Misuse Doctrine Research Articles

From the abuse of Community (IP) law to the abuse of (intellectual) property rights: time for an EU patent misuse doctrine?

From the abuse of Community (IP) law to the abuse of (intellectual) property rights: time for an EU patent misuse doctrine?

Impact of Contract Constructions Containing Misuse In Conducting Perspective Legal Business of Pekanbaru City

Agreement with a defect of will, a misuse of undue influence, causing harm to one party, taking advantage of the circumstances of another, causing abused desires is not granted in a free state, resulting in an improper performance imbalance, the agreement may be canceled. The formulation of the problem in this study is how the position of a contract agreement that contains the existence of abuse of undue influence in the perspective of business law in Pekanbaru City. In line with the formulation of the problem, the research method used is a sociological law; this study was conducted with a field study in Pekanbaru City. The data analysis technique used is a juridical analysis, the object of which is the data of this research is the study of legal science based on the judge’s decision in its consideration to cancel the agreement of a contract containing abuse of undue influences. The result of this study that the agreement of a contract can be canceled if it contains elements of abuse of the situation, the reason for judge consideration in this case, is based on a sense of propriety and justice in society to uphold the rule of law, especially business law. The doctrine of state misuse is accepted as a justification for canceling the contract in consideration of the unbalancing of one party, and abusing the undue influences, so as not to be free. The conclusion that a treaty containing a defect in the will of abuse of undue influences becomes the judge’s judgment to cancel the agreement in the contract. Suggestion that misuse of state is expected to be a positive law and regulated in law, there by enriching the business law.

Comments on ALRC Discussion Paper 79, Copyright and the Digital Economy

We provide these comments in connection with the Australian Law Reform Commission’s ongoing study of copyright and the digital economy, and in particular its request for comments on the recommendations put forth in its Discussion Paper 79 (June 2013). We focus on US law, and how the US experience bears on the possibility of an open-ended uncompensated type exception in Australia, and other related issues. The fair use doctrine in the US provides great flexibility, but that flexibility in many instances comes at the cost of certainty and predictability. We are not suggesting that reasonable judgments cannot be made about whether a particular use is fair; certainly experienced practitioners make such judgments daily. But fair use decisions are often complicated, and advice frequently depends as much on the amount of risk the user is willing to undertake as it does on the evaluation of the substantive law. Our point is not that fair use caselaw absolutely resists synthesis, but rather that the synthesis most successfully occurs at a high level of abstraction; individual actors, by contrast, need to know whether their particular plans will run afoul of the law. Legal literature has seen many attempts over the years to simplify or clarify fair use, both descriptive and prescriptive. But it would be premature to conclude that the law of fair use is or soon will be coherent and predictable. Guidelines could theoretically help in interpreting fair use, but the weight and value of guidelines depends on how they were developed.The ALRC Discussion Paper’s proposals could result in a broader fair use doctrine in Australia than in the US. Notably, fair use in Australia, as in the US, would exempt certain uses without countervailing compensation. But the proposed Australian version may embrace a greater range of commercial actors, thus altering the balance. The proposals include additional illustrative purposes; they would also permit commercial users to stand in the shoes of clients entitled to exceptions. The ALRC also proposes that contracts or contract provisions that attempt to bargain around library exceptions and certain fair use exceptions would be unenforceable. In the US, contracts concerning copyrighted materials are usually upheld. As a general rule, contract preemption does not serve to invalidate contract provisions that limit the exercise of copyright exceptions, and the doctrine of copyright misuse does so only in the most egregious of cases.Finally, in the US there is no exemption from anti-circumvention of technological access controls for such broad purposes as exercising fair or making noninfringing use. Certain narrow fair uses have been deemed exceptions pursuant to a triennial rulemaking conducted by the Copyright Office, but those exceptions must be revisited every three years.

From Abuse of Right to European Copyright Misuse: A New Doctrine for EU Copyright Law

The great expansion of EU copyright law has paved the way to several rightholders’ abusive or dysfunctional conducts, without providing adequate solutions to prevent or remedy them. The answer of EU sources is characterized by extreme fragmentation, with tools mostly borrowed from external bodies of law. Paradoxically, the doctrine of abuse of right has long been neglected as a potential solution, mainly due to its flaws – difficult evidence-taking and weak remedies - and its incompatibility with the discretionary nature of continental author’s rights. Yet, the notion emerges between the lines of several ECJ’s decisions, and finds its way from civil codes to copyright in a number of national courts’ precedents. Due to the paradigm shift towards a market-oriented and industry-based inspiration, EU copyright seems now open to admit the possibility of misuses.Starting from these premises, this article argues that a unitary doctrine of copyright misuse may constitute an effective balancing tool for most of the dysfunctional conducts that copyright law and other bodies of law are still unable to resolve. In addition, it may also act as regulatory paradigm to ensure greater certainty and transparency in the judicial development of key principles and rules of EU copyright law. To this end, the paper (a) proposes a four-prong-test of abusiveness, embedding criteria of proportionality and reasonableness inspired to the normative function(s) of exclusive rights; (b) offers new perspectives on potential remedies; and (c) shows selected examples of the positive impact of the doctrine on the systematization of the current copyright legislative framework.

From Abuse of Right to European Copyright Misuse: A New Doctrine for EU Copyright Law

The great expansion of EU copyright law has paved the way to several rightholders’ abusive or dysfunctional conducts, without providing adequate solutions to prevent or remedy them. The answer of EU sources is characterized by extreme fragmentation, with tools mostly borrowed from external bodies of law. Paradoxically, the doctrine of abuse of right has long been neglected as a potential solution, mainly due to its flaws – difficult evidence-taking and weak remedies - and its incompatibility with the discretionary nature of continental author’s rights. Yet, the notion emerges between the lines of several ECJ’s decisions, and finds its way from civil codes to copyright in a number of national courts’ precedents. Due to the paradigm shift towards a market-oriented and industry-based inspiration, EU copyright seems now open to admit the possibility of misuses.Starting from these premises, this article argues that a unitary doctrine of copyright misuse may constitute an effective balancing tool for most of the dysfunctional conducts that copyright law and other bodies of law are still unable to resolve. In addition, it may also act as regulatory paradigm to ensure greater certainty and transparency in the judicial development of key principles and rules of EU copyright law. To this end, the paper (a) proposes a four-prong-test of abusiveness, embedding criteria of proportionality and reasonableness inspired to the normative function(s) of exclusive rights; (b) offers new perspectives on potential remedies; and (c) shows selected examples of the positive impact of the doctrine on the systematization of the current copyright legislative framework.

A landmark at a turning point: Campbell and the use of privacy law to constrain media power

This article argues that the decision in Campbell can be seen as a response to long-term concerns about the abuse of media power. After outlining some of the key developments in debates about privacy law, the article considers the features that distinguish the media as powerful institutions. It will be argued that the focus on media power has shaped the doctrine of misuse of private information, for example in expanding the scope of the tort and focusing on the public interest as the main defence. The decision in Campbell arrived at a moment when the communications environment was about to change dramatically. Since Campbell, the use of social media and the opportunities to share user-generated content has given many people the capacity to bring private facts to a large audience. The article will consider whether the Campbell tort remains applicable in the case of non-powerful publishers and looks at the alternative ways to protect privacy.

A Three-Tiered Public Policy Approach to Copyright Misuse in the Context of Tying Arrangements

Over two decades since the copyright misuse doctrine was first recognized in Lasercomb America, Inc. v. Reynolds, a uniform approach for determining whether a specific behavior constitutes misuse still does not exist. Circuit courts have commonly applied two competing approaches to the misuse analysis. One approach centers on the public policy underlying copyrights; the other approach centers on antitrust principles. This Note explores relevant jurisprudence and elucidates the shortfalls of each approach. It then proposes a compromise that underscores the interplay between copyright and antitrust laws. The proposed resolution aims to provide a much-needed uniform misuse analysis that does not overlook the important policies underlying copyright law or disregard antitrust principles relevant in the context of tying arrangements.

IP Foreclosure & Antitrust Foreclosure

Professor Christina Bohannan’s IP Misuse as Foreclosure enlightens the debate over the patent misuse doctrine’s role in regulating intellectual property owners’ ever-expanding claims. Presently, courts scrutinize licensing restrictions under the antitrust laws only after determining that the IP holder has exceeded what the Federal Circuit has called the “exclusionary zone” of the IP right. Professor Bohannan wisely rejects this question-begging inquiry, explaining that “[e]very licensing agreement contains terms that are not express in the [IP] grant, and the beyond-the-scope test does not provide a meaningful way to determine which of these terms lies ‘within the scope’” To bring coherence to this area, Professor Bohannan would eschew the existing two-step test in favor of an exclusive focus on “the core IP values of promoting innovation and protecting access to the public domain.” Commenting on her piece, Professor Thomas Cotter points out that antitrust law and IP policy cannot be distinguished so easily. IP holders simultaneously possess both (1) a property right to foreclose competition; and (2) a privilege to compete in an open market. As Professor Cotter recognizes, antitrust law, no less than IP policy, seeks to mediate these rights and privileges. He suggests broadening antitrust doctrine, if necessary, rather than using IP policy to condemn licensing restrictions as misuse that antitrust doctrine would otherwise permit. The misuse problem, however, is more fundamental than either Professors Bohannan or Cotter suggest. IP policy and antitrust law seek precisely the same objectives — an optimal melding of a property-rights regime that insulates owners from competition, and a competitive regime in which everything that might constitute property is up for grabs. A coherent solution will not come from tweaking either IP or antitrust. Both already serve as syntheses of society’s dual commitment to property rights and competitive markets. Instead, the law must step back and focus directly on how one structures a legal regime that commits itself to these conflicting goals.Part I summarizes existing law and Professor Bohannan’s proposal. Part II explains that since IP policy and antitrust doctrine share common goals, her approach essentially replicates what modern courts do in misuse cases. Part III suggests a potentially more fruitful path.

Five Reforms for Copyright

US copyright law deserves credit for encouraging an outpouring of original expressive works, bequeathing us a rich cultural heritage. But the copyright regime has grown too big and too powerful. We need to pursue a new direction in copyright reform: toward freedom. We can best improve copyright by limiting its power, repairing its foundations, and opening up ways to escape it entirely. Specifically, we should strive to (1) reinstate the Founders’ Copyright Act, (2) withdraw the US from the Berne Convention, (3) develop misuse doctrine into an escape from copyright, (4) focus copyright policy on consumers’ costs, not producers’ profits, and (5) reconceive “IP” as “Intellectual Privilege.” Property is neither an accurate label for copyright nor one we have to embrace by default. We can more accurately label copyright a privilege—a statutory exception to common-law rights and obligations that vests its holder with special powers and immunities. Copyright’s statutory privileges come only at hazard to our natural and common-law rights. To preserve our freedoms, therefore, we must reform copyright.

IP Misuse and Innovation Harm

This essay, a short response to Christina Bohannan’s important recent article, IP Misuse as Foreclosure, 96 Iowa Law Review 475 (2011), expresses agreement with Professor Bohannan’s conclusions that merely equating misuse with certain violations of substantive antitrust law is probably unwise; that the “beyond the scope” rationale nevertheless is vague; and that misuse doctrine might provide a useful tool for penalizing assertions of IP rights (principally copyright rights) that would foreclose access to the public domain and thus impinge upon free speech. The essay nevertheless expresses caution over Professor Bohannan’s call for courts to apply misuse doctrine to combat harms to competition and innovation - what I refer to in the essay as “innovation harm” - in a manner that would depart from standard antitrust law, at least to the extent that she contemplates fairly widespread use of the doctrine in this fashion

US Federal Circuit narrows patent misuse doctrine as a defence to patent infringement

US Federal Circuit narrows patent misuse doctrine as a defence to patent infringement

IP Misuse as Foreclosure

It is both curious and deeply troubling that, in an age of intellectual property expansionism, the doctrine most explicitly concerned with limiting IP overreaching has no defensible basis in IP policy. “Misuse” relates to the IP holder’s use of licenses and other arrangements to obtain rights “beyond the scope” of a statutory IP grant, but the doctrine has not established adequate principles for identifying the practices that should be condemned. The misuse doctrine evolved in patent law and concerned the tying of patented and unpatented goods. Courts held that such tying violated federal patent policy by expanding the statutory monopoly to include a second product not covered by the patent claims. Since then, misuse has expanded to cover many other practices and also into copyright law, reaching to package licensing of related patented or copyrighted goods, restraints on a licensee’s ability to produce competing technologies, and requiring royalty payments beyond the expiration of the patent or copyright term. Much of the case law has embraced an antitrust standard for misuse, which is fairly coherent but is not faithful to core IP values of promoting innovation and protecting access to the public domain. These defects in misuse doctrine are particularly problematic given the nature and severity of the penalty. A finding of misuse renders the IP right unenforceable until the misuse is “purged.” One must therefore question whether the benefits of remedying misuse outweigh the social costs of foregone IP enforcement. This article argues that misuse doctrine has been shooting at the wrong targets. Many cases applying an antitrust standard for misuse emphasize market power in the primary (typically, patented) product as the key component. These decisions incorporate exaggerated concerns about “leverage” and avoid the issue that should be their focus, which is foreclosure of competing technologies or the public domain. Other decisions emphasize attempts to expand IP rights beyond their statutory scope; however, every license goes beyond literal IP scope, and the decisions provide no calculus for distinguishing permissible from impermissible expansion. This paper argues that if misuse is really to be used as an instrument of IP policy and is to be confined to those practices that are serious enough to warrant its severe remedy, misuse should be focused on foreclosure. That is, misuse should be found where the IP holder engages in a practice that unreasonably forecloses competition, future innovation or access to the public domain.

Beyond 'Essential Facilities': Innovation, Intellectual Property and Competition Policy Across the Atlantic

Beyond 'Essential Facilities': Innovation, Intellectual Property and Competition Policy Across the Atlantic

Patent rights and the free research

This article considers patent rights and the free research. As a case in point, it explores the stem cell research, patenting and licensing practice, including reach through license clauses targeting royalty revenue for future inventions. It compares various jurisdictions, focusing on the different approaches to research funding and patentability from Europe and the US. Sections 2 and 3 set up the economical considerations behind the patent system, contrasting free research to investment returns. Sections 4 and 5 explore the ethical debate and patenting of stem cells, covering the birth of a rising technology and various licensing schemes. Sections 6 and 7 consider the potential use of a patent misuse doctrine to control excessive demands separate from any allegations of antitrust violation. The conclusion contends that a patent misuse doctrine may be better suited to halt any improper use of stem cell and typical research tool patents than attacking the patents themselves.

The Evolving Doctrine of Copyright Misuse

Copyright misuse is a common law defense to copyright infringement. In contrast with defenses addressing the nature of copyrighted material or the defendant's conduct, copyright misuse focuses on the plaintiff's conduct and determines whether the plaintiff is entitled to enforce her rights. This alternative focus orients misuse differently. Copyright misuse regulates copyright owners' use of their rights, polices the boundaries set by Congress in the copyright statute, and protects important public interests. This chapter explores the defense of copyright misuse in a manner calculated to expose the theoretical underpinnings of the doctrine as well as to provide practical guidance on future doctrinal development. The chapter is organized as follows. Part II provides a brief introduction to the (potential) jurisprudential functions of the copyright misuse doctrine. It first develops a schematic model for understanding the jurisprudential relationship between the copyright misuse doctrine and copyright, patent, and antitrust laws. Next, it considers two approaches to formulating and applying misuse principles: per se rules and the rule of reason. Part III analyzes the case law in the Supreme Court and the federal courts of appeals. Part III.A examines four foundational Supreme Court cases. Part III.B covers circuit precedents, and Part III.C covers other influential case law. Part III.D provides a brief overview of district court litigation. In Part IV, we distill a set of guiding principles for evaluating copyright misuse. We conclude that courts ask first whether a challenged action amounts to per se misuse by looking to the facts for evidence of blatantly egregious conduct. Two sets of per se rules may be fashioned by the courts. The first type identifies misuse violating the antitrust laws while the second type identifies misuse violating an important public policy behind the intellectual property grant. We discuss both types of per se rules. If a challenged action does not fit within either set of per se rules, courts may engage in a rule of reason analysis. Again, two approaches are possible. The first approach, which coincides with patent and antitrust analysis, weighs the anticompetitive and procompetitive effects of the challenged action. The second approach is broader in scope and balances policy interests reflected in the intellectual property system. We evaluate these approaches to identifying misuse and conclude that courts should apply both types of per se rules - antitrust-based and policy-based - and should only apply a competition-based balancing approach. We remain skeptical about the advisability of a policy balancing test - e.g., a test that weighs pro-expressive against anti-expressive effects on a case-by-case basis - for doctrinal as well as pragmatic reasons.

Anti-Circumvention Misuse

The anticircumvention provisions of the Digital Millennium Copyright Act penalize both the circumvention of technical protection measures, and supplying the means for such circumvention. These prohibitions are entirely separate from the exclusive rights under copyright, causing some commentators to dub the anti-circumvention right as "paracopyright". Such "paracopyright" effectively grants copyright holders sweeping new ability to impose terms of access on content users: consumers who access content without accepting the content owner's terms would violate the owner's "paracopyright" even if the material accessed is not itself copyrighted or copyrightable. Additionally, where a particular use would be permissible under copyright law, content owners may be able to exclude the use as a condition of access. For example, the content owner might require that users contractually agree not to engage in reverse engineering or fair uses as a condition for access to the material. Content owners may use "paracopyright" to require purchase or use of related products; for example, DVD access controls require that the disc be played on approved hardware, effectively dictating the consumer's purchase of playback equipment. At some point, such leveraging of access control seems certain to overstep the bounds militated by sound policy or intended by Congress. In the past, abuse of intellectual property rights has been curtailed under the doctrine of misuse. Misuse claims first arose in the patent context, where the patent might be leveraged into licensing terms that exceeded the proper scope of the patent grant. More recently, overreaching in copyright licensing has been recognized to constitute a form of misuse. Abuse of copyright in the context of computer software licensing has been the typical setting for a finding of misuse. Recent cases have held that inclusion of a ninety-nine year non-competition provision as a term of a software copyright license, or the tying of unpatented hardware to the license of copyrighted software, constitute misuse of the copyright. This paper argues that because DMCA "paracopyright" is ripe for abuse, limits on overreaching may be imposed by applying the misuse doctrine in this new area. Just as improper leveraging of patent and copyright may be curtailed by application of the misuse doctrine, so improper leveraging of paracopyright should be curtailed by application of misuse. This new application of misuse doctrine may be guided by the standards established in previous applications to patent and copyright law, and may serve a similar function in regulating the excesses invited by the anticircumvention right.

Copyright as Entry Policy: The Case of Digital Distribution

The point of entry of a new product or new service is especially important for a successful economy. Entry creates the possibility of fresh competition with existing products. At least as important, we know that new products have been a critical source—if not the critical source—of new value, for both consumers and shareholders. In this paper, I want to consider how copyright law influences entry in digital distribution of music and video. The subject encompasses past and current successes in distribution—cable TV and the VCR—current and recent controversies—Napster and the pending cases addressing its successors—as well as possible next steps in distribution, such as web radio, interactive music services and the digital video recorder. Much of the relevant distribution entry policy is set through copyright law. With some frequency, copyright law has important competition consequences, but the relevant inquiries in copyright may not track the issues that are of interest to competition law. Copyright law entry policy reflects an amalgam of statutory interventions—as part of the restructuring of the copyright statute in 1976 and then subsequently in a series of quite context-specific tailored statutes—and judge-made copyright law addressing third-party liability for copyright infringement and the doctrine of copyright misuse. The copyright statutes reflect substantial path dependence, as well as the play of powerful interests. Fluke exclusions, such as that for sound recordings, result in the Digital Performance Right in

The Justification and Scope of the Copyright Misuse Doctrine and Its Independence of the Antitrust Laws

The Justification and Scope of the Copyright Misuse Doctrine and Its Independence of the Antitrust Laws

The Economic Irrationality of the Patent Misuse Doctrine

This Comment evaluates the economic effects of the patent misuse doctrine.The patent misuse doctrine is an equitable remedy analogous to the “uncleanhands” doctrine in tort law. It bars infringement suits by patentees whohave “misused” their patent grant, either by using the patent to violatethe antitrust laws or by extending their patent monopoly in some other way.The author first describes the nature and scope of antitrust protection inthe patent area, and contrasts the antitrust laws with the patent misusedoctrine. Next, the author argues that the patent misuse doctrine isirrational from an economic standpoint for three reasons: the level ofsanction is unrelated to the injury caused; the sanction duplicatesantitrust remedies, leading to excessive recoveries; and the sanction isawarded as a windfall to the patent infringer even if that party was notinjured by the misuse. These effects combine to make the patent misusedoctrine indefensible from the standpoint either of proportionality or ofdeterrence. Finally, the author reviews recent legislative efforts toreform the patent misuse doctrine and argues that they are misguidedbecause they fail to deal with the fundamental problems described herein.The author concludes that the patent misuse doctrine ought to be abolished,and that the antitrust laws can serve the same purposes that the patentmisuse doctrine was designed to serve.

Patents: Misuse Doctrine: Multiple Licenses with Price-Fixing Provisos as Sherman Act Violation

Patents: Misuse Doctrine: Multiple Licenses with Price-Fixing Provisos as Sherman Act Violation