Thursday, May 24, 2018

Brian Soucek on Aesthetic Judgment in Law

As noted in my last post, one of the most quoted lines in copyright law is from Justice Holmes's 1903 opinion in Bleistein: "It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations." This aesthetic neutrality principle has found purchase far beyond copyright law. But in a compelling new article, Aesthetic Judgment in Law, Professor Brian Soucek challenges this dogma: "Almost no one thinks the government should decide what counts as art or what has aesthetic value. But the government often does so, and often, it should." Soucek's article may have flown under the radar for most IP scholars because he does not typically focus on copyright law, but it is well worth a look.

Tuesday, May 22, 2018

Examining the Role of Patents in Firm Financing

Just this morning, an interesting new literature review came to my mailbox via SSRN. In Is There a Role for Patents in the Financing of New Innovative Firms?, Bronwyn Hall (Berkeley economics) provides an extremely thorough, extremely helpful literature review on the subject. It's on SSRN, and the abstract is here:
It is argued by many that one of the benefits of the patent system is that it creates a property right to invention that enables firms to obtain financing for the development of that invention. In this paper, I review the reasons why ownership of knowledge assets might be useful in attracting finance and then survey the empirical evidence on patent ownership and its impact on the ability of firms to obtain further financing at different stages of their development, both starting up and after becoming established. Studies that attempt to separately identify the role of patent rights and the underlying quality of the associated innovation(s) will be emphasized, although these are rather rare.
This paper caught my eye for a few reasons.

Sunday, May 20, 2018

Barton Beebe on Bleistein

Barton Beebe’s recent article, Bleistein, the Problem of Aesthetic Progress, and the Making of American Copyright Law, was already highlighted on this blog by Shyamkrishna Balganesh, but I wanted to add a few thoughts of my own because I really enjoyed reading it—it is a richly layered dive into the intellectual history of U.S. copyright law, and a wonderful piece to savor on a weekend.

In one sense, this is an article about one case’s role in U.S. copyright law, but it uses that case to tackle a fundamental question of copyright theory: what does it mean “to promote the Progress”? Beebe’s goal is not just to correct longstanding misunderstandings of Bleistein; as I understand it, his real point is that we can and should “assess[] aesthetic progress according to the simple propositions that aesthetic labor in itself is its own reward and that the facilitation of more such labor represents progress.” He thinks Justice Holmes’s invocation of “personality” in Bleistein represents a normatively attractive “third way” between judges assessing aesthetic merit and simply leaving this judgment to the market—that aesthetic progress is shown “by the mere fact that someone was willing to make the work, either for sale or otherwise, and that in making it, someone had invested one’s personality in the work.”

This personality-centered view of copyright seems similar to the Hegelian personality theory that was drawn into IP by Peggy Radin and elaborated by Justin Hughes, though at times it seems more like Lockean theories based on the author’s labor. I think he could have done more to explain how his theory relates to this prior literature, and also how it’s different from a utilitarian theory that recognizes the value creators get from creating (à la Jeanne Fromer’s Expressive Incentives). In any case, I think Beebe’s take is interesting, particularly with the connection he draws to John Dewey’s American pragmatist vision of aesthetic progress.

Wednesday, May 16, 2018

Mark McKenna: Trademark Counterfeiting And The Problem Of Inevitable Creep

One of my favorite events at Akron Law this past school year was hearing Professor Mark McKenna deliver the Oldham Lecture on his fascinating paper, Criminal Trademark Enforcement And The Problem Of Inevitable Creep.  The completed article, forthcoming in the Akron Law Review, is now available on SSRN.

The story, in Mckenna's telling, is simple. There is a criminal remedy for trademark "counterfeiting" because, most people would agree, using an identical trademark for goods or services that are identical to the trademark owner's is an economically and morally worse act than ordinary trademark infringement. A modern-day example of this atrocious crime is the company that has been hawking dysfunctional "Philips Sonicare" toothbrush replacement heads on Consumers buy them thinking they are the real thing, and are sorely disappointed when the brush heads do not work. But to deserve the classification as criminal, as a legal matter, the act of counterfeiting must be proven "beyond a reasonable doubt" to fit within the exact text of the relevant statute, the Trademark Counterfeiting Act. According to McKenna, courts have veered from the statutory text, and are instead expanding criminal counterfeiting beyond Congressional authorization. Thus, the article's reference in its title to "inevitable creep."

There are parts of this well-done article with which people are likely to agree, and other parts with which people are likely to strongly disagree.

Tuesday, May 15, 2018

A Focus on Innovators Instead of Innovations

I noticed this week that my sometimes co-author Colleen Chien (Santa Clara) has posted the abstract for a new paper called Innovators on SSRN:
This Article argues for a shift in how we view and use the patent system, to a way of understanding and cultivating innovators that patent, not just patented innovation, for three reasons. First, who is innovating and where has relevance to a myriad of current social and policy debates, including the participation of women and minorities in innovation, high-skilled immigration, and national competitiveness. Second, though largely overlooked by academics, America’s patent system has long been innovator-, not only innovation-driven, and scholarly engagement can improve the quality of relevant policymaking. Third, the application of new computational tools to open patent datasets makes it possible to more easily approximate and track salient details about innovators that patent - including the geography and settings in which they innovate and the personal demographic traits of innovators - enabling the tailoring and tracking of impacts of interventions on disparate groups of innovators. This Article details why and how to do so by applying novel empirical methods to profiling patentees, revealing broad shifts over the past four decades, and demonstrating—through three mini-case studies pertaining to diversity in the technology sector, the promotion of small and individual inventors, and innovation in medical diagnostic technologies—how improving our understanding of innovators can improve our promotion of innovation.
A draft isn't available yet, but hopefully one will be soon. My thoughts on this abstract, though, are "hear, hear!" I think that too little attention has been paid to the people who innovate. There is, to be sure, a rich history of historians and economic historians who have focused on these points. Zorina Khan, Naomi Lamoreaux, and Ken Sokoloff (z''l) come to mind. In law, Adam Mossoff has provided several case studies and Chris Beauchamp has done outstanding historical work highlighting innovators in their time. Mark Lemley leveraged some historical work in an article about simultaneous inventing, and others have looked at those same innovators to tell competing stories.

But much of this work is historical. Of late, as the abstract notes, it's all about the what: What inventions? What classes? What litigation? How many claims? I think people clamor for stories about innovators; I believe my most downloaded (by far) SSRN paper, Patent Troll Myths, resonated because it looked hard at the innovators - individuals to small entities to large companies. Dan Burk looks at innovators (but without data) in Do Patents Have Gender? 

I'm sure there are examples I'm not thinking of, but more data and analysis in this area would be welcome. Patents exist in service to their inventors, and so it makes sense to understand who those are to better understand whether patents are achieving their goals...or even what the goals are.

Tuesday, May 8, 2018

When Should Actors Get Copyrights in their Performances?

In Garcia v. Google, the en banc Ninth Circuit ruled that actors can basically never obtain a copyright in their performances. I was one of, say, ten people troubled by this decision. My IP academic colleagues will surely recall (too) long debates on the listserv on this issue. It turns out that another of the ten is Justin Hughes (Loyola LA), who has now written an article exploring when and why actors might reasonably claim copyright in a performance. The article, called Actors as Authors in American Copyright Law, is on SSRN and is forthcoming in the Connecticut Law Review. The abstract is here:
Among the different kinds of works eligible for copyright, audiovisual works are arguably the most complex, often involving scores of contributors – screenwriters, directors, actors, cinematographers, producers, set designers, costume designers, lighting technicians, etc. Some countries expressly recognize which categories of these contributors are entitled to legal protection, whether copyright, ‘neighboring rights,’ or statutory remuneration. But American copyright law does not. Given that the complex relationship among these creative contributors is usually governed by contract, there is – for such a large economic sector – relatively little case law on issues of authorship in audiovisual works. This is especially true on the question of dramatic performers as authors of audiovisual works.
This Article provides the first in-depth exploration of whether, when, and how actors are authors under American copyright law. After describing how case law, government views, and scholarly commentary support the conclusion that actors are authors, the Article turns to the strange saga of the Ninth Circuit’s 2015 en banc Garcia v. Google decision – a decision more about fraud and fatwas than clear conclusions on how copyright law applies to acting. The Article then uses some simple thought experiments to establish how dramatic performers generally meet both the Constitutional and statutory standard for “authorship.” Finally, the Article reviews the various filters that prevent actors-as-authors legal struggles and how, when all else fails, we can consider actors as joint authors of the audiovisual works embodying their dramatic performances.
The article presents a detailed and nuanced view of what it means to be an author, as well as a good discussion of the development of the law in this area. As the abstract alludes to, it turns out that much of our view of actor protections is based on how things have been done and expediency (e.g. work made for hire) rather than a detailed examination of authorship in film.

For example, it has always been unclear to me why we protect a musician's performance of pre-scripted music in a sound recording, but not an actor's performance of a pre-scripted movie in an audiovisual work. The statute allows for both protections, and the primary reason seems to be that we don't think it's right.

Similarly, joint authorship is very strange. In Aalmuhammed v. Lee, the Ninth Circuit ruled that, despite the contribution of several elements and several scenes, one must be either a full joint author or nothing. There is no in-between. Like Garcia v. Google, this appears to be for expedience (and Hughes examines several other reasons), as well as a view that the only "work" can be the final work, and not each scene before it is pieced together, a legal fiction in the modern era of copyrightability in unpublished works.

This article explores much of the thinking I had at the time of Garcia v. Google, so those who favored that ruling will likely think it is as crazy as they thought I was. However, I think the article is still worth a read, if only to pinpoint where you think it goes astray, if it does.

Friday, May 4, 2018

Academic IP Conferences

Three years ago, I posted some general advice about academic IP conferences, including links to sites that compile IP conference information. Most of that advice still stands, but the definitive IP conference compilation site has moved to, where it is maintained by Professor Saurabh Vishnubhakat—who was a wonderful member of a conference panel I moderated last week.

The most recent entry on Saurabh's site is interesting: the AALS Remedies Section has a call for papers for a program on IP remedies at the Jan. 2019 AALS Annual Meeting in New Orleans. Abstracts are due June 1.

Tuesday, May 1, 2018

Jake Sherkow Guest Post: What the CRISPR Patent Appeal Teaches Us About Legal Scholarship

Guest post by Professor Jake Sherkow of New York Law School, who is currently a Visiting Scholar at Stanford Law School.

Yesterday, the Federal Circuit heard oral argument in the dispute between the University of California and the Broad Institute over a set of fundamental patents covering CRISPR-Cas9, the revolutionary gene-editing technology. Lisa has been kind enough to invite me to write a few words here about the dispute, and I thought I’d take that generous opportunity to discuss two aspects of yesterday’s argument: the basics of the appeal and, given that this blog is devoted to legal scholarship about patent law, what the argument can teach us, if anything, about IP scholarship in general. I think the short answer to the second question is, Quite a lot, although perhaps not for obvious reasons.

Measuring the Value of Patent Disclosure

How valuable is patent disclosure? It's a perennially asked question. There are studies, like Lisa's, that attack the problem using surveys, and the conventional wisdom seems to be that there are niche areas that read patents, but for the most part patent disclosure holds little value because nobody reads them.

Deepak Hegde (NYU Stern), Kyle Herkenhoff (Minn. Econ), and Chenqi Zhu (NYU Stern PhD candidate) have decided to attack the problem from a different angle: using the AIPA (which required patent disclosure at 18 months) as a natural experiment. The paper is on SSRN, and the abstract is here:
How does the disclosure of technical knowledge through patents affect knowledge diffusion, follow-on invention, and patenting? We study this by analyzing the American Inventor's Protection Act (AIPA), which required U.S. patent applications filed after November 28, 2000 to be published 18 months after filing, rather than at grant, and advanced the disclosure of most U.S. patents by about two years. We estimate AIPA’s causal effect by using a counterfactual sample of identical European “twins” (of U.S.patents) which were not affected by the U.S. policy change and find that AIPA (i) increased the rate and magnitude of knowledge diffusion associated with U.S. patents (ii) increased overlap between technologically distant patents and decreased overlap between similar patents. Patent abandonments and scope decreased, while patent clarity improved, after AIPA. The findings are consistent with the predictions of our theoretical framework which models AIPA as provisioning current information about related technologies to inventors. The information, in turn, reduces follow-on inventors’ R&D and patenting costs. Patent disclosure promotes knowledge diffusion and clearer property rights while reducing R&D duplication.
This was a clever project. There have been AIPA studies before, but none that try to measure the value of the diffusion, so far as I know. What makes it go is the matching with European patents (which had always been published), which allows for their measurements to be independent of quality of invention.

Friday, April 27, 2018

Berkeley Remarks on a Patent Small-Claims Tribunal

As noted in my earlier post today with my remarks from We Robot, I’ve been busy with lots of interesting conferences and workshops in the past few weeks. Because I wrote out detailed notes for two of them, I thought I would post them for people who weren’t able to attend. Here are my comments from the fantastic BCLT/BTLJ symposium on the administrative law of IP, where I was on a panel discussing IP small-claims tribunals:

You have already heard some insightful comments from Ben Depoorter and Pam Samuelson on copyright small-claims courts, including their analysis of problems with the proposed Copyright Alternatives in Small-Claims Enforcement (CASE) Act of 2017, as well as their thoughts on how a more narrowly tailored small-claims system might be beneficial. The main justification for introducing such a tribunal is that high litigation costs prevent claimants from pursuing valid small claims.

I’m here to provide some perspective from the patent law side, and the short version of my comments is that the idea of a patent small-claims court seems mostly dead in the United States, and I don’t see a reason to revive it.

We Robot Comments on Ryan Abbot's Everything is Obvious

I’ve been busy with lots of interesting conferences and workshops in the past few weeks, and since I wrote out detailed notes for two of them, I thought I would post them for people who weren’t able to attend. First, my comments from the We Robot conference two weeks ago at Stanford:

Ryan Abbott’s Everything is Obvious is part of an interesting series of articles Ryan has been working on related to how developments in AI and computing affect legal areas such as patent law. In an earlier article, I Think, Therefore I Invent, he provocatively argued that creative computers should be considered inventors for patent and copyright purposes. Here, he focuses on how these creative computers should affect one of the most important legal standards in patent law: the requirement that an invention not be obvious to a person having ordinary skill in the art.

Ryan’s definition of “creative computers” is purposefully broad. The existing creative computers he discusses are all narrow or specific AI systems that are programmed to solve particular problems, like systems from the 1980s that were programmed to design new microchips based on certain rules and IBM’s Watson, which is currently identifying novel drug targets for pharmaceutical research. And Ryan thinks patent law already needs to change in response to these developments. But I think his primary concern is the coming of artificial general intelligence that surpasses human inventors.

Tuesday, April 24, 2018

Naruto, the Article III monkey

The Ninth Circuit released its opinion in the "monkey selfie" case, reasonably ruling that Naruto the monkey doesn't have standing under the Copyright laws. The opinion dodges the hard questions about who can be an author (thus leaving for another day questions about artificial intelligence, for example) by instead focusing on mundane things like the ability to have heirs. As a result, it's not the strongest opinion, but one that's hard to take issue with.

But I'd like to focus on an issue that's received much less attention in the press and among my colleagues. The court ruled that Naruto has Article III standing because there is a case or controversy. I'll admit that I hadn't thought about this angle, having instead gone right to the copyright authorship question (when you're a hammer, everything looks like a nail). But I guess when you're an appellate court, that whole "jurisdiction and standing section" means something even though we often skim that in our non-civ pro/con law/fed courts classes in law school.

I'll first note that the court is doubtful that PETA has standing as "next friend." Footnote 3 is a scathing indictment of its actions in this case, essentially arguing that PETA leveraged the case for its own political ends rather than for any benefit of Naruto. Youch! More on this aspect here. The court also finds that the copyright statute does not allow for next friend standing, a completely non-shocking result given precedent.

Even so, the court looks to whether Naruto has individual standing even without some sort of guardian. Surprisingly enough, this was not an issue of first impression. The Ninth Circuit had already ruled that a group of whales had Article III standing. From this, the court very quickly decides that Naruto has standing: the allegation of ownership in the photograph easily creates a case or controversy.

Once again, the best part is in the footnotes. I'll reproduce part of note 5 here:
In our view, the question of standing was explicitly decided in Cetacean. Although, as we explain later, we believe Cetacean was wrongly decided, we are bound by it. Short of an intervening decision from the Supreme Court or from an en banc panel of this court, [] we cannot escape the proposition that animals have Article III standing to sue....
[The concurrence] insightfully identifies a series of issues raised by the prospect of allowing animals to sue. For example, if animals may sue, who may represent their interests? If animals have property rights, do they also have corresponding duties? How do we prevent people (or organizations, like PETA) from using animals to advance their human agendas? In reflecting on these questions, Judge Smith [in the concurrence] reaches the reasonable conclusion that animals should not be permitted to sue in human courts. As a pure policy matter, we agree. But we are not a legislature, and this court’s decision in Cetacean limits our options. What we can do is urge this court to reexamine Cetacean. See infra note 6. What we cannot do is pretend Cetacean does not exist, or that it states something other, or milder, or more ambiguous on whether cetaceans have Article III standing.
I was glad to see this, because when I read the initial account that Article III standing had been granted, I wondered why the court would come to that decision and thought of many of these questions (and more - like what if there's no statute to deny standing, like diversity tort liability).

I'll end with perhaps my favorite part of the opinion: the award of attorneys' fees. The award itself is not surprising, but the commentary is. It notes that the court does not know how or whether the settlement in the case dealt with the possibility of such an award, but also that Naruto was not part of such a settlement. It's unclear what this means. Can Slater collect from Naruto? How would that happen? Can Slater collect from PETA because Naruto was not part of the settlement? The court, I'm sure, would say to blame any complexity on the whale case.

Sunday, April 22, 2018

Chris Walker & Melissa Wasserman on the PTAB and Administrative Law

Christopher Walker is a leading administrative law scholar, and Melissa Wasserman's excellent work on the PTO has often been featured on this blog, so when the two of them teamed up to study how the PTAB fits within broader principles of administrative law, the result—The New World of Agency Adjudication (forthcoming Calif. L. Rev.)—is self-recommending. With a few notable exceptions (such as a 2007 article by Stuart Benjamin and Arti Rai), patent law scholars have paid relatively little attention to administrative law. But the creation of the PTAB has sparked a surge of interest, including multiple Supreme Court cases and a superb symposium at Berkeley earlier this month (including Wasserman, Rai, and many others). Walker and Wasserman's new article is essential reading for anyone following these recent debates, whether you are interested in specific policy issues like PTAB panel stacking or more general trends in administrative review.

Monday, April 16, 2018

Comprehensive Data about Federal Circuit Opinions

Jason Rantanen (Iowa) has already blogged about his new article, but I thought I would mention it briefly has well. He has created a database of data about Federal Circuit opinions. An article describing it is forthcoming in the American University Law Reviw on SSRN and the abstract is here:
Quantitative studies of the U.S. Court of Appeals for the Federal Circuit's patent law decisions are almost more numerous than the judicial decisions they examine. Each study painstakingly collects basic data about the decisions-case name, appeal number, judges, precedential status-before adding its own set of unique observations. This process is redundant, labor-intensive, and makes cross-study comparisons difficult, if not impossible. This Article and the accompanying database aim to eliminate these inefficiencies and provide a mechanism for meaningful cross-study comparisons.

This Article describes the Compendium of Federal Circuit Decisions ("Compendium"), a database created to both standardize and analyze decisions of the Federal Circuit. The Compendium contains an array of data on all documents released on the Federal Circuit's website relating to cases that originated in a federal district court or the United States Patent and Trademark Office (USPTO)-essentially all opinions since 2004 and all Rule 36 affirmances since 2007, along with numerous orders and other documents.

This Article draws upon the Compendium to examine key metrics of the Federal Circuit's decisions in appeals arising from the district courts and USPTO over the past decade, updating previous work that studied similar populations during earlier time periods and providing new insights into the Federal Circuit's performance. The data reveal, among other things, an increase in the number of precedential opinions in appeals arising from the USPTO, a general increase in the quantity-but not necessarily the frequency-with which the Federal Circuit invokes Rule 36, and a return to general agreement among the judges following a period of substantial disuniformity. These metrics point to, on the surface at least, a Federal Circuit that is functioning smoothly in the post-America Invents Act world, while also hinting at areas for further study.
The article has some interesting details about opinions and trends, but I wanted to point out that this is a database now available for use in scholarly work, which is really helpful. The inclusion of non-precedential opinions adds a new wrinkle as well. Hopefully some useful studies will come of this

Tuesday, April 10, 2018

Statute v. Constitution as IP Limiting Doctrine

In his forthcoming article, "Paths or Fences: Patents, Copyrights, and the Constitution," Derek Bambauer (Arizona), notices (and provides some data to support) a discrepancy in how boundary and limiting issues are handled in patent and copyright. He notes that, for reasons he theorizes, big copyright issues are often "fenced in" by the Constitution - that is the constitution limits what can be protected. But patent issues are often resolved by statute, because the Constitution creates a "path" which Congress may follow. Thus, he notes, we have two types of IP emanating from the same source, but treated differently for unjustifiable reasons.

The article is forthcoming in Iowa Law Review, and is posted on SSRN. The abstract is here:
Congressional power over patents and copyrights flows from the same constitutional source, and the doctrines have similar missions. Yet the Supreme Court has approached these areas from distinctly different angles. With copyright, the Court readily employs constitutional analysis, building fences to constrain Congress. With patent, it emphasizes statutory interpretation, demarcating paths the legislature can follow, or deviate from (potentially at its constitutional peril). This Article uses empirical and quantitative analysis to show this divergence. It offers two potential explanations, one based on entitlement strength, the other grounded in public choice concerns. Next, the Article explores border cases where the Court could have used either fences or paths, demonstrating the effects of this pattern. It sets out criteria that the Court should employ in choosing between these approaches: countermajoritarian concerns, institutional competence, pragmatism, and avoidance theory. The Article argues that the key normative principle is that the Court should erect fences when cases impinge on intellectual property’s core constitutional concerns – information disclosure for patent and information generation for copyright. It concludes with two examples where the Court should alter its approach based on this principle.
The article is an interesting theory piece that has some practical payoff.