, the expressive dimension of his consumption deserves protection from trademark liability. —is that in this struggle to control social meaning, which implicates not only the identity of the brand but the identity of members of a community, both parties ought to be equally free to make their case, and the social audience should be free to decide between them.
Choking the Channel of Public Information: Re-Examination of an Eighteenth-Century Warning about Copyright and Free Speech
Beside what are properly called news, the editors will give the utmost attention to whatever regards religion, trade, manufactures, agriculture, and politics in Great Britain, and Ireland, and the colonies thereto belonging; and will be careful to insert the best and most accurate accounts they can procure of all important transactions, interesting anecdotes, and useful discoveries, in every part of the British dominions. Nor shall the article of Entertainment, for which there is so large a demand, be unregarded. Essays on useful, ingenious, and entertaining subjects, both in prose and verse, if well wrote, and of moderate extent, will be thankfully received and readily inserted.On the first day of publication, Donaldson and Reid criticized the other Edinburgh newspapers, all of whom refused to publish an advertisement announcing the launch of the Advertiser. Within two months, Donaldson and Reid gave a lengthy invitation to and justification of advertising, saying that old notions about the disreputable nature of having one’s personal or business name appear in a public print should be discarded. The editors defended the value of the London Gazette, an official government newspaper, which may not have had independent editorial copy but did, they said, communicate some news and advertising to the public and also had spawned other, independent, newspapers throughout Great Britain. The Advertiser was printed in quarto size, and, with an index published every six months, could be bound and preserved, thus enhancing its shelf life and value to readers and advertisers. Within six months after its first publication date, the Advertiser was apparently financially stable and had been received well throughout Scotland; in writing to thank his subscribers and advertisers, Donaldson recommitted himself to “the utmost care . . . to insert the best essays and most interesting articles of intelligence that may occur.” In his public writings as editor of the Advertiser, at least, Donaldson’s concern for profits eventually subsided in favor of a focus on editorial quality and independence. By the end of 1764, Reid had left the Advertiser and Donaldson remained alone as editor and proprietor. On the final day of 1771, he wrote a remarkable letter to readers acknowledging that newspapers might make mistakes, but asking readers to forgive them and warning government officials to refrain from both censuring and censoring:
If we have occasionally married couples without the privity of friends or relations, without the publication of banns, or even the consent of the parties themselves, it can be no secret to our fair readers that frequent examples of matrimony are absolutely necessary in this licentious age. If we have sometimes dismissed people of quality from the world, without asking leave of the college of physicians, the joy of their friends will prove the greater when they are raised to life in the succeeding paper. If we have been sometimes more in haste to decide a cause than the lawyers themselves, we have thereby placed before them an example, which all ranks of his Majesty’s subjects would concur in recommending to their notice. In fine, if we have given children to the barren, riches to the poor, or preferment to the undeserving, we have only done that for them, which intrigue, chance, or interest will frequently bring about; with this advantage in favour of all parties, that the progeny we bestow will cost nothing in education, the wealth we dispense may be retained without care, and the honours we confer be received without disgrace to the donor. As fickle as is fortune, we are favourable to all in their turn, and (as Macheath says) the wretch of to day may be happy to morrow)—in the EDINBURGH ADVERTISER.Donaldson continued by writing that the Advertiser was “open to all parties and influenced by none,” mentioning specifically that some had accused his editorial approach of having been “too ministerial” while others charged him with being too critical of British government ministers. In 1764, Donaldson publicly distributed an essay uncovering the scheming ways of London booksellers against Scottish booksellers like himself. Attached to the essay, Donaldson also published the text of several letters from London booksellers that exposed their schemes. Letters by this time had been judged to be the intellectual property of their authors, and so this act by Donaldson both provided the potential for a copyright infringement lawsuit and represented a manifestation of his belief in freedom of the press from private control. Donaldson was determined to invest in copyright litigation in order to protect future bookselling opportunities, and he pursued litigation vigorously. The Court of Session, Scotland’s highest court, decided in Donaldson’s favor on July 28, 1773, in a copyright case brought by a London printer named John Hinton. Hinton had sued Donaldson for copyright infringement after Donaldson and other Scottish printers published approximately 10,000 copies of Thomas Stackhouse’s A New History of the Holy Bible between the years 1760 and 1770. The Scottish court held that there was no perpetual common law copyright, or right of “literary property,” and that Donaldson had not infringed the Statute of Anne because the statutory copyright term for Stackhouse’s work had expired. Later, in the run-up to the House of Lords’ hearing in Donaldson v. Beckett, Donaldson used his newspaper, as well as advertisements in other newspapers, to publicize his victory over Hinton. Donaldson paid for advertisements in the classified ad section of London newspapers announcing that he was selling copies of the Scottish Court of Session decision. Eleven of the twelve Court of Session judges who gave their opinions in Hinton favored Donaldson, and for several of them the only reason for pause was an English Court of King’s Bench decision issued in 1769. In that case, Andrew Millar sued Robert Taylor for publishing unauthorized copies of the poem The Seasons by James Thomson. After hearing arguments on behalf of the booksellers by the famous legal commentator William Blackstone, the Court of King’s Bench relied on a series of licensing acts, the system of letters patent granted by the Crown, the prerogatives and processes of the Stationers Company, and several Chancery Court injunctions to conclude there was a common law right of literary property. Lord Chief Justice Mansfield, a recognized authority with whom even the Scottish Court of Session judges were loath to disagree, delivered the holding that the common law right existed “before and independent of” the Statute of Anne. Taylor was enjoined from printing or selling copies of The Seasons. As with Millar v. Taylor, the case of Donaldson v. Beckett was brought by London booksellers for unauthorized publication of Thomson’s The Seasons. On the same day Donaldson’s classified advertisement was published, one of the newspapers in which it appeared also published in its editorial columns a report that lawyers representing Donaldson before the House of Lords had requested the beginning of arguments in the case be delayed a week until Friday, February 4, 1774. Intended or not, the delay gave Donaldson the opportunity to print and begin selling copies of the Scottish Court of Session decision in Hinton prior to the House of Lords’ hearing. The Public Advertiser, the newspaper that published both the classified advertisement and the editorial report about Donaldson, had lifted its editorial copy about the case verbatim from another London newspaper, the Morning Chronicle and London Advertiser. In fact, much of the content of eighteenth-century London newspapers consisted of passages reprinted from other newspapers, both foreign and domestic. News content was expressly not protected by copyright under the Statute of Anne, and the London newspapers reporting on the great eighteenth-century literary property debate culminating with Donaldson v. Beckett borrowed liberally from one another’s editorial columns. This tendency for newspapers to print verbatim copies of others’ material—as well as the public anticipation for the House of Lords’ consideration of Donaldson v. Beckett—was on clear display in the first days of February, 1774, when at least three London newspapers said the case “materially affects the Literature of this Country, as well as the Property of many Individuals, to an immense amount.” One newspaper, the Morning Chronicle and London Advertiser, took such interest in the case that it printed transcripts of the proceedings for nearly three weeks and, even before the arguments began, reproduced Lord Mansfield’s lengthy opinion given five years earlier in Millar v. Taylor.  Furthermore, Donaldson v. Beckett appears to have been one of the first judicial proceedings in the House of Lords covered “gavel-to-gavel” by newspapers. Before it came to the House of Lords, the case of Donaldson v. Beckett had been heard first in the Court of Chancery. Upon initial filing of the case in 1771, a temporary injunction was granted, and the injunction was made permanent in 1772 by Lord Chancellor Apsley, another of the law lords who, like Mansfield, would play a key and unexpected role in the House of Lords’ later consideration of the case. Given that Thomson’s collection of poems was first published in 1730, and that the Statute of Anne granted a 14-year term with another 14-year renewal possible if the author was still alive, statutory copyright protection had expired by 1768, when Donaldson printed the copy of The Seasons at issue in Donaldson v. Beckett. Under its eighteenth-century rules, the House of Lords reviewed Apsley’s decree de novo. As Lord Chancellor sitting in his role as Speaker of the House, Apsley presided over the case but the ultimate decision rested with the entire House of Lords, whose members were sometimes called “peers.” Those lords who were not law-trained had equal say with those who were, but in practice the lay lords deferred to the law lords on most cases. In addition, the lords could—as they did in Donaldson—request legal advice from common law judges via “writs of assistance” on certain specific questions. The role of the common law judges from the courts of King’s Bench, Common Pleas and Exchequer—to give their opinions on specific questions posed by the lords but not to decide the case themselves—is critical and appears to be misunderstood by many modern American legal commentators, who view the judges’ opinions as justifications by the actual decision-makers rather than just advisory statements by external actors. Copyright scholar Ronan Deazley expressed the relationship between the lords and the judges on such occasions:
The lords, when faced with a particularly complex or difficult legal issue, could call upon the common law judges to proffer expert advice for the consideration of the House. The judges, if summoned, took up their position upon the woolsack, a position that was not considered to lie within the limits of the House. As a consequence, technically they “had no voice in the House” and could not give an opinion “unless formally asked for”. When they were asked for an opinion, if unanimous in their thinking, the senior judge present would deliver a collegiate address. If, however, there existed disagreement then the judges would be asked to answer the lords’ questions, each in turn, in order of increasing seniority.What follows is a daily summary of the appeal taken primarily from contemporaneous newspaper accounts, with particular focus on aspects of the case relating to press freedom.  Although it became clear in December 1772 that the House of Lords eventually would hear the case, it was for about a year in the hands of a University of Oxford law professor for “perusal and approbation.” The Oxford professor apparently was assigned as special master to determine the amount of money the petitioners had derived from sales of copies of The Seasons and thus the amount they should pay to the London bookseller Beckett. As the appeal in the House of Lords finally neared, London newspapers diligently kept their readers abreast of “[t]he great cause of literary property.” In explaining its decision to reprint the lengthy Lord Mansfield opinion from Millar v. Taylor in two parts, the Morning Chronicle and London Advertiser just two days before the House of Lords took up Donaldson explained that “the public cannot be too well apprized [sic] of the peculiar nature of the question.” The extent to which the debate over common law copyright roiled and divided the English legal community in the eighteenth century was evidenced by Mansfield’s statement, reprinted in the newspaper during the days leading up to the House of Lords hearing, that Millar v. Taylor was the first time the Court of King’s Bench had failed to reach unanimity in his time there. On the first day of the Donaldson appeal, a letter-to-the-editor writer called “A Friend to Literature” anticipated some of the arguments that would be made against common law copyright: The writer noted that London booksellers had been paying authors for copyrights “from the day of Shakespeare to our times” and therefore it was evident common law copyright existed long before Parliament adopted the Statute of Anne in 1710. Further, the writer said, literary property may well have established a monopoly but no more so than any other form of property ownership. The author said Donaldson and other Scottish booksellers would never “give a shilling in their lives to the encouragement of literature” and that “plunder, and temporary subsistence is all their aim.” Finally, the letter writer made an economic argument in favor of common law copyright, saying the failure to enforce it would cause legitimate copyright owners and booksellers to sell their works initially at exorbitant prices because of the expectation they would thereafter be pirated. A large crowd of people reportedly had to be turned away on the first day due to lack of room in the House of Lords. On that first day, the House of Lords heard just one advocate: Edward Thurlow, the Attorney General, arguing on behalf of Donaldson. The newspapers described Thurlow’s remarks as “a long and eloquent speech” against literary property, or perpetual common law copyright, in which he “declaimed against monopolies of that nature as repugnant to law.” In February 1774, Thurlow was a 42-year-old lawyer on the ascendancy. He and Dunning, despite their positions on opposite sides of the copyright litigation and their sharp critiques of one another’s arguments, were known to be close associates. Thurlow’s arguments before the House of Lords on behalf of Donaldson were summarized in general form by Brown, together with and undifferentiated from those of his co-counsel, Sir John Dalrymple. Burrow contains no report of Thurlow’s remarks or any others made by the lawyers in the case. The Parliamentary History contains a third-person account of Thurlow’s remarks, which were said to be focused on the nature of property and whether such a thing as literary property could even exist or was “too abstruse and chimerical a nature to be defined.” Thurlow appealed to history, stating that if there had been a common law or natural right, then royal “grants, charters, licenses, and patents” would not have been necessary and neither would the Statute of Anne itself. The Anonymous Report contains a third-person account similar to that of the Parliamentary History, but the Gentleman’s Report conveys what purports to be a first-person transcript of Thurlow’s remarks. The newspapers focused on Thurlow’s discussion of previous Chancery Court injunctions in favor of booksellers with respect to the unauthorized publication of the anonymous seventeenth-century work “Whole Duty of Man” as well as works by Milton, Pope, Swift and others. Thurlow argued these injunctions were based not on a common law right of copyright but rather government printing patents and the prerogatives of the Stationers’ Company. The Edinburgh Advertiser reported that Thurlow had referred to the Scottish Court of Session decision in Hinton v. Donaldson. Thurlow’s arguments about the nature of property provoked strong public response from a newspaper reader, whose letter to the editor the following week expressed chagrin and surprise that the literary products of geniuses such as Shakespeare, Milton, Bacon, Newton, Pope, Locke and Addison could not be bequeathed to their posterity perpetually, but that other individuals could bequeath such mundane property as a windmill, fish pond, coal pit or lead mine. Other letters-to-the-editor displayed similar sophistication in responding to Thurlow’s arguments and those of Sir John Dalrymple, which would follow on Monday. One, for example, evoked natural rights and a notion of the modern right of integrity, which predominates in European moral rights regimes and appears in the Berne Convention for the Protection of Literary and Artistic Rights. Others expressed their support for copyright in terms of economic incentives to benefit the public.  published in the days immediately after the speech. Meanwhile, another, less-detailed newspaper account seems to have been the basis for the version rendered in the Gentleman’s Report and a substantial part of the Anonymous Report. Dalrymple’s speech, though given little or no attention by Brown and Burrow, is singularly important because it provides a window to understand the contemporary view of the issue at stake in Donaldson, a topic of later confusion. Several newspapers reported Dalrymple’s speech as emphasizing that “the point principally to be contended” in the Donaldson case was that the common law had never granted a property right to either bookseller or authors. On this point, Dalrymple stated that the booksellers lobbied in favor of passage of the Statute of Anne precisely because they knew they did not already have a common law property right. It would have made no sense, Dalrymple said, for the booksellers to have lobbied for a 14-year copyright in the Statute of Anne if they already owned a perpetual right under the common law: “They knew their own situation,” Sir John told the lords. “They knew the rottenness of their pretended right, and wanted a new real one, instead of the old imaginary one.” Dalrymple noted the Statute of Anne said it “vested” or “secured” a right, and that language would not have been present if the common law right already existed. Dalrymple might have contributed to the confusion that surrounds Donaldson—including on the part of the judges and the lords—and continues to mystify legal scholars. Although his main point of contention was that English common law, like that of Scotland and every other “civilized nation . . . under the canopy of heaven” did not recognize a common law copyright, Dalrymple also made an alternative argument. Ideas, Dalrymple said, might belong to the individual who has them as long as that individual keeps them secret. Once published, however, those ideas no longer belong to that individual. It was perhaps from this line of argument—Dalrymple’s emphasis that the Statute of Anne affected a sea change along with his discussion of the impact of publication of ideas—that grew the sentiment that the real issue in Donaldson was not whether a common law right existed in England but rather whether the common law right that surely existed was abrogated or preempted by publication of literary works. The newspapers also reported that at least a portion of Dalrymple’s argument centered on freedom of the press. According to William Woodfall’s account in the Morning Chronicle, Dalrymple “investigated the commencement and the secrecy attending the commencement of the art of printing, as well as the mode then taken by the printers to secure their property by patents, licenses, and Star Chamber decrees.” He observed that there was nothing so powerful in the political process as the press and said that the British monarchy had realized this early in the history of printing. The monarchy had to account for the fact that “free use of the press must be finally dangerous to themselves” and so the Crown colluded with the booksellers to create the system of licensing that prevailed until 1694. In this way, he said, the Crown could exercise full control over the content of mass communication, much as it had done in the previous century with licensing.  In his remarks, Wedderburn appealed to both natural law and a public benefit rationale. Wedderburn cited the 17th century Dutch jurist Hugo Grotius, who quoted the Roman lawyer Paulus in saying one who invented an object was the owner of it. Wedderburn showed the lords a copy of the original grant by King James to the booksellers to print some of his poems, with the suggestion being that James would not have attempted to give the booksellers a literary property right he did not possess. Later that day, the lords heard from John Dunning on behalf of the booksellers. Dunning had served as solicitor general prior to Thurlow, and in 1768 Dunning had been elected to the House of Commons. Colleagues called him a brilliant lawyer and “the foremost advocate of his day.” Dunning was described by the newspapers as “having a violent Cold upon him” that caused him to be hoarse and difficult to understand. Dunning, apparently responding to Dalrymple, said it was not reasonable to conclude that mere publication could deprive a literary property owner of his or her right.  Following Thurlow’s reply, Lord Chancellor Apsley directed that three questions be asked of the common law judges, who would render advisory opinions to assist the lords in deciding the case. Lord Camden then posed two additional questions to the judges. These questions and the judges’ subsequent responses have spawned a great deal of commentary and confusion. There appears to be some dispute surrounding even the newspapers’ contemporary reports of the questions. Woodfall’s Morning Chronicle, for example, assured readers that all the other newspaper accounts of the questions were in error and that only the Morning Chronicle’s reporting could be trusted as accurate. In fact, there are significant differences between the questions as rendered by the Morning Chronicle, on the one hand, and three other newspapers, on the other hand. According to the Morning Chronicle, Lord Chancellor Apsley repeated his three questions to the judges twice:
- Whether at Common Law, the author of any literary composition had the sole first right of printing and publishing the same for sale, and could bring an action against any person for publishing the same without his consent.
- If the author had such right originally, did the law take it away upon his printing and publishing the said book or literary composition, or might any person re-print and publish the said literary composition for his own benefit, against the will of the author.
- If such action would have laid at Common Law, is the same taken away by the Statute of Queen Ann? Or is an author precluded by such statute from any remedy, except on the foundation of the said statute?
Question I. Whether the author of a book, or literary composition, has a common law right to the sole and exclusive publication of such book or literary composition? Q. II. Whether an action for a violation of common law right will lie against those persons who publish the book or literary composition of an author without his consent? Q. III. How far the statute of the 8th Queen Anne affects the supposition of a common law right.The London Evening Post version omits the middle question about whether a common law right, if one existed, was taken away upon printing and publication of a work. In the London Evening Post’s rendering, the first two questions are redundant and the third is less precise than in the report of the Morning Chronicle. All of the legal reports—Brown, Burrow, Parliamentary History, Gentleman’s Report and Anonymous Report—follow in substance the Morning Chronicle’s account of the three questions posed by Lord Chancellor Apsley. But, as will be seen, at least one of the judges apparently understood the question to be the one printed in the London Evening Post and not the one in the Morning Chronicle. Immediately after the three questions were put to the judges by Apsley, Lord Camden posed two additional questions. Although Camden’s questions may seem repetitive of those posed by Apsley, modern scholars have noted that Apsley’s questions focused on the rights of authors while Camden’s questions focused on the rights of booksellers or printers who purchased copyrights from authors. This is related to the fact that Camden’s questions refer both to assignees and to a perpetual common law copyright that could, at least in theory, continue in force even after statutory rights have expired. Once again, the Morning Chronicle version of the questions was followed in substance by the five reported versions in Brown, Burrow, Parliamentary History, Gentleman’s Report and Anonymous Report (and this time, there was no significant difference in the other newspapers’ version):
Whether the author of any literary composition, or his assigns, had the sole right of printing and publishing the same in perpetuity by the Common Law? Whether this right is any ways impeached, restrained, or taken away by the 8th of Queen Ann?Although the judges would not begin giving their opinions on the questions for nearly a week, it did not take that long for London citizens to begin chiming in with their own answers to the questions posed by Apsley and Camden. Even before the judges could begin to respond in the House of Lords on February 15, a letter-writer called “Brecknock” wrote in the Morning Chronicle that the purpose of the Statute of Anne was to encourage authors to publish their works as soon and as often as possible within 14 years or the exclusive right to do so would be lost.
E. Days 5, 6 and 7: Tuesday, February 15, 1774; Thursday, February 17, 1774; and Monday, February 21, 1774A total of 11 judges, including two who were also members of the House of Lords, gave their opinions on the five questions posed. Had they been unanimous, the judges apparently would not have had to speak individually but rather could have submitted a single recommendation to the lords. But since they disagreed, the judges were given the opportunity by the lords to present their views in order from junior to senior. The opinions of the judges have confused many readers of Donaldson for centuries, but in recent years scholars such as Deazley have made detailed efforts to document the judges’ views and to correct errors traditionally made in describing those views, even in the official reported versions of the case. The following summary of the judges’ advice to the lords, taken from contemporary newspaper accounts, is organized around the questions the judges had been asked to answer. It should be noted that not all of the judges explicitly answered all of the questions put to them, and virtually none of the judges spoke at length about the distinction between the questions posed by Apsley and those posed by Camden. In other words, the judges generally did not distinguish between the rights of authors and the rights of booksellers or printers.  Perrott, Adams and De Grey. Perrott and Adams (and probably De Grey) expressed the sentiment that manuscripts could be owned in their physical form and that this ownership would protect something like a right of first publication. This right was not unique to expression but was a kind of possessory right of the type that would extend to other property; as Perrott expressed, “[a]n author certainly had a right to his manuscript; he might line his trunk with it; or he might print it.” Perrott also believed that “[i]f a manuscript was surreptitiously obtained, an action at Common Law would certainly lie for the corporeal part of it, the paper.” This could not be called a common law copyright, however. Instead, De Grey described it as simply the power to do “what a man will with his own” and said it included the prerogative “of publishing or withholding from the world a literary composition.” Meanwhile, the seven judges who concluded there was a common law right were Nares, Ashurst, Blackstone, Willes, Aston, Gould and Smythe.  a newspaper account says Eyre argued “for an Hour and a Half, in a very strong Manner against Literary Property” and therefore, in his view, there was no common law right for publication to take away. A careful review of the various accounts of Eyre’s speech provides no basis for a conclusion that he answered in the affirmative on this question. In fact, there seems to be widespread confusion about what question Eyre was answering. One contemporary newspaper writer reported that Eyre’s vote was given in response to the second question as inaccurately described by the London Evening Post(whether an action could lie) rather than the version of the Morning Chronicle and the legal reporters (whether the right was lost upon publication). The Gentleman’s Report, Anonymous Report and Parliamentary History all substantiate that Eyre said, in response to what he apparently thought was the second question, that an action could not be brought because there was no common law right. Thus it appears Eyre never squarely addressed the actual second question posed by Apsley: whether any common law right that existed was lost on publication. Burrow reports that Eyre said “if the author had such sole right of first printing, the law did take away his right, upon his printing and publishing such book or literary composition.” But there is no basis for this conclusion by Burrow in any of the narratives of Eyre’s arguments, including the newspaper accounts. Given that Burrow made an error in recording Nares’ vote on the next question, it seems likely that Burrow’s statement about Eyre’s vote on this question could also be erroneous. A letter-writer to the Morning Chronicle challenged Eyre’s view that there was no common law right. The writer contended that the real danger to the public interest in free communication was that writers would not “bring the product of their ideas to public market” but would rather keep them unpublished and thereby monopolize those ideas. This would happen, the writer said, if the statutory and common law schemes for copyright were not sufficiently protective as to convince the author that publication was in his or her best interest. Like Eyre, the judges Perrott, Adams, and De Grey did not believe there was a common law right and did not squarely address this question. To the extent they believed a right was taken away by publication, it was the possessory right of first publication and not the common law copyright, which for them did not exist.
3. Did the Statute of Anne Supersede the Common Law Copyright? (6 Judges “No”; 1 Judge “Yes”; 4 Judges “If right had existed, it would have been superseded”)On this question, six of the judges who believed that the common law copyright existed answered “No” while only one judge, Gould, clearly answered “Yes.” Although modern observers place Eyre in the affirmative camp, his opinion might best be described as: “If a common law right had existed, it would have been taken away by the statute” since he so strongly believed there was no common law copyright at all. De Grey’s opinion was similar, given that he spent a considerable amount of time arguing that the Statute of Anne would have superseded the common law right if it had existed but he also concluded the common law copyright did not exist. Perrott and Adams expressed the same sentiment. Nares’ negative vote was erroneously recorded as “yes” by Burrow. The Parliamentary History is internally contradictory, reporting on the same page that Nares voted both “yes” and “no” on this question. However, it is of particular importance to note that no fewer than seven London newspapers recorded Nares’ vote as negative. The importance of correctly placing Nares in the “no” group is that Nares is the swing vote who gives the judges supporting a common law right not superseded by the Statute of Anne the six votes necessary to constitute a majority among the eleven judges who spoke. Given that the lords ultimately did not follow the judges’ advice on this point (because they reversed the injunction that had been given against Donaldson), it has been argued that the lords’ holding against common law copyright is strengthened. In other words, if the lords had merely followed the advice of the judges, then the judges’ opinions would have been most important. But since the lords rejected the advisory opinions of a majority of the judges, it is the lords’ statements that must be given priority.
4. Was There a Perpetual Common Law Copyright That Authors Could Assign to Printers? (7 Judges “Yes”; 4 Judges “No”)On this question the four judges who earlier stated there was no common law copyright again answered “No,” and the same seven judges who endorsed the common law copyright can probably be placed in the “Yes” category. For most of these seven judges, the affirmative response is by implication because there was little discussion, according to the newspaper accounts, of how this question and the judges’ corresponding responses may have differed from the first question.
5. Did the Statute of Anne Supersede the Perpetual and Assignable Common Law Copyright? (6 Judges “No”; 1 Judge “Yes”; 4 Judges “If right had existed, it would have been superseded”)Unsurprisingly, on this question the six “No” votes came from the same judges who answered “No” to the third question—those who believed that the common law copyright did exist, was not surrendered upon publication, and was not superseded by the Statute of Anne. And again, the only judge to clearly answer “Yes” was Gould, while Eyre, Perrott, Adams and De Grey—the four who believed no common law copyright ever existed—are probably best classified as answering that the statute would have taken the common law right away if it had existed. In an effort to summarize the sentiments of the judges, Deazley has placed them in three camps: (1) those who believed there was a perpetual common law copyright that was neither abrogated by the Statute of Anne nor given up by publication (Nares, Ashurst, Blackstone, Willes, Aston, and Smythe); (2) those who believed there was a right of first printing that was not a common law copyright but rather a kind of possessory right in the physical manuscript itself, but that this right disappeared after publication because of the Statute of Anne (Eyre, Perrott, Adams, and De Grey); and (3) one judge who believed there was a common law copyright but that it was superseded by the Statute of Anne (Gould). However, based on review of the newspaper accounts, this article concludes four categories of judges should be identified: (1) those who believed there was a perpetual common law copyright that was neither abrogated by the Statute of Anne nor given up by publication (Nares, Ashurst, Blackstone, Willes, Aston, and Smythe); (2) those who believed there was a right of first printing that was not a common law copyright but rather a kind of possessory right in the physical manuscript itself, but that this right disappeared after publication (Perrott, Adams, and De Grey); (3) those who believed there was not a common law copyright but that, if one had existed, it would have been superseded by the Statute of Anne (Eyre, Perrott, Adams, and De Grey); and (4) one judge who believed there was a common law copyright but that it was superseded by the Statute of Anne (Gould). The difference between this article’s categorization and Deazley’s is that, in this version, Perrott, Adams and De Grey each have been placed in two separate categories: one in favor of the possessory right of first publication and another for the alternative holding that, if a common law right had existed, it would have been superseded by the Statute of Anne. Meanwhile, based on a review of the newspaper and other accounts showing Eyre did not vote “yes” on the real Question No. 2 but rather answered a different question, Eyre has been moved from the category of those who believed that publication resulted in loss of a common law right. This seems to most accurately describe the four major ways of thinking about the case among the judges. Another way of viewing the opinions of the judges is that seven out of 11 (categories 1 and 4 above) concluded there was a common law copyright, and four judges (categories 2 and 3 above) concluded there was no common law copyright. Significantly, six of the 11 judges believed the common law copyright survived the Statute of Anne, meaning that an author could assign rights to a printer in perpetuity and the printer could prevent others from publishing the work even after the statutory term of copyright protection had expired. Given this state of affairs at the conclusion of the judges’ advisory opinions, one does not blame supporters of the booksellers for declaring in the newspapers that they were “well pleased that the Question of Literary Property is likely to go in Favour of those who have in their Purchases treated it as such.” In reality, however, the lords had something else in mind. It is significant to note, especially in light of how the case has come to be perceived by American legal scholars, that only one judge—Gould—said there was a common law copyright superseded by the Statute of Anne. Meanwhile, equally significant in light of modern interpretations is that no judge concluded there was a common law copyright given up by publication of the work in question.  He took the booksellers to task, calling them “monopolizers of letters” and “extinguishers of genius.” Camden agreed with Dalrymple’s argument and said authors write for fame only and judges interpret law, not make it—essentially concluding that no common law right existed. Apsley then seconded Camden’s motion to reverse the Chancery Court injunction Apsley had entered against Donaldson less than two years earlier. Apsley spent a considerable amount of time speaking “against his own decree” and showing “the specious grounds which he went upon before, and candidly confessed his conviction by a different opinion from that he had before given.” Apsley claimed that he had been bound in the Chancery Court to follow Millar but that he had no particular conviction in favor of common law copyright and after examining the legislative history of the Statute of Anne, thought it was clear that Parliament was against the common law right at the time of passage of the Act. Lord Lyttleton said there was a common law copyright not superseded by statute while the Bishop of Carlisle was reported to have agreed with Camden that there was no common law right. Meanwhile, Lord Effingham said there was no common law copyright because it would inhibit freedom of speech. One newspaper reported simply, “Lord Mansfield did not speak.” In summary, then, four of the five lords who spoke were of a mind that there was no common law copyright. The House of Lords ultimately voted to reverse the injunction, either by voice vote or, in some accounts, a counted majority. One newspaper reported that “a great personage has expressed much satisfaction” at the decision but did not say who that great personage might be. One Londoner called Ben Button wrote to the editor of the St. James Chronicle, “The Lord above knows but I don’t what the Lords here below can mean by their Decision against Literary Property in Perpetuity….” Finally, the newspapers related two tragically humorous stories—perhaps apocryphal—about the ramifications of the House of Lords decision. The first involves a conversation between a bookseller and his lawyer, reported to have been heard in the lobby of the House of Lords immediately after the decision in favor of Donaldson:
“Bookseller. And now, Sir, I am ruined;—my whole Fortune has been expended in Literary Moonshine. “Lawyer. The more a Lunatic you, to lay out your Money upon a Non-entity, a Phantom,—to give a something for nothing. “B. I thought it was Property; it was sold and conveyed to me as such; it has been esteemed so for sixty Years past: The Author would have libelled me if I had denied its being so; and I verily believed it was as much Property as what I gave in Exchange for it. “L. And so it is; you see what it is to deal with an Author; you now see your Money is no more your Property, than his Works which you bought of him. “B. This may be Sport to you; but it is hard to be ruined by a Decision on a doubtful Point. “L. Doubtful! The Law can never be doubtful; for every Peasant is presumed to know the Law, and therefore you cannot plead ignorance in Excuse for your Folly. “B. Was it so clear, Mr. Double-Tongue, when the Judges were divided in Opinion? [W]hen the Chancellor made the Decree which he afterwards reversed? [W]hen the Lords themselves were not unanimous? [W]hen— “L. Pfhaw, you know nothing of the Matter—this is the glorious Uncertainty of the Law. [Exit, chinking his Purse.] “BOOKSELLER folus. “B. The glorious Uncertainty of the Law—that which has proved my Ruin, and makes your Fortune—What shall I do? Shall I turn Pirate? For they and the Smugglers are more encouraged than the fair Trader, or Merchant—NO, I’ll turn Lawyer, there I cannot err, for the Ignorance of Law, which has ruined me, is a good Plea in the Professors; and my Friend’s glorious Uncertainty of the Law will make my Opinion as often right as the best of them.”The second story reportedly took place at Eton, and in it the teller notes the anger of the booksellers toward Mansfield, who, had he spoken, might have been able to change the outcome of the case:
An arch thing happened here a day or two ago, between a young lad of this school and an old woman who sold gingerbread and cakes. The young spark having made free with the dame’s gingerbread while the old woman’s back was turned, and being discovered, was very severely rated by her for making free with her property: the boy observing that what he had taken was alphabet gingerbread, cried out, that she was mistaken, it was not her property, for the House of Lords had lately determined there was no such thing as literary property, and therefore lettered gingerbread was from thenceforth common. The old dame was as angry at this speech, though she did not understand it, as certain lawyers were at a great man’s silence on this subject, which they did not understand, and determined to complain to the matter; but a friend of mine, who saw the affair, stepped in and paid for the gingerbread.The newspapers also reported that “ill consequences” were expected to result from the decision, and among those would be the discouragement of literature. Donaldson’s Edinburgh Advertiser, though, was ecstatic with the outcome. Donaldson, who by then had given control of the newspaper over to his son, probably did not have a direct hand in all the Advertiser’s coverage of the case, and in any case the coverage was fairly objective. But at the conclusion of the case, the Advertiser published a letter from London—one cannot help but speculate whether it could have been written by Alexander Donaldson himself—that made a concession to the joy of victory by publishing all the names of the booksellers who had lost the case.  The lessons learned from this history can be of use to federal judges in reviewing free-speech-based challenges to copyright law. One such challenge was heard by the Supreme Court in the 2011 Term in Golan v. Holder. The Tenth Circuit addressed the First Amendment issue in the case,  and concluded that Congress had altered the traditional contours of copyright in 1994 when it passed the Uruguay Round Agreements Act, a law that sought to bring the United States in compliance with obligations under the Berne Convention for the Protection of Literary and Artistic Rights. In bringing the works of certain foreign authors from the public domain back into copyright protection, the Tenth Circuit said, Congress triggered First Amendment scrutiny. One of the “traditional contours” of copyright, the court said, “is the principle that once a work enters the public domain, no individual—not even the creator—may copyright it.” Ultimately, the Court of Appeals held that the law survived First Amendment scrutiny because Congress demonstrated a substantial or important interest—to secure foreign copyright protection for American authors under Berne by granting copyright protection to foreign authors in the United States, even if their works were previously in the public domain—which was unrelated to the suppression of free expression and narrowly tailored. Upon appeal to the U.S. Supreme Court, the orchestra conductors, educators and others challenging the law disagreed with the U.S. Solicitor General over what constituted the “traditional contours” of copyright. The plaintiffs-appellants argued before the Supreme Court on October 5, 2011 that the Tenth Circuit was right when it said that a traditional contour of the U.S. Copyright Act was that works could not be taken out of the public domain and put under copyright protection. The United States, meanwhile, argued that First Amendment scrutiny would be applicable only if Congress took the extreme measure of doing away with fair use altogether, or abrogated the idea-expression dichotomy and gave copyright protection to mere ideas. A substantial part of the written briefs and oral argument in the case focused on the state of English and American common law prior to 1790, when the United States adopted its first Copyright Act. Those challenging the law contended that Congress did not bring any public domain works into copyright protection in 1790 because common law copyright already protected those works at the time.  The Government countered that Congress did bring public domain works into copyright protection in 1790.  The former interpretation is not supported by the evidence discussed in this article as related to Donaldson v. Beckett, although admittedly this article makes no definitive conclusions about the American circumstances and developments from 1774 to 1790. What this article has shown is that the historical relationship between copyright law and free speech is more complicated than a simple conclusion that they have been separate branches of law between which lawmakers and jurists have traditionally seen no conflict. In the episode of Donaldson, the conflict was recognized and made up a substantive part of the debate. No one connected with Donaldson viewed the free speech issues at stake in the way they would be viewed today under the First Amendment, but nonetheless the concern that copyright could inhibit communication of ideas and even the freedom of the press was present in the speech of Effingham, as well as in the newspaper coverage. The newspapers themselves were just emerging from a bruising battle with the House of Commons and the House of Lords over publication of those bodies’ proceedings, and several newspaper reporters and correspondents recognized that the copyright monopoly could pose a private threat to freedom of press similar to the state threat they knew well. Further, newspaper coverage of speeches by Thurlow and Dalrymple demonstrated that those lawyers made freedom of press issues a part of their arguments to the House of Lords. Finally, Donaldson himself engaged in free-press advocacy through the editorial pages of his own newspaper, the Edinburgh Advertiser, including during the appeal to the lords in Donaldson v. Beckett. Perhaps one of the most important legacies of Donaldson should be the recognition that, regardless of whether the common law copyright existed then or exists today, and regardless of a statute’s effect on that common law right, there is yet another source of law that trumps both common law and statute: a fundamental human right to freedom of expression. Although their opinions have been given relatively scant attention in the court of history, Effingham and the other lords who spoke have given an important warning about the dangers posed by copyright to public communication of ideas. Donaldson’s Edinburgh Advertiser reported:
LORD EFFINGHAM then rose and said, though it might appear presumptuous in one of his cloth, (an officer) to give his opinion in a cause which had divided the learned judges, yet he thought, if a perpetual exclusive right was given to authors, it would also give them a right of suppressing: a bad minister might purchase copies of books or pamphlets, which arraigned his conduct, or were friendly to the liberties of the people, and suppress them, and thus a blow might be given to the constitution and liberty of the press; that where there was a free press, there would always be a free people, and he wished to see no encroachment made on it, or on the liberty of the subject, and was therefore for reversing the decree.In his eloquence and position, Effingham was not alone. Camden, too, expressed a sentiment not far afield, and Camden’s statement has received more attention from history than Effingham’s has. Camden said that science and learning are public property and “they ought to be as free and general as Air or Water.” Indeed, Camden said, the very purpose of “enter[ing] into Society at all” is to “enlighten one another’s Minds, and improve our Faculties, for the common Welfare of the Species.” Knowledge, he said, is of no use or enjoyment unless it is shared, and true geniuses seek understanding rather than money. He cited the example of Milton, who, when offered five pounds for Paradise Lost, “did not reject it, and commit his Poem to the Flames, nor did he accept the miserable Pittance as the Reward for his labor; he knew that the real price of his Work was Immortality, and that Posterity would pay it.” If the alteration of historical contours of copyright law is really what triggers First Amendment scrutiny, then courts in the future would do well to look carefully at copyright’s past. Although it has been accepted that the modern American concepts of fair use and idea-expression dichotomy account for free-expression interests within copyright law itself, the reality of copyright history is that it has always had a more complicated relationship with free expression. The very purpose of copyright law—to “encourage learning” in the words of the Statute of Anne, or to “promote progress” of art in the words of the U.S. Constitution—arose in the period immediately after Parliament allowed the Licensing Act to expire in 1694 and various parties clamored for a law regulating printing. As he argued against a return of licensing, the journalist (later turned novelist) Daniel Defoe articulated a societal benefit to freedom of speech:
To put a general stop to public Printing, would be a check to Learning, a Prohibition of Knowledge, and make Instruction Contraband: And as Printing has been own’d to be the most useful Invention ever found out, in order to polish the Learned World, make men Polite, and increase the Knowledge of Letters, and thereby all useful Arts and Sciences; so the high Perfection of Human Knowledge must be at a stand, Improvements stop, and the Knowledge of Letters decay in the Kingdom, if a general Interruption should be put to the Press.As an aside, Defoe argued later in the same essay that perhaps the government could require authors to attach their names to their works and thus cut down on undesirable attacks on others. This would have the incidental benefit, he said, of decreasing “press-piracy,” or what we would today call copyright infringement. In their efforts to get a bill regulating printing adopted and thus restore their monopoly powers, the booksellers or stationers who had benefited from licensing adopted Defoe’s public education rationale for free speech and attached it to copyright law. An understanding of the “traditional contours” of copyright law, then, must take into account the intertwined histories of free expression and copyright. Such an understanding will require much careful study and will not be aided by simplistic or mistaken rhetoric based on a cursory historical review. Although the scope of this article has not permitted such a review of hundreds of years of copyright history, it has demonstrated that, even if the plaintiffs-appellants in Golan v. Holder are correct that American common law protected works under copyright in 1790, this protection did not emanate from English common law, at least in relation to Donaldson’s holding that there was no perpetual common law right that continued after statutory rights were extinguished. Perhaps more importantly, however, this article demonstrates that the Government’s argument in Golan that Congress can remove works from the public domain without First Amendment scrutiny is not in line with the outcome of the eighteenth-century Battle of the Booksellers that culminated with Donaldson. That episode suggests that legislative authority is not unlimited in the arena of copyright law and legislative enactments of copyright are to be read narrowly while the public interest, including in free communication, should be given weight when considering copyright questions. Appendix—Summary of Data from Westlaw “Journals and Law Reviews” Database on Donaldson v. Beckett
Caught in the Middle: Reducing the Uncertainty Created by the FDA and the Patent System for Genetic Diagnostic Test Makers
- Require no regulation, but create no change in the status of patentable subject matter. Effectively, this option maintains the status quo and responds to critics’ suggestions that the FDA is expanding its reach too far by regulating genetic diagnostic tests.
- Pursue regulation, but create a per se patentable subject matter rule for diagnostic tests to balance the additional expense (notwithstanding additional barriers to patentability), creating a baseline similar to that for pharmaceutical drugs.
- Create a new regulatory regime that balances the additional expense of regulation through data exclusivity and limiting additional regulation to only the most necessary areas.
I. Current Regulatory Framework for Genetic Diagnostic Tests and the Dangers of Increased RegulationIn this section, I discuss the current regulatory framework for genetic diagnostic tests, beginning with a short background of how institutional relationships led to the FDA’s current framework. Subsequently, I address the main problems with the regulatory framework that increased regulation would exacerbate and the negative impact that expansion could have on the genetic diagnostic test industry, namely, (1) the delay in time-to-market for the tests; (2) the uncertainty as to the classification of a particular test, and (3) the absence of any exclusivity backstop to prevent copying by competitors after approval.  Congress creates rules that govern agency action, the agency adopts procedures that adhere to those Congressional directives, and these processes are kept in check through judicial review. However, unlike other agencies that adhere to the traditional “transmission belt” theory, the FDA is a particularly powerful agency that takes a greater role in governance than mere transmission. The increasingly difficult subject matter that the FDA regulates creates a situation where Congress and the courts simply do not have the necessary expertise to create specific policies governing drugs and devices. Indeed, well-known practitioner Thomas Austern has criticized the FDA’s substantial power, alleging that it was “delegation running riot”. Historically, Congress and the courts have stepped in to curtail FDA power in one of two situations: (1) when a high-risk product creates public outcry and (2) when FDA regulation injures industry substantially. The FDA originated out of concern about high-risk products—Congress created the agency in response to Upton Sinclair’s 1906 book The Jungle and its exposé of the meatpacking industry. Subsequent expansion continued in response to other high-risk disasters. The 1938 Act responded to medicines for children that had been mixed with antifreeze. The 1962 Kefauver-Harris Amendments responded to the narrowly averted Thalidomide disaster. Further, during the 1960s, all but one of the Congressional oversight hearings were conducted to criticize the FDA for failing to take adequate regulatory action against products that the committee concluded were safe or ineffective. Congress also traditionally steps in when FDA involvement threatens to substantially injure industry. This second situation may be a result of agency capture and Congressional interests in the industry. Established companies who get many products approved by the FDA have developed long-standing relationships with the agency, particularly given a “revolving door” between the agency and corresponding companies. Since these established companies are familiar with existing FDA procedures, they are unlikely to lobby Congress to change that framework. Even when FDA procedures are onerous, established companies are likewise better equipped to deal with them, often to the detriment of smaller entities. As those small companies are unlikely to have sway in Congress, the framework remains unchanged until problems become large enough to attract the attention of the general public or established companies. The high-risk disasters discussed supra are examples of FDA change in response to problems that affect the general public. More recently, changes at the FDA have come from established companies that helped enact legislation to make the FDA more efficient, most notably the Prescription Drug User Fee Act, or to reduce adverse effects on industry from increased regulation, as with the Hatch-Waxman Act, discussed infra. Because of the significant discretion given to the FDA by Congress and the courts, the agency is adept at responding to technological changes. Instead of relying on rulemaking or case-by-case adjudication like most agencies, the FDA promulgates new policies through guidelines, which often have a de facto binding effect because of the close relationship those companies have with the agency. If the company is able to follow the guidelines, it is in their best interest to do so because going against the FDA’s policies could put their entire line of products at risk. Of course, the agency would not retaliate by refusing to approve a particular product, but may delay the approval or requests for additional clinical trials, which increase expenses to the company with little corresponding benefit to the consumer. Finally, the FDA and its counterpart state agencies have fared extremely well in the courts. When faced with complex scientific and technical issues, judges have been reluctant to overrule decisions made by the FDA, and the Supreme Court has repeatedly upheld the power of the FDA to protect the public from “dangerous products.” Furthermore, because judges generally do not choose which cases they will adjudicate (although the Supreme Court does to a certain extent), the courts cannot provide a reliable mechanism for effecting policy, except in a reactive fashion. Despite these limitations, the courts have acted to influence policy in this area in two ways: (1) by curbing FDA procedural irregularities and (2) by marshalling public opinion of high-risk products through lawsuits. The main target of courts is the non-binding guidelines discussed supra, which have been struck down by courts when they become too much like binding regulations without any of the requisite procedural mechanisms. The result has been an FDA policy in which the guidelines are never actively enforced, but upheld through extra-legal mechanisms. As for the marshalling of public opinion of high-risk products through lawsuits, many tort suits and class-actions have created changes in the way that the FDA approaches regulation. Although most of these suits target the individual companies rather than the FDA, because companies seek to avoid similar situations in the future, large entities may actually seek increased regulation from the FDA to avoid tort liability. This backdrop has led to the current state of genetic diagnostic test regulation. Until recently, the FDA had not exercised its enforcement discretion to regulate most genetic diagnostic tests. Because the adverse effects from the unregulated market for genetic diagnostics are not likely to surface for many years due to their predictive nature, there is not likely to be a “Thalidomide moment” in Congress or the courts for such an industry. Furthermore, most industry players have benefited financially from the FDA’s neglect, and consumers are much less able than either large or small companies to lobby Congress for increased regulation.  CLIA applies to all clinical laboratories that operate or provide testing services in the United States and mandates that laboratories not accept materials from the human body for testing without adequate certification. In 1992, CMS issued regulations for implementing CLIA, creating “specialty areas” for laboratories that perform high-complexity tests, but did not include genetic diagnostic tests. CMS had not instituted specific requirements for molecular or biochemical genetic testing laboratories by 2010. Likewise, CLIA can only regulate a laboratory’s analytical validity (whether a test properly measures the characteristic it was intended to measure), leaving clinical validity considerations (whether or not the test actually diagnoses the condition) up to the laboratory director. The FDA currently regulates clinical validity for experimental diagnostics to some extent. For example, suppose that a laboratory hypothesizes that a given gene sequence is associated with a particular disease. If the laboratory wished to offer this test to volunteers to bolster their confidence in this correlation, the FDA would require that the Internal Review Board of the institution oversee all such studies and inform the volunteers of the test’s experimental status. More generally, the FDA regulates devices using biological materials outside the body (in vitro) differently depending on whether they are commercially available kits or lab-developed tests. The FDA regulates kits as medical devices, which are organized into three classes. In contrast, lab-developed tests presently fall within the discretion given to the laboratory director under CLIA, leading to two separate options for genetic diagnostic tests: one for commercially available kits and another for lab-developed tests administered by CLIA-regulated labs. Many have complained that this creates an uneven playing field between these two categories. In 2007, the FDA changed course and decided to regulate lab-developed tests more stringently to address the uneven field. There were a number of reasons for this change. Early lab-developed tests were limited to small entities, with close relationships between the physician or technician performing the test and the patient. More recently, it became clear that the laboratory developing the test was actually a large corporation interacting with the patient only through the postal system. The complexity of the tests had also increased in recent years. Finally, the Secretary’s Advisory Committee on Genetic Testing had recommended that the FDA become more involved in pre-market review of these tests. This 2007 guidance stated that the FDA would require pre-market review for a limited subset of lab-developed tests known as in vitro diagnostic multivariate index assays (hereinafter, “algorithm assays”). These algorithm assays analyze laboratory data using an algorithm to generate a result for diagnosing, treating, or preventing disease. The agency was particularly concerned about this subset of lab-developed tests because they use proprietary methods to calculate patient-specific results that healthcare providers are unable to independently derive or confirm. In 2010, the FDA decided not to issue final guidance on algorithm assays, and instead chose to pursue comprehensive regulation of all laboratory-developed tests. In doing so, it recognized that the absence of oversight may make it easier for laboratories to develop and offer tests quickly, but believed that comprehensive regulation would create a level playing field.
C. The Three Classes of Devices for FDA ApprovalThis section examines the framework currently used for those genetic diagnostic tests (kits) that are regulated by the FDA. Because the FDA will likely proceed under a similar framework for future genetic diagnostics that fall within its enforcement discretion, I treat this classification system as a baseline for future suggestions for regulation in Part IV. Under the Medical Device Amendments of 1976, once the FDA classifies a test as a medical device, it places the product into one of three classes of regulation. Class I, or low-risk, products require no approval before sale, although the FDA monitors adverse effect reports after sale. Class I devices includes items like bandages where there are likely to be few ill effects even from device misuse. Class II, or moderate-risk, products require clearance of a pre-market notification submission known as a 510(k). The 510(k) submission requires a comparison of the submitted device with a legally marketed device and a showing that they are substantially equivalent. There are also de novo classifications for Class II items that have no identifiable predicate device. Class II devices may require additional clinical testing, but generally do not. Clinical testing in this context does not necessarily mean randomized, double-blind studies; submissions can rely on published studies or earlier data, although the FDA prefers studies where samples are prospectively collected. The 510(k) requirements were envisioned as an efficient regulatory option: allowing companies to build upon established clinical and scientific evidence of safety. As a result, the 510(k) option is more widely used than the Pre-Market Approval (PMA) option, discussed infra. Finally, Class III, or high-risk, products require submission of an application for Pre-Market Approval. PMA is the FDA process of scientific and regulatory review to evaluate safety and effectiveness. These devices are those that support or sustain human life, are of substantial importance in preventing impairment of human health, or present an unreasonable risk of illness or injury, including patient misuse. Examples include diagnostics for Hepatitis B and C and for HPV. Regardless of whether the company follows the Class II or Class III pathway, the FDA may request that the company provide clinical data to support clearance or approval. After the introduction of any product (of any class), adverse events must be reported to the FDA, even if such malfunctions do not cause any injury. The FDA estimates that 50 percent of regulated devices are Class I, 42 percent are Class II, and only eight percent are Class III. In the 2007 draft guidance, the FDA stated that most algorithm assays would be Class II or Class III devices, depending partly on the seriousness of the disease measured. Although the requirements after classification are very clear, the FDA has been unclear about why certain devices fall into certain classes. Furthermore, given the deference accorded the FDA by the courts, it is difficult to change the classification of a device subsequent to FDA classification. The overlap between Class II and Class III indicates a need for increased clarity in device classification, including ex ante categories for genetic diagnostic tests. This is particularly necessary given the letters that the FDA has sent out to diagnostic test companies requesting that they submit information for approval and regulation pursuant to its enforcement discretion, discussed infra.
D. Choice of Classification Delays Market Entry and Can Be UncertainThe FDA’s decision to place a product into one of these three classes can make a substantial difference in both the expense associated with clinical trials and the amount of time that it takes before the product can enter the market. At the same time, empirical data shows that the European Union (EU) regulates many of the same products, but that these products are introduced many months or even years earlier in Europe than in the United States. Because the FDA is planning to expand this regulation further, this indicates that previously unregulated products may be particularly affected by this disparity in time-to-market. The data suggests two solutions, (1) that the FDA create more stringent time limits on the approval of medical devices and (2) that the FDA provide greater transparency as to why they have chosen to classify a particular device into a given class, thereby enabling companies to better predict their expenses. A recent survey of 204 public or venture-backed medical technology companies compared the efficiency of the FDA’s regulation to equivalent EU practices and concluded that despite having similar safety outcomes, the FDA’s current practices are less efficient than the agency’s European counterparts. Although some delays were caused by personnel changes during the approval process, the average review time for a Class II product from first filing to clearance was ten months, suggesting that the FDA requirements are particularly onerous. For those companies who communicated with the FDA prior to making a 510(k) submission, the total time from that first communication was nearly three years compared to seven months in Europe. The average total cost for participants to bring a low-to-moderate risk 510(k) product from concept to clearance was approximately $31 million, with $24 million spent on FDA dependent activities. For Class III products, the average review time increased to 54 months, almost four years longer than European agency review for the same products. At least some of this delay stems from increased risk aversion to new products at the FDA. For higher-risk products that require pre-market approval, the average total cost from concept to approval was approximately $94 million, with $75 million spent in stages linked to the FDA. Because of the additional time spent in the regulation process, as well as the additional funds used, earlier expansions in FDA regulatory authority have been financially detrimental to the regulated industry. This extensive time frame is exacerbated by the uncertainty as to how the FDA will classify the newly regulated diagnostic tests. In 2010, the FDA sent several letters to genetic testing companies, including a letter to the genomic chip manufacturer Illumina. The letter to Illumina stated that their chip (used to sequence genes) was classified as a device under the FDCA and had not been submitted for pre-market clearance or approval. The letter further suggested that the agency could consider the chip a Class III device. Similar letters were sent to deCODE Genetics, Navigenics and 23andMe, which use the Illumina chip for use in testing kits. These letters stated that these products did not fall under the category of lab-developed tests because they were not “developed by and used in a single laboratory,” and because the collection kits were distributed through a website or by a third party distributor. All three letters intimated that such kits were considered Class III devices and required Pre-Market Approval submissions. A fifth letter was sent to Knome, which provides whole-genome sequencing and software to interpret this data. Here, the FDA specifically stressed that as a software program that analyzes genetic test results generated by an external laboratory, the product is a diagnostic device that requires pre-market approval under the FDCA, and because it was not within a single laboratory, it was not considered a laboratory-developed test (which were then unregulated). Fourteen additional letters were sent to other companies suggesting that their devices may require pre-market approval under Section 201(h) of the FDCA, although they did not suggest that they were Class II or Class III devices. These letters suggest that these genetic diagnostic test manufacturers may need to go through the onerous Class III approval process, likely delaying the time-to-market for these devices even more.
E. Historical Expansion of Regulation Has Been Alleviated by Commensurate Expansion in Patent and FDA-Mediated Data ExclusivityThis section shows that historical instances of regulatory expansion of previously unregulated products did have negative impact on those industries, and suggests that similar concerns about increased regulation of genetic diagnostic tests today are well-founded. Congress responded to negative results and complaints from industry by providing for greater patent exclusivity and for a new data-exclusivity backstop, which helped to reverse the trend in fewer drug approvals following increased drug testing regulation. These historical results suggest that there is no need to wait for a negative impact on diagnostic tests to aid the industry, particularly after many of these companies may choose to relocate to Europe, and provides support for the exclusivity solutions explored infra in Part III. As mentioned, the expansion of pre-market scrutiny by the FDA is not new. In 1962, the revolutionary Kefauver-Harris Amendments significantly expanded the FDA’s ability to regulate drugs before they went to market. As a result, thirteen out of fourteen new products regulated by the FDA took longer to get to market in the United States than in other countries. Without the protection of patents, it is unclear whether manufacturers would have invested the significant funds required for product approval.Indeed, the delay in reaching market was already hurting the pioneer drug manufacturers by eating away at their patent term. In response, because generic manufacturers were subject to similarly stringent requirements, the pioneer drug manufacturers obtained court decisions preventing generic manufacturers from beginning clinical trials while a brand drug was still under patent. The solution to these tactics was the Drug Price Competition and Patent Term Restoration Act of 1984 (hereinafter “Hatch-Waxman,” the names of its two sponsors), which tied the extension of patent terms to the period spent in the FDA approval stage. The unusual thing about Hatch-Waxman is that in addition to providing a handy mechanism for resolving conflicts between pioneer drug manufacturers and generic drug manufacturers, it also provides for three-year data exclusivity for performing further clinical studies. This means that for a generic company to gain FDA approval even after the expiry of the pioneer patent term, they must perform their own clinical trials rather than rely on the data from clinical trials performed by the pioneer drug manufacturer, or wait five years until this period of exclusivity expires. The Hatch-Waxman exclusivity period does not apply to medical devices, but the subsequent Safe Medical Devices Act of 1990 created a six-year data exclusivity provision for Class III devices subject to PMA requirements. As discussed earlier, there are very few Class III devices approved each year, but some Class II devices still require clinical trials. A baseline level of exclusivity for any diagnostic test that needs clinical trials for approval or reclassification by the FDA would help to alleviate the uncertainty created by the current patentability status discussed in Part III. To ensure that the expansion of regulation does not hurt companies, it is insufficient to simply apply the current medical device framework used for kits to all genetic diagnostic tests (including LDTs). Instead, we should pursue a framework that would reduce the significant times required in device approval, as well as clarify device classifications to ensure that diagnostic companies are prepared for the investment that the approval process would require. In addition, companies’ investments in clinical trials should be protected with either a patent or a data-exclusivity backstop.  However, this section discusses why additional regulation is necessary for these laboratory-developed genetic diagnostic tests and why this expansion is beneficial for consumers. Diagnostic tests detect the presence of a condition by measuring some quantity associated with the condition. Similarly, genetic diagnostic tests can predict an individual’s propensity for a condition based on their nucleotide sequence, as discussed infra. If such tests worked perfectly to predict disease and provided completely clear information to patients who use the tests, there would be no need for regulation. Unfortunately, this is not the case. First, I address common errors made in diagnostic genetic testing and the role that regulation may play in minimizing such errors. These common errors include: (1) errors caused by using molecular markers rather than sequencing the whole genome; (2) errors due to variations in gene expression between individuals; and (3) errors resulting from statistical studies relied upon in designing the test, which are compounded by the complexity of gene interactions. Oversight by a regulatory agency, such as the FDA, would reduce the occurrence of these errors and increase the utility of such tests for consumers. To understand these problems, this section discusses the principles that enable genetic diagnostic tests to function and explains where these principles break down, resulting in errors in the test results. All humans have strands of DNA comprising four fundamental nucleotides, Adenine (A), Thymine (T), Guanine (G) and Cytosine (C). The sequence of these nucleotides form genes, which determine which proteins the body produces, and thus determines how the body functions. Within every species, there are variants of genes known as alleles. To use a simplified example, not all humans have the same eye color. However, we all have genes that affect eye color, such that some of us have a blue-eye color allele whereas others may have alleles for brown or green eyes. Certain alleles are more likely to lead to diseased conditions than others.  For example, a mutant allele of a gene known to repair damaged DNA may be less effective at repairing such damages than the normal allele. Because the DNA cannot be repaired, individuals with the mutant allele may have diseases caused by the damaged DNA, including colon cancer. Therefore, a genetic diagnostic test may be able to predict the development of cancer by detecting the presence of the mutant allele. One method for detecting the presence of a mutant allele is by sequencing all of the nucleotides. A possible issue with sequencing is that a genetic diagnostic test may return an incorrect sequence, reading “ATAC” when a subject actually has “ATGC”, demonstrating a failure of analytical validity. A recent study compared the data of five individuals sequenced by two different genetic testing companies for thirteen diseases. The results of the tests were 99.7% the same between the two companies, suggesting that the analytical validity for unregulated tests (the status quo) is quite high. Even those companies that have been criticized for their inaccuracy do not have analytical validity thresholds below 99%. Therefore, the issues in this section focus on issues aside from analytical validity.  To save costs, companies use molecular markers that are statistically associated with the presence of certain mutant alleles. The use of molecular markers means that rather than sequencing A, T, G, and C, a company may only sequence the starting “A” and determine the remaining nucleotides based on their statistical analyses. A simplified example can help to illustrate how molecular markers are able to replicate full sequencing. Suppose that, in addition to having brown eyes and blonde hair, your mother also had an unusual allele that protected against the bubonic plague. If your mother’s ancestors lived in areas where the plague was prevalent, those individuals who did not have this allele would be more likely to die. Soon, the population would have a high prevalence of the plague protection allele and the alleles surrounding that allele on the chromosome. If those alleles were for blonde hair and brown eyes, this population would likely share those characteristics as well. However, if the correlation between blonde hair and the plague allele were perfect, there would be no error from using the blonde hair as a marker for the actual allele. As discussed infra, such a perfect correlation, however, is seldom the case. Sometimes the statistical assumptions used may be incorrect, causing errors in the genetic results reported to consumers. Events such as “cross-over” between genes may cause such errors. Humans have two copies of each gene, one from each parent. For example, while your mother might have blonde hair and brown eyes, your father might have black hair and blue eyes. Let us also assume that the genes corresponding to hair and eye color are next to each other on the same chromosome. If you inherited one copy of each gene from each parent, you would have one copy with blue eyes and black hair and the other copy with brown eyes and blonde hair. Assuming that your father’s genes were dominant, no child would ever have blue eyes with blonde hair or brown eyes with black hair. Therefore, to create beneficial variation in the population, chromosomes “cross-over” one another in sex cells, yielding new chromosome combinations like blue eyes with blonde hair and brown eyes with black hair. Such natural variation makes the job of genetic diagnostic test companies more difficult. Returning to your mother’s hypothetical plague protection allele associated with her blonde hair and brown eyes, a genetic test company may always assume that any blonde-haired, brown-eyed individual possesses the unusual allele. However, if an individual has either had a cross-over event between the plague allele and their hair color allele, the genetic diagnostic test will yield incorrect results. An error like this can lead to a false negative or a false positive result. Such errors are more likely when the company is using a “weak-effect” marker—one where the correlation between the marker and the full nucleotide sequence is statistically tenuous. Additional regulation can alleviate this concern by either requiring full sequencing for certain regions of the genome that incur many cross-over events or by requiring that companies rely on multiple markers (or a single “strong-effect” marker) rather than a single “weak-effect” marker.  Regulating clinical validity is more difficult because of the interpretation involved, and because of genetic concepts known as “penetrance” and “expressivity.” This is largely because consumers can find it difficult to understand that a heightened risk of breast cancer from a single gene can mean anything from never developing breast cancer to dying from the disease in the next ten years. Penetrance is the percentage of people with a particular genotype (nucleotide sequence) who show the diseased phenotype (physical manifestation of the allele).Expressivity, on the other hand, is the intensity of the phenotype expressed by someone who possesses a particular genotype. These variations among individuals present the most difficult challenges for genetic test regulation. Genetic diagnostic tests would be easier for consumers to understand if explained by a physician intermediary, who could show that the same mutation could lead to widely varying results in onset of the disease, as discussed in the earlier example. However, unlike similar non-genetic diagnostic tests, genetic diagnostics are sold and marketed directly to consumers, presenting a challenge for regulators. This problem is exacerbated because an interpretation error can lead to dire results. Suppose a company sequenced a subject’s genes for repairing damaged DNA and found that the woman carried the disease allele for BRCA1, a gene associated with the onset of breast cancer. The woman may not develop breast cancer in her lifetime—a penetrance problem—or may develop a form that does not rapidly metastasize—an expressivity problem. Indeed, very few diseases have 100% penetrance, where all of the individuals with a particular genotype have the corresponding disease. As a result, interpretation of the test results remains difficult even with the knowledge of the full sequence. Expressivity is a lesser concern for clinical validity because such variation arises once the individual has the disease. However, for serious diseases, individuals may take action based on these disease risk profiles when in reality their disease expression may be very low based on other risk factors, such as age and lifestyle. As a result, much of the regulation in this area will depend on what information the company provides to consumers. If the genetic diagnostic testing company only provides the sequence with no additional information, very little regulation may be necessary. On the other hand, if the company provides extensive information, such as “breast cancer will appear at age thirty-four,” such claims require more regulation because consumers are more likely to rely on such information for treatment purposes. The molecular markers problem compounded with expressivity and penetrance strengthens the case for regulation; even with a perfect correlation between “A” and “ATGC”, it is not clear that the disease associated with “ATGC” may present in the individual. It is even less likely that the disease associated with “ATGC” will present in an individual who actually has “AAGT”. Because of the research used to create these correlations, an individual with characteristics different from the majority population, particularly race, has a much higher likelihood of having test results that are not actually correlative. These factors support the use of strong-effect markers, which move diagnostic companies closer to “perfect correlation”. As it stands, when companies sequence strong-effect markers, the agreement between multiple testing companies is higher than when companies use weak-effect markers (that have more moderate effects). To use the earlier example, suppose your mother’s ancestors did not live in an environment where the plague was prevalent. Rather than facing evolutionary pressures when the plague allele was not present, individuals without the allele would survive at the same rate as the rest of the population. As a result, the population would show a very different distribution of alleles from the original example and the molecular marker of blonde hair would be less helpful. Regulation can mitigate such problems by requiring that consumers receive additional information about the studies that produced the genetic testing data and by creating greater incentives to include a wider population in initial genome-wide-association studies.  For example, scientists believe that many genes affect the development of schizophrenia. By putting together multiple genotype markers from different locations on the genome, a company could predict an individual’s likelihood of developing schizophrenia. However, if there were errors in developing this algorithm, this clinical prediction would be wrong. Indeed, the chance of error is very high because the interactions between genes can be unpredictable and small-effect genes can be difficult to find. For instance, one study found that a predictive test using the cumulative effects of thousands of small-effect genes was more accurate at predicting the existence of schizophrenia than a test using only major-effect genes. One way that this sort of error can occur is when a lab relies on a meta-analysis, a type of study that puts together data from multiple studies to deduce the interactions between different genes. The problem with meta-analyses is that the actual interaction between two particular genes may not have been tested directly, which could lead to incorrect conclusions. One possible cause for this error is when the two genes are on the same pathway that leads to the disease. In most cases, if gene Z affects a function earlier in a molecular pathway than gene Y, it does not matter if the allele at gene Y carries a mutation, since the pathway would have already been altered due to a mutated allele at gene Z. For a simple example, consider the genes that control certain properties of human hair: suppose that gene Z governs hair growth and gene Y governs hair texture. If the individual carries an allele at gene Z that prevents hair growth entirely, it does not matter if the allele at gene Y is for curly or straight hair, the individual will be unaffected. A meta-analysis of genes like Z and Y might infer increased effects from mutations at both genes when the actual effects remain the same when both genes are present. Even with perfect testing results, there are dangers in how companies present their data to patients. Is it sufficient to say that the patient has an increased likelihood of developing disease sometime in their life? This may depend on the seriousness of the disease tested, and even the character of the testing service. The common errors with (1) molecular marker technology, (2) disease phenotype variation from expressivity and penetrance, and (3) the interaction between different genes show that regulation of genetic diagnostic tests is necessary. Therefore, continuing the status quo of minimal regulation is not a valid option, despite the possible adverse effects on industry.  The patent system protects the patent-holder from others who copy their invention by allowing the patent-holder to sue for damages or an injunction if another company’s product infringes their patent. Aside from patenting the genetic identity associated with the disease, companies may also be interested in patenting the algorithm that predicts the propensity for metastasis of tumors or the interaction of multiple genes. While the Hatch-Waxman framework helped counter he delay to market for drugs through patent-term extension, this solution is insufficient for genetic diagnostic tests, given the current uncertainty as to whether such tests fall within the scope of patentable subject matter. Therefore, to provide the same protection to diagnostic test companies as we do drug companies, we must create an equally effective exclusivity backstop. This may be accomplished by bringing all genetic diagnostic tests within the scope of patentable subject matter through the creation of a per se rule (making all genetic diagnostic tests “patent-eligible”), or through FDA-mediated data exclusivity, a feature also found within Hatch-Waxman. This section explores two issues with respect to the creation of a per se rule: (1) does it fit within the current patentable subject matter jurisprudence and (2) is patentability really necessary for the financial success of genetic diagnostic tests, or will the lesser protection of data exclusivity be sufficient? As this section will show, data exclusivity is a superior option because of the possibility of patent over-enforcement stifling innovation in the diagnostic test arena.  The Court determined that this bacterium was not an unpatentable natural phenomenon, but rather a non-naturally occurring manufacture or composition of matter, and therefore held it was patentable. A related case from many years earlier is Parke-Davis & Co. v. H.K. Mulford Co., where Judge Learned Hand reasoned in dicta that purified adrenaline was patentable subject matter because it was materially different from the naturally-occurring adrenaline found in the human body.Parke-Davis provides some of the support for the modern patenting of genes, reasoning that such genes are patentable because they are the purified forms—the inventor has separated the gene from the rest of the chromosome and from the other cellular matter in the naturally occurring state. Four recent cases have brought into question the patentability of genetic diagnostic tests. This section discusses each case and determines that not only is the framework for patentable subject matter unpredictable and fact-specific for diagnostic tests, but also that a per se patentability rule would be unfeasible to implement without disrupting the patentability of unrelated industries. The first such case is Laboratory Corporation v. Metabolite Laboratories, where the patent at issue claimed a process that detected deficiency of two vitamins, folate and cobalamin, by measuring the level of homocysteine in the body fluid. If the homocysteine levels fell within a particular range, the patent suggested that there was a vitamin deficiency. In his dissent from the Court’s unusual decision to dismiss the case for certiorari improvidently granted, Justice Breyer wrote that the patent office should not have permitted this patent as it “claim[ed] a monopoly over a basic scientific relationship,” yielding an interpretation that would cause doctors’ medical diagnoses to infringe the patent. Although Justice Breyer’s view was not ultimately adopted by the Court, his remark suggests that the area of patentable subject matter was far from settled and created an opening for subsequent cases. The second major case relevant to our analysis of patentable subject matter is In re Bilski (later Bilski v. Kappos), which did not deal with diagnostic tests, but rather software patents. The inventor, Bilski, claimed an algorithm for hedging. The Federal Circuit disposed of Bilski’s patent by determining that an algorithm fell within the scope of patentable subject matter so long as it was implemented with a non-trivial machine or involved the transformation of matter, reaffirming the so-called “machine-or-transformation test”. As Bilski’s method did not involve any such transformation of matter nor was it implemented in a non-trivial machine, the patent-in-suit was therefore held to be unpatentable. Immediately, it was unclear how Bilski would apply to diagnostic tests and methods. The Federal Circuit applied the “machine-or-transformation test” in a third major case, Prometheus Laboratories v. Mayo Collaborative Services. Prometheus is the exclusive licensee of two patents that calibrate the dosage of thiopurine drugs. Although doctors had used such drugs to treat autoimmune diseases for many years, their efficacy was limited by non-responsiveness and drug toxicity in some patients. To address this complication, the patents claimed the following “method of treatment”: (1) administer a particular dosage of the drug; (2) determine the levels of the drug metabolites found in the body fluid; (3) depending on the levels of those metabolites, either increase or decrease the dosage of the drug subsequently administered. In the original Federal Circuit decision in 2009, Judge Lourie applied the “machine-or-transformation test” and found the requisite transformation in the method of treatment. This overruled the District Court judgment that the patent was invalid because the administration was a trivial “data-gathering step” (rather than fundamental to the invention) and the claims relied on a naturally-occurring correlation. Subsequently, when In re Bilski was appealed to the Supreme Court in Bilski v. Kappos, the Court found the “machine-or-transformation” test was too restrictive, and held that although the test could provide “a useful and important clue” as to the patentability of an invention, it was not the sole test for patentability. In dicta, Justice Kennedy noted that the formalistic “machine-or-transformation test” may have the unfortunate side-effect of rendering “advanced diagnostic medical techniques” unpatentable. Indeed, he was not alone in this fear: when a lower court invalidated Prometheus’ patent based on the Federal Circuit’s machine-or-transformation test, one response alleged that this decision would “threaten to invalidate the entire field of medical treatment and diagnostic patents on which the innovative and lifesaving biotech industry is built.” When the Federal Circuit revisited Prometheus Labs after Bilski v. Kappos, they upheld the court’s initial finding of validity. The court recognized that Congress envisioned a permissive approach to patent eligibility to ensure that “ingenuity should receive a liberal encouragement.” The Federal Circuit found that the decision turned on whether the claims covered a natural phenomenon, whose patenting would entirely preempt the use of that correlation, or whether it was only a particular application of that phenomenon. The court held that it was the latter, and therefore within the scope of patentable subject matter. Whether the Supreme Court upholds the Federal Circuit’s decision is another question. The final major case I address is Association for Molecular Pathology v. United States Patent and Trademark Office, or “the Myriad Case.” The patents enforced by Myriad Genetics claimed the particular nucleotide sequence associated with genes for breast cancer, in effect claiming isolated forms of the genes in the manner prefigured by Parke-Davis. These patents enabled Myriad to have a monopoly over nearly all diagnostic tests for breast cancer caused by the two major breast cancer genes, BRCA1 and BRCA2, causing outrage in the scientific community, as well as amongst patients seeking testing for susceptibility to breast cancer. Because this case deals explicitly with genetic diagnostic tests, it best illustrates the state of affairs that arises in the absence of regulation. Myriad offers a laboratory-developed test, and although the lab is accredited under the CLIA discussed supra, the FDA has never approved the actual test offered by Myriad. Therefore, there is a greater chance that the test conducted by Myriad Genetics leads to incorrect results, and without a legally available second opinion, a patient is left without recourse. In Judge Sweet’s opinion in the Myriad Case, he determined that genes were outside the scope of patentable subject matter and struck down the nucleotide sequence claims (and many other claims in the two patents). The argument was that purified genes, despite whatever Judge Learned Hand may have said in Parke-Davis, are not “markedly different” from naturally-occurring genes, and thus the patent covered a product of nature rendering it invalid. After this decision was appealed to the Federal Circuit, the United States Department of Justice (the “DOJ”) filed an amicus brief that effectively straddled the positions of the two parties, the DOJ supported the decision to disallow purified gene patents but felt that complementary DNA patents should remain valid. The distinction that the DOJ made is that since complementary DNA does not contain introns, it is sufficiently different from naturally-occurring genomic DNA. In contrast, isolated DNA is no different from cotton fibers isolated from the cotton plant; it may be necessary to isolate a substance to make use of it, but by itself does not yield an invention.. The DOJ distinguished the purified adrenaline in Parke-Davis from the purified gene in Myriad by raising a crucial point: with genes it is the similarity to the naturally-occurring substance, rather than the differences from purification, that yield the benefits of the patent for diagnostic and medical purposes. Subsequently, the Federal Circuit reversed Judge Sweet’s District Court decision in part, holding that Myriad’s composition claims to “isolated” DNA molecules were patent-eligible, but finding that those claims comparing DNA sequences were patent-ineligible, as they only involved mental steps. These inconsistent positions have created a great deal of uncertainty about which products would fall within the scope of patentable subject matter, which makes it difficult for companies to make ex ante investments in this technology. Indeed, the positions adopted by Judge Sweet in the Myriad Case and in the DOJ amicus brief might be seen as arbitrary. Both interpret the words of the Constitution, “to promote the progress of science and the useful arts” to exclude a type of invention that they do not feel would promote that progress without any clear scientific demarcation. This analysis shows that there is no clear answer regarding whether genes should or should not be patentable, especially given that the patentability of genes and diagnostic tests is not clearly prohibited by the language of the patent statute. If one conceptualizes the relationship between a segment of DNA and a disease as correlations, then they are no different from the correlations upheld by the Federal Circuit in Prometheus. If they are conceptualized as products of nature, the boundary shifts depending on how natural something must be to fall within that unpatentable class. Therefore, even where courts declare otherwise, the patentable subject matter question must be driven by policy: would it be beneficial for the progress of innovation to allow the patentability of these technologies? Given the flux of the law on this matter, it would be difficult to create a per se rule declaring that all genetic diagnostic tests were patentable subject matter. Not only would Congress or the courts need to deal with the many scientists and academics who oppose such a position, the rule itself would throw into question the entire jurisprudence dealing with patentable subject matter, with effects on other technologies, as discussed by Justice Kennedy in Bilski. Therefore, it would be unwise for the genetic diagnostic test industry to rely on predicting the direction of the Supreme Court in deciding whether their particular test would fall within the scope of patentable subject matter. Most importantly, even if Congress supported such a rule, it is not clear that blanket patent-eligibility would “promote the Progress of Science and the useful Arts,” as the Intellectual Property Clause of the Constitution requires, as shown by the innovation-stifling actions taken by some patentholders in this arena, as I discuss next.  Some have argued that patents are not necessary to incentivize the development of genetic diagnostic tests. Gene patents’ claims cover nearly twenty percent of the human genome, and those interested in doing research on those claimed genes must overcome the hurdle of whatever costs the patent-holder has placed on her patent. University researchers have also asserted that “[the prospect of] patents do not affect research in this area” as most research is done in a university setting, funded by government grants. At the same time, private companies conduct a large amount of research building on university research in developing diagnostic tests, which definitely does depend on patents. A recent study found that at least one patent in either Europe or the United States covered 19 of the 22 most prevalent hereditary diseases, and that many were covered by several patents. In both the United States and Europe, universities are the top patent-holders, and most genetic diagnostic patents originate in the United States,which the study authors speculate stems from the liberal patent policy in this country. In Heller and Eisenberg’s seminal article, the anti-commons is characterized as many cross-cutting patents that require new entrants into the field to license from each of these actors. However, if patents can be circumvented or “designed-around,” no such licenses are necessary. Therefore, the current state of genetic diagnostic patents is not necessarily an anti-commons as imagined by Heller and Eisenberg: as the Huys study recognizes, although 25% of patents claim particular genes, only 3% of these patents cannot be circumvented. However, 38% of these gene patents claimed diagnostic methods, which are generally more difficult to circumvent. The Huys study made no substantive conclusions about the existence of any patent thicket, but noted that the uncertainty associated with the patentability of such tests created more difficulties for inventors in the development of technologies associated with gene patents. More recently, a series of extensive studies, led by Professor Cook-Deegan, focused on ten hereditary diseases and the effects of patents on their treatment and research. Here, I focus firstly on breast cancer and associated cancers, and then on Alzheimer’s Disease tests, given their high rates of occurrence and significant impact on the population. Breast cancer is a particularly lucrative disease for patent-holders like Myriad. For breast cancer, Myriad is the exclusive licensee and sole provider of tests based on BRCA1 and BRCA2 in the United States. For colorectal cancer, tests are available from multiple laboratories (including Myriad), but none have the same monopoly position as Myriad does in breast cancer testing. Therefore, the comparison between breast cancer and colorectal cancer testing is a useful metric of the effects of diagnostic patents. Even as a monopoly entity, Myriad often acts in the public interest. As of August 2008, Myriad has submitted over 18,000 entries for the 2,600 unique mutations to the Breast Cancer Information Core database (a publicly available central repository for information regarding mutations and polymorphisms in breast cancer susceptibility genes). However, Myriad has also limited certain types of research by using a very broad definition of what constitutes infringing—when the Genetic Diagnostics Laboratory began testing patients using National Cancer Institute protocols, while additionally providing breast cancer results to patients, Myriad claimed that this constituted patent infringement. Myriad does not enforce its patents against non-commercial research or against laboratories providing tests that it does not sell, although its ambiguous policy may still create a chilling effect. In contrast, the studies found no similar chilling effect with the two tests offered for colorectal cancer. In House Judiciary Committee hearings, some scientists argued that Myriad purposely did not adopt more cost-effective testing methods. However, the sequencing methods used by Myriad for breast cancer tests are actually cheaper than those used by Myriad and other providers for similar colorectal cancer tests; if the technology has advanced, Myriad’s competitors have not adopted it either. Still, even assuming that Myriad is using the most cost-effective testing methods, its tests remain prohibitively expensive compared to molecular marker tests, breast cancer gene sequencing as offered by Myriad costs $2400 per patient on average, compared with $99 for the 23andMe test that includes preliminary results for various breast cancer risk factors, including breast tissue density. Similarly, Alzheimer’s Disease, which cost the U.S. healthcare system $61 billion in 2002, is a disease where patents can be very lucrative. The majority of those with the disease have late-onset Alzheimer’s, which has only one clearly established risk factor known as APOE. A small percentage of cases arise from early-onset Alzheimer’s, for which there are three dominant mutations found in one of three genes. In the United States, genetic testing for Alzheimer’s is provided almost exclusively by Athena, who has licenses to three major Alzheimer’s gene patents, and offers the test for $475. However, Graceful Earth, a direct-to-consumer testing company, produces a non-FDA approved test for Alzheimer’s for $280, using indirect markers rather than the strong-effect markers used by Athena. In a well-regulated environment, consumers could expect near certainty in their risk results provided by Athena or Myriad, and a reasonable certainty from their marker tests from Graceful Earth or 23andMe. However, such regulation is costly for companies. In the absence of any data exclusivity or patent protection, it is likely that Athena or Myriad would need to provide extensive clinical data to the FDA in order to market their products, while Graceful Earth and 23andMe would have used that data free of charge and benefited from Athena or Myriad’s initial investment. Such copying by other actors might make inventors like Athena or Myriad reluctant to take on the initial burden under additional FDA regulation. The crucial question becomes whether in the presence of additional regulation we need the complete protection offered by patents—20 years of exclusivity in exchange for the information disclosed to the public—or whether a lower-tier of exclusive protection such as clinical data exclusivity would suffice. The answer seems to be that a lower tier of protection would be sufficient, even beneficial. Patents are often enforced indiscriminately against copyists and innovators alike, stifling new growth in this field. A lower tier of exclusive protection would enable new genetic diagnostic tests to be developed in a short period, but allow new innovators to protect their investment in the technology and in producing clinical data for the FDA. Furthermore, the disclosure provided by the patent system in this field is minimal compared to the information found in scientific publications, suggesting that the bargain struck by the patent system may not be fulfilled in the area of genetic diagnostic tests. Furthermore, concerns about lower test quality from lack of competition could be allayed by stringent FDA regulation of these tests. Therefore, a per se patentable subject matter rule is not the solution for protecting the interests of consumers and genetic diagnostic test developers. Not only would it fit poorly within the current patentable subject matter framework, but it is also not the best promoter of innovation. At the same time, a baseline level of exclusivity for a shorter period is required to allay some of the uncertainty of diagnostic test developers, particularly given extensive regulation by the FDA. For these reasons, innovation policy would be better served by granting genetic diagnostic test developers data exclusivity rather than patent protection.  However, such drastic measures are unnecessary. Notably, I do not recommend that the FDA change current procedures for testing analytical validity (allowing the CMS to continue such regulation), nor should the FDA change significantly the current three-class system for medical devices before applying it to genetic diagnostic tests. Instead, I propose the following five simple changes to the regulatory system for genetic diagnostic tests at the FDA.
- Increase Requirements for Labeling and Genetic Counseling That Keep up with Developing Technology through Monthly Meetings
- Create Mandatory Maximum Times for Class II and Class III Approval Processes or Increase the Scope of Class II Devices to Decrease Overall Approval Times.
 35 U.S.C. § 271(b)–(c) (2006) (outlining the requirements for actionable induced infringement, including the requirement that the underlying direct infringement be successful).
Generally speaking, ideas are as free as the air and as speech and the senses . . . . An idea is usually not regarded as property, because all sentient beings may conceive and evolve ideas throughout the gamut of their powers of cerebration and because our concept of property implies something which may be owned and possessed to the exclusion of all other persons.Likewise, Justice Brandeis opined:
An essential element of individual property is the legal right to exclude others from enjoying it. If the property is private, the right of exclusion may be absolute; if the property is affected with a public interest, the right of exclusion is qualified. But the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. The general rule of law is, that the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas—become, after voluntary communication to others, free as the air to common use.Nevertheless, ideas can often have significant value and hence create disputes. Assume Able proposes an idea to Company X about how to save money. Company X rejects the idea but Able subsequently discovers that Company X is using the idea. Does Able have a claim for compensation? Assume Betty shares an idea with a television producer for a new reality show that involves a competition between fashion designers. The producer subsequently creates a reality show involving competing fashion designers, but the various details of the show are dissimilar to Betty’s proposed show. Does Betty have a claim against the producer? Despite the value of many ideas, a threshold issue is whether the law should attach a property label to mere ideas. The determination of whether this label should attach is significant because once something is designated property, a bundle of legally enforceable rights attach to it. The determination would be easy if it was based on a labor theory. However, U.S. law has typically relied on a utilitarian theory for designating property rights. This theory is based on a policy determination of whether and when the property label should be attached to something. Under federal intellectual property law, both statutory law and judicial decisions have attempted to draw a line between what is and what is not granted property status. In the area of trademark law property rights related to a novel and creative trademark only arise when a trademark is actually used in commerce to identify particular goods. Copyright law bestows property rights on the expression of an idea but not on the underlying idea itself. Likewise, patent law does not grant property status to mere ideas. Patentable inventions must be useful in the sense that they represent an application of an idea that solves a problem or accomplishes some functional objective. The determination of precisely where to draw the line between intellectual property that is within the domain of federal patent and copyright law, and intellectual property that is outside of that domain is not always easy to ascertain. Nevertheless, it is clear that mere ideas alone are outside the scope of federal intellectual property protection and therefore, at least under federal intellectual property law, mere ideas are not entitled to be labeled as property. State common law, in contrast to federal intellectual property law, has provided protection for ideas even though such ideas were outside the domain of patent and copyright protection. Typically, such results reflect notions of equity and fairness and are based on either contract law or unfair competition law. In an idea submission case, the Supreme Court of Alaska stated:
The law pertaining to the protection of ideas must reconcile the public’s interest in access to new ideas with the perceived injustice of permitting some to exploit commercially the ideas of others. . . . Creating a middle ground between no protection and the legal monopolies created by patent and copyright law, courts have protected ideas under a variety of contract and contract-like theories. These theories protect individuals who spend their time and energy developing ideas that may benefit others. It would be inequitable to prevent these individuals from obtaining legally enforceable compensation from those who voluntarily choose to benefit from the services of the “idea-person.”Some courts have recognized a cause of action for the use of ideas under a contract or a property theory only if the idea is both novel and concrete. Other courts have recognized a cause of action under contract theory without requiring the idea to be novel and concrete. Finally, a common law cause of action for idea misappropriation has been recognized as both a property action and a tort action.  is generally considered to be the source of the misappropriation action. The meaning of the case however has engendered confusion and disagreement to this day. On its most basic level the dispute involved two news services—International News Service and Associated Press—who competed in gathering and distributing news to newspapers. The trial court preliminarily enjoined International News Service from using Associated Press news obtained via bribery and via inducing breach of agreements between the Associated Press and its member newspapers. However, the trial court refused to preliminarily enjoin International News Service from using Associated Press news obtained from bulletins released to the public and from published newspapers containing Associated Press news items. The Court of Appeals upheld the lower court’s injunction but remanded with directions to the district court to issue an injunction barring International News Service from using Associated Press news until it ceased to have commercial value as news. The Supreme Court solely addressed the question of whether International News Service engaged in actionable conduct by taking Associated Press news from publicly available sources and using it as its own news. The Court noted that neither copyright nor conventional property law protected the news at issue. Nevertheless, the Court affirmed the preliminary injunction on the basis of International News Service’s conduct, which sounded in tort. Consistent with the Court’s view that news is not granted property status, the opinion labeled the news at issue as “quasi” property, which it defined as creating rights only between International News Service and Associated Press, as opposed to the public in general. Such a definition unequivocally shows that the news at issue in the case was not viewed as property by the Court. The use of the phrase “quasi property” was therefore used as a shorthand reference to indicate conventional property rights were not at issue in the case. The real issue in the case was International News Service’s marketplace conduct. Specifically, whether International News Service was competing fairly or unfairly with Associated Press. The finding of unfair competition appears to be based on two rationales. First, International News Service engaged in free riding: Associated Press spent substantial resources acquiring the news and International News Service appropriated and sold that news as its own without incurring the substantial costs to obtain it. Second, denying a cause of action would result in ruinous competition because it would become unprofitable for anyone to engage in the newsgathering and distribution business. This concern has continued to exist. A recent case applying New York common law held that an element of a common law misappropriation action included a finding that “the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.”   For example, the long running dispute between the Winklevoss brothers and Mark Zuckerberg is largely based on the assertion that Mr. Zuckerberg stole the brothers’ idea for Facebook.com. Misappropriation is also typically referred to in judicial decisions and scholarly writing with regard to disputes over ideas or information. However, the prima facie elements of misappropriation are often not clearly delineated. Sometimes it is used to refer to the business tort of passing off. It may also be used as a synonym for unfair competition or to refer to breach of an implied contractual relationship involving disclosure of an idea or information. Finally, it may represent a request for equitable relief when no specific cause of action is applicable. In Sellers v. ABC, the Court noted that a common law action existed for “misappropriation of an idea or theory if (1) the idea is novel; (2) the idea is in a concrete form; and (3) the defendant makes use of the idea.” In Mercury Records Products v. Economic Consultants, the Court stated that “[t]he elements of the misappropriation cause of action . . . are: (1) time, labor, and money expended in the creation of the thing misappropriated; (2) competition; and (3) commercial damage to the plaintiff.” The Court in Jaggon v. Rebel Rock Entertainment, Inc. held that an action for misappropriation of an idea requires showing that (1) the idea was novel; (2) the idea was disclosed to the defendant in confidence; and (3) the defendant adopted and used the idea. Finally, in NBA v. Motorola, the Court held that a plaintiff could bring an action for misappropriation of time-sensitive information if: (1) the plaintiff incurs costs or expenses in generating or collecting the information; (2) the information has time-sensitive value; (3) defendant’s use of the information amounts to free riding on the plaintiff’s efforts to obtain the information; (4) the parties are in direct competition with regard to a particular product or service; and (5) the defendant’s free riding on plaintiff’s efforts would threaten the future production of the product or service by substantially reducing the incentive to engage in the business activity. Despite judicial recognition that common law misappropriation actions exist to protect ideas and information, such actions are generally unsuccessful. Additionally, although the comments in the Restatement (third) of Unfair Competition suggest that the ongoing viability of a misappropriation action is questionable in light of its general lack of success and preemption by federal copyright law, misappropriation actions continue to be brought by plaintiffs and have succeeded in a limited number of cases.  which involved a modern scenario analogous to the facts in International News Service. In Barclays Capital, the defendant, an online subscription news service operating under the name TheFlyonthewall.com, aggregated and distributed a variety of information to financial investors via the Internet. The information at issue was contained in equity research reports disseminated by plaintiffs, who are major financial institutions. The plaintiffs widely disseminated electronic copies of these reports. However, the plaintiffs engaged in substantial efforts to restrict access to the reports to select clients and licensees. Additionally, the plaintiffs relied on modern technological measures to curtail unauthorized dissemination of the reports. Despite such efforts, authorized parties released the reports, which were then redistributed by unauthorized third parties such as the defendant. Defendant news service provided both copies of portions of the plaintiffs’ equity research reports and information extracted from those research reports in the form of recommendations contained in the reports. The district court found that the defendant engaged in copyright infringement by copying portions of the reports and issued a permanent injunction against similar future conduct. However, the information extracted from the reports by the defendant in the form of recommendations was outside the domain of copyright protection, which typically does not protect ideas, facts or mere information. Nevertheless, the district court determined that the recommendations in the reports required the plaintiffs to expend substantial resources to produce them and that the recommendations were very time sensitive. The district court also determined that the plaintiffs and the defendant were in direct competition with regard to distribution of investment information. Finally, the district court found that the defendant’s free riding would likely threaten the plaintiffs’ ability to engage in their business activities. In light of this, the district court held that the defendant had engaged in misappropriation of information. The district court then enjoined the defendant from using the information for a limited time period in order to allow the plaintiffs to obtain an economic return on their investment in generating the information. Although on appeal the Second Circuit reversed the lower court’s conclusion that defendant was liable for misappropriation under state common law, the Court appeared reluctant to totally eliminate the misappropriation doctrine. Although it narrowed the scope of the doctrine by holding that it was preempted by federal copyright law under the facts in this case, the Court opined that the doctrine still existed and could apply under the appropriate facts. This result is consistent with other judicial decisions that have generally concluded that some form of a state misappropriation action survives preemption in light of the legislative history of the Copyright Act. One of the few cases where the misappropriation action was successfully utilized under state law is the Board of Trade v. Dow Jones. This case involved the Chicago Board of Trade, an exchange for trading commodity futures contracts. The Board sought government approval to trade stock index futures contracts based on the Dow Jones stock index, which is a widely available numerical average of thirty industrial stocks that represented the stock market as a whole. The Board did not plan to use the Dow Jones name on the contracts. Additionally, the information used to compute the index was public knowledge disseminated by Dow Jones. However, Dow Jones objected to having their index associated with a stock index futures contract because they believed it could damage their image or reputation. The Board brought a declaratory judgment action seeking permission to sell the contract based on the Dow Jones index. The trial court determined that Dow Jones had a property right in its index but that the Board could use the index for its futures contract provided that each contract included a disclaimer indicating that Dow Jones was neither associated with nor sponsored the contracts. The Illinois Supreme Court, reversing the trial court, held that the sale of stock index futures contracts based on the Dow Jones index would be a misappropriation of Dow Jones intangible assets under Illinois common law. The Court reached this conclusion despite the lack of competition between the parties, the public dissemination of virtually all information about the index by Dow Jones, and the fact that the Board would not use the Dow Jones name on any contracts. Additionally, in contrast to Barclays Capital, the Court did not discuss copyright preemption. Ultimately, the Court’s decision gave Dow Jones a property right in publicly disseminated information.  in light of the legislative history of the Copyright Act. Although such judicial findings of preemption have significantly minimized successful assertion of the misappropriation doctrine in some jurisdictions, the doctrine should be eliminated for more fundamental reasons. Putting aside the preemption issue,  a misappropriation action based on International News Service is inconsistent with the fundamental concepts underlying property law. Moreover, classic justifications for the doctrine, which include preventing free riding and ruinous competition, are simply inappropriate. Such justifications are contrary to the legal goal of promoting marketplace competition and an impediment to rapid integration of technology and other changes into society.  In light of this, the decision in International News Service is difficult to rationalize. The Court in that case made it clear that no one has property rights in news that is freely available to the public. The Court then proceeded to enjoin International News Service from using such publicly available news, which anyone should be free to use. The result is that International New Services’ otherwise legal conduct was treated as unlawful. This inconsistency may be the source of the decision being viewed, incorrectly, as finding a property right in the news and for creating a misappropriation doctrine based on unfairly using the property of a third party. It is generally accepted that property rights do not arise in factual information, abstract ideas or newsworthy events. This is a policy-based determination premised, at least in part, on avoiding interference with the free flow of information that is necessary for a democratic society to flourish. Hence, applying the misappropriation doctrine to a news aggregator, for example, which merely collects and utilizes publicly available information should not by itself be actionable. The non-property status of publicly available facts and information makes them free for anyone to use without identifying their source. Holding someone liable for using such information is an extreme example of bootstrapping; refusal to apply a legal property designation to something in the public domain means it is free for anyone to use. It should not be actionable conduct to misappropriate or use something that is free for anyone to use, and failure to provide attribution of the source of such public information should be irrelevant because the source or creator of the information is not permitted to assert property rights in the information. Property rights in general are never absolute. Such rights are typically granted based on a utilitarian theory—rather than a labor theory—which balances competing interests. Although assigning property rights to the result of productive activity is generally desirable because it facilitates a marketplace economy by providing economic incentives to engage in such activity, important countervailing concerns militate against granting such rights for pure information. First, control of information and ideas is abhorrent to a free society. And thus, despite substantial efforts to generate, collect, control or disseminate information and ideas, the granting of any property rights in such information should be outweighed by the potential for such rights to negatively impact a free society. This concept is strongly embedded in intellectual property law. In the seminal case of Feist Publications v. Rural Telephone, Justice O’Connor stated:
The primary objective of copyright is not to reward the labor of authors, but “[t]o promote the Progress of Science and useful Arts.” To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.Moreover, the Supreme Court has held that abstract ideas and discoveries of new, naturally occurring minerals or plants and laws of nature, no matter how useful and important, are not eligible for patent law protection. Second, allowing property rights to attach to information and ideas placed in the public domain is contrary to the basic concept of common law property rights. Property rights typically require the owner to maintain control over property by demonstrating possession. Failure to maintain such control can result in the loss of property rights via operation of law. Placing ideas or information into the public domain clearly amounts to surrendering virtually all control over such ideas and information. Hence, it would be inconsistent with the fundamental concept of property law to allow someone to claim property rights in something he or she voluntarily relinquishes all control over. It is for these reasons, among others, that statutory bodies of intellectual property law specifically allow—and in some circumstances require—the release of certain information into the public domain without the resultant loss of all property rights in the information. Such legislative enactments reflect careful balances of the competing interests and are subject to legislative revision in light of changes in society and technology. Therefore, creating such rights in intangibles should be left to the legislative branch, rather than by the courts pursuant to common law property rights.  and some subsequent cases analyzing the misappropriation doctrine. Legally prohibiting free riding is facially appealing because it comports with notions of fairness. However, by itself, it is generally an illegitimate legal rationale for rendering commercial conduct illegal. An economic system based on free competition will always have a certain degree of free riding. A company that introduces a new, successful product will inevitably engender competitors. For example, assume that I am the first person to successfully sell bottled water, and that others understandably begin selling water as well. In response, I might open my retail store 24 hours a day to increase sales. If my strategy is shown to work, it is likely some competitors will adopt the same approach. Similarly, if I sell a new product which turns out to have significant market penetration, it is likely that competing companies will develop and sell similar products once it is shown a lucrative market for that class of products exists. If I introduce a new style or design of clothing that is successful others will copy and market similar designs. Generic and lower priced versions of products frequently compete in the marketplace with well-known or established brands. If I open a restaurant adjacent to a newly opened luxury mall I may free ride on the increase in consumer traffic generated by the mall. Typically, all of these activities, without more, are considered legitimate competition. Developing a new business method or introducing a new product is neither easy nor inexpensive to accomplish. Consequently, it can be significantly less costly to create and sell products once someone else has determined a market exists or via marketing/advertising has created a new market. Such free riding is simply an aspect of competition that is often desirable for a variety of reasons. Allowing a first market entrant to block any of the above free riding by competitors may tend to preserve the status quo in the marketplace. This can have the undesirable effect of stifling innovation and creativity. Competition leads to competitors attempting to gain market share by utilizing efficiencies to lower production costs, by providing better customer service than competitors and by creating strong consumer-recognized brands. It also encourages competitors to improve existing products in order to capture a larger market share and perhaps charge a premium price for at least a limited time period. Moreover, maintaining the status quo can interfere with the integration of technology into the marketplace. In contrast, free riding forces market participants to embrace new technology in order to maintain an edge on competitors in the quest to provide better products and services while minimizing costs.  would seem to be an admirable goal; however, it is inconsistent with normal economic development and integration of technology into society. It is an unfortunate fact of business that many enterprises will fail due to marketplace competition. Attempting to insulate a business from such market forces via an action for misappropriation asserted against a competitor interferes with the natural evolution of enterprises in the marketplace. Additionally, concerns about ruinous competition are often based on erroneous beliefs or reflect an underestimation of the ability of enterprises to adapt to changes. For example, in International News Service the Court appeared to believe that allowing a news service to free ride on the news gathering activities of a competitor would result in no enterprise engaging in such activities. The Court asserted that it would be too costly to compete and make a profit in light of free riding by competitors. This is not a new argument. In Ghen v. Rich the Court opted to adopt the prevailing custom in the whaling industry. The custom provided that harpooning a whale made it your property even if the whale became submerged and floated away. If someone found the whale washed up on a remote beach the finder did not acquire ownership of the whale. The Court feared that failure to adopt this custom as the common law would have a significant negative effect on the local economy. The ruinous competition argument has also been asserted today in response to news aggregators who rely on the Internet to engage in a modern version of what occurred in International News Service. Such aggregators can easily and quickly access news stories on-line, extract the relevant news and then redistribute it for minimal cost. Newspapers and other news entities that expend substantial money and effort initially collecting the news argue that they are unable to operate profitably due to such free riding by aggregators. Even if such an argument is true, typically all existing business enterprises are subject to marketplace changes due to technology advances and numerous other factors. Businesses must either develop new business strategies to survive or they will be replaced by new enterprises. Such new strategies may include utilizing technology to counteract the consequences of free riding by competitors, providing new value-added services or abandoning an existing business model. Frequently, assertions that the activities of competitors, or others, will ruin a business enterprise reflect an attempt to maintain the status quo in the face of significant market disruptions. It is such disruptions, often the result of advancing technology, that are the real cause of the economic destruction of a business because the status quo may no longer represent a viable business model. This is exemplified by the music industry, whose existing business model has been economically devastated by the advent of technology that enables almost anyone to inexpensively copy and widely distribute music in digital form. Conventional print media, such as newspapers, have also been heavily impacted by the migration of news and other information to the Internet. Likewise, wide adoption of smart phones means more consumers are accessing and reading news in digital form on a smart phone or other device in lieu of print media. Nevertheless, business enterprises of some type will continue to make both music and news media available. How such enterprises are structured and what revenue sources they will rely on will undoubtedly change in unexpected ways. Consequently, justifying a misappropriation action based on a property rationale or the prevention of free riding or ruinous competition is problematic. Such an action will merely interfere with and delay the inevitable marketplace changes that result from changes in society and introduction of rapidly changing technology.  Moreover, a property theory—via an infringement action—can be relied on to bar interference with unauthorized use of intellectual assets that are designated property. These would include assets protected via patent law, copyright law, trade secrets law and trademark law. Other statutory and common law actions focus on marketplace conduct that is generally deemed objectionable. Such actions, which come under the generic umbrella of unfair competition, are ultimately based on an underlying tort theory and include a constellation of actions such as injuring consumers or competitors via passing off, deception, misrepresentation or false advertising. All of these actions reflect an underlying policy of societal disapproval of misleading or deceptive marketplace conduct, or a breach of trust among parties. Finally, parties should be free to enter private contractual agreements as deemed necessary provided they do not restrain trade via collusion or unreasonably interfere with competition. Nevertheless, reliance on contract-based theories to protect information and ideas has received inconsistent and confusing judicial treatment. Judicial decisions deciding idea protection cases under contract law theories can generally be divided into two broad categories. One group of decisions adopts a freedom of contract rationale. This reflects a belief that the contracting parties are in the best position to determine whether to enter the agreement, and that courts should not second-guess the informed decisions made by the agreeing parties. The second group of decisions relies on a property rationale. This reflects a belief that a contractual agreement that purports to sell or transfer an interest in something not legally recognized as property is essentially lacking in consideration. And therefore, the agreement should not be enforceable under conventional contract law principles. In Tate v. Scanlan International, Inc., an operating room nurse thought up a simple medical device that could be used to minimize breakage of a particular type of suture material used in surgery. She disclosed her idea on a confidential basis to a company that designed and sold surgical supplies upon the mutual understanding that she would be compensated if the company utilized her idea. The idea was eventually profitably marketed and sold but a dispute arose as to the amount of payment owed to the nurse. The trial court jury awarded the nurse substantial damages based on a contract theory. On appeal the Court upheld the damage award based on a breach of contract. However, the Court held that an idea could only be the subject of a contract, or other legal protection, if it was both novel and concrete. The novel requirement is satisfied if the idea originates with the idea creator and is not generally known to the public. The concrete requirement is met if the idea is sufficiently complete so that it can be used without the need for significant development before it can be implemented. Requiring novelty and concreteness amounts to a rejection of the a freedom of contract rationale in favor of a reliance on reliance on an underlying property. This arguably makes sense under a property theory because property rights can be asserted against the public generally. Hence, a vague undeveloped idea that is generally known to members of the public cannot be an individual’s property. However, contract actions only affect the rights of the contracting parties who have voluntarily entered into a binding legal relationship. The rights of anyone not a party to the contract are unaffected. Injecting a property rationale into such relationships is therefore inconsistent with the underlying freedom of contract rationale that is strongly embedded in contract theory. A trend exists in modern idea-submission cases for courts to minimize reliance on an underlying property theory in favor of a freedom of contract theory. In Nadel v. Play-By-Play, an independent toy designer developed a concept for a plush monkey that made noise and spun around when placed on a flat surface. The designer asserted that he disclosed a prototype of the toy to the defendant toy company pursuant to industry custom that required the defendant to pay him for the concept if it was used by the toy company. The defendant rejected the design but subsequently came out with a toy based on the concept. In reversing the trial court’s dismissal of the action the Court held that a different standard of novelty applied to a property-based action and a contract-based action. A property action requires the conventional novelty standard: the idea is not known to the public. However, under a contract theory, the novelty standard only requires that the idea was novel to the defendant at the time of contracting without regard to whether it was generally known to the public or to competitors. This approach, followed by some courts, reflects a freedom of contract rationale that recognizes that a party should be free to contract to buy an idea based on its determination of value. Additionally, it recognizes that enterprises involved in a business or industry are typically best situated to determine the value of an idea and to reach appropriate contract terms. Nevertheless, the Nadel court allowed for a limit on the freedom of contract with regard to ideas. It preserved the right of a court to find an idea so lacking in novelty that it can be assumed it is not novel to the buyer and therefore insufficient as a matter of law to support a contract claim. Although I think it is unlikely that a court would apply this limit, it allows a court the ability to find a contract for an idea unenforceable in egregious situations where enforcing the contract would be inequitable and unfair. This can be analogized to the doctrine of unconscionability in contract law, which serves a similar purpose for contracts generally. An alternate view of contracts for the purchase of ideas or information is to consider them service contracts. This approach eliminates the focus on whether the idea or information sought to be sold or conveyed is absolutely novel, novel to the buyer or concrete. It also lets business entities decide what and how they want to contract for something. For example, an enterprise could agree to pay for the service of providing an idea or information without regard to whether it is novel or concrete. Or, the parties could contractually require that the idea or information that is the subject matter of the contract must be novel or concrete. Even though reliance on a service contract rationale typically eliminates factual findings related to concreteness or novelty, significant hurdles still exist for a contractual theory to prevail. It must still be shown that the parties mutually agreed to enter a contract for the transfer of an idea or information. If a written contract is at issue, normal contract interpretation rules can be utilized. Of course, such disputes do not commonly involve written contracts and therefore parties frequently assert an implied-in-fact contract theory. Nevertheless, any contractual theory including an implied-in-fact theory requires establishing that the parties intended to enter into an enforceable agreement. Industry custom can be a decisive factor, such as in the Nadel decision, when asserting an implied-in-fact contract theory. However, this is not unique to contracts for ideas or information. Industry custom is applicable, when relevant, to understanding and interpreting contracts generally.  and narrowed in scope by the preemptive effect of copyright law, has continued to survive as a state-based misappropriation action. This is a consequence of the decision being both misunderstood and misapplied. Any common law cause of action for misappropriating an idea or information based on a property rationale should not prevail. Nor should preventing free riding or ruinous competition provide a rationale for such actions. Courts should unequivocally repudiate the misappropriation doctrine in an effort to provide clarity in the law. This clarity is important in the current climate, where ideas are increasingly more valuable and new technological innovations continually emerge. Instead, any common law action to protect ideas or information should only succeed, if at all, under existing contract and tort causes of action.
To facilitate the exchange of ideas, the standard custom and practice in the toy industry calls for companies to treat the submission of an idea as confidential. If the company subsequently uses the disclosed idea, industry custom provides that the company shall compensate the inventor, unless, of course, the disclosed idea was already known to the company.
Not Your Father’s Domain Name: How gTLD Expansion Is Poised to Change the Way We Navigate the Internet
* Andy McNeil is an associate in the Intellectual Property Litigation Practice at Morris, Manning & Martin LLP. He is a graduate of Georgia Institute of Technology (B.S. 2001) and Syracuse University College of Law (J.D. 2005). [FN1] Dennis Fetterly, Mike Manasse, Marc Najorc, & Janet L. Wiener, A Large Scale Study of the Evolution of Web Pages, Software—Practice and Experience, 2004, at 213-237. [FN2] Although no empirical data can support this claim, this is merely the opinion (albeit well-formed) of the author. [FN3] See ICANN About, http://www.icann.org/en/about/ (Last Visited Feb. 11, 2011). Although ICANN still operates under the oversight of the U.S. government, steps have been taken in recent years to decrease the United States’ control over the nonprofit corporation. [FN4] A set of policy recommendations was approved in October 2007 by ICANN. [FN5] ICANN, New gTLD Agreement: Proposed Final Version, gTLD Applicant Guidebook, at 1-16 (Nov. 2010), http://www.icann.org/en/topics/new-gtlds/draft-rfp-clean-12nov10-en.pdf. [FN6] See infra note 10. [FN7] See New gTLDs – Frequently Asked Questions – gTLD History & Policy Development, ICANN (Feb. 4, 2011), http://www.icann.org/en/topics/new-gtlds/strategy-faq.htm#history. [FN8] Once acquired, the owner of a new gTLD must pay ICANN $6,250 per calendar quarter in addition to a $0.25 registry level transaction fee per domain name registered per year after a threshold of 50,000 domain names have been registered. [ICANN, New gTLD Agreement: Proposed Final Version, gTLD Applicant Guidebook, at 12 (Nov. 2010), http://www.icann.org/en/topics/new-gtlds/draft-rfp-clean-12nov10-en.pdf]. An owner of a new gTLD must abide by these obligations for a period of ten years. [FN9] Jaime Angeles et al., To TLD or Not to TLD, That Is the Question, INTA Bulletin, Nov. 1, 2010, at 5. [FN10] “All applicants for new gTLDs will need to meet very specific operational and technical criteria in order to preserve the security and stability of the Internet.” New gTLDs – Frequently Asked Questions – Application & Evaluation Process, ICANN (Feb. 4, 2011), http://www.icann.org/en/topics/new-gtlds/strategy-faq.htm#application. [FN11] Infra note 5, at 1-12. [FN12] www.icann.org (last visited Mar. 7, 2011).
* I would like to thank Rochelle Dreyfuss, Barton Beebe, Oren Bar-Gill, and all those who participated in the Lederman/Milbank Fellowship workshop and the Colloquium on Innovation Policy for their insightful comments and critiques. All errors are, of course, my own. [FN1] U.S. Const. art. I, § 8, cl. 8. [FN2] See 35 U.S.C. § 154 (2006) (subject to certain exceptions, patents run for 20 years from application filing date); Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments – Results of the Uruguay Round, 33 I.L.M. 1197 (1994) [hereinafter TRIPS Agreement or TRIPS], art. 33 (prescribing a minimum term of patent protection of 20 years from application filing date). [FN3] The intense debate over recently-proposed patent reform legislation exemplifies this point. See, e.g., Amy Schatz, Patent Overhaul Gets Close, Draws Opposition, Wall St. J., Mar. 28, 2011, at B3 (noting that Corporate America is divided over Congress’s current patent law reform efforts, despite “calling for an overhaul of U.S. patent laws for years”). [FN4] See David S. Abrams, Did TRIPS Spur Innovation An Analysis of Patent Duration and Incentives to Innovate, 157 U. Pa. L. Rev. 1613, 1618 (2009). [FN5] Patent Act of 1790, ch. 7, § 1, 1 Stat. 109, 110. [FN6] See Patent Act of 1836, ch. 357, § 17, 5 Stat. 117, 124-25. [FN7] See Act of Mar. 2, 1861, ch. 88, § 16, 12 Stat. 246, 249. [FN8] See Dana Rohrabacher and Paul Crilly, Congressional Commentary: The Case for a Strong Patent System, 8 Harv. J. Law & Tech. 263, 264 (1995). [FN9] Eric E. Johnson, Calibrating Patent Lifetimes, 22 Santa Clara Computer & High Tech. L.J. 269, 283 (2006). [FN10] See, e.g., An Act for the Relief of Oliver Evans, 6 Stat. 70 (1808). See also Eldred v. Ashcroft, 537 U.S. 186, 234-35 (2003) (Stevens, J., dissenting) (providing historical analysis of early U.S. patent and copyright law). [FN11] 383 U.S. 1, 6 (1966) (“Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain”). [FN12] 2 See S. Rep. No. 103-412 (1994) (discussing Section 532 of the Uruguay Round Agreements Act). [FN13] See Uruguay Round Agreements Act § 532, Pub. L. No. 103-465, 108 Stat. 4809 (1994). [FN14] See H.R. Rep. No. 104-887 (1997) (discussing Hearing Volume No. 104-58, particularly the testimony of Ms. Gardner). [FN15] Patricia Montalvo, How Will the New Twenty-Year Patent Term Affect You? A Look at the TRIPS Agreement and the Adoption of a Twenty-Year Patent Term, 12 Santa Clara Computer & High Tech. L.J. 139, 160 (1996). [FN16] See Dana Rohrabacher and Paul Crilly, Congressional Commentary: The Case for a Strong Patent System, 8 Harv. J. Law & Tech. 263, 264 (1995). [FN17] See generally American Inventors Protection Act of 1999, Pub. L. No. 106-113, 113 Stat. 1501. [FN18] Id. at 49-50. [FN19] See 35 U.S.C. § 154 (2006). [FN20] Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. 231. [FN21] About the Patent Cooperation Treaty, http://www.wipo.int/pct/en/treaty/about.htm (last visited May 5, 2010). [FN22] See PCT Contracting States (2010), http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf. [FN23] See id. [FN24] See id. [FN25] World Intellectual Prop. Org., Protecting Your Inventions Abroad: Frequently Asked Questions About the Patent Cooperation Treaty (PCT) 16 (2006), available at http://www.wipo.int/export/sites/www/pct/en/basic_facts/faqs_about_the_pct.pdf. [FN26] See generally TRIPS Agreement, available at http://www.wto.org/english/docs_e/legal_e/27-trips.pdf. [FN27] TRIPS art. 27. [FN28] TRIPS art. 33.