fisher notes dec 2012

7/25/2019 Fisher Notes Dec 2012

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The Growth of Intellectual Property:

A History of the Ownership of Ideas in the United States

William W. isher III!

forthcomin" inEigentumskulturen im Vergleich#$andenhoec% & 'uprecht( )***+

Essay seeks to answer question: How did it come to pass that, in the United States, one can

now own the dcor of a restaurant, and lawyers argue seriously about eclusi!e rights to athletic

mo!es"#

Section $%

&he field of law in which such claims arise has recently come to be known as 'intellectual

property%( $t encompasses se!eral, partially o!erlapping doctrines#:

Copyright lawprotects )original forms of epression) **Magic Mountain, )Star +ars,)

)iddler on the -oof%)Patent lawprotects in!entions ** windsurfers, chemical processes,genetically engineered mice% Trademark lawprotects words and symbols that identifygoods and ser!ices ** ).c/onalds,) the distincti!e shape of a errari &estarosa% Trade-secret lawprotects information that a company has tried but failed to conceal fromcompetitors ** secret formulas for soft drinks, confidential marketing strategies% &he"right of publicity"protects celebrities0 interests in their images and identities%

&he history of each of these doctrines 1like the histories of most areas of the law2 is in!oluted

and idiosyncratic, but one o!erall trend is common to all: epansion% +ith rare eceptions, the

set of entitlements created by each of the doctrines has grown steadily and dramatically from the

eighteenth century to the present%#
http://cyber.law.harvard.edu/property99/history.html#*http://cyber.law.harvard.edu/property99/history.html#*


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3opyright law: epansion has tended to occur along the ais of duration

&he original, 4567 3opyright 8ct established a copyright term of 49 years if the author were

still li!ing at the end of that period, he could renew the copyright for an additional 49 years%

;!er the net two centuries, 3ongress periodically added to these time periods% .ost copyrights

acquired today will last for the life of the author plus oyed little more than

protection against !erbatim copying of his or her language% $n other words, the 'work( shielded

by the statute was the literal tet, nothing more%# So, for eample, in 4?ected the claim of Harriet Aeecher Stowe that a Berman translation of Uncle Tom's Cabin

infringed her copyright%

Ay the publication of .rs% Stowe0s book, the creations of the genius and

imagination of the author ha!e become as much public property as those of

Homer or 3er!antes% % % % 8ll her conceptions and in!entions may be used and

abused by imitators, playwrights and poetasters% % % % CHer entitlements are limited

toD the copyright of her book the eclusi!e right to print, reprint, and !end it, and

those only can be called infringers of her rights, or pirates of her property, who

are guilty of printing, publishing, importing or !ending with her license, )copies

of her book%) 8 translation may, in loose phraseology, be called a transcript or


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copy of her thoughts or conceptions, but in no correct sense can it be called a

copy of her book%

&oward the end of the nineteenth century, this constricted !iew of an author0s rights came under

increasing attack%#

E!entually the courts, with 3ongress0 encouragement, abandoned it in fa!or of the concept that

the )work) protected by copyright consists )in the substance, and not in the form alone% &hat

which constitutes the essence and !alue of a literary composition, which represents the results of

the author0s labor and learning, may be capable of epression in more than one form of language

different from that of the original% % % % C&husD translation is not in substance a new work% $t is a

reproduction in a new form of an eisting one%) n&his modern understanding confers upon

copyright owners many more entitlements than the right to prepare translations% 3lose

approimation of the plot of a no!el or play, preparation of a screenplay based on a no!el, use of

the characters from a mo!ie or book to create an unauthoriFed sequel ** all these are now

understood to constitute infringement%

&he kinds of works to which copyright law may apply has also grown enormously% or eample,

in 4??9, the Supreme 3ourt concluded that photographs could be copyrighted% n5$n 4654,

3ongress decided that musical recordings 1not >ust musical compositions, but recorded

performances thereof2 should be shielded from copying%n?&wenty years ago, computer software

was added to the list of protectable works%n6&he most recent ma>or addition was architectural

works% n47

,.
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Gike copyright, patent law was gradually etended o!er the course of the 46th and =7th centuries

to an increasingly wide array of in!entions% Some eamples:

Industrial esigns!$n 4?9=, hoping to pro!ide )encouragement to the decorati!e

arts,) 3ongress etended the reach of the patent statute to co!er )new and original

designs for articles of manufacture%) &he degree of originality demanded by the

atent ;ffice and the courts before recogniFing a patent of this sort has !aried

o!er the years, but recently a wide array of )ornamental ob>ects) ** from eyeglass

display racks to containers for dispensing liquids ** ha!e been deemed

protectable% n44

Plants!Until the early twentieth century, plants were considered products of

nature and hence unpatentable%n4=&he lant atent 8ct of 46@7 o!errode this

principle, etending a modified form of patent protection to new !arieties of

aseually reproducing plants% n4@$n 4657, 3ongress went e!en further, reaching

new and )distinct) seually reproducing plant !arieties% n#

$urgical Procedures! Until the Second +orld +ar, the atent ;ffice took the

position that )the methods or modes of treatment of physicians of certain diseases

are not patentable%) n4


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such patents ** not by eliminating them, howe!er, but rather by eempting

physicians and )health care entities) 1e%g%, nursing homes, hospitals, and medical

schools2 from liability for infringing them% n=7

$oftware!Until the 46?7s, both the atent ;ffice and the courts resisted the

patenting of software programs, primarily on the ground that they constituted

)mathematical algorithms) and thus unpatentable )phenomena of nature%) n=4$n

46?4, the United States Supreme 3ourt signaled a slight weakening in this

resol!e, upholding the patent on a software program 1embedded in a computer2

that ser!ed to monitor continuously the temperature inside a synthetic rubber

mold% n==Since that time, the ederal 3ircuit has adopted an increasingly

recepti!e posture today, !irtually any software program 1if no!el, nonob!ious,

etc%2 is patentable, so long as the applicant describes it as being programmed into

a general purpose computer% n=@&he predictable result has been an enormous

surge in software patent applications%

&his proliferation of the kinds of potentially patentable in!entions has been paralleled by

epansion of the set of entitlements encompassed by a patent% &he doctrine that best eemplifies

that epansion is the concept of )equi!alents%) n=9;rdinarily, the rights of a patent owner are

defined, not by the scope of his in!ention, but by the language of his )claims) a ri!al0s product

will infringe the patent if and only if it falls within the bounds of a !alid claim% $n the nineteenth

century, ri!als would sometimes take ad!antage of this principle% Ay constructing products that

differed in minor respects from patentees0 claims, they sought to a!oid liability% &oward the end

of the century, the courts de!eloped the equitable doctrine of )equi!alents) to pre!ent such
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e!asi!e maneu!ers% n=uries in patent cases has resulted in increasingly generous 1to

patentees2 interpretation of the doctrine% n=?inally, courts ha!e held that the doctrine of

equi!alents may be in!oked by patentees e!en when the defendant0s product or acti!ity only

became possible as a result of new technology ** in other words, e!en if the defendant0s product

or acti!ity could not ha!e been foreseen at the time the patent was granted% n=6

+hat about the manner in which the atent ;ffice and courts ha!e interpreted and applied the

standard requirements of patentability ** no!elty, nonob!iousness, utility, etc%" Here the dramatic

shift in fa!or of patentees has been more recent% -oughly speaking, the nineteenth century was

characteriFed by e!er more generous interpretation of the statutory criteria% artly as a result,

patents became important to many companies and industries%n@7Aetween the irst and Second

+orld +ars, howe!er, the tide turned% 8ngered by anticompetiti!e uses of patents by large

companies, both the atent ;ffice and the courts became substantially less willing to grant or

uphold questionable patents% Aeginning in the 46


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new court 1as its ad!ocates had foreseen2 has been much more fa!orable to patentees ** sharply

lowering the bar of )nonob!iousness) n@4and encouraging more generous damage awards% n@=

-.

$t is in the area of trademark law that the eplosion of intellectual property has been most

striking% &he notion that a manufacturer who places on his goods a particular mark can pre!ent

others from using the same mark to sell similar goods first appeared in 8merican law in the

middle third of the nineteenth century% n@@or many years, howe!er, the kinds of marks shielded

by this principle were limited% $nitially, for eample, most courts 1and the leading commentator2

insisted that, to be protected, a trademark had to include the name of the manufacturer% 8rbitrary

or fanciful names 1e%g%, )Aalm of a &housand lowers) soap2 did not qualify, n@9nor did

geographic names 1referring to the place a product was manufactured2% n@uncts to trademarks, )CtDhe

package, case, or !essel in which the commodity is put, if prepared in a peculiar or no!el

manner%) n@?Ay the late twentieth century, they had gone much further, shielding against
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imitation such things as the uniforms of the cheerleaders for the /allas 3owboys football team

and the layout and appearance of greeting cards% n@6

&he entitlements a manufacturer acquires through )ownership) of a trademark ha!e likewise

grown enormously% $nitially, only the use by competitors of identical marks 1or portions thereof2

was actionable% Gater, competitors were pre!ented from using marks sufficiently similar as to

cause consumer confusion, a standard the courts construed e!er more generously% .ost recently,

trademark owners ha!e been able to halt the use of identical or similar marks by noncompetitors,

on the ground that such usage would )tarnish,) )blur,) or )dilute) the mark% n97&he geographic

range of a trademark has also epanded radically% $nitially, trademark owners0 entitlements were

limited to the territories in which they were actually selling or ad!ertising their products% n94

&he adoption of the Ganham 8ct in 469 allowed users of marks to establish )nationwide

constructi!e use) of their marks as of the date of their application for trademark registration% n9=

&he Ganham 8ct 1and its subsequent amendments2 enlarged owners0 rights in many other

respects as well ** perhaps most importantly by establishing a generous set of remedies for

trademark infringement, including treble damages and attorneys0 fees%

/uring the same period, 8merican courts through common*law ad>udication ha!e de!eloped

se!eral doctrines ancillary to trademark law% &he most important of these is a line of decisions

initiated by the 464? case ofInternational %ews $er&ice &! ssociated Press, in which the

Supreme 3ourt en>oined the defendant news organiFation from appropriating information

contained in the plaintiff0s newspaper stories until such time as the )commercial !alue) of that

information had )passed away%) 3ourts in succeeding years differed sharply on the merits of the

)misappropriation) doctrine announced inI%$% Some ** most notably, the influential 3ourt of
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8ppeals for the Second 3ircuit ** ha!e done what they could to e!ade or limit it% n9@;thers,

howe!er, ha!e enthusiastically etended it to a !ariety of circumstances arguably in!ol!ing

)piracy) of information% $n theow (onescase, for eample, the Supreme 3ourt of $llinois held

that the 3hicago Aoard of &rade could not de!elop a stock inde futures contract keyed to the

)/ow Iones $ndustrial 8!erage,) without first obtaining the permission of the company that had

originally created that famous market inde%n99

.

&he final intellectual*property growth area is perhaps less economically important than

copyright, patent, or trademark law, but has considerable cultural significance% $n 46urisdictions to ha!e considered his proposal ha!e adopted some !ersion of it ** either

through statute or through common*law ad>udication%n9$n its modern form, this doctrine

enables celebrities to pre!ent others from making use of the )depiction) or )endorsement) !alue

of their identities% 8 few eamples should suggest the scope and power of the principle% $n 46?@,

Iohnny 3arson, whose long*running late*night comedy show had traditionally begun with the

phrase, )Here0s Iohnny,) successfully in!oked the doctrine to pre!ent the sale of )Here0s Iohnny

ortable &oilet0s%) n95i!e years later, Aette .idler, a popular singer, reco!ered J977,777 from

the ord .otor 3ompany on the ground that ord had deliberately used in one of its

ad!ertisements a singer whose !oice closely resembled .idler0s% n9?8nd in 466=, the Samsung

Electronics 3ompany was held to !iolate the right of publicity when it included in one of its
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ad!ertisements )a robot, dressed in a wig, gown, and >ewelry) and posed in a )stance) that made

it resemble Kanna +hite, a famous game*show hostess% n968 few !ery recent decisions ha!e

sought to curtail the reach of the doctrine,n


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8 second, related long*term change was the transformation of the United States from a net

consumer of intellectual property to a net producer% Until approimately the middle of the

nineteenth century, more 8mericans had an interest in )pirating) copyrighted or patented

materials produced by foreigners than had an interest in protecting copyrights or patents against

)piracy) by foreigners% &he shift in the )balance of trade) had a predictable effect on the stance

taken by the United States in international affairs% $n the early nineteenth century ** as 3harles

/ickens learned to his dismay ** the 8merican go!ernment was deaf to the pleas of foreign

authors that 8merican publishers were reprinting their works without permission%n


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style changes, in one eceptionally epansi!e week ord spent about J= million on ad!ertising%)

nustice ** the notion that each person who contributes to a

collecti!e enterprise deser!es a reward commensurate with the magnitude of his or her

contribution to the enterprise% n@
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Since the late eighteenth century, such attitudes ha!e contributed to the willingness of legislators

and >udges first to establish and then to epand intellectual property rights% &hus, for eample,

the committee that persuaded the 3ontinental 3ongress to recommend to the states that they

adopt copyright laws >ustified the proposal partly on the ground that )nothing is more properly a

man0s own than the fruit of his study%) n9Similar statements by other lawmakers may be found

throughout 8merican history% or eample, in 4?@5 Henry 3lay argued that it is )incontestable)

that )authors and in!entors ha!e, according to the practice among ci!iliFed nations, a property in

their respecti!e productions % % % and that this property should be protected as effectually as any

other property is, by law, follows as a legitimate consequence%) nustified her narrow reading of the fair*use doctrine 1which pri!ileges certain sorts of

nonpermissi!e uses of copyrighted materials2 on similar grounds: )&he rights conferred by

copyright are designed to assure contributors to the store of knowledge a fair return for their

labors%) n

8 second, related ideological current has been the widespread popular suspicion in the United

States of go!ernmental in!ol!ement in the process of identifying and rewarding good works of

art and socially !aluable in!entions% &his attitude crystalliFed later than the labor*desert theory

>ust discussed% Until the middle of the nineteenth century, 8mericans were remarkably recepti!e

to the notion that go!ernments could and should ad!ance the public interest by identifying and

encouraging socially !aluable !entures of all sorts% &his general disposition had many

manifestations in early 8merican legal and economic history ** including, for instance: selecti!e

grants of corporate charters to enterprises that, in the legislators0 !iew, promised to redound to

the public welfare ).ill 8cts,) which empowered landowners who wished to install mills on

streams running through their property to build dams that flooded their neighbor0s property
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1pro!ided they paid compensation2 and generous delegations by state legislatures of the power

of eminent domain to pri!ate railroads% n5&his same general mercantilist sentiment underlay

se!eral proposals early in 8merican history that in!entors be rewarded, not with patents, but with

public funds% or eample, in 45?5, &ench 3oe proposed the following scheme to the

ennsyl!ania Society for the Encouragement of .anufactures and the Useful 8rts:

remiums for useful in!entions and impro!ements, whether foreign or 8merican,

for the best eperiments in any unknown matter, and for the largest quantity of

any !aluable raw material, must ha!e an ecellent effect% &hey would assist the

efforts of industry, and hold out the noble incenti!e of honourable distinction to

merit and genius% &he state might with great con!enience enable an enlightened

society, established for the purpose, to offer liberal rewards in land for a number

of ob>ects of this nature% ;ur funds of that kind are considerable, and almost

dormant% n?

&he first draft of what ultimately became the intellectual*property clause of the 3onstitution

similarly incorporated a system of go!ernmental awards and subsidies% n6Edward +alterscheid

argues con!incingly that this approach was ultimately re>ected, not because of principled

opposition to go!ernmental in!ol!ement in the identification of worthy in!entions, but because it

was deemed too epensi!e% n57

Ay the late nineteenth century, howe!er, this recepti!ity to direct go!ernmental super!ision of

in!enti!e acti!ity had been eroded by the comple of attitudes commonly known as classical

liberalism ** including, most importantly, the notion that the public and pri!ate spheres 1the

)state) and )ci!il society)2 were and should be distinct, combined with a general distrust of
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go!ernmental tinkering with the market% $n the altered ideological climate, intellectual*property

rights were more palatable than go!ernmental priFes as a way of stimulating creati!ity% &o

modern lawyers, both systems plainly in!ol!e go!ernmental ad>ustments of the market to that

etent, both entail departures from an ideal of laisseF*faire% Aut the inter!ention by go!ernment

was 1and is2 less apparent when it consists of conferring property rights on classes of authors and

in!entors than when it consists of the identification and support of particular persons%

3lassical liberalism has also contributed in many more detailed ways to the epansion of

intellectual*property rights% &he most important, probably, has been the strong commitment of

both courts and legislators when administering the copyright laws to the principle of aesthetic

relati!ism% Unwilling to differentiate between good and bad art 1or art and ad!ertising2, we

etend the umbrella of copyright protection to e!erything ** from brilliant bursts of creati!ity to

1at least in theory2 minor de!iations from eisting works caused by a )copyist0s bad eyesight or

defecti!e musculature, or a shock caused by clap of thunder%)n54-esidues of classical

liberalism also, incidentally, continue to shape many other, related aspects of 8merican politics

and law ** for instance, the distressingly low le!els of public funding for the arts in the United

States 1compared, for instance, to most countries in +estern Europe2, and the apparently

successful recent efforts of conser!ati!e -epublican congressmen to stunt the Lational

Endowment for the 8rts%

8 third ideological current that had a particularly powerful impact on 8merican copyright law

was the populariFation and then persistence of a )romantic conception of authorship%) 8 great

deal of recent scholarship has been de!oted to the eploration of this theme% n5=$n brief, the

story goes as follows: Until the eighteenth century, neither popular nor elite culture in Europe or
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Lorth 8merican placed a high !alue on the indi!idual artist or author% &radition, skill, and

connection with the past were more important than originality%n5@&he con!ergence of se!eral

forces 1-omanticism, the political theory of possessi!e indi!idualism, the self*interest of English

book publishers, the scheming of rench monarchists, etc%2 precipitated a widespread repudiation

of this attitude toward art in fa!or of a celebration of indi!idual artistic genius% +ordsworth

captured the new ideal:

Benius is the introduction of a new element into the intellectual uni!erse: or, if

that be not allowed, it is the application of powers to ob>ects on which they had

not before been eercised, or the employment of them in such a manner as to

produce effects hitherto unknown% n59

3opyright law in Europe and the United States grew out of ** and to some etent helped

populariFe ** this romantic !ision% 3ombined with the general labor*desert theory 1discussed

abo!e2, it helped support the notion that an artist deser!es to own his creations% 8nd, as eter

IasFi has shown, it helped shape myriad specific doctrines in copyright law ** usually 1though not

in!ariably2 in a fashion that epanded the entitlements of copyright owners% 8 few eamples: the

elaboration of a generous conception of a copyrighted )work) and a concomitant epansion of

the rights of copyright owners the etension of copyright protection to photographs and the

curious way in which the )work*for*hire) doctrine has e!ol!ed in the United States% n5ect as in!enti!e genius, as

embodied in Geonardo de Kinci0s work,) amplified by the )Enlightenment ele!ation of scientific

geniuses such as /escartes, GeibnitF, and Lewton,) the glowing image of the in!entor was

already well established in +estern culture when 8merican patent law began to take shape% n5?

$n the United States, the attracti!eness and importance of this image was reinforced by at least

three cultural forces: the frontier ethic, which en!isions man as pitted against nature, harnessing

it through ingenuity as much as through force n56the associated )pastoral ideal,) celebrating the

transformation of the wilderness into the garden n?7and the premium placed on social mobility,

from which standpoint in!enti!eness is seen as an important way in which a talented youth can

achie!e wealth and fame% n?4&he net result is the re!erence with which 8mericans ha!e treated

** and continue to treat ** our ma>or in!entors: &homas Edison, 8leander Braham Aell, the

+right Arothers, Aill Bates, etc%

&he impact of this imagery on patent law has been enormous% Lot always has it operated to

increase the a!ailability of patents% or eample, the establishment and sometimes se!ere

application of the requirement that, to be patentable, an in!ention must be )nonob!ious) to a
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18/42

person ha!ing ordinary skill in the pertinent art n?=is plainly traceable to the heroic image of the

in!entor% +hat we wish to reward are )flashes of creati!e genius,) n?@not mere works of

craftsmanship% &he net effect of this orientation has been to constrict rather than to epand the

Fone of creations co!ered by patents% n?9Aut, in general, the high regard in which in!entors

ha!e been held in the United States has worked to support and epand the patent system%

Gike the romantic ideal of authorship, the image of the in!entor has pro!ed distressingly durable%

or eample, Neith 8oki obser!es that the debate o!er the patenting of /L8 fragments from the

Human Benome ro>ect was permeated with heroic imagery 1researchers analogiFed to Gewis O

3lark the pro>ect as a whole likened to the search for the Holy Brail, etc%2 n?ect is a prime eample2 ** to which the

image of the lone genius seems singularly inapt%

-.

&he two forces >ust re!iewed ** economic needs and ideological pressures ** ha!e been

reinforced in the United States by a recurring political dynamic% &he ad!ocates of increased

intellectual property protection ha!e consisted, for the most part, of creators, their surrogates

1publishers, mo!ie studios, etc%2, businesses interested in protecting their trademarks, patent

portfolios, or trade secrets, and celebrities eager to capitaliFe on their reputations% .ost ha!e had

strong financial interests in statutory reform that would protect them against nonpermissi!e use

of their )property%) &he interests of persons who would benefit from reduced intellectual*

property protection, by contrast, ha!e tended to be more diluted% &he largest and most important

such group consists of consumers ** each of whom typically has had only a small stake in the
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content of the pertinent laws% &he result is that lobbying efforts ha!e repeatedly been biased in

fa!or of the epansion of intellectual property% Enthusiasts ha!e made themsel!es heard, while

skeptics ha!e been largely silent%

&here are many eamples of this dynamic in the course of 8merican history% 8 quaint but

perhaps important early instance in!ol!es the efforts of Iohn itch, one of the persons who

claimed to ha!e in!ented the steamboat, to obtain patent protection for his in!ention% /uring the

week of 8ugust =7, 45?5, itch in!ited at least three 1and perhaps many more n?2 members of

the 3onstitutional 3on!ention to see a demonstration 1and perhaps to ride uponn?52 his

in!ention% +hat eactly was discussed during this demonstration we will ne!er know, but the

chances are good that he pressed on the delegates the need for firmer, national patent laws%

itch0s timing was either shrewd or fortuitous% ;n 8ugust 4?, the first draft of what ultimately

became the intellectual*property clause had first been presented to the delegates% n??Ay

September


20/42

among representati!es of authors, composers, publishers, music publishers, and educational

institutions%) n67Similar compromises pro!ided the content for )the statute0s treatment of cable

tele!ision, library photocopying, phonorecord publishing, >ukebo operation, and the

manufacturing clause%) n64&his is not to suggest that the parties to these negotiations were

always in accord% ;n the contrary, the )affected interests) often disagreed sharply, and many of

the compromises were achie!ed only after protracted discussions and much ca>olery by the

pertinent 3ongressional committees%n6=&he point, rather, is that the negotiations pri!ileged

groups with interests sufficiently strong and concentrated to ha!e formal representati!es% Kery

rarely was the public ** the consumers of intellectual products ** represented in any way% 8nd

3ongress itself ** whose >ob, one might think, is precisely to protect the public0s interest ** failed

to do so%

&he eamples could be multiplied, n6@but the general proposition is clear enough: &he sharply

different densities of the )interests) on opposite sides of intellectual*property issues, combined

with the important role played by organiFed interest groups in 8merican politics, means that,

more often than not, the proponents of epanded entitlements will win out%

.

&he fourth and final force that has contributed to the growth of intellectual*property rights

consists of a gradual shift in the terminology used by lawyers to describe and discuss those rights

** in a word, the )propertiFation) of the field% $n the eighteenth century, lawyers and politicians

were more likely to refer to patents and copyrights as )monopolies) than they were to refer to

them as forms of )property%) &he popularity of the former term deri!ed partly from the historical

origins of patent law: $n England, patents in the modern sense originated in section of the 4=@


21/42

Statute on .onopolies, which both described patents as )monopolies) and eempted them from

the general ban on royal grants of such rights%n69Aut the currency of the term also deri!ed

partly from ** and helped to reinforce ** a substanti!e position: like other )monopolies,) patents

and copyrights were dangerous de!ices that should be deployed only when absolutely necessary

to ad!ance some clear public interest% &homas Iefferson was the most prominent adherent of this

!iew, but many others shared his attitude to !arying degrees% n6ustified on the basis of the need to protect

innocent sellers against )fraud%) n6$n other words, the law in this field was understood to be a

branch of 1what was gradually coming to be called2 tort law,n65not property law% $n the 4?96

case ofmoskeag Manufacturing Company &! $pear, a sharply different language appears: )the

doctrine of an eclusi!e property in trade*marks has pre!ailed from the time of the year books%)

n6?&his new conception did not immediately sweep the field for many years, tort and property

concepts coeisted uneasily in the many subdi!isions of the law of trademarks and unfair

competition% Aut slowly, property discourse took precedence% n66

$n the early twentieth century, an influential group of commentators lent their aid to this trend%

Ged by rank Schechter, these scholars argued that the true basis of trademark protection was a

property interest in the mark itself 1or in the goodwill of which the mark was a !ehicle2, and that

the law should recogniFe and enforce that property right more fully than it already did%n477
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22/42

;li!er +endell Holmes and a few like*minded scholars disagreed, but they were clearly in the

minority%n474

raming arguments in terms of property rights became increasingly common in other doctrinal

fields as well% or eample, in the 46=4 case of)isher &! $tar, the Lew Mork 3ourt of 8ppeals

ruled that the comic*strip characters, .utt and Ieff, could not be used by the defendant

newspaper without the permission of the creator of the characters%n47=&he court founded its

>udgment on the general proposition: )8ny ci!il right not unlawful in itself nor against public

policy, that has acquired a pecuniary !alue becomes a property right that is entitled to protection

as such%) [email protected] recently a federal district court in Lew Mork held that the digital sampling

by a rap artist of a small portion of the classic song, )8lone 8gain, Laturally,) constituted

copyright infringement% &he court opened its opinion >ustifying this outcome with the statement:

)0&hou shalt not steal0 has been an admonition followed since the dawn of ci!iliFation%) n479

8nother, more general manifestation of the same trend has been the growing power of the phrase

)intellectual property%) Aefore the Second +orld +ar, use of the phrase as shorthand for

copyrights, patents, trademarks, and related entitlements was rare% Since that time, it has become

steadily more common% n47


23/42

&here was once a theory that the law of trade marks and tradenames was an

attempt to protect the consumer against the )passing off) of inferior goods under

misleading labels% $ncreasingly the courts ha!e departed from any such theory and

ha!e come to !iew this branch of law as a protection of property rights in di!ers

economically !aluable sale de!ices% $n practice, in>uncti!e relief is being etended

today to realms where no actual danger of confusion to the consumer is present,

and this etension has been !igorously supported and encouraged by leading

writers in the field% 3oncei!ably this etension might be >ustified by a

demonstration that pri!ately controlled sales de!ices ser!e as a psychologic base

for the power of business monopolies, and that such monopolies are socially

!aluable in modern ci!iliFation% Aut no such line of argument has e!er been put

forward by courts or scholars ad!ocating increased legal protection of trade

names and similar de!ices% % % % 3ourts and scholars, therefore, ha!e taken refuge

in a !icious circle to which no ob!iously etra*legal facts can gain admittance%

&he current legal arguments runs: ;ne who by the ingenuity of his ad!ertising or

the quality of his product has induced consumer responsi!eness to a particular

name, symbol, form of packaging, etc%, has thereby created a thing of !alue, a

thing of !alue is property the creator of property is entitled to protection against

third parties who seek to depri!e him of his property% % % % &he !icious circle

inherent in this reasoning is plain% $t purports to base legal protection upon

economic !alue, when, as a matter of actual fact, the economic !alue of a sales

de!ice depends upon the etent to which it will be legally protected% % % % &he


24/42

circularity of legal reasoning in the whole field of unfair competition is !eiled by

the )thingification) of property% n47

-egrettably, the pleas by 3ohen and a few others that >udges >ettison the concept of )property)

and frankly confront the public policy implications of protecting certain kinds of information fell

largely on deaf ears% &he )propertiFation) of the field continued ** and is now well*nigh

complete%

III.

&he !arious circumstances and forces that ha!e contributed to the proliferation of intellectual*

property rights ha!e reinforced one another% Here are a few eamples of this dynamic:

&he emergence during the early twentieth century of the 8merican film industry soon ga!e rise

to a shrewd and well*funded trade organiFation, the .otion icture 8ssociation of 8merica% n475

$n amicus briefs in important cases, in lobbying before 3ongress, and in its statements to the

public, the .88 has consistently ad!ocated strong protection of intellectual*property rights%

n47?$n framing its presentations, the association has capitaliFed on lawmakers0 recepti!ity to the

labor*desert theory as well as their awareness of the position of the United States as the world0s

largest producer of films% n476&his strategy has been highly effecti!e with remarkable

frequency, the positions the association has supported ha!e pre!ailed% n447ower begets power,

of course% &hese doctrinal reforms ha!e further strengthened the industry, lending the .88

e!en more authority%


25/42

&he recently adopted federal anti*dilution statute, which shields )famous) trademarks from

acti!ities that )tarnish,) )disparage,) or )blur) them, grew out of a similar intersection of forces%

.anufacturers of products sold under famous labels complained to 3ongress that the protection

they en>oyed from state anti*dilution statutes was une!en too often, they insisted, manufacturers

of unrelated products were able to )freeride) on the reputations of famous brands by using

confusingly similar marks% n444$t should be unlawful, they insisted, to manufacture )/U;L&

shoes, AU$3N aspirin, CorD N;/8N pianos%) n44=+hy" $f consumers are not misled

concerning the source of the products, why eactly is it important to prohibit such acti!ities" &he

manufacturers offered two reasons: 142 they had in!ested time and effort in culti!ating these

famous marks and thus deser!ed legal protection and 1=2 other countries already had such

prohibitions and it was important that the United States not lag behind any nation in the strength

of its intellectual*property protections% $n the absence of any organiFed resistance from

consumers, these arguments pre!ailed% n44@$n short, the combination of a strong interest group,

largely unopposed in the lobbying process, able to draw effecti!ely upon the labor*desert theory

and the presumpti!e legitimacy of its members0 )property) rights, secured yet another etension

of the law%

&he ubiquity of such synergy means that de!eloping a strategy for halting the trend described in

this article will be difficult% Lot impossible% &he fate of the )+hite aper) shows that it is

possible at least to slow the growth of intellectual property rights% -eleased in 466< by resident

3linton0s $nformation $nfrastructure &ask orce, the +hite aper recommended a !ariety of

ad>ustments of copyright law, all designed to increase the ability of copyright owners to control

uses of their works on the internet% n449&hose recommendations were quickly embodied in

proposed legislation, which, in the absence of organiFed opposition, initially seemed assured of
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26/42

passage% &o the surprise of many obser!ers, the legislati!e initiati!e failed% 3rucial to that failure

was a publicity and lobbying campaign waged by a miscellaneous group of scholars, educators,

and public*interest acti!ists% n44


27/42

following grounds: )8lthough the norms of sports enthusiasts might be offended, sports is now

big business, and big business demands this protection% Entire industries eist to sell and promote

goods and ser!ices at sporting e!ents and for use by sports participants% layers in this !ast

market may benefit from the efficiency of fied property rights in the fuel that dri!es these

market transactions% 8 key element of that fuel is the sports mo!es themsel!es, and patents,

copyrights and trademarks may pro!ide the best tools for securing those rights%)not e!eryone is

con!inced% See, e%g%, .arch +alsh, )atently -idiculous, Some Say eople /unk Aasketballs%

eople Gift Aoes% Should the atent ;ffice rotect &heir 0$n!entions0")+egal Times18ugust 46,

4662, S@=%

/1See 3opyright 8ct of 4567, ch% 4


28/42

/)8Aefore 4667, architectural works were not shielded by copyright law% 8rchitectural plans

were protected, but only in the narrow sense that they could not be copied without permission% $f

a builder lawfully obtained a set of blueprints for a building 1or determined how to build it

without blueprints2, he was free to build an identical structure% 8 4667 statute 1catalyFed by the

8merican ratification of the Aerne 3on!ention2 etended copyright protection to )the design of a

building as embodied in any tangible medium of epression) and made clear that the building

itself constituted such a )medium of pression%) &he upshot is that, as long as a building contains

original design elements that are not functionally required, its )o!erall shape) may not be

imitated without permission% 8dmirers may photograph, draw, or paint the building 1as long as it

is )!isible from a public place)2 but cannot build an identical structure or e!en 1it seems2 a scale

model of it%

/))See /onald S% 3hisum,Patents 1466=2, 4:4?7ff CcheckD%

/)0See/0 parte +atimer, 4??6 3ommn% /ec% 4=@ 14??62%

/)1@< U%S%3% secs% 44*49%

/)2lant Kariety rotection 8ct, 5 U%S%3% RR =@=4*=


29/42

/)7See Edward elsenthal, ).edical atents &rigger /ebate 8mong /octors,) 1all $treet

(ournal, 8ug% 44, 4669, at A4, A%

/)*See Ioel Barris, )&he 3ase for atenting .edical rocedures,) ==merican (ournal of +aw

and Medicine14662: ?


30/42

)contributory patent infringement) ** which has had the effect of significantly epanding the set

of persons who will be deemed infringers%

/0


31/42

/11See 8ndrea .% Bauthier, )&he E!olution of the 3oncept of roperty in 8merican &rademark

Gaw) 1unpublished paper 46672% 8s Bauthier obser!es, the first 8merican case to in!oke this

principle, Thomson &! 1inchester, did not use the word )trademark,) relying instead on the

general tort of fraud% @ .ass% 146 ick%2 =49 1Sup% 3t% 4?@52% Lot until the 4?97s did 8merican

>udges 1relying partly on earlier English cases2 recogniFe a distinct cause of action for

)trademark) infringement% See, e%g%, Taylor &! Carpenter, 44 aige 3h% =6= 1L%M% 3h% 4?992%

/12See)etridge &! 1ells, 9 8bb% r% 499 1L%M% Super% 3t% 4?


32/42

/2)&his restriction was tempered, howe!er, by two eceptions: a ri!al could not use an

identical or similar mark in an area in which the original trademark owner had already

established a reputation 1e%g%, through media co!erage2 and could not deliberately seek to take

ad!antage of the original owner0s good will%

/204< U%S%3% R47


33/42

/2*1hite &! $amsung /lecs! m!* Inc%, 654 %=d 4@6< 16th 3ir% 466=2%

/


34/42

/


35/42

greatly depend on the Efforts of learned and ingenious ersons in the !arious 8rts and Sciences:

8s the principal Encouragement such ersons can ha!e to make great and beneficial Eertions of

this Lature must eist in the legal Security of the ruits of their Study and $ndustry to

themsel!es and as such Security is one of the natural -ights of all .en, there being no roperty

more peculiarly a .an0s own than that which is produced by the Gabour of his .ind%) Ibid%, 449%

/4


36/42

/;8See ibid%

/;)&he quotation is from Ierome rank0s famous opinion inlfred .ell : Co! &! Catalda )ine

rts* Inc%, 464 %=d 66 1=d 3ir% 46udicial decision on this issue is.leistein &!

onaldson+ithographing Co%, 4?? U%S% =@6 1467@2%

/;0See, e%g%, .artha +oodmansee, &he Benius and the 3opyright: Economic and Gegal

3onditions of the Emergence of the )8uthor,)/ighteenth-Century $tudies45 146?92: 9=


37/42

/;4See, e%g%, IasFi, );n the 8uthor Effect,) supra note , @77*74, @7*44 1showing the influence

of this ideal on the opinions in)eistand,ogers &! Boon2%

/;;See IasFi, supra note , 96*


38/42

/7ournal, itch suggests that nearly all of the delegates attended the demonstration%

/7;8ccounts differ concerning how many, if any, of the delegates actually rode on the boat%

/77&he tet of that first draft is set forth in note , supra%

/7*&he incident and its implications are carefully discussed in +alterscheid, supra note , pp%

94*9@%

/*8Iessica /% Gitman, )3opyright, 3ompromise, 8nd Gegislati!e History,) Cornell +! ,e&% 5=

146?52: ?


39/42

/*4See Bauthier, supra note , 6*4


40/42

/)82rand Upright Music +td! &! 1arner .rothers* 5?7 %Supp% 4?= 1S%/%L%M% 46642%

/)8


41/42

/)))See, for eample, the statement of Iames N% Aaughman, 8ssistant Beneral 3ounsel of

3ampbell Soup 3o%, in the subcommittee hearings on the bill% .adrid rotocol $mplementation

8ct and ederal &rademark /ilution 8ct of 466n

Intellectual Property ,ights4 Intellectual Property nd The %ational Information Infrastructure

1466


42/42

@?, Lo% 4=, p% 46 )$ndustry +arns ;f laws $n L$$ Aill,)Information : Interacti&e $er&ices

,eport1/ecember 4, 466

fisher notes dec 2012

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