Intellectual Property Scholars Research Articles

Pull a Robot out of the Hat: Should Works Created by Artificial Intelligence Be Protected by Copyright Law?

What happens when computers start doing tasks that have thus far only been performed by humans? For decades, AI has vibrated conversation amongst Intellectual Property Scholars. Whilst the conversation started as predictions for its future, understanding and regulating works created by Artificial Intelligence is increasingly a pressing issue. Painting is inherently a human ability, at least it was until now. Computers are now able to mimic the necessary emotions, experience and creativity necessary to produce paintings, indistinguishable from art made by humans. But is this enough to warrant copyright protection? Should the current copyright regimes protect works created by Artificial Intelligence?

The Evident Space in Canadian Intellectual Property Scholarship for Indigenous Knowledge and Knowledge-Keeping Methodologies

The Evident Space in Canadian Intellectual Property Scholarship for Indigenous Knowledge and Knowledge-Keeping Methodologies

Old Law, New Tech, and Citizen-Created Hashtags: #BlackLivesMatter and the Case for Provisional Hashtag Marks

Using #BlackLivesMatter as a case study, this research documents the tensions and harms associated with trademarking online social movement hashtags. Grounded in the work of critical race theory and intellectual property scholars, this study analyzes the inconsistencies in the U.S. Patent and Trademark Office application practice. The contradictions signal a limited or “mis”understanding of the utility of citizen-created hashtags and online social movement slogans. We propose a provisional networked trademark that would grant limited protection to social movements to show that their marks demonstrate the kind of secondary meaning required for a traditional trademark.

Bridging Race + IP: The Challenges and Potential of Utilizing Transdisciplinary Methods to Undo the Unbearable Whiteness of Intellectual Property

In this book chapter, we engage the storytelling methodology that Derrick Bell, Richard Delgado and other critical race theorists use to explore the concepts of interdisciplinarity and intersectionality and take up critical race theory, ethnic studies, and race studies as potential lenses for inquiry in this space. In so doing, we suggest that the law & economics frame which predominates in doctrinal intellectual property scholarship is insufficient to the task of rendering transparent the racial investments in intellectual property law. Our aim is to suggest ways scholars interested in the field might go about framing research questions, structuring research plans, and engaging existing work in the field.

The Case Against Tax Subsidies in Innovation Policy

Until recently, intellectual property (IP) scholars agreed that patents were the prime innovation tool to aggregate decentralized information. This case for the property approach, which argues patents are appropriate when information about possible inventions and the social value of inventions are hidden, is now also under pressure in the literature. IP scholars argue that tax subsidies for firms that invest in research and development (R&D) replicate many of the merits of the patent system under conditions of asymmetric information. Based on developments in institutional economics, this Article shows that tax subsidies are not market-set incentives and are not optimal tools for aggregating decentralized information. Tax subsidies target specific investments ex-ante in relation to the market process when there is little information on the costs of specific projects or their social value. Governments lack the knowledge required to decide which projects to support and to calibrate the subsidies according to their social value. Comparatively, a patent system is better equipped for the decentralized nature of information. Moreover, it relies on entrepreneurs and inventors to decide which new projects to pursue and on consumers within the marketplace to evaluate the value of these innovations. Based on public choice theory, the Article also argues tax subsidies for innovation are particularly vulnerable to rent-seeking, leading tax dollars to be captured by the politically powerful—not by disruptive newcomers. From an institutional perspective, a more sensible innovation policy lies in simplifying, stabilizing, and generalizing the rules of property and contract that set the market process in motion. This is therefore the first article, amid growing scholarly consensus concerning subsidies as the new innovation tool, to present both a full-blown critique and a radical alternative. In contrast to contemporary innovation scholarship, which is often animated by presumptions of perfect information and benevolent policymakers, this Article demonstrates the superiority of the property approach under imperfect conditions.

Justice in Intellectual Property

Intellectual property (IP) rights represent an anomaly within a free market economic system. IP rights, that is, necessarily constrain the actions of individuals within the market. In response to this anomaly, IP scholars have offered various justifications for the application of such supposed constraints within a free market economy. Chief among these justifications is the widespread appeal to utilitarianism via incentivization. Yet, it is not exactly clear that this incentivization is actually producing the benefits required for the utilitarian justification. Rather than abandoning the IP system, however, some have simply suggested an alternative justification. These scholars argue that IP rights are actual, moral rights that deserve protection as moral rights. Further, scholars argue that any distributional inequality generated by the IP system are nonetheless justified under Rawls’s theory of justice. I argue, however, that Rawls’s theory of justice does cannot “justify” a selective, IP regime.

Regulation and Innovation: Approaching Market Failure from Both Sides

Across markets and disciplines, regulation is often claimed to be the enemy of socially desirable innovation because of factors including innovation’s unpredictability and regulation’s compliance costs. In this essay, we bring an intellectual property scholars’ perspective to bear on the question of regulation’s impact on innovation. We offer a novel, yet intuitive analytical framework that takes both market demand failures and failures of supplier appropriability into account. Traditionally, regulation seeks to mitigate market failures that create deviations between the demand portfolio perceived by suppliers and the socially optimal demand portfolio. Studies of the interplay between regulation and innovation have mostly taken this perspective, considering the impact of various regulatory transaction and compliance costs on innovation. Intellectual property law and competition law target a different sort of problem, where markets fail to supply products and services at competitive prices or to undertake innovative activities because of supplier appropriability issues. We argue that these demand misalignment and appropriability failures, though analytically distinct and commonly treated separately, work in parallel and in combination to determine the extent to which the market’s portfolio of innovative activity is socially sub-optimal. Discussing the relationship between regulation and innovation in terms of demand misalignment, appropriability failures, and the mutual influence they bear on each other, opens up a new way of understanding this years-long debate. The analysis shows the futility of sweeping general pronouncements about the relationship between regulation and innovation and highlights the crucial role of regulatory design.

Approaching intellectual property scholarship differently: A qualitative research review and agenda

AbstractSocial and policy interest in intellectual property, and patents, in particular, is growing. This is reflected in the rise of scholarly inquiry on the topic beyond the legal community, including among social scientists and humanists. In this article, I advocate for expanding qualitative research on patents and intellectual property related to innovation, arguing that it is essential for political and policy discussion. I review existing work and suggest avenues forward along four lines of inquiry: the political economy of intellectual property, the relationship between patents and innovation, the broader implications of intellectual property for social and political orders, and public participation in intellectual property law and policy. Throughout, I use the emerging field of precision medicine—and specifically, efforts to create intellectual property policies that promote open science and innovation—to explore how qualitative methodologies can help us understand the context and consequences of intellectual property law and policy and, ultimately, make better decisions to govern innovation.

Google LLC v. Oracle America, Inc. - Brief of 72 Intellectual Property Scholars as Amici Curiae in Support of Petitioner

Until the Court of Appeals for the Federal Circuit’s 2014 Oracle decision, software developers felt free to compete and innovate in the development of compatible software because major decisions from the Courts of Appeals for the Second and Ninth Circuits had established that copyright law does not protect software interfaces that enable the development of compatible programs. These cases and their progeny recognized that unlike conventional literary works, computer programs are highly utilitarian. They embody many copyright-unprotectable elements, such as compatibility-enabling interfaces, that must be filtered out before making infringement determinations. Programs consequently receive a relatively “thin” scope of copyright protection to ensure that subsequent programmers can freely reuse unprotectable elements in developing their own programs. As a matter of copyright law, the pro-compatibility decisions are sound as they facilitate fair competition by those who write new code while preserving copyright’s role in protecting software from piracy and other wrongful appropriations. The Federal Circuit’s 2014 Oracle decision was a radical departure from these precedents and directly contradicts their rulings. It adopted an unduly narrow view of this Court’s ruling in Baker v. Selden, 101 U.S. 99 (1880), which excluded methods, systems, and their constituent elements from copyright’s scope. It ignored Congress’ codification of the method/system exclusions. It misconstrued the case law properly interpreting those exclusions in relation to program interfaces. The Federal Circuit also misapplied the merger doctrine and case law persuasively holding that interfaces that enable compatibility are unprotectable by copyright law. Because of the Federal Circuit’s numerous errors in analyzing Google’s copyrightability defense, this Court should overturn its ruling. Programmers should have to write their own implementation code, as Google did, but interfaces that enable compatibility should be free from copyright restrictions.

The Roots of Sexual Privacy: Warren and Brandeis & the Privacy of Intimate Life

It is lovely to be here, especially because, as a privacy scholar, I am a bit of an interloper with the IP crowd. Whenever anyone mentions IP, I think they mean “information privacy.” So, in this group of intellectual property scholars, I am surely an outlier as well. It is exciting to find a kindred spirit in Jennifer Rothman’s book, which conceptualizes privacy as centrally involved with the formation of identity. What I am going to do is circle back to tell the story of Samuel Warren and Louis Brandeis, what they were doing in their famous law review article, how they broke new ground, and some of the history around the project and the writers themselves. Then, I am going to talk about sexual privacy, the focus on my current work.

Google LLC v. Oracle America, Inc., Brief of 65 Intellectual Property Scholars As Amici Curiae in Support of Petitioner

The Federal Circuit’s copyrightability ruling in Oracle has deepened splits in circuit court interpretations of several major copyright doctrines as applied to computer programs. This brief makes three principal points. First, the Federal Circuit’s merger analysis is in conflict with this Court’s ruling in Baker v. Selden, 101 U.S. 99 (1880), and decisions by the First, Second, Fifth, Sixth, and Eleventh Circuits. Second, the Federal Circuit’s interpretation of the scope of copyright protection available to computer programs is at odds with Baker and decisions of the First, Second, Tenth, and Eleventh Circuits. Third, the Federal Circuit’s interpretation of the words and short phrases doctrine cannot be reconciled with holdings of the Third and Sixth Circuits. The merger doctrine holds that expressions in works of authorship are unprotectable by copyright law when, as a practical matter, there is only a limited number of ways to express an idea, fact, or function. When ideas, facts, or functions, in effect, “merge” with expression, copyright protection will be withheld from the merged elements. The merger doctrine fosters socially beneficial competition and ongoing innovation as well as promoting the ongoing progress of science and useful arts, as the Constitution commands. U.S. Const. art. I, § 8, cl. 8. The Federal Circuit’s copyrightability ruling conflicts with Baker in three respects: first, because the Federal Circuit concluded that merger can only be found if a first author had no alternative ways to express an idea when creating his work; second, because it held that constraints on a second comer’s design choices are never relevant to merger; and third, because it ruled that merger is only a defense to infringement, and never raises a copyrightability issue. Post-Baker cases from the First, Second, Fifth, Sixth, and Eleventh Circuits have conceptualized and applied the merger doctrine more broadly than the Federal Circuit. These idea/expression, fact/expression, and function/expression merger cases have resulted in uncopyrightability rulings, which contradict the Federal Circuit’s holding on merger. Beyond merger, the Federal Circuit’s interpretation of the scope of copyright protection available to software innovations conflicts with the rulings of other circuits in four respects. First, the Federal Circuit’s interpretation of the exclusion of methods and systems from copyright’s scope under 17 U.S.C. § 102(b) is contrary to the First Circuit’s interpretation in Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 516 U.S. 233 (1996). Second, several circuit courts have ruled in favor of compatibility defenses in software copyright cases. Only the Third and Federal Circuits have rejected them. Third, the Federal Circuit’s conception of “structure, sequence, and organization” (SSO) of programs as protectable expression as long as it embodies a modicum of creativity conflicts with the Second Circuit’s landmark decision, Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). Altai rejected the conception of SSO as determinative of protectable expression. Id. at 706. Fourth, the Federal Circuit’s assertion that copyright and utility patents can provide overlapping protection to program SSO is in conflict with Baker as well as Tenth and Eleventh Circuit decisions. There is, moreover, conflict among the circuits concerning the protectability of “words and short phrases.” The District Court denied Oracle’s claim in part based on its view that names and short phrases are not copyrightable, but the Federal Circuit held that words and short phrases, such as the names of individual Java declarations, could, if original, be eligible for copyright protection. However, the Third and Sixth Circuits have denied similar claims in cases involving identifiers such as names and numbers. Granting the Petition would enable this Court to resolve this split as well.

How patents became documents, or dreaming of technoscientific order, 1895-1937

PurposeThe purpose of this paper is to show how the documentation movement associated with the utopian thinkers Paul Otlet and Henri La Fontaine relied on patent offices as well as the documents most closely associated with this institutional setting – the patents themselves – as central to the formation of the document category. The main argument is that patents not only were subjected to and helped construct, but also in fact engineered the development of technoscientific order during 1895–1937.Design/methodology/approachThe paper draws on an interdisciplinary approach to intellectual property, document theory and insights from media archeology. Focused on the historical period 1895–1937, this study allows for an analysis that encapsulates and accounts for change in a number of comparative areas, moving from bibliography to documentation and from scientific to technoscientific order. Primary sources include Paul Otlet’s own writings, relevant contemporary sources from the French documentation movement and theCongrès Mondial de la documentation universellein 1937.FindingsBy understanding patent offices and patents as main drivers behind those processes of sorting and classification that constitute technoscientific order, this explorative paper provides a new analytical framework for the study of intellectual property in relation to the history of information and documentation. It argues that the idea of the document may serve to rethink the role of the patent in technoscience, offering suggestions for new and underexplored venues of research in the nexus of several overlapping research fields, from law to information studies.Originality/valueDebates over the legitimacy and rationale of intellectual property have raged for many years without signs of abating. Universities, research centers, policy makers, editors and scholars, research funders, governments, libraries and archives all have things to say on the legitimacy of the patent system, its relation to innovation and the appropriate role of intellectual property in research and science, milieus that are of central importance in the knowledge-based economy. The value of this paper lies in proposing a new way to approach patents that could show a way out of the current analytical gridlock of either/or that for many years has earmarked the “openness-enclosure” dichotomy. The combination of intellectual property scholarship and documentation theory provides important new insight into the historical networks and processes by which patents and documents have consolidated and converged during the twentieth century.

“From PI to IP”: Litigation Response to Tort Reform

For helpful comments and input, the authors thank David Abrams, Alma Cohen, Allan Ferrel, Michael Frakes, Mark Lemley, Jonathan Masur, Michael Meurer, Michael Risch, Pam Samuelson, David Schwartz, Ted Sichelman, Charles Silver, Matthew Spitzer, Melissa Wasserman, Heidi Williams, prior anonymous reviewers, and participants in the 2012 Empirical Patent Law Conference sponsored by Cornell Law School and the University of Illinois College of Law, the 2012 Intellectual Property Scholars Conference, the University of Texas School of Law’s Drawing Board workshop, a conference in memory of Ted Eisenberg (Tel Aviv Univ, 2015), and Empirical Legal Studies Workshop (Tel Aviv Univ, 2015). The authors thank Melissa Bernstein, Ross MacDonald, Grace Matthews, and Jane O’Connell for research assistance. The first part of the title is in quotation marks because it was also the first part of the title for a 2005 news story in the journal IP Law & Business (Cohen 2005).

The Oral Contraceptive Inventions: A Short Essay on Patents, Law and Society

The ready availability of the oral contraceptive pill (the Pill) since the 1970s has been long acknowledged as substantially contributing to the empowerment of women and sexual liberation more generally. While patent law provided incentives for the Pill's development, criminal law initially created prohibitions upon its supply. Today, aside from its impacts upon gender equality, other inter-generational consequences might be seen to have arisen from the social revolution that the Pill helped to trigger. More esoterically, endowments from patent royalties arising from an improved version of the Pill continue to fund intellectual property scholarship.

Anti-Innovation Norms

Intellectual property (IP) scholars have recently turned their attention to social norms-informal rules that emerge from and are enforced by non-hierarchically organized social forces-as a promising way to spur innovation in communities as diverse as the fashion industry and the open source software movement. The narrative that has emerged celebrates social norms' ability to solve IP's free-rider problem without incurring IP's costs. But this account does not fully consider the dark side of social norms. In fact, certain social norms, when over-enforced, can create substantial barriers to the most socially beneficial creative pursuits. Because IP scholars have left unexplored how social can hinder innovation in this way, the harm they cause has gone unmitigated. This Article sheds light on the dark side of innovation norms. It coins the term norms to label these counterproductive social forces. Using the double lens of sociology and psychology, it gives a full theoretical account of three types of anti-innovation norms: research priority, methodology, and evaluation norms-all of which interfere with socially beneficial boundary-crossing innovation. Our elucidation of anti-innovation has both theoretical and policy implications. On the theory side, it suggests that IP scholars to date have been too focused on addressing the free-rider problem. This has caused them to overlook other barriers to innovation, like those posed by the set of anti-innovation we describe here. This focus on free-riding may also help explain why innovation and scholars have paid little attention to debates within the broader literature on law and social concerned with identifying situations in which social are welfare reducing. On the policy side, it points to innovation dilemmas that IP is not fully equipped to solve. While changes to the IP doctrines of attribution and fair use in copyright and nonobviousness in patent law can counteract anti-innovation at the margin, a comprehensive solution requires innovation scholars to broaden their vision beyond the IP toolkit. We take the first steps in this direction, proposing a number of interventions, including novel funding regimes and tax credits.

Irene Calboli and Srividhya Ragavan (eds.): Diversity in Intellectual Property – Identities, Interests, and Intersections

The terms diversity and intellectual property are rarely seen together. This unique book brings together a number of leading authors to discuss a range of topics relating to diversity and intellectual property. Since it is uncommon to see these topics linked as they have been here, it may not be immediately apparent to potential readers what they can expect from this collection or why they should read it. This terrific volume, edited by Irene Calboli and Sri Ragavan, contains essays that are both informative and thought provoking. This book will serve as an excellent resource for intellectual property scholars, policy makers and practitioners. As the first book to address intellectual property and diversity, this book is a significant contribution to the literature. This edited collection highlights the intersectionality of the different aspects of diversity in intellectual property. Calboli and Ragavan have started an important conversation about diversity in global intellectual property law. Hopefully, this timely conversation will continue.

Book Review: Irene Calboli and Srividhya Ragavan (Eds.) Diversity in Intellectual Property Identities, Interests, and Intersections

The terms diversity and intellectual property are rarely seen together. This unique book brings together a number of leading authors to discuss a range of topics relating to diversity and intellectual property. Since it is uncommon to see these topics linked as they have been here, it may not be immediately apparent to potential readers what they can expect from this collection or why they should read it. This terrific volume, edited by Irene Calboli and Sri Ragavan, contains essays that are both informative and thought provoking. This book will serve as an excellent resource for intellectual property scholars, policy makers and practitioners. As the first book to address intellectual property and diversity, this book is a significant contribution to the literature. This edited collection highlights the intersectionality of the different aspects of diversity in intellectual property. Calboli and Ragavan have started an important conversation about diversity in global intellectual property law. Hopefully, this timely conversation will continue.

How Fair Use Can Help Solve the Orphan Works Problem

Many works that libraries, archives, and historical societies would like to digitize are “orphan works,” that is, works for which the copyright holder either is unknown or cannot be located after a diligent search. Due to copyright risk if an owner later shows up, nonprofit libraries and similar institutions have been reluctant to digitize and make these works available, greatly limiting access to important cultural and historical information. While a legislative fix may soon be proposed, this Article argues that legislation is not necessary to enable some uses of orphan works by nonprofit libraries and archives. Instead, U.S. copyright law’s fair use doctrine, which allows certain unpermissioned uses of copyrighted works, provides a partial solution. Though it is an incomplete solution, fair use has some significant advantages over other approaches through which libraries and archives could make publicly beneficial uses of orphan works. Under fair use, there is no need to develop a licensing system, significantly reducing administrative and transactional costs, and eliminating socially wasteful license fees for works that are not on the market, and for which an owner is unlikely to exist. Second, fair use has the flexibility to accommodate change over time as libraries and archives discover the best ways to search for owners, preserve works, and make them available. Finally, allowing fair use of orphans by libraries and archives helps fulfill copyright’s critical purposes of promoting the dissemination of knowledge and supporting speech and free expression. © 2012 Jennifer M. Urban. † Assistant Clinical Professor of Law, University of California, Berkeley School of Law. The author gratefully acknowledges the many thoughtful ideas and helpful comments of Ty Alper, Roxanna Altholz, Michelle Anderson, Michael Donaldson, James Grimmelmann, David Hansen, Edward Lee, Mark Lemley, Saira Mohammed, Pamela Samuelson, Jason Schultz, Christopher Sprigman, and Karen Tani, participants in the Orphan Works & Mass Digitization: Obstacles & Opportunities conference [hereinafter Berkeley Orphan Works Conference], and participants in the 12th Annual Intellectual Property Scholars Conference. This Article is output of the Berkeley Digital Library Copyright Project, generously supported by funding from the Alfred P. Sloan Foundation. More information about the Berkeley Digital Library Project can be found at http://www.law.berkeley.edu/12040.htm. I especially thank Ana Enriquez for excellent research assistance. The thoughts contained in this Article represent my individual academic conclusions and opinions, and should not be attributed to any client I represent or the Samuelson Law, Technology & Public Policy Clinic, which I direct. In addition, the University of California, where I am a faculty member, is a defendant in the Authors Guild, Inc. v. HathiTrust suit; however, I do not represent, and in no way speak for, the University of California or any other party in the case. 1379-1430_URBAN_031013_FINAL (DO NOT DELETE) 3/10/2013 10:36 PM 1380 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 27:1379

Open Letter on Ethical Norms in Intellectual Property Scholarship

As scholars who write in intellectual property (“IP”), we write this letter with aspirations of reaching the highest ethical norms possible for our field. In particular, we have noted an influx of large contributions from corporate and private actors who have an economic stake in ongoing policy debates in the field. Some dollars come with strings attached, such as the ability to see or approve academic work prior to publication or limitations on the release of data. IP scholars who are also engaged in practice or advocacy must struggle to keep their academic and advocacy roles separate.Our goal is to bring attention to the dramatic changes that are occurring in the field, highlight the potential pitfalls, and suggest a set of ethical norms to which we will strive to adhere. We conclude this letter with a set of ethical norms to which a large number of IP academics have already subscribed. We welcome additional signatories to the principles expressed in this letter.

Economically Defeasible Rights to Facilitate Information Disclosure: The Hidden Wisdom of Pre-Awcpa Copyright

Intellectual property is most commonly viewed as a legal tool for generating incentives to create information-intensive goods, and debates over its justification usually center on the incentives/access tradeoff. However, a persistent counterargument in intellectual property scholarship is that something resembling today’s intellectual property can alternatively be justified on the basis of its ability to resolve Arrow’s information paradox and facilitate the transfer of information in bargained-for exchanges. This Article reveals a fundamental, and to-date unnoticed, conceptual flaw in this counterargument: the information paradox can only justify economically defeasible rights, e.g., rights that lose their economic value upon the public accessibility of a commercialized product, licensed by the information possessor, from which the information can be reverse engineered. Economically defeasible intellectual property presents a viable form of limited intellectual property in contexts in which little to no intellectual property is needed to ensure sufficient incentives to create information-intensive goods and full-term intellectual property rights are therefore not advisable under the incentives/access tradeoff.This article also presents a case study of an economically defeasible right: the copyright protection for architecture that was available before the Architectural Works Copyright Protection Act (AWCPA) of 1990. Under incentive-to-create theory, pre-AWCPA copyright is widely viewed as an odd copyright regime that lacks a solid justification because it protected original expression embodied in drawings but not the exact same original expression embodied in constructed buildings. Understanding pre-AWCPA copyright as a tailored right for resolving the information paradox reveals its hidden wisdom. The oddity of pre-AWCPA copyright is precisely its economically defeasible nature: the public could make “measured drawings” of buildings — i.e., reverse engineer them — without infringing copyright. Pre-AWCPA copyright provides just enough protection to resolve the information paradox, but no more, and it therefore minimizes the costs of intellectual property’s access restrictions in a field in which copyright-induced incentives are arguably not needed to foster the production of expressive works.